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`Paper No. 7
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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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`SMR AUTOMOTIVE SYSTEMS USA, INC. et al.,
`Petitioner,
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`v.
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`MAGNA MIRRORS OF AMERICA, INC.,
`Patent Owner.
`____________________
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`Case No. IPR2018-00491
`Patent No. 7,934,843
`____________________
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`PATENT OWNER MAGNA’S MOTION FOR PRO HAC VICE ADMISSION
`OF SCOTT M. BORDER
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`IPR2018-00491
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`Motion for Pro Hac Vice of Scott M. Border
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`Patent Owner Magna Mirrors of America, Inc. (“Magna”) respectfully
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`requests that the Board recognize Scott M. Border, Esq. as pro hac vice and
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`backup counsel for Magna for this proceeding.
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`I.
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`BACKGROUND
`Magna’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 January 18,
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`2018 (Paper 3) (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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`Admission (Ex. 2015), shows that there is good cause for the Patent Trial and
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`Appeal Board (“Board”) to recognize Mr. Border pro hac vice in this proceeding.
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`IPR2018-00491
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`As required by 37 C.F.R. § 42.10(c), Magna lead counsel, Joseph A. Micallef, is a
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`Motion for Pro Hac Vice of Scott M. Border
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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 nine 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. Mr. Border has also appeared pro hac vice in other matters
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`before the Board.1 Mr. Border is a member in good standing of the Virginia State
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`Bar and the District of Columbia Bar, with no suspensions or disbarments from
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`practice, nor any application for admission to practice denied, nor any sanctions or
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`contempt citations, and is admitted to practice in the United States Court of
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`Appeals for the Federal Circuit, as well as the United States District Courts for the
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`Northern District of Florida, Eastern District of Texas, Western District of Virginia
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`1 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, IPR2015-00871, IPR2015-01009, IPR2015-01010, IPR2015-
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`01046, IPR2015-01047, IPR2016-00331, IPR2016-00332, IPR2016-01585, and
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`IPR2016-00337.
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`IPR2018-00491
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`and Eastern District of Virginia. His mailing address is at Sidley Austin LLP,
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`Motion for Pro Hac Vice of Scott M. Border
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`1501 K Street, N.W., Washington, D.C. 20005, his email address is
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`sborder@sidley.com, and his direct dial is (202) 736-8818.
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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 familiar with (i) U.S. Patent
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`Nos. 7,934,843; 8,147,077; 8,591,047; 8,128,244; 8,267,534; 8,783,882;
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`8,550,642; 8,899,762; and 9,694,750, the patents at issue in this and related
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`proceedings, (ii) the prior art relied upon in SMR Automotive Systems USA, Inc.’s
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`(“SMR”) Petition, (iii) the legal and factual arguments that have been addressed by
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`SMR, and (iv) the developments in this proceeding since the filing of SMR’s
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`Petition, as well as the developments in related matters before the Board. Mr.
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`Border has also been involved in a number of other proceedings before the Board,
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`has been admitted pro hac vice as backup counsel in other matters before the
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`Board, and is familiar with its established practices. Accordingly, he has
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`established familiarity with the subject matter at issue in these proceedings and the
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`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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`IPR2018-00491
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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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`Motion for Pro Hac Vice of Scott M. Border
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`C.F.R. §11.19(a).
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`IV. ANALYSIS
`The facts contained in the Statement of Facts above, and contained in the
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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). Magna’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, Magna respectfully submits that there is good cause for the Board
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`to recognize Mr. Border as Pro Hac Vice counsel and backup counsel for Magna
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`during these proceedings. Petitioner’s Motion for Pro Hac Vice Admission is
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`accompanied by a Declaration of Scott M. Border as required by the Order.
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`Dated: April 19, 2018
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`Respectfully Submitted,
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`/Joseph A. Micallef/
`Joseph A. Micallef
`Reg. No. 39,772
`SIDLEY AUSTIN LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`jmicallef@sidley.com
`(202) 736-8492
`Attorney for Patent Owner
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`Motion for Pro Hac Vice of Scott M. Border
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`Exhibit List
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`IPR2018-00491
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`Exhibit # Reference Name
`2001
`Declaration of Michael Nranian
`2002
`Curriculum Vitae of Michael Nranian
`2003
`U.S. Patent No. 5,579,133
`2004
`Excerpts of File History for U.S. Patent No. 8,128,243
`2005
`Excerpts of File History for U.S. Patent No. 8,128,244
`2006
`Excerpts of File History for U.S. Patent No. 8,147,077
`2007
`Excerpts of File History for U.S. Patent No. 8,267,534
`2008
`Excerpts of File History for U.S. Patent No. 8,550,642
`2009
`Excerpts of File History for U.S. Patent No. 8,591,047
`2010
`Reserved
`2011
`Reserved
`2012
`Annotated Copy of Lynam ‘026
`2013
`Random House Webster’s Unabridged Dictionary (2nd Ed.) p. 1539
`2014
`American Heritage Dictionary (4th Ed. 2000) p. 1344-45
`2015
`Declaration of Scott M. Border in Support of Patent Owner Magna’s
`Motion for Pro Hac Vice Admission
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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 19th day of
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`April, 2018, I caused to be served a true and correct copy of the foregoing and any
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`accompanying exhibits by electronic mail on the following counsel for
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`Petitioner:
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`Charles H. Sanders
`charles.sanders@lw.com
`Anant K. Saraswat
`anant.saraswat@lw.com
`Latham & Watkins LLP
`200 Clarendon Street
`Boston MA 02116
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`Jonathan M. Strang
`jonathan.strang@lw.com
`Latham & Watkins LLP
`555 Eleventh Street, NW, Ste. 1000
`Washington, DC 20004-1304
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`Dated: April 19, 2018
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`Respectfully submitted,
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`/Joseph A. Micallef/
`Joseph A. Micallef
`Reg. No. 39,772
`SIDLEY AUSTIN LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`jmicallef@sidley.com
`(202) 736-8492
`Attorney for Patent Owner
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