IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Apple Inc.,
`Petitioner
`
`v.
`
`California Institute of Technology
`Patent Owner
`
`IPR2017-00701
`U.S. Patent No. 7,421,032
`
`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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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Apple Inc.,
`Petitioner
`
`v.
`
`California Institute of Technology
`Patent Owner
`
`IPR2017-00701
`U.S. Patent No. 7,421,032
`
`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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`ActiveUS 165304506
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`IPR2017-00701
`U.S. Patent No. 7,421,032
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`I.
`
`STATEMENT OF RELIEF REQUESTED
`
`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 IPR2017-00701. Apple has
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`conferred with counsel for Patent Owner, who does not oppose this motion.
`
`II. APPLICABLE RULE
`Pursuant to 37 C.F.R. § 42.10(c), the “Board may recognize counsel pro hac
`
`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
`
`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
`
`litigating attorney and has an established familiarity with the subject matter at issue
`
`in the proceeding.”
`
`The PTAB set forth requirements for filing motions for pro hac vice
`
`admission in Unified Patents, Inc. v. Parallel Iron, LLC, Case IPR2013-00639,
`
`Paper 7 (“Order – Authorizing Motion For Pro Hac Vice Admission – 37 C.F.R.
`
`§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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`IPR2017-00701
`U.S. Patent No. 7,421,032
`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
`
`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
`
`admission to practice before any court or administrative body ever denied; (4) no
`
`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
`
`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 January 20, 2017, Petitioner filed three inter partes review petitions in
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`IPR2017-00700, -00701, and -00728 directed to U.S. Patent No. 7,421,032 (“’032
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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 Exibit 1128 is the
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`IPR2017-00701
`U.S. Patent No. 7,421,032
`Declaration of Mark Selwyn in Support of Motion for Admission Pro Hac Vice
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`(“Selwyn Decl.”).
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`Mr. Selwyn is a member of good standing of the State Bar of California, the
`
`Bar of the Commonwealth of Massachusetts, and the New York State Bar. See
`
`Selwyn Decl. ¶ 2 (Ex. 1128). He has never been suspended or disbarred from
`
`practice before any court or administrative body, and has never been denied
`
`admission to practice before any court or administrative body. See Selwyn Decl.
`
`¶¶ 5-6 (Ex. 1128). No court or administrative body has ever imposed sanctions or
`
`contempt citations on Mr. Selwyn. See Selwyn Decl. ¶ 7 (Ex. 1128).
`
`Mr. Selwyn has read and will comply with the Office Patent Trial Practice
`
`Guide and the Board’s Rules of Practice for Trials set forth in part 42 of 37 C.F.R.
`
`See Selwyn Decl. ¶ 8 (Ex. 1128). Mr. Selwyn understands that he will be subject
`
`to the USPTO Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et
`
`seq. and disciplinary jurisdiction under 37 C.F.R. § 11.19(a). See Selwyn Decl. ¶ 9
`
`(Ex. 1128).
`
`Mr. Selwyn has not applied to appear pro hac vice in any proceeding before
`
`the Board within the past three years. See Selwyn Decl. ¶ 10 (Ex. 1128).
`
`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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`IPR2017-00701
`U.S. Patent No. 7,421,032
`See Selwyn Decl. ¶ 1 (Ex. 1128). Mr. Selwyn has reviewed the ’032 patent and its
`
`file history, as well as the Petition, Institution Decision, and the exhibits in this
`
`proceeding. See Selwyn Decl. ¶ 11 (Ex. 1128). Mr. Selwyn has been involved in
`
`numerous patent litigations and has litigated matters that concerned PTO rules and
`
`regulations. See Selwyn Decl. ¶ 4 (Ex. 1128). Furthermore, Mr. Selwyn
`
`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
`
`litigation”), one of the Related Matters identified in Apple’s Petition for Inter
`
`Partes Review of U.S. Patent No. 7,421,0321. See Selwyn Decl. ¶ 12 (Ex. 1128).
`
`Through those litigations, Mr. Selwyn developed extensive experience with the
`
`subject matter at issue in this proceeding. For example, he was involved in
`
`drafting briefing regarding claim construction for the ’032 patent in the Caltech
`
`litigation.
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`IV. CONCLUSION
`For the foregoing reasons, Petitioner respectfully requests that the Board
`
`admit Mark D. Selwyn pro hac vice in this proceeding.
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`1 IPR2017-00701, Paper 5.
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`IPR2017-00701
`U.S. Patent No. 7,421,032
`Respectfully Submitted,
`
`/Michael Smith/
`
`_________________________
`Michael Smith
`Registration No. 71,190
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`IPR2017-00701
`U.S. Patent No. 7,421,032
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`CERTIFICATE OF SERVICE
`
`I hereby certify that on October 27, 2017, I caused a true and correct copy
`
`of the foregoing materials:
`
`• Petitioner’s Motion for Admission Pro Hac Vice of Mark D.
`Selwyn
`• Petitioner’s Updated Exhibit List
`• Exhibit 1128 Declaration of Mark Selwyn in Support of Motion
`for Admission Pro Hac Vice
`
`to be served via electronic mail on the following correspondents of record as listed
`
`in Patent Owners’ Mandatory Notices:
`
`Michael Rosato (mrosato@wsgr.com)
`Matthew Argenti (margenti@wsgr.com)
`Richard Torczon (rtorczon@wsgr.com)
`
`/Michael Smith/
`
`________________________
`Michael Smith
`Registration No. 71,190
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`IPR2017-00701
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`PETITIONER’S UPDATED EXHIBIT LIST
`IPR2017-00701
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`1101
`
`U.S. Patent No. 7,421,032
`
`1102
`
`1003
`
`D. J. C. MacKay, S. T. Wilson, and M. C. Davey, “Comparison of
`constructions of irregular Gallager codes,” IEEE Trans. Commun.,
`Vol. 47, No. 10, pp. 1449-54, 1999
`
`L. Ping, W. K. Leung, N. Phamdo, “Low Density Parity Check Codes
`with Semi-random Parity Check Matrix.” Electron. Letters, Vol. 35,
`No. 1, pp. 38-39, 1999
`
`1104
`
`Declaration of Professor James Davis, Ph.D. (“Davis Declaration”)
`
`1105
`
`1106
`
`1107
`
`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
`
`Benedetto, S. et al., Serial Concatenation of Block and Convolutional
`Codes, 32.10 Electronics Letters 887-8, 1996
`
`1108
`
`Luby, M. et al., “Practical Loss-Resilient Codes,” STOC ’97, 1997
`
`1109
`
`1110
`
`Luby, M. et al., “Analysis of Low Density Codes and Improved
`Designs Using Irregular Graphs,” STOC ’98, pp. 249-58, published in
`1998
`
`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
`
`1111
`
`Final Written Decision, Hughes Network Systems, LLC et al. v. Cal.
`Institute of Tech., IPR2015-00059, Paper 42 (PTAB Apr. 21, 2016)
`
`1112
`
`Certificate of Correction, U.S. Patent No. 7,421,032 (Sept. 2, 2008)
`
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`IPR2017-00701
`U.S. Patent No. 7,421,032
`Claim Construction Order, California Institute of Technology v.
`Hughes Communications Inc., No. 13-cv-7245 (C.D. Cal.)
`
`Decision on Institution, Hughes Network Systems, LLC et al. v. Cal.
`Institute of Tech., IPR2015-00059, Paper 18 (PTAB Apr. 27, 2015)
`
`1113
`
`1114
`
`1115
`
`Expert Report of Dr. Brendan Frey (Case No. 2:13-cv-07245)
`
`1116
`
`1117
`
`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
`
`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, Monticello, Illinois, pp. 201-9, September
`1998
`
`1118
`
`U.S. Patent No. 4,271,520 (1981)
`
`1119
`
`Declaration of Robin Fradenburgh Concerning the “Proceedings, 36th
`Allerton Conference on Communications, Control, and Computing”
`Reference
`
`1120
`
`Chris Heegard and Stephen B. Wicker, Turbo Coding, pp. 12-14, 1999
`
`1121
`
`George C. Clark, Jr. and J. Bibb Cain, Error-Correction Coding for
`Digital Communications, pp. 6, 229, 1938
`
`1122
`
`Pfister, H. and Siegel, P., “The Serial Concatenation of Rate-1 Codes
`Through Uniform Random Interleavers,” 37th Allerton Conf. on
`Comm., Control and Computing, Monticello, Illinois, published on or
`before September 24, 1999
`
`1123
`
`Replacement copy of Declaration of Paul H. Siegel (“Siegel
`Declaration”)
`
`1124
`
`Kschischang, F.R., and Frey, B.J., “Iterative decoding of compound
`codes by probability propagation in graphical models,” IEEE Journal
`on Selected Areas in Communications, vol. 16, no. 2, pp. 219-230,
`1998
`
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`IPR2017-00701
`U.S. Patent No. 7,421,032
`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
`
`Declaration of Mark Selwyn in Support of Motion for Admission Pro
`Hac Vice
`
`1125
`
`1126
`
`1127
`
`1128
`
`
`
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`ActiveUS 165304506
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