`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL SECURE REGISTRY, LLC,
`Patent Owner.
`_________________________________________
`
`Case IPR2018-00813
`U.S. Patent No. 9,100,826
`_________________________________________
`
`
`PETITIONER’S UNOPPOSED MOTION FOR PRO HAC VICE
`ADMISSION OF MARK D. SELWYN
`PURSUANT TO 37 C.F.R § 42.10(c)
`
`
`
`
`
`
`
`
`
`
`
`
`
`I. STATEMENT OF RELIEF REQUESTED
`Petitioner Apple Inc. (“Petitioner”) respectfully requests that the Patent Trial
`
`IPR2018-00813
`U.S. Patent No. 9,100,826
`
`and Appeal Board (“Board”) enter an order granting the pro hac vice admission of
`
`Mark D. Selwyn as back-up counsel for Apple in Case IPR2018-00813. Apple has
`
`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
`
`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
`
`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
`
`sooner than twenty-one (21) days after service of the petition, must contain a
`
`statement of facts showing there is good cause for the Board to recognize counsel
`
`pro hac vice during the proceeding, and must be accompanied by a declaration or
`
`
`
`IPR2018-00813
`U.S. Patent No. 9,100,826
`affidavit of the individual seeking pro hac vice admission. Id. at 2-3. The 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 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) the individual
`
`seeking to appear 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.;
`
`(6) the individual 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); (7) all other proceedings before the Office for which the individual has
`
`applied to appear pro hac vice in the last three (3) years; and (8) familiarity with
`
`the subject matter at issue in the proceeding. Id.
`
`III. FACTS SHOWING GOOD CAUSE FOR THE BOARD TO RECOGNIZE
`COUNSEL PRO HAC VICE DURING THE PROCEEDING
`On April 3, 2018, Petitioner filed an inter partes review petition in IPR2018-
`
`00813 directed to U.S. Patent No. 9,100,826 (“’826 patent”). Patent Owner was
`
`served on the same day. Petitioner’s lead counsel, Monica Grewal, is a registered
`
`practitioner (Registration No. 40,056). Mark D. Selwyn, a partner at Wilmer
`
`Cutler Pickering Hale and Dorr LLP, seeks pro hac vice admission in this
`
`
`
`IPR2018-00813
`U.S. Patent No. 9,100,826
`proceeding. Accompanying this motion as Exhibit 1115 is the Declaration of Mark
`Selwyn in Support of Motion for Admission Pro Hac Vice (“Selwyn Decl.”).
`
`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. ¶¶ 2-3 (Ex. 1115). 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. Selwyn Decl. ¶¶
`
`5-6 (Ex. 1115). No court or administrative body has ever imposed sanctions or
`
`contempt citations on Mr. Selwyn. See Selwyn Decl. ¶ 7.
`
`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.
`
`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. ¶¶ 8-9.
`
`Within the past three years, Mr. Selwyn has been admitted to appear pro hac
`
`vice in nine proceedings before the United States Patent and Trademark Office
`
`including IPR2017-0700, IPR2017-00701, IPR2017-00728, IPR2017-00210,
`
`IPR2017-00219, IPR2017-00297, IPR2018-01033, IPR2018-01144, and IPR2018-
`
`01040. See Selwyn Decl. ¶ 10.
`
`
`
`IPR2018-00813
`U.S. Patent No. 9,100,826
`As his accompanying declaration demonstrates, Mr. Selwyn has an
`
`established familiarity with the subject matter at issue in this proceeding. Mr.
`
`Selwyn is an experienced patent litigator with more than 20 years of experience.
`
`See Selwyn Decl. ¶ 1. Mr. Selwyn has reviewed the ’826 patent and its file history,
`
`as well as the Petition, Institution Decision, and the exhibits in this proceeding.
`
`See Selwyn Decl. ¶ 11. Mr. Selwyn has been involved in numerous patent
`
`litigations and has litigated matters that concerned PTO rules and regulations. See
`
`Selwyn Decl. ¶¶ 1, 12. Furthermore, Mr. Selwyn represents Apple in Universal
`
`Secure Registry LLC v. Apple Inc., No. 17-cv-00585-VAC-MPT (D. Del. 2017)
`
`(“USR litigation”), one of the Related Matters identified in Apple’s Petition for
`
`Inter Partes Review of U.S. Patent No. 9,100,8261. See Selwyn Decl. ¶ 12.
`
`Through those litigations, Mr. Selwyn developed extensive experience with the
`
`subject matter at issue in this proceeding. For example, he was involved in
`
`drafting and arguing a motion to dismiss related to 35 U.S.C. § 101 issues for the
`
`’826 patent in the USR litigation.
`
`
`
`
`
`
`1 IPR2018-00813, Paper 3.
`
`
`
`IV. CONCLUSION
`For the foregoing reasons, Petitioner respectfully requests that the Board
`
`IPR2018-00813
`U.S. Patent No. 9,100,826
`
`admit Mark D. Selwyn pro hac vice in this proceeding.
`
`Respectfully Submitted,
`
`/Monica Grewal /
`Monica Grewal
`Registration No. 40,056
`
`
`
`
`
`
`
`IPR2018-00813
`U.S. Patent No. 9,100,826
`CERTIFICATE OF SERVICE
`
`I hereby certify that on December 7, 2018, 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 1115 Declaration of Mark D. 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:
`
`James M. Glass (jimglass@quinnemanuel.com)
`
`Tigran Guledjian (tigranguledjian@quinnemanuel.com)
`
`Christopher A. Mathews (chrismathews@quinnemanuel.com)
`
`Nima Hefazi (nimahefazi@quinnemanuel.com)
`
`Richard Lowry (richardlowry@quinnemanuel.com)
`
`Quinn Emanuel USR IPR (qe-usr-ipr@quinnemanuel.com)
`
`
`/Kelvin Chan/
`Kelvin Chan
`Registration No. 71,433
`
`
`
`
`
`
`
`
`
`IPR2018-00813
`U.S. Patent No. 9,100,826
`
`Exhibit Number
`1101
`
`TABLE OF EXHIBITS
`
`
`Description
`U.S. Patent No. 9,100,826
`
`1102
`
`1103
`
`1104
`
`1105
`
`1106
`
`1107
`
`1108
`
`1109
`
`1110
`
`1111
`
`1112
`
`1113
`
`1114
`
`1115
`
`
`
`Declaration of Dr. Victor Shoup (“Shoup-Decl.”)
`
`Universal Secure Registry, LLC v. Apple Inc. et al., No.
`17-585-VACMPT (D. Del.), ECF No. 1, Complaint
`International Patent Application Publication No. WO
`2004/051585 (“Jakobsson”)
`U.S. Patent Application Publication No. 2004/0236632
`(“Maritzen”)
`U.S. Patent No. 5,280,527 (“Gullman”)
`
`International Patent Application Publication No. WO
`2005/001751 (“Verbauwhede”)
`’826 Patent File History, 03/18/2015 Notice of Allowance
`and Fees Due (“Notice of Allowance”)
`Universal Secure Registry, LLC v. Apple Inc. et al., No.
`17-585-VACMPT (D. Del.), ECF No. 1 Plaintiff’s
`Answering Brief in Opposition to Defendants’ Motion to
`Dismiss (“Opp.”)
`Webster’s New World Dictionary of Computer Terms
`Eighth Edition Copyright 2000 (Date Stamped by Library
`of Congress March 28, 2000).
`Microsoft Computer Dictionary Fourth Edition Copyright
`1999
`U.S. Provisional Application No. 60/775,046
`
`U.S. Provisional Application No. 60/812,279
`
`U.S. Provisional Application No. 60/859,235
`
`Declaration of Mark D. Selwyn in Support of Motion for
`Admission Pro Hac Vice
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
