`____________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`VOLKSWAGEN GROUP OF AMERICA, INC.,
`Petitioner
`v.
`STRATOSAUDIO, INC.,
`Patent Owner
`____________________
`Case No. IPR2021-00716
`U.S. Patent No. 8,688,028
`____________________
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`PETITIONER VOLKSWAGEN GROUP OF AMERICA, INC.’S
`UNOPPOSED MOTION FOR PRO HAC VICE ADMISSION OF
`MARK HANNEMANN PURSUANT TO 37 C.F.R. § 42.10(c)
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`Pursuant to 37 C.F.R. § 42.10(c), Petitioner Volkswagen Group of America,
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`Inc. respectfully requests that the Patent Trial and Appeal Board (“the Board”)
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`admit Mark Hannemann pro hac vice as back-up counsel in this proceeding.
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`Petitioner understands Patent Owner StratosAudio, Inc. to not oppose this motion.
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`I.
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`Statement of Facts Showing There is a Good Cause for the Board to
`Admit Counsel Pro Hac Vice
`“The Board may recognize counsel pro hac vice in a proceeding upon a
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`showing of good cause, subject to the condition that lead counsel be a registered
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`practitioner and to any other conditions as the Board may impose.” 37 C.F.R. §
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`42.10(c). “[W]here lead counsel is a registered practitioner, a motion to appear pro
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`hac vice by counsel who is not a registered practitioner may be granted upon a
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`showing that counsel is an experienced litigating attorney and has an established
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`familiarity with the subject matter at issue in the proceeding.” Id. The facts here
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`establish good cause for the Board to admit Mark Hannemann pro hac vice during
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`this proceeding, so that he may participate in, inter alia, oral hearings, depositions,
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`and conferences with the Board.
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`1.
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`2.
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`Lead Counsel, Eric S. Lucas, is a registered practitioner.
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`As set forth in the accompanying Declaration of Mark Hannemann in
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`Support of Petitioner’s Unopposed Motion for Admission Pro Hac Vice
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`(“Hannemann Decl.”), Mr. Hannemann is admitted to practice law in New York,
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`and in the United States Court of Appeals for the Federal Circuit, the United States
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`District Court for the Eastern District of New York, the United States District
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`Court for the Southern District of New York, and the United States District Court
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`for the Eastern District of Michigan. Hannemann Decl., ¶ 3.
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`3. Mr. Hannemann has not been suspended or disbarred from practice
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`before any court or administrative body, denied admission to practice before any
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`court or administrative body, or sanctioned or cited for contempt by any court or
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`administrative body. Hannemann Decl., ¶¶ 6–8.
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`4. Mr. Hannemann is an experienced litigating attorney. More
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`specifically, he has more than 25 years of litigation experience, with a focus on
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`patent infringement proceedings in federal court. Hannemann Decl., ¶ 4.
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`5. Mr. Hannemann has an established familiarity with the subject matter
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`at issue in this proceeding, having represented Petitioner, Volkswagen Group of
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`America, Inc., as a defendant in a related litigation in the United States District
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`Court for the Western District of Texas, Case No. 6:20-cv-01131-ADA. In the
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`related litigation, Patent Owner has asserted U.S. Patent No. 8,688,028 against
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`Petitioner. Mr. Hannemann’s experience representing Petitioner in the related
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`litigation involving the same patent brought by the same Patent Owner provides
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`him with an established familiarity with the subject matter at issue in the current
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`proceeding. Hannemann Decl., ¶ 5.
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`2
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`6. Mr. Hannemann has attested that he has read and will comply with the
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`Office Patent Trial Practice Guide and the Board’s Rules of Practice for Trials set
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`forth in Part 42 of 37 C.F.R., and that he will be subject to the United States Patent
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`and Trademark Office Code of Professional Responsibility set forth in 37 C.F.R.
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`§§ 11.101 et seq. and disciplinary jurisdiction under 37 C.F.R. § 11.19(a) and the
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`USPTO Rules of Professional Conduct as set forth in Changes to Representation of
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`Others Before the United States Patent and Trademark Office; Final Rule, 78 Fed.
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`Reg. 20180 (Apr. 3, 2013) (effective May 3, 2013). Hannemann Decl., ¶¶ 9–10.
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`7. Mr. Hannemann is also applying to appear pro hac vice in the
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`following inter partes review proceedings involving patents owned by Patent
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`Owner and asserted against Petitioner in the above-referenced district court case:
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`IPR2021-00712, IPR2021-00720, and IPR2021-00721; and he has been admitted
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`pro hac vice in the following inter partes review and covered business method
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`review proceedings in the past three years: CBM2019-00019, CBM2019-00020,
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`CBM2019-00022, CBM2019-00023, CBM2019-00024, IPR2019-01259,
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`IPR2019-01260, IPR2019-01261, IPR2019-01487, and IPR2019-01488.
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`Hannemann Decl., ¶ 11.
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`3
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`II. Conclusion
`The requirement for admission pro hac vice being hereby established,
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`Petitioner respectfully requests that the Board admit Mark Hannemann pro hac vice
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`as backup counsel in this proceeding.
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`Dated: December 23, 2021
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`/Eric S. Lucas/
`Eric S. Lucas (Reg. No. 76,434)
`Shearman & Sterling LLP
`599 Lexington Avenue
`New York, New York 10022
`Tel: (212) 848-4955
`Fax: (646) 848-4955
`Email: Eric.Lucas@shearman.com
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`Lead Counsel for Petitioner
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`4
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that the foregoing Petitioner’s Unopposed
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`Motion for Admission pro hac vice of Mark Hannemann and Declaration in
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`support were served on December 23, 2021, via electronic mail upon the
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`following:
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`John Scheibeler (jscheibeler@whitecase.com)
`Jonathan Lamberson (jonathan.lamberson@whitecase.com)
`Ashley T. Brzezinski (ashley.brzezinski@whitecase.com)
`Hallie Kiernan (hallie.kiernan@whitecase.com)
`WCStratosAudioIPR@whitecase.com
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`/Eric S. Lucas/
`Eric S. Lucas (Reg. No. 76,434)
`Shearman & Sterling LLP
`599 Lexington Avenue
`New York, New York 10022
`Tel: (212) 848-4955
`Fax: (646) 848-4955
`Email: Eric.Lucas@shearman.com
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`Lead Counsel for Petitioner
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