UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD DR. MICHAEL FARM WALD and RPX CORPORATION Petitioner PARKERVISION, INC. Patent Owner Case 1PR2014-00947 U.S. Patent No. 6,061,551 Parkervision, Inc. s Motion for Pro Hac Vice Admission of Russ M. Herman Under 37 C.F.R. 42.10(c) Mail Stop "PA TENT BOARD" Patent Trial and Appeal Board U.S. Patent and Trademark Office P.O. Box 1450 Alexandria, VA 22313-1450
Ex. No. EXHIBIT LIST Description IPR20 14-00947 Previously Filed The Authoritative Dictionary of IEEE Standards Terms, 2001 Institute of Electrical and Electronics Engineers, 7th ed., X 2000. 2002 2003 Sciater et al., McGraw-Hill Electronics Dictionary, McGraw-Hill, Inc., 6th ed., 1997. 8-13-14 e-mail from ParkerVision s counsel to Petitioner s counsel. Estabrook et al., A Mixer Computer-Aided Design Tool 2004 Based in the Time Domain, IEEE MTT-S Digest, pp. X 1107-1110 (1988). 2005 Not Used 2006 Patent Owner s Proposed Discovery Requests to Petitioner X Transcript of Conference Call in IPR20 14-00946, 2007 1PR2014-00947, and IPR2014-00948, held on January 21, X 2015. Email from ParkerVision s counsel to Petitioner s counsel 2008 with Patent Owner s Proposed Discovery Requests to X Petitioner attached (Jan. 26, 2015). ParkerVision Press Release, "ParkerVision s Patent 2009 Portfolio Once Again Recognized for Its Strength by The X Patent Board" (Mar. 19, 2014). 2010 2011 ParkerVision Press Release, "ParkerVision s Patent Portfolio Leads Telecom Sector" (Mar. 28, 2013). Complaint filed in Parker Vision, Inc. v. Qua/comm Inc., No. 3:11 -cv-00719 (M.D. Fla.), filed on July 20, 2011. Return of Service of Summons in a Civil Action in 2012 Parker Vision, Inc. v. Qua/comm Inc., No. 3:11-cv-00719 X (M.D. Fla.), dated July 21, 2011. 2013 Verdict Form in Parker Vision, Inc. v. Qua/comm Inc., No. 3:11 -cv-00719 (M.D. Fla.), dated October 17, 2013. -1-
Ex. No. 2014 4 Description Docket Report for Parker Vision, Inc. v. Qualcomm Inc., No. 3:11-cv-00719 (M.D. Fla.). 2015 Not Used 2016 2017 RPX Press Release, "Semiconductor Leaders Push RPX Network to 65 Clients" _(Oct._4,_2010). RPX Presentation, "The Market for Patents and Patent Litigation" _(May _21,_2012). IPR20 14-00947 Previously Filed RPX s "Client Relations" webpage at 2018 http://www.rpxcorp.com/rpx-membership/rpx-client- X relations!. 2019 RPX s "Why Join" webpage at http://www.rpxcorp.com/why-join-rpx/. 2020 RPX s 2013 Annual Report. X 2021 2022 2023 2024 Transcript of Conference Call, Dr. Michael Farmwald and RPX Corporation v. Parker Vision, Inc., Cases 1PR2014-00946, 1PR2014-00947, and 1PR2014-00948, dated February 6, 2015. Patent Owner s Revised Proposed Discovery Requests to Petitioner. E-mail of 03-03-2015 from the Board to Petitioner Counsel and Patent Owner Counsel. Declaration of Bruce A. Fette, Ph.D., in Support of Patent Owner s Response to Petition with Curriculum Vitae. Transcript of Deposition Asad Abidi, Ph.D., with Errata, 2025 Cases 1PR2014-00946, 1PR2014-00947, and 1PR2014- X 00948, held on February 8-9, 2015 2026 Simulation Schematics of Weisskopf s energy sampling system and circuits. Excerpts from The Authoritative Dictionary of IEEE 2027 Standards Terms, Institute of Electrical and Electronics X Engineers, 7th ed. - 11 -
Ex. No. Description IPR20 14-00947 Previously Filed 2028 Friis, "Noise Figures of Radio Receivers," Proceedings of the I.R.E. (July 1944). Definition of "Noise Factor (Noise Figure)," Proceedings 2029 of the I.R.E., Standards on Receivers: Definitions of Term X (Dec. 1952). 2030 Excerpts from Pettai, "Noise in Receiving Systems" (published 1984). Declaration in Support of Motion for Pro Hac Vice 2031 Admission of Russ M. Herman Under 37 C.F.R. 42.10(c) X - 111 -
I. Relief Requested IPR20 14-00947 Pursuant to 37 C.F.R. 42.10(c), and as authorized in the Board s Notice of Filing Date issued June 24, 2014 (paper 3), ParkerVision, Inc. ("Patent Owner") respectfully requests the pro hac vice admission of Russ M. Herman. Mr. Herman s admission in this case is for the limited purpose of deposing Dr. Farmwald on the real party-in-interest issue, as well as possible assistance on other related issues. In email correspondence between Patent Owner and Petitioner dated April 25, 2015, Petitioner indicated it opposed this motion. II. Governing Laws, Rules, And Precedent Section 42.10(c) of the Code of Federal Regulations authorizes the Board to recognize counsel pro hue 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. Here, the Board has stated that motions for pro hac vice admission must be filed in accordance with the "Order -- Authorizing Motion for Pro Hac Vice Admission" entered in Case 1PR2013-00639 (Paper 7) The Order requires that such motions (1) be filed no sooner than twenty-one days after service of the petition, (2) "[c]ontain a statement of facts showing there is good cause for the Board to recognize counsel pro hac vice during the -1-
proceeding," and (3) "[b]e accompanied by an affidavit or declaration of the individual seeking to appear attesting to the following": IPR20 14-00947 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 USPTO 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 years; and viii. Familiarity with the subject matter at issue in the proceeding. -2-
III. Statement Of Facts IPR20 14-00947 1. Patent Owner s lead counsel, Robert Greene Sterne, is a registered practitioner (Reg. No. 28,912). 2. The Petition in this case was filed on June 12, 2014, more than twenty-one days ago. 3. There is a potentially dispositive real party-in-interest issue in this case. Patent Owner sued Qualcomm Incorporated for infringement of U.S. Patent No. 6,061,551 and served a copy of the complaint on Qualcomm in 2011. Qualcornm is barred from filing an inter partes review under 37 C.F.R. 42.10 1(b).There is good reason to suspect Qualcomm is a real party-in-interest in this case. Qualcomm is a former client of RPX Corporation. Petitioner s counsel, Mr. Bailey, has been counsel for Qualcomm in the Quaicomm Litigation. The Board authorized Patent Owner to serve document requests calculated to lead to factual information related to the real party-in-interest issue. And the deposition of Dr. Farmwald is scheduled for May 8, 2015 (although the parties are discussing rescheduling the Farmwald deposition). 4. Mr. Herman is a Senior Partner at the New Orleans office of the law firm of Herman, Herman & Katz, L.L.C. (Ex. 2031 at 2.) Mr. Herman is an experienced trial attorney. Mr. Herman has tried cases for more than thirty-five years in state and Federal courts across the United States. (Id. at f 3 and 4.) Mr. -3-
IPR20 14-00947 Herman was President of the Association of Trial Lawyers of America (1989-1990) and has authored over two-hundred articles, papers, and books on civil trial practice. (Id. at 3.) 5. Mr. Herman brings special skills to bear on the upcoming deposition of Dr. Farmwald. Mr. Herman is highly skilled and experienced in ferreting out facts sophisticated parties have tried to keep secret. For example, Mr. Herman was lead counsel in several tobacco cases that involved the uncovering of conspiracies. (Id. at 4.) Mr. Herman is also highly skilled in resolving factual issues surrounding principle-agent law, privity, securities, etc. (Id.) 6. Mr. Herman has an established familiarity with the legal principles relevant to the real party-in-interest issue. (Id. at 5.) Mr. Herman has reviewed the pleadings submitted by Patent Owner and Petitioner in this proceeding and in related Cases 1PR2014-00946 and 1PR2014-00948. (Id. at 7.) Mr. Herman has reviewed the challenged patent, U.S. Patent No. 6,061,551. (Id.) Mr. Herman has extensive experience in commercial litigation and is familiar with the legal real party-in-interest principles relevant to this proceeding. (Id. at 5.) 7. Mr. Herman has discussed the substance of this case with Patent Owner s lead counsel and he has consulted in its strategy. (Id. at 6.) 8. Mr. Herman is a member in good standing of the State Bar of Louisiana. (Id. at 8.) 4
IPR20 14-00947 9. Mr. Herman has never been suspended or disbarred from practice before any court or administrative body. (Id. at 9.) 10. No application of Mr. Herman for admission to practice before any court or administrative body has ever been denied. (Id.) 11. No sanctions or contempt citations have been imposed against Mr. Herman by any court or administrative body. (Id. at 10.) 12. Mr. Herman 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 the Code of Federal Regulations. (Id. at 11.) Specifically, Mr. Herman has read and will comply with the rules on taking testimony set forth in part 42.53 of the Code of Federal Regulations. (Id.) 13. Mr. Herman understands that he will be subject to the USPTO Code of Professional Responsibility set forth in 37 C.F.R. ss 10.20 et seq. and disciplinary jurisdiction under 37 C.F.R. 11.19(a). (Id. at 12.) 14. Mr. Herman is requesting pro hac vice admission to represent Patent Owner in the co-pending Cases 1PR2014-00946 and 1PR2014-00948. Otherwise, Mr. Herman has not applied to appear pro hac vice in any other proceedings before the Office in the last three years. (Id. at 13.) -5-
IPR20 14-00947 IV. The Board should admit Mr. Herman pro hac vice because he is a highly skilled litigator and cross-examiner; essential skills for the upcoming disposition of Dr. Farmwald. 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). All conditions are satisfied here:. Lead counsel, Robert Greene Sterne, is a registered practitioner; Good cause exists for Mr. Herman s admission; and All the Board s remaining conditions for pro hac vice admission are met. A. Good Cause Patent Owner needs an experienced litigation attorney, like Mr. Herman, to assist its lead counsel in connection with taking depositions regarding the real party-in-interest issue. The real party-in-interest issue is a discrete, potentially dispositive issue in this proceeding. Mr. Herman s extensive trial experience, especially in uncovering conspiracies and factual issues, is critical to the efficient and fair resolution of the real party-in-interest issue. As supported by his affidavit, Mr. Herman is skilled in ferreting out facts that sophisticated parties have tried to keep secret. Mr. Herman is also a specialist in resolving factual issues surrounding principle-agent law, privity, securities, etc. S
IPR20 14-00947 (Id. at 4.) Thus, Mr. Herman s significant litigation experience and expertise will be valuable to Patent Owner in this proceeding. Mr. Herman also has an established familiarity with the subject matter at issue in this proceeding. Mr. Herman has reviewed the pleadings submitted by Patent Owner and Petitioner in this proceeding and in related Cases 1PR2014-00946 and 1PR2014-00948. Mr. Herman has reviewed the challenged patent, U.S. Patent No. 6,061,551. He has also reviewed the history of this proceeding. Mr. Herman has engaged in strategic and substantive discussions regarding this proceeding with Robert Greene Sterne, Michael Q. Lee and Byron Picard, who serve as lead and back-up counsels for Patent Owner in this proceeding. In view of Mr. Herman s litigation experience and knowledge of the legal issues of real party-in-interest, the admission of Mr. Herman pro hac vice will facilitate the timely completion of this proceeding and ensure Patent Owner has access to the most skilled attorney for these depositions. Admission of Mr. Herman will also ease the burden on Patent Owner s existing lead and backup counsel in upcoming actions. Moreover, in view the non-technical nature of the real party-in-interest issue, the admission of Mr. Herman pro hac vice for this narrow, potentially dispositive issue provides adequate safeguards for the USPTO, the profession, and the public. -7-
1PR2014-00947 Based on the facts contained herein, as supported by Mr. Herman s Declaration, good cause exists to admit Mr. Herman pro hac vice. B. Remaining Board Requirements This motion for pro hac vice admission is being filed no sooner than twenty- one days after service of the petition which occurred on June 12, 2014.. This motion for pro hac vice admission contains a statement of facts showing there is good cause to recognize Mr. Herman. See Section III. This motion for pro hac vice admission is accompanied by a declaration of Mr. Herman that attests to the following: i. Membership in good standing of the Bar of at least one State or the District of Columbia. See 8 of the Statement of Facts. ii. No suspensions or disbarments from practice before any court or administrative body. See 9 of the Statement of Facts. iii. No application for admission to practice before any court or administrative body ever denied. See 10 of the Statement of Facts. iv. No sanctions or contempt citations imposed by any court or administrative body. See 11 of the Statement of Facts. 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
1PR2014-00947 for Trials set forth in part 42 of 37 C.F.R. See 12 of the Statement of Facts. vi. The individual will be subject to the USPTO Rules of Professional Conduct set forth in 37 C.F.R. 11.10 1 et. seq. and disciplinary jurisdiction under 37 C.F.R. 11.19(a). See 13 of the Statement of Facts. vii. All other proceedings before the Office for which the individual has applied to appear pro hac vice in the last three years. See 14 of the Statement of Facts. viii. Familiarity with the subject matter at issue in the proceeding. See 6 of the Statement of Facts. S
V. Conclusion 1PR2014-00947 For the foregoing reasons as well as the reasons contained in the attached affidavit, Patent Owner ParkerVision, Inc. respectfully requests admission of Russ M. Herman as counsel pro hac vice in this proceeding. The Patent Trial and Appeal Board is hereby authorized to charge any fees associated with this filing to Deposit Account 19-0036 (Customer ID No. 45324). Respectfully submitted, STEfl E, KESSLER, GOLDSTEIN & Fox P.L.L.0 Counsel for Patent Owner Registration No. 35,239 Date: 4N~ -70\ 1100 New ork Avenue, N.W. Washington, D.C.20005-3934 202.371.2600-10 -
CERTIFICATE OF SERVICE IPR20 14-00947 The undersigned certifies that copies of the foregoing Motion for Pro Hac Vice Admission of Russ M. Herman and Declaration of Russ M. Herman in Support of Motion for Pro Hac Vice Admission were served electronically via e- mail on April 28, 2015, in their entireties on the following: W. Todd Baker (Lead Counsel) James T. Bailey (Back-up Counsel) cpdocketbaker@oblon.com jtb@jtbaileylaw.com Oblon Spivak The Law Office of James T. Bailey 1940 Duke Street (NO ADDRESS PROVIDED) Alexandria, VA 22314 Phone: (703) 412-6383 Phone: (917) 626-1356 Fax: (703) 413-2220 Respe,tfully submitted, STE/E, ESSLER. GOLDSTEIN & Fox P.L.L.0 4Z %6K Date: 1100 New ork Avenue, N. W. Washington, D.C.20005-3934 202.371.2600 Michael Q. Lee Counsel for Patent Owner Registration No. 3 5,23 9-11 -
PV 2031 IPR2014-00947 RPX v. ParkerVision