PHISON 2007
`PNY Technologies, Inc.
`v. Phison Electronics Corp.
`IPR2014-00472
`
`1
`
`

`

`Proceeding No.2 IPR201 3—004722
`Attorney Docket: 23490-00081P1
`
`AFFIDAVIT OF DAVID M. BARKAN IN SUPPORT OF
`
`PATENT OWNER’S MOTION FOR
`
`PRO HAC VICE ADMISSION
`
`I, DAVID M. BARKAN, being duly sworn and upon oath, hereby attest to
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`the following:
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`1.
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`I am a member in good standing of the State Bar of California, and am
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`admitted to practice in the United States District Courts for the Northern, Central,
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`and Southern Districts of California, the United States District Court for the
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`Eastern District of Texas, the United States District Court for the Northern District
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`of Illinois, the United States District Court for the Western District of Wisconsin,
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`and the United States Courts of Appeals for the Fourth Circuit, Ninth Circuit, and
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`Federal Circuit.
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`1 am lead counsel for Patent Owner Phison Electronics Corp. in
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`Phison Electronics Corp. v. PNY Technologies Inc, USDC-D. Del. Case No. C. A.
`
`No. 12-1478-GMS/MPT, a co—pending district court case which has been stayed
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`pending the outcome of the present review.
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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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`2
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`

`

`Proceeding No: IPR201 3.004722
`Attorney Docket: 23490-00081P1
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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. § ll.l9(a).
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`7.
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`l have not applied for admission pro hac vice in any other proceeding before
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`the Office, other than in IPR2013-00473, an Inter Partes Review Proceeding
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`involving another Phison patent at issue in the same co-pending district court
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`action (Phison Electronics Corp. v. PNY Technologies Inc, USDC—D. Del. Case
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`No. C. A. No. 12—1478-GMS/MPT) as the present Proceeding. That application is
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`being filed in IPR2013—OO473, concurrently with the present application.
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`8.
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`I am an experienced litigation attorney with more than 20 years of
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`experience representing clients in patent cases involving electrical devices,
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`computer hardware, computer software, financial and business services, the
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`lntemet, and semiconductors.
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`I regularly litigate patent cases in various forums
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`including the United States Court of Appeals for the Federal Circuit, federal
`
`district courts, and the International Trade Commission. Through my experience
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`in patent litigation matters, I have represented clients in many phases of litigation
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`including discovery, Markman hearings, jury trials, bench trials, and appeals.
`
`I
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`have also been substantively involved in developing technical and legal arguments,
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`3
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`

`

`Proceeding No.: 113112013—004722
`Attorney Docket: 23490-00081Pl
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`and working with technical experts and inventors.
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`I have particular experience
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`relevant to the patent—at-issue, having been lead counsel on cases involving 17
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`flash memory patents in multiple courts around the country. My biography is
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`attached hereto as Exhibit A.
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`I am lead counsel for Patent Owner Phison
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`Electronics Corp. in Phison Electronics Corp. v. PNY Technologies Inc, USDC—D.
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`Del. Case No. C. A. No. l2-1478-GMS/MPT, a co—pending district court case
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`involving the patent being challenged in this proceeding, which has been stayed
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`pending the outcome of the present review.
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`I have also served as lead counsel for
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`the Patent Owner since 2007 in patent cases in district court proceedings and the
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`International Trade Commission involving flash memory devices. In these cases, I
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`oversaw all phases of the litigation from discovery through trial.
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`_ 9.
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`Prior to beginning my legal career, I worked as a software engineer,
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`developing various software systems and networked databases.
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`I began my legal
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`career as a clerk for the Honorable Judge Fern Smith on the United States District
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`Court for the Northern District of California from 1992 to 1993. Additionally, I
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`served as Fish & Richardson’s Nationwide Head of Litigation from 2001 through
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`2006.
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`10.
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`I have read and analyzed the patent-at-issue in this proceeding, the petition,
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`the preliminary response and cited portions of the accompanying exhibits.
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`4
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`

`

`Proceeding No.2 113112013004722
`Attorney Docket: 23490-0008IP1
`
`Respectfully submitted,
`
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`DAVID M. BARKAN
`
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`
`
`
`Fish & Richardson PC.
`
`500 Arguello Street, Suite 500
`Redwood City, CA 94063
`Tel: (650) 839-5070
`Email: barkan@fr.corn
`
`Sworn to and subscribed before me,
`
`this 23)
`
`
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`day of Muxfi
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`,2014.
`
`WM ‘
`Notary ublic
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`MTVM‘A
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`My Commission Expires: Q’mfljfli“ g9 10‘“?
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`5
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`

`

`
`EXHIBIT A
`To Motion for Pro Hac Vice of
`David M. Barkan
`
`6
`
`

`

`Fish 1 David M. Barkan l Intellectual Property Technology Law
`
`Page 1 of 2
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`barkan@fr.com
`
`_
`Silicon Valley
`650-839-5065@
`
`David M. Barkan
`
`Principal
`
`Litigation
`
`Patent Litigation
`
`ITC Litigatiop
`
`Sectors
`
`Electrical/Computer
`Wax
`Software
`
`Financial Business Services
`
`Internet
`
`Semiconductors
`
`Fish Bio
`
`Experience
`
`NewsiSpeaking
`
`David M. Barkan is a litigation principal in Fish & Richardson's Silicon Valley office
`and served as the firm's Nationwide Head of Litigation from 2001 through 2006.
`He specializes in high technology litigation, spanning a broad range of computer
`and network technologies, including computer graphics, programming theory and
`language, networking protocols and security, semiconductor processing, analog
`and digital semiconductor devices, distributed systems, and storage devices. Mr.
`Barkan has tried intellectual property cases before judges and juries in US district
`courts, in the US International Trade Commission, and in arbitration proceedings.
`Prior to law school, Mr. Barkan wrote software for a small start-up in Cambridge,
`Massachusetts (19884989).
`
`David has been selected as a Super Lawyer since 2004 and was listed in The Best
`Lawyers in America in 2013 and 2014 for Litigation — Intellectual Property.
`Additionally, in 2009, the Los Angeies and San Francisco Daily Journal named
`David as one of the "Top 100” most influential lawyers in California. The Los
`Angeies and San Francisco Daily Journai also named him as one of the "Top 75"
`intellectual property litigators in California in 2009 and 2010.
`
`Admissions
`
`California 1992
`
`United States District Court for the Northern District of California
`
`United States District Court for the Southern District of California
`
`United States District Court for the Central District of California
`
`United States Court of Appeals for the Fourth Circuit
`
`United States Court of Appeals for the Ninth Circuit
`
`United States Court of Appeals for the Federai Circuit
`
`California Supreme Court
`
`United States District Court for the Eastern District ofTexas
`
`United States District Court for the Western District of Wisconsin
`
`http://www.fr.com/david—m—barkani
`
`5/27/2014
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`7
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`Fish | David M. Barkan | Intellectual Property Technology Law
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`Page 2 of 2
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`Clerks-"amps
`
`The Honorable Fern M. Smith, United States District Court for the Northern District
`of California, 1992 — 1993
`
`Memberships and Affiiiations
`
`Firm operating committees:
`Litigation Practice Group Leader, 2001-2006
`Management Committee, 2002-2004
`Compensation Committee, 2012«present
`
`cher Distinctions
`
`Selected publications
`"Navigating the Litigation Process," Strategies of Successful Litigators: Best
`Practices of the World's Top Litigation Lawyers, Aspatore Books (2005).
`
`"Software Litigation in the Year 2000'. The Effect of Object-Oriented Design
`Methodologies on Traditional Software Jurisprudence," 7 High Technology L.J. 315
`(1993)
`
`”Book Review of EDI and American Law," published in 5 High Technology L.J. 193
`(1990).
`
`Additional information
`
`Featured as a keynote speaker on the audio~recording of "The Litigation
`Leadership Roundtable: Top Partners on Winning Legal Strategies 8:. Best Practices
`for Success," ReedLogic Conferences (2005).
`
`Education
`
`AB, Harvard University 1987
`Government
`
`magna cum laude-
`
`JD, University of California, Berkeley School of Law 1992
`Order of the Coif
`
`http:I/www.fixcom/david—m—barkan/
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`5/27/2014
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`8
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