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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD., APPLE INC.,
`and SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`SMART MOBILE TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`Case IPR2022-01248
`Patent 8,842,653
`____________
`
`PATENT OWNER SMART MOBILE TECHNOLOGIES LLC’S
`UNOPPOSED MOTION FOR PRO HAC VICE ADMISSION
`OF PHILIP J. GRAVES UNDER 37 C.F.R. § 42.10(c)
`
`
`
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`EXHIBIT LIST
`
`2001
`
`Reserved
`
`2002
`
`Declaration of Professor Todor V. Cooklev, Ph.D.
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`Smart Mobile Technologies, LLC v. Apple Inc., Smart Mobile
`Technologies, LLC v. Samsung Electronics Co., Ltd. et al., Nos.
`6:21-cv-00603 and 6:21-cv-00701, Defendants’ Opening Claim
`Construction Brief (June 8, 2022) [Defendants’ Opening Claim
`Construction Brief]
`
`Smart Mobile Technologies, LLC v. Apple Inc., Smart Mobile
`Technologies, LLC v. Samsung Electronics Co., Ltd. et al., Nos.
`6:21-cv-00603 and 6:21-cv-00701, Defendants’ Opening Claim
`Construction Brief – Exhibit 1 (June 8, 2022) [Defendants’ Opening
`Claim Construction Brief – Exhibit 1]
`
`Kevin M. Stack, Preambles as Guidance, 84 GEO. WASH. L. REV.
`1252 (2016) (http://www.gwlr.org/wp-content/uploads/2016/09/84-
`Geo.-Wash.-L.-Rev.-1252.pdf) [Stack]
`
`ElectronicsTutorials, The Multiplexer, WWW.ELECTRONICS-
`TUTORIALS.WS, https://www.electronics-
`tutorials.ws/combination/comb_2.html (last visited Oct. 26, 2022)
`[Electronics Tutorial]
`
`TexasInstruments, 74HC153 Data Sheet, Dec. 1982, revised Feb.
`2022, WWW.TI.COM, https://www.ti.com/lit/gpn/sn74hc153
`[74HC153 Data Sheet]
`
`Lee Stanton, What is the Difference Between a Landline and a
`Mobile Phone Number?, WWW.ALPHR.COM, Feb. 22, 2022,
`https://www.alphr.com/difference-landline-mobile-phone-number/
`[Alphr]
`
`i
`
`
`
`2009
`
`2010
`
`2011
`
`2012
`
`2013
`
`FOCUS LCDs, Serial Vs. Parallel, LCD RESOURCES,
`https://focuslcds.com/serial-vs-parallel/ (last visited Oct. 19, 2022)
`[LCD Resources]
`
`Techopedia, Serial Interface, WWW.TECHOPEDIA.COM, Nov. 4, 2014,
`https://www.techopedia.com/definition/9312/serial-interface
`[Techopedia]
`
`Excerpts from The Authoritative Dictionary of IEEE Standards
`Terms, Seventh Edition (2000) [Dictionary of IEEE Standards
`Terms]
`
`Jonathan Valvano et al., Chapter 11: Serial Interfacing, EMBEDDED
`SYSTEMS – SHAPE THE WORLD,
`https://users.ece.utexas.edu/~valvano/Volume1/E-
`Book/C11_SerialInterface.htm (last visited Oct. 20, 2022) [Valvano]
`
`Steve Goldband, Input and output for microprocessors, Behavior
`Research Methods & Instrumentation, 1978, Vol. 10, No. 2, pp.
`249-253 [Goldband]
`
`2014
`
`Ex parte Orbotech LT Solar, LLC, 2012 Pat. App. LEXIS 2784
`(BPAI May 31, 2012)
`
`2015
`
`Ex parte Evans, 2017 Pat. App. LEXIS 386 (PTAB Aug. 1, 2017)
`
`2016
`
`2017
`
`Declaration of Philip J. Graves in support of Motion for Pro Hac
`Vice Admission
`
`Declaration of Greer N. Shaw in support of Motion for Pro Hac
`Vice Admission
`
`ii
`
`
`
`
`
`I.
`
`RELIEF REQUESTED
`
`Pursuant to 37 C.F.R. § 42.10(c), Patent Owner Smart Mobile Technologies
`
`LLC (“Smart Mobile”) respectfully moves the Patent Trial & Appeal Board
`
`(“Board”) for the pro hac vice admission of Philip J. Graves in this proceeding.
`
`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”).
`
`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
`
`
`
`1
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`
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`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
`
`viii. Familiarity with the subject matter at issue in the proceeding.
`
`
`
`2
`
`
`
`
`III. STATEMENT OF FACTS
`
`Based on the following statement of facts, and supported by the Declaration
`
`of Philip J. Graves, submitted herewith as Exhibit 2016, Patent Owner requests the
`
`pro hac vice admission of Philip J. Graves in this proceeding:
`
`1. Mr. Graves has over twenty-five years of experience as a litigation
`
`attorney specializing in patent litigation and representing clients in patent litigation
`
`matters in various United States District Courts and the United States Court of
`
`Appeals for the Federal Circuit. Ex. 2016 ¶ 2.
`
` 2. Mr. Graves is very familiar with U.S. Patent No. 8,842,653, 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. 8,842,653, which
`
`forms the basis for this proceeding. Mr. Graves has personally reviewed the patent
`
`at issue, as well as its prosecution history and the above referenced petition, with
`
`accompanying declarations and exhibits. Mr. Graves has been and continues to be
`
`actively involved with strategic, factual, and technical aspects of this matter. Id. ¶
`
`10.
`
` 3. Mr. Graves is a member in good standing of the State Bar of
`
`California. Mr. Graves is admitted to practice before the United States District
`
`Courts for the Southern District of California, the Eastern District of California, the
`
`Northern District of California, and the Central District of California. Mr. Graves
`
`3
`
`
`
`
`is also admitted to practice before the United States Courts of Appeals for the
`
`Ninth and Federal Circuits and the United States Supreme Court. Id. ¶ 1, 2.
`
` 4. Mr. Graves has never been suspended or disbarred from practice before
`
`any court or administrative body, apart from an administrative suspension for non-
`
`payment of inactive bar dues by the Washington Bar Association, which was lifted
`
`upon payment of the overdue bar dues. Id. ¶ 3.
`
`5. Mr. Graves has never had a court or administrative body deny his
`
`application for admission to practice. Id. ¶ 4.
`
` 6. Mr. Graves has never been sanctioned or cited for contempt by any
`
`court or administrative body. Id. ¶ 5.
`
` 7. Mr. Graves 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. 2016 ¶ 6.
`
`8. Mr. Graves agrees to be subject to the United States Patent and
`
`Trademark Office Code of Professional Responsibility set forth in 37 C.F.R. §§
`
`11.101 et. seq. and disciplinary jurisdiction under 37 C.F.R. § 11.19(a). Ex. 2016 ¶
`
`7.
`
` 9. Mr. Graves has previously been admitted pro hac vice in the following
`
`matters:
`
`4
`
`
`
`
`• Apple Inc., et al. v. Smart Mobile Technologies LLC (IPR2022-
`
`00808).
`
`• Samsung Electronics, Ltd., et al. v. Smart Mobile Technologies LLC
`
`(IPR2022-00766).
`
`• Google LLC v. Neonode Smartphone LLC (IPR2021-01041).
`
`• Samsung Electronics Co., et. al. v. Neonode Smartphone LLC
`
`(IPR2021-00144, -00145).
`
`Ex. 2016 ¶ 8.
`
`10.
`
`Mr. Graves has applications for pro hac vice admission currently
`
`pending in the following matters:
`
`• Apple Inc., et al. v. Smart Mobile Technologies LLC (IPR2022-00979,
`
`-00980, -00981, -00982, -01222, -01223).
`
`• Samsung Electronics, Ltd., et al. v. Smart Mobile Technologies LLC,
`
`(IPR2022-01004, -01005, -01249).
`
`Ex. 2016 ¶ 9.
`
`11.
`
`Mr. Graves is concurrently applying for pro hac vice admission in the
`
`following matters:
`
`• Apple Inc., et al. v. Smart Mobile Technologies LLC (IPR2022-
`
`00807).
`
`5
`
`
`
`
`• Samsung Electronics, Ltd., et al. v. Smart Mobile Technologies LLC
`
`(IPR2022-01002).
`
`Ex. 2016 ¶ 10.
`
`IV. GOOD CAUSE EXISTS FOR THE PRO HAC VICE ADMISSION
`OF PHILIP J. GRAVES.
`
`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 Philip J. Graves (Ex. 2016), establish that there is good cause to
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`admit Mr. Graves pro hac vice in this proceeding. Patent Owner’s lead counsel,
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`Kenneth J. Weatherwax (No. 54,528), is a registered practitioner.
`
`Mr. Graves has over twenty-five years of experience as a litigation attorney,
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`specializing in patent litigation. Mr. Graves has represented clients in matters
`
`related to electrical and computer science arts, among others, and has significant
`
`experience in patent litigation matters. Mr. Graves is actively involved with the
`
`strategy and fact development in these patent litigation matters. In view of Mr.
`
`Graves’ extensive knowledge of the subject matter of this proceeding, Smart
`
`Mobile has a substantial need for Mr. Graves’ pro hac vice admission and his
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`involvement in the continued prosecution of this proceeding.
`
`Petitioners do not oppose this motion.
`
`6
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`
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`V. CONCLUSION
`
`For the foregoing reasons, Patent Owner respectfully requests that the Board
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`admit Philip J. Graves pro hac vice in this proceeding.
`
`
`
`Respectfully submitted,
`
`
`
`/ Kenneth J. Weatherwax /
`
`Kenneth J. Weatherwax, Reg. No. 54,528
`
`Date: January 13, 2023
`
`7
`
`
`
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`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 PHILIP J. GRAVES UNDER 37 C.F.R. § 42.10(c)
`
`EXHIBIT 2016
`
`The names and address of the parties being served are as follows:
`
`
`W. Karl Renner
`Jeremy J. Monaldo
`Hyun Jin In
`
`Sangki Park
`
`
`
`
`
`
`
`
`
`Andrew S. Ehmke
`Clint S. Wilkins
`
`
`
`
`IPR39843-0125IP1@fr.com
`jjm@fr.com
`in@fr.com
`spark@fr.com
`PTABInbound@fr.com
`axf-ptab@fr.com
`andy.ehmke.ipr@haynesboone.com
`clint.wilkins.ipr@haynesboone.com
`
`
`
`Respectfully submitted,
`
` / Gwynneth Orlino /
`
`
`
`Date: January 13, 2023
`
`
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