UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`QUALTRICS, LLC
`Petitioner
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`v.
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`OPINIONLAB, INC.
`Patent Owner
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`_______________
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`Case IPR2014-00366
`U.S. Patent 8,041,805
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`_______________
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`PETITIONER QUALTRICS, LLC’S MOTION FOR PRO HAC VICE
`ADMISSION OF JONATHAN M. JACKSON UNDER 37 C.F.R. § 42.10(c)
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`FILED VIA PRPS
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`QUALTRICS, LLC
`Petitioner
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`v.
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`OPINIONLAB, INC.
`Patent Owner
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`_______________
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`Case IPR2014-00366
`U.S. Patent 8,041,805
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`_______________
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`PETITIONER QUALTRICS, LLC’S MOTION FOR PRO HAC VICE
`ADMISSION OF JONATHAN M. JACKSON UNDER 37 C.F.R. § 42.10(c)
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`FILED VIA PRPS
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`Case IPR2014-00366
`Patent 8,041,805
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` Qualtrics, LLC’s Motion for Pro Hac Vice
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` Admission of Jonathan M. Jackson
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`I.
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`RELIEF REQUESTED
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`Pursuant to 37 C.F.R. § 42.10(c), and the Notice of Filing Date Accorded to
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`Petition and Time for Filing Patent Owner Preliminary Response (Paper No. 4),
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`Petitioner Qualtrics, LLC (“Petitioner”) respectfully requests the pro hac vice
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`admission of attorney Jonathan M. Jackson, Esq. in this proceeding. Petitioner has
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`conferred with counsel for OpinionLab, Inc. (the “Patent Owner”), who does not
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`oppose this motion.
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`II. LEGAL STANDARD
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`Pursuant to 37 C.F.R. § 42.10(c):
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`The Board may recognize counsel pro hac vice during a
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`proceeding upon a showing of good cause, subject to the
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`condition that lead counsel be a registered practitioner
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`and to any other conditions as the Board may impose.
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`For example, where the lead counsel is a registered
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`practitioner, a motion to appear pro hac vice by counsel
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`who is not a registered practitioner may be granted upon
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`showing that counsel is an experienced litigating attorney
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`and has an established familiarity with the subject matter
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`at issue in the proceeding.
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`Patent 8,041,805
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` Qualtrics, LLC’s Motion for Pro Hac Vice
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`The Notice of Filing Date Accorded to Petition and Time for Filing Patent
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`Owner Preliminary Response (Paper No. 4) further instructs:
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`The parties are advised that under 37 C.F.R. § 42.10(c),
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`recognition of counsel pro hac vice requires a showing of
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`good cause. The parties are authorized to file motions for
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`pro hac vice admission under 37 C.F.R. § 42.10(c). Such
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`motions shall be filed in accordance with the “Order --
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`Authorizing Motion for Pro Hac Vice Admission” in
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`Case IPR2013-00639, Paper 7, a copy of which is
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`available on the Board Web site under “Representative
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`Orders, Decisions, and Notices.”
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`(Id. at 3.) The above-referenced “Order -- Authorizing Motion for Pro Hac
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`Vice Admission” further provides:
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`A motion for pro hac vice admission must:
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`a.
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`Contain a statement of facts showing there is good cause for the
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`Board to recognize counsel pro hac vice during the proceeding.
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`b.
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`Be accompanied by an affidavit or declaration of the individual
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`seeking to appear attesting to the following:
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`i.
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`Membership in good standing of the Bar of at least one
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`State or the District of Columbia;
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`ii.
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`No suspensions or disbarments from practice before any
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`court or administrative body;
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`iii. No application for admission to practice before any court
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`or administrative body ever denied;
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`iv. No sanctions or contempt citations imposed by any court
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`or administrative body;
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`v.
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`The individual seeking to appear has read and will
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`comply with the Office Patent Trial Practice Guide and
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`the Board’s Rules of Practice for Trials set forth in part
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`42 of 37 C.F.R.;
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`vi.
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`The individual will be subject to the USPTO Rules of
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`Professional Conduct set forth in 37 C.F.R. §§ 11.101 et.
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`seq. and disciplinary
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`jurisdiction under 37 C.F.R.
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`§ 11.19(a);
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`vii. All other proceedings before the Office for which the
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`individual has applied to appear pro hac vice in the last
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`three (3) years; and
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`viii. Familiarity with the subject matter at issue in the
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`proceeding.
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`(IPR2013-00639, Paper 7, at 3.)
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` As set forth below, and in the
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`accompanying declaration of Jonathan M. Jackson (“Jackson Decl.”), each
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`of these requirements is satisfied here.
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`III. STATEMENT OF FACTS SHOWING GOOD CAUSE FOR THE
`BOARD TO RECOGNIZE JONATHAN M. JACKSON PRO HAC
`VICE IN THIS PROCEEDING
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`As an initial matter, Mr. Jackson is a member in good standing of the State
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`Bar of California (Bar No. 257554) and is also admitted to practice before the U.S.
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`District Court for the Central District of California and the U.S. Court of Appeals
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`for the Ninth Circuit. (Jackson Decl., ¶ 2.) Mr. Jackson has never been suspended
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`or disbarred from practice before any court or administrative body. (Id. at ¶ 3.) No
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`application of Mr. Jackson for admission to practice before any court or
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`administrative body has ever been denied. (Id.) No court or administrative body
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`has imposed sanctions or contempt citations against Mr. Jackson. (Id.) Mr.
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`Jackson has read and will comply with the Office Patent Trial Practice Guide and
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`the Board’s Rules of Practice for Trials set forth in part 42 of the C.F.R. (Id. at ¶
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`4.) Mr. Jackson acknowledges and agrees that he will be subject to the USPTO
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`Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq. and
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`disciplinary jurisdiction under 37 C.F.R. § 11.19(a). (Id.)
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`Petitioner’s lead counsel in this proceeding, Robert Steinberg, is a registered
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`practitioner (Reg. No. 33144). Moreover, as set forth below (and in his
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`accompanying declaration), Mr. Jackson is both an experienced and technically
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`trained litigation attorney and has an established familiarity with the subject matter
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`at issue in this proceeding.
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`Mr. Jackson has an undergraduate degree in Industrial Engineering from
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`Stanford University, and graduated first in his class at the UCLA School of Law in
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`2007. (Id. at ¶ 5.) He served as a judicial clerk for Judge Stephen V. Wilson, in the
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`U.S. District Court for the Central District of California, and for Judge Carlos T.
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`Bea, in the U.S. Court of Appeals for the Ninth Circuit. (Id.)
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`Including his judicial clerkships, Mr. Jackson has over seven years of
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`litigation experience, including, in particular, experience in intellectual property
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`litigation. (Id. at ¶ 6.) He is a member of the Latham & Watkins intellectual
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`property group, with a focus on patent litigation involving software and Web-
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`enabled applications. (Id.)
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`Mr. Jackson has an established familiarity with the subject matter at issue in
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`this proceeding. Mr. Jackson has been actively involved in the related district
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`court litigation between the Patent Owner and Petitioner, OpinionLab, Inc. v.
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` Qualtrics, LLC’s Motion for Pro Hac Vice
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`Qualtrics Labs, Inc. et al., 1:13-cv-01574 (N.D. Ill.), since at least March 27, 2013,
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`when he was granted leave to appear pro hac vice in that matter. (Id. at ¶ 7.) U.S.
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`Patent No. 8,041,805 (the “‘805 Patent”), which is at issue in this proceeding, is
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`one of six patents asserted by the Patent Owner in the district court litigation. (Id.
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`at ¶ 8.) Mr. Jackson has been actively involved in all aspects of the litigation,
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`including Petitioner’s factual investigation and development of its invalidity
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`positions regarding the claims of the ‘805 Patent at issue here. (Id.)
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`Mr. Jackson also was actively involved in the research and preparation of the
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`Petition for Inter Partes Review submitted in this proceeding, as well as the
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`petitions submitted in four related proceedings that are currently pending before
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`the Patent Trial and Appeal Board:
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`• Case No. IPR2014-00406: Petition for Inter Partes Review of U.S.
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`Patent No. 7,085,820, which is a continuation-in-part of U.S. Patent
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`No. 6,421,724; the ‘805 Patent – the patent at issue in this proceeding
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`– is a continuation of U.S. Patent No. 7,085,820;
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`• Case No. IPR2014-00356: Petition for Inter Partes Review of U.S.
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`Patent No. 6,606,581, which is a continuation-in-part of U.S. Patent
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`No. 6,421,724;
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`• Case No. IPR2014-00420: Petition for Inter Partes Review of U.S.
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`Case IPR2014-00366
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`Patent No. 7,370,285;
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`• Case No. IPR2014-00421: Petition for Inter Partes Review of U.S.
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`Patent No. 8,024,668, which is a continuation of U.S. Patent No.
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`7,370,285.
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`(Id. at ¶ 9.) Mr. Jackson is concurrently seeking pro hac vice admission to appear
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`in each of these related proceedings. (Id. at ¶ 10.) He has not applied to appear pro
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`hac vice in any other proceeding before the USPTO. (Id.)
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`In view of Mr. Jackson’s extensive knowledge of the subject matter at issue
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`in this proceeding, and in view of the interrelatedness of this proceeding and the
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`related district court litigation, Petitioner has a substantial need for Mr. Jackson’s
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`pro hac vice admission and his involvement in the continued prosecution of this
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`proceeding. In addition, admission of Mr. Jackson pro hac vice will enable
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`Petitioner to avoid unnecessary expense and duplication of work between this
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`proceeding and the district court litigation. See 77 Fed. Reg. 157 (Aug. 14, 2012),
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`at 48661 (Office’s comment on final rule discussing concerns about efficiency and
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`costs where an entity has already engaged counsel for parallel district court
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`litigation).
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` Qualtrics, LLC’s Motion for Pro Hac Vice
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` Admission of Jonathan M. Jackson
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`IV. CONCLUSION
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`For the foregoing reasons, Petitioner respectfully requests that Mr. Jackson
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`be admitted pro hac vice in this proceeding.
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`Dated: November 11, 2014
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`By:
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`/s/ Robert Steinberg___
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`Respectfully submitted,
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`Robert Steinberg
`Reg. No. 33144
`Neil A. Rubin
`Reg. No. 67030
`Latham & Watkins LLP
`355 South Grand Avenue
`Los Angeles, CA 90071-1560
`213.485.1234
`213.891.8763 (Fax)
`Counsel for Petitioner
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`Case IPR2014-00366
`Patent 8,041,805
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` Qualtrics, LLC’s Motion for Pro Hac Vice
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e) and the parties’ agreement to electronic
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`service on August 21, 2014, I certify that on this 11th day of November,
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`2014, a copy of:
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`PETITIONER QUALTRICS, LLC’S MOTION FOR PRO HAC VICE
`ADMISSION OF JONATHAN M. JACKSON UNDER 37 C.F.R. § 42.10(c)
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`was served by electronic mail on Patent Owner’s lead and backup counsel, at the
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`following email addresses:
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`Christopher W. Kennerly
`Paul Hastings LLP
`1117 S. California Ave.
`Palo Alto, CA 94304
`chriskennerly@paulhastings.com
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`Timothy P. Cremen
`Paul Hastings LLP
`875 15th Street, N.W.
`Washington, DC 20005
`timothycremen@paulhastings.com
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`//
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`//
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`//
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`//
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`//
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`//
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`10
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` Qualtrics, LLC’s Motion for Pro Hac Vice
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`Naveen Modi
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`Paul Hastings LLP
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`875 15th Street, N.W.
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`Washington, DC 20005
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` naveenmodi@paulhastings.com
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`By: /s/ Robert Steinberg
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`Robert Steinberg
`Reg. No. 33144
`Neil A. Rubin
`Reg. No. 67030
`Latham & Watkins LLP
`355 South Grand Avenue
`Los Angeles, CA 90071-1560
`213.485.1234
`213.891.8763 (Fax)
`Counsel for Petitioner
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`11
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