Paper No. 31
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`THE MANGROVE PARTNERS MASTER FUND, LTD. and APPLE INC.
`Petitioners,
`
`v.
`
`VIRNETX INC.,
`Patent Owner.
`____________________
`
`Case No. IPR2015-010461
`Patent No. 6,502,135
`____________________
`
`
`PETITIONER APPLE’S MOTION FOR ADMISSION PRO HAC VICE OF
`SCOTT M. BORDER PURSUANT TO 37 C.F.R. § 42.10(c)
`
`
`1 Apple Inc., who filed a petition in IPR2016-00062, has been joined as a Petitioner
`in the instant proceeding.
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`THE MANGROVE PARTNERS MASTER FUND, LTD. and APPLE INC.
`Petitioners,
`
`v.
`
`VIRNETX INC.,
`Patent Owner.
`____________________
`
`Case No. IPR2015-010461
`Patent No. 6,502,135
`____________________
`
`
`PETITIONER APPLE’S MOTION FOR ADMISSION PRO HAC VICE OF
`SCOTT M. BORDER PURSUANT TO 37 C.F.R. § 42.10(c)
`
`
`1 Apple Inc., who filed a petition in IPR2016-00062, has been joined as a Petitioner
`in the instant proceeding.
`
`
`
`
`
`IPR2015-01046
`
`
`
`
`Motion for Pro Hac Vice of Scott M. Border
`
`Petitioner Apple Inc. (“Apple”) respectfully requests that the Board
`
`recognize Scott M. Border, Esq. as pro hac vice counsel for Apple for this
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`proceeding. Petitioner The Mangrove Partners Fund, Ltd. has indicated they
`
`do not oppose this motion. Patent Owner has indicated the following:
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`“VirnetX opposes the pro hac vice motion to the extent that it continues to
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`oppose Apple’s involvement in IPR2015-01046 and IPR2015-01047.”
`
`I.
`
`BACKGROUND
`Apple’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, which was filed April 24,
`
`2015 (Paper 4) (the “Notice”). The Notice authorizes parties to file motions for
`
`pro 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
`
`Pro Hac Vice Admission’ in Case IPR2013-00639 ” (the “Order”).
`
`II. TIME OF FILING
`This Motion for Pro Hac Vice admission is being filed in accordance with
`
`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.
`
`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
`
`
`
`
`
`IPR2015-01046
`
`Admission (Ex. 1028), shows that there is good cause for the Patent Trial and
`
`Motion for Pro Hac Vice of Scott M. Border
`
`
`
`Appeal Board (“Board”) to recognize Mr. Border pro hac vice in this proceeding.
`
`As required by 37 C.F.R. § 42.10(c), Apple’s lead counsel, Jeffrey P. Kushan, is a
`
`registered practitioner 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
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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
`
`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
`
`Board.2 Mr. Border is a member in good standing of the Virginia State Bar and the
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`District of Columbia Bar, with no suspensions or disbarments from practice, nor
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`any application for admission to practice denied, nor any sanctions or contempt
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`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
`
`2 Mr. Border was admitted pro hac vice in IPR2013-00292, IPR2014-00039,
`
`IPR2014-00040, IPR2014-00481, IPR2014-00482, IPR2015-00074, IPR2015-
`
`00810, IPR2015-00811, IPR2015-00812, IPR2015-00866, IPR2015-00868,
`
`IPR2015-00870, and IPR2015-00871.
`
`
`
`3
`
`
`
`IPR2015-01046
`
`District of Florida, Eastern District of Texas, and Eastern District of Virginia. His
`
`Motion for Pro Hac Vice of Scott M. Border
`
`
`
`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.
`
`Mr. Border has worked with lead counsel in most aspects of his participation
`
`in this proceeding. As such, he has reviewed and is very familiar with (i) U.S.
`
`Patent No. 6,502,135, the patent at issue in this proceeding, (ii) the prior art relied
`
`upon in Apple’s Petition, (iii) the legal and factual arguments that have been
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`addressed by Apple, and (iv) the developments in this proceeding since the filing
`
`of Apple’s Petition, as well as the developments in related matters before the
`
`Board. 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.F.R. §§11.01 et seq., and to disciplinary jurisdiction under 37
`
`C.F.R. §11.19(a).
`
`
`
`4
`
`
`
`
`
`IPR2015-01046
`
`IV. ANALYSIS
`The facts contained in the Statement of Facts above, and contained in the
`
`Motion for Pro Hac Vice of Scott M. Border
`
`Border Declaration, establish that there is good cause to admit Mr. Border pro hac
`
`vice in this proceeding under 37 C.F.R. § 42.10(c). Apple’s lead counsel is a
`
`registered practitioner, 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, Apple respectfully submits that there is good cause for the Board
`
`to recognize Mr. Border as Pro Hac Vice for Apple during these proceedings.
`
`Petitioner’s Motion for Pro Hac Vice Admission is accompanied by a Declaration
`
`of Scott M. Border as required by the Order.
`
`
`
`
`
`
`
`Dated: January 27, 2016
`
`Respectfully Submitted,
`
`
`
`/Jeffrey P. Kushan/
`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 Apple Inc.
`
`
`5
`
`
`
`
`
`
`
`IPR2015-01046
`
`
`
`
`Motion for Pro Hac Vice of Scott M. Border
`
`1003
`1004
`1005
`
`1006
`1007
`1008
`1009
`
`1010
`
`1011
`
`1012
`1013
`1014
`
`Exhibit # Reference Name
`1001
`U.S. Patent No. 6,502,135 to Munger
`1002
`Takahiro Kiuchi and Shigekoto Kaihara, “C-HTTP - The Development
`of a Secure, Closed HTTP-based Network on the Internet,” published
`by IEEE in the Proceedings of SNDSS 1996
`Declaration of Dr. Roch Guerin
`[RESERVED]
`Mockapetris, P., RFC 1034, “Domain Names–Concepts and Facilities,”
`Nov. 1997
`[RESERVED]
`Patent Owner’s Preliminary Response, Paper 7, in IPR2014-00610
`Excerpts from Webster’s Third New International Dictionary (1971)
`VirnetX’s Reply Claim Construction Brief in VirnetX Inc. v. Cisco
`Systems, Inc. et al., 6:10-cv-417 (Dec. 19, 2011) (E.D. Tex.)
`Bradner, S., RFC 2026, “The Internet Standards Process – Revision 3,”
`Oct. 1996
`Decision to Institute Inter Partes Review, Paper 9, in IPR2014- 00610
`(Oct. 15, 2014)
`[RESERVED]
`[RESERVED]
`Berners-Lee et al., RFC 1945, “Hypertext Transfer Protocol --
`HTTP/1.0,” May 1996
`Patent Owner’s Preliminary Response, Paper 10, in IPR2013- 00348
`Eastlake, D., RFC 2535, “Domain Name System Security Extensions,”
`Mar. 1999
`Patent Owner’s Comments in Response to Examiner’s Determination
`in Inter Partes Reexamination 95/001,792 (March, 11, 2015)
`VirnetX’s Opening Claim Construction Brief in VirnetX Inc. v. Cisco
`Systems, Inc. et al., 6:10-cv-417 (Dec. 19, 2011) (E.D. Tex.)
`Memorandum Opinion and Order in VirnetX Inc. v. Cisco Systems,
`Inc. et al., 6:10-cv-417 (April 25, 2012) (E.D. Tex.)
`
`1015
`1016
`
`1017
`
`1018
`
`1019
`
`
`
`
`
`IPR2015-01046
`
`
`
`
`Motion for Pro Hac Vice of Scott M. Border
`
`Exhibit # Reference Name
`1020
`Petition for Inter Partes Review in IPR2013-00349
`1021
`Patent Owner’s Preliminary Response, Paper 11, in IPR2014- 00558
`1022
`Decision to Institute Inter Partes Review, Paper 15, in IPR2014- 00237
`1023
`“Glossary for the Linux FreeS/WAN project,” (Feb. 21, 2002)
`1024
`[RESERVED]
`1025
`Declaration of Dr. Roch Guerin in IPR2014-00401
`1026
`Petitioner’s Proposed Revisions of Patent Owner’s Requests for
`Production
`Petitioner’s Proposed Revisions of Patent Owner’s Interrogatories
`
`1027
`
`1028
`[NEW]
`
`Declaration of Scott M. Border in Support of Petitioner Apple’s
`Motion for Pro Hac Vice Admission
`
`
`
`7
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`
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`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), this is to certify that on this 27th day of
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`January, 2016, I caused to be served a true and correct copy of the foregoing on the
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`following counsel for Patent Owner:
`
`Joseph E. Palys, Naveen Modi
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`PH-VirnetX-IPR@paulhastings.com
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`
`
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`
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`Respectfully submitted,
`
`
`
`/Jeffrey P. Kushan/
`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 Apple Inc.
`
`
`
`Dated:
`
`January 27, 2016
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