UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Google Inc., Samsung Telecommunications America, LLC, Samsung
`Electronics America, Inc., and Samsung Electronics Co., Ltd.
`Petitioners
`
`v.
`
`Micrografx, LLC
`Patent Owner
`
`Case IPR2014-00532
`Patent 5,959,633
`
`SECOND DECLARATION OF DAVID S. ALMELING IN
`SUPPORT OF
` PETITIONERS’ MOTION FOR PRO HAC VICE ADMISSION
`
`1
`
`GOOGLE-1010
`Google Inc. v. Micrografx LLC
`IPR2014-00532
`
`

`
`Proceeding No.: IPR2014-00532
`Attorney Docket: 19473-0309IP1
`
`
`
`1.
`
`I, David S. Almeling, declare as follows:
`
`On September 19, 2014, I submitted a Declaration (“first
`
`Declaration”) in this above-captioned inter partes review (“IPR”)
`
`proceeding in connection with my application to appear pro hac vice. I fully
`
`incorporate and reaffirm the facts in my first Declaration.
`
`2.
`
`I have been informed that the Patent Trial and Appeal Board (“the
`
`Board”) conditionally granted the motion for pro hac vice admission of
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`David S. Almeling in this IPR proceeding, subject to the filing of a
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`declaration attesting to all proceedings before the Office in which I have
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`applied to appear pro hac vice in the last three years. This Declaration
`
`provides the requested information.
`
`3.
`
`In the last three years, and in addition to my pending applications in
`
`the above-captioned proceeding (IPR2014-00532) and the related two
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`proceedings (IPR2014-00534 and IPR2014-00533), I have applied to appear
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`pro hac vice before the Office in two sets of Patent Office proceedings, both
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`of which were identified in my first Declaration:
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`a. First, as described in paragraph 6(d) of my first Declaration, I have
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`applied to appear pro hac vice before the Office in the set of
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`reexamination proceedings (Inter Partes Reexamination Control
`
`2
`
`2
`
`

`
`Proceeding No.: IPR2014~00532
`Attorney Docket: 19473—0309IP1
`
`Nos. 95/000,681, 95/000,682, 95/000,683, and 95/000,684). The
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`petitions in those reexamination proceedings are still pending.
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`b. Second, as described in paragraph 10 of my first Declaration, I
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`applied to appear pro hac vice before the Office in another
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`reexamination proceeding (Inter Partes Reexamination Control
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`No. 95/001,801). My application in that reexamination proceeding
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`was treated as a petition under 37 C.F.R. § 41.3 and denied due to
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`an absence of information addressing the specific requirements for
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`a petition in a reexamination proceeding.
`
`4.
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`I hereby declare that all statements made herein of my own
`
`knowledge are true and that all statements made on information and belief
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`are believed to be true.
`
`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
`
`of the United States Code and that such willful false statements may
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`jeopardize the Validity of the application.
`
`Date: September 29, 2014
`
`Respectfully submitted
`
`A’
`
`David S. Almeling
`O’MelVeny & Myers LLP
`
`3
`
`

`
`Resident Office(s)
`San Francisco:
`Two Embarcadero
`Center, 28th Floor
`San Francisco, CA
`94111
`
`Telephone
`+1-415-984-8959
`Facsimile
`+1-415-984-8701
`
`APPENDIX A
`
`David Almeling
`Partner | dalmeling@omm.com
`
`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.
`
`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.
`
`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.
`
`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.
`
`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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`and inter partes reexaminations. And he is currently involved in
`several Inter Partes Review and Covered Business Method
`proceedings.
`
`Illustrative Professional Experience
`
`Illustrative Patent Litigation
`
`• 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.
`
`Illustrative Trade Secret and other Matters
`
`• 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
`
`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
`
`Professional Activities
`
`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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