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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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`APPLE INC.,
`Petitioner
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`v.
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`OPENTV, INC.,
`Patent Owner.
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`Case IPR2015-01031
`Patent 7,900,229
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`PETITIONER’S MOTION FOR PRO HAC VICE ADMISSION
`PURSUANT TO 37 C.F.R. §42.10(C)
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`IPR2015-01031
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`I.
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`INTRODUCTION
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`Pursuant to 37 C.F.R. § 42.10(c), Petitioner Apple Inc. (“Petitioner” or
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`“Apple”) respectfully requests that the Board recognize Luann L. Simmons as counsel
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`pro hac vice in this proceeding. Petitioner’s lead counsel in this proceeding is a
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`registered practitioner and, as illustrated below, Ms. Simmons is an experienced
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`litigator with an established familiarity with this proceeding’s subject matter. Thus,
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`there is good cause for the Board to recognize Ms. Simmons pro hac vice in this
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`proceeding.
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`II. TIME FOR FILING
`This Motion for Pro Hac Vice Admission is being filed no sooner than twenty
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`one (21) days after service of the petition. Unified Patents, Inc. v. Parallel Iron, LLC,
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`Case IPR2013-00639, Paper No. 7 (P.T.A.B. Oct. 15, 2013).
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`III. STATEMENT OF FACTS
`This motion is authorized by the Notice of Filing Date Accorded to Petition
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`and Time for Filing Patent Owner Preliminary Response that was mailed on April 14,
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`2015 (Paper No. 3). Petitioner’s lead and back-up counsel are registered practitioners.
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`Where lead counsel is a registered practitioner, the Board may permit a non-
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`registered practitioner to appear pro hac vice “upon a showing that counsel is an
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`experienced litigating attorney and has established familiarity with the subject matter
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`at issue in the proceeding.” 37 C.F.R. §42.10(c); Unified Patents, Case IPR2013-00639,
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`Paper 7 (setting forth requirements for pro hac vice admission). As set forth in her
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`Declaration submitted herewith (Apple 1019), Ms. Simmons is an experienced
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`litigator. She is a Partner with O’Melveny & Myers LLP with over 16 years of
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`experience representing clients in patent and technology related litigation, including
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`matters involving similar technology to that at issue in this proceeding. Ms. Simmons
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`has litigated patent matters through trial and appeal and has argued complex claim
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`construction and invalidity issues in numerous district court proceedings.
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`Ms. Simmons is also familiar with the subject matter of this proceeding. She is
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`a lead counsel for Petitioner in the related district court litigation on the patent at
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`issue in this inter partes review, U.S. Patent No. 7,900,229 (“’229 Patent”). As such, she
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`has reviewed and analyzed the ’229 Patent, the patent holder’s infringement
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`contentions, and the prior art at issue in this proceeding. Ms. Simmons was involved
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`in the preparation of Petitioner’s invalidity contentions in the district court litigation,
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`which include the same references and grounds asserted in this proceeding. She was
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`also involved in the claim construction briefing and oral arguments for the ’229 Patent
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`in the district court litigation.
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`Based on her work in the co-pending district court litigation, involvement with
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`the petition in this proceeding, and the other facts detailed in his declaration, Ms.
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`Simmons has significant familiarity with the subject matter in this proceeding.
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`Petitioner wishes to apply Ms. Simmons’ knowledge of the patent and litigation
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`experience by employing her as counsel in this proceeding. Admission of Ms.
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`Simmons pro hac vice will enable Petitioner to avoid unnecessary expense and
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`duplication of work in this proceeding and between it and the co-pending litigation.
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`Because Ms. Simmons is an experienced practitioner with an established familiarity
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`with the subject matter of this proceeding, Petitioner respectfully submits that there is
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`good cause under 37 C.F.R. § 42.10(c) to recognize Ms. Simmons as counsel pro hac
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`vice during this proceeding.
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`IV. DECLARATION OF INDIVIDUAL SEEKING TO APPEAR
`This motion for Pro Hac Vice Admission is supported by the accompanying
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`Declaration of Luann L. Simmons (Apple 1019), as required by Unified Patents, Case
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`IPR2013-00639, Paper 7.
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`October 2, 2015
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`Respectfully submitted,
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`/s/ Xin-Yi Zhou
`Xin-Yi Zhou (Reg. No. 63,366)
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`PETITIONER’S UPDATED EXHIBIT LIST
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`Apple 1001 ………………...……… U.S. Patent No. 7,900,229 (“the ’229 Patent”)
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`Apple 1002 ………………...……… Excerpts from File History for U.S. Patent
`Application No. 10/271,801, which
`ultimately issued as U.S. Patent No.
`7,900,229
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`Apple 1003 ………………...……… European Patent Application No.
`00124464.9, Publication No. EP 11 00268
`A2 to Tomioka (“Tomioka”)
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`Apple 1004 ………………...……… Excerpts from Jochen Schiller, Mobile
`Communications (2000) (“Schiller”)
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`Apple 1005 ………………...……… Certified English Translation of Japanese
`Unexamined Patent Application Publication
`H11-7453 to Kotani, and Japanese language
`reference (“Kotani”)
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`Apple 1006 ………………...……… U.S. Patent No. 7,305,691 (“Cristofalo”)
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`Apple 1007 ………………...……… U.S. Patent Application Publication No.
`2002/0111154 (“Eldering”)
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`Apple 1008 ………………...……… U.S. Patent Application Publication No.
`2002/0111172 (“DeWolf”)
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`Apple 1009 ………………...……… U.S. Patent No. 5,861,881 (“Freeman”)
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`Apple 1010 ………………...……… Excerpts from Gerard O’Driscoll, The
`Essential Guide to Set-Top Boxes and
`Interactive TV (2000) (“O’Driscoll”)
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`Apple 1011 ………………...……… Andrew Tokmakoff and Harry van Vliet,
`“Home Media Server Content Management,”
`Internet Multimedia Management Systems II,
`Proceedings of SPIE Vol. 4519 (July 2001)
`(“Tokmakoff”)
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`Apple 1012 ………………...……… Matt Carmichael, “This Ad’s for You,”
`Advertising Age (April 17, 2000)
`(“Carmichael”)
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`Apple 1013 ………………...……… “Introduction to MPEG-7 (v3.0)” (Neil Day
`and José Martinez eds.), ISO/IEC
`JTC1/SC29/ WG11, Singapore (March
`2001)
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`Apple 1014 ………………...……… Introduction to MPEG-7 Multimedia
`Content Description Interface (B.S.
`Manjunath, Philippe Salembier and Thomas
`Sikora eds.) (2002, reprinted 2003)
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`Apple 1015 ………………...……… Excerpts from Tomasz Imielinski and Julio
`C. Navas, “GPS-Based Geographic
`Addressing, Routing, and Resource
`Discovery,” Communications of the ACM
`(April 1999)
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`Apple 1016 ………………...……… Declaration of Charles A. Knutson in
`Support of Apple Inc.’s Petition for Inter
`Partes Review of U.S. Patent No. 7,900,229
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`Apple 1017 ………………...……… Curriculum vitae of Charles D. Knutson,
`Ph.D.
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`Apple 1018 ………………...……… Joint Claim Construction and Prehearing
`Statement filed in OpenTV Inc. v. Apple
`Inc., Case No. 3:14-cv-01622-JST, ECF Nos.
`95 and 95-1 (N.D. Cal. Dec. 19, 2014)
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`Apple 1019 ………………...……… Declaration of Luann L. Simmons In
`Support of Motion for Pro Hac Vice
`Admission
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`CERTIFICATE OF SERVICE
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`I hereby certify that on October 2, 2015, I caused a true and correct
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`copy of the foregoing materials:
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`• Petitioner’s Motion For Pro Hac Vice Admission Pursuant To 37 C.F.R.
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`§42.10(c), and
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`• Exhibit Apple 1019, Declaration of Luann L. Simmons In Support of
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`Petitioner’s Motion For Pro Hac Vice Admission
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`to be served via electronic mail and Express Mail or an equivalent service on
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`the following attorney of record per the Patent Owner’s Mandatory Notices and
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`Power of Attorney:
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`Erika H. Arner (erika.arner@finnegan.com)
`Joshua L. Goldberg (joshua.goldberg@finnegan.com)
`Alyssa Holtslander (alyssa.holtslander@finnegan.com)
`Daniel Tucker (daniel.tucker@finnegan.com)
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`11955 Freedom Driver
`Reston, Virginia, 20190-5675
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`October 2, 2015
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`/s/ Xin-Yi Zhou
`Xin-Yi Zhou (Reg. No. 63,366)
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