`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`BAYERISCHE MOTOREN WERKE AKTIENGESELLSCHAFT &
`BMW OF NORTH AMERICA, LLC,
`Petitioners
`
`v.
`
`PAICE LLC & THE ABELL FOUNDATION, INC.
`Patent Owners
`
`
`
`
`
`
`
`
`
`
`
`Inter Partes Review No.: IPR2020-01299
`U.S. Patent No. 8,630,761
`
`___________________
`
`
`MOTION FOR PRO HAC VICE ADMISSION OF
`JACOB Z. ZAMBRZYCKI UNDER 37 C.F.R. § 42.10
`
`
`
`
`Zambrzycki Pro Hac Vice Motion
`IPR2020-01299 (U.S. Patent No. 8,630,761)
`
`
`Petitioners respectfully request that the Board recognize Jacob Z.
`
`Zambrzycki as counsel pro hac vice for the above-captioned proceeding in
`
`accordance with 37 C.F.R. § 42.10(c). The lead counsel, Jeffrey D. Sanok, is a
`
`registered practitioner (Reg. No. 32,169).
`
`Patent Owners have indicated that they do not oppose this motion.
`
`I.
`
`Time for Filing
`
`This Motion for Pro Hac Vice Admission is being filed no sooner than
`
`twenty-one (21) days after service of the Petition, as required by the Order
`
`Authorizing Motion for Pro Hac Vice Admission referenced in the Notice of Filing
`
`Date entered on July 24, 2020.
`
`II. Statement of Facts
`
`As required by the Order Authorizing Motion for Pro Hac Vice Admission,
`
`the following statement of facts demonstrates good cause for the Board to
`
`recognize Mr. Zambrzycki pro hac vice. Mr. Zambrzycki is an experienced
`
`litigation attorney and has been involved in numerous litigations involving patent
`
`infringement in U.S. District Courts across the country, the U.S. Court of Appeals
`
`for the Federal Circuit, and the International Trade Commission. Mr. Zambrzycki
`
`has been a litigation attorney for over 10 years, and has represented a wide range
`
`of clients in patent litigation matters.
`
`2
`
`
`
`Zambrzycki Pro Hac Vice Motion
`IPR2020-01299 (U.S. Patent No. 8,630,761)
`
`
`Mr. Zambrzycki is extremely familiar with the subject matter at issue in this
`
`proceeding. For instance, Mr. Zambrzycki was involved in preparing the Petition
`
`in this proceeding, and in the related IPR2020-00994 (in which he has been
`
`granted permission to appear pro hac vice) and IPR2020-01386 (in which he is
`
`applying for pro hac vice admission concurrently with this application).
`
`Throughout this process, Mr. Zambrzycki has gained relevant technical knowledge
`
`and experience in the field of electric hybrid vehicles and the various prior art
`
`references cited in the Petition.
`
`III. Affidavit or Declaration of Individual Seeking to Appear
`
`This Motion for Pro Hac Vice Admission is accompanied by the Declaration
`
`and biography of Jacob Zambrzycki (BMW1087) as required by the Order
`
`Authorizing Motion for Pro Hac Vice Admission. In this Declaration, Mr.
`
`Zambrzycki states compliance with the general requirements for pro hac vice
`
`admission, including that he is a member in good standing of the Bar of the State
`
`of New York, the Bar of the State of California, and the Bar of the State of North
`
`Carolina, and is admitted to practice before the U.S. Court of Appeals for the
`
`Federal Circuit, and the U.S. District Courts for the Southern District of New York,
`
`the Northern District of California, and the Central District of California. Mr.
`
`Zambrzycki also states that he has never been suspended, disbarred, sanctioned, or
`
`cited for contempt by any court or administrative body; he has never had a court or
`
`3
`
`
`
`administrative body deny his application for admission to practice; he has read and
`
`Zambrzycki Pro Hac Vice Motion
`IPR2020-01299 (U.S. Patent No. 8,630,761)
`
`
`will comply with the Office Patent Trial Practice Guide and the Board’s Rules of
`
`Practice for Trials set forth in Part 42 of Title 37 of the Code of Federal
`
`Regulations; he agrees to be subject to the United States Patent and Trademark
`
`Office Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq. and
`
`disciplinary jurisdiction under 37 C.F.R. § 11.19(a). In the past three (3) years, he
`
`has applied to appear pro hac vice before the Office, and was granted permission to
`
`do so, in IPR2017-00981, IPR2017-01263, IPR2017-01533, IPR2017-01866,
`
`IPR2019-00569, IPR2019-00570, and in the related IPR2020-00994. Concurrently
`
`with this motion, Mr. Zambrzycki is also applying for pro hac vice admission in
`
`the related IPR2020-01386. In addition, Mr. Zambrzycki states that he has
`
`familiarity with the subject matter at issue in these inter partes review proceedings.
`
`Accordingly, Petitioners respectfully submit that there is good cause for the
`
`Board to recognize Mr. Zambrzycki as counsel pro hac vice during this
`
`proceeding.
`
`
`
`Dated: March 31, 2021
`
`Respectfully submitted,
`
`/Jeffrey D. Sanok/
`
`Jeffrey D. Sanok (Reg. No. 32,169)
`Vincent J. Galluzzo (Reg. No. 67,830)
`Crowell & Moring LLP
`1001 Pennsylvania Avenue NW
`Washington, DC 20004-2595
`Tel.: (202) 624-2500
`
`4
`
`
`
`Zambrzycki Pro Hac Vice Motion
`IPR2020-01299 (U.S. Patent No. 8,630,761)
`
`
`Fax.: (202) 628-8844
`jsanok@crowell.com
`vgalluzzo@crowell.com
`
`Scott L. Bittman (Reg. No. 55,007)
`Jacob Z. Zambrzycki (pro hac vice pending)
`Crowell & Moring LLP
`590 Madison Avenue, 20th Floor
`New York, NY 10022-2544
`Telephone No.: (212) 223-4000
`Facsimile No.: (212) 223-4134
`sbittman@crowell.com
`jzambrzycki@crowell.com
`
`Counsel for Petitioners
`Bayerische Motoren Werke Aktiengesellschaft
`and BMW of North America, LLC
`
`
`
`
`
`
`5
`
`
`
`Zambrzycki Pro Hac Vice Motion
`IPR2020-01299 (U.S. Patent No. 8,630,761)
`
`
`Certificate of Service
`
`Pursuant to 37 C.F.R. § 42.6(e)(4), I certify that the foregoing Motion for
`
`Pro Hac Vice Admission of Jacob Zambrzycki Under 37 C.F.R. § 42.10, along
`
`with the accompanying Declaration and biography of Jacob Zambrzycki, was
`
`served electronically by filing this document through the PTAB E2E system, as
`
`well as by e-mailing copies to the following address for counsel of record for
`
`Patent Owners:
`
`Ruffin B. Cordell
`Indranil Mukerji
`Brian J. Livedalen
`Timothy W. Riffe
`FISH & RICHARDSON P.C.
`3200 RBC Plaza
`60 South Sixth Street
`IPR36351-0017IP1@fr.com
`PTABInbound@fr.com
`
`Respectfully submitted,
`
`/Jeffrey D. Sanok/
`Jeffrey D. Sanok
`
`
`
`
`
`
`
`
`
`Dated: March 31, 2021
`
`
`
`
`
`6
`
`