`
`IPR2021-01041
`Patent 8,095,879
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
`
`GOOGLE LLC,
`
`Petitioner
`
`v.
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`NEONODE SMARTPHONE LLC,
`
`Patent Owner
`
`____________
`
`Case IPR2021-01041
`U.S. Patent No. 8,095,879
`
`____________
`
`
`
`UNOPPOSED MOTION FOR PRO HAC VICE ADMISSION FOR MARK S.
`CARLSON ON BEHALF OF PATENT OWNER NEONODE
`SMARTPHONE LLC.
`
`
`
`
`
`
`
`1
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`
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`I. RELIEF REQUESTED
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`IPR2021-01041
`Patent 8,095,879
`
`
`Pursuant to 37 C.F.R. § 42.10(c), Patent Owner Neonode Smartphone LLC
`
`(“Neonode”) respectfully moves the Patent Trial & Appeal Board (“Board”) for the
`
`pro hac vice admission of Mark S. Carlson in this proceeding.
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`II. GOVERNING LAW, RULES, AND PRECEDENT
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`The Board is authorized to recognize counsel pro hac vice pursuant to 37
`
`C.F.R. § 42.10(c), which provides that:
`
`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 Board has stated that a motion for admission pro hac vice should
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`
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`include a “statement of facts showing there is good cause for the Board to
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`recognize counsel pro hac vice during the proceeding” and “[b]e accompanied by
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`an affidavit or declaration of the individual seeking to appear attesting to the
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`following
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`i. Membership in good standing of the Bar of at least one State or the
`
`District of Columbia;
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`
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`2
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`
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`No suspensions or disbarments from practice before any court or
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`IPR2021-01041
`Patent 8,095,879
`
`
`ii.
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`administrative body;
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`iii. No application for admission to practice before any court or
`
`administrative body ever denied;
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`iv. No sanctions or contempt citations imposed by any court or
`
`administrative body;
`
`v.
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`The individual seeking to appear has read and will comply with the
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`Office Patent Trial Practice Guide and the Board’s Rules of Practice for
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`Trials set forth in part 42 of 37 C.F.R.;
`
`vi.
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`The individual will be subject to the USPTO Rules of Professional
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`Conduct set forth in 37 C.F.R. §§ 11.101 et seq. and disciplinary
`
`jurisdiction under 37 C.F.R. § 11.19(a);
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`vii. All other proceedings before the Office for which the individual has
`
`applied to appear pro hac vice in the last three (3) years; and
`
`viii. Familiarity with the subject matter at issue in the proceeding.”
`
`Unified Patents, Inc. v. Parallel Iron, LLC, IPR 2013-00639 (MPT) (Paper 7,
`
`pages 3-4).
`
`
`
`3
`
`
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`III. STATEMENT OF FACTS
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`IPR2021-01041
`Patent 8,095,879
`
`
`Based on the following facts, supported by the attached declaration,
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`Neonode submits that Mr. Carlson meets the requirements for pro hac vice
`
`admission and requests that Mr. Carlson be admitted in this proceeding.
`
`Mr. Carlson has over thirty years of experience as a litigation attorney
`
`specializing in patent litigation and representing clients in patent litigation matters
`
`in the United States District Court for the Western District of Washington and the
`
`United States Court of Appeals for the Federal Circuit, and pro hac vice in
`
`numerous other jurisdictions.
`
`Mr. Carlson is very familiar with U.S. Patent No. 8,095,879, as well as the
`
`legal subject matter, technical subject matter, and prior art discussed in Petitioner’s
`
`Request for Inter Partes Review of U.S. Patent No. 8,095,879, which forms the
`
`basis for this proceeding. Mr. Carlson has personally reviewed the patent at issue,
`
`as well as its prosecution history and the above-referenced petition, with
`
`accompanying declarations and exhibits. Mr. Carlson has been and continues to be
`
`actively involved with strategic, factual, and technical aspects of this matter.
`
`Mr. Carlson is a member in good standing of the State Bar of Washington.
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`Mr. Carlson is admitted to practice before the United States District Court for the
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`Western District of Washington and the United States Courts of Appeals for the
`
`Federal Circuit.
`
`
`
`4
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`
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`Mr. Carlson was admitted pro hac vice in Samsung Electronics Co. Ltd., et.
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`IPR2021-01041
`Patent 8,095,879
`
`
`al. 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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`Mr. Carlson has never been suspended or disbarred from practice before any
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`court or administrative body.
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`Mr. Carlson has never had a court or administrative body deny his
`
`application for admission to practice.
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`Mr. Carlson has never been sanctioned or cited for contempt by any court or
`
`administrative body.
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`Mr. Carlson has 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.
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`Mr. Carlson agrees to be subject to the United States Patent and Trademark
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`Office 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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`IV. GOOD CAUSE EXISTS FOR THE PRO HAC VICE ADMISSION OF
`MR. CARLSON IN THIS PROCEEDING
`
`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 be a registered
`
`practitioner and any other conditions the Board may impose. 37 C.F.R. § 42.10(c).
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`
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`5
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`
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`Neonode’s lead counsel in matters before the Patent Trial and Appeals Board,
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`IPR2021-01041
`Patent 8,095,879
`
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`Robert M. Asher (No. 30,445), is a registered practitioner. Based on the facts
`
`contained herein, good cause exists to admit Mr. Carlson pro hac vice.
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`Mr. Carlson has over thirty years of experience as a litigation attorney,
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`specializing in patent litigation. Mr. Carlson has represented clients in matters
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`related to electrical and computer science arts, among others, and has significant
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`experience in patent litigation matters. Mr. Carlson currently represents Neonode
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`in 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.). Mr. Carlson is actively involved with
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`the strategy and fact development in these patent litigation matters. In view of Mr.
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`Carlson’s extensive knowledge of the subject matter of this proceeding, and in
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`view of the interrelatedness of this proceeding and the co-pending district court
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`litigation, Neonode has a substantial need for Mr. Carlson’s pro hac vice admission
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`and his involvement in the continued prosecution of this proceeding.
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`Petitioner takes no position on this motion.
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`
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`6
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`
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`V. CONCLUSION
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`IPR2021-01041
`Patent 8,095,879
`
`
`For the foregoing reasons, Neonode respectfully requests that Mark S.
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`
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`Carlson be admitted pro hac vice.
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`Dated: September 28, 2021
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`
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`
`
`/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
`
`
`
`7
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`
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`IPR2021-01041
`Patent 8,095,879
`
`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.
`
`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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