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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. 8,812,993
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`Title: USER INTERFACE
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`Inter Partes Review No. IPR2021-00145
`____________
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`DECLARATION OF MARK S. CARLSON IN SUPPORT OF
`UNOPPOSED MOTION TO APPEAR PRO HAC VICE
`ON BEHALF OF
`PATENT OWNER NEONODE SMARTPHONE LLC.
`
`
`Samsung and Apple v. Neonode
`IPR2021-00145 (US 8,812,993)
`
`

`

`Declaration of Mark S. Carlson in Support of Motion to Appear
`Pro Hac Vice on Behalf of Patent Owner Neonode Smartphone LLC.
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`I, Mark S. Carlson, do hereby declare:
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`1.
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`I am Of Counsel at the law firm of Hagens Berman Sobol Shapiro LLP
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`(“Hagens”). Lead counsel in the inter partes review proceedings is Robert M. Asher, a Partner at
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`Sunstein LLP (“Sunstein”), who is registered to practice before the U.S. Patent & Trademark
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`Office (“USPTO”) and holds Registration No. 30,445. Backup counsel is Bruce D. Sunstein, a
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`Partner at Sunstein, who is registered to practice before the USPTO and holds Registration No.
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`27,234; Wendy J. Demoracski, an Associate at Sunstein, who is registered to practice before the
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`USPTO and holds Registration No. 76,185; Philip J. Graves, Of Counsel at Hagens, pro hac vice
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`to be filed; and Greer N. Shaw, Of Counsel at Hagens, pro hac vice to be filed. With respect to
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`these proceedings, I will work closely with Mr. Asher, Mr. Sunstein, Ms. Demoracski, Mr.
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`Graves, and Mr. Shaw.
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`2.
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`I hold a Bachelor of Arts degree from the University of Washington and a Doctor
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`of Jurisprudence degree in Law from the University of Puget Sound School of Law.
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`3.
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`I have more than 30 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. My experience includes several matters in the electrical and computer science
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`arts. I have particular experience relevant to the technological and legal matters at issue in this
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`proceeding, including representing the Patent Owner Neonode Smartphone LLC (“Neonode”) in
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`a number of related matters. For example, I represent Neonode in co-pending district court
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`litigation, involving U.S. Patent No. 8,812,993, in Neonode Smartphone LLC v. Apple Inc., 6:20-
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`cv-00505 (W.D.Tex.) and Neonode Smartphone LLC v. Samsung Electronics Co. Ltd. and
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`Samsung Electronics America, Inc., 6:20-cv-00507 (W.D.Tex.). I am, therefore, an experienced
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`1
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`Samsung and Apple v. Neonode
`IPR2021-00145 (US 8,812,993)
`
`
`

`

`Declaration of Mark S. Carlson in Support of Motion to Appear
`Pro Hac Vice on Behalf of Patent Owner Neonode Smartphone LLC.
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`patent litigation attorney with particular expertise that is pertinent to the proceedings. Neonode
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`desires, and has a need, to be represented in certain aspects of these proceedings by an
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`experienced patent litigation attorney who has particular expertise that is relevant to the issues
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`involved.
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`4.
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`I am very familiar with U.S. Patent No. 8,812,993, as well as the legal subject
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`matter, technical subject matter, and prior art discussed in the Petitioner’s Request for Inter
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`Partes Review of U.S. Patent No. 8,812,993. I have personally reviewed the patent at issue, as
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`well as its prosecution history and the above-referenced petition with accompanying declarations
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`and exhibits. I have been and continue to be actively involved with strategic, factual, and
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`technical aspects of this matter.
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`5.
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`I am a member in good standing of the State Bar of Washington. I am admitted to
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`practice before the United States District Court for the Western District of Washington and the
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`United States Courts of Appeals for the Federal Circuit.
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`6.
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`There have been no other proceedings before the Office for which I have applied
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`to appear pro hac vice in the last three (3) years.
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`7.
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`I have never been suspended or disbarred from practice before any court or
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`administrative body.
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`8.
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`I have never had a court or administrative body deny my application for
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`admission to practice.
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`9.
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`I have never been sanctioned or cited for contempt by any court or administrative
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`body.
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`10.
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`I have 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.
`
`2
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`Samsung and Apple v. Neonode
`IPR2021-00145 (US 8,812,993)
`
`
`

`

`Declaration of Mark S. Carlson in Support of Motion to Appear
`Pro Hac Vice on Behalf of Patent Owner Neonode Smartphone LLC.
`
`11.
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`I agree to be subject to the United States Patent and Trademark Office Code of
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`Professional Responsibility set forth in 37 CPR. §§ 11.101 et. seq. and disciplinaryjurisdietion
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`under 37 C.F.R. § 11.19(a).
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`12.
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`I declare that all statements made herein of my own knowledge are true and that
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`all statements made on information and belief are believed to be true, and further that these
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`statements were made with the knowledge that willful, false statements and the like so made are
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`punishable by fine or imprisonment, or both, under Section 1001 of Title 18 of the United States
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`Code.
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`Dated: “2’7 I?"
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`Respe ful y submitted,
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` Mark . Carlson
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`Hagens Berman Sobol Shapiro LLP
`1301 Second Avenue, Suite 2000
`Seattle, WA 98101
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`206 623 7292 (phone)
`marke®hbsslawcom
`Counsel for Patent Owner
`
`Samsung and Apple v. Neonode
`IPR2021-00145 (us 8,812,993)
`
`

`

`Declaration of Mark S. Carlson in Support of Motion to Appear
`Pro Hac Vice on Behalf of Patent Owner Neonode Smartphone LLC.
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`CERTIFICATE OF SERVICE
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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
`IPR50095-0016P1@fr.com (referencing No. 50095-0016IP1 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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`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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`