`
`
`
`
`
`
`
`IPR2021-01303
`U.S. Patent No. 8,688,028
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`
`
`HYUNDAI MOTOR AMERICA,
`Petitioner
`
`
`
`v.
`
`STRATOSAUDIO, INC.,
`Patent Owner
`
`________________
`
`Case IPR2021-01303
`U.S. Patent No. 8,688,028
`
`________________
`
`
`PATENT OWNER’S MOTION FOR ADMISSION PRO HAC VICE
`OF HALLIE KIERNAN UNDER 37 C.F.R. § 42.10(c)
`
`
`
`
`
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`IPR2021-01303
`U.S. Patent No. 8,688,028
`
`
`I.
`
`Pursuant to 37 C.F.R. §42.10(c), Patent Owner StratosAudio, Inc. (“Patent
`
`Owner”) requests that the Board admit Hallie Kiernan pro hac vice in this
`
`proceeding.
`
`II.
`
`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
`
`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 facts, supported by the attached Declaration of Hallie Kiernan in
`
`Support of Patent Owner’s Motion for Admission Pro Hac Vice (“Hallie Kiernan
`
`Decl.”) establish good cause to admit Ms. Kiernan pro hac vice in this proceeding:
`
`1.
`
`Lead counsel, John Scheibeler, is a registered practitioner (Reg. No.
`
`35,346).
`
`2.
`
`Backup counsel, Jonathan Lamberson, is a registered practitioner
`
`(Reg. No. 57,352).
`
`
`
`
`
`
`
`
`
`
`IPR2021-01303
`U.S. Patent No. 8,688,028
`
`3.
`
`Backup counsel, Ashley T. Brzezinski, is a registered practitioner
`
`(Reg. No. 68,651).
`
`4.
`
`Counsel, Hallie Kiernan, is a litigating attorney with three years of
`
`experience in private practice. Hallie Kiernan Decl. at ¶ 9. Id. Ms. Kiernan is a
`
`member in good standing of the California State Bar. Id. at ¶ 1. Ms. Kiernan has
`
`experience with patent litigation, having served as counsel in complex patent
`
`litigation matters, participated in Markman proceedings, summary judgement
`
`pleadings, and other patent-related pleadings and hearings concerning patent
`
`invalidity and infringement issues. Id. at ¶ 9.
`
`5.
`
` She is also admitted to practice in the U.S. Court of Appeals for the
`
`Federal Circuit, the U.S. District Courts for the Central, Northern and Eastern
`
`Districts of California. Id. at ¶ 1. She has had no suspensions or disbarments from
`
`practice, no application for admission to practice denied, nor any sanctions or
`
`contempt citations. Id. at ¶¶ 2-4.
`
`6. Ms. Kiernan has previously applied to appear (and was granted the
`
`right to appear) pro hac vice in docket number IPR2021-01649, IPR2021-01650,
`
`IPR2021-01651, IPR2021-01652, IPR2021-01653, IPR2021-01654, IPR2021-
`
`00712, IPR2021-00716, IPR2021-00720 and IPR2021-00721. She is concurrently
`
`applying to appear pro hac vice in IPR2021-01267 and IPR2021-01305.
`
`
`
`2
`
`
`
`
`
`
`
`IPR2021-01303
`U.S. Patent No. 8,688,028
`
`
`Otherwise, Ms. Kiernan has not applied to practice before this Board pro hac vice
`
`in any other proceeding. Id. at ¶ 7.
`
`7. Ms. Kiernan is experienced with the subject matter and patent-at-issue
`
`in this proceeding, U.S. Patent No. 8,688,028 (the “’028 patent”), including its
`
`prosecution history and the scientific field to which the ’028 patent is addressed.
`
`Id. at ¶ 8. Ms. Kiernan advised Patent Owner regarding the present IPR
`
`proceeding. Id.
`
`8. Ms. Kiernan has experience advising clients on the validity and
`
`infringement of patent matters, working with experts, and developing strategies
`
`related to the enforcement of many patents. Id. at ¶ 9.
`
`9. Ms. Kiernan has read and will comply with the Office Patent Trial
`
`Guide and the Board’s Rules for Practices for Trials set forth in part 42 of title 37
`
`of the Code of Federal Regulations, and she agrees to be subject to the USPTO
`
`Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq. and to
`
`disciplinary jurisdiction under 37 C.F.R. § 11.19(a). Id. at ¶¶ 5-6.
`
`III.
`
`STATEMENT OF REASONS FOR THE RELIEF REQUESTED
`
`The facts stated above, as supported by the Declaration of Hallie Kiernan,
`
`establish that there is good cause to admit Ms. Kiernan pro hac vice in this
`
`proceeding under 37 C.F.R. § 42.10(c). Patent Owner’s Lead Counsel, John
`
`
`
`3
`
`
`
`
`
`
`
`IPR2021-01303
`U.S. Patent No. 8,688,028
`
`
`Scheibeler, is a registered practitioner (Reg. No. 35,346). Ms. Kiernan is a
`
`litigating attorney who has familiarity with the subject matter at issue in the
`
`proceeding, including the ’028 patent, the parties’ written submissions, and the
`
`cited references. In view of Ms. Kiernan’s knowledge of the ’028 patent, parties’
`
`written submissions and cited references, admission of Ms. Kiernan will ease the
`
`burden on Patent Owner’s existing lead and backup counsels in upcoming actions.
`
`IV.
`
`CONCLUSION
`
`For all of the reasons set forth above, Patent Owner respectfully requests that
`
`the Board admit Hallie Kiernan pro hac vice in this proceeding.
`
`Date: February 1, 2022
`
`Respectfully submitted,
`
`.
`
`/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
`
`Counsel for StratosAudio, Inc.
`
`
`
`
`
`
`
`4
`
`
`
`
`
`
`
`
`
`IPR2021-01303
`U.S. Patent No. 8,688,028
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Patent
`
`Owner’s Motion for Admission Pro Hac Vice of Hallie Kiernan, Exhibit 2013 and
`
`Patent Owner’s Updated Exhibit List were served by filing this document through
`
`the Patent Trial and Appeal Board End to End (PTAB E2E) as well as providing a
`
`providing a copy via email to the following attorneys of record for the Petitioner
`
`listed below:
`
`
`
`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
`
`
`Dated: February 1, 2022
`
`Respectfully submitted,
`
`/John Scheibeler/
`John Scheibeler
`Reg. No. 35,346
`
`
`
`
`
`5
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
