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`IN THE 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.
`
`California Institute of Technology
`Patent Owner
`
`
`IPR2017-00210
`U.S. Patent No. 7,116,710
`
`
`PETITIONER’S UNOPPOSED MOTION FOR PRO HAC VICE
`ADMISSION OF MARK D. SELWYN
`PURSUANT TO 37 C.F.R § 42.10(c)
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`1
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`I. STATEMENT OF RELIEF REQUESTED
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`IPR2017-00210
`U.S. Patent No. 7,116,710
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`Petitioner Apple Inc. (“Petitioner”) respectfully requests that the Patent Trial
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`and Appeal Board (“Board”) enter an order granting the pro hac vice admission of
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`Mark D. Selwyn as back-up counsel for Apple in Case IPR2017-00210. Apple has
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`conferred with counsel for Patent Owner, who does not oppose this motion.
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`II. APPLICABLE RULE
`Pursuant to 37 C.F.R. § 42.10(c), the “Board may recognize counsel pro hac
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`vice during a proceeding upon a showing of good cause, subject to the condition
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`that lead counsel be a registered practitioner and to any other conditions as the
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`Board may impose.” “[A] motion to appear pro hac vice by counsel who is not a
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`registered practitioner may be granted upon showing that counsel is an experienced
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`litigating attorney and has an established familiarity with the subject matter at issue
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`in the proceeding.”
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`The PTAB set forth requirements for filing motions for pro hac vice
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`admission in Unified Patents, Inc. v. Parallel Iron, LLC, Case IPR2013-00639,
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`Paper 7 (“Order – Authorizing Motion For Pro Hac Vice Admission – 37 C.F.R.
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`§42.10”) (PTAB Oct. 15, 2013). A motion seeking pro hac vice must be filed no
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`sooner than twenty-one (21) days after service of the petition, “must contain a
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`statement of facts showing there is good cause for the Board to recognize counsel
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`pro hac vice during the proceeding [,]” and must be accompanied by a declaration
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`2
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`
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`IPR2017-00210
`U.S. Patent No. 7,116,710
`or affidavit of the individual seeking pro hac vice admission.” Id. at 2-3. The
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`affidavit or declaration must attest to: (1) membership in good standing of the Bar
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`of at least one State or the District of Columbia; (2) no suspensions or disbarments
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`from any practice before any court or administrative body; (3) no application for
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`admission to practice before any court or administrative body ever denied; (4) no
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`sanctions or contempt citations imposed by any court or administrative body; (5)
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`the individual seeking to appear has read and will comply with the Office Patent
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`Trial Practice Guide and the Board’s Rules of Practice for Trials set forth in part 42
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`of 37 C.F.R.; (6) the individual will be subject to the USPTO Rules of Professional
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`Conduct set forth in 37 C.F.R. §§ 11.101 et seq. and disciplinary jurisdiction under
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`37 C.F.R. § 11.19(a); (7) all other proceedings before the Office for which the
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`individual has applied to appear pro hac vice in the last three (3) years; and (8)
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`familiarity with the subject matter at issue in the proceeding.”
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`III. FACTS SHOWING GOOD CAUSE FOR THE BOARD TO RECOGNIZE
`COUNSEL PRO HAC VICE DURING THE PROCEEDING
`On November 15, 2016, Petitioner filed three inter partes review petitions in
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`IPR2017-00210, -00211, and -0219 directed to U.S. Patent No. 7,116,710 (“’710
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`patent”). Patent Owner was served on the same day. Petitioner’s lead counsel,
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`Richard Goldenberg, is a registered practitioner (Registration No. 38,095). Mark
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`D. Selwyn, a partner at Wilmer Cutler Pickering Hale and Dorr LLP, seeks pro hac
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`vice admission in this proceeding. Accompanying this motion as Exhibit 1028 is
`3
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`IPR2017-00210
`U.S. Patent No. 7,116,710
`the Declaration of Mark D. Selwyn in Support of Motion for Admission Pro Hac
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`Vice (“Selwyn Decl.”).
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`Mr. Selwyn is a member of good standing of the State Bar of California, the Bar
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`of the Commonwealth of Massachusetts, and the New York State Bar. See Selwyn
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`Decl. ¶ 2 (Ex. 1028). He has never been suspended or disbarred from practice
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`before any court or administrative body, and has never been denied admission to
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`practice before any court or administrative body. See Selwyn Decl. ¶¶ 5-6 (Ex.
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`1028). No court or administrative body has ever imposed sanctions or contempt
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`citations on Mr. Selwyn. See Selwyn Decl. ¶ 7 (Ex. 1028).
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`Mr. Selwyn has read and will comply with the Office Patent Trial Practice
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`Guide and the Board’s Rules of Practice for Trials set forth in part 42 of 37 C.F.R.
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`See Selwyn Decl. ¶ 8 (Ex. 1028). Mr. Selwyn understands that he will be subject
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`to the USPTO Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et
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`seq. and disciplinary jurisdiction under 37 C.F.R. § 11.19(a). See Selwyn Decl. ¶ 9
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`(Ex. 1028).
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`Mr. Selwyn has not applied to appear pro hac vice in any proceeding before
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`the Board within the past three years. See Selwyn Decl. ¶ 10 (Ex. 1028).
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`As his accompanying declaration demonstrates, Mr. Selwyn has an
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`established familiarity with the subject matter at issue in this proceeding. Mr.
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`Selwyn is an experienced patent litigator with more than 20 years of experience.
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`4
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`IPR2017-00210
`U.S. Patent No. 7,116,710
`See Selwyn Decl. ¶ 2 (Ex. 1028). Mr. Selwyn has reviewed the ’710 patent and its
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`file history, as well as the Petition, Institution Decision, and the exhibits in this
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`proceeding. See Selwyn Decl. ¶ 11 (Ex. 1028). Mr. Selwyn has been involved in
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`numerous patent litigations and has litigated matters that concerned PTO rules and
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`regulations. See Selwyn Decl. ¶ 4 (Ex. 1028). Furthermore, Mr. Selwyn
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`represents the defendants, including Apple, in The California Institute of
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`Technology v. Broadcom Ltd., et al., Case No. 2:16-cv-3714-GW-AGRx (“Caltech
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`litigation”), one of the Related Matters identified in Apple’s Petition for Inter
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`Partes Review of U.S. Patent No. 7,116,7101. See Selwyn Decl. ¶ 12 (Ex. 1028).
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`Through those litigations, Mr. Selwyn developed extensive experience with the
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`subject matter at issue in this proceeding. For example, he was involved in
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`drafting briefing regarding claim construction for the ’710 patent in the Caltech
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`litigation.
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`IV. CONCLUSION
`For the foregoing reasons, Petitioner respectfully requests that the Board
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`admit Mark D. Selwyn pro hac vice in this proceeding.
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`1 IPR2017-00210, Paper 5.
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`5
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`IPR2017-00210
`U.S. Patent No. 7,116,710
`Respectfully Submitted,
`
`/Michael Smith/
`
`____________________________
`Michael Smith
`Registration No. 71,190
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`6
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`IPR2017-00210
`U.S. Patent No. 7,116,710
`
`CERTIFICATE OF SERVICE
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`I hereby certify that on October 27, 2017, I caused a true and correct copy
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`of the foregoing materials:
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`• Petitioner’s Motion for Admission Pro Hac Vice of Mark D.
`Selwyn
`• Petitioner’s Updated Exhibit List
`• Exhibit 1028 Declaration of Mark D. Selwyn in Support of
`Motion for Admission Pro Hac Vice
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`to be served via electronic mail on the following correspondents of record as listed
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`in Patent Owners’ Mandatory Notices:
`
`Michael Rosato (mrosato@wsgr.com)
`Matthew Argenti (margenti@wsgr.com)
`Richard Torczon (rtorczon@wsgr.com)
`Kevin P.B. Johnson (kevinjohnson@quinnemanuel.com)
`Todd M. Briggs (toddbriggs@quinnemanuel.com)
`
`/Michael Smith/
`
`__________________________
`Michael Smith
`Registration No. 71,190
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`7
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`IPR2017-00210
`U.S. Patent No. 7,116,710
`PETITIONER’S UPDATED EXHIBIT LIST
`IPR2017-00210
`
`Description
`
`U.S. Patent 7,116,710
`Replacement copy of Frey, B. J. and MacKay, D. J. C., “Irregular
`Turbocodes,” Proc. 37th Allerton Conf. on Comm., Control and
`Computing, Monticello, Illinois, published on or before March 20,
`2000
`Replacement copy of D. Divsalar, H. Jin, and R. J. McEliece,
`“Coding theorems for "turbo-like" codes,” Proc. 36th Allerton
`Conf. on Comm., Control and Computing, Allerton, Illinois, pp.
`201-10, March, 1999
`Luby, M. et al., “Analysis of Low Density Codes and Improved
`Designs Using Irregular Graphs,” STOC ’98, pp. 249-59, published
`in 1998
`Pfister et al., “The Serial Concatenation of Rate-1 Codes Through
`Uniform Random Interleavers” (Exhibit 1 to the Siegel
`Declaration)
`Declaration of Professor James Davis, Ph.D. (“Davis Declaration”)
`Gallager, R., Low-Density Parity-Check Codes, Monograph,
`M.I.T. Press, 1963
`Berrou et al., “Near Shannon Limit Error-Correcting Coding and
`Decoding: Turbo Codes," ICC ’93, Technical Program, Conference
`Record 1064, Geneva 1993
`MacKay, D. J. C, and Neal, R. M. “Near Shannon Limit
`Performance of Low Density Parity Check Codes,” Electronics
`Letters, vol. 32, pp. 1645-46, 1996
`Benedetto, S. et al., Serial Concatenation of Block and
`Convolutional Codes, 32.10 Electronics Letters 887-8, 1996
`Luby, M. et al., “Practical Loss-Resilient Codes,” STOC ’97, 1997
`Declaration of Robin Fradenburgh Concerning the “Proceedings,
`36th Allerton Conference on Communications, Control, and
`Computing” Reference
`
`Exhibit
`1001
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`1002
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`1003
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`1004
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`1005
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`1006
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`1007
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`1008
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`1009
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`1010
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`1011
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`1012
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`8
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`IPR2017-00210
`U.S. Patent No. 7,116,710
`Frey, B. J. and MacKay, D. J. C., “Irregular Turbo-Like Codes”
`presented at the 1999 Allerton Conference on Communications,
`Control, and Computing.
`Prosecution History of the ’710 Patent, Response Dated May 5,
`2005
`Table of Contents of Proceedings of the 37th Allerton Conference
`on Communication, Control and Computing from September 22-
`24, 1999
`Joint Claim Construction Statement (Case No. 2:13-cv-07245, Dkt.
`No. 47)
`Expert Report of Dr. Brendan Frey (Case No. 2:13-cv-07245)
`Aamod Khandekar, “Graph-based Codes and Iterative Decoding,”
`Thesis submitted June 10, 2002
`Richardson, Shokrollahi, and Urbanke, “Design of Provably Good
`Low-Density Parity Check Codes”
`Replacement copy of the Declaration of Paul H. Siegel
`U.S. Provisional Application No. 60/205,095
`Mitzenmacher, M. “Studying balanced allocations with differential
`equations,” Combinatorics, Probability & Computing 8.5, pp. 473-
`482, September 1999
`Barg et al., “Linear-time Binary Codes Correcting Localized
`Erasures,” IEEE Transactions on Information Theory 45.7, pp.
`2545-2550, November 1999
`Shokrollahi, “New Sequences of Linear Time Erasure Codes
`Approaching the Channel Capacity,” Applied Algebra, Algebraic
`Algorithms and Error-Correcting Codes, pp. 65-76, 1999
`Declaration Of Richard Goldenberg In Support Of Unopposed
`Motions To Submit Replacement Exhibits Pursuant To 37 C.F.R. §
`42.104(c)
`Declaration Of Jonathan Barbee In Support Of Unopposed
`Motions To Submit Replacement Exhibits Pursuant To 37 C.F.R. §
`42.104(c)
`Declaration of James M. Dowd in Support of Motion for
`Admission Pro Hac Vice
`9
`
`1013
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`1014
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`1015
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`1016
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`1017
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`1018
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`1019
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`1020
`1021
`1022
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`1023
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`1024
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`1025
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`1026
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`1027
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`IPR2017-00210
`U.S. Patent No. 7,116,710
`Declaration of Mark D. Selwyn in Support of Motion for
`Admission Pro Hac Vice
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`1028
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`
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`10
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