UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`IBG LLC,
`INTERACTIVE BROKERS LLC, TRADESTATION GROUP, INC., and
`TRADESTATION SECURITIES, INC.
`Petitioner,
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`v.
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`TRADING TECHNOLOGIES INTERNATIONAL, INC.
`Patent Owner
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`Case CBM2016-00087
`Patent No. 7,412,416 B2
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`DECLARATION OF ADAM KESSEL IN SUPPORT OF PETITIONER’S
`MOTION FOR PRO HAC VICE ADMISSION
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`1
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`TradeStation v. Trading Technologies 
`Proceeding No. CBM2016‐00087 
`Exhibit 1068
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`Case CBM2016-00087
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`DECLARATION OF ADAM KESSEL IN SUPPORT OF
`PETITIONER’S MOTION FOR PRO HAC VICE
`ADMISSION
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`I, Adam Kessel, hereby declare the following:
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`I am a member in good standing of the state Bar for the Commonwealth of
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`1.
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`Massachusetts, as well as the United States Court of Appeals for the Federal
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`Circuit.
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`2.
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`I have not been suspended or disbarred from practice before any court or
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`administrative body.
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`3.
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`I have never had an application for admission to practice before any court or
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`administrative body denied.
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`4.
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`No sanction or contempt citation has been imposed against me by any court
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`or administrative body.
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`5.
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`I have read and will comply with the Office Patent Trial Practice Guide and
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`the Board’s Rules of Practice for Trials set forth in part 42 of the Code of Federal
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`Regulations.
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`6.
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`I will be subject to the USPTO Rules of Professional Conduct set forth in 37
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`C.F.R. §§ 11.101 et seq. and disciplinary jurisdiction under 37 C.F.R. § 11.19(a).
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`7.
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`I am a litigation attorney with more than a decade of experience representing
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`clients in cases involving computer software. I regularly litigate cases before the
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`United States Court of Appeals for the Federal Circuit, various federal district
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`Case CBM2016-00087
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`courts, and the International Trade Commission. Through my practice in such
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`cases, I have gained substantial experience in jury trials, discovery, Markman
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`hearings, and appeals. In addition to my legal experience, I had many years of
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`software development experience prior to entering the practice of law. I also have a
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`degree in chemistry from Princeton University. My biography is attached as
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`Appendix A.
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`8.
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`I also have particular experience and familiarity with the substantive and
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`technical issues involved in this Covered Business Method review proceeding. I
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`have been involved in co-pending patent litigation brought by Patent Owner
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`against Petitioner since its inception in June 2010. Over the past five years, I have
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`invested substantial time on Petitioner’s behalf on motion practice, discovery,
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`appeals, and analysis of the twelve patents-in-suit, including the patent for which
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`review is sought in the instant proceeding.
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`I hereby declare that all statements made herein of my own knowledge are
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`true and that all statements made on information and belief are believed to be true;
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`and further that these statements were made with the knowledge that willful false
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`statements and the like so made are punishable by fine or imprisonment, or both,
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`under Section 1001 of Title 18 of the United States Code and that such willful false
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`statements may jeopardize the validity of the application or any patents issued
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`thereon.
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`Case CBM2016-00087
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`Respectfully submitted,
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`Date: 5/25/2017______________
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`/Adam J. Kessel/____________
`Adam J. Kessel
`Fish & Richardson P.C.
`One Marina Park Drive
`Boston, MA 02210
`Tel: (617) 542-5070
`Email: kessel@fr.com
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`5/24/2017
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`Kessel-Adam-2017-FishBio
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`FISH.
`FISH & RICHARDSON
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`Adam Kessel
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`Drincipal
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`@ Boston, MA J 617-368-2180 E: kessel@fr.com
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` Background
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`Adam Kessel is a Principal in the Boston office of Fish & Richardson. His practice focuses on intellectual property litigation, particularly
`cases involving patent, copyright, and related claims pertaining to medical devices, software, computer networks, and electronics. He
`also specializes in open source and other software licensing. Adam has substantial courtroom and trial experience, including work on
`several cases at trial and on appeal in the Federal Courts, the International Trade Commission, and in the new post-grant procedures
`before the Patent Trial & Appeal Board. 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. Adam is active in local attorney and IP-
`related organizations and appears frequently in the Federal Court for the District of Massachusetts, having argued and won motions
`and claim construction arguments before most of the judges on the bench, and has tried cases to a jury before several judges in the
`district. He has also argued appeals before the First, Fourth, and Federal Circuit Courts of Appeal.
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`https://www.fr.com/adam-kesse|/
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`Adam 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). Adam has a degree in Chemistry from Princeton University. Prior to law
`school, he had many years of experience with software development and also conducted research for an academic biochemistry lab
`involving protein structure and nuclear magnetic resonance spectroscopy.
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`Services
`- Copyright
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`- Litigation
`- Domain Names and Internet
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`0 Digital Millennium Copyright Act
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`- Transactions and Agreements
`- False Claims Act and Qui Tam
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`0 Patent Litigation
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`0 Trade Secret Litigation
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`- Trademark, Copyright, and Media Litigation
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`Industries
`- Chemicals
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`0 Digital Media and E-Commerce
`- Hardware
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`0 Internet
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`- Life Sciences
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`APPENDIX A
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`5
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`Kessel-Adam-2017-FishBio
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`0 Software
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`0 Telecommunications
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`Education
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`J.D., Northeastern University School of Law 2004
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`BA, Princeton University 1998
`Chemistry
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`Admissions
`0 Massachusetts 2004
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`0 U.S. Court of Appeals for the Federal Circuit
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`0 U.S. Court of Appeals for the First Circuit
`0 U.S. Court for Federal Claims
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`0 U.S. Court of Appeals for the Fourth Circuit
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`0 U.S. Court of Appeals for the Eleventh Circuit
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`Languages
`0 English
`0 French
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`https://www.fr.com/adam-kessel/
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`Memberships & Affiliations
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`Board Member of American Civil Liberties Union of Massachusetts.
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`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.
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`Other Distinctions
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`Certified as a Legal Specialist in open source code auditing by Black Duck.
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`Selected by peers for inclusion in The Best Lawyers in Amer/ca@ 2015.
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`Named a “Boston Rising Star" by the National Law Journal, 2014.
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`Named a Massachusetts Super Lawyers Rising Star, 2010-2013.
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`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.”
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`Selected publications and presentations
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`"Petrella: Supreme Court Takes on Laches," Paper and Presentation at Joint Patent Practice Continuing Legal Education, New York
`City, April 23, 2014.
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`“DMCA Anti—Circumvention and Trafficking Provisions,” Webinar presented, March 2, 2011.
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`“IP Trends and Hot New Issues in 2007," Mass High Tech, December 29, 2006.
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`“Why eDiscovery Rules Will Change the Litigation Game,” Managing Intellectual Property, October 2006.
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`“New E-discovery Rules Change Realities of Patent Litigation,” New England ln-House, October 2006.
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`“When in Doubt, Save the Data,” Q&A in Legal Times, October 16, 2006.
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`“IP Licensing: Burgeoning Internet Topics," Presentation at Licensing Executives Society Annual Meeting, with M. Albert, September
`14, 2006.
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`“‘Phillips’ Leads to a Different Result in ‘Nystrom'" with J. Foster, National Law Journal, December 5, 2005.
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`“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.
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`“Why They’re Wrong About Critical Mass," in Critical Mass: Bicyclingis Defiant Celebration, edited by Chris Carlsson, San Francisco: AK
`Press, 2002: 105-112.
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`“Peroxidase Activity in Heme Proteins Derived From a Designed Combinatorial Library,” with BA. Moffet; L.K. Certain; A.J. Smith; K.A.
`Beckwith; and M.H. Hecht, J. Am. Chem. Soc. 122, 7612-13 (2000).
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`https://www.fr.com/adam-kessel/
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`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.
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`Expefience
`Representative Patent Litigation Experience
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`Represented Taiwanese golf ball manufacturer in patent dispute brought by one of its
`largest competitors based in the United States; matter resolved favorably for client
`(2015-2016).
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`American Superconductor Corporation v. 8&0 Eleotric— 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.
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`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.
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`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.
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`SynQor, lnc. V. View Corporation — E.D. Tex. (2011 — Present) Represent defendant Vicor
`Corporation in case involving multiple patents related to DC-DC power converters.
`Case pending.
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`Robocast, Inc. v. Microsoft Corp. — D. Del. (2011 — 2014) Represented defendant
`Microsoft in case relating to automated web browsing tools. Case settled.
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`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.
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`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.
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`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.
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`Medtronic v. Abbott, et al. — (N.D. Cal. 2007-2009) Represented Boston Scientific
`Corporation in patent infringement lawsuit relating to cardiovascular stents. Case
`settled.
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`Bose v. Ph/tek, et al. — (D. Mass. 2007-2009) Represent Bose in patent infringement
`action involving noise-reducing headphones. Case settled.
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`Representative Appellate Cases
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`In the Matter of Certain Sucralose, Sweeteners Containing Sucralose, and Related
`Intermediate Compounds Thereof— (|.T.C. 2007-2009) Represented Chinese
`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.
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`https://www.fr.comladam-kessel/
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`Dataibrn v. MicroStrategy et al. (Fed. Cir. 2014) Represent appellee MicroStrategy in
`appeal of patent infringement case involving claim construction issues. Case pending.
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`VRComp/iance LLC et al v. HomeAway, Inc. et al. — (4th Cir. 2012) Represented appellee
`HomeAway in appeal from litigation in ED. 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.
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`Airframe v. L—3 Communications Corp. et al. — (1 st Cir. 2011) Represented appellee L-3
`in appeal from copyright infringement lawsuit in D. Mass. Appeal resulted in complete
`affirmance for L-3.
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`Omura v. Shafer et al. — (Fed. Cir. 2011) Represented appellee Shafer in appeal from
`patent interference. Appeal resulted in complete affirmance.
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`Allvoice Computing PLC. v. Nuance Communications, Inc. — (Fed. Cir. 2007) Represented
`appellee Nuance on appeal in patent infringement lawsuit in SD. Tex. involving
`computer speech recognition software on appeal. Case settled.
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`Representative Software and Internet Matters
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`HomeAway, Inc. et al v. Eye Street Solutions at a/ (Travis County Court, Texas and ED.
`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.
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`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.
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`Cambridge Research & Instrumentation Inc. v. Fiuan 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.
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`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.
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`Other Trademark and Copyright Litigation/Dispute Resolution
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`Bose Corporation v. Wdabox, LLC— (D. Mass. 2008) Represented Bose in trademark
`infringement action involving speakers. Case settled.
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`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.
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`Represented photographer in copyright and contract litigation against large consumer
`products manufacturer regarding use of photographs. Case settled.
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`Defended office product supply company in defamation case. Successfully defeated
`preliminary injunction.
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`Represented poet in dispute with publisher regarding copyright issues. Matter settled.
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`Represented graphics layout artist in dispute with publisher regarding copyright and
`contractual issues. Matter settled.
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`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.
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`https://www.fr.com/adam-kessel/
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`Pro bono representation examples
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`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.
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`Jonathan Hurley v. Town of Sandwich (201 4) 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.
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`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.
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`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.
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`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.
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`Advised graduate student creators of videos critical of creationism on copyright issues
`including fair use and First Amendment rights.
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`Massachusetts Bay Transportation Authority v. Anderson, et al. — (D. Mass. 2008)
`Represented three M.|.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.
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`https://www.fr.com/adam-kessel/
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`Assisted student with autism in Brockton Public School in obtaining funding and
`placement in a school specializing in autistic children.
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`Advised nonprofit organization that provides free books to children in Africa on
`trademark issues and obtained trademark registration for organization.
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`Advised nonprofit public health policy organization on copyright issues including
`Creative Commons licenses.
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`© 2017 - Fish & Richardson
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