`
`
`
`
`
`
`
`Filed on behalf of: Gold Standard Instruments, LLC Paper ____
`
`
`
`
` Date file: February 20, 2015
`
`By:
`Joseph A. Hynds, Lead Counsel
`R. Elizabeth Brenner-Leifer, Back-up Counsel
`ROTHWELL, FIGG, ERNST & MANBECK, P.C.
`607 14th Street, N.W., Suite 800
`Washington, DC 20005
`Phone: 202-783-6040
`Facsimile: 202-783-6031
`Emails: jhynds@rothwellfigg.com
`
` ebrenner@rothwellfigg.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`US ENDODONTICS, LLC,
`Petitioner,
`
`v.
`
`GOLD STANDARD INSTRUMENTS, LLC,
`Patent Owner.
`_______________
`
`Case IPR2015-00632
`Patent 8,727,773 B2
`_______________
`
`
`
`DECLARATION OF STEVEN LIEBERMAN IN SUPPORT OF
`PATENT OWNER’S MOTION FOR ADMISSION PRO HAC VICE
`
`
`
`
`
`
`
`Case IPR2015-00632
`Patent 8,727,773 B2
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`I, Steven Lieberman, declare as follows:
`
`1.
`
`I have been practicing in the field of intellectual property, and
`
`particularly, patent litigation, for twenty-four years.
`
`2.
`
`I am a member in good standing of the Bars of the State of New York
`
`and the District of Columbia. I am admitted to practice in the United States
`
`District Courts for the District of Columbia, Maryland, the Northern District of
`
`California, and the Northern, Eastern, and Southern Districts of New York. I am
`
`also admitted to practice in the Courts of Appeals for the District of Columbia, the
`
`Second Circuit, the Fourth Circuit, the Federal Circuit, and the United States
`
`Supreme Court.
`
`3.
`
`I am a past President of the Giles S. Rich American Inn of Court, the
`
`D.C. Inn devoted to the practice of intellectual property law.
`
`4.
`
`I have been in private practice since 1985 and have been litigating
`
`patent cases since 1990, primarily as lead counsel.
`
`5.
`
`I have never been suspended or disbarred from practice before any
`
`court or administrative body.
`
`
`
`2
`
`
`
`Case IPR2015-00632
`Patent 8,727,773 B2
`I have never had a court or administrative body deny my application
`
`6.
`
`for admission to practice.
`
`7.
`
`No sanctions or contempt citations have ever been imposed against
`
`me by any court or administrative body.
`
`8.
`
`I have read and will comply with the Office Patent Trial Practice
`
`Guide and the Board’s Rules of Practice for Trials, as set forth in Part 42 of 37
`
`C.F.R.
`
`9.
`
`I agree to be subject to the USPTO Rules of Professional Conduct set
`
`forth in 37 C.F.R. §§ 11.101 et seq. and disciplinary jurisdiction under 37 C.F.R. §
`
`11.19(a). I also agree to be subject to the USPTO Rules of Professional Conduct
`
`as set forth in Changes to Representation of Others Before the United States Patent
`
`and Trademark Office; Final Rule, 78 Fed. Reg. 20180 (Apr. 3, 2013) (effective
`
`May 3, 2013).
`
`10.
`
`In the past three (3) years, I have been admitted pro hac vice in the
`
`following proceedings before the United States Patent and Trademark Office:
`
`-
`
`-
`
`-
`
`International Securities Exchange, LLC v. Chicago Board Options
`Exchange, Incorporated, CBM2013-00049;
`
`International Securities Exchange, LLC v. Chicago Board Options
`Exchange, Incorporated, CBM2013-00050;
`
`International Securities Exchange, LLC v. Chicago Board Options
`Exchange, Incorporated, CBM2013-00051;
`
`
`
`
`3
`
`
`
`Case IPR2015-00632
`Patent 8,727,773 B2
`International Securities Exchange, LLC v. Chicago Board Options
`Exchange, Incorporated, IPR2014-00097;
`
`International Securities Exchange, LLC v. Chicago Board Options
`Exchange, Incorporated, IPR2014-00098;
`
`International Securities Exchange, LLC v. Chicago Board Options
`Exchange, Incorporated, IPR2014-00099;
`
`-
`
`-
`
`-
`
`- Toshiba Samsung Storage Technology Korea Corporation v. LG
`Electronics, Inc., IPR2014-00204; and
`
`- Toshiba Samsung Storage Technology Korea Corporation v. LG
`Electronics, Inc., IPR2014-00205.
`
`11.
`
`I am familiar with the subject matter at issue in this proceeding. I am
`
`
`
`
`
`
`
`lead counsel in the Dentsply International, Inc. and Tulsa Dental Products LLC v.
`
`US Endodontics, LLC patent infringement litigation (Case No. 2:14-cv-00196-
`
`JRG-DHI), which is pending in the United States District Court for the Eastern
`
`District of Tennessee and involves the same patent at issue in this proceeding.
`
`12.
`
`I hereby declare that all statements made herein of my own
`
`knowledge are true and that all statements made on information and belief are
`
`believed to be true; and further that these statements are made with the knowledge
`
`that willful false statements and the like so made are 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 jeopardize the validity of U.S. Patent
`
`No. 8,727,773.
`
`
`
`
`
`4
`
`
`
`Case IPR2015-00632
`Patent 8,727,773 B2
`
`1eberman
`WELL, FIGG, ERNST &
`BECK, P.C.
`607 14th St., N.W., Suite 800
`Washington, DC 20005
`Phone: 202-783-6040
`Facsimile: 202-783-6031
`Email: slieberm@rothwellfigg.com
`
`5
`
`
`
`CERTIFICATE OF SERVICE
`
`Case IPR2015-00632
`Patent 8,727,773 B2
`
`I hereby certify that on this 20th day of February, 2015, a true and correct
`copy of the foregoing DECLARATION OF STEVEN LIEBERMAN IN
`SUPPORT OF PATENT OWNER’S MOTION FOR ADMISSION PRO HAC
`VICE was served, via electronic mail upon the following counsel for Petitioner US
`Endodontics, LLC:
`
`
`
`
`
`
`6
`
`Jeffrey S. Ginsberg, Esq.
`Matthew G. Berkowitz, Esq.
`Eric T. Schreiber, Esq.
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004
`Phone: 212-425-7200
`Facsimile: 212-425-5288
`Emails: jginsberg@kenyon.com
`mberkowitz@kenyon.com
`eschreiber@kenyon.com
`
`
`
`
`
`/ Erik van Leeuwen /
`Erik van Leeuwen
`Litigation Operations Coordinator
`Rothwell, Figg, Ernst & Manbeck, P.C.
`
`
`
`
`
`