WARSAW 2001
`NuVasive, Inc. v. Warsaw Orthopedic, Inc.
`IPR2013-00396
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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 disciplinaryjurisdiction under 37 C.F.R. § 11.19(a);
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`7.
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`I have applied to appear pro hac vice in the following proceedings before the
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`Office in the last three (3) years:
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`Nu Vasive, Inc. v. Warsaw Orthopedic, Inc., IPR2013-00206 (granted on
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`May 15, 2013, Paper 10)
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`Na Vasive, Inc. v. Warsaw Orthopedic, Inc., IPR2013-00208 (granted on
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`May 15, 2013, Paper 10);
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`Na Vasive, Inc. v. Warsaw Orthopedic, Inc., IPR20l3-00395 (filed
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`concurrently herewith); and
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`8.
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`I am an experienced litigation attorney, with experience in numerous
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`lawsuits involving patent infringement in District Courts across the country,
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`including experience in jury and bench trials, Markman hearings, and Federal
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`Circuit oral arguments in patent infringement litigation. In particular, I have
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`represented Patent Owner Warsaw as lead counsel in multiple patent infringement
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`cases. My biography is attached hereto as Exhibit A.
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`I am lead counsel for Warsaw in the co-pending litigation in which US. 0
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`Patent No. 8,444,696 is asserted against NuVasive, Inc. I am familiar with the
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`subject matter at issue in this proceeding, including the prior art on which
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`Petitioner relies in its request.
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`

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`Dated: February 11, 2014
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`Respectfiilly Submitted,
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` AND & ELM/1:1:
`K3 South Hopegsjtfet
`Los Angeles, CA 90071
`Telephone: (213) 680—8400
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`Sworn to and subscribed before me,
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`MARY BETH LOPEZ
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`Commission # 1832124
`Notary Public - California
`LVNN
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`Los Angeles County
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`'1 My Comm. Expires Mar 11, 2014!
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`EXHIBIT A
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`EXHIBIT A
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`Luke L. Dauchot, P.C.
`
`Luke is a trial lawyer who focuses his practice on intellectual property and
`complex commercial cases. Admitted to practice in California, Illinois, and
`Ohio, Luke has tried numerous patent infringement and commercial cases in
`venues throughout the country. Luke was distinguished as one of The Best
`Lawyers in America for 2013 and 2014 in the fields of litigation - intellectual
`property and litigation - patent. In addition, he has been recognized by The
`American Lawyer as one of Kirkland’s first-chair IP trial lawyers, by Law360
`as one of its patent litigation “MVPs,” and by one of California’s leading legal
`journals as among California’s top-75 IP attorneys. Luke has obtained
`multiple defense and some of the country’s highest patent plaintiff’s verdicts,
`including a $226 million Massachusetts jury award, a California jury verdict
`in the amount of $70 million, and another California jury verdict in the
`amount of $101.2 million. Admitted to practice before a number of appellate
`courts including the United States Court of Appeals for the Federal Circuit,
`Luke has also briefed and argued cases on appeal.
`
`Clients have called on Luke’s litigation and trial skills in disputes involving a
`wide range of technical areas. A substantial part of Luke’s practice focuses on
`medical device matters, including cardiovascular and orthopedic devices,
`instruments, and methods. His work in this area has led to recognition by
`publications such as The American Lawyer, Corporate Counsel, The Daily
`Journal, Managing Intellectual Property, IP Law360, Southern California
`Super Lawyers and The Los Angeles Business Journal.
`
`Representative Matters
`Wi-Lan Inc. v. Apple, Inc.
`United States District Court for the Eastern District of Texas
` As trial counsel for Apple, Inc, obtained a complete defense victory. Wi-LAN
`sought $250 million in damages from Apple and enhancement based on alleged
`willfulness. After a one-week trial, a jury returned a verdict of no infringement
`and found Wi-LAN’s patent invalid after less than 2 hours of deliberations.
` Case was listed in Law 360, “Apple Beats Wi-LAN at Wireless Patent Trial,”
`10/2013; Bloomberg, “Apple Wins Patent-Infringement Trial Against Wi-Lan,”
`10/2013; PC World, “Apple wins in patent infringement trial against Wi-LAN,”
`and other publications.
`
`Partner, Intellectual
`Property and Litigation
`
`Kirkland & Ellis LLP
`
`Chicago, Illinois
`t: +1 312-862-3261
`f: +1 312-862-2200
`
`Los Angeles, California
`t: +1 213-680-8348
`f: +1 213-680-8500
`
`luke.dauchot@kirkland.com
`
`Education
`Case Western Reserve University
`School of Law; J.D., 1986
`Case Western Reserve University;
`B.A.,1983
` magna cum laude
` Phi Beta Kappa
`
`Admissions/Qualifications
`2004, California
`1988, Ohio
`1986, Illinois
`
`www.kirkland.com 1
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`Professional Associations &
`Memberships
`American Bar Association,
`Intellectual Property Law and
`Litigation Sections
`
`American Intellectual Property
`Law Association
`
`International Bar Association
`
`Los Angeles Intellectual Property
`Law Association
`
`Judge Paul R. Michel Intellectual
`Property American Inn of Court –
`Executive Committee Member
`
`Foreign Languages
`
`Dutch
`
`French
`
`Luke L. Dauchot, P.C.
`
`In re Lutz Biedermann and Jurgen Harms (appeal)
`United States Court of Appeals for the Federal Circuit
` Successfully argued appeal of a decision by the Patent Trial and Appeal Board
`affirming the rejection of claims in a patent application relating to a bone screw.
`A three-judge appellate panel rejected the government's argument and remanded
`the matter for further proceedings.
` Case was listed in Law 360, “Fed. Circ. Revives Bone Screw Patent Claim,”
`10/2013; IPO Daily News, “USPTO’s Use of Additional Reference in Patent
`Appeal: A New Ground of Rejection,” and other publications.
`Medtronic v. NuVasive (patent litigation)
`United States District Court for the Southern District of California
` As lead trial counsel, won $101.2 million for Warsaw Orthopedic, Inc. (a
`Medtronic entity) in the first phase of a patent infringement dispute with
`NuVasive, Inc. The jury found that NuVasive’s spinal technology infringed all
`three of Warsaw’s asserted patents.
` Case was listed in Los Angeles Daily Journal “Jury Awards $101 million to
`medical device maker in patent case” (September 23, 2011); AmLaw Litigation
`Daily “Kirkland, Dewey Win $101 Million Jury Verdict for Medtronic in Spinal
`Implant Patent Case” (September 20, 2011); Law360 “Jury Hands Medtronic
`$101M in Spine Device IP Fight” (September 20, 2011); Bloomberg News
`“Medtronic Wins $101 Million Award from NuVasive Over Spine Device
`Patents” (September 20, 2011).
`Alcatel-Lucent v. Microsoft (patent litigation)
`United States District Court for the Southern District of California
` As lead trial counsel for Alcatel-Lucent, won $70 million patent infringement
`jury verdict in the retrial of a long-running patent infringement dispute with
`Microsoft.
` Case was listed in AmLaw Litigation Daily “Kirkland Wins $70 Million Patent
`Verdict for Alcatel in Retrial Against Microsoft” (August 1, 2011); Los Angeles
`Daily Journal “Microsoft Loses Patent Fight to Alcatel-Lucent” (August 1,
`2011); Bloomberg News “Microsoft Must Pay Alcatel $70 Million in Patent
`Damages, U.S. Jury Says” (July 29, 2011).
`Ericsson Inc. v. D-LINK Systems, Inc. (patent litigation)
`United States District Court for the Eastern District of Texas
` Trial counsel for Intel Corporation
`CooperSurgical, Inc. v. Teleflex (patent litigation)
`United States District Court for the Southern District of New York
` Lead trial counsel for Teleflex Corporation in medical device case
` Case resolved following successful defense of preliminary injunction motion
`
`www.kirkland.com 2
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`Distinctions
`IAM Patent 1000: The World’s
`Leading Patent Practitioners,
`2012 — 2013
`
`The Legal 500 U.S.,
`Recommended Lawyer, 2012 —
`2013
`
`Law360’s “2011 MVP”
`
`The Daily Journal’s “Top 75
`Intellectual Property Lawyers in
`California,” 2009 — 2013
`
`The Recorder’s 2011 "Attorneys of
`the Year"
`
`“Southern California Super
`Lawyers,” 2009 — 2013
`
`The Best Lawyers in America,
`2013 — 2014
`
`Luke L. Dauchot, P.C.
`
`Finjan, Inc. v. McAfee, Inc. (patent litigation)
`United States District Court of Delaware
` Represented McAfee, Inc. as lead trial counsel in patent litigation brought by
`Finjan, Inc. against McAfee, Symantec, Sophos and Websense
`Stryker v. Biedermann Motech GmbH (patent litigation)
`United States District Court for the District of Columbia
` As lead trial counsel for Biedermann Motech, successfully defended company in
`2010 bench trial on 35 U.S.C. Section 146 appeal of USPTO interference ruling
`Biedermann Motech GmbH v. Alphatec (patent litigation)
`United States District Court for the District of Massachusetts
` As lead trial counsel for Biedermann, argued and won Markman hearing and
`summary judgment motions; case settled in May of 2008 for a sum in excess of
`$10 million. The settlement was reported in Bloomberg News.
`Biedermann Motech GmbH v. Medtronic (patent litigation)
`United States District Court for the District of Massachusetts
` As lead trial counsel for Biedermann, won patent infringement jury verdict in the
`amount of $226 million, second largest patent infringement award in 2007, and
`reportedly largest award in the history of Massachusetts .
` Case was listed in The American Lawyer “Young and Hungry” (January 2008);
`The American Lawyer “Big Suits” (December 2007); Bloomberg News
`“Medtronic Loses Bid to Void J&J $226 Million Verdict” (December 2007); IP
`Law360 “Judge Nails Medtronic with $226M Screw Judgment” (December
`2007); Managing Intellectual Property “KSR Cited as Court Backs $226.3
`Million Award” (December 2007).
`Medtronic v. Michelson (patent/commercial litigation)
`United States District Court for the Western District of Tennessee
` Won breach of contract/patent infringement jury trial ($170 million
`compensatory damages; $400 million punitive damages); settled for $1.35 billion
`in April 2005 (largest patent settlement in history).
` Case was listed in The American Lawyer “Winning Ways” (March 2005); “Big
`Suits” (December 2004) and Lawyers Weekly USA “Doctor Wins $560 Million
`for His Invention” (October 25, 2004).
` Verdict was cited in The Los Angeles Times “Jury Orders Medtronic to Pay
`Punitive Damages of $400 Million to L.A. Inventor” (October 13, 2004);
`settlement was cited in Los Angeles Business Journal “Doctor Billion” (May
`2005).
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`www.kirkland.com 3
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`Luke L. Dauchot, P.C.
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`Other Matters
` Completed successful appeals in United States Court of Appeals for the Federal,
`Sixth, and Seventh Circuits
` Tried additional cases/expedited remedy proceedings in venues throughout the
`country
` Secured favorable settlements in patent, trademark and trade secret litigation
`pending in venues throughout the country
`
`Publications
` Luke L. Dauchot – Q&A – Law360, July 2009
` Luke L. Dauchot – “Markman Marks Ten Years: Where Do Things Stand?”
`American Bar Association Section of Intellectual Property Law, 21st Annual IPL
`Conference Course Materials, April 2006
` Luke L. Dauchot – “The Doctrine of Equivalents: An Endangered Species?”
`American Bar Association Section of Intellectual Property Law, 21st Annual IPL
`Conference Course Materials, April 2006
` Luke L. Dauchot, CAFC Year in Review, 2005 National CLE Conference,
`Intellectual Property, Snowmass, Colorado
` Luke L. Dauchot and Jeffrey C. Metzcar, “Technical Advisors: Welcome
`Scientific Education, But at What Cost to a Patent’s Notice Function? “ IP
`Litigator, March/April 2003
` Luke L. Dauchot, “Patent Claim Construction: Understanding the Game Called
`the Claim,” IP Litigator, August 2001
` Luke L. Dauchot, “Patent Claim Construction: Substantive and Procedural
`Update” 2001 National CLE Conference, Intellectual Property, Vail, Colorado
` Luke L. Dauchot, “The CAFC’s De Novo Regime: Are We Better Off?” Vol. 2,
`No. 3, News Source, a publication of the Chicago John Marshall Law School
`Center for Intellectual Property Law, Summer 2000
` Luke L. Dauchot, “State of Patent Construction: Substantive and Procedural
`Background,” American Bar Association Section of Intellectual Property Law
`IPL Conference Course Materials, Summer 2000
` Luke L. Dauchot and Karl M. Laskas, 1999 American Bar Association Section of
`Intellectual Property Law 1999 Markman Survey, 18 A.B.A. SEC. Pub. I.P.L. 3,
`Spring 2000
` Luke L. Dauchot, “The Federal Circuit’s De Novo Review of Patent Claim
`Construction: A Need For a More Balanced Approach,” 18 A.B.A. SEC. PUB.
`I.P.L. 1, Fall 1999
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`www.kirkland.com 4
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`Luke L. Dauchot, P.C.
`
`Seminars
` “Follow the Money - Monetary Compensation in Intellectual Property Cases,”
`International Bar Association, Dublin, Ireland, October 2012
` “The General Counsel’s Perspective: Insight for 2011 and Beyond,” 30th
`Anniversary Institute for Corporate Counsel, Los Angeles, California, December
`2011
` “But It’s Only A Drop in the Bucket!” The Judge Paul R. Michel Intellectual
`Property American Inn of Court, Los Angeles, California, November 2011
` “Smooth Moon Walking: Nikkie Shoes v. MJ Footwear,” The Los Angeles
`Intellectual Property American Inn of Court, Los Angeles, California, October
`2009
` “Emerging Trends in Patent Litigation,” Los Angeles Intellectual Property Law
`Association Statewide Intellectual Property Spring Seminar Event, Lake
`Arrowhead, California, June 2009
` “IP Litigation - Blessing or Curse? Practical Tips to Maximize Results and
`Minimize Exposure,” AmLaw 6th Annual General Counsel West Coast
`Conference, San Francisco, California, November 2008
` “IP Litigation: Global Best Practices,” American Bar Association Section of
`Intellectual Property Law, ABA 2008 Annual Meeting, New York, New York,
`August 2008
` “Extrinsic Evidence in a Post-Phillips World,” Patent Claim Construction 2007:
`The Advanced Legal Forum, Washington, D.C., March 2007
` “Extrinsic Evidence in a Post-Phillips World,” Patent Claim Construction 2007:
`The Advanced Legal Forum, Palo Alto, California, January 2007
` “Markman Marks Ten Years: Where Do Things Stand?” American Bar
`Association Section of Intellectual Property Law, 21st Annual IPL Conference,
`Arlington, Virginia, April 2006
` “The Doctrine of Equivalents: An Endangered Species?” - American Bar
`Association Section of Intellectual Property Law, 21st Annual IPL Conference,
`Arlington, Virginia, April 2006
` “CAFC Year in Review,” 2005 National CLE Conference, Intellectual Property,
`Snowmass, Colorado, January 2005
` “Claim Construction: Where are we and how did we get here?” Columbus
`Intellectual Property Law Association, January 2002
` “Patent Claim Construction: Where are we and how did we get here?” Cleveland
`Intellectual Property Law Association, October 2001
` “Patent Claim Construction: Substantive and Procedural Update,” 2001 National
`CLE Conference, Intellectual Property, Vail, Colorado, January 2001
` “The State of Claim Construction: A Panel Presentation,” American Bar
`Association Intellectual Property Section Summer Conference, Boston,
`Massachusetts, June 2000
` “The State of Patent Claim Construction,” Cleveland Intellectual Property Law
`Association, April 2000
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`www.kirkland.com 5
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