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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.
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`California Institute of Technology
`Patent Owner
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`IPR2017-00219
`U.S. Patent No. 7,116,710
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`PETITIONER’S UNOPPOSED MOTION FOR PRO HAC VICE
`ADMISSION OF JAMES M. DOWD
`PURSUANT TO 37 C.F.R § 42.10(c)
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`I. STATEMENT OF RELIEF REQUESTED
`Petitioner Apple Inc. (“Petitioner” or “Apple”) respectfully requests that the
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`IPR2017-00219
`U.S. Patent No. 7,116,710
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`Patent Trial and Appeal Board (“Board”) enter an order granting the pro hac vice
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`admission of James M. Dowd as back-up counsel for Apple in Case IPR2017-
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`00219. Apple has conferred with counsel for Patent Owner, who does not oppose
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`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 Board 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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`IPR2017-00219
`U.S. Patent No. 7,116,710
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`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). James
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`M. Dowd, a partner at Wilmer Cutler Pickering Hale and Dorr LLP, seeks pro hac
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`IPR2017-00219
`U.S. Patent No. 7,116,710
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`vice admission in this proceeding. Accompanying this motion as Exhibit 1227 is
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`the Declaration of James M. Dowd in Support of Motion for Admission Pro Hac
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`Vice (“Dowd Decl.”).
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`Mr. Dowd is a member of good standing of the State Bar of California, the
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`District of Columbia Bar, and the Virginia State Bar. See Dowd Decl. ¶ 2 (Ex.
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`1227). He has never been suspended or disbarred from practice before any court or
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`administrative body, and has never been denied admission to practice before any
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`court or administrative body. See Dowd Decl. ¶¶ 5-6 (Ex. 1227). No court or
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`administrative body has ever imposed sanctions or contempt citations on Mr.
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`Dowd. See Dowd Decl. ¶ 7 (Ex. 1227).
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`Mr. Dowd 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 Dowd Decl. ¶ 8 (Ex. 1227). Mr. Dowd understands that he will be subject to
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`the USPTO Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et. seq.
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`and disciplinary jurisdiction under 37 C.F.R. § 11.19(a). See Dowd Decl. ¶ 9 (Ex.
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`1227).
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`Within the last three years, Mr. Dowd has applied to appear pro hac vice in
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`the following proceedings:
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` ASML Netherlands BV, ASML US, Inc., Excelitas Technologies Corp.,
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`IPR2017-00219
`U.S. Patent No. 7,116,710
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`and Qioptic Photonics GmbH & Co. KG v. Energetiq Technology, Inc.,
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`Case IPR2015-00130;
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` ASML Netherlands BV, ASML US, Inc., Excelitas Technologies Corp.,
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`and Qioptic Photonics GmbH & Co. KG v. Energetiq Technology, Inc.,
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`Case IPR2015-01279;
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` ASML Netherlands BV, ASML US, Inc., Excelitas Technologies Corp.,
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`and Qioptic Photonics GmbH & Co. KG v. Energetiq Technology, Inc.,
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`Case IPR2015-01277;
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` ASML Netherlands BV, ASML US, Inc., Excelitas Technologies Corp.,
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`and Qioptic Photonics GmbH & Co. KG v. Energetiq Technology, Inc.,
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`Case IPR2015-01377;
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` ASML Netherlands BV, ASML US, Inc., Excelitas Technologies Corp.,
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`and Qioptic Photonics GmbH & Co. KG v. Energetiq Technology, Inc.,
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`Case IPR2015-01362;
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` ASML Netherlands BV, ASML US, Inc., Excelitas Technologies Corp.,
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`and Qioptic Photonics GmbH & Co. KG v. Energetiq Technology, Inc.,
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`Case IPR2015-01375; and
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` ASML Netherlands BV, ASML US, Inc., Excelitas Technologies Corp.,
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`IPR2017-00219
`U.S. Patent No. 7,116,710
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`and Qioptic Photonics GmbH & Co. KG v. Energetiq Technology, Inc.,
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`Case IPR2015-01368.
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`See Dowd Decl. ¶ 10 (Ex. 1227).
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`As his accompanying declaration demonstrates, Mr. Dowd has an
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`established familiarity with the subject matter at issue in this proceeding. Mr.
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`Dowd is an experienced patent litigator with 20 years of experience. See Dowd
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`Decl. ¶ 2 (Ex. 1227). Mr. Dowd has reviewed the ’710 patent and its file history,
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`as well as the Petition, Institution Decision, and the exhibits in this proceeding.
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`See Dowd Decl. ¶ 11 (Ex. 1227). Mr. Dowd has been involved in numerous patent
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`litigations, has litigated matters that concerned PTO rules and regulations, and has
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`previously appeared pro hac vice before the Board. See Dowd Decl. ¶¶ 4, 10 (Ex.
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`1227). Furthermore, Mr. Dowd represents the defendants, including Apple, in The
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`California Institute of Technology v. Broadcom, et al., Case No. 2:16-cv-2714-
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`GW-AGRx (“Caltech litigation”), one of the Related Matters identified in Apple’s
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`Petition for Inter Partes Review of U.S. Patent No. 7,116,710.1 See Dowd Decl. ¶
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`12 (Ex. 1227). Through those litigations, Mr. Dowd developed extensive
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`experience with the subject matter at issue in this proceeding. For example, he was
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`involved in drafting briefing regarding claim construction for, and the validity of,
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`1 IPR2017-00219, Paper 5.
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`the ’710 patent in the Related Matters. See Dowd Decl. ¶ 13 (Ex. 1227). Mr.
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`Dowd also took and defended expert depositions in the Related Matters regarding
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`invalidity of the ’710 patent. See Dowd Decl. ¶ 13 (Ex. 1227).
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`IV. CONCLUSION
`For the foregoing reasons, Petitioner respectfully requests that the Board
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`admit James M. Dowd pro hac vice in this proceeding.
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`Respectfully Submitted,
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`/Michael Smith/
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`______________________________
`Michael Smith
`Registration No. 71,190
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`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, named below:
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`• Petitioner’s Motion for Admission Pro Hac Vice of James M.
`Dowd
`• Petitioner’s Updated Exhibit List
`• Exhibit 1227 Declaration of James M. Dowd 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:
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`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)
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`/Michael Smith/
`___________________________
`Michael Smith
`Registration No. 71,190
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`IPR2017-00219
`U.S. Patent No. 7,116,710
`PETITIONER’S UPDATED EXHIBIT LIST
`IPR2017-00219
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`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
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`1201
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`1202
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`1203
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`1204
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`1205
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`1206
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`1207
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`1208
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`1209
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`1210
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`1211
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`1212
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`ActiveUS 165303903
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`IPR2017-00219
`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
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`1213
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`1214
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`1215
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`1216
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`1217
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`1218
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`1219
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`1220
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`1224
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`1225
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`1226
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`1227
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`IPR2017-00219
`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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`1228
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`ActiveUS 165303903
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