`Filed: April 28, 2022
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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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`QUALCOMM INCORPORATED and
`ZYXEL COMMUNICATIONS CORPORATION1,
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`Petitioners,
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`v.
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`UNM RAINFOREST INNOVATIONS,
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`Patent Owner.
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`PTAB Case No. IPR2021-00375
`Patent 8,265,096 B2
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`PATENT OWNER’S MOTION FOR PRO HAC VICE
`ADMISSION OF HENNING SCHMIDT
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`1 ZyXEL Communications Corporation was joined as a petitioner in this proceeding
`based on a petition and motion for joinder filed in IPR2021-00734, which were
`granted.
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`I.
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`RELIEF REQUESTED
`Patent Owner UNM Rainforest Innovations (“UNMRI” or “Patent Owner”)
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`respectfully requests that the Board recognize and admit Henning Schmidt as
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`counsel pro hac vice to represent UNMRI during the above-captioned proceeding.
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`The bases and support for UNMRI’s requests are as follows.
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`II. TIMING OF UNMRI’S REQUEST
`UNMRI’s motion is being filed no sooner than twenty-one (21) days after the
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`service of the petition.
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`III. GOOD CAUSE BASES FOR UNMRI’S REQUEST
`The Board may recognize counsel pro hac vice during a proceeding upon a
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`showing of good cause, subject to the condition that lead counsel is a registered
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`practitioner and a declaration of the party seeking admission is included with the
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`Request. 37 C.F.R. § 42.10(c). Good cause has been shown where, for example, the
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`attorney for which pro hac vice admission is sought is an experienced patent litigator
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`and has a familiarity with the subject matter at issue in the proceeding, and the
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`admission of the party’s counsel will facilitate the party’s ability to effectively
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`participate in the proceeding. UNMRI respectfully submits that all of these
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`conditions have been met here.
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`UNMRI’s lead counsel, Jay P. Kesan, is a registered practitioner. As
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`demonstrated by his declaration, Mr. Schmidt is an experienced litigator who has
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`litigated patent infringement cases for various parties in federal district courts
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`throughout the United States and before the Court of Appeals for the Federal Circuit.
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`Id. at ¶¶ 3-7. Mr. Schmidt’s legal career spans over fifteen (15) years. See Id. at ¶ 2.
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`Mr. Schmidt has extensive experience in litigating patent infringement cases and has
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`served as lead counsel in such cases. Id. at ¶ 6. Mr. Schmidt has been previously
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`admitted to practice pro hac vice before the Board and has participated in trials
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`before the Board. Id. at ¶ 11.
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`Mr. Schmidt has read and is familiar with the patent at issue in this proceeding
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`and its file history, as well as the prior art and other arguments that have been
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`asserted by Petitioner.
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`UNMRI submits that Mr. Schmidt’s participation will assist it and its lead
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`counsel in effectively participating in this proceeding and will facilitate timely
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`completion of the trial proceeding.
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`Mr. Schmidt has never been suspended, disbarred, sanctioned, or cited for
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`contempt by any court or administrative body, and has never had an application for
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`admission to practice before a court or agency denied. Id. at ¶¶ 7-8. Mr. Schmidt is
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`a member in good standing of the Bar of Texas. Id. at ¶ 2. Mr. Schmidt agrees to
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`be subject to the Office Patent Trial Practice Guide, the Board’s Rules of Practice
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`for Trials set forth in part 42 of 37 C.F.R, and the USPTO’s Rules of Professional
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`Conduct set forth in 37 C.F.R. §§ 11.101 et. seq., and submit to disciplinary
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`jurisdiction under 37 C.F.R. § 11.19(a). Id. at ¶¶ 9-10.
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`IV. CONCLUSION
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`For the foregoing reasons, UNMRI respectfully requests that the PTAB
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`recognize Henning Schmidt as its counsel, pro hac vice, in this proceeding.
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`Dated: April 28, 2022
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`Respectfully submitted,
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`/Jay P. Kesan/
`Jay P. Kesan Reg. No. 37,488
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`Counsel for Patent Owner
`UNM Rainforest Innovations
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§42.6(3)(1), 42.6(e)(4), and 42.25(b), the
`undersigned certifies that a complete copy of Patent Owner’s Amended Notice of
`Deposition of Dr. Sumit Roy was filed electronically through the Patent Trial and
`Appeal Board’s PTAB E2E System and provided, via electronic service, to the
`Petitioner by serving the correspondence address of record as follows:
`Jonathan I. Detrixhe (jdetrixhe@reedsmith.com)
`Jonah D. Mitchell (jmitchell@reedsmith.com)
`Christine M. Morgan (cmorgan@reedsmith.com)
`Peter J. Chassman (pchassman@reedsmith.com)
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`Dated: April 28, 2022
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`/s/ Jay P. Kesan
` Jay P. Kesan
`Reg. No. 37,488
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