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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`GOOGLE LLC,
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`Petitioner
`
`v.
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`NEONODE SMARTPHONE LLC,
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`Patent Owner
`
`____________
`
`Case IPR2021-01041
`U.S. Patent No. 8,095,879
`
`____________
`
`DECLARATION OF MARK S. CARLSON IN SUPPORT OF
`UNOPPOSED MOTION TO APPEAR PRO HAC VICE
`ON BEHALF OF
`PATENT OWNER NEONODE SMARTPHONE LLC.
`
`
`Google LLC v. Neonode
`IPR2021-01041 (US 8,095,879)
`
`
`
`Declaration of Mark S. Carlson in Support of Motion to Appear
`Pro Hac Vice on Behalf of Patent Owner Neonode Smartphone LLC.
`
`
`I, Mark S. Carlson, do hereby declare:
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`1.
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`I am Of Counsel at the law firm of Hagens Berman Sobol Shapiro
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`LLP (“Hagens”). Lead counsel in the inter partes review proceedings is Robert M.
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`Asher, a Partner at Sunstein LLP (“Sunstein”), who is registered to practice before
`
`the U.S. Patent & Trademark Office (“USPTO”) and holds Registration No.
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`30,445. Backup counsel is Bruce D. Sunstein, a Partner at Sunstein, who is
`
`registered to practice before the USPTO and holds Registration No. 27,234;
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`Timothy M. Murphy, a Partner at Sunstein, who is registered to practice before the
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`USPTO and holds Registration No. 33,198; Arne Hans, an Associate at Sunstein,
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`who is registered to practice before the USPTO and holds Registration No. 72,846;
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`Philip J. Graves, Of Counsel at Hagens, pro hac vice to be filed; and Greer N.
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`Shaw, Of Counsel at Hagens, pro hac vice to be filed. With respect to these
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`proceedings, I will work closely with Mr. Asher, Mr. Sunstein, Mr. Murphy, Mr.
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`Hans, Mr. Graves, and Mr. Shaw.
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`2.
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`I hold a Bachelor of Arts degree from the University of Washington
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`and a Doctor of Jurisprudence degree in Law from the University of Puget Sound
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`School of Law.
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`3.
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`I have more than 30 years of experience as a litigation attorney
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`specializing in patent litigation and representing clients in patent litigation matters
`
`1
`
`Google LLC v. Neonode
`IPR2021-01041 (US 8,095,879)
`
`
`
`Declaration of Mark S. Carlson in Support of Motion to Appear
`Pro Hac Vice on Behalf of Patent Owner Neonode Smartphone LLC.
`
`in the United States District Court for the Western District of Washington and the
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`United States Court of Appeals for the Federal Circuit. My experience includes
`
`several matters in the electrical and computer science arts. I have particular
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`experience relevant to the technological and legal matters at issue in this
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`proceeding, including representing the Patent Owner Neonode Smartphone LLC
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`(“Neonode”) in a number of related matters. For example, I represent Neonode in
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`co-pending district court litigation, involving U.S. Patent No. 8,095,879, in
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`Neonode Smartphone LLC v. Apple Inc., 6:20-cv-00505 (W.D.Tex.) and Neonode
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`Smartphone LLC v. Samsung Electronics Co. Ltd. and Samsung Electronics
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`America, Inc., 6:20-cv-00507 (W.D.Tex.). I am, therefore, an experienced patent
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`litigation attorney with particular expertise that is pertinent to the proceedings.
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`Neonode desires, and has a need, to be represented in certain aspects of these
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`proceedings by an experienced patent litigation attorney who has particular
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`expertise that is relevant to the issues involved.
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`4.
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`I am very familiar with U.S. Patent No. 8,095,879, as well as the legal
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`subject matter, technical subject matter, and prior art discussed in the Petitioner’s
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`Request for Inter Partes Review of U.S. Patent No. 8,095,879. I have personally
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`reviewed the patent at issue, as well as its prosecution history and the above-
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`referenced petition with accompanying declarations and exhibits. I have been and
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`2
`
`Google LLC v. Neonode
`IPR2021-01041 (US 8,095,879)
`
`
`
`Declaration of Mark S. Carlson in Support of Motion to Appear
`Pro Hac Vice on Behalf of Patent Owner Neonode Smartphone LLC.
`
`continue to be actively involved with strategic, factual, and technical aspects of
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`this matter.
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`5.
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`I am a member in good standing of the State Bar of Washington. I am
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`admitted to practice before the United States District Court for the Western District
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`of Washington and the United States Courts of Appeals for the Federal Circuit.
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`6.
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`I was admitted Pro Hac Vice in Samsung Electronics Co. Ltd., et. al.
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`v. Neonode Smartphone LLC, IPR2021-00144 (Patent 8,095,879) and Samsung
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`Electronics Co. Ltd., et. al. v. Neonode Smartphone LLC, IPR2021-00145 (Patent
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`8,812,993) on February 26, 2021.
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`7.
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`I have never been suspended or disbarred from practice before any
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`court or administrative body.
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`8.
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`I have never had a court or administrative body deny my application
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`for admission to practice.
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`9.
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`I have never been sanctioned or cited for contempt by any court or
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`administrative body.
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`10.
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`I have read and will comply with the Office Patent Trial Practice
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`Guide and the Board’s Rules of Practice for Trials set forth in part 42 of 37 C.F.R.
`
`3
`
`Google LLC v. Neonode
`IPR2021-01041 (US 8,095,879)
`
`
`
`Declaration of Mark S. Carlson in Support of Motion to Appear
`Pro Hac Vice on Behalf of Patent Owner Neonode Smartphone LLC.
`
`
`11.
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`I agree to be subject to the United States Patent and Trademark Office
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`Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et. seq. and
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`disciplinary jurisdiction under 37 C.F.R. § 11.19(a).
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`12.
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`I declare that all statements made herein of my own knowledge are
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`true and that all statements made on information and belief are believed to be true,
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`and further that these statements were made with the knowledge that willful, false
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`statements and the like so made are punishable by fine or imprisonment, or both,
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`under Section 1001 of Title 18 of the United States Code.
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`Dated: September 24, 2021
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`4
`
`Google LLC v. Neonode
`IPR2021-01041 (US 8,095,879)
`
`
`
`Declaration of Mark S. Carlson in Support of Motion to Appear
`Pro Hac Vice on Behalf of Patent Owner Neonode Smartphone LLC.
`
`CERTIFICATE OF SERVICE
`It is certified that on September 28, 2021, the foregoing Motion to Appear
`Pro Hac Vice on behalf of Patent Owner Neonode Smartphone LLC and
`supporting materials in its entirety has been served on the Petitioner as provided in
`37 C.F.R. § 42.6(e) via electronic mail at Erika.arner@finnegan.com,
`kevin.rodkey@finnegan.com, yi.yu@finnegan.com, and Google-Neonode-
`IPR@finnegan.com.
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`Dated: September 28, 2021
`
`/Robert M. Asher, #30,445/
`Robert M. Asher
`Reg. No. 30,445
`Sunstein LLP
`100 High Street
`Boston, MA 02110-2321
`617 443 9292 (phone)
`Counsel for Patent Owner
`
`
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