`
`
`
`
`
`IPR2021-00721
`U.S. Patent No. 8,166,081
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`VOLKSWAGEN GROUP OF AMERICA, INC.,
`Petitioner
`
`
`
`v.
`
`STRATOSAUDIO, INC.,
`Patent Owner
`
`________________
`
`Case IPR2021-00721
`U.S. Patent No. 8,166,081
`
`________________
`
`
`PATENT OWNER’S MOTION FOR ADMISSION PRO HAC VICE
`OF HALLIE KIERNAN UNDER 37 C.F.R. § 42.10(c)
`
`
`
`
`
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`IPR2021-00721
`U.S. Patent No. 8,166,081
`
`
`I.
`
`Pursuant to 37 C.F.R. §42.10(c), Patent Owner StratosAudio, Inc. (“Patent
`
`Owner”) requests that the Board admit Hallie Kiernan pro hac vice in this
`
`proceeding.
`
`II.
`
`STATEMENT OF FACTS SHOWING GOOD CAUSE FOR THE
`BOARD TO RECOGNIZE COUNSEL PRO HAC VICE IN THE
`PROCEEDING
`Under 37 C.F.R. §42.10(c), the Board “may recognize counsel pro hac vice
`
`during a proceeding upon a showing of good cause, subject to the condition that
`
`lead counsel be a registered practitioner and to any other conditions as the Board
`
`may impose. For example, where the lead counsel is a registered practitioner, a
`
`motion to appear pro hac vice by counsel who is not a registered practitioner may
`
`be granted upon showing that counsel is an experienced litigating attorney and has
`
`an established familiarity with the subject matter at issue in the proceeding.”
`
`The facts, supported by the attached Declaration of Hallie Kiernan in
`
`Support of Patent Owner’s Motion for Admission Pro Hac Vice (“Hallie Kiernan
`
`Decl.”) establish good cause to admit Ms. Kiernan pro hac vice in this proceeding:
`
`1.
`
`Lead counsel, John Scheibeler, is a registered practitioner (Reg. No.
`
`35,346).
`
`2.
`
`Backup counsel, Jonathan Lamberson, is a registered practitioner
`
`(Reg. No. 57,352).
`
`
`
`
`
`
`
`
`
`
`IPR2021-00721
`U.S. Patent No. 8,166,081
`
`3.
`
`Backup counsel, Ashley T. Brzezinski, is a registered practitioner
`
`(Reg. No. 68,651).
`
`4.
`
`Counsel, Hallie Kiernan, is a litigating attorney with three years of
`
`experience in private practice. Hallie Kiernan Decl. at ¶ 9. Id. Ms. Kiernan is a
`
`member in good standing of the California State Bar. Id. at ¶ 1. Ms. Kiernan has
`
`experience with patent litigation, having served as counsel in complex patent
`
`litigation matters, participated in Markman proceedings, summary judgement
`
`pleadings, and other patent-related pleadings and hearings concerning patent
`
`invalidity and infringement issues. Id. at ¶ 9.
`
`5.
`
` She is also admitted to practice in the U.S. Court of Appeals for the
`
`Federal Circuit, the U.S. District Courts for the Central, Northern and Eastern
`
`Districts of California. Id. at ¶ 1. She has had no suspensions or disbarments from
`
`practice, no application for admission to practice denied, nor any sanctions or
`
`contempt citations. Id. at ¶¶ 2-4.
`
`6. Ms. Kiernan has previously applied to appear pro hac vice in docket
`
`number
`
`IPR2021-01649,
`
`IPR2021-01650,
`
`IPR2021-01650,
`
`IPR2021-01652,
`
`IPR2021-01653 and IPR2021-01654. She is concurrently applying to appear pro
`
`hac vice in IPR2021-00712, IPR2021-00716 and IPR2021-00720. Otherwise, Ms.
`
`
`
`2
`
`
`
`
`
`
`
`IPR2021-00721
`U.S. Patent No. 8,166,081
`
`
`Kiernan has not applied to practice before this Board pro hac vice in any other
`
`proceeding. Id. at ¶ 7.
`
`7. Ms. Kiernan is experienced with the subject matter and patent-at-issue
`
`in this proceeding, U.S. Patent No. 8,166,081 (the “’081 patent”), including its
`
`prosecution history and the scientific field to which the ’081 patent is addressed.
`
`Id. at ¶ 8. Ms. Kiernan advised Patent Owner regarding the present IPR
`
`proceeding. Id.
`
`8. Ms. Kiernan has experience advising clients on the validity and
`
`infringement of patent matters, working with experts, and developing strategies
`
`related to the enforcement of patents. Id. at ¶ 9.
`
`9. Ms. Kiernan has read and will comply with the Office Patent Trial
`
`Guide and the Board’s Rules for Practices for Trials set forth in part 42 of title 37
`
`of the Code of Federal Regulations, and she agrees to be subject to the USPTO
`
`Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq. and to
`
`disciplinary jurisdiction under 37 C.F.R. § 11.19(a). Id. at ¶¶ 5-6.
`
`III.
`
`STATEMENT OF REASONS FOR THE RELIEF REQUESTED
`
`The facts stated above, as supported by the Declaration of Hallie Kiernan,
`
`establish that there is good cause to admit Ms. Kiernan pro hac vice in this
`
`proceeding under 37 C.F.R. § 42.10(c). Patent Owner’s Lead Counsel, John
`
`
`
`3
`
`
`
`
`
`
`
`IPR2021-00721
`U.S. Patent No. 8,166,081
`
`
`Scheibeler, is a registered practitioner (Reg. No. 35,346). Ms. Kiernan is a
`
`litigating attorney who has familiarity with the subject matter at issue in the
`
`proceeding, including the ’081 patent, the parties’ written submissions, and the
`
`cited references. In view of Ms. Kiernan’s knowledge of the ’081 patent, parties’
`
`written submissions and cited references, admission of Ms. Kiernan will ease the
`
`burden on Patent Owner’s existing lead and backup counsels in upcoming actions.
`
`IV.
`
`CONCLUSION
`
`For all of the reasons set forth above, Patent Owner respectfully requests that
`
`the Board admit Hallie Kiernan pro hac vice in this proceeding.
`
`Date: December 20, 2021
`
`Respectfully submitted,
`
`.
`
`/John Scheibeler/
`John Scheibeler
`Reg. No. 35,346
`White & Case LLP
`1221 Avenue of the Americas
`New York, NY 10020-1095
`jscheibeler@whitecase.com
`Phone: 212-819-8200
`
`Counsel for StratosAudio, Inc.
`
`
`
`
`
`
`
`4
`
`
`
`
`
`
`
`
`
`IPR2021-00721
`U.S. Patent No. 8,166,081
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Patent
`
`Owner’s Motion for Admission Pro Hac Vice of Hallie Kiernan and Exhibit 2018
`
`were served by filing this document through the Patent Trial and Appeal Board
`
`End to End (PTAB E2E) as well as providing a providing a copy via email to the
`
`following attorneys of record for the Petitioner listed below:
`
`Eric S. Lucas (Reg. No. 76,434)
`David J. Cooperberg (Reg. No. 63,250)
`Mark A. Hannemann (Pro Hac Vice Pending)
`Thomas R. Makin (Pro Hac Vice Pending)
`SHEARMAN & STERLING LLP
`599 Lexington Avenue
`New York, New York 10022
`Phone: (212) 848-4955
`eric.lucas@shearman.com
`david.cooperberg@shearman.com
`mark.hannemann@shearman.com
`thomas.makin@shearman.com
`VW-Stratos@Shearman.com
`
`
`Dated: December 20, 2021
`
`Respectfully submitted,
`
`/John Scheibeler/
`John Scheibeler
`Reg. No. 35,346
`
`
`
`
`
`5
`
`
`
`