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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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`THE MANGROVE PARTNERS MASTER FUND, LTD. and APPLE INC.
`Petitioners,
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`v.
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`VIRNETX INC.,
`Patent Owner.
`____________________
`
`Case No. IPR2015-010461
`Patent No. 6,502,135
`____________________
`
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`PETITIONER APPLE’S MOTION FOR ADMISSION PRO HAC VICE OF
`SCOTT M. BORDER PURSUANT TO 37 C.F.R. § 42.10(c)
`
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`1 Apple Inc., who filed a petition in IPR2016-00062, has been joined as a Petitioner
`in the instant proceeding.
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`IPR2015-01046
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`Motion for Pro Hac Vice of Scott M. Border
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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 Apple for this
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`proceeding. Petitioner The Mangrove Partners Fund, Ltd. has indicated they
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`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.”
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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
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`Period for Filing Patent Owner Preliminary Response, which was filed April 24,
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`2015 (Paper 4) (the “Notice”). The Notice authorizes parties to file motions for
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`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
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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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`IPR2015-01046
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`Admission (Ex. 1028), shows that there is good cause for the Patent Trial and
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`Motion for Pro Hac Vice of Scott M. Border
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`Appeal Board (“Board”) to recognize Mr. Border pro hac vice in this proceeding.
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`As required by 37 C.F.R. § 42.10(c), Apple’s lead counsel, Jeffrey P. Kushan, is a
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`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.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
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`Federal Circuit, as well as the United States District Courts for the Northern
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`2 Mr. Border was admitted pro hac vice in IPR2013-00292, IPR2014-00039,
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`IPR2014-00040, IPR2014-00481, IPR2014-00482, IPR2015-00074, IPR2015-
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`00810, IPR2015-00811, IPR2015-00812, IPR2015-00866, IPR2015-00868,
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`IPR2015-00870, and IPR2015-00871.
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`3
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`IPR2015-01046
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`District of Florida, Eastern District of Texas, and Eastern District of Virginia. His
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`Motion for Pro Hac Vice of Scott M. Border
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`mailing address is at Sidley Austin LLP, 1501 K Street, N.W., Washington, D.C.
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`2005, his email address is sborder@sidley.com, and his direct dial is (202) 736-
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`8818.
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`Mr. Border has worked with lead counsel in most aspects of his participation
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`in this proceeding. As such, he has reviewed and is very familiar with (i) U.S.
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`Patent No. 6,502,135, the patent at issue in this proceeding, (ii) the prior art relied
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`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
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`of Apple’s Petition, as well as the developments in related matters before the
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`Board. Mr. Border has also been involved in a number of other proceedings before
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`the Board, has been admitted pro hac vice as backup counsel in other matters
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`before the Board, and is familiar with its established practices. Accordingly, he
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`has established familiarity with the subject matter at issue in these proceedings and
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`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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`4
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`IPR2015-01046
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`IV. ANALYSIS
`The facts contained in the Statement of Facts above, and contained in the
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`Motion for Pro Hac Vice of Scott M. Border
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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). Apple’s lead counsel is a
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`registered practitioner, Mr. Border is an experienced litigating attorney, and Mr.
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`Border has an established familiarity with the subject matter at issue in these
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`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 for Apple during these proceedings.
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`Petitioner’s Motion for Pro Hac Vice Admission is accompanied by a Declaration
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`of Scott M. Border as required by the Order.
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`Dated: January 27, 2016
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`Respectfully Submitted,
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`
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`/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.
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`5
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`IPR2015-01046
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`
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`Motion for Pro Hac Vice of Scott M. Border
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`1003
`1004
`1005
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`1006
`1007
`1008
`1009
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`1010
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`1011
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`1012
`1013
`1014
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`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.)
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`1015
`1016
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`1017
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`1018
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`1019
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`IPR2015-01046
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`
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`Motion for Pro Hac Vice of Scott M. Border
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`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
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`1027
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`1028
`[NEW]
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`Declaration of Scott M. Border in Support of Petitioner Apple’s
`Motion for Pro Hac Vice Admission
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`7
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`CERTIFICATE OF SERVICE
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`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:
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`Joseph E. Palys, Naveen Modi
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`PH-VirnetX-IPR@paulhastings.com
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`Respectfully submitted,
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`
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`/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.
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`Dated:
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`January 27, 2016