UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
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`Petitioner
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`v.
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`LBT IP I LLC,
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`Patent Owner
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`Case No. IPR2020-01192
`U.S. Patent No. 8,421,618
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`PETITIONER APPLE INC.’S OPPOSITION TO PATENT OWNER’S
`MOTION FOR ADMISSION PRO HAC VICE OF BRIAN S. SEAL
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`Patent Owner LBT IP I LLC (“LBT”) seeks to have its lead trial counsel,
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`Brian S. Seal, appear in this proceeding in direct violation of the District Court’s
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`Protective Order. For over 11 months Mr. Seal has had access in the litigation to
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`Apple’s highly confidential technical documents describing the core operational
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`details of the products LBT accuses of infringement. Now, LBT seeks to both amend
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`its claims and add Mr. Seal as counsel of record to the IPR. This is the very situation
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`contemplated—and expressly forbidden—by the District Court’s Protective Order.
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`For this reason, Apple opposes Mr. Seal’s pro hac vice admission to this proceeding.
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`I.
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`Pro Hac Vice Admission is Discretionary
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`Pro hac vice admission before the Board may be granted “upon a showing of
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`good cause” and is subject to “any other conditions as the Board may impose.” 37
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`C.F.R. § 42.10(c). Thus, granting a motion to appear pro hac vice is a “discretionary
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`action taking into account the specifics of the proceeding.” 77 Fed. Reg. 48618
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`(August 14, 2012).
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`II. Timeline of Events
`LBT filed suit against Apple alleging infringement of the Challenged Patents
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`on July 1, 2019, listing Brian Seal as lead counsel. EX. 1067, Complaint, 15. On
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`June 12, 2020, Apple produced its confidential “core tech docs” to LBT, including
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`Mr. Seal. See EX. 1072. Until recently, LBT maintained a separation of litigation
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`counsel from IPR counsel. Mr. Zajac was LBT’s sole IPR counsel until Mr. Gregory
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`was added December 9, 2020. Paper 7. It was not until May 11, 2021—the day
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`before the deposition of Apple’s IPR expert—that LBT sought to include Mr. Seal
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`as counsel for both the litigation and the IPR. Because LBT had not yet disclosed
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`any intent to amend, Apple raised no objection to Mr. Seal’s involvement. The very
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`next day, on May 12, Mr. Seal appeared as counsel for LBT and deposed Apple’s
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`IPR expert. EX. 1068. Two days later, on Friday, May 14, LBT emailed the Board
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`indicating its intent to file a Motion to Amend in each proceeding. EX. 1069. Apple’s
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`counsel was not copied. Id. On May 18, the Board scheduled a hearing to discuss
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`LBT’s motion to amend. EX. 1070. This was the first time Apple learned of LBT’s
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`intent to amend. Counsel for Apple reviewed the Protective Order in the District
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`Court and raised its objections to Mr. Seal’s involvement during the May 20 hearing.
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`III. Mr. Seal’s Access to Apple’s Confidential Information in the District
`Court Litigation and the Related Protective Order Should Preclude Him
`from Participating in this Proceeding
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`Pending contemporaneously with this IPR is district court litigation between
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`Apple and LBT involving all of the Challenged Patents. LBT IP I LLC v. Apple Inc.,
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`No. 1-19-cv-01245 (D. Del.). In that litigation, Brian Seal serves as lead trial counsel
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`for LBT. EX. 2002; EX. 1071. Though the litigation is now stayed pending the
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`outcome of these IPRs, it progressed through discovery and Apple produced “core
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`tech documents” to LBT (and, specifically, to Mr. Seal) on June 12, 2020. See EX.
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`1072, Annotated Notice of Service of Apple’s Core Tech Documents. These
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`documents describe the core operation of the accused products, are some of Apple’s
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`most confidential and proprietary material, and ultimately have been (or will be)
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`used by LBT to argue Apple’s alleged infringement of the Challenged Patents.
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`The disclosure and use of Apple’s proprietary information should not be
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`allowed to infect the amendment process. Allowing LBT to craft amended claims
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`after accessing Apple’s confidential information for the Accused Products would
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`subject Apple to extreme prejudice. This is why this scenario is expressly precluded
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`by the District Court’s Protective Order. EX. 1073, Protective Order. Section 6(b)
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`of the Protective Order, titled “Patent Prosecution Bar,” governs this situation:
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`(a) Patent Prosecution Bar. Absent the written consent of the
`Producing Party, any person on behalf of the Plaintiff who receives
`one or more items designated by a Defendant shall not be involved,
`directly or indirectly, in any of the following activities: (i) advising
`on, consulting on, preparing, prosecuting, drafting, editing, and/or
`amending of patent [] claims, and/or responses to office actions, or
`otherwise affecting the scope of claims in patents or patent applications
`relating to the functionality, operation, and design of systems and
`methods for power monitoring and conservation in location tracking
`devices (generally or as described in any patent in suit), before any
`foreign or domestic agency, including the United States Patent and
`Trademark Office; and (ii) the acquisition of patents (including patent
`applications), or the rights to any such patents or patent applications
`with the right to sublicense, relating to the functionality, operation, and
`design of systems and methods for power monitoring and conservation
`in location tracking devices. These prohibitions are not intended to and
`shall not preclude counsel from participating in proceedings on behalf
`of a Party challenging the validity of any patent, including any inter
`partes review or post-grant review proceedings, but are intended to
`preclude counsel from participating directly or indirectly in drafting
`or amending claims in any inter partes review or post-grant review
`proceedings, in any reexamination proceedings, or in any reissue
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`proceedings on behalf of a patentee. These prohibitions shall begin
`when access to materials are first received by the affected individual,
`and shall end two (2) years after the final resolution of this action,
`including all appeals.
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`EX. 1073, at 4-5 (emphasis added).
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`There are two key aspects of the prosecution bar relevant to the current
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`dispute. First, the “Patent Prosecution Bar” begins upon receipt of the confidential
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`materials by Mr. Seal. Id., at 5 (“these prohibitions shall begin when access to
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`materials are first received…”). As indicated by Apple’s Notice of Service, Mr. Seal
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`received these materials on June 12, 2020, when Apple served its “core tech
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`documents” upon all counsel of record for LBT. EX. 1072 at 1 (specifically listing
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`Mr. Seal as a recipient of the “core tech documents”). Thus, it is irrelevant for
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`purposes of determining a protective order violation whether Mr. Seal has (or has
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`not) reviewed Apple’s confidential information (though he undoubtedly has or will
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`as LBT’s lead counsel). EX. 1074 at 21:3-7.
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`Second, the “Patent Prosecution Bar” broadly precludes Mr. Seal from
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`participating “directly or indirectly in drafting or amending claims” in the IPR
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`proceedings. EX. 1073, at 5. Even if LBT provides assurances that Mr. Seal will not
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`be “directly” involved with the amendment process, the Protective Order precludes
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`any “indirect” involvement. As the Board is aware, the amendment process is
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`inextricably intertwined with the question of whether the original claims should be
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`canceled. For example, the parties will examine whether and how the challenged art
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`applies to both the original and amended claims. Experts will provide opinions on
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`the same issues. Depositions will discuss both the original rejections and the
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`proposed amendments. And the parties will discuss in multiple hearings the
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`proposed amendments to the claims as well as the challenges to the original claims.
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`Through all of this Mr. Seal will be “indirectly” involved, no matter the role LBT
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`suggests he will play. This is precisely why the Protective Order broadly excludes
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`even “indirect” involvement and why Mr. Seal’s request to appear pro hac vice must
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`be denied.
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`Moreover, it is unreasonable to assume LBT’s counsel of record for this
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`IPR—Messrs. Zajac and Gregory—will be able to completely insulate Mr. Seal
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`through some “wall” to ensure he is not involved in the amendment process. Mr.
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`Zajac and Mr. Gregory are associates in the same firm in which Mr. Seal is a
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`shareholder. EX. 1075. Mr. Gregory and Mr. Seal even share the same suite in Butzel
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`Long’s Washington D.C. office. Given these circumstances, “even the most rigorous
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`efforts … to preserve confidentiality in compliance with the provisions of a
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`protective order may not prevent inadvertent compromise.” In re Deutsche Bank
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`Trust Co. Am., 605 F.3d 1373, 1378 (Fed. Cir. 2010) (internal quotation omitted);
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`see Applied Signal Tech. v. Emerging Markets Commc’ns, Inc. No. C-09-01280 SBA
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`DMR, 2011 WL 197811, at *3 (N.D. Cal. Jan. 20, 2011). This problem is
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`exacerbated by Mr. Seal’s role as lead counsel in the litigation. As courts have long
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`recognized “it is very difficult for the human mind to compartmentalize and
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`selectively suppress information once learned, no matter how well-intentioned the
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`effort may be to do so.” Id.; Bear Creek Technologies Inc. v. Verizon Services Corp.,
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`2012 WL 3190762 at *2 (D. Del. 2012) (recognizing that “strategically amending or
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`surrendering claim scope during prosecution” implicates competitive decision-
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`making that can necessitate the denial of lead trial counsel’s participation in
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`reexamination proceedings). This is why the Board has previously denied pro hac
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`vice admission for lead trial counsel due to these same concerns. SAP America, Inc.
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`v. Versata Development Group, Inc., CBM2012-00001, Paper 21.
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`LBT’s strategy with regards to the Motion to Amend will inherently affect the
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`strategy in the rest of the inter partes review, and vice versa. Because Mr. Seal is
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`forbidden from even indirectly participating in drafting or amending claims, LBT’s
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`Motion should be denied.
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`IV. Butzel Long Should Provide Assurances That Mr. Seal Has Not Already
`Been Indirectly Involved in the Amendment Process
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`The timing and circumstances of Mr. Seal’s involvement and LBT’s request
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`to amend the claims raise concerns for Apple that Mr. Seal already has been
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`“indirectly” involved in the amendment process. Given the timing, Apple also is
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`concerned that Messrs. Zajac and Gregory have been “compromised” through Mr.
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`Seal’s involvement up to this point.
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`As set forth in Section II, Mr. Seal first became involved with these
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`proceedings on May 12 at the deposition of Apple’s expert witness. At that
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`deposition, Mr. Seal was the only attorney to ask questions of the witness on behalf
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`of LBT. Two days after the deposition, LBT sent an email to the Board requesting
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`to amend its claims. Given these circumstances, it is highly probable that Messrs.
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`Zajac and Gregory had discussions with Mr. Seal before and after the deposition that
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`directly or indirectly implicated the strategy of amending the claims. Moreover,
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`LBT’s questions regarding the upcoming deadline for the motion to amend and the
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`motion for pro hac vice left the impression that Mr. Seal was involved with the
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`amendment process. EX. 1074, at 24.
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`In light of this, Apple respectfully requests the Board ensure that Mr. Seal has
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`not been involved, directly or indirectly, with any discussions with Messrs. Zajac or
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`Gregory relating to any potential amendments. If Messrs. Seal, Zajac, and Gregory
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`are unable to provide a declaration stating they have not been involved in such
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`discussions, then Apple respectfully requests further briefing to examine the
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`question of whether Messrs. Zajac and Gregory should remain involved in this
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`proceeding. If any of Apple’s confidential information from the litigation has
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`“compromised” Messrs. Zajac and Gregory, Apple would be prejudiced by their
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`continued involvement in the amendment process.
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`Respectfully submitted,
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`ERISE IP, P.A.
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`BY: /s/ Adam P. Seitz
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`Jennifer C. Bailey Reg. No. 52,583
`Adam P. Seitz, Reg. No. 52,206
`7015 College Blvd., Suite 700
`Overland Park, KS 66211
`P: (913) 777-5600
`F: (913) 777-5601
`jennifer.bailey@eriseip.com
`adam.seitz@eriseip.com
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`ATTORNEYS FOR PETITIONER
`APPLE INC.
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`CERTIFICATE OF SERVICE ON PATENT OWNER
`UNDER 37 C.F.R. § 42.6
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on May 27,
`2021 the foregoing Petitioner Apple Inc.’s Opposition to Patent Owner’s Motion for
`Admission Pro Hac Vice of Brian S. Seal was served via electronic filing with the
`Board and via Electronic Mail on the following practitioners of record for Patent
`Owner:
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`Mitchell S. Zajac (zajac@butzel.com)
`Shaun D. Gregory (gregorysd@butzel.com)
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`/s/ Adam P. Seitz
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`Adam P. Seitz, Reg. No. 52,206
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`ATTORNEY FOR PETITIONER
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