Paper No. 6
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`MICROSOFT CORPORATION.
`Petitioner,
`
`v.
`
`B.E. TECHNOLOGY, LLC,
`Patent Owner
`
`Patent No. 6,771,290
`Issued: August 3, 2004
`Filed: July 16, 1999
`Inventors: Martin David Hoyle
`Title: COMPUTER INTERFACE METHOD AND APPARATUS WITH
`PORTABLE NETWORK ORGANIZATION SYSTEM AND TARGETED
`ADVERTISING
`____________________
`
`Inter Partes Review No. IPR2014-0040
`__________________________________________________________________
`
`
`PETITIONER’S MOTION FOR ADMISSION PRO HAC VICE OF SCOTT
`M. BORDER PURSUANT TO 37 C.F.R. § 42.10(c)
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`MICROSOFT CORPORATION.
`Petitioner,
`
`v.
`
`B.E. TECHNOLOGY, LLC,
`Patent Owner
`
`Patent No. 6,771,290
`Issued: August 3, 2004
`Filed: July 16, 1999
`Inventors: Martin David Hoyle
`Title: COMPUTER INTERFACE METHOD AND APPARATUS WITH
`PORTABLE NETWORK ORGANIZATION SYSTEM AND TARGETED
`ADVERTISING
`____________________
`
`Inter Partes Review No. IPR2014-0040
`__________________________________________________________________
`
`
`PETITIONER’S MOTION FOR ADMISSION PRO HAC VICE OF SCOTT
`M. BORDER PURSUANT TO 37 C.F.R. § 42.10(c)
`
`
`
`Petitioner, Microsoft Corporation (“Microsoft”) respectfully requests that
`
`the Board recognize Scott M. Border, Esq. as counsel pro hac vice during this
`
`proceeding.1
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`
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`I.
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`BACKGROUND
`Microsoft’s Motion for Pro Hac Vice Admission is being filed pursuant to
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`and in compliance with the Notice of Filing Date Accorded to Petition and Notice
`
`For Setting The Time Period For Filing Patent Owner Preliminary Response for
`
`this Petition, which was mailed October 24, 2013 (Paper 4) (the “Notice”). The
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`Notice authorizes the parties to file motions for pro hac vice admission under 37
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`C.F.R. § 42.10(c). Further to the Notice, such “motions shall be filed in
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`accordance with the ‘Order – Authorizing Motion for Pro Hac Vice Admission’ in
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`Case IPR2013-00639 ” (the “Order”).
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`II. TIME OF FILING
`This Motion for Pro Hac Vice admission is being filed in accordance with
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`the Notice authorizing the immediate filing of the Motion for Pro Hac Vice
`
`admission.
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`1 A corresponding motion for Pro Hac Vice admission is being concurrently filed in
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`co-pending Inter Partes Review Case No. IPR2014-00039.
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`
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`III. STATEMENT OF FACTS
`As required by the Order, the following statement of facts, supported by the
`
`attached Declaration of Scott M. Border in Support of Motion for Pro Hac Vice
`
`Admission (“Border Decl.”), shows that there is good cause for the Patent Trial
`
`and Appeal Board (“Board”) to recognize Mr. Border pro hac vice in this
`
`proceeding.
`
`Lead counsel, Jeffrey P. Kushan, is a registered practitioner and is
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`experienced in proceedings before the USPTO.
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`Mr. Border is an experienced litigation attorney. Mr. Border has been a
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`litigating attorney for more than six years, and has been involved in numerous patent
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`litigation cases in federal courts. Mr. Border’s experience includes representing a
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`wide range of clients in complex intellectual property litigation, and he has
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`appeared as counsel for Microsoft in a number of litigation matters before the
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`International Trade Commission and various District Courts over the span of his
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`career. Mr. Border is a member in good standing of the Virginia State Bar and
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`the District of Columbia Bar, with no suspensions or disbarments from practice,
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`nor any application for admission to practice denied, nor any sanctions or
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`contempt citations, and is admitted to practice in the United States Court of
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`Appeals for the Federal Circuit, as well as the United States District Courts for
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`the Northern District of Florida, Eastern District of Texas, and Eastern District of
`
`
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`3
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`
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`Virginia. His mailing address is at Sidley Austin LLP, 1501 K Street, N.W.,
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`Washington, D.C. 2005, his email address is sborder@sidley.com, and his direct
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`dial is (202) 736-8818.
`
`Mr. Border has worked with lead counsel in all aspects of preparing
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`Microsoft’s Petition and the Declaration of Dr. Henry Houh filed in support of
`
`its Petition. As such, he has reviewed and is familiar with (i) U.S. Patent No.
`
`6,771,290, the patent at issue in this matter, (ii) the prior art relied upon in
`
`Microsoft’s Petition, and (iii) the legal and factual arguments made by
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`Microsoft. Mr. Border has also been involved in a number of other
`
`proceedings before the Board and is familiar with its established practices.
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`Accordingly, he has established familiarity with the subject matter at issue in
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`this proceeding and the conduct of the proceeding to date.
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`Mr. Border has read and will comply with the Office Patent Trial Practice
`
`Guide and the Board’s Rules for Practice for Trials set forth in part 42 of 37
`
`C.F.R, and he agrees to be subject to the USPTO Rules of Professional Conduct
`
`set forth in 37 C.P.R. §§11.01 et seq., and to disciplinary jurisdiction under 37
`
`C.P.R. §11.19(a). Mr. Border has not applied to appear pro hac vice in any
`
`other proceedings before the Office in the last three years.
`
`
`
`4
`
`
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`IV. ANALYSIS
`The facts contained in the Statement of Facts above, and contained in the
`
`Border Declaration, establish that there is good cause to admit Mr. Border pro hac
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`vice in this proceeding under 37 C.F.R. § 42.10(c). Lead counsel is a registered
`
`practitioner, Mr. Border is an experienced litigating attorney, and Mr. Border has
`
`an established familiarity with the subject matter at issue in the proceeding.
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`V. CONCLUSION
`Therefore, Microsoft respectfully submits that there is good cause for the
`
`Board to recognize Mr. Border as pro hac vice counsel during this proceeding.
`
`Microsoft’s Motion for Pro Hac Vice Admission is accompanied by a
`
`Declaration of Scott M. Border as required by the Order.
`
`In light of the foregoing, Microsoft respectfully submits there is good cause
`
`for the Board to recognize Mr. Border as counsel pro hac vice during this
`
`proceeding.
`
`
`Dated: October 25, 2013
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`Respectfully submitted,
`
`/Jeffrey P. Kushan/
`
`Jeffrey P. Kushan
`Reg. No. 43,301
`Sidley Austin LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`(202) 736-8914
`Attorney for Petitioner
`
`5
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`MICROSOFT CORPORATION.
`Petitioner,
`
`v.
`
`B.E. TECHNOLOGY, LLC,
`Patent Owner
`
`Patent No. 6,771,290
`Issued: August 3, 2004
`Filed: July 16, 1999
`Inventors: Martin David Hoyle
`Title: COMPUTER INTERFACE METHOD AND APPARATUS WITH
`PORTABLE NETWORK ORGANIZATION SYSTEM AND TARGETED
`ADVERTISING
`____________________
`
`Inter Partes Review No. IPR2014-0040
`__________________________________________________________________
`
`
`DECLARATION OF SCOTT M. BORDER IN SUPPORT OF MOTION
`FOR PRO HAC VICE ADMISSION
`
`
`
`
`
`
`
`I, Scott M. Border, being duly sworn and upon oath, hereby attest to the
`
`following:
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`1.
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`I am a member in good standing of the Bar of the State of Virginia
`
`and the District of Columbia.
`
`2.
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`I have not been suspended or disbarred from practice before any court
`
`or administrative body.
`
`3.
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`I have never had an application for admission to practice before any
`
`court or administrative body denied.
`
`4.
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`No sanctions or contempt citations has been imposed against me by
`
`any court or administrative body.
`
`5.
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`I have 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.
`
`6.
`
`I 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).
`
`7.
`
`I have not applied to appear pro hac vice before the Office in any
`
`other proceeding in the last three (3) years.
`
`8.
`
`I am an experienced litigation attorney, with 6 years of experience
`
`litigating patent cases in federal courts. My experience includes representing a
`
`
`
`
`
`wide range of clients in complex intellectual property litigation. I have
`
`appeared as counsel for Microsoft in a number of litigation matters over the
`
`span of my career.
`
`9.
`
`I have worked with lead counsel in all aspects of preparing
`
`Microsoft’s Petition and the Declaration of Dr. Henry Houh filed in support
`
`of its Petition. As such, I have reviewed and am familiar with (i) U.S.
`
`Patent No. 6,771,290, the patent at issue in this matter, (ii) the prior art
`
`relied upon in Microsoft’s Petition, and (iii) the legal and factual
`
`arguments made by Microsoft. I have also been involved in a number of
`
`other proceedings before the Board and is familiar with its established
`
`practices.
`
`10.
`
`I hereby declare that all statements made herein of my own
`
`knowledge are true and that all statements made on information and belief are
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`believed to be true; and further that these statements are made with knowledge
`
`that willful false statements and the like so made are punishable by fine or
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`imprisonment, or both, under Section 1001 of Title 18 of the United States
`
`Code.
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`Dated: October 25, 2013
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`
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`
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`_________________________
`Scott M. Border
`
`
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`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), this is to certify that on this 25th day of
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`October, 2013, I caused to be served a true and correct copy of the foregoing
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`MICROSOFT CORPORATION’S MOTION FOR PRO HAC VICE
`
`ADMISSION OF SCOTT M. BORDER UNDER 37 C.F.R. § 42.10 (and
`
`accompanying DECLARATION OF SCOTT M. BORDER) by Federal
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`Express on the following:
`
`
`
`
`
`James D. Stevens
`Reising Ethington, P.C.
`755 West Big Beaver Road, Suite 1850
`Troy, MI 48084
`
`
`Dated:
`
`October 25 , 2013
`
`
`
`Respectfully submitted,
`
`/Jeffrey P. Kushan/
`Jeffrey P. Kushan
`Reg. No. 43,401
`Attorney for Petitioner
`
`
`
`
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