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`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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`UNIVERSAL SECURE REGISTRY, LLC,
`Patent Owner.
`_________________________________________
`
`Case IPR2018-00812
`U.S. Patent No. 8,856,539
`_________________________________________
`
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`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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`I. STATEMENT OF RELIEF REQUESTED
`Petitioner Apple Inc. (“Petitioner”) respectfully requests that the Patent Trial
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`IPR2018-00812
`U.S. Patent No. 8,856,539
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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 IPR2018-00812. Apple has
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`conferred with counsel for Patent Owner, who does not oppose 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 PTAB 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 or
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`- 2 -
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`IPR2018-00812
`U.S. Patent No. 8,856,539
`affidavit of the individual seeking pro hac vice admission. Id. at 2-3. The affidavit
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`or declaration must attest to: (1) membership in good standing of the Bar of at least
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`one State or the District of Columbia; (2) no suspensions or disbarments from any
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`practice before any court or administrative body; (3) no application for admission
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`to practice before any court or administrative body ever denied; (4) no sanctions or
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`contempt citations imposed by any court or administrative body; (5) the individual
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`seeking to appear 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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`(6) the individual will be subject to the USPTO Rules of Professional Conduct set
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`forth in 37 C.F.R. §§ 11.101 et seq. and disciplinary jurisdiction under 37 C.F.R. §
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`11.19(a); (7) all other proceedings before the Office for which the individual has
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`applied to appear pro hac vice in the last three (3) years; and (8) familiarity with
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`the subject matter at issue in the proceeding. Id.
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`III. FACTS SHOWING GOOD CAUSE FOR THE BOARD TO RECOGNIZE
`COUNSEL PRO HAC VICE DURING THE PROCEEDING
`On April 12, 2018, Petitioner filed an inter partes review petition in
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`IPR2018-00812 directed to U.S. Patent No. 8,856,539 (“’539 patent”). Patent
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`Owner was served on the same day. Petitioner’s lead counsel, Monica Grewal, is a
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`registered practitioner (Registration No. 40,056). Mark D. Selwyn, a partner at
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`Wilmer Cutler Pickering Hale and Dorr LLP, seeks pro hac vice admission in this
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`- 3 -
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`IPR2018-00812
`U.S. Patent No. 8,856,539
`proceeding. Accompanying this motion as Exhibit 1134 is the Declaration of Mark
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`Selwyn in Support of Motion for Admission Pro Hac Vice (“Selwyn Decl.”).
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`Mr. Selwyn is a member of good standing of the State Bar of California, the
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`Bar of the Commonwealth of Massachusetts, and the New York State Bar. See
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`Selwyn Decl. ¶¶ 2-3 (Ex. 1134). He has never been suspended or disbarred from
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`practice before any court or administrative body, and has never been denied
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`admission to practice before any court or administrative body. Selwyn Decl. ¶¶ 5-
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`6 (Ex. 1134). No court or administrative body has ever imposed sanctions or
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`contempt citations on Mr. Selwyn. See Selwyn Decl. ¶ 7.
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`Mr. Selwyn 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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`Mr. Selwyn understands that he will be subject to the USPTO Rules of
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`Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq. and disciplinary
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`jurisdiction under 37 C.F.R. § 11.19(a). See Selwyn Decl. ¶¶ 8-9.
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`Within the past three years, Mr. Selwyn has 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. See Selwyn Decl. ¶
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`10.
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`- 4 -
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`IPR2018-00812
`U.S. Patent No. 8,856,539
`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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`See Selwyn Decl. ¶ 1. Mr. Selwyn has reviewed the ’539 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 Selwyn Decl. ¶ 11. Mr. Selwyn has been involved in numerous patent
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`litigations and has litigated matters that concerned PTO rules and regulations. See
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`Selwyn Decl. ¶¶ 1, 12. Furthermore, Mr. Selwyn represents Apple in Universal
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`Secure Registry LLC v. Apple Inc., No. 17-cv-00585-VAC-MPT (D. Del. 2017)
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`(“USR litigation”), one of the Related Matters identified in Apple’s Petition for
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`Inter Partes Review of U.S. Patent No. 8,856,5391. See Selwyn Decl. ¶ 12.
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`Through those litigations, Mr. Selwyn developed extensive experience with the
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`subject matter at issue in this proceeding. For example, he was involved in
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`drafting and arguing a motion to dismiss related to 35 U.S.C. § 101 issues for the
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`’539 patent in the USR litigation. He has also been admitted to appear pro hac
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`vice in three proceedings before the United States Patent and Trademark Office
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`relating to patents at issue in the USR litigation, including IPR2018-00809,
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`IPR2018-00810, and IPR2018-00813. See Selwyn Decl. ¶ 12.
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`1 IPR2018-00812, Paper 3.
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`- 5 -
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`IV. CONCLUSION
`For the foregoing reasons, Petitioner respectfully requests that the Board
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`IPR2018-00812
`U.S. Patent No. 8,856,539
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`admit Mark D. Selwyn pro hac vice in this proceeding.
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`Respectfully Submitted,
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`/Monica Grewal /
`Monica Grewal
`Registration No. 40,056
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`- 6 -
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`IPR2018-00812
`U.S. Patent No. 8,856,539
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`CERTIFICATE OF SERVICE
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`I hereby certify that on December 17, 2018, I caused a true and correct copy
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`of the foregoing materials:
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` Petitioner’s Motion for Admission Pro Hac Vice of Mark D.
`Selwyn
` Petitioner’s Updated Exhibit List
` Exhibit 1134 Declaration of Mark D. Selwyn 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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`James M. Glass (jimglass@quinnemanuel.com)
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`Tigran Guledjian (tigranguledjian@quinnemanuel.com)
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`Christopher A. Mathews (chrismathews@quinnemanuel.com)
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`Nima Hefazi (nimahefazi@quinnemanuel.com)
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`Richard Lowry (richardlowry@quinnemanuel.com)
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`Quinn Emanuel USR IPR (qe-usr-ipr@quinnemanuel.com)
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`/Kelvin Chan/
`Kelvin Chan
`Registration No. 71,433
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`- i -
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`IPR2018-00812
`U.S. Patent No. 8,856,539
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`
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`Exhibit Number
`1101
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`TABLE OF EXHIBITS
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`
`Description
`U.S. Patent No. 8,856,539
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`1102
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`1103
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`1104
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`1105
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`1106
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`1107
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`1108
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`1109
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`1110
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`1111
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`1112
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`1113
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`1114
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`1115
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`1116
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`Declaration of Victor Shoup, Ph.D. (“Shoup-Decl.”)
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`Complaint for Patent Infringement, Universal Secure
`Registry LLC v. Apple Inc., No. 17-cv-00585-VAC-MPT
`(D. Del. May 21, 2017)
`U.S. Patent No. 7,237,117
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`’539 Patent File History, 07/20/2009 Non-Final Rejection
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`’539 Patent File History, 11/20/2009 Response to Office
`Action
`’539 Patent File History, 02/03/2010 Final Rejection
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`’539 Patent File History, 05/03/2010 Response After Final
`Action
`’539 Patent File History, 05/24/2010 Request for Continued
`Examination
`’539 Patent File History, 12/22/2010 Non-Final Rejection
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`’539 Patent File History, 04/18/2011 Response to Office
`Action
`’539 Patent File History, 06/29/2011 Final Rejection
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`’539 Patent File History, 11/29/2011 Request for Continued
`Examination
`’539 Patent File History, 11/29/2011 Response to Office
`Action
`’539 Patent File History, 03/06/2012 Non-Final Rejection
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`’539 Patent File History, 09/06/2012 Response to Office
`Action
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`- ii -
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`1117
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`1118
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`1119
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`1120
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`1121
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`1122
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`1123
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`1124
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`1125
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`1126
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`1127
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`1128
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`1129
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`1130
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`1131
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`1132
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`1133
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`1134
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`IPR2018-00812
`U.S. Patent No. 8,856,539
`’539 Patent File History, 12/18/2012 Final Rejection
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`’539 Patent File History, 04/12/2013 Response After Final
`Action
`’539 Patent File History, 05/01/2013 Applicant Initiated
`Interview Summary
`’539 Patent File History, 05/20/2013 Request for Continued
`Examination and Response to Office Action
`’539 Patent File History, 10/02/2013 Non-Final Rejection
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`’539 Patent File History, 01/02/2014 Response to Office
`Action
`’539 Patent File History, 02/04/2014 Examiner Interview
`Summary
`’539 Patent File History, 01/31/2014 Supplemental
`Amendment
`’539 Patent File History, 02/28/2014 Notice of Allowance
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`’539 Patent File History, 03/28/2014 Request for Continued
`Examination
`’539 Patent File History, 03/28/2014 International Search
`Report and Written Opinion for PCT/US2007/070701
`Dated 03/11/2008
`’539 Patent File History, 05/23/2014 Notice of Allowance
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`Plaintiff’s Answer Brief in Opposition to Defendants’
`Motion to Dismiss Plaintiff’s Complaint, Case No. 17-cv-
`00585- JFB-SRF (D. Del. Sept. 29, 2017)
`EP 1 028 401 A2 (“Schutzer”)
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`U.S. Patent No. 5,930,767 (“Reber”)
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`U.S. Patent No. 6,000,832 (“Franklin”)
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`U.S. Patent No. 4,720,860 (“Weiss”)
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`Declaration of Mark D. Selwyn in Support of Motion for
`Admission Pro Hac Vice
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`- iii -
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