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 IPR2020-01192
`U.S. Patent No. 8,421,618
`____________
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`PATENT OWNER’S REPLY IN SUPPORT OF IT’S MOTION FOR
`ADMISSION PRO HAC VICE OF BRIAN S. SEAL
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`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`
`Petitioner
`
`v.
`
`LBT IP I LLC,
`
`Patent Owner
`____________
`
`Case IPR2020-01192
`U.S. Patent No. 8,421,618
`____________
`
`
`
`PATENT OWNER’S REPLY IN SUPPORT OF IT’S MOTION FOR
`ADMISSION PRO HAC VICE OF BRIAN S. SEAL
`
`
`
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`
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`Case IPR2020-01192
`U.S. Patent No. 8,421,618
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`PATENT OWNER’S EXHIBIT LIST
`Exhibit Number Description
`2014
`Revised Declaration of Brian S. Seal in support of Patent
`Owner’s Unopposed Motion For Pro Hac Vice Admission
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`
`
`ii
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`Case IPR2020-01192
`U.S. Patent No. 8,421,618
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`Petitioner Apple Inc.’s (“Apple”) opposition to Patent Owner LBT IP I LLC’s
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`(“LBT”) mischaracterizes the facts about the status of the district court case and
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`presents a story premised on a proverbial boogeyman theory, and nothing more. Mr.
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`Seal has not accessed the documents or information Apple characterizes as highly
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`confidential technical documents, he will not have reason to access such documents
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`and information until conclusion of this IPR proceeding, he does not engage in patent
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`prosecution activities in this case or any other, and he is not engaged in the claim
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`amendment process here. See Apple’s Opposition, page 1.
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`Apple further misrepresents the specifics of the protective order in the district
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`court case, in that it does not “expressly forbid[]” counsel from the district court case
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`from being counsel of record in the IPR. Because there is no risk of involving, nor
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`reason to exclude, Mr. Seal from being added as counsel of record in this IPR, and
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`because good cause exists for entry of Mr. Seal pro hac vice into this proceeding,
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`Patent Owner LBT requests that this board grant its pro hac vice motion.
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`I. MR. SEAL SHOULD BE ADMITTED TO AVOID PREJUDICE
`TO LBT AND MAY BE ADDED WITHOUT RISK TO APPLE
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`Above all else, Mr. Seal is an experienced litigating attorney, he has an
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`established relationship with LBT, familiarity with the subject matter at issue in the
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`proceeding, and Apple admits this insofar as its recognition of Mr. Seal as lead
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`trial counsel in the related district court proceeding. Therefore, the only question
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`1
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`Case IPR2020-01192
`U.S. Patent No. 8,421,618
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`to be answered is whether Mr. Seal can be admitted without contravening the
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`requirements of the protective order in said related district court case, (LBT IP I
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`LLC v. Apple Inc., No. 1-19-cv-01245 (D. Del.)) and Mr. Seal can be admitted in
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`this proceeding without issue in that regard.
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`LBT’s work on the pending motion to amend was without access to any of
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`Apple’s proprietary information. The ongoing work required for the amendment
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`process will continue as such. This is the case even if Mr. Seal is granted
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`admission pro hac vice into this proceeding because, despite Apple’s unfounded
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`boogeyman theory, Mr. Seal has not, and will not access any of the proprietary
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`material until after conclusion of this IPR and certainly until after conclusion of the
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`amendment process in this proceeding. See Exhibit 1. Curiously, Apple
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`references the fact that the proprietary material likely “will be” used by LBT in the
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`district court case as if there will be any need to litigate Apple’s infringement in
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`that case until after the conclusion of this IPR, considering the district court stayed
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`that proceeding until after conclusion of the related PTAB proceedings. Whether
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`LBT will access the material designated as highly confidential at some point in the
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`distant future, after resolution of this proceeding, is of no consequence. Further,
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`Apple’s reading of the terms of the protective order is inaccurate, such that it reads
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`“access” in the terms for Patent Prosecution Bar to mean the ability to access—
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`which it does not—and it reads the Patent Prosecution Bar to preclude access to
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`2
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`Case IPR2020-01192
`U.S. Patent No. 8,421,618
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`proceedings rather than only “advising on, consulting on, preparing, prosecuting,
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`drafting, editing, and/or amending of patent [] claims”—which it does not.
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`First, the operative word in the protective order restriction is “access.” Mr.
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`Seal should be granted access pro hac vice and should be granted the ability to
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`participate in prosecution, having never actually received access to the purported
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`highly confidential materials. The materials were received by Butzel Long, but
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`Mr. Seal does not have access to the materials.
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`Second, assuming arguendo that “receipt”, not “access”, is the operative
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`word triggering the Patent Prosecution Bar, Mr. Seal’s role regarding patent
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`prosecution in this proceeding obfuscates any protective order concerns. Mr. Seal
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`has no role in any of the prosecution activities identified in the Patent Prosecution
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`Bar of the protective order. Specifically, Mr. Seal will not be “advising on,
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`consulting on, preparing, prosecuting, drafting, editing, and/or amending of patent
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`[] claims” in this proceeding. Mr. Seal is not a patent attorney. He does not draft
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`or otherwise prosecute patents. Mr. Seal is a litigator. Conversely, Mr. Zajac and
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`Mr. Gregory are patent attorneys, who otherwise have never had access to the
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`purported highly confidential material, and who are dually responsible for all
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`aspects of patent prosecution, specifically claim amendment, in this proceeding.
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`The protective order narrowly precludes involvement in prosecution, not
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`access to PTAB proceedings, not involvement in IPRs, and no other restrictions—
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`3
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`Case IPR2020-01192
`U.S. Patent No. 8,421,618
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`only direct and indirect involvement in prosecution. Mr. Seal will honor the terms
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`of the protective order, and as such the protective order and Mr. Seal’s
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`involvement with this proceeding may co-exist so long as Mr. Seal does not
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`directly or indirectly advise, consult, prepare, prosecute, draft, edit and or amend
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`patent claims. Furthermore, as a deterring factor in that regard, Mr. Seal is subject
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`to the terms of the protective order, and any violation of those terms is a matter that
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`Apple may more appropriately address with the district court if needed.
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`While Apple fashions its opposition as a motion to exclude, it fails to cite the
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`relevant standard of review (which is a standard of review established by the
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`Federal Circuit for courts to evaluate protective orders—In re Deutsche Bank Trust
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`Co. Am., 605 F.3d 1373, 1378-80 (Fed. Cir. 2010) establishes that a court must
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`balance competing interests between potential harm from risk of inadvertent
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`disclosure of confidential information against potential harm from restrictions
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`imposed on patentees' right to have counsel of choice.) Apple’s citations are
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`distinguishable from the facts at hand. Apple relies on cases of inadvertent
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`disclosure of confidential information and the conflict within the human mind
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`regarding isolation of what is known in one experience from that of another,
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`specifically precluding use AFTER the proceedings. Here, the issue is not
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`separation of thought, rather separation of action DURING the proceedings. So
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`long as Mr. Seal is not involved in the prosecution, again assuming arguendo that
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`4
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`Case IPR2020-01192
`U.S. Patent No. 8,421,618
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`this board or the district court were to find that he has actually received access to
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`the purported highly confidential information, his entry pro hac vice does not
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`contravene the terms of the district court’s protective order—the protective order
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`does not prevent Mr. Seal from access, it only sets a narrow prosecution bar.
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`Court’s do not characterize IPR’s in the entirety as “prosecution”. Rather,
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`the express intent to include “amendments” in the prosecution bar here, among
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`other terms, is relevant. If the parties or the district court intended more, broad
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`coverage, they could have used the terms “IPR”, “reissue”, “reexam”, “licensing
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`activities”, “patent acquisition”, or a host of other things, but they did not.
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`Furthermore, Apple well-knows that court’s often construe prosecution bars to
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`allow participation by trial counsel in PTO proceedings when their role does not
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`include involvement in the amendment process. See e.g. Grobler v. Apple Inc., No.
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`C 12-01534 JST (PSG), 2013 WL 3359274, at *2 (N.D. Cal. May 7, 2013); EPL
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`Holdings, LLC v. Apple Inc., No. C-12-04306 JST JSC, 2013 WL 2181584, at *4
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`(N.D. Cal. May 20, 2013). Furthermore, many courts have held that patent
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`prosecution, by itself, does not raise a presumption of an unacceptable risk of
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`inadvertent disclosure, absent a fact specific analysis. See, e.g., Avocent Redmond
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`Corp. v. Rose Elecs., Inc., 242 F.R.D. 574 (W.D.Wa.2007); Trading Techs. Int'l,
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`Inc. v. Espeed, Inc., No. 04–CV–5312, 2004 WL 2534389, 2004 U.S. Dist. LEXIS
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`19429 (N.D.Ill. Sept. 24, 2004); MedImmune, Inc. v. Centocor, Inc., 271 F.Supp.2d
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`5
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`U.S. Patent No. 8,421,618
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`762 (D.Md.2003). Mr. Seal will remain uninvolved with the amendment process,
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`and therefore the presumed risk Apple claims is unsupportable.
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`Finally, Apple’s concerns regarding indirect involvement by Mr. Seal in the
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`amendment proceedings in unfounded. Apple’s presumption about what is or is
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`not “highly probable” is misguided, and apparently only based on the timing of a
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`deposition, in the days leading up to the claim amendment deadline, and a
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`clarification question posed to the board by LBT about overlapping deadlines—
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`that is, the presumption is not premised on any substantive information or facts.
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`Perhaps this is another Apple attempt, as in Mirror Worlds, LLC v. Apple, Inc., No.
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`6:08-cv-88, 2009 WL 2461808, at *2 (E.D. Tex. Aug. 11, 2009), to create a policy
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`that would encourage defendants to file USPTO proceeding, excluding plaintiff's
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`counsel from participating in such proceedings, thereby forcing a plaintiff to
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`defend a patent in two separate venues with two teams of attorneys. In Mirror
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`Worlds, the linchpin allowing participation was that the patent owner agreed to
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`implement strong safeguards, such as restricting use of confidential information,
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`and as such the court determined that the risk of inadvertent misuse of Apple's
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`confidential information did not outweigh the prejudice to the patent owner if the
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`prosecution bar was applied to the PTO proceedings. Mirror Worlds, LLC, 2009
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`WL 2461808, at *2. Mr. Seal has not been involved, nor will he be involved in the
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`amendment process. He will adhere to the terms of the protective order.
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`6
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`Case IPR2020-01192
`U.S. Patent No. 8,421,618
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`II. ENTRY PRO HAC VICE FOR GOOD CAUSE
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`While Apple contends Mr. Seal’s role as trial counsel somehow has a
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`preclusive effect on his ability to be admitted pro hac vice into this proceeding, it
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`is his knowledge of LBT’s business and the relevant patent technology that is
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`precisely why good cause exists to admit him. Mr. Seal has a history in this space,
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`specifically as counsel representing LBT, the client relies and depends on Mr. Seal
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`in this regard, and there is potential difficulty that LBT might face if forced to rely
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`solely on other counsel, including other Butzel Long counsel solely, before the
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`PTO. See e.g. U.S. Steel Corp. v. United States, 730 F.2d 1465, 1468
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`(Fed.Cir.1984) (“Because the present litigation is extremely complex and at an
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`advanced stage ... forcing USS to rely on newly retained counsel would create an
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`extreme and unnecessary hardship.”). Mr. Seal attests to remain in his proverbial
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`lane in this matter, staying uninvolved, directly and indirectly, with the amendment
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`process, and will do so compliance with rules of admission and in compliance with
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`the protective order. (Exhibit2014).
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`Patent Owner respectfully requests that the Board grant this motion for the
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`reasons herein stated.
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`Date: June 4, 2021
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`Respectfully submitted,
`BUTZEL LONG, PC
`
`/s/ Mitchell S. Zajac
`Mitchell S. Zajac, USPTO Reg. No. 76,818
`Counsel for Patent Owner
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`7
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`Case IPR2020-01192
`U.S. Patent No. 8,421,618
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`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e))
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`
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`The undersigned hereby certifies that PURSUANT TO 37 C.F.R. §42.8(a)(2)
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`the foregoing PATENT OWNER’S REPLY IN SUPPORT OF IT’S MOTION FOR
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`ADMISSION PRO HAC VICE OF BRIAN S. SEAL is being served via electronic
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`filing with the Board and electronically via e-mail on June 3, 2021, in its entirety on
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`the following counsel of record for Petitioners:
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`Adam P. Seitz (Back-Up Counsel)
`USPTO Reg. No. 52,206
`ERISE IP, P.A.
`7015 College Blvd., Suite 700
`Overland Park, KS 66211
`PTAB@eriseip.com
`Phone: (913) 777-5600
`Fax: (913) 777-5601
`
`BUTZEL LONG, PC
`
`
`/s/ Mitchell S. Zajac
`Mitchell S. Zajac
`USPTO Reg. No. 76,818
`Counsel for Patent Owner
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`
`
`Jennifer C. Bailey (Lead Counsel)
`USPTO Reg. No. 52,583
`ERISE IP, P.A.
`7015 College Blvd., Suite 700
`Overland Park, KS 66211
`PTAB@eriseip.com
`Phone: (913) 777-5600
`Fax: (913) 777-5601
`
`
`
`
`
`
`Date: June 4, 2021
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`150 W. Jefferson Avenue
`Suite 100
`Detroit, MI 48226
`(313) 225-7000
`
`
`
`
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