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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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`IPR2017-00728
`U.S. Patent No. 7,421,032
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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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`ActiveUS 165304245
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`I. STATEMENT OF RELIEF REQUESTED
`Petitioner Apple Inc. (“Petitioner” or “Apple”) respectfully requests that the
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`IPR2017-00728
`U.S. Patent No. 7,421,032
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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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`00728. 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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`IPR2017-00728
`U.S. Patent No. 7,421,032
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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 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). James
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`M. Dowd, a partner at Wilmer, Cutler, Pickering, Hale and Dorr, LLP, seeks pro
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`IPR2017-00728
`U.S. Patent No. 7,421,032
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`hac vice admission in this proceeding. Accompanying this motion as Exhibit 1227
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`is 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. ¶¶ 2-3 (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 Dec. ¶ 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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`ActiveUS 165304245
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` ASML Netherlands BV, ASML US, Inc., Excelitas Technologies Corp.,
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`IPR2017-00728
`U.S. Patent No. 7,421,032
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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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`ActiveUS 165304245
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` ASML Netherlands BV, ASML US, Inc., Excelitas Technologies Corp.,
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`IPR2017-00728
`U.S. Patent No. 7,421,032
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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. ¶ 1 (Ex. 1227). Mr. Dowd has reviewed the ’032 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 (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 Ltd., et al., Case No. 2:16-cv-
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`3714-GW-AGRx (“Caltech litigation”), one of the Related Matters identified in
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`Apple’s Petition for Inter Partes Review of U.S. Patent No. 7,916,032.1 See
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`Dowd. Decl. ¶ 12 (Ex. 1227). Through those litigations, Mr. Dowd developed
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`extensive experience with the subject matter at issue in this proceeding. For
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`example, he was involved in drafting briefing regarding claim construction for, and
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`1 IPR2017-00728, Paper 5.
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`ActiveUS 165304245
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`the validity of, the ’032 patent in the Related Matters. Mr. Dowd also took and
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`IPR2017-00728
`U.S. Patent No. 7,421,032
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`defended expert depositions in the Related Matters regarding invalidity of the ’032
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`patent. See Dowd Decl. ¶ 13 (Ex. 1227).
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`IV. CONCLUSION
`For the foregoing reasons, Petitioner respectfully requests that the Board admit
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`James M. Dowd pro hac vice in this proceeding.
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`Respectfully Submitted,
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`/Michael Smith/
`Michael Smith
`Registration No. 71,190
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`IPR2017-00728
`U.S. Patent No. 7,421,032
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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:
`
` Petitioner’s Motion for Admission Pro Hac Vice of James M.
`Dowd
` Petitioner’s Updated List of Exhibits
` 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)
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`__/Michael Smith__________
`Michael Smith
`Registration No. 71,190
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`ActiveUS 165304245
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`IPR2017-00728
`U.S. Patent No. 7,421,032
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`PETITIONER’S UPDATE LIST OF EXHIBITS FOR
`IPR2017-00728
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`U.S. Patent No. 7,421,032
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`Description
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`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
`
`Exhibit
`1201
`
`1202
`
`1203
`
`1204
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`Declaration of Professor James Davis, Ph.D. (“Davis Declaration”)
`
`1205
`
`1206
`
`1207
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`Gallager, R., Low-Density Parity-Check Codes, Monograph, M.I.T.
`Press, 1963
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`Berrou et al., “Near Shannon Limit Error-Correcting Coding and
`Decoding: Turbo-Codes," ICC ’93, Technical Program, Conference
`Record 1064, Geneva 1993
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`Benedetto, S. et al., Serial Concatenation of Block and Convolutional
`Codes, 32.10 Electronics Letters 887-8, 1996
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`1208
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`Luby, M. et al., “Practical Loss-Resilient Codes,” STOC ’97, 1997
`
`1209
`
`1210
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`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
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`1211
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`Final Written Decision, Hughes Network Systems, LLC et al. v. Cal.
`Institute of Tech., IPR2015-00059, Paper 42 (PTAB Apr. 21, 2016)
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`IPR2017-00728
`U.S. Patent No. 7,421,032
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`Exhibit
`1212
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`Description
`Certificate of Correction, U.S. Patent No. 7,421,032 (Sept. 2, 2008)
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`1213
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`1214
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`Claim Construction Order, California Institute of Technology v.
`Hughes Communications Inc., No. 13-cv-7245 (C.D. Cal.)
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`Decision on Institution, Hughes Network Systems, LLC et al. v. Cal.
`Institute of Tech., IPR2015-00059, Paper 18 (PTAB Apr. 27, 2015)
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`1215
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`Expert Report of Dr. Brendan Frey (Case No. 2:13-cv-07245)
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`1216
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`1217
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`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
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`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
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`1218
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`U.S. Patent No. 4,271,520 (1981)
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`1219
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`Declaration of Robin Fradenburgh Concerning the “Proceedings, 36th
`Allerton Conference on Communications, Control, and Computing”
`Reference
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`1220
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`Chris Heegard and Stephen B. Wicker, Turbo Coding, pp. 12-14, 1999
`
`1221
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`George C. Clark, Jr. and J. Bibb Cain, Error-Correction Coding for
`Digital Communications, pp. 6, 229, 1938
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`1222
`
`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
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`1223
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`Replacement copy of Declaration of Paul H. Siegel (“Siegel
`Declaration”)
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`IPR2017-00728
`U.S. Patent No. 7,421,032
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`Description
`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
`
`Declaration Of Richard Goldenberg In Support Of Unopposed Motions
`To Submit Replacement Exhibits Pursuant To 37 C.F.R. § 42.104(c)
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`Declaration Of Jonathan Barbee In Support Of Unopposed Motions To
`Submit Replacement Exhibits Pursuant To 37 C.F.R. § 42.104(c)
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`Declaration of James M. Dowd in Support of Motion for Admission
`Pro Hac Vice
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`Declaration of Mark Selwyn in Support of Motion for Admission Pro
`Hac Vice
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`Exhibit
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`1224
`
`1225
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`1226
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`1227
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`1228
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`ActiveUS 165304245
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