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`IPR2021-01267
`U.S. Patent No. 8,166,081
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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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`HYUNDAI MOTOR AMERICA,
`Petitioner
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`v.
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`STRATOSAUDIO, INC.,
`Patent Owner
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`________________
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`Case IPR2021-01267
`U.S. Patent No. 8,166,081
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`________________
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`PATENT OWNER’S MOTION FOR ADMISSION PRO HAC VICE
`OF HALLIE KIERNAN UNDER 37 C.F.R. § 42.10(c)
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`STATEMENT OF PRECISE RELIEF REQUESTED
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`IPR2021-01267
`U.S. Patent No. 8,166,081
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`I.
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`Pursuant to 37 C.F.R. §42.10(c), Patent Owner StratosAudio, Inc. (“Patent
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`Owner”) requests that the Board admit Hallie Kiernan pro hac vice in this
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`proceeding.
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`II.
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`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
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`during a proceeding upon a showing of good cause, subject to the condition that
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`lead counsel be a registered practitioner and to any other conditions as the Board
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`may impose. For example, where the lead counsel is a registered practitioner, a
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`motion to appear pro hac vice by counsel who is not a registered practitioner may
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`be granted upon showing that counsel is an experienced litigating attorney and has
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`an established familiarity with the subject matter at issue in the proceeding.”
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`The facts, supported by the attached Declaration of Hallie Kiernan in
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`Support of Patent Owner’s Motion for Admission Pro Hac Vice (“Hallie Kiernan
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`Decl.”) establish good cause to admit Ms. Kiernan pro hac vice in this proceeding:
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`1.
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`Lead counsel, John Scheibeler, is a registered practitioner (Reg. No.
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`35,346).
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`2.
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`Backup counsel, Jonathan Lamberson, is a registered practitioner
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`(Reg. No. 57,352).
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`IPR2021-01267
`U.S. Patent No. 8,166,081
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`3.
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`Backup counsel, Ashley T. Brzezinski, is a registered practitioner
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`(Reg. No. 68,651).
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`4.
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`Counsel, Hallie Kiernan, is a litigating attorney with three years of
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`experience in private practice. Hallie Kiernan Decl. at ¶ 9. Id. Ms. Kiernan is a
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`member in good standing of the California State Bar. Id. at ¶ 1. Ms. Kiernan has
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`experience with patent litigation, having served as counsel in complex patent
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`litigation matters, participated in Markman proceedings, summary judgement
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`pleadings, and other patent-related pleadings and hearings concerning patent
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`invalidity and infringement issues. Id. at ¶ 9.
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`5.
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` She is also admitted to practice in the U.S. Court of Appeals for the
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`Federal Circuit, the U.S. District Courts for the Central, Northern and Eastern
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`Districts of California. Id. at ¶ 1. She has had no suspensions or disbarments from
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`practice, no application for admission to practice denied, nor any sanctions or
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`contempt citations. Id. at ¶¶ 2-4.
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`6. Ms. Kiernan has previously applied to appear (and was granted the
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`right to appear) pro hac vice in docket number IPR2021-01649, IPR2021-01650,
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`IPR2021-01651, IPR2021-01652, IPR2021-01653, IPR2021-01654, IPR2021-
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`00712, IPR2021-00716, IPR2021-00720 and IPR2021-00721. She is concurrently
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`applying to appear pro hac vice in IPR2021-01303, and IPR2021-01305.
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`IPR2021-01267
`U.S. Patent No. 8,166,081
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`Otherwise, Ms. Kiernan has not applied to practice before this Board pro hac vice
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`in any other proceeding. Id. at ¶ 7.
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`7. Ms. Kiernan is experienced with the subject matter and patent-at-issue
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`in this proceeding, U.S. Patent No. 8,166,081 (the “’081 patent”), including its
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`prosecution history and the scientific field to which the ’081 patent is addressed.
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`Id. at ¶ 8. Ms. Kiernan advised Patent Owner regarding the present IPR
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`proceeding. Id.
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`8. Ms. Kiernan has experience advising clients on the validity and
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`infringement of patent matters, working with experts, and developing strategies
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`related to the enforcement of patents. Id. at ¶ 9.
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`9. Ms. Kiernan has read and will comply with the Office Patent Trial
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`Guide and the Board’s Rules for Practices for Trials set forth in part 42 of title 37
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`of the Code of Federal Regulations, and she agrees to be subject to the USPTO
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`Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq. and to
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`disciplinary jurisdiction under 37 C.F.R. § 11.19(a). Id. at ¶¶ 5-6.
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`III.
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`STATEMENT OF REASONS FOR THE RELIEF REQUESTED
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`The facts stated above, as supported by the Declaration of Hallie Kiernan,
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`establish that there is good cause to admit Ms. Kiernan pro hac vice in this
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`proceeding under 37 C.F.R. § 42.10(c). Patent Owner’s Lead Counsel, John
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`IPR2021-01267
`U.S. Patent No. 8,166,081
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`Scheibeler, is a registered practitioner (Reg. No. 35,346). Ms. Kiernan is a
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`litigating attorney who has familiarity with the subject matter at issue in the
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`proceeding, including the ’081 patent, the parties’ written submissions, and the
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`cited references. In view of Ms. Kiernan’s knowledge of the ’081 patent, parties’
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`written submissions and cited references, admission of Ms. Kiernan will ease the
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`burden on Patent Owner’s existing lead and backup counsels in upcoming actions.
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`IV.
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`CONCLUSION
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`For all of the reasons set forth above, Patent Owner respectfully requests that
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`the Board admit Hallie Kiernan pro hac vice in this proceeding.
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`Date: February 1, 2022
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`Respectfully submitted,
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`.
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`/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
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`Counsel for StratosAudio, Inc.
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`IPR2021-01267
`U.S. Patent No. 8,166,081
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Patent
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`Owner’s Motion for Admission Pro Hac Vice of Hallie Kiernan, Exhibit 2013 and
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`Patent Owner’s Updated Exhibit List were served by filing this document through
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`the Patent Trial and Appeal Board End to End (PTAB E2E) as well as providing a
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`providing a copy via email to the following attorneys of record for the Petitioner
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`listed below:
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`Ryan Yagura (Reg. No. 47,191)
`Nicholas J. Whilt (Reg. No. 72,081)
`Caitlin P. Hogan (Reg. No. 61,515)
`Clarence A. Rowland (Reg. No. 73,775)
`O’Melveny & Myers LLP
`400 South Hope Street, 18th Floor
`Los Angeles, CA 90071
` (213) 430-6000
`ryagura@omm.com
`nwhilt@omm.com
`chogan@omm.com
`crowland@omm.com
`StratosAudioHyundaiOMM@omm.com
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`Dated: February 1, 2022
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`Respectfully submitted,
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`/John Scheibeler/
`John Scheibeler
`Reg. No. 35,346
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