UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Google Inc., Samsung Telecommunications America, LLC, Samsung
`Electronics America, Inc., and Samsung Electronics Co., Ltd.
`Petitioners
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`v.
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`Micrografx, LLC
`Patent Owner
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`1
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`Case IPR2014-00532
`Patent 5,959,633
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`DECLARATION OF DAVID S. ALMELING IN SUPPORT OF
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` PETITIONERS’ MOTION FOR PRO HAC VICE ADMISSION
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`GOOGLE-1009
`Google Inc. v. Micrografx LLC
`IPR2014-00532
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`Proceeding No.: IPR2014-00532
`Attorney Docket: 19473-0309IP1
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`I, David S. Almeling, declare as follows:
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`1.
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`I am a Partner with the law firm of O’Melveny & Myers LLP. I
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`represent and advise Petitioners Google Inc. (“Google”) and Samsung
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`Telecommunications America, LLC, Samsung Electronics America, Inc.,
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`and Samsung Electronics Co., Ltd. (collectively, “Samsung”) in connection
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`with the above-captioned inter partes review (“IPR”) proceeding and in
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`connection with the underlying district court litigations (Micrografx, LLC, v.
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`Google, Inc. et al., Case No. 3:13-cv-03595-N (N.D. Tex. 2013) and
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`Micrografx, LLC, v. Samsung Telecommunications America, LLC et. al.,
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`Case No. 3:13-cv-03599-N (N.D. Tex 2013)) on the patent at issue in this
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`IPR, U.S. Patent No. 5,959,633 (“’633 Patent”).
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`2.
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`I have been a member in good standing of the Bar of the State of
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`California since 2005. My California State Bar number is 235449. I am
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`also admitted to practice before numerous federal courts:
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`a.
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`b.
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`c.
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`d.
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`e.
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`U.S.D.C. for the Northern District of California (since 2006);
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`U.S.D.C. for the Eastern District of California (since 2006);
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`U.S.D.C. for the Southern District of California (since 2011);
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`U.S.D.C. for the Central District of California (since 2012);
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`U.S.D.C. for the Eleventh Circuit (since 2005);
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`f.
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`g.
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`h.
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`Proceeding No.: IPR2014-00532
`Attorney Docket: 19473-0309IP1
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`U.S.D.C. for the Ninth Circuit (since 2007);
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`U.S.D.C. for the Federal Circuit (since 2009); and
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`U.S. Supreme Court (since 2009).
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`3.
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`I practice litigation, primarily patent infringement litigation, and have
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`done so throughout my career as an attorney. I have litigated dozens of
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`patent cases across the country, including in California, Delaware, Florida,
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`Nevada, Pennsylvania, Texas, Washington, and Wisconsin. A copy of my
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`biography is provided as Appendix A.
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`4.
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`I have been actively involved in the present IPR proceeding regarding
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`the ’633 Patent, and in the related IPR proceedings concerning U.S. Patent
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`Nos. 6,552,732 (“’732 Patent”) and 6,057,854 (“’854 Patent”). The two
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`related IPR proceedings have Case Nos. IPR2014-00534 and IPR2014-
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`00533, and the ’732 Patent and ’854 Patent are also asserted against the
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`Petitioners in the same above-identified district court litigations as the ’633
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`Patent. I represent Petitioners in these concurrent litigations involving the
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`’633, ’732, and ’854 Patents, and I have therefore extensively reviewed each
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`of the patents and gained significant familiarity with the claim construction
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`issues in those cases, which significantly overlap with the corresponding
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`issues in these IPR proceedings. Moreover, not only have I reviewed and
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`understand each of the ’633, ’732, and ’854 Patents and their corresponding
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`file histories, but my work in the concurrent litigation has also resulted in
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`Proceeding No.: IPR2014-00532
`Attorney Docket: 19473-0309IP1
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`my detailed review of the Petition for Inter Partes Review (including the
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`proposed invalidity grounds therein, the cited references, and exhibits), the
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`accompanying Declaration of Dr. Lastra, and the Board’s Decision
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`instituting Inter Partes Review in each of in these IPR proceedings (Case
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`Nos. IPR2014-00532, IPR2014-00533, and IPR2014-00534).
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`5.
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`The prior art references at issue in the IPR proceedings were also at
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`issue in the underlying litigations, where they were disclosed in invalidity
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`contentions that I supervised and signed.
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`6.
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`Since 2009, I have represented Petitioners in connection with many
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`patent litigations and PTO proceedings regarding the technology at issue in
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`this IPR, which relates generally to Geographical Information Systems
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`(“GIS”) and/or graphics technology:
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`a.
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`Tierravision Inc., v. Research in Motion Ltd. et al., Case No.
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`3:11-CV-0639 (S.D. Cal.): I represent Google as counsel of
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`record concerning Reissue No. RE41983, titled “Method of
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`Organizing and Compressing Spatial Data.” I have also been
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`advising Google regarding Inter Partes Reexamination Control
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`No. 95/001,801 regarding this patent.
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`Proceeding No.: IPR2014-00532
`Attorney Docket: 19473-0309IP1
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`b. Walker Digital LLC v. Google, Inc. et al., Case No. 1:11-CV-
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`00309 (D. Del.): I represent Google and Samsung
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`Telecommunications America, LLC (“STA”) as counsel of
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`record concerning U.S. Patent No. 6,199,014, titled “System for
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`Providing Driving Directions with Visual Cues.” I have also
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`been advising Google and STA regarding Inter Partes
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`Reexamination Control No. 95/002,031 regarding this patent.
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`c. Webmap Techs. LLC v. City Accommodations Network Inc. et
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`al., Case No. 2:09-CV-00343 (E.D. Tex.): I represented Google
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`as counsel of record concerning U.S. Patent No. 6,772,142,
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`titled “Method and Apparatus for Collecting and Expressing
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`Geographically-Referenced Data.” I also advised Google
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`regarding Inter Partes Reexamination Control No. 95/000,554
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`regarding this patent.
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`d.
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`Vederi, LLC v. Google Inc., Case No. 2:10-cv-07747 (C.D.
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`Cal.): I represent Google as counsel of record concerning four
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`patents-in-suit: U.S. Patent Nos. 7,239,760 (“System and
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`Method for Creating, Storing, and Utilizing Composite Images
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`of a Geographic Location”), 7,805,025 (“System and Method
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`for Creating, Storing and Utilizing Images of a Geographic
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`Proceeding No.: IPR2014-00532
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`Location”), 7,577,316 (same title) and 7,813,596 (same title). I
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`have been advising Google regarding Inter Partes
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`Reexamination Control Nos. 95/000,681, 95/000,682,
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`95/000,683, and 95/000,684 regarding these patents, and I have
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`applied to appear pro hac vice in these proceedings.
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`e.
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`Visual Real Estate, Inc., v. Google, Inc., Case No. 3:14-cv-
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`00274 (M.D. Fla.): I represent Google as counsel of record
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`concerning three patents-in-suit: U.S. Patent Nos. 7,389,181
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`(“Apparatus and Method for Producing Video Drive-By Data
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`Corresponding to a Geographic Location”), 7,929,800
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`(“Methods and Apparatus for Generating a Continuum of
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`Image Data”), and 8,078,396 (“Methods for and Apparatus for
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`Generating a Continuum of Three Dimensional Image Data”). I
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`have been advising Google regarding IPR Case Nos. IPR2014-
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`01338, IPR2014-01339IPR2014-01340, and IPR2014-01341
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`regarding these patents.
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`f.
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`Silver State Intellectual Technologies, Inc. v. Google Inc. et al.,
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`Case No. 2-14-cv-00662 (D. Nev.): I represent Google as
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`counsel of record concerning U.S. Patent Nos. 6,525,768
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`(“Positional Camera and GPS Data Interchange Device”),
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`Proceeding No.: IPR2014-00532
`Attorney Docket: 19473-0309IP1
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`6,529,824 (“Personal Communication System for
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`Communicating Voice Data Positioning Information”),
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`7,475,057 (“System and Method for User Navigation”),
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`7,650,234 (“Technique for Effective Navigation Based on User
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`Preferences”), 8,538,498 , and 8,700,312 (“Personal
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`Communication System to Send and Receive Voice Data
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`Positioning Information”).
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`g.
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`I have also represented Petitioners in other, non-public disputes
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`regarding Petitioners’ GIS and graphics technologies.
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`7.
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`Through this work, I have developed in-depth knowledge of the issues
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`and technology within GIS and graphics technologies. This knowledge
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`includes my analysis of a significant number of patents, articles, books,
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`software programs, products, industry conference proceedings, and other
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`materials regarding GIS technologies and graphics technologies. I have used
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`this knowledge on behalf of Petitioners to help prepare invalidity
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`contentions, expert reports on invalidity, requests for inter partes
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`reexamination, and requests for IPR. My GIS and graphics knowledge also
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`includes knowledge gained from working closely with several GIS and
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`graphics experts from academia and industry, both as expert witnesses in
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`litigation and as declarants in PTO proceedings. I have taken and defended
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`expert depositions regarding GIS technologies, including depositions
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`Proceeding No.: IPR2014-00532
`Attorney Docket: 19473-0309IP1
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`regarding invalidity. I have also taken and defended factual depositions
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`regarding GIS technologies, including taking depositions of named inventors
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`of GIS patents and defending depositions of Petitioners’ engineers. And I
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`have had dozens of meetings with Petitioners’ engineers regarding GIS and
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`graphics products.
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`8.
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`I have worked closely with Dr. Anselmo Lastra, who provided a
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`declaration in this IPR, regarding his declaration. I was also involved in
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`identifying and retaining Dr. Lastra as an expert in this IPR.
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`9.
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`I frequently publish and present CLE programs on issues concerning
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`patent law and trade secret law.
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`10.
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`I have not been suspended or disbarred from practice before any court
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`or administrative body. No sanction or contempt citation has been imposed
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`against me by any court or administrative body. I have never had an
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`application for admission to practice before any court or administrative body
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`denied, except that a request for pro hac vice admission in reexamination
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`proceeding 95/001,801 was treated as a petition under 37 C.F.R. § 41.3 and
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`denied due to an absence of information addressing the specific
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`requirements for a petition in a reexamination proceeding.
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`Proceeding No.: IPR2014-00532
`Attorney Docket: 19473-0309IP1
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`11.
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`I have read and will comply with the Office Patent Trial Practice
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`Guide and the Board’s Rules of Practice for Trials set forth in part 42 of the
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`Code of Federal Regulations.
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`12.
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`I will be subject to the USPTO Rules of Professional Conduct set
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`forth in 37 C.F.R. §§ 11.101 et seq. and disciplinary Pursuant to 37 C.F.R. §
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`11.19(a).
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`I am concurrently applying to appear pro hac vice before the
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`Office in IPR2014-00533 and IPR2014—00534 regarding patents asserted in
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`the same district court litigations as the ’633 Patent.
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`13.
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`I hereby declare that all statements made herein of my own
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`knowledge are true and that all statements made on information and belief
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`are believed to be true.
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`I further declare that these statements were made
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`with the knowledge that willful false statements and the like so made are
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`punishable by fine or imprisonment, or both, under Section 1001 of Title 18
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`of the United States Code and that such willful false statements may
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`jeopardize the Validity of the application or any patents issued thereon.
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`Respectfully submitted,
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`Date‘ Tiff? 9‘;
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`if
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`David S. Almeling
`O’Melveny & Myers LLP
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`’
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`

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`
`
` David Almeling
`Partner | dalmeling@omm.com
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`David Almeling is a partner in O’Melveny’s San Francisco office
`and a member of the Intellectual Property and Technology
`Practice Group within the Litigation Department.
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`David represents clients in intellectual property litigation,
`focusing on patent and trade secret litigation. David has been
`successful in every stage of litigation, from securing fast and
`favorable results through early settlements or motion practice to
`preserving victories at the Federal Circuit. Clients also entrust
`David with a wide variety of non-litigation tasks, from conducting
`pre-filing patent analysis to investigating the alleged theft of trade
`secrets.
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`Among his other awards, David was named on The Recorder’s
`2013 list of “Lawyers on the Fast Track,” which identifies 50
`California lawyers “whose early accomplishments indicate they
`will be tomorrow’s top lawyers and leaders.” And David
`received a 2014 Distinguished Legal Writing Award from the
`Burton Awards.
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`David is a nationally respected authority on patents and trade
`secrets. He has published more than a dozen articles in best-in-
`class publications, and he has presented more than a dozen CLE
`presentations. With O’Melveny’s Darin Snyder, David co-
`authored the book Keeping Secrets: A Practical Introduction to
`Trade Secret Law and Strategy, which was published in 2012 by
`Oxford University Press. Richard Lutton, the former Chief Patent
`Counsel for Apple, praised the book as “a must have for every
`general manager and lawyer who hopes to see business and
`clients thrive using their unique information assets.” David holds
`leadership roles in state and national intellectual property bar
`associations.
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`David also has substantial experience and success advising
`companies regarding proceedings in the U.S. Patent & Trademark
`Office. He has been involved in more than two dozen ex parte
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`Resident Office(s)
`San Francisco:
`Two Embarcadero
`Center, 28th Floor
`San Francisco, CA
`94111
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`Telephone
`+1-415-984-8959
`Facsimile
`+1-415-984-8701
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`and inter partes reexaminations. And he is currently involved in
`several Inter Partes Review and Covered Business Method
`proceedings.
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`Illustrative Professional Experience
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`Illustrative Patent Litigation
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`• Defended an industry-leading, Mountain View-based
`multinational public cloud computing company in seven
`patent cases. One in E.D. Tex. involved a web-based
`interactive map technology and resulted in a complete
`victory in which the U.S. Patent & Trademark Office
`invalidated the asserted patent in reexamination. Another
`case in E.D. Tex. involved the use of electronic tokens to
`conduct internet commerce and resulted in a fast and
`favorable settlement. David is currently defending the
`company in several cases: one in S.D. Cal. involving the
`organization of map data on portable wireless devices; one
`in D. Del. involving a method for providing navigational
`instructions that include photographs of locations along
`the route; one in N.D. Tex. involving three patents relating
`to computer graphics; and one in M.D. Fla. involving
`three patents related to generating video and image data.
`• Represented a San Jose-based public semiconductor
`manufacturer in several patent cases. One in E.D. Pa.
`involved voltage and temperature compensated amplifiers
`and resulted in a complete victory in which the case was
`dismissed shortly after O’Melveny filed a Rule 11 motion.
`Two other cases resulted in a fast and favorable
`settlement: one in N.D. Cal. involved all-silicon
`oscillators for generating clock signals and the other in
`E.D. Tex. involved PCI Express technology.
`• Defended a Korea-based, multinational public electronics
`company in several patent cases. One, in E.D. Tex.,
`involved vehicle collision systems and resulted in a
`favorable settlement. David is currently defending the
`company in a case in D. Del. that involves a method for
`providing navigational instructions that include
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`photographs of locations along the route and in a N.D.
`Tex. case involving three patents relating to computer
`graphics.
`• Defended an industry-leading, Cupertino-based
`multinational public consumer electronics and software
`company in a patent case involving antivirus software that
`resulted in a favorable settlement involving the licensing
`of a portfolio of patents shortly after service of strong
`invalidity contentions. (E.D. Tex. and S.D. Fla.)
`• Defended an electronic design automation company in a
`patent case relating to automated design of integrated
`circuits, resulting in a favorable settlement after a
`summary judgment ruling that the plaintiff lacked
`standing. (N.D. Cal.)
`• Represented a biometric payment solutions company in an
`appeal that decided the ownership of fifteen patents,
`resulting in a Federal Circuit decision that gave a
`complete victory to the company. (Federal Circuit)
`• Represented two global electronics companies in their
`assertion of patent infringement claims against a provider
`of wireless networking technology, resulting in a Federal
`Circuit decision approving, for the first time, of proving
`infringement through compliance with a technical
`standard. (Federal Circuit and W.D. Wis.)
`• Currently defending an online video service company in
`two patent cases, both in C.D. Cal.: one involves a
`method for creating and streaming interactive video and
`the other involves a method for managing and marketing
`digital video.
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`Illustrative Trade Secret and other Matters
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`• Represented a biometric sensors company against two
`former employees in an arbitration involving claims of
`breach of contract and trade secret misappropriation.
`David served as second chair at the two-day hearing in
`front of a former federal judge, who found in the
`company’s favor that the former employees breached
`certain provisions of the applicable agreements, including
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`provisions regarding trade secrets. (JAMS)
`• Represented a medical device company in six
`simultaneous cases involving software and hardware used
`to design orthodontic braces, resulting in a favorable
`settlement that included a significant payment to the
`client. The cases involved trade secret, trademark, and
`other claims. (N.D. Cal., W.D. Wis., ITC, and California
`state court)
`• Defended an innovator of HD semiconductor chips in a
`case that involved trade secret, copyright, antitrust, and
`unfair competition claims. After the successful defeat of a
`motion for preliminary injunction on the trade secret
`claim, the litigation was resolved through a favorable
`settlement. (N.D. Cal.)
`• Represented a leader in biometric fingerprint security
`solutions in a case involving trade secret claims, resulting
`in a favorable settlement that created the world's largest
`provider of fingerprint sensors and identity management
`software. (N.D. Cal.)
`• Represented an international nonprofit athletic institution
`in a trademark infringement case against various websites
`that sold fraudulent tickets, resulting in a complete victory
`in the form of permanent injunctions against the websites.
`(D. Ariz. and N.D. Cal.)
`• Represented a large number of companies and individuals
`— both trade secret owners and alleged misappropriators
`— in various aspects of civil and criminal trade secret
`disputes that do not go to court, including devising trade
`secret protection programs, investigating alleged
`misappropriation and valuing trade secret claims, drafting
`cease-and-desist letters, responding to cease-and-desist
`letters, negotiating pre-litigation resolutions, and hiring
`and terminating employees.
`• Represented a nonprofit IP institute and filed an amicus
`brief on their behalf regarding the patentability of basic
`scientific research in the pharmaceutical industry. (U.S.
`Supreme Court)
`• Represented, pro bono, a plaintiff who alleged a school
`district discriminated against her because of her Egyptian
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`nationality and Islamic faith. David helped secure what
`was at the time the second largest award in a hostile
`school environment claim. (Ninth Circuit and D. Nev.)
`• Currently defending the world’s largest manufacturer of
`watersports towboats in a trade secret and design patent
`case involving marine windshields. (M.D. Fla.)
`
`Education
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`Duke University, J.D.: high honors; Order of the Coif; Note
`Editor, Duke Law Journal; Moot Court Board
`University of Florida, B.A., Political Science: highest honors;
`Valedictorian; Phi Beta Kappa
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`Professional Activities
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`Law Clerk, Honorable Gerald B. Tjoflat, US Court of Appeals,
`Eleventh Circuit (2004-05)
`Admitted, California
`Admitted to Practice, US District Court, Northern,
`Southern, Central, and Eastern Districts of California; US Court
`of Appeals, Ninth, Eleventh, and Federal Circuits; US Supreme
`Court
`Co-Chair, Best Practices Subcommittee, Trade Secret Committee
`of the American Intellectual Property Law Association
`Former Chair, Media Relations Subcommittee and the Amicus
`Subcommittee, Trade Secret Committee of the American
`Intellectual Property Law Association
`Former Programming Director, Trade Secret Committee of the
`California Bar Association
`Member, San Francisco Bar Association Section on Intellectual
`Property; American Bar Association Section on Intellectual
`Property Law; The Lawyers and Judges Golf Association of
`Northern California
`Honors, Recipient of a 2014 Distinguished Legal Writing Award
`from the Burton Awards; Named on The Recorder’s 2013 list of
`“Lawyers on the Fast Track,” which identifies 50 California
`lawyers “whose early accomplishments indicate they will be
`tomorrow’s top lawyers and leaders”; named a “Rising Star” in
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`intellectual property litigation in both the 2013 and 2014 surveys
`conducted by Law & Politics Media Inc. and published in
`Northern California Super Lawyers Magazine and San Francisco
`magazine
`Author, “Defend Trade Secrets Act — A Primer, an
`Endorsement, and a Criticism,” Patently-O (May 30, 2014);
`“Recent Trade Secret Reform, and What Else Needs to Change,”
`IP Law 360 (September 23, 2013); “Seven Reasons Why Trade
`Secrets Are Increasingly Important,” 27 Berkeley Technology
`Law Journal 1091 (November 2012), which was judged one of
`the best intellectual property articles published in 2012 and was
`selected for inclusion and republication in the 2013 edition of the
`Intellectual Property Law Review; “Keeping Secrets: A Practical
`Introduction to Trade Secret Law and Strategy” (Oxford
`University Press 2012); “The New, Improved Prior Use Defense:
`The Same Patent vs. Trade Secret Calculus,” Trade Secret
`Litigator (April 17, 2012); “First Patent Reform, Now Trade
`Secret Reform,” Patently-O (October 12, 2011); “Pros and Cons
`of Criminal Prosecution vs. Civil Enforcement,” in Trade Secret
`Litigation and Prosecution in California Supplement (2011); “A
`Look At State Court Trade Secret Stats,” IP Law 360 (March 1,
`2011); “A Statistical Analysis of Trade Secret Litigation in State
`Courts,” 46 Gonzaga Law Review 57 (February 2011), which was
`judged one of the best intellectual property articles published in
`2011 and was selected for inclusion and republication in the 2012
`edition of the Intellectual Property Law Review; “Tracking Trade
`Secret Stats,” IP Law 360 (March 25, 2010); “A Statistical
`Analysis of Trade Secret Litigation in Federal Courts,” 45
`Gonzaga Law Review 291 (March 2010); “A Practical Case For
`Federalizing Trade Secret Law,” IP Law 360 (June 23, 2009);
`“Four Reasons to Enact a Federal Trade Secrets Act," 19
`Fordham Intellectual Property, Media & Entertainment Law
`Journal 769 (April 2009); “Trade Secrets: The Identification
`Issue,” National Law Journal (August 2008); “DOJ, FTC
`Redefine Antitrust Rules on Patent Pools,” National Law Journal
`(October 29, 2007); “The Infringement-Plus-Equity Model: A
`Better Way to Award Monetary Relief in Trademark Cases,” 14
`Journal of Intellectual Property Law 205 (2007); “Patenting
`Nanotechnology: Problems with the Utility Requirement,”
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`Stanford Technology Law Review, N1 (2004); “The Problems of
`Pouring-Rights Contracts,” 53 Duke Law Journal 1111 (2003)
`Speaker, “New Trade Secret Legislation and the Changing Rules
`of Trade Secret Litigation,” Bridgeport Continuing Education
`(June 17, 2014); “Updates on Recent Developments in Trade
`Secret Law: Legislation, Litigation, and Business,” American
`Intellectual Property Law Association (May 16, 2014); “New
`Legal Issues Impacting IP Transactions: Copyrights, Trademarks,
`Domain Names, Patents, and Trade Secrets,” Practicing Law
`Institute (February 27, 2014); “Patents vs. Trade Secrets: Best
`Practices for Protecting and Enforcing IP,” California Bar
`Association Intellectual Property Law Section (August 7, 2013);
`“What Lawyers and Their Clients Need to Know about the
`Changing Balance of Power Between Trade Secrets and Patents,”
`American Intellectual Property Law Association (April 23, 2013);
`“Introduction to Trade Secret Law, Its Increasing Importance, and
`Its Changing Balance with Patent Law,” University of
`Washington School of Law (October 29, 2012); “Understanding
`Patent Law and Trade Secret Law for In-House Counsel and
`Other Non-IP Lawyers," Bridgeport Continuing Education
`(August 24, 2012); “Why Trade Secret Litigation is Booming,
`and Why That Matters to Clients,” Sonoma County Bar
`Association (January 23, 2012); “Why Every Lawyer Should
`Know More about Trade Secret Law," California Bar Association
`IP Institute (November 11, 2011); “Six Reasons That Trade
`Secrets Matter More and More to American Companies,”
`Bridgeport Continuing Education’s Prosecuting and Defending
`Corporate Raiding, Customer Trade Secret, and Employee
`Mobility Cases (February 25, 2011); “Trade Secret Litigation - A
`Statistical Analysis of Recent Trends and Implications,”
`California State Bar Cyber Institute (January 19, 2011); “Trade
`Secret Considerations for In-House Counsel and Executives,"
`California State Bar Cyber Institute (January 11,
`2011); “Someone Stole My Trade Secrets, Now What Do I Do?”
`Joint CLE provided by O'Melveny & Myers and Navigant
`Consulting (October 12, 2010); “The Evolution of Trade Secret
`Law: Reflecting on 30 Years of the Uniform Trade Secrets Act,”
`Hamline Law Review Symposium (April 16, 2010)
`Adjunct Teaching Position, Trade Secret Law, Santa Clara
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`University School of Law (2014); Advanced Patent Law, Santa
`Clara University School of Law (2007)
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