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`Paper No. 10
`Filed: June 2, 2021
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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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`ZYXEL COMMUNICATIONS CORPORATION,
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`Petitioner,
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`v.
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`UNM RAINFOREST INNOVATIONS,
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`Patent Owner.
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`IPR2021-00734
`Patent No. 8,265,096
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`PATENT OWNER’S MOTION FOR PRO HAC VICE ADMISSION OF
`HENNING SCHMIDT
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`Patent Owner UNM Rainforest Innovations (“UNM” 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 UNM during the above-captioned proceeding.
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`The bases and support for UNM’s requests are as follows.
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`1. Timing of UNM’s Request
`UNM’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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`2. Good Cause Bases for UNM’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,
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`the attorney for which pro hac vice admission is sought is an experienced patent
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`litigator and has a familiarity with the subject matter at issue in the proceeding, and
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`the admission of the party’s counsel will facilitate the party’s ability to effectively
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`participate in the proceeding. UNM respectfully submits that all of these conditions
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`have been met here.
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`UNM’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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`2
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`throughout the United States and before the Court of Appeals for the Federal
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`Circuit. Id. at ¶¶ 3-7. Mr. Schmidt’s legal career spans over fifteen (15) years.
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`See Id. at ¶ 2. Mr. Schmidt has extensive experience in litigating patent
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`infringement cases and has served as lead counsel in such cases. Id. at ¶ 6. Mr.
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`Schmidt has been previously admitted to practice pro hac vice before the Board
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`and has participated in trials before the Board. Id. at ¶ 11.
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`Mr. Schmidt has read and is familiar with the patent at issue in this
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`proceeding and its file history, as well as the prior art and other arguments that
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`have been asserted by Petitioner.
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`UNM 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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`Dated: June 2, 2021
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`3. Conclusion
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`For the foregoing reasons, UNM 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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`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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`4
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e)(4) and 42.25(b), the undersigned certifies that
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`on April 29, 2021, a complete copy of Patent Owner’s Motion for Pro Hac Vice
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`Admission of Henning Schmidt was filed electronically through the Patent Trial and
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`Appeal Board’s PTABE2E System and provided, via electronic service, to the
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`Petitioner by serving the correspondence address of record as follows:
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`Jonathan I. Detrixhe (jdetrixhe@reedsmith.com)
`Jonah D. Mitchell (jmitchell@reedsmith.com)
`Christine M. Morgan (cmorgan@reedsmith.com)
`Peter J. Chassman (pchassman@reedsmith.com)
`Ismail C. Kuru (ikuru@reedsmith.com)
`Martha Hopkins (mhopkins@sjclawpc.com)
`Victoria Hao (vhao@sjclawpc.com)
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`Dated: June 2, 2021
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`/Jay P. Kesan /
`Jay P. Kesan
`Reg. No. 37,488
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`5
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