UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`NORMAN INTERNATIONAL, INC.
`Petitioner
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`v.
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`HUNTER DOUGLAS, INC.
`Patent Owner
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`Case No. IPR2014-01175
`U.S. Patent No. 6,968,884
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`DECLARATION OF MR. FREDRICK L. WHITMER IN SUPPORT OF
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`MOTION FOR PRO HAC VICE ADMISSION
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`Patent Owner Exhibit 2004
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`I, Fredrick L. Whitmer, am over eighteen years of age and would be
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`competent to testify as to the matters set forth herein if called upon to do so.
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`1. I am a member in good standing of the state bars of New York and New
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`Jersey, as well as the following Federal Courts:
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`a. U.S. Supreme Court;
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`b. U.S. Court of Appeals for the Second Circuit;
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`c. U.S. Court of Appeals for the Third Circuit;
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`d. U.S. Court of Appeals for the Fourth Circuit;
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`e. U.S. Court of Appeals for the Seventh Circuit; and
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`f. U.S. Court of Appeals for the Tenth Circuit.
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`2. I have not been suspended or disbarred from practice before any court or
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`administrative body.
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`3. I have never had an application for admission to practice before any court
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`or administrative body denied.
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`4. No sanction or contempt citation has been imposed against me by any
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`court or administrative body.
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`5. I have read and will comply with the Office Patent Trial Practice Guide
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`and the Board’s Rules of Practice for Trials set forth in part 42 of 37
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`C.F.R.
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`Patent Owner Exhibit 2004
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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.
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`§ 11.19(a).
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`7. I am familiar with the subject matter at issue in the proceeding. I am
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`counsel for Hunter Douglas Inc. in a co-pending legislation, Hunter
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`Douglas, Inc. et al. v. Nien Made Enterprise Co. Ltd. et al., No. 1:13-cv-
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`01412-MSK-MJW (D. Colo.) in which U.S. Patent No. 6,968,884 is
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`currently asserted against Petitioner Norman International, Inc. In the co-
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`pending litigation, I have reviewed prior art, developed validity
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`arguments, developed claim construction arguments, filed and responded
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`to motions regarding personal jurisdiction, stay, and scheduling. I
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`therefore have an established familiarity with the subject matter at issue
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`in this proceeding, including the prior art on which Petitioner relies in its
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`request.
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`8. I am an experienced litigation attorney, with experience in numerous
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`litigations involving patent infringement and validity in District Courts
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`across the country, including experience in jury and bench trials,
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`Markman hearings, and Federal Circuit oral arguments in patent
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`infringement litigation. My biography is attached hereto as Attachment
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`A.
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`Patent Owner Exhibit 2004
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`9. I previously applied for, and was granted, pro hac vice admission to
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`appear before the Patent Trial and Appeal Board in IPR2014-00283 on
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`behalf of Patent Owner Andrew J. Toti Testamentary Trust and its
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`exclusive licensee, Hunter Douglas Inc. See IPR2014-00283, Papers 24
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`and 28.
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`I declare under penalty of perjury that the foregoing Declaration is true and
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`correct.
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`September 24, 2015
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`67717702V.2
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`s/Fredrick L. Whitmer
`Fredrick L. Whitmer
`Kilpatrick Townsend & Stockton LLP
`The Grace Building,
`1114 Avenue of the Americas
`New York, NY 10036-7703
`Tel: (212) 775-8773
`Fax: (212) 775-8821
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`Patent Owner Exhibit 2004
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`Attachment A
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`Frederick L. Whitmer
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`PARTNER
`The Grace Building, 1114 Avenue of the Americas
`New York, NY, 10036-7703
`USA
`t +1 212.775.8773
`f +1 212.775.8821
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`Fwhitmer@kilpatricktownsend.com
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`Services
`Antitrust & Trade Regulation; Complex Commercial Litigation; Intellectual Property Litigation; Government & Regulatory;
`Antitrust & Trade Regulation
`Industries
`Technology & Software
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`Fred Whitmer is the Managing Partner of the firm's New York office. He focuses his practice in intellectual property and business
`litigation. Mr. Whitmer's patent litigation experience has involved a wide array of technologies across many industries, ranging
`from the simple mechanical to complex computer software and systems patents, to medical devices and chemical products. He
`has successfully represented both plaintiffs and defendants in patent infringement matters. Mr. Whitmer has tried cases to
`successful verdict and appeal for nearly three decades in courts around the country in cases before both judges and juries.
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`Complementing his extensive intellectual property litigation experience, Mr. Whitmer has wide-ranging general litigation
`experience in several high profile matters, including in antitrust, telecommunications, libel, press rights, privacy issues and trade
`secrets. He has litigated complex matters on behalf of Fortune 100 clients throughout the country and abroad. Mr. Whitmer has
`also supplemented his trial experience with a substantial appellate practice, successfully representing both appellants and
`appellees.
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`Mr. Whitmer’s article titled "Claim Construction in Patent Cases: A Question of Law?" published in Landslide Vol. 2, No. 6 in
`July/August 2010 was cited in the dissenting opinion in the recent Phillips en banc decision in the U.S. Court of Appeals for the
`Federal Circuit.
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`In 2000, the National Law Journal named Mr. Whitmer one of the top 10 litigators then practicing with firms whose principal
`offices were New Jersey-based, saying, "Mr. Whitmer has appeared before the Supreme Court of New Jersey four times and
`won all four cases, including one that helped create the law interpreting the New Jersey Business Corporation Act and another,
`while representing two large media entities, that established rules for the press in court." He has also been listed for many years
`in Who's Who in American Law. Mr. Whitmer has been honored as a 2012 Top Rated Lawyer in Commercial Litigation by
`Martindale-Hubbell in the Litigation Special Report issue of The American Lawyer and Corporate Counsel magazines. Mr.
`Whitmer was recognized as a New York "Super Lawyer" in 2014 and the three years immediately preceding by Super Lawyers
`magazine. He was named a 2013, 2014 and 2015 "IP Star" by Managing Intellectual Property magazine. Mr. Whitmer is AV
`Preeminent® rated by Martindale-Hubbell.*
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`*AV®, BV®, AV Preeminent® and BV Distinguished® are registered certification marks of Reed Elsevier Properties Inc., used under in accordance
`with the Martindale-Hubbell certification procedures, standards and policies.
`Experience Highlights
`Patent litigation for large, international bank
`Represented one of the world’s largest banks that was accused of infringing patents involving payment by telephone software
`systems, which settled after successful transfer and attorney disqualification motions.
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`Esbin & Alter LLP v. Zappier et al.
`Retained to defend independent software developer on a pro bono basis against former law firm employer that alleged copyright
`infringement, fraud, breach of fiduciary duty and trade secret theft. Negotiated a favorable settlement for the software developer
`that resulted in a dismissal of all claims, as well as permitting the software developer to sell the accused software product.
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`Page 1 of 3
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`www.kilpatricktownsend.com
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`©2010-2015 Kilpatrick Townsend & Stockton LLP
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`Esbin & Alter, LLP v. Zappier et al., No. 1:08-cv-00313 (S.D.N.Y. filed Jan. 14, 2008).
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`GeoTag Inc. v. Victorinox Swiss Army Inc.
`Successfully defended Victorinox Swiss Army, Inc. against claims of infringement of a patent related to a geographic search
`function in the Eastern District of Texas. Matter settled.
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`GeoTag Inc. v. Where 2 Get It Inc. et al., No. 11-0175 (E.D. Tex. filed Mar. 15, 2011).
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`Inter partes reviews for Hunter Douglas, Inc. and Andrew J. Toti Testamentary Trust
`Kilpatrick Townsend filed an infringement lawsuit on behalf of Hunter Douglas Inc., manufacturer of window coverings and
`architectural products, and Andrew J. Toti Testamentary Trust against Norman International for infringement of window covering
`patents. Norman responded by filing four IPRs on four patents in the lawsuit. Kilpatrick Townsend successfully argued that three
`of the IPR trials should not be instituted and was able to limit the IPR trial to two claims in the fourth. Decisions on institution
`were issued on June 20, 2014.
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`United States Patent and Trademark Office Patent Trial and Appeal Board, Case Numbers IPR2014-00276, IPR2014-00282,
`IPR2014-00283 and IPR2014-00286.
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`Patent litigation for a German orthodontic equipment manufacturer
`Represented a German orthodontic equipment manufacturer that was accused of infringing a patent held by one of the world's
`largest dental equipment companies. After a full trial on the merits, the jury found no infringement. The Federal Circuit affirmed.
`
`First Amendment case for two large media entities *
`Represented two large media entities in a landmark First Amendment case. Successfully kept pretrial proceedings in a notorious
`criminal case open to both the public and the press, having won at every stage, trial, intermediate appellate, and the New Jersey
`Supreme Court levels all in a span of 60 days.
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`EON Corp. IP Holdings, LLC v. Motorola Mobility LLC
`On March 5, 2014, the firm was successful on behalf of Motorola Mobility in winning summary judgment against EON Corp. IP
`Holdings, LLC less than three weeks before trial, in a case that had been pending in the District of Delaware for nearly 3 ½
`years. We defended Motorola Mobility against EON, a resurrected shell of a 1980s-era interactive television venture, that has
`asserted its patents against dozens of defendants. The court’s grant of summary judgment was decided on the relatively
`uncommon ground of invalidity by indefiniteness, and entirely invalidated EON’s patent, ending the case at the district court.
`EON Corp. IP Holdings, LLC v. FLO TV Inc., No. 10-812-RGA, 2014 WL 906182 (D. Del. Mar. 4, 2014).
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`Patent litigation for global industrial company
`Represented a global industrial company in a patent case involving a plastic carrier for integrated circuit chips. The firm obtained
`a defense verdict after a three-week bench trial that resulted in the invalidation of the claims of the patent that had been
`asserted against the client and the Federal Circuit affirmed in this opinion.
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`*Experience gained by attorney prior to joining Kilpatrick Townsend
`Publications, Articles and Speaking Engagements
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`Three Upcoming Patent Law Decisions Expected from the Supreme Court
`American Bar Association's (ABA) IP Litigation Committee, May 27, 2015
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`Is An Express Contract Always Better?
`Law 360, October 03, 2011
`Regarding Stanford v. Roche and contractual ownership rights to intellectual property.
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`Is a §145 Action More a 'Trial' in a District Court or an 'Appeal' in a Circuit Court? The Federal Circuit Answers in Favor of
`Trial
`Intellectual Property & Technology Law Journal, February 01, 2011
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`i4i Dots the i's. Microsoft Doesn't. Result: $240 Million Verdict
`New York Law Journal, October 20, 2010
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`Claim Construction in Patent Cases: A Question of Law?
`Landslide, July 26, 2010
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`Page 2 of 3
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`www.kilpatricktownsend.com
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`©2010-2015 Kilpatrick Townsend & Stockton LLP
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`i4i v. Microsoft, Implications of the Landmark Patent Infringement Case, TeleBriefing
`Law Seminars International, April 29, 2010
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`Guns or Butter: Can You Afford Both?
`New Jersey Chapter of American Corporate Counsel Association, November 19, 2009
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`Leverage Economic Constraints to Strategic Advantage
`New York Law Journal, October 05, 2009
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`Information Technology Litigation: Law and Analysis
`American Lawyer Media, May 31, 2008
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`Litigation Is War, Strategy and Tactics for Litigation Battlefield
`West Legal Works, October 31, 2007
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`Professional & Community Activities
`American Bar Association, Member
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`New Jersey State Bar Association, Member
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`Education
`Columbia Law School, J.D.
`Harlan Fiske Stone Scholar
`Wabash College, B.A.
`with honors, Phi Beta Kappa
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`Bar Admissions
`New York
`New Jersey
`
`Admissions
`U.S. Supreme Court
`U.S. Court of Appeals for the Second Circuit
`U.S. Court of Appeals for the Third Circuit
`U.S. Court of Appeals for the Fourth Circuit
`U.S. Court of Appeals for the Seventh Circuit
`U.S. Court of Appeals for the Federal Circuit
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`Page 3 of 3
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`www.kilpatricktownsend.com
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`©2010-2015 Kilpatrick Townsend & Stockton LLP