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8 Motion: Motion for Pro Hac Vice for LaCorte

Document CBM2015-00066, No. 8 Motion - Motion for Pro Hac Vice for LaCorte (P.T.A.B. Feb. 12, 2015)
Backup counsel Jonathon A. Talcott and Daniel A. Nadel are registered practitioners and are experienced in proceedings before the USPTO.
Mr. LaCorte has familiarity with the subject matter at issue in this proceeding based on his work as lead trial counsel in the district court case WhitServe LLC, v. GoDaddy.com, Inc., C.A.
Mr. LaCorte has been involved in all aspects of the pending district court case, including the issue of validity of the patents-in-suit.
Mr. LaCorte 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 the C.F.R, and he agrees to be subject to the USPTO Rules of Professional Conduct set forth in 37 C.F.R. §§11.101 et seq., and to disciplinary jurisdiction under 37 C.F.R. §11.19(a).
For the foregoing reasons, Petitioner GoDaddy.com, LLC respectfully requests that the Board admit Brian W. LaCorte pro hac vice in this proceeding.
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1 Petition: PETITION FOR POST GRANT COVERED BUSINESS METHOD PATENT REVIEW OF US PATENT NO 5,895,468

Document CBM2015-00066, No. 1 Petition - PETITION FOR POST GRANT COVERED BUSINESS METHOD PATENT REVIEW OF US PATENT NO 5,895,468 (P.T.A.B. Jan. 22, 2015)
According to the ’468 patent, then, all that was missing was automating certain remaining steps of the professional services delivery process identified above (i.e., generating the reminders and response forms and receiving replies thereto), and exchanging them through “modern computer communications media, such as the Internet.” Id. at 1:36-2:5; Ex. 1002 at 0116-0118.
697, 703-04 (Fed. Cir. 2008); see also Inventio AG v. ThyssenKrupp Elevator Americas Corp., 649 F.3d 1350, 1356-57 (Fed. Cir. 2011) (holding expert evidence is usually helpful “as the litigated issue often reduces to whether skilled artisans ... would conclude that a claim limitation is so devoid of structure that the drafter constructively engaged in means-plus- function claiming.”).
2120, 2124 (2013); SAP America, Inc. v. Arunachalam, CBM2013-00013, Paper 61 (Final Written Decision), Pages 18-20 (PTAB September 18, 2014) (finding as indefinite the phrase “routed transactional data structure” because the specification contained no description of “data structure” or how it was routed or transmitted over a network).
When considering obviousness, “it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.” Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co., CBM2012-00002, Paper 66 (Final Written Decision), 19-20 (P.T.A.B. Jan. 23, 2014); see 35 U.S.C. § 103.
“PerfectLaw” refers to the suite of legal docketing and document assembly software sold by Executive Data Solutions, Inc. (“EDSi”), a company founded by a former computer science professor at the University of Miami named John Duncan.
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22 Notice: Petitioner Request for Refund of Post Institution Fee

Document CBM2015-00066, No. 22 Notice - Petitioner Request for Refund of Post Institution Fee (P.T.A.B. Sep. 1, 2015)
On August 5, 2015, the parties filed a Joint Motion to Terminate the Proceeding pursuant to a settlement agreement (Paper 17).
The Board terminated proceedings on August 7, 2015, prior to issuing a decision on whether to institute CBM review (Paper 21).
The entire fee would be returned to the petitioner if the Office does not institute a review.”); see also Patent Review Processing System (PRPS) FAQ at E7, available at http://www.uspto.gov/ip/boards/bpai/prps.jsp.
GoDaddy prefers to have the entire amount refunded to the credit card that was used to make the original payment.
If this is not possible, GoDaddy requests that the entire amount be deposited to Respectfully submitted, BALLARD SPAHR LLP /Scott D. Marty, Ph.D./ Scott D. Marty, Ph.D., Reg. No. 53,277 Jonathon A. Talcott, Reg. No. 71,671 Daniel Nadel, Reg. No. 59,655 Brian W. LaCorte (pro hac vice) Kimberly A. Warshawsky (pro hac vice) Attorneys for Petitioner GoDaddy.com, LLC Deposit Account No. 14-0629.
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20 Notice: Petitioners Updated Exhibit List

Document CBM2015-00066, No. 20 Notice - Petitioners Updated Exhibit List (P.T.A.B. Aug. 7, 2015)
In re Covered Business Method Review of: U.S. Patent No. 5,895,468 Issued: April 20, 1999 Inventor: Wesley W. Whitmyer, Jr.
Description Exhibit 1001 U.S. Patent No. 5,895,468 File History for U.S. Patent No. 5,895,468 1002 1003 Declaration of Benjamin Goldberg, Ph.D., in Support of Petition for Post-Grant Review Under Section 18 of the Leahy-Smith America Invents Act and 35 U.S.C. § 1004 How to Start and Build a Law Practice, by Jay G. Foonberg (ABA 1st ed. 1976) Filed ☒ ☒ ☒ ☒ DMWEST #12585206 v2
Exhibit 1005 Description “Managing an Appellate Practice: A Systems Approach,” by Paul G. Ulrich, Litigation, Vol.
31- 33, 53, published by the American Bar Association 1006 Vertical Market Applications Software, 1989 WLNR 3284970, Volume V7, Issue N1 (June 2, 1989) The Internet For Dummies, by John R. Levine & Carol Baroudi (1993), by IDG Books Worldwide 1008 Que’s Computer & Internet Dictionary (6th ed. 1995), definition of “web server” The New Merriam Webster Dictionary, definition of “software,’ p. 685 (1989) IBM Dictionary of Computing (10th ed. 1994), definition of “software,” p. 632 IEEE Standard Dictionary of Electrical and Electronics Terms (1984), definition of “software,” p. 850 1012 Webster’s New World Dictionary of Computer Terms (Que 6th ed. 1997), definitions of “FTP,” “FTP client,” “FTP server,” and “FTP site” 4/16/2013 Minute Entry Order for proceedings held before Judge William G. Young: Markman Hearing, Dkt.
301, WhitServe LLC vs. GoDaddy.com, Inc. et al. EDSi-Related Communications, and Deposition Transcript, and Exhibits 4-14 to 12/6/12 Deposition of John Duncan January 21, 2015 Declaration of Matthew Ho and Exhibits 1016 Corrected Declaration of Mark Kosters and Exhibits February 12, 2015 Declaration of Brian W. LaCorte in Support of Petitioner’s Motion for Admission Pro Hac Vice of Brian W. LaCorte Pursuant to 37 C.F.R. §42.10(c) February 12, 2015 Declaration of Kimberly A. Warshawsky in Support of Petitioner’s Motion for Admission Pro Hac Vice of Kimberly A. Warshawsky Pursuant to 37 C.F.R. §42.10(c) 1007 1009 1010 1011 1013 1014 1015 1017 1018 Filed ☒ ☒ ☒ ☒ ☒ ☒ ☒ ☒ ☒ ☒ ☒ ☒ ☒ ☒
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19 Notice: Petitioners Updated Exhibit List

Document CBM2015-00066, No. 19 Notice - Petitioners Updated Exhibit List (P.T.A.B. Aug. 5, 2015)
In re Covered Business Method Review of: U.S. Patent No. 5,895,468 Issued: April 20, 1999 Inventor: Wesley W. Whitmyer, Jr.
Description Exhibit 1001 U.S. Patent No. 5,895,468 File History for U.S. Patent No. 5,895,468 1002 1003 Declaration of Benjamin Goldberg, Ph.D., in Support of Petition for Post-Grant Review Under Section 18 of the Leahy-Smith America Invents Act and 35 U.S.C. § 1004 How to Start and Build a Law Practice, by Jay G. Foonberg (ABA 1st ed. 1976) Filed ☒ ☒ ☒ ☒ DMWEST #12585206 v1
Exhibit 1005 Description “Managing an Appellate Practice: A Systems Approach,” by Paul G. Ulrich, Litigation, Vol.
31- 33, 53, published by the American Bar Association 1006 Vertical Market Applications Software, 1989 WLNR 3284970, Volume V7, Issue N1 (June 2, 1989) The Internet For Dummies, by John R. Levine & Carol Baroudi (1993), by IDG Books Worldwide 1008 Que’s Computer & Internet Dictionary (6th ed. 1995), definition of “web server” The New Merriam Webster Dictionary, definition of “software,’ p. 685 (1989) IBM Dictionary of Computing (10th ed. 1994), definition of “software,” p. 632 IEEE Standard Dictionary of Electrical and Electronics Terms (1984), definition of “software,” p. 850 1012 Webster’s New World Dictionary of Computer Terms (Que 6th ed. 1997), definitions of “FTP,” “FTP client,” “FTP server,” and “FTP site” 4/16/2013 Minute Entry Order for proceedings held before Judge William G. Young: Markman Hearing, Dkt.
301, WhitServe LLC vs. GoDaddy.com, Inc. et al. EDSi-Related Communications, and Deposition Transcript, and Exhibits 4-14 to 12/6/12 Deposition of John Duncan January 21, 2015 Declaration of Matthew Ho and Exhibits 1016 Corrected Declaration of Mark Kosters and Exhibits February 12, 2015 Declaration of Brian W. LaCorte in Support of Petitioner’s Motion for Admission Pro Hac Vice of Brian W. LaCorte Pursuant to 37 C.F.R. §42.10(c) February 12, 2015 Declaration of Kimberly A. Warshawsky in Support of Petitioner’s Motion for Admission Pro Hac Vice of Kimberly A. Warshawsky Pursuant to 37 C.F.R. §42.10(c) 1007 1009 1010 1011 1013 1014 1015 1017 1018 Filed ☒ ☒ ☒ ☒ ☒ ☒ ☒ ☒ ☒ ☒ ☒ ☒ ☒ ☒
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16 Preliminary Response: Preliminary Response

Document CBM2015-00066, No. 16 Preliminary Response - Preliminary Response (P.T.A.B. May. 11, 2015)
PNC Financial Services Group, Inc. v. Intellectual Ventures I, LLC, CBM2014-00032, Paper 13 at 10-12 (PTAB May 22, 2014) (denying petition for CBM review where “[t]he claims of the [challenged] patent describe software systems that have general utility not specific to any application.”).
Moreover, the mere possibility that interaction with a client involving the reminder, response form, and reply might result in the generation and transmission of a transfer of funds authorization does not, by itself, render the claims of the ‘468 patent subject to CBM review.
For these reasons, we are not persuaded in this case that mere classification in Class 705 supports a conclusion that the ‘482 patent claims a method or apparatus ‘for performing data processing or other operations used in the practice, administration, or management of a financial product or service,’ as required by section 18(d)(1) of the AIA.”).
There was no automation for this procedure, which was prone to human error and wherein attorneys had to call clients in order to confirm whether items should be renewed, and later compare the stacks of paper with invoices to ensure payments were made correctly.
The Board rejected this contention as a mischaracterization of the invention, noting: “Petitioner does not tie adequately the claim language to the purported abstract concept of placing a trusted stamp or seal on a document.” Id. Also, in JP Morgan Chase & Co. et al. v. Maxim Integrated Products, Inc., the Petitioner challenged a patent directed to a system, apparatus, and method for communicating valuable data to and from a portable module.
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15 Notice: Updated Submission of 428 Mandatory Notice Information

Document CBM2015-00066, No. 15 Notice - Updated Submission of 428 Mandatory Notice Information (P.T.A.B. May. 6, 2015)
Pursuant to 37 C.F.R. § 42.8(a)(2), Patent Owner WhitServe LLC submits the following mandatory notice information.
The real party-in-interest WhitServe LLC is a limited liability company, having a place of business at 986 Bedford Street, Stamford, Connecticut 06905.
The below listed pending judicial matters would affect or be affected by a decision in this proceeding.
Patent Owner WhitServe LLC designates the following lead and back-up counsel:
May 6, 2015 Respectfully submitted,
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13 Notice: Petitioners Notice of Filing Corrected Exhibit 1016

Document CBM2015-00066, No. 13 Notice - Petitioners Notice of Filing Corrected Exhibit 1016 (P.T.A.B. Mar. 27, 2015)

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14 Power of Attorney: Power of Attorney

Document CBM2015-00066, No. 14 Power of Attorney - Power of Attorney (P.T.A.B. Mar. 27, 2015)

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12 Notice: Petitioners Updated Exhibit List

Document CBM2015-00066, No. 12 Notice - Petitioners Updated Exhibit List (P.T.A.B. Mar. 27, 2015)

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7 Notice: Related Matters

Document CBM2015-00066, No. 7 Notice - Related Matters (P.T.A.B. Feb. 12, 2015)

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6 Power of Attorney: Power of Attorney

Document CBM2015-00066, No. 6 Power of Attorney - Power of Attorney (P.T.A.B. Feb. 12, 2015)

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10 Notice: GoDaddy Updated Exhibit List

Document CBM2015-00066, No. 10 Notice - GoDaddy Updated Exhibit List (P.T.A.B. Feb. 12, 2015)

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3 Notice: Power of Attorney

Document CBM2015-00066, No. 3 Notice - Power of Attorney (P.T.A.B. Jan. 22, 2015)

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4 Notice: Petitioners Exhibit List

Document CBM2015-00066, No. 4 Notice - Petitioners Exhibit List (P.T.A.B. Jan. 22, 2015)

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