`Trials@uspto.gov
`571-272-7822
`
`Date Entered: October 5, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`VIRNETX INC.,
`Patent Owner.
`_______________
`
`Case IPR2015-00810 (Patent 8,868,705 B2)
`Case IPR2015-00811 (Patent 8,868,705 B2)
`Case IPR2015-00812 (Patent 8,850,009 B2)
`_______________
`
`
`
`Before KARL D. EASTHOM, JENNIFER S. BISK, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`ORDER
`Granting Petitioner’s Motion for Admission
`Pro Hac Vice — Scott M. Border
`37 C.F.R. § 42.10
`
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`IPR2015-00810 (Patent 8,868,705)
`IPR2015-00811 (Patent 8,868,705)
`IPR2015-00812 (Patent 8,850,009)
`
`
`
`
`
`Petitioner, Apple Inc., filed a Motion for Admission Pro Hac Vice of
`Scott M. Border, which was accompanied by a declaration of Scott M.
`Border.1 Paper 10 (“Motion” or “Mot.”).2 Patent Owner has not opposed
`the Motion within one week after the filing of the Motion. See Paper 3
`(Notice of filing Date Accorded to Petition, 2, (citing Case IPR2013-00639,
`Paper 7)).
`Pursuant to 37 C.F.R. § 42.10(c), we may recognize counsel pro hac
`
`vice during a proceeding upon a showing of good cause, subject to the
`condition that lead counsel be a registered practitioner. In authorizing
`motions for pro hac vice, we require the moving party to provide a statement
`of facts showing there is good cause for us to recognize counsel pro hac
`vice, and an affidavit or declaration of the individual seeking to appear in the
`proceeding.
`Upon review of Petitioner’s Motion and supporting evidence, we
`determine that Petitioner has demonstrated that Scott M. Border has
`sufficient legal and technical qualifications to represent Petitioner in the
`above-identified proceedings. We also recognize that there is a need for
`Petitioner to have him involved in these proceedings.
`Accordingly, Petitioner has established that there is good cause for
`admitting Scott M. Border.
`It is
`ORDERED that Petitioner’s Motion for Pro Hac Vice Admission of
`
`
`1 We remind Petitioner that this declaration should have been filed as a
`separate exhibit and labeled properly. 37 C.F.R. § 42.63.
`2 Petitioner filed similar Motions in each of the captioned proceedings. For
`brevity, we refer here to the papers in IPR2015-00810.
`2
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`IPR2015-00810 (Patent 8,868,705)
`IPR2015-00811 (Patent 8,868,705)
`IPR2015-00812 (Patent 8,850,009)
`
`
`Scott M. Border is granted; Mr. Border is authorized to represent Petitioner
`Apple Inc. as back-up counsel in the above-identified proceedings;
`FURTHER ORDERED that Petitioner is to continue to have a
`registered practitioner represent it as lead counsel for the proceedings;
`FURTHER ORDERED that Scott M. Border is to comply with the
`Office Patent Trial Practice Guide and the Board’s Rules of Practice for
`Trials, as set forth in Part 42 of Title 37, Code of Federal Regulations, and to
`be subject to the Office’s disciplinary jurisdiction under 37 C.F.R.
`§ 11.19(a), and the USPTO Rules of Professional Conduct set forth in
`37 C.F.R. §§ 11.101 et. seq.; and
`FURTHER ORDERED that a copy of this Order shall be filed in
`IPR2015-00810, IPR2015-00811, and IPR2015-00812.
`
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`3
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`IPR2015-00810 (Patent 8,868,705)
`IPR2015-00811 (Patent 8,868,705)
`IPR2015-00812 (Patent 8,850,009)
`
`For Petitioner:
`Jeffrey Kushan
`Thomas A. Broughan, III
`SIDLEY AUSTIN LLP
`IPRNotices@sidley.com
`tbroughan@sidley.com
`
`For Patent Owner:
`Joseph Palys
`Naveen Modi
`PAUL HASTINGS LLP
`josephpalys@paulhastings.com
`naveenmodi@paulhastings.com
`
`Jason Stach
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, L.L.P.
`jason.stach@finnegan
`
`4