Jack D. Grimes, Ph.D.
`
`
`
`Expertise
`
` (cid:131)
`
` Wireless data systems
`(cid:131) Computer Graphics
`(cid:131) Ergonomics/Human Factors
`(cid:131)
`Internet Architecture & Security
`(cid:131)
`Internet Payment Systems
`(cid:131) Smart Card Technology
`(cid:131)
`Internet Platform Technology
`(cid:131) Video Capture & Overlay Systems
`(cid:131) Video Display Devices, ASIC Design
`
`(cid:131) User Interface Design
`(cid:131) Video Graphics Architecture
`(cid:131) Engineering Development Practices
`(cid:131) Software development
`(cid:131) Object oriented, software systems
`(cid:131) Compressed Video
`(cid:131) Consumer Television
`(cid:131) Digital Satellite TV Technology
`(cid:131) System Reliability
`
`
`
`
`
`Professional Summary
`Over twenty years experience at the senior levels of management in large and small high
`technology companies. Dr. Grimes has been responsible for incorporating original technology in
`a number of new products. His expertise includes: Internet platform technology, including Java,
`security and payments; Internet payment systems, including credit and debit cards, SET, ACH
`and other payment methods, including chip cards. He is recognized as an industry technologist
`and spokesman with excellent verbal and written communication skills. Dr. Grimes is an
`experienced and well-regarded testimonial expert in intellectual property and contract disputes
`related to video and other technologies.
`
`Employment History
`
`From:
`To:
`
`
`1989
`Present
`
`
`Independent Consultant
`San Jose, CA
`Provide studies, strategies and opinions to industry and the legal
`profession, with particular emphasis on the following areas:
`• Internet commerce strategies including Java, ASP, Unix, NT,
`scalability, security and payments.
`• Payment security, including digital certificates, DES and other
`encryption based approaches.
`• Internet data security approaches, e.g., PKI
`• Financial payments strategies for Internet commerce, including
`credit & debit cards, SET, ACH, and other methods, with special
`emphasis on chip cards.
`• User interfaces & ergonomics.
`• Computer graphics & television video systems.
`
`Résumé of Jack D. Grimes
`Updated 8/14/14
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`Page 1
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`APL 1009
`IPR of U.S. Pat. No. 6,128,290
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`From:
`To:
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`1999
`2000
`Title:
`
`
`• Business, marketing and engineering practices for startup
`companies.
`• Engineering practices for large, object-oriented projects.
`• Engineering practices for electronics design and manufacturing.
`
`ServiceHub Corporation
`Cupertino, CA
`Chief Technical Officer
`Responsible for Internet technology architecture, strategy and
`market development for this internet startup (www.servicehub.com).
`Developed the company’s business plan that combined web-based
`dispatch services with wireless data to SMS and browser capable
`mobile phones. Initiated business alliances with leading European
`Operators that featured data services. Represented the company at
`major wireless data conferences and trade shows in the US and
`Europe.
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`From:
`To:
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`From:
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`From:
`To:
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`Visa International
`1996
`San Francisco, CA
`1999
`Position: Senior Vice President, Technology, Architecture & Strategy
`
`Responsibilities included developing the strategies for Visa in chip
`card technology, management of large-scale software projects, and
`the evaluation of investments in technology companies. Duties
`included management of two technology and strategy groups
`containing over 30 people. One group provided chip card and related
`technology development for new products and services, including
`SET. The other was responsible for the global network and
`processing architecture strategy to replace the current VisaNet
`services. Internal consultant on Internet payment systems.
`
`ICVerify
`1996
`Qakland, CA
`1996
`Position: Vice President, Development
`• Startup, developing and marketing payment systems for mid-
`
`sized merchants.
`Responsibilities included managing the development group, staffing,
`budgets, etc. for this payment systems company. Developed a
`product for Internet payment systems.
`
`1992
`1995
`Position:
`
`
`Taligent, Inc.
`Cupertino, CA
` Director, Technology Evaluation and Evangelism
`• Taligent was founded as a $200M joint venture formed by
`Apple, IBM, and later joined by Hewlett Packard, that
`employed 350 people. Taligent’s charter was to develop
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`Résumé of Jack D. Grimes, Ph.D.
`Updated 8/14/14
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`and deliver a new, object-oriented application environment.
`In December 1995, the joint venture became a subsidiary of
`IBM.
`
`
`1994-1995: Director, Technology Evaluation and Evangelism
`Managed strategic technology acquisitions and major account,
`pre-sales consulting. Duties included:
`• Initiated strategic acquisitions for the products so that the
`technology could be more rapidly delivered to the market.
`• Developed the technology valuation methodology for the
`HP investment. HP became 15% equity owner.
`• Lead the effort to convey benefits to key customers
`(personally and at conferences) within the US, Canada,
`Europe and Japan.
`• 234 formal briefings, including 12 conference presentations.
`53 press interviews/conferences. 12 conference and journal
`papers.
`
`
`
`
`1992-1993: Manager, User Environment Department
`
`Managed one of 5 engineering departments. Promoted to
`Director. Achievements included:
`• Grew and managed seven technical groups, containing 45
`people. Areas included: User Interface implementation,
`User Studies, Human Interface design, High Level Utilities,
`Compound Document, Data Management, Text and
`Internationalization. These teams provided the key, upper
`level capability of the system.
`• Managed a $6M+ development budget.
`• Trained managers providing technical direction when
`needed.
`• Established uniform document architecture over multiple
`subsystems.
`• Brought the projects in on time using internally developed
`scheduling practices.
`
`Mass Microsystems
`1989
`Sunnyvale, CA
`1991
`Position: Vice President, Engineering
`
`Start-up company of 70 people. Developed, manufactured,
`marketed and distributed storage and video peripheral products
`for the Apple Macintosh. Joined as the VP Engineering,
`Corporate Officer and was the senior technical person. Key
`contributor to road show for public offering in November 1989.
`
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`From:
`To:
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`Résumé of Jack D. Grimes, Ph.D.
`Updated 8/14/14
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`Grew and managed the engineering staff of 12 people.
`Accomplishments included:
`• Developed & implemented formal milestone and tracking
`process for engineering that resulted in on-time high quality
`products ready for high volume production.
`• Developed the “QuickImage” video capture product family
`that included 6 hardware products and 2 software products.
`• Developed the “ColorSpace” video overlay product family
`that included 2 hardware products and 2 software products
`• Prosecuted three patents to strengthen IP portfolio.
`• Established major, in-house ASIC development capability
`for new products that achieved a huge technical advantage
`over competitors in the marketplace.
`• Developed new technology, including:
`• Custom ASIC for video overlay products.
`• Video architecture for next generation overlay products.
`• Teleconferencing application.
`• Object-oriented titling overlay application.
`
`Intel Corporation
`1984
`Santa Clara, CA
`1989
`Position: Strategic Marketing, Computers and Coprocessors
`
`Joined Microprocessor Division of Intel to provide systems expertise
`to develop a new family of graphics chips. As Strategic Marketing
`for Computers and Coprocessors performed key corporate role to
`win new accounts for graphics chips and RISC coprocessors and to
`battle Texas Instruments and National Semiconductor in this market.
`Chaired Product Planning Committee for Graphics Business Unit.
`As Product Line Architect for Computer Graphics Components,
`defined the architecture for a family of computer graphics
`components and infused systems and software experience into a
`component-oriented business. Conducted primary and secondary
`market research to guide graphics chip specifications. Conducted
`interviews and presentations with strategic customers for strategic
`accounts. Developed 4 approved business/product proposals; three-
`business/product implementation plans and managed the technical
`applications group for the Graphics Business Unit.
`
`IT&T
`1981
`Stratford, CT
`1984
`Position: Director, Advanced Programming Technology Group
`
`Directed a group of 15 professionals, with a $2M operating
`budget. Developed the architecture, technology and prototypes
`of programming environments. Served as Chairman of the
`
`Résumé of Jack D. Grimes, Ph.D.
`Updated 8/14/14
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`From:
`To:
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`From:
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`Programming Key Technology Steering Group. Major
`achievements included:
`
`• Promoted to Director after one year.
`• Evaluated and approved budgets for a $60M, five year,
`world-wide technology program
`• Planned, coordinated and reviewed IT&T's long range R&D in
`programming technology, world-wide.
`
`Tektronix, Inc.
`1971
`Beaverton, OR
`1981
`Position: Engineering Manager, Graphic Computing Systems Division
`• Technical leader of a major programming project. Received
`increasing management responsibility ending as Engineering
`Manager for the Graphic Computing Systems Division. Directed
`a group of 35 professionals, responsible for moving a graphics
`workstation from concept to market. The key to success was
`balancing innovation with schedule risk and potential product
`volume.
`
`
`System Development Manager, Information Display Systems
`• Directed 15 people for market and application development in
`mechanical engineering drafting and design and analysis segments.
`• Directed final implementation of a finite element modeling
`application system, the FEM181, on a Tektronix graphics
`workstation.
`
`
`Development Manager, Division, Information Display Systems
`• Responsible for concept development of high level language
`machines.
`• Defined language issues and CPU architecture.
`• Developed technology forecasts.
`
`Software Manager, 4051 Desktop Computer
`• Staffed and managed a group of six people.
`(cid:131) Defined and planned implementation of operating system and
`BASIC language translator for this forerunner of the personal
`computer.
`
`Oregon State University
`1974
`Corvallis, OR
`1980
`Position: Assistant Professor, Computer Science
`
`Initiated Computer Science Master’s Degree program at Tektronix.
`Developed and taught graduate courses in computer systems.
`
`Résumé of Jack D. Grimes, Ph.D.
`Updated 8/14/14
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`From:
`To:
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`
`1965
`1971
`Position:
`
`
`
`Iowa State University
`Ames, Iowa
`Instructor (1965-70), Electrical Engineering
`Assistant Professor, Electrical Engineering (1970-71)
`Taught undergraduate & graduate courses in EE and CS.
`
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`Litigation Support Experience
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`2013-14 Goodwin Proctor, NYC and WDC
`Case
`SecureBuy, LLC, Plaintiff and Counterclaim Defendant, v.
`CardinalCommerce Corp, Defendant and Counterclaim Plaintiff,
`US Dist. Court, Dist. of Delaware, C.A. No. 13-1792-LPS
`(On behalf of CardinalCommerce) 3 Patents owned by
`CardinalCommerce, Infringement and Validity
`Expert Report, Infringement, Rebuttal Expert Report, Validity
`Settled in favor of CardinalCommerce, June 2014
`
`2013-14 Morgan, Lewis & Bockius LLP
`Case
`Pragmatus AV, LLC vs Yahoo! Inc.
`US Dist. Court, Dist. of Delaware, C.A. No. 11-cv-902-LPS-CJB
`(On behalf of Yahoo!) 5 Patents
`Non-infringement, multimedia & video conferencing
`Settled, August 2014
`
`Jones Day, Dallas, TX and Palo Alto, CA, et al
`IPR proceedings at USPTO – Schneck, et al, ’409 patent
` (On behalf of Compass Bank, Commerce Bancshares, Inc., and
`First National Bank of Omaha)
`USPTO declaration; access and distribution of digital property
`PTAB review pending
`
`2013-14 Multiple Defendants’ Law Firms
`Case
`EON Corp. IP Holdings, LLC v. Landis+Gyr, et al,
`US District Court for the Eastern District of Texas, Tyler Division,
`Civil Action No. 6:11-cv-00317 (On behalf of multiple
`defendants)
`Patent invalidity; 3 patents, cell sites subdivided into zones,
`Expert Report on Invalidity
`Trial, June 2014, verdict in favor of Plaintiff.
`Status:
`
`
`2012-14 Duane Morris LLP, Philadelphia, PA, and Houston, TX
`EON Corp. IP Holdings, LLC v. AT&T Mobility LLC, et al,
`Case
`US District Court for the District of Puerto Rico, Civil Action No.
`3:2011-cv-01555-FAB. (On behalf of AT&T Mobility)
`Patent invalidity; 3 patents, cell sites subdivided into zones
`Declaration
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`2014
`Case
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`Résumé of Jack D. Grimes, Ph.D.
`Updated 8/14/14
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`2012-14
`Case
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`2013-14 Baker Botts LLP, Palo Alto, CA, and New York, NY
`Case
`John D’Agostino v. MasterCard, et al
`US District Court for the District of Delaware, Filed April 2013
`USPTO PTAB proceeding
`2 patents, secure credit card transactions
`Project:
`Declarations (2)
`Status:
`
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`2012-13 McDermott Will & Emery, Menlo Park
`Case
`MobileMedia Ideas, LLC v. HTC
`US District Court for the Eastern District of Texas, Marshall
`Division, Civil Action No. 2:10-cv-112-JRG
` (On behalf of HTC, three patents out of many asserted)
`Patent Non-Infringement & Invalidity; portable communication and
`data collection device (2), voice controlled terminal (1), Expert
`Report on Invalidity, Expert Deposition
`Post Markman, settled May 2013
`
`Jones Day, Palo Alto, CA
`SmartMetric, Inc. v. MasterCard, International Incorporated, Visa,
`Inc. US District Court for the Central District of California,
`Western Division, Case No. CV 11-7126 MWF (FMOx)
` (On behalf of Visa)
`Patent Non-Infringement; System for automatic connection to a
`network for payments, (1), Expert Report on Non-Infringement.
`Expert Report, Declaration, MSJ
`Status:
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`2013-14 Multiple Defendants’ Law Firms
`Case
`EON Corp. IP Holdings, LLC vs Cisco Systems, Inc., et al
`US District Court for the Northern District of California, Case No.
`12-cv-01011-JST (On behalf of multiple defendants)
`Patent invalidity; 1 patent, wireless telecommunications modem,
`Expert Reports (2)
`MSJ on Non-infringement granted, April 2014.
`Status:
`
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`2013-14 Multiple Defendants’ Law Firms
`Case
`EON Corp. IP Holdings, LLC vs FLO TV Incorporated, et al
`US District Court for the District of Delaware, Civil Action No. 10-
`812-RGA (On behalf of multiple defendants)
`Patent invalidity; 1 patent, wireless telecommunications modem,
`Expert Report, Testified at Evidentiary Hearing on special
`programming needed for 112§6 claims, Feb 2014.
`MSJ on Invalidity granted, March 2014.
`
`Multiple Defendants’ Law Firms
`EON Corp. IP Holdings, LLC vs. t-Mobile, USA, Inc., et al
`
`Project:
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`Project:
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`Status:
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`2012
`Case
`
`Résumé of Jack D. Grimes, Ph.D.
`Updated 8/14/14
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`Eastern District, Tyler, TX, Civil Action No. 6:10-cv-0379-LED
` (On behalf of multiple defendants (12))
`Patent invalidity; wireless telecommunications modem
`Expert Report
`Post Markman, settled October 2012
`
`
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`2011-14 Gibson Dunn & Crutcher LLP, San Francisco, CA
`Case
`Softview LLC v. Apple, Inc. and AT&T Mobility LLC
`District of Delaware, No. 10-389-LPS
` (On behalf of Apple Computer, and AT&T, 2 patents)
`Re-exam, Patent Infringement & Invalidity
`USPTO declarations (2); scalable display of browser content
`USPTO IPR proceedings, stayed
`
`2011-14 Katten Muchin Rosenman LLP, Chicago, IL
`Case
`IPR proceedings at USPTO – SoftView patents (2)
` (On behalf of Kyocera, and Motorola, 2 patents)
`USPTO declarations (2); scalable display of browser content
`USPTO IPR, PTAB rendered all challenged claims invalid, March
`2014
`
`
`2011-12 O'Melvany & Myers, LA
`Case
`MobileMedia Ideas, LLC v. Apple
`US District Court for the District of Delaware, Civil Action No.
`Civil Action No. 10-258-SLR
` (On behalf of Apple, three patents)
`Patent Non-Infringement & Invalidity; portable communication and
`data collection device (2), voice controlled terminal (1), Expert
`Report on Invalidity, Non-Infringement, Expert Deposition
`Trial December 2013
`Status:
`
`
`2009-11 Quinn Emanuel (New York, NY)
`Case
`Soverain v. JC Penney, et al.
`Eastern District, Tyler, TX, No. 6:09-CV-274
` (On behalf of Soverain, three patents, two asserted at trial)
`Patent Infringement, electronic commerce;
`Expert Reports and Declaration, Expert Depositions, Trial
`Testimony
`Jury trial Nov 2011, all defendants except for Avon and Victoria’s
`Secret settled. Jury found direct infringement, patents valid, and
`damages of about $18M.
`
`
`2010-11 Alston Bird (Atlanta, GA)
`Case
`Alexsam v. InComm – Arbitration, Austin, TX (on behalf of
`InComm)
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`Résumé of Jack D. Grimes, Ph.D.
`Updated 8/14/14
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`2010-11
`Case
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`Contract Arbitration - Patent Infringement, debit gift cards
`Expert Report, testimony at hearing
`Ruling from Arbitrator, Oct 2011, no liability to InComm under
`license agreement, Alexsam pays Arbitrator costs
`
`Thompson & Knight, Dallas, TX
`Touchcom v. Bereskin & Parr and H. Samuel Frost, Case No. 1:07-
`cv-00114-JCC-TCB (Eastern Dist, VA, Alexandria Div.)
`(on behalf of B&P and Frost)
`Project: Malpractice, including Patent infringement, Computer controlled
`gas pumps. Expert Reports on invalidity, Rebuttal Expert Reports
`on non-infringement, Expert Deposition, Ensnarement Hearing
`Testimony
`Post Markman – settled Sept 2011
`Status:
`
`
`2009-10 Covington & Burling (SF, CA)
`Case
`AMD v. Samsung, Case No. CV-08-0986-SI (No. Dist CA)
`(on behalf of Samsung)
`Patent Infringement, background video on computer display
`Two Declarations, Expert Report on invalidity, Rebuttal Expert
`Report on non-infringement
`Post Markman – settled Sept 2010
`Status:
`
`
`2009-11 Hunton & Williams, Atlanta, GA and Richmond, VA
`Case
`Travel Tags v. UV Color and InComm, Case No. 0:09-cv-1619-
`JRT-AJB (MN) and InComm/UV Color v. Travel Tags, Case No.
`1:09-CV-1720 TWT (GA), (on behalf of InComm/UV Color)
`Patent Infringement, debit gift cards
`Three Declarations, Expert deposition on declarations
`Post Markman – settled Aug 2011
`Status:
`
`
`2009-12 Hogan and Hartson (LA, CA)
`Case
`St. Clair v. Panasonic Corporation, Nokia Corp., Fujifilm
`Corporation, HTC Corp., et al; Case Nos. C.A. No. 04-1436, 06-
`403, 06-404, 08-371, and 08-373-JJF-LPS, (on behalf of several
`Defendants)
`Patent Infringement, digital cameras
`Expert Report on Invalidity, Expert Deposition
`Post Markman, case stayed & then terminated, Oct 2012
`
`Quinn Emanuel, NYC and Redwood Shores, CA
`Sony Corporation v. Vizio, Inc., Case No. SACV 08-01135-RGK
`(FMOx), US District Court, Central District, Western Division
`(LA), (on behalf of Sony)
`Patent Infringement
`Post Markman, Settled Oct 2009
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`Project:
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`Status:
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`2009
`Case
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`Project:
`Status:
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`Résumé of Jack D. Grimes, Ph.D.
`Updated 8/14/14
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`2008-09
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`2008
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`2007-8
`Case
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`Project:
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`Standley Law, Dublin, OH
`Alexsam v. Evolution Benefits, and Humana, Inc., US District
`Court, Eastern District of TX, Marshall, Case No. 2-07CV-288-DF
`(on behalf of Humana)
`Patent Infringement, Multi-function debit payment cards,
`Rebuttal Expert Report
`Post Markman – settled Nov, 2009
`
`Ropes & Gray, NYC and WDC
`Motorola, Inc v. VTech Communications, Inc. VTech, Ltd.
`Eastern District, Texarkana, TX, No. 5:07-CV-00171 - DF - CMC
` (On behalf of Motorola, four patents)
`Patent Infringement, Telephone Devices, Infringement Expert
`Report, Expert deposition
`Post-Markman - settled November, 2009
`
`Jones Day, Los Angeles, CA
`Technology Development & Licensing v. DirecTV Group, District
`of Nevada, Case No. 2:06-cv-00912-RLH-LRL (on behalf of
`DirecTV)
`Patent Infringement, TV programming system, Expert Testimony at
`Markman Hearing
`Expert declaration, pre-Markman Order, settled Jan 2009
`
`McKool Smith, Dallas, TX
`i2 Technologies v. SAP, ED Texas, Marshall Division, Civil Action
`No. 2-06CV-352 (on behalf of i2)
`Patent infringement
`Post Markman, case settled June 2008, SAP paid i2 $83.3 million
`
`Hunton & Williams – Richmond, Virginia
`Verve, LLC v. Hunton & Williams LLP
`Arbitration - patent representation, Invalidity Expert Report
`Settled, August 2008
`
`DLA Piper US LLP (East Palo Alto)
`Zoran v. ArcSoft, Superior Court of California, County of Alameda,
`case No. RG07311855; (On behalf of Zoran)
`Breach of Contract - ArcSoft owed note repayment to Zoran
`Pre-trial, case settled May 2008
`
`Keker and Van Nest, San Francisco
`Finisar v. Comcast, No. Dist of CA, Case No. C06-04206 WHA;
`(On behalf of Comcast)
`Patent Infringement, Rebuttal Expert Report, Expert Deposition
`
`Résumé of Jack D. Grimes, Ph.D.
`Updated 8/14/14
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`2007-10
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`
`Pre-trial, Expert Report submitted, scheduled vacated pending
`appeal in previous Finisar case, heard Jan 2008.
`Case ended after Comcast won a MSJ on invalidity – July, 2008
`
`Jones Day (New York, NY)
`Soverain v. CDW Corporation, et al. including Newegg, Inc.
`Eastern District, Tyler, TX, No. 6:07-CV-511 - LED
` (On behalf of Soverain, three patents)
`Patent Infringement, electronic commerce;
`Claim Construction Tutorial, Expert Reports and Declaration,
`Expert Deposition, testimony at trial
`Soverain won at jury trial, April 2010,
`Reversed on Obviousness Appeal, CAFC, January 22, 2013
`
`
`2007-11 Orum & Roth, Chicago, IL; Stinson Morrison Hecker, Omaha and
`Kansas City, MO
`Card Activation Technology v. (several matters, including SVS v.
`Card Activation Technology)
`(On behalf of Card Activation Technology)
`Patent Infringement, debit payment card transactions
`Several Declarations in the several matters, PTO re-exam analysis,
`Rebuttal Expert Reports (SVS matter)
`Most defendants settled, cased ended after MSJ during Hearing.
`
`DLA Piper US LLP (East Palo Alto)
`Acer v. HP, and cross complaint, US Dist Court, Western Dist of
`Wisconsin, 07-CV-620-BBC
`Patent Infringement
`All pending cases settled on terms favorable to HP, June 2008
`
`DLA Piper US LLP (East Palo Alto)
`HP v. Acer, ITC Inv. No. 337-TA-606; (On behalf of HP)
`Patent Infringement, 2 patents, Rebuttal Expert Report (’119 patent)
`Patent withdrawn, defense withdrawn, ITC Hearing Feb. 2008
`Case settled prior to ID being issued, June 2008
`
`Heller Ehrman, San Francisco, CA
`Systems America, Inc. v. Rockwell Software, Inc., and Rockwell
`Automation, Inc., Case No.: 03-CV-02232 JF (RS), Northern
`District of California, (on behalf of Systems America).
`Trade Secret & Copyright matter
`Pre-trial, Expert Report submitted, case inactive/abandoned
`
`Jones Day, Los Angeles, CA
`Forgent Networks, Inc v. Echostar Communications Corp, et al,
`Civil Action No. 6:06-CV-208 (LED), Eastern District of Texas,
`
`Cases:
`
`Project:
`
`Status:
`
`2007-8
`Case
`
`Project:
`Status:
`
`2007-8
`Case
`Project:
`Status:
`
`
`2006-7
`Case
`
`Project:
`Status:
`
`2006-7
`Case
`
`Résumé of Jack D. Grimes, Ph.D.
`Updated 8/14/14
`
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`Page 11
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`

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`Project:
`Status:
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`2006-7
`Case
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`Project:
`Status:
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`Project:
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`Status:
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`2005-7
`Case
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`Project:
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`Status:
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`2009
`Case
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`Date:
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`Date:
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`Date:
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`Date:
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`Date:
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`Date:
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`Tyler Division, (on behalf of DirecTV).
`Patent Infringement, Video teleconferencing system
`Expert Report, Cable Group & DirecTV settled.
`Echostar went to trial, won on invalidity
`
`Howrey Simon Arnold & White, LLP (Chicago, IL)
`Rasterex Holdings, LLC. v. Research in Motion Limited, et al,
`Civil Action No. 2003 CV76785; Superior Court of Fulton County,
`State of Georgia; (On behalf of RIM, et al).
`Trade Secret matter
`Pre-trial, Expert Reports submitted by both sides, deposition
`Case settled, May 2008
`
`
`2005-11 Blank Rome (Washington, DC)
`Case
`Centillion Data Systems, LLC v. Convergys Corp.,
`Qwest Communications International, Inc. and QWEST Corp.; So.
`Dist. Indiana, Indianapolis Div., Case No. 1:04-CV-00073-LJM-
`WTL; (On behalf of Centillion/CTIG)
`Patent infringement, Telecom billing system
`Claim Construction Expert Declarations (2), Expert Reports (2),
`Expert depositions (2)
`Case concluded via MSJ, Oct 2009, overturned on appeal by CAFC
`in Jan 2011, remanded for trial, settled January 2014.
`
`Blank Rome (Washington, DC)
`CTI Group (Holdings) Inc. v. BT Group PLC; UK, Claim No.
`PAT04041; (On behalf of Centillion/CTIG).
`Patent infringement, Telecom billing system
`Infringement Case, Expert Declaration
`Trial scheduled for Oct 2007, case settled
`
`Kilpatrick Stockton (Atlanta, GA)
`Data Treasury v. First Data Corporation, Civil Action No. 2:06 CV
`72 (E.D. Marshall, TX) (on behalf of M&T, BB&T, Comerica, co-
`defendants)
`Patent Infringement. Remote image capture, Expert Reports (2),
`Expert deposition
`Comerica, M&T and BB&T settled, early 2010
`
`Sidley Austin (Los Angeles, CA)
`Data Treasury v. First Data Corporation, Civil Action No. 5:03 CV
`39 (E.D. Tx.) (on behalf of First Data Corp., co-defendant)
`Patent Infringement. Remote image capture
`Pre-Trial, case was consolidated with another, schedule vacated
`
`Hunton & Williams (Washington, DC)
`
`Project:
`
`Status:
`
`2006-8
`Case
`
`Project:
`Status:
`
`2006
`
`Résumé of Jack D. Grimes, Ph.D.
`Updated 8/14/14
`
`
`
`
`
`Page 12
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`

`
`Ingenio v. GameLogic and Scientific Games Corp.; Civil Action
`No. 04-1532 (KAJ), Delaware. (On behalf of Ingenio)
`Patent infringement, Lottery game. Infringement Expert Report.
`Rebuttal Validity Expert Report, Expert Depositions.
`Case settled
`
`Hunton & Williams (Washington, DC)
`MercExchange v. eBay and Half.com; Civil Action No. 2:01cv736,
`ED VA, Norfolk. (On behalf of MercExchange)
`Payment systems related. Expert declarations to PTO (2)
`Post-trial, post-appeal. Patent Office Re-examination
`
`Hunton & Williams (Washington, DC)
`Alexsam, Inc. v. FSV Payment Systems, et al.
`Case No. 2-03CV-337, Eastern Dist. Court, Marshall, TX
`(On behalf of Interactive Communications International–InComm)
`Patent Infringement, payment systems related.
`Markman Order, case settled on terms favorable to InComm, 7/05.
`
`
`
`DLA Piper Rudnick Gray Cary (Palo Alto & San Diego, CA)
`Gateway v. HP and HP v. Gateway, 2 matters.
`ITC Inv. No. 337-TA-519; (On behalf of HP, one patent)
`Dist. Court, San Diego, CA (04-CV00613-B); (On behalf of HP,
`four patents)
`Patent Infringement, computer systems related; Declaration on
`Claim Construction, Expert Reports, Expert Depositions, Expert
`Testimony at ITC Hearing, May, 2005.
`ITC 519 matter: ID issued, HP prevailed (claims invalid, claims not
`enabled, patent unenforceable due to inequitable conduct) 10/2005
`San Diego: Post Markman.
`Settlement of all litigation. Gateway paid HP $47 Million 3/2006
`
`Jones Day (New York, NY)
`Soverain v. Amazon.com and The Gap
`Eastern District, Tyler, TX, No. 6:04-CV-528
` (On behalf of Soverain, two patents)
`Patent Infringement, electronic commerce; Declaration on Claim
`Construction
`Post-Markman, settled on terms very favorable to Soverain, 8/2005.
`
`Jones Day (New York, NY)
`Soverain v. Amazon.com and The Gap
`Eastern District, Tyler, TX, No. 6:04-CV-14
` (On behalf of Soverain, three patents)
`Patent Infringement, electronic commerce; Declaration on Claim
`
`
`
`
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`
`
`
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`Date:
`
`
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`
`
`Date:
`
`
`
`
`
`
`Case
`
`Project:
`
`Status:
`
`2005-6
`Case
`
`Project:
`Status:
`
`2004-5
`Case
`
`Project:
`Status:
`
`
`Date:
`
`
`2004-6
`Case
`
`
`
`
`
`Project:
`
`Status:
`
`
`Date:
`
`
`
`2005
`Case
`
`
`
`
`
`Date:
`
`
`Project:
`
`Status:
`
`2004-5
`Case
`
`
`
`Project:
`
`Résumé of Jack D. Grimes, Ph.D.
`Updated 8/14/14
`
`
`
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`Page 13
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`

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`
`
`Status:
`
`
`Date:
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`
`
`2004
`Case
`
`
`
`
`Date:
`
`
`
`
`
`
`Date:
`
`
`Project:
`Status:
`
`2004-5
`Case
`
`Project:
`
`Status:
`
`2003-6
`Case
`
`
`
`Project:
`
`
`
`Date:
`
`
`Status:
`
`2003-4
`Case
`
`
`
`Project:
`
`
`
`Date:
`
`
`
`
`Status:
`
`2003-4
`Case
`
`Project:
`
`Construction, Expert Report on Infringement, Rebuttal ER, Expert
`Depositions
`The Gap settled prior to Markman, amount undisclosed.
`Trial was scheduled for August 2005, settled on terms very
`favorable to Soverain, 8/2005
`Amazon paid Soverain $40 Million to settle all litigation.
`
`McAndrews, Held, & Malloy (Chicago, IL)
`Guidant v. Medtronic.
`Minneapolis, MN, Civil File No. 00-1473
` (On behalf of Guidant, three patents)
`Patent Infringement, atrial defibrillators
`Post-Markman, case settled on terms very favorable to Guidant
`
`DykemaGossett (Bloomfield Hills, MI)
`Ditzik v. Samsung, et al.,
`Eastern Dist of Michigan, Civil Action No. 03-74043 (GER)
` (On behalf of Samsung, ’373 & ’955 patents)
`Patent Infringement, computer displays, Expert Declaration, Expert
`Reports
`Pre-Markman, case settled on terms favorable to Samsung, 7/05.
`
`Hunton & Williams (Charlotte, NC and WDC)
`TradeCard v. S1 Corp and Bank of America, N.A., Civil Action
`No. 03-CIV-1468 (AKH), So. Dist of NY
` (On behalf of BofA & S1, ’588 patent)
`Patent Infringement, automated trading system. Declaration on
`claim construction, Expert Reports on Invalidity and Non-
`infringement, Expert Depositions, Testified at trial.
`Trial 3/06, Jury verdict: non-infringement and patent invalid.
`
`Jenkens & Gilchrist (Chicago)
`STMicroelectronics, Inc., v. Broadcom Corporation, Civil Action
`No. 4:02 CV 362 (E.D. TX, Sherman) (on behalf of STM, counter
`defendant)
`Patent Infringement, ’712 patent, Expert Report on Claim
`Construction, deposition on Claim Construction; Expert testimony
`at Markman Hearing, Sept. 2003; Expert Report on Invalidity;
`Rebuttal Expert Report on Non-infringement, Expert Depositions.
`Post Markman, Case settled on terms very favorable to STM, 2/04.
`
`Fish and Richardson (WDC)
`Genesis v. MRT, MStar & Trumpion, ITC Inv. No. 337-TA-491
` (on behalf of Genesis, ’867 patent)
`Patent Infringement, LCD panel controller
`Expert Reports, Expert depositions, Expert testimony at ITC
`
`Résumé of Jack D. Grimes, Ph.D.
`Updated 8/14/14
`
`
`
`
`
`Page 14
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`

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`Date:
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`Date
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`Date:
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`Date:
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`Date:
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`
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`Date:
`
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`
`
`Status:
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`2003
`Case
`
`Project:
`Status:
`
`2003
`Case
`
`Project:
`
`Status:
`
`2002-3
`Case
`
`Project:
`
`Status:
`
`2002-4
`Case
`
`Project:
`
`Status:
`
`
`2002
`Case
`Project:
`Status:
`
`2002
`Case
`Project:
`Status:
`
`
`Hearing, January – February, 2004.
`FD issued in favor of Genesis re: ’867 patent, April, 2004.
`
`Fish and Richardson (WDC)
`Data Treasury v. J. P. Morgan Chase, et al., Civil Action No. 5:02
`CV 124 (E.D. Tx.) (on behalf of ACS, co-defendant)
`Patent Infringement. Remote image capture, 112(6) Expert Report.
`Case settled June, 2003 (Pre Markman)
`
`Jones Day (NY)
`Research In Motion v. Good Technology, Inc., Civil Action No.
`02-556-JJF (Delaware) (on behalf of RIM)
`Patent infringement of 4 patents. Wireless data. 25 term, claim
`construction chart
`Settled, June 2003 – Final May 2004
`
`Fish and Richardson (San Diego)
`Broadcom v. Intel Corporation, Civil Action No. 501cv302 (E.D.
`Tx.) (on behalf of Intel) – Judge Folsom
`Patent Infringement. 3D graphics. Expert Depositions on claim
`construction & non-infringement and prior art, Expert testimony at
`Markman Hearing, 12/02, prepared Expert & Rebuttal Expert
`Reports
`SJ motion on ’210 patent in favor of Intel, granted July, 2003
`
`Fish and Richardson (WDC)
`Genesis v. MRT, SmartASIC & Trumpion, ITC Inv. No. 337-TA-
`481 (on behalf of Genesis, ’867 patent)
`Patent Infringement, LCD panel controller, Expert & Rebuttal
`Expert Reports; Expert deposition; Testified at ITC Hearing, July