IPR2021-00144
`Patent 8,095,879
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`Samsung Electronics Co. Ltd., Samsung Electronics America, Inc., and
`Apple, Inc.,
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`Petitioner
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`v.
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`Neonode Smartphone LLC,
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`Patent Owner
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`____________
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`U.S. Patent No. 8,095,879
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`Title: USER INTERFACE FOR MOBILE HANDHELD COMPUTER UNIT
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`Inter Partes Review No. IPR2021-00144
`____________
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`UNOPPOSED MOTION for PRO HAC VICE ADMISSION FOR MARK S.
`CARLSON ON BEHALF OF PATENT OWNER NEONODE
`SMARTPHONE LLC.
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`1
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`Patent 8,095,879
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`Samsung Electronics Co. Ltd., Samsung Electronics America, Inc., and
`Apple, Inc.,
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`Petitioner
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`v.
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`Neonode Smartphone LLC,
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`Patent Owner
`
`____________
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`U.S. Patent No. 8,095,879
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`Title: USER INTERFACE FOR MOBILE HANDHELD COMPUTER UNIT
`
`Inter Partes Review No. IPR2021-00144
`____________
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`
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`UNOPPOSED MOTION for PRO HAC VICE ADMISSION FOR MARK S.
`CARLSON ON BEHALF OF PATENT OWNER NEONODE
`SMARTPHONE LLC.
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`1
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`I. RELIEF REQUESTED
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`IPR2021-00144
`Patent 8,095,879
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`Pursuant to 37 C.F.R. § 42.10(c), Patent Owner Neonode Smartphone LLC (“Neonode”)
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`respectfully moves the Patent Trial & Appeal Board (“Board”) for the pro hac vice admission of
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`Mark S. Carlson in this proceeding.
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`II. GOVERNING LAW, RULES, AND PRECEDENT
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`The Board is authorized to recognize counsel pro hac vice pursuant to 37 C.F.R. §
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`42.10(c), which provides that:
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`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. For example, where the lead counsel is a
`registered practitioner, a motion to appear pro hac vice by counsel who is not a registered
`practitioner may be granted upon showing that counsel is an experienced litigating
`attorney and has an established familiarity with the subject matter at issue in the
`proceeding.
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`The Board has stated that a motion for admission pro hac vice should include a
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`“statement of facts showing there is good cause for the Board to recognize counsel pro hac vice
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`during the proceeding” and “[b]e accompanied by an affidavit or declaration of the individual
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`seeking to appear attesting to the following
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`i.
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`Membership in good standing of the Bar of at least one State or the District of
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`Columbia;
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`ii.
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`iii.
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`No suspensions or disbarments from practice before any court or administrative body;
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`No application for admission to practice before any court or administrative body ever
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`denied;
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`iv.
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`No sanctions or contempt citations imposed by any court or administrative body;
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`2
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`The individual seeking to appear has read and will comply with the Office Patent
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`IPR2021-00144
`Patent 8,095,879
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`v.
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`Trial Practice Guide and the Board’s Rules of Practice for Trials set forth in part 42 of
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`37 C.F.R.;
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`vi.
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`The individual will be subject to the USPTO Rules of Professional Conduct set forth
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`in 37 C.F.R. §§ 11.101 et seq. and disciplinary jurisdiction under 37 C.F.R. §
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`11.19(a);
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`vii. All other proceedings before the Office for which the individual has applied to appear
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`pro hac vice in the last three (3) years; and
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`viii.
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`Familiarity with the subject matter at issue in the proceeding.”
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`Unified Patents, Inc. v. Parallel Iron, LLC, IPR 2013-00639 (MPT) (Paper 7, pages 3-4).
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`III.
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`STATEMENT OF FACTS
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`Based on the following facts, supported by the attached declaration, Neonode submits
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`that Mr. Carlson meets the requirements for pro hac vice admission and requests that Mr.
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`Carlson be admitted in this proceeding.
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`Mr. Carlson has over thirty years of experience as a litigation attorney specializing in
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`patent litigation and representing clients in patent litigation matters in the United States District
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`Court for the Western District of Washington and the United States Court of Appeals for the
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`Federal Circuit, and pro hac vice in numerous other jurisdictions.
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`Mr. Carlson is very familiar with U.S. Patent No. 8,095,879, as well as the legal subject
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`matter, technical subject matter, and prior art discussed in Petitioner’s Request for Inter Partes
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`Review of U.S. Patent No. 8,095,879, which forms the basis for this proceeding. Mr. Carlson has
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`personally reviewed the patent at issue, as well as its prosecution history and the above-
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`3
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`referenced petition, with accompanying declarations and exhibits. Mr. Carlson has been and
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`IPR2021-00144
`Patent 8,095,879
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`continues to be actively involved with strategic, factual, and technical aspects of this matter.
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`Mr. Carlson is a member in good standing of the State Bar of Washington. Mr. Carlson is
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`admitted to practice before the United States District Court for the Western District of
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`Washington and the United States Courts of Appeals for the Federal Circuit.
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`There have been no other proceedings before the Office for which Mr. Carlson has
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`applied to appear pro hac vice in the last three (3) years.
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`Mr. Carlson has never been suspended or disbarred from practice before any court or
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`administrative body.
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`Mr. Carlson has never had a court or administrative body deny his application for
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`admission to practice.
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`Mr. Carlson has never been sanctioned or cited for contempt by any court or
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`administrative body.
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`Mr. Carlson has read and will comply with the Office Patent Trial Practice Guide and the
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`Board’s Rules of Practice for Trials set forth in part 42 of 37 C.F.R.
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`Mr. Carlson agrees to be subject to the United States Patent and Trademark Office Code
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`of Professional Responsibility set forth in 37 C.F.R. §§ 11.101 et. seq. and disciplinary
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`jurisdiction under 37 C.F.R. § 11.19(a).
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`IV. GOOD CAUSE EXISTS FOR THE PRO HAC VICE ADMISSION OF MR.
`CARLSON IN THIS PROCEEDING
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`
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`The Board may recognize counsel pro hac vice during a proceeding upon a showing of
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`good cause, subject to the condition that lead counsel be a registered practitioner and any other
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`conditions the Board may impose. 37 C.F.R. § 42.10(c). Neonode’s lead counsel in matters
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`4
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`before the Patent Trial and Appeals Board, Robert M. Asher (No. 30,445), is a registered
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`IPR2021-00144
`Patent 8,095,879
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`practitioner. Based on the facts contained herein, good cause exists to admit Mr. Carlson pro hac
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`vice.
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`Mr. Carlson has over thirty years of experience as a litigation attorney, specializing in
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`patent litigation. Mr. Carlson has represented clients in matters related to electrical and computer
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`science arts, among others, and has significant experience in patent litigation matters. Mr.
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`Carlson currently represents Neonode in co-pending district court litigation, involving U.S.
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`Patent No. 8,095,879, in Neonode Smartphone LLC v. Apple Inc., 6:20-cv-00505 (W.D.Tex.) and
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`Neonode Smartphone LLC v. Samsung Electronics Co. Ltd. and Samsung Electronics America,
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`Inc., 6:20-cv-00507 (W.D.Tex.). Mr. Carlson is actively involved with the strategy and fact
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`development in these patent litigation matters. In view of Mr. Carlson’s extensive knowledge of
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`the subject matter of this proceeding, and in view of the interrelatedness of this proceeding and
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`the co-pending district court litigation, Neonode has a substantial need for Mr. Carlson’s pro hac
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`vice admission and his involvement in the continued prosecution of this proceeding.
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`Petitioners do not oppose this motion.
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`V. CONCLUSION
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`IPR2021-00144
`Patent 8,095,879
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`For the foregoing reasons, Neonode respectfully requests that Mark S. Carlson be
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`
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`admitted pro hac vice.
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`Dated: February 11, 2021
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`/Robert M. Asher, #30,445/
`Robert M. Asher
`Reg. No. 30,445
`Sunstein LLP
`100 High Street
`Boston, MA 02110-2321
`617 443 9292 (phone)
`Counsel for Patent Owner
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`6
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`CERTIFICATE OF SERVICE
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`IPR2021-00144
`Patent 8,095,879
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`It is certified that on February 11, 2021, the foregoing Motion to Appear Pro Hac Vice on
`behalf of Patent Owner Neonode Smartphone LLC and supporting materials in its entirety has
`been served on the Petitioner as provided in 37 C.F.R. § 42.6(e) via electronic mail at IPR50095-
`0015P1@fr.com (referencing No. 50095-0015IP1 and cc’ing PTABInbound@fr.com, axf-
`ptab@fr.com, DTH@fr.com, tiffany.miller@dlapiper.com, and jim.heintz@dlapiper.com).
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`_/Robert M. Asher/________________
`Robert M. Asher
`Reg. No. 30,445
`Sunstein LLP
`100 High Street
`Boston, MA 02110-2321
`617 443 9292 (phone)
`Counsel for Patent Owner
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`Dated: February 11, 2021
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