Paper No. 53
`Filed: April 28, 2022
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`QUALCOMM INCORPORATED and
`ZYXEL COMMUNICATIONS CORPORATION1,
`
`Petitioners,
`
`v.
`
`UNM RAINFOREST INNOVATIONS,
`
`Patent Owner.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`PTAB Case No. IPR2021-00375
`Patent 8,265,096 B2
`
`
`
`
`PATENT OWNER’S MOTION FOR
`PRO HAC VICE ADMISION OF CECIL E.
`KEY
`
`
`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.
`
`
`Filed: April 28, 2022
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`QUALCOMM INCORPORATED and
`ZYXEL COMMUNICATIONS CORPORATION1,
`
`Petitioners,
`
`v.
`
`UNM RAINFOREST INNOVATIONS,
`
`Patent Owner.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`PTAB Case No. IPR2021-00375
`Patent 8,265,096 B2
`
`
`
`
`PATENT OWNER’S MOTION FOR
`PRO HAC VICE ADMISION OF CECIL E.
`KEY
`
`
`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.
`
`
`
`
`
`I.
`
`RELIEF REQUESTED
`Patent Owner UNM Rainforest Innovations (“UNMRI” or “Patent Owner”)
`
`
`
`respectfully requests that the Board recognize and admit Cecil E. Key as counsel pro
`
`hac vice to represent UNMRI during the above-captioned proceeding. The bases
`
`and support for UNMRI’s requests are as follows.
`
`II. TIMING OF UNMRI’S REQUEST
`UNMRI’s motion is being filed no sooner than twenty-one (21) days after
`
`the service of the petition.
`
`III. GOOD CAUSE BASES FOR UNMRI’S REQUEST
`The Board may recognize counsel pro hac vice during a proceeding upon a
`
`showing of good cause, subject to the condition that lead counsel is a registered
`
`practitioner and a declaration of the party seeking admission is included with the
`
`Request. 37 C.F.R. § 42.10(c). Good cause has been shown where, for example,
`
`the attorney for which pro hac vice admission is sought is an experienced patent
`
`litigator and has a familiarity with the subject matter at issue in the proceeding,
`
`and the admission of the party’s counsel will facilitate the party’s ability to
`
`effectively participate in the proceeding. UNMRI respectfully submits that all of
`
`these conditions have been met here.
`
`UNMRI’s lead counsel, Jay P. Kesan, is a registered practitioner. As
`
`demonstrated by his declaration, Mr. Key is an experienced litigator who has
`
` 2
`
`
`
`
`
`
`
`
`
`litigated patent infringement cases for various parties in federal district courts
`
`throughout the United States and before the Court of Appeals for the Federal
`
`Circuit. Id. at ¶¶ 3-7. Mr. Key’s legal career spans over twenty (20) years. See Id.
`
`at ¶ 2. Mr. Key has extensive experience in litigating patent infringement cases,
`
`and has served as lead counsel in such cases. Id. at ¶ 6. Mr. Key has been
`
`previously admitted to practice pro hac vice before the Board on several occasions.
`
`Mr. Key has previously been admitted to practice pro hac vice in ZTE (USA), Inc.
`
`v. CyWee Group Ltd., IPR2019-00143, Google LLC v. CyWee Group Ltd.,
`
`IPR2018-01257, Google LLC v. CyWee Group Ltd., IPR2018-01258, Unified
`
`Patents Inc., v. Vilox Technologies LLC, IPR2018-00044, Salesforce.com, Inc. v.
`
`VirtualAgility Inc., CBM2013-00024; and Intel Corporation v. FG SRC LLC,
`
`IPR2020-01449. Mr. Key has argued before the Board on several occasions in
`
`these matters and participated in trials of the matters before the Board. Id. at ¶ 11.
`
`Mr. Key has read and is familiar with the patent at issue in this proceeding
`
`and its file history, as well as the prior art and other arguments that have been
`
`asserted by Petitioner. Id. at ¶ 12.
`
`UNMRI submits that Mr. Key’s participation will assist it and its lead
`
`counsel in effectively participating in this proceeding and will facilitate timely
`
`completion of the trial proceeding.
`
` 3
`
`
`
`
`
`
`
`
`
`
`
`
`
`Mr. Key has never been suspended, disbarred, sanctioned, or cited for
`
`contempt by any court or administrative body, and has never had an application
`
`for admission to practice before a court or agency denied. Id. at ¶¶ 7-8. Mr. Key
`
`is a member in good standing of the Bars of Virginia and the District of Columbia.
`
`Id. at ¶ 2. Mr. Key agrees to be subject to the Office Patent Trial Practice Guide,
`
`the Board’s Rules of Practice for Trials set forth in part 42 of 37 C.F.R, and
`
`the USPTO’s Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et.
`
`seq., and submit to disciplinary jurisdiction under 37 C.F.R. § 11.19(a). Id. at ¶¶
`
`9-10.
`
`IV. CONCLUSION
`For the foregoing reasons, UNMRI respectfully requests that the PTAB
`
`recognize Cecil E. Key as its counsel, pro hac vice, in this proceeding.
`
`Dated: April 28, 2022
`
`
`
`Respectfully submitted,
`
`/Jay P. Kesan/
`Jay P. Kesan Reg. No. 37,488
`
`
`
`
`
`Counsel for Patent Owner UNM
`Rainforest Innovations
`
` 4
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`
`
`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 Motion for Pro Hac
`Vice Admission of Cecil E. Key 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)
`
`Dated: April 28, 2022
`
`
`
`
`
`
`/s/ Jay P. Kesan
` Jay P. Kesan
`Reg. No. 37,488
`
`
`
`
` 5
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
