Paper No. 16
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`MICROSOFT CORPORATION
`Petitioner,
`
`v.
`
`IPR LICENSING, INC.
`Patent Owner
`
`Patent No. 8,380,244
`Issued: February 19, 2013
`Filed: November 9, 2009
`
`Title: DUAL MODE UNIT FOR SHORT RANGE, HIGH RATE AND LONG
`RANGE, LOWER RATE DATA COMMUNICATIONS
`____________________
`
`Inter Partes Review Nos. IPR2015-00074
`________________________________________________________________
`
`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.
`
`IPR LICENSING, INC.
`Patent Owner
`
`Patent No. 8,380,244
`Issued: February 19, 2013
`Filed: November 9, 2009
`
`Title: DUAL MODE UNIT FOR SHORT RANGE, HIGH RATE AND LONG
`RANGE, LOWER RATE DATA COMMUNICATIONS
`____________________
`
`Inter Partes Review Nos. IPR2015-00074
`________________________________________________________________
`
`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 pro hac vice counsel and back-up
`
`counsel during this proceeding.
`
`I.
`
`BACKGROUND
`Microsoft’s Motion for Pro Hac Vice Admission is being filed pursuant to
`
`and in compliance with the Notice of Filing Date Accorded to Petition and Time
`
`Period For Filing Patent Owner Preliminary Response for this Petition, which was
`
`mailed November 6, 2014 (Paper 7) (the “Notice”). The Notice authorizes the
`
`parties to file motions for pro hac vice admission under 37 C.F.R. § 42.10(c).
`
`Further to the Notice, such “motions shall be filed in accordance with the ‘Order –
`
`Authorizing Motion for Pro Hac Vice Admission’ in Case IPR2013-00639 .” Id.
`
`at 2.
`
`II.
`
`TIME OF FILING
`This Motion for Pro Hac Vice admission is being filed more than twenty-one
`
`days after service of the petition, i.e., the time specified in the “Order –
`
`Authorizing Motion for Pro Hac Vice Admission” in Case IPR2013-00639.
`
`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. Substitute lead counsel, Joseph Micallef, and substitute backup
`
`counsel, Douglas Lewis, are registered practitioners and are experienced in
`
`proceedings before the USPTO.
`
`Mr. Border is an experienced litigation attorney. Mr. Border has been a
`
`litigating attorney for more than seven years, and has been involved in numerous
`
`patent litigation cases in federal courts and matters before the Board. Mr. Border’s
`
`experience includes representing a wide range of clients in complex intellectual
`
`property litigation, and he has appeared as counsel for Microsoft in a number of
`
`litigation matters before the International Trade Commission, various District
`
`Courts, as well as matters before the Board.1 Mr. Border is a member in good
`
`standing of the Virginia State Bar and the District of Columbia Bar, with no
`
`suspensions or disbarments from practice, nor any application for admission to
`
`practice denied, nor any sanctions or contempt citations, and is admitted to
`
`practice in the United States Court of Appeals for the Federal Circuit, as well as
`
`the United States District Courts for the Northern District of Florida, Eastern
`
`District of Texas, and Eastern District of Virginia. His mailing address is at
`
`Sidley Austin LLP, 1501 K Street, N.W., Washington, D.C. 2005, his email
`
`address is sborder@sidley.com, and his direct dial is (202) 736-8818.
`
`1 Mr. Border was admitted pro hac vice in IPR2013-00292, IPR2014-00039,
`IPR2014-00040.
`
`3
`
`
`
`Mr. Border has worked with substitute lead counsel in most aspects of his
`
`participation in this proceeding and the related proceeding in District Court for
`
`the District of Delaware. As such, he has reviewed and is familiar with (i) U.S.
`
`Patent No. 8,380,244, the patent at issue in this proceeding, (ii) the prior art
`
`relied upon in Microsoft’s Petition, (iii) the legal and factual arguments that
`
`have been addressed by Microsoft and (iv) the developments in this proceeding
`
`since the filing of Microsoft’s Petition. Mr. Border has also been involved in a
`
`number of other proceedings before the Board, has been admitted pro hac vice
`
`as backup counsel in other matters before the Board, and is familiar with its
`
`established practices. Accordingly, he has established familiarity with the
`
`subject matter at issue in these proceedings and the conduct of these
`
`proceedings to date.
`
`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).
`
`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
`
`4
`
`
`
`vice in this proceeding under 37 C.F.R. § 42.10(c) and assignment as additional
`
`back-up counsel. Substitute Lead and Backup counsel are registered practitioners,
`
`Mr. Border is an experienced litigating attorney, and Mr. Border has an established
`
`familiarity with the subject matter at issue in these proceedings.
`
`V.
`
`CONCLUSION
`Therefore, Microsoft respectfully submits that there is good cause for the
`
`Board to recognize Mr. Border as Pro Hac Vice back-up counsel during these
`
`proceedings. Microsoft’s Motion for Pro Hac Vice Admission is accompanied by a
`
`Declaration of Scott M. Border as required by the Order.
`
`Dated: February 11, 2015
`
`Respectfully submitted,
`
`/Joseph A. Micallef/
`Joseph A. Micallef
`Reg. No. 39,772
`Sidley Austin LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`(202) 736-8492
`Attorney for Petitioner
`
`5
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`MICROSOFT CORPORATION
`Petitioner,
`
`v.
`
`IPR LICENSING, INC.
`Patent Owner
`
`Patent No. 8,380,244
`Issued: February 19, 2013
`Filed: November 9, 2009
`
`Title: DUAL MODE UNIT FOR SHORT RANGE, HIGH RATE AND LONG
`RANGE, LOWER RATE DATA COMMUNICATIONS
`____________________
`
`Inter Partes Review Nos. IPR2015-00074
`
`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:
`
`1.
`
`I am a member in good standing of the Bar of the State of Virginia
`
`and the District of Columbia.
`
`2.
`
`I have not been suspended or disbarred from practice before any court
`
`or administrative body.
`
`3.
`
`I have never had an application for admission to practice before any
`
`court or administrative body denied.
`
`4.
`
`No sanctions or contempt citations has been imposed against me by
`
`any court or administrative body.
`
`5.
`
`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 applied to appear pro hac vice and have been granted
`
`permission to appear pro hac vice before the Office in three proceedings in the
`
`last three (3) years. See IPR2013-00292, PR2014-00039 and IPR2014-00040.
`
`8.
`
`I am an experienced litigation attorney, with 7 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, including
`
`matters before the Board, over the span of my career.
`
`9.
`
`I have worked with substitute lead counsel in most aspects of his
`
`participation in this proceeding and the related District Court proceeding for
`
`the District of Delaware. As such, I have reviewed and am familiar with (i)
`
`U.S. Patent No. 8,380,244, the patent at issue in this matter, (ii) the prior art
`
`relied upon in Microsoft’s Petition, (iii) the legal and factual arguments
`
`made by Microsoft, and (iv) the developments in this proceeding after the
`
`filing of Microsoft’s Petition. I have also been involved in a number of other
`
`proceedings before the Board and I am 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
`
`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
`
`imprisonment, or both, under Section 1001 of Title 18 of the United States
`
`Code.
`
`Dated: February 11, 2015
`
`Scott M. Border
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), this is to certify that on this 11th day of
`
`February, 2015, I caused to be served a true and correct copy of the foregoing
`
`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) on the following:
`
`Jonathan D. Link (Reg. No. 41,548)
`Latham & Watkins LLP
`555 11th Street, NW, Suite 1000
`Washington, D.C. 20004-1304
`Telephone: (202) 637-2200
`Facsimile: (202) 637-2201
`E-mail: jonathan.link@lw.com
`
`Julie M. Holloway (Reg. No. 44,769)
`Latham & Watkins LLP
`505 Montgomery Street, Suite 2000
`San Francisco, CA 94111-6538
`Telephone: (415) 391-0600
`Facsimile: (415) 395-8095
`E-mail: julie.holloway@lw.com
`
`Dated:
`
`February 11, 2015
`
`Respectfully submitted,
`
`/Joseph A. Micallef/
`Joseph A. Micallef
`Reg. No. 39,772
`Sidley Austin LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`(202) 736-8492
`Attorney for Petitioner
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
