Case No. IPR2020-00031
`Patent 10,043,188
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`Attorney Docket No. 2993.003
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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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`__________________
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`GUARDIAN ALLIANCE TECHNOLOGIES, INC.
`Petitioner
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`v.
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`__________________
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`TYLER MILLER,
`Patent Owner
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`__________________
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`Case No. IPR2020-00031
`Patent No. 10,043,188
`Issued: August 7, 2018
`Application No.: 14/721,707
`Filed: May 26, 2015
`Title: BACKGROUND INVESTIGATION MANAGEMENT SERVICE
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`__________________
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`PETITIONER’S MOTION FOR PRO HAC VICE ADMISSION PURSUANT
`TO 37 C.F.R. § 42.10(C)
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`Patent 10,043,188
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`Attorney Docket No. 2993.003
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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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`__________________
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`GUARDIAN ALLIANCE TECHNOLOGIES, INC.
`Petitioner
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`v.
`
`__________________
`
`TYLER MILLER,
`Patent Owner
`
`__________________
`
`Case No. IPR2020-00031
`Patent No. 10,043,188
`Issued: August 7, 2018
`Application No.: 14/721,707
`Filed: May 26, 2015
`Title: BACKGROUND INVESTIGATION MANAGEMENT SERVICE
`
`__________________
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`PETITIONER’S MOTION FOR PRO HAC VICE ADMISSION PURSUANT
`TO 37 C.F.R. § 42.10(C)
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`Case No. IPR2020-00031
`Patent 10,043,188
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`I.
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`INTRODUCTION
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`Attorney Docket No. 2993.003
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`Pursuant to 37 C.F.R. § 42.10(c), Paper 5, and the Board’s authorization
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`granted February 6, 2020 (Ex. 1026, at p. 38), Petitioner Guardian Alliance
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`Technologies, Inc. (“Petitioner”) respectfully requests that the Board recognize Evan
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`W. Talley as counsel pro hac vice in this proceeding. Petitioner’s lead counsel in
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`this proceeding is a registered practitioner and, as illustrated below, Mr. Talley is an
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`experienced litigator with an established familiarity with this proceeding’s subject
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`matter. Thus, there is good cause for the Board to recognize Mr. Talley pro hac vice
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`in this proceeding.
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`II. TIME FOR FILING
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`This Motion for Pro Hac Vice Admission is being filed no sooner than twenty-
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`one (21) days after service of the Petition. Unified Patents, Inc. v. Parallel Iron,
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`LLC, IPR2013-00639, Paper No. 7 (PTAB Oct. 15, 2013).
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`III. STATEMENT OF FACTS
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`This motion is authorized by the Notice of Filing Date Accorded to Petition
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`and Time for Filing Patent Owner Preliminary Response that was mailed on October
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`22, 2019 (Paper No. 5). Petitioner’s lead and back-up counsel are registered
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`practitioners. Patent Owner Tyler Miller indicated during the February 6, 2020 call
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`with the Board that it is considering opposing this motion (Ex. 1026, at p. 38:14–
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`24).
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`1
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`Case No. IPR2020-00031
`Patent 10,043,188
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`Attorney Docket No. 2993.003
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`Where lead counsel is a registered practitioner, the Board may permit a non-
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`registered practitioner to appear pro hac vice “upon a showing that counsel is an
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`experienced litigating attorney and has established familiarity with the subject matter
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`at issue in the proceeding.” 42 C.F.R. § 42.10(c); Unified Patents, IPR2013-00639,
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`Paper 7 (setting forth requirements for pro hac vice admission).
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`As set forth in his Declaration submitted herewith (Ex. 1034), Mr. Talley is
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`an experienced litigator. (Ex. 1034, at ¶¶ 3–5). He is a senior attorney with Dunlap
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`Codding, P.C., with approximately ten years of experience representing clients in
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`patent matters and complex, technology-related litigation. (Id. at ¶¶ 2–5). Mr. Talley
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`has been involved in litigating patent matters through claim construction, trial, and
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`appeal and has participated in arguing complex claim construction and invalidity
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`issues in multiple district and appellate court proceedings. (Id. at ¶ 3). While never
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`before seeking pro hac vice admission before the Board, Mr. Talley has been
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`involved with and participated in multiple inter partes review proceedings before
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`the Board, including several in which Petitioner’s lead counsel in this proceeding
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`also served as lead counsel. (Id. at ¶ 9).
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`Mr. Talley is also familiar with the subject matter of this proceeding. (Id. at
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`¶¶ 4–5). He is one of the primary attorneys for Petitioner’s indemnitee, the City of
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`Oklahoma City, Oklahoma, in the related district court litigation relating to the
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`patent at issue in this inter partes review, U.S. Patent No. 10,043,188 (“the ’188
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`2
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`Case No. IPR2020-00031
`Patent 10,043,188
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`Patent”) (Miller Mendel, Inc. et al. v. The City of Oklahoma City, Case No. 5:18-cv-
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`Attorney Docket No. 2993.003
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`00990-JWD (W.D. Okla.)). (Ex. 1034, at ¶ 1). He has reviewed and analyzed the
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`’188 Patent, Patent Owner’s infringement positions, and the prior art at issue in this
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`proceeding. (Id. at ¶ 4)
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`Based on his work in the pending district court litigation, involvement with
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`the Petition in this proceeding, and the other facts detailed in his Declaration (Ex.
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`1034), Mr. Talley has significant familiarity with the subject matter in this
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`proceeding. (Ex. 1034, at ¶¶ 1, 4–5). Petitioner wishes to apply Mr. Talley’s
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`knowledge of the patent and litigation experience by employing him as counsel in
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`this proceeding. Admission of Mr. Talley pro hac vice will enable Petitioner to avoid
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`unnecessary expense and duplication of work in this proceeding and between it and
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`the co-pending litigation. Because Mr. Talley is an experienced practitioner with an
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`established familiarity with the subject matter of the proceeding, Petitioner
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`respectfully submits that there is good cause under 37 C.F.R. § 42.10(c) to recognize
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`Mr. Talley as counsel pro hac vice during this proceeding. (Ex. 1034, at ¶¶ 1–5).
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`IV. DECLARATION OF INDIVIDUAL SEEKING TO APPEAR
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`This Motion for Pro Hac Vice Admission is supported by the accompanying
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`Declaration of Evan W. Talley (Petitioner Ex. 1034), as required by Unified Patents,
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`IPR2013-00639, Paper 7.
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`3
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`Case No. IPR2020-00031
`Patent 10,043,188
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`Attorney Docket No. 2993.003
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`Date: February 21, 2020
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`Respectfully submitted,
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`/Jordan A. Sigale/
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`By:
`Jordan A. Sigale, Reg. No. 39,028
`Lead Counsel for Petitioner
`Dunlap Codding, P.C.
`P.O. Box 16370
`Oklahoma City, OK 73113
`Telephone: (405) 607-8600
`Facsimile:
`(405) 607-8686
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`4
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`Case No. IPR2020-00031
`Patent 10,043,188
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`Attorney Docket No. 2993.003
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`PETITONER’S UPDATED EXHIBIT LIST
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`Exhibit No.
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`Description
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`Ex. 1001
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`U.S. Patent No. 10,043,188 (Miller)
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`Ex. 1002
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`A printed publication, which is a video demonstration entitled
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`“Background Assistant”
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`Ex. 1003
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`U.S. Patent Pub. No. 2005/0033633 (LaPasta et al.)
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`Ex. 1004
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`A printed publication, which is the POBITS online User Manual
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`and Technical Guide, dated 02-01-2011 and bearing a 2010
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`copyright date
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`Ex. 1005
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`U.S. Patent No. 9,070,098 (Miller)
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`Ex. 1006
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`Prosecution History for U.S. Patent No. 10,043,188
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`Ex. 1007
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`Prosecution History for U.S. Patent No. 9,070,098
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`Ex. 1008
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`Patent Owner Proposed Claim Constructions from Related
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`Litigation
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`Ex. 1009
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`Declaration of Tom Ward
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`Ex. 1010
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`Background Solutions Website Products Page
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`Ex. 1011
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`Public Safety Information Bureau Website - Safetysource.com
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`5
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`Case No. IPR2020-00031
`Patent 10,043,188
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`Attorney Docket No. 2993.003
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`Ex. 1012
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`Background Solutions Website Services Page
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`Ex. 1013
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`Expected Practices in Background Checking: Review of the
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`Human Resource Management Literature
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`Ex. 1014
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`Declaration of Kingsley Klosson
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`Ex. 1015
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`U.S. Patent Pub. No. 2008/0306750 (Wunder et al.)
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`Ex. 1016
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`CrimLink File History
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`Ex. 1017
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`U.S. Patent No. 6,904,407 (Ritzel)
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`Ex. 1018
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`CandidateLink File History
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`Ex. 1019
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`Patent Owner’s Infringement Contentions from Related
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`Litigation
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`Ex. 1020
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`ADP Website - Identity Validations
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`Ex. 1021
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`Background Solutions PowerPoint Presentation
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`Ex. 1022
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`Compilation of Background Solutions printed publication
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`timestamped screenshots
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`Ex. 1023
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`Internet Archive Captures of
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`http://www.backgroundsolutions.com/index.html
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`6
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`Case No. IPR2020-00031
`Patent 10,043,188
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`Attorney Docket No. 2993.003
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`Ex. 1024
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`Background Assistant™ Product Brochure
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`Ex. 1025
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`Listing of Challenged Claims
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`Ex. 1026
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`Transcript of 2.6.20 Telephonic Hearing
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`Ex. 1027
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`2009 Background Solutions Video Demonstration (“2009
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`Video”)
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`Ex. 1028
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`Declaration of Jordan A. Sigale In Support of Petitioner’s
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`Motion to Correct a Clerical Mistake in the Petition Under 37
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`C.F.R. Motion for Pro Hac Vice Admission § 42.104(c)
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`Ex. 1029
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`Background Solutions Invalidity Chart 1
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`Ex. 1030
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`Background Solutions Invalidity Chart 2
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`Ex. 1031
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`Correspondence between Counsel re: IPR Petition and Exhibit
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`Ex. 1032
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`The City of Oklahoma City’s Non-Infringement and Invalidity
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`Contentions
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`Ex. 1033
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`Correspondence from PO’s Counsel re: request for authorization
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`to seek permission to request correction
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`Ex. 1034
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`Declaration of Evan W. Talley in Support of Petitioner’s Motion
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`for Pro Hac Vice Admission
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`7
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`Case No. IPR2020-00031
`Patent 10,043,188
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`Attorney Docket No. 2993.003
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`CERTIFICATE OF SERVICE
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`I hereby certify pursuant to 37 C.F.R. §§ 42.6(e) that on this 21st day of
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`February, a true and correct copy of the foregoing materials:
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`• Petitioner’s Motion for Pro Hac Vice Admission Pursuant to 37 C.F.R. §
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`42.10(c); and
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`• Petitioner’s Exhibit 1034, Declaration of Evan W. Talley in Support of
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`Petitioner’s Motion for Pro Hac Vice Admission
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`were served via electronic mail on the Lead and Back-Up Counsel for Patent
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`Owner:
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`Richard D. Mc Leod (Reg. No. 46,921) Kurt Rylander (Reg. No. 43,897)
`Mc Leod Law LLC
`RYLANDER & ASSOCIATES PC
`406 W. 12th St.
`PO Box 99
`Woodland, WA 98674
`Vancouver, WA 98660
`law@rickmcleod.com
`rylander@rylanderlaw.com
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`Respectfully submitted,
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`/Jordan A. Sigale/
`Jordan A. Sigale, Reg. No. 39,028
`Dunlap Codding, P.C.
`P.O. Box 16370
`Oklahoma City, OK 73113
`Telephone: (405) 607-8600
`Facsimile:
`(405) 607-8686
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`Lead Counsel for Petitioner
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`8
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`Date: February 21, 2020
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