Paper No. 10
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`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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`APPLE INC.,
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`Petitioner
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`v.
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`VIRNETX, INC.,
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`Patent Owner
`____________
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`Case IPR2015-00811
`Patent 8,868,705
`____________
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`PETITIONER’S MOTION FOR ADMISSION PRO HAC VICE OF
`SCOTT M. BORDER PURSUANT TO 37 C.F.R. § 42.10(c)
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`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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`APPLE INC.,
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`Petitioner
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`v.
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`VIRNETX, INC.,
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`Patent Owner
`____________
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`Case IPR2015-00811
`Patent 8,868,705
`____________
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`PETITIONER’S MOTION FOR ADMISSION PRO HAC VICE OF
`SCOTT M. BORDER PURSUANT TO 37 C.F.R. § 42.10(c)
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`Petitioner, Apple Inc. (“Apple”) respectfully requests that the Board
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`recognize Scott M. Border, Esq. as pro hac vice counsel for this proceeding.
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`I.
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`BACKGROUND
`Apple’s Motion for Pro Hac Vice Admission is being filed pursuant to and
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`in compliance with the Notice of Filing Date Accorded to Petition and Time Period
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`for Filing Patent Owner Preliminary Response, which was filed March 18, 2015
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`(Paper 3) (the “Notice”). The Notice authorizes the parties to file motions for pro
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`hac vice admission under 37 C.F.R. § 42.10(c). Further to the Notice, such
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`“motions shall be filed in accordance with the ‘Order – Authorizing Motion for
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`Pro Hac Vice Admission’ in 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 Filing of a Motion for Pro Hac Vice admission, and is
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`filed greater than 21 days after that Notice.
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`III. STATEMENT OF FACTS
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`As required by the Order, the following statement of facts, supported by the
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`attached Declaration of Scott M. Border in Support of Motion for Pro Hac Vice
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`Admission (“Border Decl.”), shows that there is good cause for the Patent Trial
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`and Appeal Board (“Board”) to recognize Mr. Border pro hac vice in this
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`proceeding. As required by 37 C.F.R. § 42.10(c), lead counsel, Jeffrey P. Kushan,
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`is a registered practitioner 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 seven years, and has been involved in numerous
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`patent litigation cases in federal courts and matters before the Board. Mr. Border’s
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`experience includes representing a wide range of clients in complex intellectual
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`property litigation, and he has appeared as counsel for Apple in a number of
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`litigation matters before the International Trade Commission, and various District
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`Courts. Mr. Border has also appeared pro hac vice in other matters before the
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`Board.1 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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`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.
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`1 Mr. Border was admitted pro hac vice in IPR2013-00292, IPR2014-00039,
`IPR2014-00040, IPR2014-00481, IPR2014-00482, and IPR2015-00074.
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`3
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`Mr. Border has worked with lead counsel in most aspects of this
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`proceeding. As such, Mr. Border has reviewed and is very familiar with (i) U.S.
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`Patent No. 8,868,705, the patent at issue in this proceeding, (ii) the prior art
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`relied upon in Apple’s Petition, (iii) the legal and factual arguments that have
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`been addressed by Apple, and (iv) the developments in this proceeding since
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`the filing of Apple’s Petition, as well as the developments in related matters
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`before the Board. Mr. Border has also been involved in a number of other
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`proceedings before the Board, has been admitted pro hac vice as backup
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`counsel in other matters before the Board, and is familiar with its established
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`practices. Accordingly, he has established familiarity with the subject matter
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`at issue in these proceedings and the conduct of these proceedings to date.
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`Mr. Border has read and will comply with the Office Patent Trial Practice
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`Guide and the Board’s Rules for Practice for Trials set forth in part 42 of 37
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`C.F.R., and he agrees to be subject to the USPTO Rules of Professional Conduct
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`set forth in 37 C.F.R. §§11.01 et seq., and to disciplinary jurisdiction under 37
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`C.F.R. §11.19(a).
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`IV. ANALYSIS
`The facts contained in the Statement of Facts above, and contained in the
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`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
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`practitioner, Mr. Border is an experienced litigating attorney, and Mr. Border has
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`an established familiarity with the subject matter at issue in these proceedings.
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`V. CONCLUSION
`Therefore, Apple respectfully submits that there is good cause for the Board
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`to recognize Mr. Border as Pro Hac Vice during these proceedings.
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`Apple’s Motion for Pro Hac Vice Admission is accompanied by a
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`Declaration of Scott M. Border as required by the Order.
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`Dated: September 18, 2015
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`Respectfully submitted,
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`/Jeffrey P. Kushan/
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`Jeffrey P. Kushan
`Reg. No. 43,401
`Sidley Austin LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`(202) 736-8914
`Attorney for Petitioner
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`5
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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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`
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`APPLE INC.
`Petitioner
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`v.
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`VIRNETX, INC.,
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`____________
`
`Case IPR2015-00811
`Patent 8,868,705
`____________
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`DECLARATION OF SCOTT M. BORDER IN SUPPORT OF MOTION
`FOR PRO HAC VICE ADMISSION
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`I, Scott M. Border, being duly sworn and upon oath, hereby attest to the
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`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
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`and the District of Columbia.
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`2.
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`I have not been suspended or disbarred from practice before any
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`court or administrative body.
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`3.
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`I have never had an application for admission to practice before
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`any court or administrative body denied.
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`4.
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`No sanctions or contempt citations has been imposed against me by
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`any court or administrative body.
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`5.
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`I have read and will comply with the Office Patent Trial Practice
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`Guide and the Board’s Rules of Practice for Trials set forth in part 42 of 37 C.F.R.
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`6.
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`I will be subject to the USPTO Rules of Professional Conduct set forth
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`in 37 C.F.R. §§ 11.101 et seq. and disciplinary jurisdiction under 37 C.F.R. §
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`11.19(a).
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`7.
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`I have applied to appear pro hac vice and have been granted
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`permission to appear pro hac vice before the Office in six proceedings in the
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`last three (3) years. See IPR2013-00292, IPR2014-00039, IPR2014-00040,
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`IPR2014-00481, IPR2014-00482, and IPR2015-00074.
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`8.
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`I am an experienced litigation attorney, with 7 years of experience
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`litigating patent cases in federal courts. My experience includes representing a
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`wide range of clients in complex intellectual property litigation. I have
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`appeared as counsel for Apple in a number of litigation matters over the
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`span of my career.
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`9.
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`I have worked with lead counsel in most aspects of his
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`participation in this proceeding. As such, I have reviewed and am very
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`familiar with (i) U.S. Patent No. 8,868,705 the patent at issue in this matter,
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`(ii) the prior art relied upon in Apple’s Petition, (iii) the legal and factual
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`arguments made by Apple, and (iv) the developments in this proceeding after
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`the filing of Apple’s Petition as well as the developments in related matters
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`before the Board. I have also been involved in a number of other proceedings
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`before the Board and I am familiar with its established practices.
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`10.
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`I hereby declare that all statements made herein of my own
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`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
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`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
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`Code.
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`Dated: September 18, 2015
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`Scott M. Border
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), I hereby certify that on this 18th day of
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`September, 2015, a true and correct copy of the foregoing Petitioner’s Motion for
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`Pro Hac Vice Admission of Scott M. Border Under 37 C.F.R. § 42.10 (and
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`accompanying Declaration of Scott M. Border) was served by electronic mail on
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`the following counsel for Patent Owner:
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`Joseph E. Palys
`E-mail: josephpalys@paulhastings.com
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`Naveen Modi
`E-mail: naveenmodi@paulhastings.com
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`Jason E. Stach
`E-mail: Jason.stach@finnegan.com
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`Dated:
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`Respectfully submitted,
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`September 18, 2015
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`/Jeffrey P. Kushan/
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`Jeffrey P. Kushan
`Reg. No. 43,401
`Sidley Austin LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`(202) 736-8914
`Attorney for Petitioner
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