IPR2015-01031
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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
`
`v.
`
`OpenTV, Inc.,
`Patent Owner.
`
`Case IPR2015-01031
`Patent 7,900,229
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`
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`
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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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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________________________________
`
`
`
`APPLE INC.,
`Petitioner
`
`v.
`
`OpenTV, Inc.,
`Patent Owner.
`
`Case IPR2015-01031
`Patent 7,900,229
`
`
`
`
`
`PETITIONER’S MOTION FOR PRO HAC VICE ADMISSION PURSUANT
`TO 37 C.F.R. §42.10(C)
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`
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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 Melody Drummond
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`Hansen as counsel pro hac vice in this proceeding. Petitioner’s lead counsel in this
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`proceeding is a registered practitioner and, as illustrated below, Ms. Drummond
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`Hansen is an experienced litigator with an established familiarity with this
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`proceeding’s subject matter. Thus, there is good cause for the Board to recognize
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`Ms. Drummond Hansen as counsel pro hac vice in this proceeding.
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`II. TIME FOR FILING
`This Motion for Pro Hac Vice Admission is being filed no sooner than
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`twenty one (21) days after service of the petition. Unified Patents, Inc. v. Parallel
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`Iron, LLC, 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
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`14, 2015 (Paper No. 3). Petitioner’s lead and back-up counsel are registered
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`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
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`matter at issue in the proceeding.” 37 C.F.R. §42.10(c); Unified Patents, Case
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`1
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`IPR2015-01031
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`IPR2013-00639, Paper 7 (setting forth requirements for pro hac vice admission).
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`As set forth in her Declaration submitted herewith (Apple 1019), Ms. Drummond
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`Hansen is an experienced litigator. She is a Counsel with O’Melveny & Myers
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`LLP with 10 years of experience representing clients in patent and technology
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`related litigation, including matters involving similar technology to that at issue in
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`this proceeding. Ms. Drummond Hansen has litigated patent matters through trial
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`and appeal in courts across the country.
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`Ms. Drummond Hansen is also familiar with the subject matter of this
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`proceeding. She is counsel for Petitioner in the related district court litigation on
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`the patent at issue in this inter partes review, U.S. Patent No. 7,900,229 (“’229
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`Patent”). She has reviewed and analyzed the ’229 Patent, the patent holder’s
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`infringement contentions, and the prior art at issue in this proceeding. Ms.
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`Drummond Hansen participated in the preparation of Petitioner’s invalidity
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`contentions in the district court litigation, which include the same reference for the
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`ground instituted in this proceeding. She advised Petitioner on strategy regarding
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`Petitioner’s arguments in this IPR, reviewed the accompanying Declaration of Dr.
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`Knutson, and worked with Petitioner to find and identify the references relied upon
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`in the petition and to draft submissions to the Office. She also was involved in the
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`claim construction briefing for the ’229 Patent in the district court litigation.
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`2
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`IPR2015-01031
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`Based on her work in the co-pending district court litigation, involvement
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`with the petition in this proceeding, and the other facts detailed in his declaration,
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`Ms. Drummond Hansen has significant familiarity with the subject matter in this
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`proceeding. Petitioner wishes to apply Ms. Drummond Hansen’s knowledge of the
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`patent and litigation experience by employing her as counsel in this proceeding.
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`Admission of Ms. Drummond Hansen pro hac vice will enable Petitioner to avoid
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`unnecessary expense and duplication of work in this proceeding and between it and
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`the co-pending litigation. Because Ms. Drummond Hansen is an experienced
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`practitioner with an established familiarity with the subject matter of this
`
`proceeding, Petitioner respectfully submits that there is good cause under 37
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`C.F.R. § 42.10(c) to recognize Ms. Drummond Hansen as counsel pro hac 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 Melody Drummond Hansen (Apple 1020), as required by Unified
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`Patents, Case IPR2013-00639, Paper 7.
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`
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`October 26, 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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`3
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`IPR2015-01031
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`LIST OF EXHIBITS
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`Apple 1001 ………………...……… U.S. Patent No. 7,900,229 (“the ’229
`Patent”)
`
`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
`
`Apple 1003 ………………...……… European Patent Application No.
`00124464.9, Publication No. EP 11 00268
`A2 to Tomioka (“Tomioka”)
`
`Apple 1004 ………………...……… Excerpts from Jochen Schiller, Mobile
`Communications (2000) (“Schiller”)
`
`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”)
`
`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”)
`
`Apple 1010 ………………...……… Excerpts from Gerard O’Driscoll, The
`Essential Guide to Set-Top Boxes and
`Interactive TV (2000) (“O’Driscoll”)
`
`Apple 1011 ………………...……… Andrew Tokmakoff and Harry van Vliet,
`“Home Media Server Content
`Management,” Internet Multimedia
`Management Systems II, Proceedings of
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`4
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`IPR2015-01031
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`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)
`
`Apple 1015 ………………...……… Excerpts from Tomasz Imielinski and Julio
`C. Navas, “GPS-Based Geographic
`Addressing, Routing, and Resource
`Discovery,” Communications of the ACM
`(April 1999)
`
`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)
`
`Apple 1019 ………………...……… Declaration of Luann L. Simmons In
`Support of Motion for Pro Hac Vice
`Admission
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` Apple 1020 ………………...……… Declaration of Melody Drummond Hansen
` In Support of Motion for Pro Hac Vice
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` Admission
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`5
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`IPR2015-01031
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`CERTIFICATE OF SERVICE
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`I hereby certify that on October 26, 2015, I caused a true and correct copy of
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`the foregoing materials:
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`• Petitioner’s Motion For Pro Hac Vice Admission Pursuant To 37
`
`C.F.R. §42.10(c), and
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`• Exhibit Apple 1020, Declaration of Melody Drummond Hansen In
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`Support of 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 the
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`following attorney of record per the Patent Owner’s Mandatory Notices and Power
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`of Attorney:
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`
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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 26, 2015
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`/s/ Xin-Yi Zhou
`Xin-Yi Zhou (Reg. No. 63,366)
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`6
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