AFFIDAVIT OF MR. LUKE L. DAUCHOT IN SUPPORT OF
`MOTION FOR PRO HAC VICE ADMISSION
`
`I, Luke L. Dauchot, being duly sworn and upon oath, hereby attests to the
`
`following:
`
`1. I am a member in good standing of the Bars of the State of California,
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`Ohio and Illinois, as well as the following Federal Courts:
`
`U.S. Court of Appeals, Federal Circuit; U.S. Court of Appeals, Sixth,
`
`Seventh and Eleventh Circuits; U.S. District Court, Northern, Eastern,
`
`Central and Southern Districts of California; U.S. District Court, District
`
`of Colorado; U.S. District Court, Northern District of Ohio; U.S. District
`
`Court, Eastern District of Michigan; U.S. District Court, Northern
`
`District of Illinois; and Trial Bar, U.S. District Court, Northern District of
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`Illinois.
`
`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
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`or administrative body denied;
`
`4. No sanction or contempt citation has been imposed against me by any
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`court or administrative body;
`
`BNA/Brose Exhibit 1030
`IPR2014-00416
`
`

`

`5. I have read and will comply with the Office Patent Trial Practice Guide
`
`and the Board's Rules of Practice for Trials, as set forth in Part 42 of the
`
`C.F.R;
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`6. I will be subject to the USPTO Rules of Professional Conduct set forth in
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`37 C.F.R. §§ 11.101 et. seq. and disciplinary jurisdiction under 37 C.F.R.
`
`§ 11.19(a);
`
`7. I have applied to appear pro hac vice in the following proceedings before
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`the Office in the last three (3) years:
`
`NuVasive, Inc. v. Warsaw Orthopedic, Inc., IPR2013-00206 (granted on
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`May 15, 2013, Paper 10)
`
`NuVasive, Inc. v. Warsaw Orthopedic, Inc., IPR2013-00208 (granted on
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`May 15,2013, Paper 10)
`
`NuVasive, Inc. v. Warsaw Orthopedic, Inc., IPR2013-00395 (granted on
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`February 25,2014, Paper 19)
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`NuVasive, Inc. v. Warsaw Orthopedic, Inc., IPR2013-00396 (granted on
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`February 25, 2014, Paper 19); and
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`8. I am an expereinced litigation attorney, with experience in numerous
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`lawsuits involving patent infringement in District Courts across the
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`2
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`

`

`country,
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`including expenence m JUry and bench trials, Markman
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`hearings, and Federal Circuit oral arguments m patent infringement
`
`litigation. My biography is attached hereto as Exhibit A.
`
`I am lead counsel for Petitioner Brose North America, Inc. in the co(cid:173)
`
`pending litigation UUSI, LLC v. Robert Bosch LLC and Brose North
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`America, Inc., No. 2:13-cv-10444 (E.D. Mich) in which U.S. Patent No.
`
`8,217,612 is asserted. I am familiar with the subject matter at issue in this
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`proceeding,
`
`including the prior art on which Petitioners rely
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`in
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`connection with this proceeding.
`
`3
`
`

`

`DATED: August 1, 2014
`
`Respectfully submitted,
`
`ope Street
`333 Sou -
`Los Angeles, CA 90071
`(213) 680-8400
`
`Sworn to and subscribed before me,
`this 9e!t.
`day of~ , c1 o 1¥ .
`(/
`
`~ ~~T
`
`My CommiMwn Expires: B/Jt /JOlt:,
`
`"OmCIAL SEAL"
`Gloria L. Stachnik
`Notary Pablk, State of Illinois
`Mr Cr
`I a 1Q1n1 A .... 21, 2116
`
`I
`
`4
`
`

`

`
`EXHIBIT A
`
`EXHIBIT A
`
`
`
`
`
`

`

`Luke L. Dauchot, P.C.
`
`Professional Profile
`
`
`
`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 selected for inclusion in The Best
`Lawyers in America since 2013 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 Litigators. 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. A leading computer, mobile device and media player company
`United States District Court for the Eastern District of Texas(October 2013)
`As trial counsel for a computer, mobile device and media player company,
`obtained a complete defense victory. Wi-LAN sought $250 million in
`damages from the computer, mobile device and media player company
`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.
`In re Lutz Biedermann and Jurgen Harms (appeal)
`United States Court of Appeals for the Federal Circuit (October 2013)
`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 Law360, “Fed. Circ. Revives Bone Screw Patent
`Claim,” October 2013; IPO Daily News, “USPTO’s Use of Additional
`Reference in Patent Appeal: A New Ground of Rejection,” and other
`
`Partner
`Chicago
`Phone: +1 312-862-9292
`Fax: +1 312-862-2200
`Los Angeles
`Phone: +1 213-680-8348
`Fax: +1 213-808-8098
`luke.dauchot@kirkland.com
`
`Practice Areas
`Corporate
`Intellectual Property
`Litigation
`Mergers & Acquisitions
`Patent Infringement Litigation
`Private Equity
`
`Admissions
`2004, California
`1988, Ohio
`1986, Illinois
`
`Education
`Case Western Reserve
`University School of Law,
`J.D. 1986
`Case Western Reserve
`University, B.A. 1983, magna
`cum laude, Phi Beta Kappa
`
`Languages
`Dutch
`French
`
`www.kirkland.com
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`

`

`
`
`publications.
`Medtronic v. NuVasive (patent litigation)
`United States District Court for the Southern District of
`California(September 2011)
`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(July
`2011)
`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).
`HiTherm, LLC and Aniqu Sufi v. Steven G. Keener, et al. (trade secret)
`Los Angeles County Superior Court (November 2013)
`Lead counsel to Boeing and an employee in connection with an action for
`misappropriation of trade secrets and breach of contract related to a
`chemical coating used to maintain aircraft exteriors.
`Ericsson Inc. v. D-LINK Systems, Inc. (patent litigation)
`United States District Court for the Eastern District of Texas (June 2013)
`Trial counsel for Intel Corporation.
`CooperSurgical, Inc. v. Teleflex (patent litigation)
`United States District Court for the Southern District of New York (October
`2013)
`Lead trial counsel for Teleflex Corporation in medical device case.
`Case resolved following successful defense of preliminary injunction
`motion.
`Finjan, Inc. v. McAfee, Inc. (patent litigation)
`United States District Court of Delaware (November 2012)
`Represented McAfee, Inc. as lead trial counsel in patent litigation brought
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`www.kirkland.com
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`

`

`
`
`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(November 2010,
`affirmed on appeal January 2012)
`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 (May 2008)
`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 (September
`2007)
`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(September 2004)
`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).
`Other Matters
`Admitted pro hac vice in number of Inter Partes Review proceedings
`before the USPTO Patent Trial and Appeal Board.
`Completed successful appeals in United States Court of Appeals for the
`Federal, Sixth, and Seventh Circuits.
`Tried additional cases/expedited remedy proceedings in venues
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`www.kirkland.com
`
`

`

`
`
`throughout the country.
`Secured favorable settlements in patent, trademark and trade secret
`litigation pending in venues throughout the country.
`Luke began his jury trial career as a second-chair a few years out of law
`school defending Cleveland’s local railroad and utility company in FELA and
`personal injury type cases. These matters were in addition to large-scale
`antitrust and securities litigation cases on which he undertook more traditional
`work as an associate in a major law firm. He first-chaired his first case as a
`fourth-year associate in the defense of a utility company that conceded
`liability and faced a jury demand of roughly $1.5 million. Luke “won” when the
`jury returned a verdict of roughly $100,000. From that point on, Luke
`first-chaired many commercial and intellectual property cases, both on the
`defense and plaintiff’s side. Among his cases while an attorney in Cleveland
`were the successful defense of the Shell Oil Company in a jury patent
`infringement trial in the Northern District of Ohio, the successful defense of
`Zapata Inc. in a jury patent infringement trial in the Southern District of
`Florida, a multi-million dollar jury verdict on behalf of the Cleveland Cliffs Iron
`Ore Mining Company in the Lake County, Minnesota, District Court (at the
`time, the highest award in the court’s history), and an award on behalf of the
`Adams Construction Company in the Cleveland Cuyahoga County Court of
`Common Pleas in which the jury, after asking the Court whether it was limited
`to what Luke asked for, awarded more than the requested relief.
`
`Memberships & Affiliations
`
`American Bar Association, Intellectual Property Law and Litigation Sections
`American Intellectual Property Law Association
`Los Angeles Intellectual Property Law Association
`Judge Paul R. Michel Intellectual Property American Inn of Court – Executive
`Committee Member
`Civic Memberships
`Member, President’s Visiting Committee, St. Ignatius High School, Cleveland,
`Ohio
`
`Other Distinctions
`
`Benchmark Litigation 2014, Local Litigation Star
`Managing Intellectual Property, IP Stars 2013
`IAM Patent 1000: The World's Leading Patent Practitioners, 2012 – 2013
`The Legal 500 U.S., Recommended Lawyer, 2012 – 2014
`Law360's "2011 MVP"
`The Daily Journal’s "Top 75 Intellectual Property Lawyers in California," 2009
`
`www.kirkland.com
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`

`

`
`
`– 2013
`The Recorder's 2011 "Attorneys of the Year"
`"Southern California Super Lawyers," 2009 – 2014
`The Best Lawyers in America, 2013 – 2015
`Professional Activities
`Intellectual Property Law Section of American Bar Association, IP Section
`Liaison to ABA Litigation Section
`Dean's Visiting Committee, Case Western University Law School
`President's Visiting Committee, St. Ignatius High School, Cleveland, Ohio
`Executive Committee, Judge Paul R. Michel Intellectual Property American
`Inn of Court
`
`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 · January 2005
`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
`· January 2001
`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
`
`www.kirkland.com
`
`

`

`Luke L. Dauchot - The Federal Circuit’s De Novo Review of Patent Claim
`Construction: A Need for a More Balanced Approach, 18 Am. Bar Ass’n Sec.
`Pub. I.P.L. 1, 4 (1999)
`
`
`
`Seminars
`
`“International Exhaustion: United States” Licensing Executives Society,
`Königswinter, Germany, March 2014
`"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?";
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`www.kirkland.com
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`

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`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
`
`
`
`www.kirkland.com
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`