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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`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 GREER N. SHAW UNDER 37 C.F.R. § 42.10(c)
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-145
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`EXHIBIT LIST
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`2001
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`Reserved
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`2002
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`Declaration of Professor Todor V. Cooklev, Ph.D.
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`2003
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`2004
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`2005
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`2006
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`2007
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`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)
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`2015
`
`Ex parte Evans, 2017 Pat. App. LEXIS 386 (PTAB Aug. 1, 2017)
`
`2016
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`2017
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`Declaration of Philip J. Graves in support of Motion for Pro Hac
`Vice Admission
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`Declaration of Greer N. Shaw in support of Motion for Pro Hac
`Vice Admission
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`ii
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`I.
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`RELIEF REQUESTED
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`Pursuant to 37 C.F.R. § 42.10(c), Patent Owner Smart Mobile Technologies
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`LLC (“Smart Mobile”) respectfully moves the Patent Trial & Appeal Board
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`(“Board”) for the pro hac vice admission of Greer N. Shaw in this proceeding.
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`II. GOVERNING LAW, RULES, AND PRECEDENT
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`Section 42.10(c), 37 C.F.R., provides that:
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`The Board may recognize counsel pro hac vice during a proceeding
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`upon a showing of good cause, subject to the condition that lead counsel
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`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
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`practitioner, a motion to appear pro hac vice by counsel who is not a
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`registered practitioner may be granted upon showing that counsel is an
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`experienced litigating attorney and has an established familiarity with
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`the subject matter at issue in the proceeding.
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`The Board has further required that a motion for pro hac vice admission be
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`filed in accordance with the “Order - Authorizing Motion for Pro Hac Vice
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`Admission” entered in Unified Patents, Inc. v. Parallel Iron, LLC, IPR2013-00639,
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`Paper 7 (P.T.A.B. Oct. 15, 2013) (“United Patents Order”).
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`The United Patents Order requires that such motions: (1) “[c]ontain a
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`statement of facts showing there is good cause for the Board to recognize counsel
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`pro hac vice during the proceeding[;]” and (2) “[b]e accompanied by an affidavit
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`or declaration of the individual seeking to appear attesting to the following:”
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`1
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`i. Membership in good standing of the Bar of at least one State or the
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`District of Columbia;
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`ii. No suspensions or disbarments from practice before any court or
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`administrative body;
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`iii. No application for admission to practice before any court or
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`administrative body ever denied;
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`iv. No sanctions or contempt citations imposed by any court or
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`administrative body;
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`v. The individual seeking to appear has read and will comply with the
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`Office Patent Trial Practice Guide and the Board's Rules of Practice for
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`Trials set forth in part 42 of 37 C.F.R.;
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`vi. The individual will be subject to the U.S.P.T.O. Rules of Professional
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`Conduct set forth in 37 C.F.R. §§ 11.101 et seq. and disciplinary
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`jurisdiction under 37 C.F.R. § 11.19(a);
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`vii. All other proceedings before the Office for which the individual has
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`applied to appear pro hac vice in the last three (3) years; and
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`viii. Familiarity with the subject matter at issue in the proceeding.
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`2
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`III. STATEMENT OF FACTS
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`Based on the following statement of facts, and supported by the Declaration
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`of Greer N. Shaw, submitted herewith as Exhibit 2017, Patent Owner requests the
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`pro hac vice admission of Greer N. Shaw in this proceeding:
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`1. Mr. Shaw has over twenty years of experience as a litigation
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`attorney specializing in patent litigation and representing clients in patent litigation
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`matters in various United States District Courts and the United States Court of
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`Appeals for the Federal Circuit. Ex. 2017 ¶ 3.
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` 2. Mr. Shaw is very familiar with U.S. Patent No. 8,842,653, as well as
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`the legal subject matter, technical subject matter, and prior art discussed in
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`Petitioner’s Request for Inter Partes Review of U.S. Patent No. 8,842,653, which
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`forms the basis for this proceeding. Mr. Shaw has personally reviewed the patent at
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`issue, as well as its prosecution history and the above referenced petition, with
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`accompanying declarations and exhibits. Mr. Shaw has been and continues to be
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`actively involved with strategic, factual, and technical aspects of this matter. Id.
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`¶ 4.
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`3. Mr. Shaw is a member in good standing of the State Bar of California.
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`Mr. Shaw is admitted to practice before the United States District Courts for the
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`Eastern District of Texas, the District of Nebraska, the District of Massachusetts,
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`the District of Arizona, the Southern District of California, the Eastern District of
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`3
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`California, the Northern District of California, and the Central District of
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`California. Mr. Shaw is also admitted to practice before the United States Courts of
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`Appeals for the First, Ninth and Federal Circuits. Id. ¶ 5.
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`4. Mr. Shaw has never been suspended or disbarred from practice before
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`any court or administrative body. Id. ¶ 6.
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`5. Mr. Shaw has never had a court or administrative body deny his
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`application for admission to practice. Id. ¶ 7.
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` 6. Mr. Shaw has never been sanctioned or cited for contempt by any
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`court or administrative body. Id. ¶ 8.
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` 7. Mr. Shaw has read and will comply with the Office Patent Trial
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`Practice Guide and the Board’s Rules of Practice for Trials set forth in part 42 of
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`37 C.F.R. Ex. 2017 ¶ 9.
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` 8. Mr. Shaw agrees to be subject to the United States Patent and
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`Trademark Office Code of Professional Responsibility set forth in 37 C.F.R. §§
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`11.101 et. seq. and disciplinary jurisdiction under 37 C.F.R. § 11.19(a). Ex. 2017 ¶
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`10.
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` 9. Mr. Shaw has previously been admitted pro hac vice in the following
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`matters:
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`• Apple Inc., et al. v. Smart Mobile Technologies LLC (IPR2022-
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`00808).
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`4
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`• Samsung Electronics, Ltd., et al. v. Smart Mobile Technologies LLC
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`(IPR2022-00766).
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`• Google LLC v. Neonode Smartphone LLC (IPR2021-01041).
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`• Samsung Electronics Co., et. al. v. Neonode Smartphone LLC
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`(IPR2021-00144, -00145).
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`Ex. 2017 ¶ 11.
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`10.
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`Mr. Shaw has applications for pro hac vice admission currently
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`pending in the following matters:
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`• Apple Inc., et al. v. Smart Mobile Technologies LLC (IPR2022-00979,
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`-00980, -00981, -00982, -01222, -01223).
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`• Samsung Electronics, Ltd., et al. v. Smart Mobile Technologies LLC,
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`(IPR2022-01004, -01005, -01249).
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`Ex. 2017 ¶ 12.
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`11.
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`Mr. Shaw is concurrently applying for pro hac vice admission in the
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`following matters:
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`• Apple Inc., et al. v. Smart Mobile Technologies LLC (IPR2022-
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`00807).
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`• Samsung Electronics, Ltd., et al. v. Smart Mobile Technologies LLC
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`(IPR2022-01002).
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`Ex. 2017 ¶ 13.
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`5
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`IV. GOOD CAUSE EXISTS FOR THE PRO HAC VICE ADMISSION
`OF GREER N. SHAW.
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`The Board may recognize counsel pro hac vice upon a showing of good
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`cause, subject to the condition that lead counsel be a registered practitioner and to
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`any other conditions as the Board may impose. 37 C.F.R. § 42.10(c).
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`The facts outlined above in the Statement of Facts, and contained in the
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`Declaration of Greer N. Shaw (Ex. 2017), establish that there is good cause to
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`admit Mr. Shaw 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.
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`Mr. Shaw has over twenty years of experience as a litigation attorney,
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`specializing in patent litigation. Mr. Shaw has represented clients in matters related
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`to electrical and computer science arts, among others, and has significant
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`experience in patent litigation matters. Mr. Shaw is actively involved with the
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`strategy and fact development in these patent litigation matters. In view of Mr.
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`Shaw’s extensive knowledge of the subject matter of this proceeding, Smart
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`Mobile has a substantial need for Mr. Shaw’s pro hac vice admission and his
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`involvement in the continued prosecution of this proceeding.
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`Petitioners do not oppose this motion.
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`V. CONCLUSION
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`For the foregoing reasons, Patent Owner respectfully requests that the Board
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`admit Greer N. Shaw pro hac vice in this proceeding.
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`6
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`Respectfully submitted,
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`
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`/ Kenneth J. Weatherwax /
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`Kenneth J. Weatherwax, Reg. No. 54,528
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`Date: January 13, 2023
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`7
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that the following documents were served
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`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 GREER N. SHAW UNDER 37 C.F.R. § 42.10(c)
`
`EXHIBIT 2017
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`The names and address of the parties being served are as follows:
`
`
`W. Karl Renner
`Jeremy J. Monaldo
`Hyun Jin In
`
`Sangki Park
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`
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`Andrew S. Ehmke
`Clint S. Wilkins
`
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`
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`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
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`
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`Respectfully submitted,
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` / Gwynneth Orlino /
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`
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`Date: January 13, 2023
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