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`Paper No. 59
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––––––––––
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MEMORYWEB, LLC,
`Patent Owner.
`
`––––––––––––––––––
`
`Case No. IPR2022-00031
`U.S. Patent No. 10,621,228
`
`––––––––––––––––––
`
`
`PETITIONER’S MOTION
`FOR PRO HAC VICE ADMISSION OF LEIF E. PETERSON, II
`
`
`
`
`
`IPR2022-00031
`
`
`
`Motion for Pro Hac Vice Admission
`
`
`
`Petitioner Apple Inc. (“Apple”) respectfully requests that the Board
`
`recognize Leif E. Peterson, II, Esq. as pro hac vice and as an associate agent of
`
`Apple’s counsel of record designated under its Power of Attorney (Paper 39) for
`
`Apple in this proceeding.
`
`I.
`
`BACKGROUND
`Apple’s Motion for Pro Hac Vice Admission is being filed pursuant to and
`
`in compliance with the Notice of Filing Date Accorded to Petition, which was filed
`
`November 23, 2021 (Paper 5) (the “Notice”). The Notice authorizes parties to file
`
`motions for pro hac vice admission under 37 C.F.R. § 42.10(c). Further to the
`
`Notice, such “motions shall be filed in accordance with the ‘Order – Authorizing
`
`Motion for Pro Hac Vice Admission’ in Case IPR2013-00639.” Unified Patents,
`
`Inc. v. Parallel Iron, LLC, Case No. IPR2013-00639, Paper 7 (PTAB Oct. 15,
`
`2013) (the “Order”). Patent Owner has confirmed it does not oppose this Motion.
`
`II. TIME OF FILING
`This Motion for Pro Hac Vice Admission is being filed in accordance with
`
`the Order, and is filed greater than 21 days after service of the Petition.
`
`III. STATEMENT OF FACTS
`
`
`As required by the Order, the following statement of facts, supported by the
`
`attached Declaration of Leif E. Peterson, II in Support of Motion for Pro Hac Vice
`
`Admission (Ex. 1101, “Peterson Declaration”), shows that there is good cause for
`
`1
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`
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`IPR2022-00031
`
`
`
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`the Patent Trial and Appeal Board (“Board”) to recognize Mr. Peterson pro hac
`
`Motion for Pro Hac Vice Admission
`
`vice in this proceeding. As required by 37 C.F.R. § 42.10(c), Apple’s lead counsel,
`
`Jeffrey P. Kushan, is a registered practitioner and experienced in proceedings
`
`before the USPTO.
`
`Mr. Peterson is an experienced litigation attorney. Mr. Peterson has been a
`
`litigating attorney for more than 9 years and has been involved in numerous patent
`
`litigation cases in federal courts. Mr. Peterson’s experience includes representing a
`
`wide range of clients in complex intellectual property litigation, and he has
`
`appeared in a number of litigation matters before various Appellate and District
`
`Courts. This will be Mr. Peterson’s first appearance pro hac vice before the Board.
`
`Mr. Peterson is a member in good standing of the Illinois State Bar, with no
`
`suspensions or disbarments from practice, nor any application for admission to
`
`practice denied, nor any sanctions or contempt citations. Mr. Peterson is admitted
`
`to practice before the United States Court of Appeals for the Federal Circuit, the
`
`United States District Court for the Northern District of Illinois, and the United
`
`States District Court for the Western District of Michigan.
`
`Mr. Peterson’s mailing address is: Sidley Austin LLP, 1 South Dearborn,
`
`Chicago, IL 60603; his email address is: leif.peterson@sidley.com; and his direct
`
`dial is: (312) 853-7190.
`
`2
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`
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`IPR2022-00031
`
`
`
`Motion for Pro Hac Vice Admission
`
`
`
`Mr. Peterson has worked with lead counsel in connection with this
`
`proceeding. As such, he has reviewed and is familiar with (i) U.S. Patent No.
`
`10,621,228, the patent at issue in this and related district court proceedings, (ii) the
`
`legal and factual arguments that have been put forth by Petitioner, and (iii) the
`
`developments in this proceeding since the filing of the Petition. Mr. Peterson. has
`
`fully familiarized himself with the Board’s established practices. Accordingly, he
`
`has established familiarity with the subject matter at issue in these proceedings and
`
`the conduct of these proceedings to date.
`
`Mr. Peterson has read and will comply with the Office Patent Trial Practice
`
`Guide and the Board’s Rules for Practice for Trials set forth in part 42 of 37
`
`C.F.R., and he agrees to be subject to the USPTO Rules of Professional Conduct
`
`set forth in 37 C.F.R. §§ 11.01 et seq., and to disciplinary jurisdiction under 37
`
`C.F.R. § 11.19(a).
`
`IV. ANALYSIS
`The facts contained in the Statement of Facts above, and contained in the
`
`Peterson Declaration, establish that there is good cause to admit Mr. Peterson pro
`
`hac vice in this proceeding under 37 C.F.R. § 42.10(c). Apple’s lead counsel is a
`
`3
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`IPR2022-00031
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`
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`registered practitioner, and Mr. Peterson is an experienced litigating attorney with
`
`Motion for Pro Hac Vice Admission
`
`an established familiarity with the subject matter at issue in this proceeding.
`
`V. CONCLUSION
`Therefore, Petitioner respectfully submits that there is good cause for the
`
`Board to recognize Mr. Peterson as Pro Hac Vice counsel and as an associate agent
`
`for Petitioner during these proceedings. Apple’s Motion for Pro Hac Vice
`
`Admission is accompanied by a Declaration of Leif E. Peterson, II, as required by
`
`the Order.
`
`
`
`Dated: September 18, 2023
`
`Respectfully Submitted,
`
`
`
`
`
`/Jeffrey P. Kushan/
`Jeffrey P. Kushan
`Reg. No. 43,401
`SIDLEY AUSTIN LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`jkushan@sidley.com
`(202) 736-8914
`Attorney for Petitioner
`
`4
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`
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`
`
`IPR2022-00031
`
`
`
`Motion for Pro Hac Vice Admission
`
`No.
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`1008
`1009
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`1020
`1021
`
`1022
`
`Updated Exhibit List
`
`Exhibit Description
`U.S. Patent No. 10,621,228
`File History of U.S. Patent No. 10,621,228
`Declaration of Dr. Loren Terveen regarding U.S. Patent No. 10,621,228
`CV of Dr. Loren Terveen
`Aperture 3 User Manual, Apple Inc. (Feb. 2010) (“A3UM”)
`U.S. Patent App. Pub. No. 2010/0058212 A1 to Belitz et al. (“Belitz”)
`U.S. Patent No. 9,612,126 to Beletski et al.
`RESERVED
`RESERVED
`U.S. Patent No. 9,098,531 (“’531 patent”)
`
`U.S. Patent No. 9,552,376 (“’376 patent”)
`
`U.S. Patent No. 10,423,658 (“’658 patent”)
`
`RESERVED
`
`U.S. Patent No. 11,017,020 (“’020 patent”)
`File History of U.S. Patent No. 9,098,531
`
`File History of U.S. Patent No. 9,552,376
`
`File History of U.S. Patent No. 10,423,658
`
`RESERVED
`
`File History of U.S. Patent No. 11,017,020
`Declaration of Matthew Birdsell
`Apple Inc., www.apple.com (various) (Archive.org: Feb. 17 to Mar. 5,
`2010)
`Standard Affidavit, Internet Archive (Oct. 8, 2021), available at
`https://archive.org/legal/affidavit.php
`
`5
`
`
`
`IPR2022-00031
`
`
`
`Motion for Pro Hac Vice Admission
`
`
`
`No.
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`Exhibit Description
`Complaint, MemoryWeb, LLC v. Apple, Inc., Civ. No. 6:21-cv-531,
`Dkt. 1 (W.D. Tex. May 25, 2021).
`Affidavit of Service, MemoryWeb, LLC v. Apple, Inc., Civ. No. 6:21-
`cv-531, Dkt. 9 (W.D. Tex. Jun. 11, 2021) (service as of June 10, 2021)
`
`RESERVED
`
`Joint Motion for Entry of Agreed Scheduling Order, MemoryWeb, LLC
`v. Apple, Inc., Civ. No. 6:21-cv-531, Dkt. 24 (W.D. Tex. Oct. 1, 2021)
`
`Plaintiff MemoryWeb, LLC’s Initial Infringement Contentions,
`MemoryWeb, LLC v. Apple, Inc., Civ. No. 6:21-cv-531 (W.D. Tex.
`Sept. 24, 2021) (service only)
`
`1028
`1029
`
`1032
`
`U.S. Patent App. Pub. No. 2011/0074811 A1 to Hanson et al.
`Top 11 Technologies of the Decade, IEEE Spectrum, pp. 27-63 (Jan.
`2011).
`1030 Wikipedia Entry for “Photo sharing” (Archive.org: May 6, 2011),
`available at https://web.archive.org/web/20110506092919/
`http:/en.wikipedia.org/wiki/Photo_sharing
`1031 Wikipedia Entry for “Image organizer” (Archive.org: Apr. 27, 2010),
`available at https://web.archive.org/web/20100427092553/
`https:/en.wikipedia.org/wiki/Image_organizer
`Todd Bogdan, “Announcing Picasa 3.5, now with name tags, better
`geotagging and more,” The Official Google Blog (Sept. 22, 2009)
`(Archive.org: Nov. 11, 2009), available at
`https://web.archive.org/web/20091103113337/
`http://googlephotos.blogspot.com/2009/09/announcing-picasa-35-now-
`with-name-tags.html
`Stephen Shankland, “What’s the best Web site for geotagged photos?,”
`CNET (Mar. 18, 2009), available at
`https://www.cnet.com/tech/computing/whats-the-best-web-site-for-
`geotagged-photos/
`Panoramio, “Embedding a Panoramio map into your web page”
`(Archive.org: Mar. 28, 2010), available at
`
`1033
`
`1034
`
`6
`
`
`
`IPR2022-00031
`
`
`
`Motion for Pro Hac Vice Admission
`
`
`
`No.
`
`1035
`
`1036
`
`1037
`1038
`
`1039
`
`1040
`
`1041
`1042
`1043
`
`1044
`
`1045
`
`1046
`
`1047
`
`Exhibit Description
`https://web.archive.org/web/20100328215828/
`http://www.panoramio.com/help/embedding
`Shu-Wai Chow, PHP Web 2.0 Mashup Projects, Packt Publishing
`(2007)
`Exchangeable image file format for digital still cameras: Exif Version
`2.2, JEITA CP-3451 (Apr. 2002), available at
`https://www.exif.org/Exif2-2.PDF.
`Information Interchange Model Version 4, IPTC-NAA (July 1999)
`Guidelines for Handling Image Metadata v. 1.0, Metadata Working
`Group (Sept. 2008), , available at
`https://web.archive.org/web/20090206012835/
`http:/metadataworkinggroup.org/pdf/mwg_guidance.pdf.
`iPhoto ’09 Review (Archive org: May 26, 2009), available at
`https://web.archive.org/web/20090901000000*/http://www.killersites.c
`om/magazine/2009/iphoto-09-review/
`Google Code, Google Maps API Reference (Archive.org: Feb. 23,
`2010), available at:
`http://code.google.com/apis/maps/documentation/reference.html
`U.S. Patent App. Pub. No. 2009/0113350 A1 to Hibino et al.
`U.S. Patent App. Pub. No. 2006/0165380 A1 to Tanaka et al.
`Flickr, Tour: Maps (Archive.org: Feb. 9, 2010), available at
`http://www.flickr.com/tour/maps
`Devin Coldewey, Review: Aperture 3, CrunchGear (Archive.org: Mar.
`22, 2010), available at http://www.crunchgear.com/2010/03/19/review-
`aperture-3/
`Tony Wu, Using Aperture 3: Part 1 (Archive.org: Apr. 2, 2010),
`available at http://www.tonywublog.com/20100330/first-good-
`impressions-using-aperture-3.html
`Complaint for Declaratory Judgment, MyHeritage (USA), Inc. et al. v.
`MemoryWeb, LLC, Case No. 1:21-cv-02666, Dkt. 1 (N.D. Ill. May 17,
`2021)
`Apple Inc., Mac OS X v10.6.3 Update (Mar. 29, 2010) (Archive.org
`Apr. 11, 2010), available at
`
`7
`
`
`
`IPR2022-00031
`
`
`
`Motion for Pro Hac Vice Admission
`
`
`
`Exhibit Description
`https://web.archive.org/web/20100411001846/
`https://support.apple.com/kb/dl1018.
`Apple Inc., Apple Releases Aperture 3 (Feb. 9, 2010) (Archive.org
`May 20, 2010), available at
`https://web.archive.org/web/20100520085140/
`https://www.apple.com/pr/library/2010/02/0https://www.apple.com/pr/l
`ibrary/2010/02/09aperture.html.
`U.S. Patent App. Pub. No. 2007/0030391 A1 to Kim et al.
`U.S. Patent No. 7,978,936 B1 to Casillas et al.
`Apple Inc., Exploring Aperture 3 (2010), available at
`https://manuals.info.apple.com/MANUALS/1000/ MA1522/en_US/
`Exploring_Aperture_3.pdf.
`Sept. 17, 2021 eBay Order Confirmation for “Apple Aperture 3
`Academic Software DVD With Serial Code”
`RESERVED
`RESERVED
`Apple Inc., http://documentation.apple.com /en/aperture/usermanual/
`HTML Source File (Archive.org Feb. 17, 2010), available at view-
`source:https://web.archive.org/web/20100217035925/http://documentat
`ion.apple.com/en/aperture/usermanual/
`RESERVED
`
`No.
`
`1048
`
`1049
`1050
`1051
`
`1052
`
`1053
`1054
`1055
`
`1056-
`1065
`1066
`
`1067
`
`Scott Meyers & Mike Lee, Learn Mac OS X Snow Leopard Book
`(2009) Excerpts
`Apress.com ordering page for Learn Mac OS X Snow Leopard (Sept.
`2009) Book (Archive.org: Feb. 1, 2010), available at
`https://web.archive.org/web/20100201093806/http://apress.com/book/v
`iew/9781430219460
`1068 Mac Dev Center – Apple Developer Webpages (Archive.org: Apr. 14,
`2010), available at
`https://web.archive.org/web/20100414095727/http:/developer.apple.co
`m/mac
`1069 Mac OS X Technology Overview (Aug. 14, 2009)
`
`8
`
`
`
`IPR2022-00031
`
`
`
`Motion for Pro Hac Vice Admission
`
`
`
`No.
`1070
`
`1071
`
`1075
`1076
`
`1077
`
`1078
`
`Exhibit Description
`Bundle Programming Guide (Archive.org: May 25, 2010), available at
`https://web.archive.org/web/20100525020133/http://developer.apple.co
`m/mac/library/documentation/corefoundation/conceptual/CFBundles/In
`troduction
`Resource Programming Guide (Archive.org: Jan. 11, 2010), available
`at
`https://web.archive.org/web/20100114164340/http://developer.apple.co
`m/mac/library/documentation/Cocoa/Conceptual/LoadingResources/Int
`roduction
`1072 Web Archive URLs
`1073
`Install Disk Screen Shots
`1074
`Aperture 3 Webpages (Archive.org: Mar. 16, 2010), available at
`https://web.archive.org/web/20100316213353/http://www.apple.com/a
`perture/
`RESERVED
`Aperture 3 Webpages (Archive.org: Apr. 11, 2010), available at The
`Wayback Machine -
`https://web.archive.org/web/20100411022811/http://www.apple.com:8
`0/aperture/
`Jason Snell & Macworld Article, “Apple releases Aperture 3”
`(Archive.org: Feb. 9, 2010), available at
`https://web.archive.org/web/20100211033049/http://www.macworld.co
`m/article/146231/2010/02/aperture3.html
`Apple.com Aperture 3 Webpages (Archive.org: Feb. 12, 2010),
`available at
`https://web.archive.org/web/20100212221924/http://www.apple.com/a
`perture
`Panoramio Webpage Screenshots (Archive.org: Nov. 26, 2010),
`available at
`https://web.archive.org/web/20101126084240/http://www.panoramio.c
`om:80/map
`Adding photos to Panoramio – Help Webpage (Archive.org: Mar. 28,
`2010), available at
`
`1079
`
`1080
`
`9
`
`
`
`IPR2022-00031
`
`
`
`Motion for Pro Hac Vice Admission
`
`
`
`No.
`
`1081
`1082
`1083
`
`1084
`1085
`
`Exhibit Description
`https://web.archive.org/web/20100328220626/http://www.panoramio.c
`om/help/adding_photos
`Places View Illustration with Arrow
`RESERVED
`Placement Measurement Illustration from IPR2022-00032, Exhibit
`2025
`Aperture Install Video demonstration
`Before You Install Aperture 3.app Terminal – bash – 80x24 File
`Directory Screenshot
`1086 Mac OS X Version 10.6.3 Screenshot
`1087
`Corrected Placement Measurement Illustration from IPR2022-00032,
`Exhibit 2025
`Corrected Placement Measurement Illustration from IPR2022-00032,
`Exhibit 2025
`December 1, 2022 & December 2, 2022 Deposition of Rajeev Surati,
`Ph.D.
`Affidavit of Nathaniel E. Frank-White, Internet Archive (Dec. 12,
`2022)
`Declaration of Jeffrey P. Kushan
`Petitioner’s Demonstratives
`Emails from Counsel for Apple and Counsel for MemoryWeb
`Ex. 2048– Public Jakel Declaration from Unified (IPR2021-01413)
`APL-MW228_00000161 (Exhibit B 2016)
`APL-MW228_00000158 (Exhibit C 2016)
`APL-MW228_00000074 (2017 Service Agreement Apple Unified)
`APL-MW228_00000079 (July 16, 2018 letter agreement)
`APL-MW228_00000166 (July 22, 2022 Letter agreement)
`APL-MW228_00000193 (Jan 20, 2023 Letter Agreement)
`Declaration of Leif E. Peterson, II
`
`1088
`
`1089
`
`1090
`
`1091
`1092
`1093
`1094
`1095
`1096
`1097
`1098
`1099
`1100
`1101
`[NEW]
`
`10
`
`
`
`IPR2022-00031
`
`
`
`Motion for Pro Hac Vice Admission
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 18th day of September, 2023, a copy of this
`
`motion and any accompanying exhibits have been served by electronic mail on the
`
`following addresses for patent owner(s):
`
`Jennifer Hayes, jenhayes@nixonpeabody.com
`George Dandalides, gdandalides@nixonpeabody.com
`Matthew A. Werber, mwerber@nixonpeabody.com
`Daniel Schwartz, djschwartz@nixonpeabody.com
`
`Dated: September 18, 2023
`
`Respectfully Submitted,
`
`
`
`/Jeffrey P. Kushan/
`Jeffrey P. Kushan
`Reg. No. 43,401
`SIDLEY AUSTIN LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`jkushan@sidley.com
`(202) 736-8914
`Attorney for Petitioner
`
`
`
`
`11
`
`
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