Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 20
`Entered: June 16, 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
`Granting Patent Owner’s Motion for Pro Hac Vice
`Admission of Brian S. Seal
`37 C.F.R. § 42.10
`
`
`
`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.
`
`
`571-272-7822
`
`
`
`
`Paper 20
`Entered: June 16, 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
`Granting Patent Owner’s Motion for Pro Hac Vice
`Admission of Brian S. Seal
`37 C.F.R. § 42.10
`
`
`
`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,
`“PHV Motions”). Paper 12.2 Patent Owner also filed initial declarations of
`Mr. Seal in support of the PHV Motions. Ex. 2002.3 Mr. Seal is Patent
`Owner’s lead counsel in the underlying district court litigation. PHV
`Motions 2–3.
`Petitioner initially did not oppose the PHV Motions. See Paper 12, 1.
`Nevertheless, after Patent Owner indicated that it would be filing motions to
`amend in each of these cases, Petitioner changed its position such that now
`opposes Patent Owner’s PHV Motions. See Paper 13, 2. Petitioner’s change
`in position is based on its contention that Mr. Seal cannot participate in
`amending claims of the challenged patents under the terms of a protective
`order entered in the underlying district court litigation. See Ex. 1073
`(protective order). Based on the changed circumstances, we authorized
`further briefing on the PHV Motions. See Paper 13, 3. Petitioner
`subsequently filed an opposition to each of the PHV Motions (Paper 15,
`“Opp.”), and Patent Owner filed a reply in support of each of the PHV
`
`2 For purposes of expediency, we cite to papers and exhibits filed in
`IPR2020-01189. Similar papers and exhibits are filed in each of the above-
`identified proceedings.
`3 We note that Patent Owner filed two versions of Mr. Seal’s initial
`declarations. The later-filed version includes the required certification that
`Mr. Seal’s statements were made with the knowledge that willful false
`statements and the like are punishable by fine or imprisonment, or both,
`under 18 U.S.C. § 1001.
`
`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)
`
`Motions (Paper 19, “Reply”). Patent Owner also filed revised declarations
`of Mr. Seal in support of the PHV Motions. Ex. 2014.4
`For the reasons set forth below, we grant Patent Owner’s motions for
`pro hac vice admission of Brian S. Seal.
`
`
`I. BACKGROUND
`In the underlying litigation, the district court entered a protective
`order to protect the parties’ proprietary and confidential information
`produced during discovery. See Ex. 1073. In June 2020, Petitioner
`produced to Patent Owner protected information describing the core
`operational details of Petitioner’s accused devices. Opp. 1–2; Ex. 1072
`(notice of service regarding information designated as “CONFIDENTIAL –
`ATTORNEYS’ EYES ONLY”). Petitioner contends that, since that time,
`“Mr. Seal has had access in the litigation to [Petitioner’s] highly confidential
`technical documents describing the core operational details of the products
`[Patent Owner] accuses of infringement.” Opp. 1.
`Petitioner contends Mr. Seal is prohibited from participating in the
`amendment of the challenged claims in the instant proceedings based on a
`“Patent Prosecution Bar” provision in the district court’s protective order.
`Opp. 3–4 (quoting Ex. 1073, 4–5). That provision states that
`any person on behalf of [Patent Owner] who receives one or
`more items designated “CONFIDENTIAL – ATTORNEYS’
`EYES ONLY” or “CONFIDENTIAL – ATTORNEYS’ EYES
`
`4 Hereinafter, we refer only to the revised versions of Mr. Seal’s declarations
`(e.g., Exhibit 2014).
`
`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)
`
`
`ONLY – SOURCE CODE” by [Petitioner] 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 applications,
`specifications, claims, and/or responses to office actions, or
`otherwise affecting the scope of claims in patents or patent
`applications
`related to the litigation. Ex. 1073, 4–5. The provision further states that
`“[t]hese prohibitions shall begin when access to ‘CONFIDENTIAL –
`ATTORNEYS’ EYES ONLY’ or ‘CONFIDENTIAL – ATTORNEYS’
`EYES ONLY – SOURCE CODE’ materials are first received by the affected
`individual.” Id. at 5.
`Citing its production of protected information in June 2020, Petitioner
`argues that “the ‘Patent Prosecution Bar’ begins upon receipt of the
`confidential materials by Mr. Seal.” Opp. 4 (citing Ex. 1073, 5). As such,
`Petitioner argues that “it is irrelevant for purposes of determining a
`protective order violation whether Mr. Seal has (or has not) reviewed
`[Petitioner’s] confidential information.” Id. Petitioner further argues that
`the Patent Prosecution Bar provision prohibits even Mr. Seal’s indirect
`involvement in the amendment process. Id. (quoting Ex. 1073, 5).
`Petitioner contends that “it is unreasonable to assume [Patent Owner’s]
`counsel of record for this IPR . . . will be able to completely insulate
`Mr. Seal through some ‘wall’ to ensure he is not involved in the amendment
`process.” Id. at 5.
`Patent Owner argues that “Mr. Seal has not, and will not access any of
`the proprietary material until after conclusion of this IPR and certainly until
`
`4
`
`
`
`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)
`
`after conclusion of the amendment process in th[ese] proceeding[s].”
`Reply 2; see also Ex. 2014 ¶¶ 12–13 (Mr. Seal testifying that he has not had
`access to Petitioner’s confidential information). Patent Owner notes that the
`district court stayed the underlying litigation until the conclusion of the
`instant inter partes reviews, so Patent Owner contends that Petitioner’s
`concerns about Mr. Seal’s potential or eventual access to protected materials
`are unfounded. Reply 2. Patent Owner also contends that the Patent
`Prosecution Bar provision is triggered on actual access to protected materials
`and not just on the ability to access protected materials. See id. at 2–3.
`Patent Owner further argues that Mr. Seal is not a patent attorney and that he
`will not be involved in amending the challenged patents. See id. at 3; see
`also Ex. 2014 ¶ 13 (Mr. Seal testifying that he has “not participated and [is]
`not participating in any claim amendments in this IPR or in any other related
`IPR”).
`Patent Owner additionally contends that we should admit Mr. Seal pro
`hac vice because of his familiarity with the subject matter of these
`proceedings. PHV Motions 3. Patent Owner further contends that it
`“wishes to apply Mr. Seal’s knowledge of the patent[s] and litigation
`experience by employing him as counsel in th[ese] proceeding[s]” and that it
`hopes to “avoid unnecessary expense and duplication of work” by virtue of
`his admission. Id.
`
`
`5
`
`
`
`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)
`
`
`II. ANALYSIS
`“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.” 37 C.F.R. § 42.10(c). “The grant of a motion to appear pro hac
`vice is a discretionary action taking into account the specifics of the
`proceedings.” Consolidated Trial Practice Guide, 11 (Nov. 2019).5
`Petitioner urges us to deny the instant PHV Motions based on a
`potential protective order violation. Petitioner’s request would require us to
`interpret specific portions of the Patent Prosecution Bar provision, including
`what actions trigger the provision and whether being counsel of record in
`these proceedings (with the pending motions to amend) constitutes
`“indirect[]” involvement in amending claims. But we have no cognizance
`over the protective order. The district court, not the Board, is the arbiter of
`whether a violation has occurred based on the terms of its own order. If
`Petitioner believes that Patent Owner’s or Mr. Seal’s actions constitute a
`protective order violation, Petitioner may seek remedies from the district
`court. For these reasons, we decline Petitioner’s invitation to interpret the
`court’s protective order.
`We also note that Patent Owner has presented at least a plausible case
`as to how Mr. Seal’s involvement here would not run afoul of the protective
`
`
`5 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`6
`
`
`
`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)
`
`order.6 Mr. Seal testifies that “[t]he Protective Order expressly allows
`attorneys who had access to [Petitioner’s] confidential information to
`participate in IPR proceedings, provided that they do not participate ‘in
`drafting or amending claims.’” Ex. 2014 ¶ 12. Mr. Seal further testifies that
`he has not and will not be involved in claim amendments. Id. ¶ 13. We take
`Mr. Seal at his word and note that he made his statements subject to the
`provisions of 18 U.S.C. § 1001.7 Id. ¶ 14. And, of course, his sworn
`statements are subject to the scrutiny of the district court. Finally, the fact
`that the underlying litigation is presently stayed alleviates—at least
`temporarily—Mr. Seal’s potential need to access Petitioner’s protected
`information produced in the underlying litigation. For these reasons, we find
`no present basis to deny Patent Owner’s PHV Motions based on the district
`court’s protective order.
`We now consider the PHV Motions and Mr. Seal’s declarations as
`part of our typical “good cause” analysis. See 37 C.F.R. § 42.10(c). We are
`persuaded that Mr. Seal is an experienced litigating attorney who has an
`established familiarity with the subject matter at issue in these proceedings.
`
`
`6 Notwithstanding, we express no opinion about the propriety of Patent
`Owner’s and Mr. Seal’s actions.
`7 We also decline Petitioner’s suggestion that we should “ensure that
`Mr. Seal has not been involved, directly or indirectly, with any discussions
`with Messrs. Zajac or Gregory relating to any potential amendments.”
`Opp. 7. Enforcing the district court’s protective order is not our role.
`Further, we have no concrete reason to question Mr. Seal’s sworn testimony
`on the present record.
`
`7
`
`
`
`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)
`
`See Ex. 2014 ¶¶ 9–10. We also acknowledge Patent Owner’s choice of
`Mr. Seal as counsel in these proceedings as a means to avoid unnecessary
`expense and duplication of work. See PHV Motions 3; Ex. 2014 ¶ 11.
`Thus, we conclude that Patent Owner has shown good cause for Mr. Seal’s
`admission in these proceedings, pro hac vice, to represent Patent Owner as
`backup counsel. See Unified Patents, Inc. v. Parallel Iron, LLC, IPR2013-
`00639, Order Authorizing Motion for Pro Hac Vice Admission, Paper 7
`(PTAB October 15, 2003) (setting forth requirements for pro hac vice
`admission). Mr. Seal is permitted to appear pro hac vice in these
`proceedings as back-up counsel only. See 37 C.F.R. § 42.10(c). Patent
`Owner’s lead counsel, Mitchell S. Zajac, is a registered practitioner.
`
`
`III. ORDER
`
`Accordingly, it is
`ORDERED that Patent Owner’s motions for pro hac vice admission
`of Brian S. Seal are granted, and Mr. Seal is authorized to represent Patent
`Owner only as back-up counsel in these proceedings;
`FURTHER ORDERED that Patent Owner shall continue to have a
`registered practitioner as lead counsel in these proceedings;
`FURTHER ORDERED that Patent Owner must file Powers of
`Attorney for Mr. Seal under 37 C.F.R. § 42.10(b), within ten (10) business
`days;
`
`8
`
`
`
`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)
`
`
`FURTHER ORDERED that Patent Owner must file updated
`mandatory notices identifying Mr. Seal as back-up counsel in accordance
`with 37 C.F.R. § 42.8(b)(3);
`FURTHER ORDERED that Mr. Seal is to comply with the Office
`Patent Trial Practice Guide and the Board’s Rules of Practice for Trials, as
`set forth in Title 37, Part 42 of the Code of Federal Regulations; and
`FURTHER ORDERED that Mr. Seal is subject to the USPTO’s
`disciplinary jurisdiction under 37 C.F.R. § 11.19(a), and the USPTO’s Rules
`of Professional Conduct set forth at 37 C.F.R. §§ 11.101 et seq.
`
`
`
`
`
`
`
`
`9
`
`
`
`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 Bailey
`Adam Seitz
`Robin Snader
`Jocelyn Ram
`Kelly Hughes
`ERISE IP, P.A.
`jennifer.bailey@eriseip.com
`adam.seitz@eriseip.com
`robin.snader@eriseip.com
`jocelyn.ram@eriseip.com
`kelly.hughes@eriseip.com
`
`
`FOR PATENT OWNER:
`
`Mitchell Zajac
`BUTZEL LONG, PC
`zajac@butzel.com
`
`10
`
`
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