`
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`
`
`
`Filed on behalf of: Black Hills Media, LLC
`By:
`Theodosios Thomas
`Black Hills Media, LLC
`5400 Trinity Rd. Suite 303
`Raleigh, NC 27607
`Tel: (919) 233-1942, Ext. 203
`Fax: (919) 233-9907
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`YAMAHA CORPORATION OF AMERICA
`Petitioner
`
`v.
`
`BLACK HILLS MEDIA, LLC
`Patent Owner
`___________________
`
`Case No. IPR2013-00594
`U.S. Patent 8,050,652
`___________________
`
`Declaration of Thomas Engellenner In Support of
` Motion For Admission Pro Hac Vice
`
`
`
`
`
`
`
`
`
`
`I, Thomas Engellenner, declare as follows:
`
`IPR2013-00594
`U.S. Patent 8,050,652
`
`1.
`
`I am an attorney licensed to practice law in the states of Massachusetts
`
`and New York, and am a registered patent attorney before the United
`
`States Patent and Trademark Office (Reg. No. 28,711). I am also
`
`admitted to practice before the U.S. District Court for the District of
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`Massachusetts and the Court of Appeals for the Federal Circuit. I am
`
`a member in good standing in all jurisdictions where I have been
`
`admitted to practice.
`
`2.
`
`I have never been suspended or disbarred from practice before any
`
`court or administrative body.
`
`3.
`
`I have never had an application denied for admission before any court
`
`or administrative body.
`
`4.
`
`I have never had any sanctions or contempt citations imposed by any
`
`court or administrative body.
`
`5.
`
`I have read and agree to comply with the Office Patent Trial Practice
`
`Guide and the Board’s Rules of Practice for Trials set forth in part 42
`
`of the C.F.R.
`
`6.
`
`I affirm my agreement as a registered practitioner before the USPTO
`
`to be subject to the USPTO Rules of Professional Conduct 37 C.F.R.
`
`2
`
`
`
`IPR2013-00594
`U.S. Patent 8,050,652
`§§ 11.101 et seq. and disciplinary jurisdiction under 37 C.F.R. §
`
`11.19(a).
`
`7.
`
`I commonly appear before the USPTO as a registered USPTO
`
`practitioner. Other than concurrently seeking to appear pro hac vice
`
`in IPR2013-00593, IPR2013-00597, and IPR2013-00598, which were
`
`also filed by the Petitioner against patents other than the ‘652 Patent
`
`owned by the Patent Owner, I have not applied to appear pro hac vice
`
`in any other proceedings before the USPTO in the last three (3) years.
`
`8.
`
`I have been a partner at the law firm of Pepper Hamilton LLP since
`
`joining the firm in 2012. Previously, I was a partner at the firm of
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`Nutter McClennen & Fish LLP (1998- 2012) and at the firm of Lahive
`
`& Cockfield (1988-1998), and was an associate at Lahive & Cockfield
`
`from 1983 to 1988. I was also an in-house patent attorney for
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`Massachusetts Institute of Technology from 1980 to 1983. I have
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`extensive experience in patent law and have been involved in patent
`
`prosecution and patent litigation for the past 30 years.
`
`9.
`
`I am familiar with the subject matter at issue in this proceeding. As a
`
`registered practitioner before the USPTO, I have been engaged by the
`
`Patent Owner to represent the Patent Owner before the Board in this
`
`proceeding. I have undertaken the study of inter alia the ‘652 Patent,
`
`3
`
`
`
`IPR2013-00594
`U.S. Patent 8,050,652
`the Petition for Inter Partes Review, and the art cited in the Petition. I
`
`am also familiar with the co-pending litigations filed by the Patent
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`Owner and identified by the Petitioner in the Petition for Inter Partes
`
`Review (pp. 2-4), in which the ‘652 Patent was asserted against the
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`Petitioner and others in various jurisdictions. I have acquired a
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`substantial understanding of the underlying legal and technological
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`issues at stake in the these proceedings.
`
`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
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`be true; and further that these statements are made with the knowledge that
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`willful false statements and the like so made are punishable by fine or
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`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
`
`U.S. Patent No. 8,050,652.
`
`Dated: December 18, 2013
`
`
` /Thomas J. Engellenner/
`Thomas J. Engellenner, Reg. No. 28,711
`Pepper Hamilton LLP
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 02210
`Tel: (617) 204-5100
`Fax: (617) 204-5150
`
`4
`
`
`
`IPR2013-00594
`U.S. Patent 8,050,652
`
`CERTIFICATE OF SERVICE
`
`
`
`
`dfehrman@mofo.com
`marjomand@mofo.com
`
`
`
` I
`
`
`
`
`
`
`
` hereby certify that on December 18, 2013, a true and accurate copy of this paper,
`DECLARATION OF THOMAS ENGELLENNER IN SUPPORT OF MOTION FOR ADMISSION PRO HAC VICE
`ADMISSION, was served on the following counsel for Petitioner Yamaha of America via email
`and U.S. Express Mail:
`
`David L. Fehrman
`Mehran Arjomand
`Morrison & Foerster LLP
`707 Wilshire Boulevard
`Los Angeles, CA 90017-3543
`Tel: (213) 892-5630
`Fax: (323) 210-1329
`
`
`Dated:
`
` December 18, 2013
`
`
`
`By: /Theodosios Thomas R45159/
`Theodosios Thomas, Reg. No. 45,159
`Black Hills Media, LLC
`5400 Trinity Rd. Suite 303
`Raleigh, NC 27607
`Tel: (919) 233-1942, Ext. 203
`Fax: (919) 233-9907
`Attorney for Patent Owner
`
`
`
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