Paper No. 5
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
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`OLD REPUBLIC GENERAL INSURANCE GROUP, INC.; OLD REPUBLIC
`INSURANCE COMPANY; OLD REPUBLIC TITLE INSURANCE GROUP,
`INC.; and OLD REPUBLIC NATIONAL TITLE INSURANCE COMPANY;
`Petitioners,
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`v.
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`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
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`____________________
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`Patent No. 6,546,002
`Case No. IPR2015-01992
`_____________________
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`PETITIONERS’ MOTION FOR ADMISSION PRO HAC VICE OF
`VERNON M. WINTERS PURSUANT TO 37 C.F.R. § 42.10(c)
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
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`OLD REPUBLIC GENERAL INSURANCE GROUP, INC.; OLD REPUBLIC
`INSURANCE COMPANY; OLD REPUBLIC TITLE INSURANCE GROUP,
`INC.; and OLD REPUBLIC NATIONAL TITLE INSURANCE COMPANY;
`Petitioners,
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`v.
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`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`
`____________________
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`Patent No. 6,546,002
`Case No. IPR2015-01992
`_____________________
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`PETITIONERS’ MOTION FOR ADMISSION PRO HAC VICE OF
`VERNON M. WINTERS PURSUANT TO 37 C.F.R. § 42.10(c)
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`Petitioners respectfully request that the Board recognize Vernon M.
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`Winters, Esq. as counsel pro hac vice during this proceeding.
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`I.
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`BACKGROUND
`Petitioners’ Motion for Pro Hac Vice Admission is filed pursuant to and in
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`compliance with the Notice of Filing Date Accorded to Petition and Notice For
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`Setting The Time Period For Filing Patent Owner Preliminary Response for this
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`Petition, which was mailed October 20, 2015 (Paper 3) (the “Notice”). The Notice
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`authorizes the parties to file motions for pro hac vice admission under 37 C.F.R. §
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`42.10(c). Further to the Notice, such “motions shall be filed in accordance with the
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`‘Order – Authorizing Motion for Pro Hac Vice Admission’ in Case IPR2013-
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`00639 ” (the “Order”).
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`II. TIME OF FILING
`This Motion for Pro Hac Vice admission is being filed in accordance with
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`the Notice authorizing the immediate filing of the Motion for Pro Hac Vice
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`admission.
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`III. STATEMENT OF FACTS
`As required by the Order, the following statement of facts, supported by the
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`attached Declaration of Vernon M. Winters in Support of Petitioners’ Motion for Pro
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`Hac Vice Admission (Ex. 1031), shows that there is good cause for the Patent Trial
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`and Appeal Board (“Board”) to recognize Mr. Winters pro hac vice in this
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`proceeding. As required by 37 C.F.R. § 42.10(c), lead counsel, Joseph A. Micallef, is
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`a registered practitioner and is experienced in proceedings before the USPTO.
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`Mr. Winters is an experienced litigation attorney. Mr. Winters is in his 28th
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`year of practice, the last 24 of which have principally involved patent litigation in the
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`federal courts. Ex. 1031 at ¶ 8. Mr. Winter’s experience includes representing
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`companies in software patent disputes, including prior experience adverse to
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`Intellectual Ventures in cases in which it has asserted software patents. Id. Mr.
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`Winters is a member in good standing of the California State Bar, with no
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`suspensions or disbarments from practice, nor any application for admission to
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`practice denied, nor any sanctions or contempt citations. Id. at ¶¶ 1-4.
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`Mr. Winters is also familiar with the subject matter at issue in this proceeding.
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`Mr. Winters is lead counsel for Petitioners in the district court proceedings
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`Intellectual Ventures I LLC et al. v. Old Republic General Insurance Group, Inc.
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`(Civ. No. 2:14-cv-01130 (W.D. Pa.)), which involve the same patent at issue in this
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`proceeding. Ex. 1031 at ¶ 9. He also helped to prepare Petitioners’ Petition and the
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`Declaration filed in support of its Petition. Id. As such, Mr. Winters has reviewed and
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`is familiar with (i) the patent at issue in this matter, (ii) the prior art relied upon in the
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`Petition, and (iii) the legal and factual arguments made by Petitioners. Id.
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`Accordingly, he has established familiarity with the subject matter at issue and the
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`conduct of the proceeding to date.
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`3
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`Mr. Winters has read and will comply with the Office Patent Trial Practice
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`Guide and the Board’s Rules for Practice for Trials set forth in part 42 of 37 C.F.R,
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`and he agrees to be subject to the USPTO Rules of Professional Conduct set forth in
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`37 C.P.R. §§ 11.01 et seq., and to disciplinary jurisdiction under 37 C.P.R. § 11.19(a).
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`Ex. 1031 at ¶¶ 5-6. A corresponding motion for Mr. Winters’ pro hac vice
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`admission is being concurrently filed in the following proceedings: IPR2015-
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`01706, IPR2015-01707, IPR2015-01912, IPR2015-01956, IPR2015-01957,
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`IPR2015-01992, IPR2016-00019, IPR2016-00020, CBM2015-00171, and
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`CBM2015-00184. Id. at ¶ 7. Mr. Winters has not applied to appear pro hac vice in
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`any other proceedings before the Office in the last three years. Id.
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`IV. ANALYSIS
`The facts contained in the Statement of Facts above, and contained in the
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`Winters Declaration, establish that there is good cause to admit Mr. Winters pro
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`hac vice in this proceeding under 37 C.F.R. § 42.10(c). Lead counsel is a registered
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`practitioner, Mr. Winters is an experienced litigating attorney, and Mr. Winters has
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`an established familiarity with the subject matter at issue in the proceeding.
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`V. CONCLUSION
`In light of the foregoing, Petitioners respectfully submit there is good cause
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`for the Board to recognize Mr. Winters as counsel pro hac vice during this
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`proceeding.
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`4
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`Dated: November 13, 2015
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`Respectfully submitted,
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`
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`/Joseph A. Micallef/
`Joseph A. Micallef
`Reg. No. 39,772
`Sidley Austin LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`(202) 736-8914
`Attorney for Petitioners
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`5
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), this is to certify that on this 13th day of
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`November, 2015, I caused to be served a true and correct copy of the foregoing
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`(1) Petitioners’ Motion For Pro Hac Vice Admission Of Vernon M. Winters
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`Under 37 C.F.R. § 42.10 and (2) accompanying Declaration of Vernon M.
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`Winters In Support Of Petitioners’ Motion For Pro Hac Vice Admission by e-
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`mail on the following:
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`ptab@skgf.com
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`Dated:
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`November 13, 2015
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`Respectfully submitted,
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`/Joseph A. Micallef/
`Joseph A. Micallef
`Reg. No. 39,772
`Attorney for Petitioners
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`UPDATED EXHIBIT LIST
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`Exhibit # Reference Name
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`1001
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`1002
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`1003
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`1004
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`1005
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`1006
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`1007
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`1008
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`1009
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`1010
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`U.S. Patent No. 6,546,002 to Kim
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`U.S. Patent No. 6,546,002 File History
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`Declaration of Dr. Philip Greenspun
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`Curriculum Vitae of Dr. Philip Greenspun
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`U.S. Patent No. 6,571,245 to Huang
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`U.S. Patent No. 6,268,849 to Boyer
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`U.S. Patent No. 6,339,826 to Hayes
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`Berners-Lee, RFC1866, Hypertext Markup Language – 2.0 (November
`1995)
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`U.S. Patent No. 5,491,783 to Douglas
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`Raman, T.V., Emacspeak – A Speech Interface (April 13-18, 1996)
`
`1011 Microsoft Press Computer Dictionary (1997)
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`1012
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`1013
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`1014
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`1015
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`1016
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`U.S. Patent No. 5,519,760 to Borkowski
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`U.S. Patent No. 6,571,245 – Exhibit A
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`Common Ground, Chi 96 Conference Proceedings
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`Bartlett, Experience with a Wireless World Wide Web Client, IEEE
`(1995)
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`Email, dated October 8, 2014, from Derek Gilliland regarding IV v.
`Old Republic
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`1017
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`[RESERVED]
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`Exhibit # Reference Name
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`1018
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`1019
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`1020
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`1021
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`1022
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`1023
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`1024
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`1025
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`1026
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`1027
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`1028
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`1029
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`1030
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`[RESERVED]
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`[RESERVED]
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`[RESERVED]
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`[RESERVED]
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`[RESERVED]
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`[RESERVED]
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`[RESERVED]
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`[RESERVED]
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`[RESERVED]
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`[RESERVED]
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`[RESERVED]
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`[RESERVED]
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`Intellectual Ventures I LLC, et. al., v. Old Republic General Ins. Grp.,
`Inc., Case No. 2-14-cv-01130, Doc. No. 1 (W.D. Pa. Aug 22, 2014)
`
`1031
`[New]
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`Declaration of Vernon M. Winters
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