`571.272.7822
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` Paper No. 17
`
`Date: February 26, 2021
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO. LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and APPLE INC.,
`Petitioner,
`
`v.
`
`NEONODE SMARTPHONE LLC,
`Patent Owner.
`____________
`
`IPR2021-00144 (Patent 8,095,879 B2)
`IPR2021-00145 (Patent 8,812,993 B2)1
`____________
`
`
`Before KEVIN C. TROCK, MICHELLE N. ANKENBRAND, and
`KARA L. SZPONDOWSKI, Administrative Patent Judges.
`
`ANKENBRAND, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Patent Owner’s Motions for Pro Hac Vice
`Admission of Mark S. Carlson, Philip J. Graves, and Greer N. Shaw
`37 C.F.R. § 42.10
`
`
`
`1 This Order addresses issues that are the same in each of the above-
`identified proceedings. We issue one Order to be entered in each
`proceeding. The parties may not use this style caption without our
`permission.
`
`
`
`
`
`IPR2021-00144 (Patent 8,095,879 B2)
`IPR2021-00145 (Patent 8,812,993 B2)
`
`
`On February 11, 2021, Patent Owner filed Motions for Pro Hac Vice
`Admission of Mark S. Carlson, Philip J. Graves, and Greer N. Shaw in each
`of the above-identified proceedings. Papers 11, 13, 15 (“Motions”).2 Patent
`Owner supports the Motions with the Declarations of Messrs. Carlson,
`Graves, and Shaw. Papers 12, 14, 16.3 Patent Owner indicates Petitioner
`does not oppose the Motions. Paper 11, 5; Paper 13, 5; Paper 15, 5.
`Upon review of the record before us, we determine that the
`requirements of 37 C.F.R. § 42.10 have been met and there is good cause to
`admit Messrs. Carlson, Graves, and Shaw pro hac vice.
`
`It is, therefore,
`ORDERED that Patent Owner’s Motions for Pro Hac Vice Admission
`of Mark S. Carlson, Philip J. Graves, and Greer N. Shaw are granted;
`Messrs. Carlson, Graves, and Shaw are authorized to act only as back-up
`counsel in the above-identified proceedings;
`FURTHER ORDERED that Patent Owner is to continue to have a
`registered practitioner represent it as lead counsel for the above-identified
`proceedings;
`FURTHER ORDERED that Messrs. Carlson, Graves, and Shaw are to
`comply with the Consolidated Trial Practice Guide4 (84 Fed. Reg. 64,280
`
`
`2 For expediency, we cite to papers in IPR2021-00144. Patent Owner filed
`similar papers in IPR2021-00145.
`3 We remind Patent Owner to file all evidence as an exhibit. See 37 C.F.R.
`§ 42.63(a).
`4 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`2
`
`
`
`IPR2021-00144 (Patent 8,095,879 B2)
`IPR2021-00145 (Patent 8,812,993 B2)
`
`(Nov. 21, 2019)), and the Board’s Rules of Practice for Trials as set forth in
`Part 42 of Title 37, Code of Federal Regulations; and
`FURTHER ORDERED that Messrs. Carlson, Graves, and Shaw are to
`be subject to the Office’s disciplinary jurisdiction under 37 C.F.R.
`§ 11.19(a), and the USPTO Rules of Professional Conduct set forth in
`37 C.F.R. §§ 11.101 et seq.5
`
`
`5 Messrs. Carlson, Graves, and Shaw declare they “agree to be subject to the
`United States Patent and Trademark Office Code of Professional
`Responsibility set forth in 37 C.F.R. §§ 11.101 et seq.” (Paper 12 ¶ 11;
`Paper 14 ¶ 11; Paper 16 ¶ 11), rather than be subject to the current USPTO
`Rules of Professional Conduct, which are set forth in 37 C.F.R. §§ 11.101 et
`seq. We deem this to be harmless error.
`3
`
`
`
`IPR2021-00144 (Patent 8,095,879 B2)
`IPR2021-00145 (Patent 8,812,993 B2)
`
`PETITIONER:
`Walter Renner
`David Holt
`Fish & Richardson P.C.
`axf-ptab@fr.com
`holt2@fr.com
`
`Tiffany Miller
`James Heintz
`DLA PIPER LLP
`tiffany.miller@dlapiper.com
`jim.heintz@dlapiper.com
`
`
`PATENT OWNER:
`
`Robert Asher
`Bruce Sunstein
`Wendy Demoracski
`Sunstein LLP
`rasher@sunsteinlaw.com
`bsunstein@sunsteinlaw.com
`wdemoracski@sunsteinlaw.com
`
`4
`
`
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