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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
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`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL SECURE REGISTRY, LLC,
`Patent Owner.
`_________________________________________
`
`Case IPR2018-00812
`U.S. Patent No. 8,856,539
`_________________________________________
`
`
`DECLARATION OF MARK D. SELWYN IN SUPPORT OF MOTION FOR
`ADMISSION PRO HAC VICE
`
`
`
`APPLE 1134
`APPLE v. USR
`IPR2018-00812
`
`
`
`IPR2018-00812
`U.S. Patent No. 8,856,539
`
`I, Mark D. Selwyn, declare as follows:
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`1.
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`I was admitted to the Bar of the Commonwealth of Massachusetts and
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`the New York State Bar in 1994, and the Bar of the State of California in 2006, and
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`have been practicing law for over 20 years. For most of my career, my practice
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`has focused on the field of intellectual property, and particularly, patent litigation.
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`2.
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`I am a member in good standing of the Massachusetts Bar, the New
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`York State Bar, and the State Bar of California, and am admitted to practice before
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`the U.S. Courts of Appeals for the First Circuit, Ninth Circuit, and the Federal
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`Circuit, the U.S. District Courts for the District of Massachusetts, the Northern
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`District of California, the Central District of California, and the Southern District
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`of California.
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`3.
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`My Massachusetts Bar membership number is 565595. My New
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`York State Bar membership number is 2637221. My State Bar of California
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`membership number is 244180.
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`4.
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`Over the course of my career, I have been counsel in dozens of patent
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`litigations. Several of these cases have concerned Patent Office rules and
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`regulations. For example, I litigated a number of cases concerning the duty of
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`candor to the Patent Office embodied in 37 C.F.R. §1.56.
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`2
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`IPR2018-00812
`U.S. Patent No. 8,856,539
`I have never been suspended or disbarred from practice before any
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`5.
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`court or administrative body.
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`6.
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`I have never had a court or administrative body deny my application
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`for admission to practice.
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`7.
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`I have never had any sanctions or contempt citations imposed on me
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`by any court or administrative body.
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`8.
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`I have read and will comply with the Office Patent Trial Practice
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`Guide and the Board’s Rules of Practice for Trials, as set forth in 37 C.F.R. Part
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`42.
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`9.
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`I agree to be subject to the United States Patent and Trademark Office
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`Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq. and
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`disciplinary jurisdiction under 37 C.F.R. § 11.19(a).
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`10.
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`Within the last three years, I have been admitted to appear pro hac
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`vice in twelve proceedings before the United States Patent and Trademark Office
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`including IPR2017-0700, IPR2017-00701, IPR2017-00728, IPR2017-00210,
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`IPR2017-00219, IPR2017-00297, IPR2018-01033, IPR2018-01144, IPR2018-
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`01040, IPR2018-00809, IPR2018-00810, and IPR2018-00813.
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`
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`3
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`
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`IPR2018-00812
`U.S. Patent No. 8,856,539
`I am familiar with the subject matter at issue in this proceeding. I
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`11.
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`have reviewed U.S. Patent No. 8,856,539 (the “’539 patent”), which is being
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`challenged in this proceeding, as well as its file history, the Petition, the Institution
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`Decision, and the exhibits in this proceeding. I have also reviewed and am familiar
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`with the relevant prior art.
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`12.
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`Beginning in 2017 and continuing until the present, I have represented
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`Petitioner Apple Inc. in Universal Secure Registry LLC v. Apple Inc., No. 17-cv-
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`00585-VAC-MPT (D. Del. 2017) (the “USR litigation”), which is a related matter
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`to this proceeding. The validity of the ’539 patent is a contested issue in the USR
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`litigation. The validity of other patents in the same patent family as the ’539 patent
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`over some of the prior art raised in this proceeding are also contested issues in the
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`USR litigation. I have also been admitted to appear pro hac vice in three
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`proceedings before the United States Patent and Trademark Office relating to
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`patents at issue in the USR litigation, including IPR2018-00809, IPR2018-00810,
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`and IPR2018-00813.
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`13.
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`I hereby declare that all statements made herein of my own
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`knowledge are true and that all statements made on information and belief are
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`believed to be true; and further that the statements are made with the knowledge
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`
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`4
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`
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`IPR2018-00812
`U.S. Patent No. 8,856,539
`that willful false statements and the like are punishable by fine, imprisonment, or
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`both, under Section 1001 of Title 18 of the United States Code.
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`5
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`IPR2018-00812
`U.S. Patent No. 8,856,539
`Respectfully Submitted,
`
`/ Mark D. Selwyn/
`Mark D. Selwyn
`
`
`
`WILMER CUTLER PICKERING
`HALE AND DORR LLP
`950 Page Mill Road
`Palo Alto, California 94304
`mark.selwyn@wilmerhale.com
`Tel.: 650-858-6031
`Fax: 650-858-5000
`
`Dated: December 17, 2018
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`
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`6
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