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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`BILLJCO LLC,
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`Patent Owner
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`CASE: IPR2022-00131
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`U.S. PATENT NO. 8,639,267
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`PATENT OWNER, BILLJCO, LLC’s MOTION FOR PRO HAC
`ADMISSION OF COURTLAND C. MERRILL UNDER 37 C.F.R. § 42.10(c)
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`40305382.1
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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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`BILLJCO LLC,
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`Patent Owner
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`CASE: IPR2022-00131
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`U.S. PATENT NO. 8,639,267
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`PATENT OWNER, BILLJCO, LLC’s MOTION FOR PRO HAC
`ADMISSION OF COURTLAND C. MERRILL UNDER 37 C.F.R. § 42.10(c)
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`40305382.1
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`EXHIBIT LIST
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`Description
`Amended Memorandum and Opinion & Order Denying
`Defendant Apple Inc.’s Motion to Transfer Venue [Public
`Version]
`LegalMetrics District Report for Texas Western District Court
`from January 2017 to September 2021
`Claim Construction Order
`Complaint
`Summons Returned by Apple
`Apple, Inc.’s Preliminary Invalidity Contentions
`MCGraw-Hill Dictionary of Scientific and Technical Terms
`Affidavit of Courtland C. Merrill in Support of Pro Hac Vice
`Admission Under 37 C.F.R. § 42.10 (c)
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`Ex. No.
`2001
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`2002
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`2003
`2004
`2005
`2006
`2007
`2008
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`40305382.1
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`I.
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`RELIEF REQUESTED
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`Pursuant to 37 C.F.R. § 42.10 (c), the undersigned, on behalf of the Patent
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`Owner, BillJCo, LLC (“BillJCo”), hereby respectfully requests the pro hac vice
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`admission of Courtland C. Merrill in this proceeding,
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`II GOVERNING LAW, RULES AND PRECEDENT
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`Section § 42.10 (c) of 37 C.F.R. provides as follows:
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`The Board may recognize counsel pro hac vice during a
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`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. For example, where the lead
`counsel is a registered practitioner, a motion to appear pro hac vice
`by counsel who is not a registered practitioner may be granted upon
`showing that counsel is an experienced litigating attorney and has
`an established familiarity with the subject matter at issue in the
`proceeding.
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`The Board has advised that any motion for pro hac vice admission under 37
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`C.F.R. § 42.10 (c) must be filed in accordance with the “Order—Authorizing Motion
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`for Pro Hac Vice Admission” entered in Case IPR2013-00639, Paper 7 (“Unified
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`Patents Order”).
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`The Unified Patents Order requires that such motions (1) “[c]ontain a
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`statement of facts showing there is good cause for the Board to recognize counsel
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`pro hac vice during the proceeding;” ‘[b]e accompanied by an affidavit or
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`declaration of the individual seeking to appear attesting to the following”:
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`40305382.1
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`i.
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`ii.
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`v.
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`vi.
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`Membership in good standing of the Bar of at least one State or the
`District of Columbia;
`No suspensions or disbarments from practice before any court or
`administrative body;
`iii. No application for admission to practice before any court or
`administrative body ever denied;
`iv. No sanctions or contempt citations imposed by any court or
`administrative body;
`The individual seeking to appear has read and will comply with the
`Office Patent Trial Practice Guide and the Board’s Rule of Practice for
`Trials set forth in part 42 of 37 C.F.R.;
`The individual will be subject to the USPTO Rules of Professional
`Conduct set forth in 37 C.F.R. §§ 11.101 et seq. and disciplinary
`jurisdiction under 37 C.F.R. § 11.19(a);
`vii. All other proceedings before the Office for which the individual has
`applied to appear pro hac vice in the last three (3) years; and
`viii. Familiarity with the subject matter at issue in the proceeding.
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`(See Unified Patents Order, p.3.)
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`III. STATEMENT OF FACTS
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`Based on the following facts, and supported by the Affidavit of Courtland C.
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`Merrill, submitted herewith as Exhibit 2008, Patent Owner, BillJCo, LLC requests
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`pro hac vice admission of Mr. Merrill in this proceeding:
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`1.
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`Patent Owner, BillJCo, LLC’s lead counsel, Brian R. Michalek, is a
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`registered practitioner (Reg.No. 65,816).
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`2. Mr. Merrill is an attorney at the law firm Saul Ewing Arnstein & Lehr,
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`LLP. (Ex. 2008 at ¶ 3).
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`3. Mr. Merrill is an experienced trial attorney whose practice focuses
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`exclusively on business and intellectual property disputes. (Id. at ¶ 4).
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`40305382.1
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`Mr. Merrill has been an intellectual property litigation attorney for
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`nearly 20 years, and has been litigating patent cases involving a variety
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`of technologies during that entire time period. (Id.) Mr. Merrill has
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`litigated numerous patent disputes involving the legal concepts of both
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`infringement and validity, and has significant experience in all aspects
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`of litigation, including depositions, claim construction proceedings and
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`various stages of trial. (Id.).
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`4.
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` Mr. Merrill is a member of good standing of the Bars of: Minnesota,
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`Wisconsin, the United State District Court of the District of Minnesota,
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`The United States District Court for the Eastern District of Wisconsin,
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`the United States Court of Appeals for the Eighth Circuit, and the
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`United States Court of Appeals for the Federal Circuit. (Ex. 2008 at ¶5).
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`5. Mr. Merrill has never been suspended or disbarred from practice before
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`any court or administrative body. (Id. at ¶6).
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`6.
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`No application of Mr. Merrill for admission to practice before any court
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`or administrative body has ever been ultimately denied. (Id. at ¶7).
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`7.
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`No sanctions or contempt citations have ever been imposed against Mr.
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`Merrill by any court or administrative body. (Id. at ¶8).
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`40305382.1
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`8. Mr. Merrill has read and will comply with the Office Patent Trial
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`Practice Guide and the Board’s Rule of Practice for Trials set for in part
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`42 of 37 C.F.R. (Id. at ¶9).
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`9.
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` Mr. Merrill understands that he will be subject to the USPTO Rules of
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`Professional Conduct set forth in 37 C.F.R §§ 11.101 et seq. and
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`disciplinary jurisdiction under 37 C.F.R § 11.19(a). (Id. at ¶10).
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`10. Mr. Merrill has not applied to appear pro hac vice in any proceedings
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`before the Office in the last three (3) years. (Id. at ¶11).
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`11. Mr. Merrill has an established familiarity with the subject matter at
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`issue in this proceeding. (Id. at ¶12, 13; see also § IV. below.)
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`IV. GOOD CAUSE EXISTS FOR THE PRO HAC VICE ADMISSION OF
`MR. MERRILL IN THIS PROCEEDING
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`“The Board may recognize counsel pro hac vice during a proceeding upon a
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`
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`showing of good cause, subject to the condition that lead counsel be a registered
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`practitioner and to any other conditions as the Board may impose.” 37 C.F.R §
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`42.10(c). “[W]here the lead counsel is a registered practitioner, a motion to appear
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`pro hac vice by counsel who is not a registered practitioner may be granted upon
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`showing that counsel is an experienced litigating attorney and has an established
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`familiarity with the subject matter at issue in the proceeding.” Id.
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`40305382.1
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`Patent Owner’s lead counsel, Brian R. Michalek, is a registered practitioner.
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`Based on the facts contained herein, as supported by Mr. Merrill’s affidavit, good
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`cause exists to admit Mr. Merrill pro hac vice in this proceeding.
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`As set forth in his Affidavit, Mr. Merrill is an experienced trial attorney with
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`nearly 20 years of patent litigation experience. (Ex. 2008 at ¶4.) Mr. Merrill’s
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`extensive patent litigation experience provides him with a thorough understanding
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`of the legal theories advanced in this proceeding. (Id. at ¶¶4,12-13.) He has reviewed
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`in detail the patent-in-suit, U.S. Patent No. 8,639,267 (“the ‘267 patent”), and has
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`had direct involvement with the United States District Court for the Northern District
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`of California BillJCo, LLC v. Apple, Inc., Case No. 5:22-cv-3201-YGR (previously
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`pending in the Western District of Texas Civil Action No.: 6:21-cv-00528-ADA).
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`(Ex. 2008 at ¶14.)
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`Based on the facts contained here, as supported by Mr. Merrill’s Affidavit,
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`good cause exists to admit Mr. Merrill pro hac vice in this proceeding.
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`V. CONCLUSION
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`For the foregoing reasons, Patent Owner, BillJCo, LLC respectfully requests
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`that Courtland C. Merrill be admitted pro hac vice in this proceeding.
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`Date: July 25, 2022
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`Mailing address for all correspondence:
`Saul Ewing Arnstein & Lehr, LLP
`Centre Square West
`1500 Market Street, 38th Floor
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`Respectfully Submitted,
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`Brian R. Michalek
`Brian R. Michalek (Reg. No. 65,816)
`Joseph M. Kuo (Reg. No. 38,943)
`Saul Ewing Arnstein & Lehr, LLP
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`40305382.1
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`Philadelphia, PA 19102-2186
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`161 N. Clark Street, Suite 4200
`Chicago, Illinois 60601
`Tel: (312) 876-7151
`Brian.Michalek@saul.com
`Joseph.Kuo@saul.com
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`Brian Landry (Reg. No. 52,074)
`Saul Ewing Arnstein & Lehr, LLP
`131 Darmouth Street, Suite 501
`Boston, MA 02116
`Tel: (617) 912-0969
`Brian.Landry@saul.com
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`Counsel for Patent Owner, BillJCo, LLC
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`Certification of Service Under 37 C.F.R. § 42.6(e))
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`The undersigned hereby certifies that Patent Owner, BillJCo, LLC’s Motion
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`for Pro Hac Vice Admission of Courtland C. Merrill Under 37 C.F.R. § 42.10(c)
`was served electronically via e-mail on July 25, 2022 in its entirety on the following
`counsel of record for the Petitioner:
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`Larissa.Bifano@dlapiper.com
`Jonathan.Hicks@dlapiper.com
`Joseph.Wolfe@us.dlapiper.com
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`/Brian R. Michalek/
`(Reg. No. 65,816)
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`Larissa S. Bifano
`Jonathan Hicks
`Joseph Wolfe
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`Date: July 25, 2022
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`40305382.1
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