`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`TRADESTATION GROUP, INC. AND
`TRADESTATION SECURITIES, INC.
`Petitioner
`
`v.
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC.
`Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case CBM2015-00172
`Patent No. 7,783,556
`
`
`
`
`
`
`
`
`
`
`DECLARATION OF ADAM KESSEL IN SUPPORT OF PETITIONER’S
`MOTION FOR PRO HAC VICE ADMISSION
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`1
`
`
`
`
`
`
`
`
`
`TS-1015
`
`
`
`
`
`
`
`
`
`Proceeding No.: CBM2015-00172
`Attorney Docket: 41919-0002CP1
`DECLARATION OF ADAM KESSEL IN SUPPORT OF
`PETITIONER’S MOTION FOR PRO HAC VICE
`ADMISSION
`
`I, Adam Kessel, hereby declare the following:
`
`I am a member in good standing of the state Bar for the Commonwealth of
`
`
`
`1.
`
`Massachusetts, as well as the United States Court of Appeals for the Federal
`
`Circuit.
`
`2.
`
`I have not been suspended or disbarred from practice before any court or
`
`administrative body.
`
`3.
`
`I have never had an application for admission to practice before any court or
`
`administrative body denied.
`
`4.
`
`No sanction or contempt citation has been imposed against me by any court
`
`or administrative body.
`
`5.
`
`I have read and will comply with the Office Patent Trial Practice Guide and
`
`the Board’s Rules of Practice for Trials set forth in part 42 of the Code of Federal
`
`Regulations.
`
`6.
`
`I 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).
`
`7.
`
`I am a litigation attorney with more than a decade of experience representing
`
`clients in cases involving computer software. I regularly litigate cases before the
`
`United States Court of Appeals for the Federal Circuit, various federal district
`
`
`
`2
`
`
`
`Proceeding No.: CBM2015-00172
`Attorney Docket: 41919-0002CP1
`courts, and the International Trade Commission. Through my practice in such
`
`cases, I have gained substantial experience in jury trials, discovery, Markman
`
`hearings, and appeals. In addition to my legal experience, I had many years of
`
`software development experience prior to entering the practice of law. I also have a
`
`degree in chemistry from Princeton University. My biography is attached as
`
`Exhibit A.
`
`8.
`
`I also have particular experience and familiarity with the substantive and
`
`technical issues involved in this Covered Business Method review proceeding. I
`
`have been involved in co-pending patent litigation brought by Patent Owner
`
`against Petitioner since its inception in June 2010. Over the past five years, I have
`
`invested substantial time on Petitioner’s behalf on motion practice, discovery,
`
`appeals, and analysis of the twelve patents-in-suit, including the patent for which
`
`review is sought in the instant proceeding.
`
`I hereby declare that all statements made herein of my own knowledge are
`
`true and that all statements made on information and belief are believed to be true;
`
`and further that these statements were made with the knowledge that willful false
`
`statements and the like so made are punishable by fine or imprisonment, or both,
`
`under Section 1001 of Title 18 of the United States Code and that such willful false
`
`statements may jeopardize the validity of the application or any patents issued
`
`thereon.
`
`
`
`3
`
`
`
`Proceeding No.: CBM2015-00172
`Attorney Docket: 41919-0002CP1
`
`
`
`
`
`Respectfully submitted,
`
`/s/ Adam J. Kessel
`Adam Kessel
`Fish & Richardson P.C.
`One Marina Park Drive
`Boston, MA 02210
`Tel: (617) 542-5070
`Email: kessel@fr.com
`
`
`
`
`
`Date: September 28, 2015
`
`
`
`
`
`
`
`
`
`
`
`4
`
`
`
`Kessel-Adam-09-2015-FishBio
`
`Page 1 of 6
`
`Adam Kessel
`Principal
`
` Boston, MA 617-368-2180
`
` kessel@fr.com
`
`
`Background
`
`Adam Kessel is a Principal in the Boston office of Fish & Richardson. His practice focuses on intellectual property litigation, particularly
`cases involving software and electronics. He also specializes in open source and other software licensing. He has substantial
`courtroom and trial experience, including work on several cases at trial and on appeal in the Federal Courts and International Trade
`Commission. He also handled nearly 200 criminal cases as a “lawyer on loan” to the Suffolk County District Attorney’s Office (2009-
`2010), several of which he took to trial as first chair.
`
`Mr. Kessel has previous IP law firm experience, and served as a Judicial Intern for the Late Honorable Reginald Lindsay of the United
`States District Court for the District of Massachusetts (2003), as well as a Legal Intern for the Electronic Privacy Information Center
`(2002). Prior to law school, Mr. Kessel had many years of consulting experience in web and database programming (1990-2004), and
`also worked as a Lab Associate in a biochemistry lab at the University of Vermont Medical School (1997). Mr. Kessel also held a
`position at the Center for Neighborhood Technology as a Researcher, where he worked on policy issues.
`
`Services
`• Copyright
`
`• Litigation
`
`• Domain Names & Internet
`
`• Digital Millennium Copyright Act
`
`• Strategic Counseling, Registration, and Opinions
`
`• Transactions and Agreements
`
`• False Claims Act/Qui Tam
`
`• Patent Litigation
`
`• Trade Secret Litigation
`
`• Trademark, Copyright & Media Litigation
`
`Industries
`• Chemicals
`
`• Digital Media and E-Commerce
`
`• Hardware
`
`• Internet
`
`• Life Sciences
`
`• Software
`
`• Telecommunications
`
`http://www.fr.com/adam-kessel/
`
`9/11/2015
`
`5
`
`
`
`Kessel-Adam-09-2015-FishBio
`
`Page 2 of 6
`
`Education
`JD, Northeastern University School of Law 2004
`
`BA, Princeton University 1998
`Chemistry
`
`Admissions
`• Massachusetts 2004
`
`• United States Court of Appeals for the Federal Circuit
`
`• United States Court of Federal Claims
`
`• United States Court of Appeals for the First Circuit
`
`Languages
`• English
`
`• French
`
`Memberships & Affiliations
`Board Member of American Civil Liberties Union of Massachusetts.
`Advisory Committee and Former Board Member of nonprofit organization Jewish Alliance for Law and Social Action.
`Former President of Board of two nonprofit organizations developing low-income housing.
`Active with fundraising and other support for Greater Boston Legal Services and Massachusetts Legal Assistance Corporation.
`Cooperating Attorney with American Civil Liberties Union and Electronic Frontier Foundation.
`
`Other Distinctions
`Certified as a Legal Specialist in open source code auditing by Black Duck.
`
`Selected by peers for inclusion in The Best Lawyers in America®, Copyright Law, Patent Law and IP Litigation 2015-2016
`
`Named a “Boston Rising Star” by the National Law Journal, 2014.
`
`Named a Massachusetts Super Lawyers Rising Star, 2010-2013.
`
`Selected as an “Up and Coming Lawyer” for 2012 by Massachusetts Lawyers Weekly, in conjunction with the Massachusetts Bar
`Association. This award is presented annually to twenty “lawyers who have been members of the bar for ten years or less, but who
`have already distinguished themselves in some way and appear poised for even greater accomplishments.”
`
`Selected publications and presentations
`
`“Petrellla: Supreme Court Takes on Laches,” Paper and Presentation at Joint Patent Practice Continuing Legal Education, New York
`City, April 23, 2014.
`
`“DMCA Anti-Circumvention and Trafficking Provisions,” Webinar presented, March 2, 2011.
`
`“IP Trends and Hot New Issues in 2007,” Mass High Tech, December 29, 2006.
`
`“Why eDiscovery Rules Will Change the Litigation Game,” Managing Intellectual Property, October 2006.
`
`“New E-discovery Rules Change Realities of Patent Litigation,” New England In-House, October 2006.
`
`“When in Doubt, Save the Data,” Q&A in Legal Times, October 16, 2006.
`
`http://www.fr.com/adam-kessel/
`
`9/11/2015
`
`6
`
`
`
`Kessel-Adam-09-2015-FishBio
`
`Page 3 of 6
`
`“IP Licensing: Burgeoning Internet Topics,” Presentation at Licensing Executives Society Annual Meeting, with M. Albert, September
`14, 2006.
`
`“‘Phillips’ Leads to a Different Result in ‘Nystrom'” with J. Foster, National Law Journal, December 5, 2005.
`
`“Self-Help, Free Software, Privacy-Enhancing Technologies, and Cryptography,” Berkman Center for Internet & Society at Harvard
`Law School, Privacy and Cyberspace Online Course, December 2003.
`
`“Why They’re Wrong About Critical Mass,” in Critical Mass: Bicycling’s Defiant Celebration, edited by Chris Carlsson, San Francisco: AK
`Press, 2002: 105-112.
`
`“Peroxidase Activity in Heme Proteins Derived From a Designed Combinatorial Library,” with D.A. Moffet; L.K. Certain; A.J. Smith; K.A.
`Beckwith; and M.H. Hecht, J. Am. Chem. Soc. 122, 7612-13 (2000).
`
`Experience
`Representative Patent Litigation Experience
`
`EveryScape, Inc. v. Adobe Systems Incorporated – D. Mass. (2010 – 2015) Represented
`defendant Adobe in case involving multiple patents relating to photo editing software.
`Following two week trial, jury rendered verdict after less than three hours of
`deliberations, finding all claims asserted against Adobe invalid as both anticipated and
`obvious.
`
`American Superconductor Corporation v. S&C Electric – D. Mass. (2011 – 2013)
`Represented plaintiff AMSC in case involving multiple patents relating to reactive
`power compensation devices. Case settled following favorable claim construction
`order adopting AMSC’s positions.
`
`ZOLL Medical Corporation v. Philips – D. Mass. (2010 – 2014) Represented ZOLL as
`both plaintiff and defendant in several cases in multiple judicial fora involving over two
`dozen patents relating to cardiac defibrillators. Following twelve-day trial, jury found
`ZOLL’s asserted patents infringed and not invalid.
`
`DataTern v. MicroStrategy et al. – D. Mass. (2011 – Present) Represent defendant
`MicroStrategy in case involving patent related to object-oriented programming and
`relational database systems in district court and on appeal. Case pending.
`
`SynQor, Inc. v. Vicor Corporation – E.D. Tex. (2011 – Present) Represent defendant
`Vicor Corporation in case involving multiple patents related to DC-DC power
`converters. Case pending.
`
`Robocast, Inc. v. Microsoft Corp. – D. Del. (2011 – 2014) Represented defendant
`Microsoft in case relating to automated web browsing tools. Case settled.
`
`Trading Technologies International, Inc. v. TradeStation Securities, Inc. et al – N.D. Ill.
`(2009 – Present) Represent defendant TradeStation Securities in case involving
`multiple patents relating to electronic trading system software in district court and on
`appeal. Case pending.
`
`Infineon Technologies AG v. Fairchild Semiconductor Corporation (D. Del., D. Maine.
`2008-2009) – Represented semiconductor manufacturer Infineon in infringement case
`involving eleven patents covering various aspects of power transistors in parallel
`proceedings in Delaware and Maine. Case settled.
`
`In the Matter of Certain Sucralose, Sweeteners Containing Sucralose, and Related
`Intermediate Compounds Thereof – (I.T.C. 2007-2009) Represented respondent
`
`http://www.fr.com/adam-kessel/
`
`9/11/2015
`
`7
`
`
`
`Kessel-Adam-09-2015-FishBio
`
`Page 4 of 6
`
`manufacturer in case involving artificial sweeteners in case before the International
`Trade Commission. Won decision of non-infringement and patent invalidity after seven
`day trial on the merits. Decision affirmed by the Commission in precedential opinion
`presenting a novel jurisdictional issue.
`
`Achates Reference Publishing Inc. v. Microsoft Corp. – (E.D. Tex. 2007-2009)
`Represented Microsoft in patent infringement lawsuit relating to Microsoft Product
`Activation. Case settled.
`
`Medtronic v. Abbott, et al. – (N.D. Cal. 2007-2009) Represented Boston Scientific
`Corporation in patent infringement lawsuit relating to cardiovascular stents. Case
`settled.
`
`Bose v. Phitek, et al. – (D. Mass. 2007-2009) Represent Bose in patent infringement
`action involving noise-reducing headphones. Case settled.
`
`Representative Appellate Cases
`
`DataTern v. MicroStrategy et al. (Fed. Cir. 2014) Represent appellee MicroStrategy in
`appeal of patent infringement case involving claim construction issues. Case pending.
`
`VRCompliance LLC et al v. HomeAway, Inc. et al. – (4th Cir. 2012) Represented appellee
`HomeAway in appeal from litigation in E.D. Va. relating to unauthorized website
`access. Appeal resulted in complete affirmance for HomeAway in a precedential
`opinion on federalism issue of first impression in the circuit.
`
`Airframe v. L-3 Communications Corp. et al. – (1st Cir. 2011) Represented appellee L-3
`in appeal from copyright infringement lawsuit in D. Mass. Appeal resulted in complete
`affirmance for L-3.
`
`Omura v. Shafer et al. – (Fed. Cir. 2011) Represented appellee Shafer in appeal from
`patent interference. Appeal resulted in complete affirmance.
`
`Allvoice Computing PLC. v. Nuance Communications, Inc. – (Fed. Cir. 2007) Represented
`appellee Nuance on appeal in patent infringement lawsuit in S.D. Tex. involving
`computer speech recognition software on appeal. Case settled.
`
`Representative Software and Internet Matters
`
`HomeAway, Inc. et al v. Eye Street Solutions et al (Travis County Court, Texas and E.D.
`Va., 2011 – 2013) Represent HomeAway in co-pending litigations in state and federal
`court relating to unauthorized website use and related claims. Case settled favorably
`for HomeAway following successful appeal argument.
`
`L-3 v. Airframe – (D. Mass. 2007-2011) Represent L-3 as a defendant in multiple
`copyright infringement actions involving computer source code. Plaintiff asserted
`damages claim of $132 million. Argued motion for summary judgment in July 2010, at
`which the District Court granted final judgment in L-3’s favor on all claims. Also argued
`appeal to First Circuit which affirmed the District Court in all respects in precedential
`opinion dated September 2011.
`
`Cambridge Research & Instrumentation Inc. v. Ruan et al. – (Mass. Superior Court 2009)
`Represented Cambridge Research & Instrumentation as plaintiff in case involving trade
`secret theft and breach of contract claims relating to computer source code. Court
`entered consent judgment enjoining defendants from using plaintiff’s technology.
`
`http://www.fr.com/adam-kessel/
`
`9/11/2015
`
`8
`
`
`
`Kessel-Adam-09-2015-FishBio
`
`Page 5 of 6
`
`Advised numerous clients on a wide range of software and Internet matters. Examples
`include copyright and patent issues implicated by use and distribution of open source
`software; ownership and licensing issues related to software development; Internet
`service provider immunity under the Communications Decency Act; computer fraud
`and identity theft liability under state and federal statutes; and electronic privacy and
`data protection issues under HIPAA and state laws.
`
`Represented several trademark owners in more than a dozen domain name
`arbitrations, all of which have resulted in transfer of the domain name to the trademark
`owner.
`
`Other Trademark and Copyright Litigation/Dispute Resolution
`
`Bose Corporation v. Vidabox, LLC – (D. Mass. 2008) Represented Bose in trademark
`infringement action involving speakers. Case settled.
`
`Bose Corporation v. BTS – (D. Mass. 2008) Represented Bose in trademark
`infringement action involving stereo systems. Obtained permanent injunction and
`judgment in Bose’s favor.
`
`Represented photographer in copyright and contract litigation against large consumer
`products manufacturer regarding use of photographs. Case settled.
`
`Defended office product supply company in defamation case. Successfully defeated
`preliminary injunction.
`
`Represented poet in dispute with publisher regarding copyright issues. Matter settled.
`
`Represented graphics layout artist in dispute with publisher regarding copyright and
`contractual issues. Matter settled.
`
`Pro bono representation examples
`
`Glovsky v. Roche Bros. Supermarket – (Mass. 2014) Drafted Amicus Curiae brief on
`behalf of American Civil Liberties Union in case before Massachusetts Supreme
`Judicial Court involving the constitutional right to collect signatures for ballot access.
`Opinion substantially followed the position set out in the amicus brief.
`
`Jonathan Hurley v. Town of Sandwich (2014) Represented teacher terminated from
`public school for off-work free-speech activities that pre-dated employment. Town
`agreed to compensate teacher and train administrators and teachers about teachers’
`rights to speak as citizens outside of school.
`
`In Re Matter of Search Warrant Executed on March 30, 2009. Successfully represented
`Riccardo Calixte, a Boston College student, in the District Court and then before the
`Massachusetts Supreme Judicial Court in a bid to quash a search warrant executed on
`his premises, on the ground that the warrant was invalid for lack of probable cause.
`Single justice opinion was highest state court opinion to date to address the issue of
`potential criminal liability for Internet users who violate terms of service.
`
`Massachusetts Bay Transportation Authority v. Anderson, et al. – (D. Mass. 2008)
`Represented three M.I.T. students charged with violating the Computer Fraud and
`Abuse Act in connection with a security analysis they designed showing vulnerabilities
`in the Massachusetts Bay Transportation Authority’s fare collection system. Defeated
`preliminary injunction motion brought against students. Case settled after preliminary
`injunction was denied.
`
`http://www.fr.com/adam-kessel/
`
`9/11/2015
`
`9
`
`
`
`Kessel-Adam-09-2015-FishBio
`
`Page 6 of 6
`
`WHDH v. Doe – (Mass. Supp. Ct. 2007) Represented anonymous poster to
`craigslist.org in motion to quash subpoena served on Internet Service Provider to
`discover the poster’s identity. Identity of the anonymous poster was successfully
`protected. Case settled.
`
`Kohn v. Barker – (Mass. Supp. Ct. 2006) Represented noted writer and speaker on
`educational issues who had been prevented from speaking at a conference by the
`Massachusetts Department of Education in First Amendment case. Plaintiff prevailed
`and was awarded attorney’s fees.
`
`Advised graduate student creators of videos critical of creationism on copyright issues
`including fair use and First Amendment rights.
`
`Assisted student with autism in Brockton Public School in obtaining funding and
`placement in a school specializing in autistic children.
`
`Advised nonprofit organization that provides free books to children in Africa on
`trademark issues and obtained trademark registration for organization.
`
`Advised nonprofit public health policy organization on copyright issues including
`Creative Commons licenses.
`
`© 2015 - Fish & Richardson
`
`http://www.fr.com/adam-kessel/
`
`9/11/2015
`
`10