IPR2020-01492
`Patent 6,651,134
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`
`QUALCOMM INCORPORATED
`
`PETITIONER
`
`
`v.
`
`
`MONTEREY RESEARCH, LLC
`
`PATENT OWNER
`
`______________
`
`INTER PARTES REVIEW NO. IPR2020-01492
`PATENT 6,651,134
`______________
`
`
`PETITIONER’S UNOPPOSED MOTION FOR PRO HAC VICE
`ADMISSION OF BRETT A. MCKEAN UNDER 37 C.F.R. § 42.10(c)
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`Patent 6,651,134
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`
`QUALCOMM INCORPORATED
`
`PETITIONER
`
`
`v.
`
`
`MONTEREY RESEARCH, LLC
`
`PATENT OWNER
`
`______________
`
`INTER PARTES REVIEW NO. IPR2020-01492
`PATENT 6,651,134
`______________
`
`
`PETITIONER’S UNOPPOSED MOTION FOR PRO HAC VICE
`ADMISSION OF BRETT A. MCKEAN UNDER 37 C.F.R. § 42.10(c)
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`PETITIONER’S EXHIBIT LIST
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`IPR2020-01492
`Patent 6,651,134
`
`Exhibit
`1001
`1002
`1003
`1004
`
`1005
`1006
`1007
`1008
`1009
`1010
`1011
`
`1012
`
`1013
`
`1014
`1015
`1016
`1017
`1018
`
`Shorthand
`’134 Patent
`
`
`’134 File History
`
`
`Fujioka
`Tiede
`
`Lysinger
`
`U.S.I.T.C Claim
`Construction Order
`N.D. Cal Claim
`Construction Order
`
`Description
`U.S. Patent No. 6,651,134
`Omitted
`Omitted
`Prosecution History of U.S. Patent No.
`6,651,134
`Omitted
`U.S. Patent No. 6,185,149
`U.S. Patent No. 5,900,021
`Omitted
`U.S. Patent No. 5,784,331
`Omitted
`Order 29 Construing Claims, Inv. No. 337-
`TA-792, U.S.I.T.C (February 9, 2012)
`Order
`Construing
`Claims,
`Cypress
`Semiconductor Corp. v. GSU Tech., Inc., 13-
`cv-02013-JST (N.D. Cal.) (July 29, 2014)
`Commission Opinion Commission Opinion, Inv. No. 337-TA-792,
`U.S.I.T.C. (June 28, 2013)
`U.S. Patent No. 5,360,992
`Lowrey
`Declaration of Robert Murphy
`Murphy
`Curriculum Vitae of Robert Murphy
`Murphy CV
`U.S. Patent No. 5,600,605
`Schaefer
`Cypress Whitepaper Cypress Semiconductor, Understanding Burst
`Modes in Synchronous SRAMs (June 30,
`1999)
`
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`- ii -
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`Exhibit
`1019
`
`Shorthand
`Cypress Response
`
`IPR2020-01492
`Patent 6,651,134
`
`Description
`Semiconductor
`Cypress
`Complainant
`to Respondents'
`Corporation's Response
`Petition for Review of the Remand Initial
`Determination on Validity and Enforceability
`(April 3, 2013)
`U.S. Patent No. 5,729,504
`Cowles
`CMOS Circuit Design Baker et al, CMOS Circuit Design, Layout,
`and Simulation (First Ed. 1998)
`First Amended Complaint
`in Monterey
`Research, LLC v. Qualcomm Incorporated, et.
`al, No. 19-cv-2083-CFC (D. Del. Feb. 14,
`2020)
`Petition for Inter Partes Review, IPR2020-
`00985, Paper 1, filed May 26, 2020.
`Original Complaint in Monterey Research,
`LLC v. Qualcomm Incorporated, et. al, No.
`19-cv-2083-CFC (D. Del. Nov. 1, 2019)
`Returned Summons in Monterey Research,
`LLC v. Qualcomm Incorporated, et. al, No.
`19-cv-2083-CFC (D. Del. Nov. 4, 2019)
`Original Complaint in Monterey Research,
`LLC v. Advanced Micro Devices, Inc., No. 19-
`cv-2149-CFC (D. Del. Nov. 15, 2019)
`Returned Summons in Monterey Research,
`LLC v. Advanced Micro Devices, Inc., No. 19-
`cv-2149-CFC (D. Del. Nov. 18, 2019)
`1028 McKean Declaration Declaration for Pro Hac Vice Admission of
`Brett A. McKean Under 37 C.F.R. § 42.10(c)
`
`1020
`1021
`
`1022
`
`1023
`
`1024
`
`Monterey FAC
`
`IPR2020-00985
`
`QC Original
`Complaint
`
`1025
`
`QC Summons
`
`1026
`
`AMD Original
`Complaint
`
`1027
`
`AMD Summons
`
`
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`IPR2020-01492
`Patent 6,651,134
`
`I.
`
`RELIEF REQUESTED
`Pursuant to 37 C.F.R. § 42.10(c) and Paper No. 5 authorizing the parties to
`
`file motions for pro hac vice admission under 37 C.F.R. § 42.10(c), Petitioner
`
`Qualcomm Incorporated (“Petitioner”) respectfully requests that the Patent Trial and
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`Appeal Board (the “Board”) admit Brett A. McKean pro hac vice in this proceeding,
`
`IPR2020-01492.
`
`II.
`
`STATEMENT OF FACTS
`In accordance with 37 C.F.R. § 42.10(c), the Board may recognize counsel
`
`pro hac vice during a proceeding upon a showing of good cause, subject to the
`
`condition that lead counsel be a registered practitioner and to any other conditions
`
`as the Board may impose. Section 42.10(c) indicates that “where lead counsel is a
`
`registered practitioner, a motion to appear pro hac vice by counsel who is not a
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`registered practitioner may be granted upon a showing that counsel is an experienced
`
`litigating attorney and has an established familiarity with the subject matter at issue
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`in the proceeding.” The facts here establish good cause for the Board to recognize
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`Brett A. McKean pro hac vice in this proceeding.
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`Based on the following statement of facts, and supported by the Declaration
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`of Brett A. McKean submitted herewith (Exhibit 1028), Petitioner submits that a
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`showing of good cause has been made and respectfully requests the pro hac vice
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`admission of Brett A. McKean in this proceeding:
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`IPR2020-01492
`Patent 6,651,134
`Petitioner’s Lead Counsel, Eagle H. Robinson, is a registered
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`1.
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`practitioner (Reg. No. 61,361). First Back-up Counsel, Daniel S.
`
`Leventhal, is also a registered practitioner (Reg. No. 59,576) and Back-
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`up Counsel, Richard S. Zembek, is also a registered practitioner (Reg.
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`No. 43,306).
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`2. Mr. McKean is an attorney at the law firm of Norton Rose Fulbright
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`US LLP. EX1028 ¶ 3.
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`3. Mr. McKean is a litigating attorney and has been litigating cases
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`relating to patents for over 10 years. Id. ¶ 4.
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`4. Mr. McKean is a member in good standing of the Texas State Bar, and
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`has never been suspended or disbarred from practice before any court
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`or administrative body. Id. ¶ 5.
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`5.
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`No application filed by Mr. McKean for admission to practice before
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`any court or administrative body has ever been denied. Id. ¶ 6.
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`6.
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`No sanctions or contempt citations have been imposed against Mr.
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`McKean by any court or administrative body. Id. ¶ 7.
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`7. Mr. McKean has read and agrees to comply with the Office Patent Trial
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`Practice Guide and the Board’s Rules of Practice for Trials, as set forth
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`in Part 42 of Title 37, Code of Federal Regulations. Id. ¶ 8.
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`IPR2020-01492
`Patent 6,651,134
`8. Mr. McKean understands that he will be subject to the USPTO Rules
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`of Professional Conduct 37 C.F.R. §§ 11.101 et seq. and disciplinary
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`jurisdiction under 37 C.F.R. § 11.19(a). Id. ¶ 9.
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`9. Mr. McKean has never appeared pro hac vice before the United States
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`Patent and Trademark Office in the past three years. Id. ¶ 10.
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`10. Mr. McKean has an established familiarity with the subject matter at
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`issue in this proceeding. Id. ¶ 11. Mr. McKean has acquired a
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`substantial understanding of the underlying legal and technological
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`issues at stake in the related proceeding, including issues related to
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`validity of the ’134 patent. Id. Petitioner has expended significant time
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`and resources with Mr. McKean and wishes to continue using Mr.
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`McKean as counsel in this proceeding as appropriate. Id.
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`III. GOOD CAUSE EXISTS FOR PRO HAC VICE ADMISSION OF
`BRETT A. MCKEAN
`The facts outlined above in the Statement of Facts, and contained in the
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`Declaration of Mr. McKean (EX1028), establish that there is good cause to admit
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`Mr. McKean pro hac vice in this proceeding under 37 C.F.R. § 42.10. Petitioner’s
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`lead counsel, first back-up counsel and back-up counsel are registered practitioners.
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`Mr. McKean is an experienced litigating attorney and has an established familiarity
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`with the subject matter at issue.
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`IPR2020-01492
`Patent 6,651,134
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`IV. GROUNDS FOR STANDING
`Petitioner has conferred with Patent Owner with regard to this Motion, and
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`Patent Owner confirmed that it would not oppose the motion.
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`V. CONCLUSION
`In light of the foregoing, Petitioner respectfully requests that the Board admit
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`Brett A. McKean pro hac vice in this proceeding.
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`Dated: August 16, 2021
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`Respectfully submitted,
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`/Eagle H. Robinson/
`Eagle H. Robinson
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`Lead Counsel for Petitioner
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`IPR2020-01492
`Patent 6,651,134
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`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on August 16,
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`2021, a complete copy of this PETITIONER’S UNOPPOSED MOTION FOR PRO
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`HAC VICE ADMISSION OF BRETT A. MCKEAN UNDER 37 C.F.R. § 42.10(c),
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`UPDATED EXHIBIT LIST, and EX1028 were served on Patent Owner via email
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`(by consent) at:
`
`tkonstantakopoulos@desmaraisllp.com
`jmcdavit@desmaraisllp.com
`jmalz@desmaraisllp.com
`mwueste@desmaraisllp.com
`rthorne@desmaraisllp.com
`yha@desmaraisllp.com
`cdorman@desmaraisllp.com
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`/Eagle H. Robinson/
`Eagle H. Robinson (Reg. No. 61,361)
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