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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
` APPLE INC., SAMSUNG ELECTRONICS CO., LTD., and SAMSUNG
`ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
` SMART MOBILE TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Case IPR2022-00807
`Patent 9,756,168
`____________
`
`PATENT OWNER SMART MOBILE TECHNOLOGIES LLC’S
`UNOPPOSED MOTION FOR PRO HAC VICE ADMISSION
`OF COLETTE WOO UNDER 37 C.F.R. § 42.10(c)
`
`
`
`
`EXHIBIT LIST
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`Techopedia – Jini (available at
`https://www.techopedia.com/definition/1304/jini) [Techopedia Jini]
`
`Excerpts from The JiniTM Specification, Ken Arnold et al., [Jini
`Specification]
`
`Excerpts from A Collection of JiniTM Technology Helper Utilities
`and Services Specifications, Sun Microsystems, Inc. (2000) [A
`Collection of JINI Specifications]
`
`Excerpts from Microsoft Computer Dictionary, Fifth Edition (2002)
`[Microsoft Computer Dictionary]
`
`Excerpts from Newton’s Telecom Dictionary, 16th Edition (2000)
`[Newton’s Telecom Dictionary]
`
`Declaration of Nathan Lowenstein in Support of Motion for Pro
`Hac Vice Admission
`
`Declaration of Colette Woo in Support of Motion for Pro Hac Vice
`Admission
`
`
`
`
`
`
`
`
`i
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`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`I.
`
`RELIEF REQUESTED
`
`Pursuant to 37 C.F.R. § 42.10(c), Patent Owner Smart Mobile Technologies,
`
`LLC (“Patent Owner”) respectfully requests that the Board admit Colette Woo pro
`
`hac vice in this proceeding as back-up counsel. Patent Owner has met and
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`conferred with Petitioner, and Petitioner does not oppose this motion.
`
`II. GOVERNING LAW, RULES, AND PRECEDENT
`
`Section 42.10(c), 37 C.F.R., 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 further required that a motion for pro hac vice admission be
`
`filed in accordance with the “Order - Authorizing Motion for Pro Hac Vice
`
`Admission” entered in Unified Patents, Inc. v. Parallel Iron, LLC, IPR2013-00639,
`
`Paper 7 (P.T.A.B. Oct. 15, 2013) (“United Patents Order”).
`
`
`
`1
`
`
`
`The United Patents Order requires that such motions (1) “[c]ontain a
`
`statement of facts showing there is good cause for the Board to recognize counsel
`
`pro hac vice during the proceeding[,]” and (2) “[b]e accompanied by an affidavit
`
`or declaration of the individual seeking to appear attesting to the following:”
`
`i. Membership in good standing of the Bar of at least one State or the
`
`District of Columbia;
`
`ii. No suspensions or disbarments from practice before any court or
`
`administrative body;
`
`iii. No application for admission to practice before any court or
`
`administrative body ever denied;
`
`iv. No sanctions or contempt citations imposed by any court or
`
`administrative body;
`
`v. The individual seeking to appear has read and will comply with the
`
`Office Patent Trial Practice Guide and the Board's Rules of Practice for
`
`Trials set forth in part 42 of 37 C.F.R.;
`
`vi. The individual will be subject to the U.S.P.T.O. Rules of Professional
`
`Conduct set forth in 37 C.F.R. §§ 11.101 et seq. and disciplinary
`
`jurisdiction under 37 C.F.R. § 11.19(a);
`
`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
`
`2
`
`
`
`
`viii. Familiarity with the subject matter at issue in the proceeding.
`
`III. STATEMENT OF FACTS
`
`Based on the following statement of facts, and supported by the Declaration
`
`of Colette Woo, submitted herewith as Exhibit 2007, Patent Owner requests the
`
`pro hac vice admission of Colette Woo in this proceeding:
`
`1.
`
`Patent Owner’s lead counsel, Kenneth J. Weatherwax (the
`
`undersigned) is a registered practitioner (Reg. No. 54,528).
`
`2. Ms. Woo is an associate at the law firm of Lowenstein & Weatherwax
`
`LLP. Ex. 2007 ¶ 8.
`
`3.
`
`The majority of Ms. Woo’s practice has consisted of patent related
`
`matters such as PTAB litigations. Id. ¶ 9.
`
`4. Ms. Woo’s experience in post-grant patent proceedings includes
`
`drafting patent owner responses. Id. ¶ 10. Representative matters where Ms. Woo
`
`is or was actively involved include:
`
`• Unified Patents, LLC, v. DivX, LLC (IPR2021-01476).
`
`• Apple Inc. v. SEVEN Networks, LLC (IPR2020-00236, -00254, -
`
`00255, -00280, -00281, -00285, -00584, -00506, -00507).
`
`Ex. 2007 ¶ 10.
`
`3
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`
`
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`5. Ms. Woo has an established familiarity with the subject matter at issue
`
`in this proceeding. Id. ¶ 13. Ms. Woo has reviewed the Patent at issue as well as
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`the Petition and the relevant art. Id.
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`6. Ms. Woo is a member in good standing of the State Bar of California.
`
`Id. ¶¶ 1, 2.
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`7. Ms. Woo has never been suspended or disbarred from practice before
`
`any court or administrative body. Id. ¶ 3.
`
`8.
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`No application of Ms. Woo for admission to practice before any court
`
`or administrative body has ever been denied. Id. ¶ 4.
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`9.
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`No sanctions or contempt citations have ever been imposed against
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`Ms. Woo by any court or administrative body. Id. ¶ 5.
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`10. Ms. Woo has read and will comply with the Office Patent Trial
`
`Practice Guide and the Board’s Rules of Practice for Trials set forth in part 42 of
`
`37 C.F.R. Ex. 2007 ¶ 6.
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`11. Ms. Woo understands that she will be subject to the U.S.P.T.O. Rules
`
`of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq. and disciplinary
`
`jurisdiction under 37 C.F.R. § 11.19(a). Ex. 2007 ¶ 7.
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`12. Ms. Woo has previously been admitted pro hac vice in the following
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`matters:
`
`• Unified Patents, LLC, v. DivX, LLC (IPR2021-01476).
`
`4
`
`
`
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`• Apple Inc. v. SEVEN Networks, LLC (IPR2020-00236, -00285).
`
`Ex. 2007 ¶ 11.
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`13. Other than the matters identified in ¶ 12, supra, Ms. Woo has not
`
`applied to appear pro hac vice in any other proceedings before the U.S.P.T.O. in
`
`the last three years.
`
`IV. GOOD CAUSE EXISTS FOR THE PRO HAC VICE ADMISSION OF
`COLETTE WOO.
`
`The Board may recognize counsel pro hac vice 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. 37 C.F.R. § 42.10(c).
`
`The facts outlined above in the Statement of Facts, and contained in the
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`Declaration of Colette Woo (Ex. 2007), establish that there is good cause to admit
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`Ms. Woo pro hac vice in this proceeding. Patent Owner’s lead counsel is a
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`registered practitioner. Ms. Woo has experience in post-grant patent proceedings.
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`She also has an established familiarity with the subject matter at issue, including
`
`the patents, petitions, and references.
`
`V. CONCLUSION
`
`For the foregoing reasons, Patent Owner respectfully requests that the Board
`
`admit Ms. Woo pro hac vice in this proceeding.
`
`
`
`5
`
`
`
`
`Respectfully submitted,
`
`
` / Kenneth J. Weatherwax /
`Kenneth J. Weatherwax, Reg. No. 54,528
`LOWENSTEIN & WEATHERWAX LLP
`
`Date: January 13, 2023
`
`6
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the following documents were served
`
`by electronic service, by agreement between the parties, on the date signed below:
`
`PATENT OWNER SMART MOBILE TECHNOLOGIES LLC’S
`UNOPPOSED MOTION FOR PRO HAC VICE ADMISSION
`OF COLETTE WOO UNDER 37 C.F.R. § 42.10(c)
`
`EXHIBIT 2007
`
`The names and address of the parties being served are as follows:
`
`andy.ehmke.ipr@haynesboone.com
`Andrew S. Ehmke
`Adam C. Fowles
` adam.fowles.ipr@haynesboone.com
`Samuel Drezdzon
`samuel.drezdzon.ipr@haynesboone.com
`W. Karl Renner
`IPR39843-0127IP1@fr.com
`Jeremy J. Monaldo
`Hyun Jin In
`Sangki Park
`
`
`
`Respectfully submitted,
`
` / Gwynneth Orlino /
`
`
`
`
`
`
`Date: January 13, 2023
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