UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`BAYERISCHE MOTOREN WERKE AKTIENGESELLSCHAFT &
`BMW OF NORTH AMERICA, LLC,
`Petitioners
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`v.
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`PAICE LLC & THE ABELL FOUNDATION, INC.
`Patent Owners
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`Inter Partes Review No.: IPR2020-01386
`U.S. Patent No. 7,237,634
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`___________________
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`MOTION FOR PRO HAC VICE ADMISSION OF
`JACOB Z. ZAMBRZYCKI UNDER 37 C.F.R. § 42.10
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`BAYERISCHE MOTOREN WERKE AKTIENGESELLSCHAFT &
`BMW OF NORTH AMERICA, LLC,
`Petitioners
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`v.
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`PAICE LLC & THE ABELL FOUNDATION, INC.
`Patent Owners
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`Inter Partes Review No.: IPR2020-01386
`U.S. Patent No. 7,237,634
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`___________________
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`MOTION FOR PRO HAC VICE ADMISSION OF
`JACOB Z. ZAMBRZYCKI UNDER 37 C.F.R. § 42.10
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`Zambrzycki Pro Hac Vice Motion
`IPR2020-01386 (U.S. Patent No. 7,237,634)
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`Petitioners respectfully request that the Board recognize Jacob Z.
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`Zambrzycki as counsel pro hac vice for the above-captioned proceeding in
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`accordance with 37 C.F.R. § 42.10(c). The lead counsel, Jeffrey D. Sanok, is a
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`registered practitioner (Reg. No. 32,169).
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`Patent Owners have indicated that they do not oppose this motion.
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`I.
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`Time for Filing
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`This Motion for Pro Hac Vice Admission is being filed no sooner than
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`twenty-one (21) days after service of the Petition, as required by the Order
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`Authorizing Motion for Pro Hac Vice Admission referenced in the Notice of Filing
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`Date entered on August 7, 2020.
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`II. Statement of Facts
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`As required by the Order Authorizing Motion for Pro Hac Vice Admission,
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`the following statement of facts demonstrates good cause for the Board to
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`recognize Mr. Zambrzycki pro hac vice. Mr. Zambrzycki is an experienced
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`litigation attorney and has been involved in numerous litigations involving patent
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`infringement in U.S. District Courts across the country, the U.S. Court of Appeals
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`for the Federal Circuit, and the International Trade Commission. Mr. Zambrzycki
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`has been a litigation attorney for over 10 years, and has represented a wide range
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`of clients in patent litigation matters.
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`2
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`Zambrzycki Pro Hac Vice Motion
`IPR2020-01386 (U.S. Patent No. 7,237,634)
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`Mr. Zambrzycki is extremely familiar with the subject matter at issue in this
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`proceeding. For instance, Mr. Zambrzycki was involved in preparing the Petition
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`in this proceeding, and in the related IPR2020-00994 (in which he has been
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`granted permission to appear pro hac vice) and IPR2020-01299 (in which he is
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`applying for pro hac vice admission concurrently with this application).
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`Throughout this process, Mr. Zambrzycki has gained relevant technical knowledge
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`and experience in the field of electric hybrid vehicles and the various prior art
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`references cited in the Petition.
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`III. Affidavit or Declaration of Individual Seeking to Appear
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`This Motion for Pro Hac Vice Admission is accompanied by the Declaration
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`and biography of Jacob Zambrzycki (BMW1087) as required by the Order
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`Authorizing Motion for Pro Hac Vice Admission. In this Declaration, Mr.
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`Zambrzycki states compliance with the general requirements for pro hac vice
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`admission, including that he is a member in good standing of the Bar of the State
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`of New York, the Bar of the State of California, and the Bar of the State of North
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`Carolina, and is admitted to practice before the U.S. Court of Appeals for the
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`Federal Circuit, and the U.S. District Courts for the Southern District of New York,
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`the Northern District of California, and the Central District of California. Mr.
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`Zambrzycki also states that he has never been suspended, disbarred, sanctioned, or
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`cited for contempt by any court or administrative body; he has never had a court or
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`3
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`administrative body deny his application for admission to practice; he has read and
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`Zambrzycki Pro Hac Vice Motion
`IPR2020-01386 (U.S. Patent No. 7,237,634)
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`will comply with the Office Patent Trial Practice Guide and the Board’s Rules of
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`Practice for Trials set forth in Part 42 of Title 37 of the Code of Federal
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`Regulations; he agrees to be subject to the United States Patent and Trademark
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`Office Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq. and
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`disciplinary jurisdiction under 37 C.F.R. § 11.19(a). In the past three (3) years, he
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`has applied to appear pro hac vice before the Office, and was granted permission to
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`do so, in IPR2017-00981, IPR2017-01263, IPR2017-01533, IPR2017-01866,
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`IPR2019-00569, IPR2019-00570, and in the related IPR2020-00994. Concurrently
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`with this motion, Mr. Zambrzycki is also applying for pro hac vice admission in
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`the related IPR2020-01299. In addition, Mr. Zambrzycki states that he has
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`familiarity with the subject matter at issue in these inter partes review proceedings.
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`Accordingly, Petitioners respectfully submit that there is good cause for the
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`Board to recognize Mr. Zambrzycki as counsel pro hac vice during this
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`proceeding.
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`Dated: March 31, 2021
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`Respectfully submitted,
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`/Jeffrey D. Sanok/
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`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
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`4
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`Zambrzycki Pro Hac Vice Motion
`IPR2020-01386 (U.S. Patent No. 7,237,634)
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`Fax.: (202) 628-8844
`jsanok@crowell.com
`vgalluzzo@crowell.com
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`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
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`Counsel for Petitioners
`Bayerische Motoren Werke Aktiengesellschaft
`and BMW of North America, LLC
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`5
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`Zambrzycki Pro Hac Vice Motion
`IPR2020-01386 (U.S. Patent No. 7,237,634)
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`Certificate of Service
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`Pursuant to 37 C.F.R. § 42.6(e)(4), I certify that the foregoing Motion for
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`Pro Hac Vice Admission of Jacob Zambrzycki Under 37 C.F.R. § 42.10, along
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`with the accompanying Declaration and biography of Jacob Zambrzycki, was
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`served electronically by filing this document through the PTAB E2E system, as
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`well as by e-mailing copies to the following address for counsel of record for
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`Patent Owners:
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`Ruffin B. Cordell
`Indranil Mukerji
`Brian J. Livedalen
`Timothy W. Riffe
`FISH & RICHARDSON P.C.
`3200 RBC Plaza
`60 South Sixth Street
`IPR36351-0018IP1@fr.com
`PTABInbound@fr.com
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`Respectfully submitted,
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`/Jeffrey D. Sanok/
`Jeffrey D. Sanok
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`Dated: March 31, 2021
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`6
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