`571-272-7822
`
`Paper 14
`Date: October 6, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`NEONODE SMARTPHONE LLC,
`Patent Owner.
`____________
`
`IPR2021-01041
`Patent 8,095,879 B2
`____________
`
`
`Before MICHELLE N. ANKENBRAND, KARA L. SZPONDOWSKI, and
`CHRISTOPHER L. OGDEN, Administrative Patent Judges.
`
`ANKENBRAND, Administrative Patent Judge.
`
`
`ORDER
`Granting Patent Owner’s Motions for Pro Hac Vice
`Admission of Philip J. Graves, Mark S. Carlson, and Greer N. Shaw
`37 C.F.R. § 42.10
`
`
`
`
`IPR2021-01041
`Patent 8,095,879 B2
`
`
`On September 28, 2021, Patent Owner filed motions for pro hac vice
`admission of Philip J. Graves, Mark. S. Carlson, and Greer N. Shaw in the
`above-identified proceeding. Papers 8, 10, 12 (collectively, “Motions”).
`Patent Owner supports the Motions with the declarations of Messrs. Graves,
`Carlson, and Shaw. Papers 9, 11, 13 (collectively, “Declarations”).1 Patent
`Owner indicates that Petitioner does not oppose the Motions. Paper 8, 7;
`Paper 10, 6; Paper 12, 7.
`Upon review of the record before us, we determine that the
`requirements of 37 C.F.R. § 42.10 have been met and there is good cause to
`admit Messrs. Graves, Carlson, and Shaw pro hac vice.
`
`Accordingly, it is:
`ORDERED that Patent Owner’s Motions for pro hac vice admission
`of Philip J. Graves, Mark S. Carlson, and Greer N. Shaw are granted;
`Messrs. Graves, Carlson, and Shaw are authorized to act only as back-up
`counsel in this proceeding;
`FURTHER ORDERED that Patent Owner is to continue to have a
`registered practitioner represent it as lead counsel for the above-identified
`proceeding;
`FURTHER ORDERED that Messrs. Graves, Carlson, and Shaw are to
`comply with the Patent Trial and Appeal Board’s Consolidated Trial
`
`
`1 Patent Owner filed the Declarations as Papers. We deem this to be
`harmless error, but remind the parties that they must file affidavits and
`declarations as exhibits. See 37 C.F.R. § 42.63(a) (“Evidence consists of
`affidavits, transcripts of depositions, documents, and things. All evidence
`must be filed in the form of an exhibit.”).
`2
`
`
`
`
`
`IPR2021-01041
`Patent 8,095,879 B2
`
`Practice Guide2 (84 Fed, Reg. 64,280 (Nov. 21, 2019)), and the Board’s
`Rules of Practice for Trials, as set forth in Part 42 of Title 37, Code of
`Federal Regulations; and
`FURTHER ORDERED that Messrs. Graves, Carlson, and Shaw shall
`be subject to the Office’s disciplinary jurisdiction under 37 C.F.R.
`§ 11.19(a), and the USPTO Rules of Professional Conduct set forth at
`37 C.F.R. §§ 11.101 et seq.
`
`
`
`2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`3
`
`
`
`
`
`IPR2021-01041
`Patent 8,095,879 B2
`
`FOR PETITIONER:
`
`Erika Arner
`Kevin Rodkey
`Yi Yu
`Wei Yuan
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`erika.arner@finnegan.com
`kevin.rodkey@finnegan.com
`yi.yu@finnegan.com
`wei.yuan@finnegan.com
`
`
`FOR PATENT OWNER:
`
`Robert Asher
`Bruce Sunstein
`Timothy Murphy
`SUNSTEIN LLP
`rasher@sunsteinlaw.com
`bsunstein@sunsteinlaw.com
`tmurphy@sunsteinlaw.com
`
`
`
`4
`
`
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