`571-272-7822
`
`
`
`
`Paper 13
`Entered: May 21, 2021
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`LBT IP I LLC,
`Patent Owner.
`____________
`
`IPR2020-01189 (Patent 8,497,774 B2)
`IPR2020-01190 (Patent 8,542,113 B2)
`IPR2020-01191 (Patent 8,102,256 B2)
`IPR2020-01192 (Patent 8,421,618 B2)
`IPR2020-01193 (Patent 8,421,619 B2)1
`___________
`
`Before JOHN A. HUDALLA, SHEILA F. McSHANE, and
`JULIET MITCHELL DIRBA, Administrative Patent Judges.
`
`HUDALLA, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`1 We exercise our discretion to issue a single Order, to be filed in each case.
`The parties are not authorized to use this caption for subsequent papers.
`
`
`
`IPR2020-01189 (Patent 8,497,774 B2)
`IPR2020-01190 (Patent 8,542,113 B2)
`IPR2020-01191 (Patent 8,102,256 B2)
`IPR2020-01192 (Patent 8,421,618 B2)
`IPR2020-01193 (Patent 8,421,619 B2)
`
`
`Patent Owner filed a Motion for Pro Hac Vice Admission of Brian S.
`Seal in each of the above-identified proceedings (collectively “Motions”).
`Paper 12.2 In the Motions, Patent Owner indicates that Petitioner does not
`oppose the Motions. See id. at 1. We have not yet decided the Motions.
`The parties discussed the Motions during a conference call on May 20, 2021,
`among respective counsel for Petitioner and Patent Owner, and Judges
`Hudalla, McShane, and Dirba. Although the purpose of the call was to
`discuss Patent Owner’s intended motions to amend, Petitioner raised
`concerns related to the pro hac vice Motions.
`Specifically, Petitioner noted that Mr. Seal is lead counsel in the
`underlying district court litigation. According to Petitioner, Mr. Seal is
`subject to a protective order for proprietary information in that case that
`precludes his participation in amending the patent claims challenged here.
`Thus, in light of Patent Owner’s recent indication that it will be filing
`motions to amend in these cases, Petitioner now opposes Mr. Seal’s pro hac
`vice admission based on the potential conflict with the terms of the district
`court’s protective order. Petitioner offered to file an opposition brief
`detailing its concerns related to the Motions.
`Patent Owner indicated that it was aware of the protective order’s
`restrictions and that it has implemented an ethical wall preventing Mr. Seal’s
`participation in the motion to amend process in these proceedings. Patent
`
`
`2 For purposes of expediency, we cite to Papers filed in IPR2020-01189.
`Patent Owner filed similar Motions in each of the above-identified
`proceedings.
`
`2
`
`
`
`IPR2020-01189 (Patent 8,497,774 B2)
`IPR2020-01190 (Patent 8,542,113 B2)
`IPR2020-01191 (Patent 8,102,256 B2)
`IPR2020-01192 (Patent 8,421,618 B2)
`IPR2020-01193 (Patent 8,421,619 B2)
`
`Owner contends that Mr. Seal could continue to participate in these
`proceedings in all other respects if we were to grant admission pro hac vice.
`Given the possibility of a conflict between Mr. Seal’s participation in
`these cases and the terms of the district court’s protective order, we find that
`further briefing is warranted. See 37 C.F.R. § 42.5(a). Thus, we authorize
`Petitioner to file a seven-page opposition to each of Patent Owner’s pro hac
`vice Motions. Petitioner should include a copy of the district court’s
`protective order as an exhibit to each opposition brief. Petitioner’s
`opposition is due by May 27, 2021. We further authorize Patent Owner to
`file a seven-page reply brief in each case by June 4, 2021. Patent Owner
`may include further testimony with its replies.
`Accordingly, it is
`ORDERED that Petitioner is authorized to file oppositions to Patent
`Owner’s Motions for Pro Hac Vice Admission of Brian S. Seal;
`FURTHER ORDERED that the oppositions are each limited to no
`more than seven pages and must be filed by May 27, 2021;
`FURTHER ORDERED that Patent Owner is authorized to file replies
`in support of its Motions for Pro Hac Vice Admission of Brian S. Seal; and
`FURTHER ORDERED that the replies are each limited to no more
`than seven pages and must be filed by June 4, 2021.
`
`
`
`
`
`
`3
`
`
`
`IPR2020-01189 (Patent 8,497,774 B2)
`IPR2020-01190 (Patent 8,542,113 B2)
`IPR2020-01191 (Patent 8,102,256 B2)
`IPR2020-01192 (Patent 8,421,618 B2)
`IPR2020-01193 (Patent 8,421,619 B2)
`
`FOR PETITIONER:
`
`Jennifer C. Bailey
`Adam P. Seitz
`Robin A. Snader
`ERISE IP, P.A.
`jennifer.bailey@eriseip.com
`adam.seitz@eriseip.com
`robin.snader@eriseip.com
`
`
`FOR PATENT OWNER:
`
`Mitchell Zajac
`BUTZEL LONG, PC
`zajac@butzel.com
`
`
`4
`
`
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