`
`
`
`
` Date filed: June 3, 2015
`
`By:
`Joseph A. Hynds, Lead Counsel
`R. Elizabeth Brenner-Leifer, Back-up Counsel
`Steven Lieberman, Back-up Counsel
`Jason M. Nolan, 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
`
` slieberman@rothwellfigg.com
` jnolan@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 DEREK F. DAHLGREN IN SUPPORT OF
`PATENT OWNER’S MOTION FOR ADMISSION PRO HAC VICE
`
`
`
`
`
`
`
`
`Case IPR20 15-00632
`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, Derek F. Dahlgren, declare as follows:
`
`1.
`
`I have been practicing in the field of intellectual property, and
`
`particularly, patent litigation, for approximately five years.
`
`2.
`
`I am a member in good standing of the Bars of the District of
`
`Columbia and the State of Virginia. I am admitted to practice in the United States
`
`District Court for the District of Columbia. I am also admitted to practice in the
`
`United States Court of Appeals for the Federal Circuit.
`
`3.
`
`I served as a law clerk to then-Chief Judge Randall R. Rader at the
`
`United States Court of Appeals for the Federal Circuit from 2013-2014.
`
`4.
`
`I am a member of the Giles S. Rich American Inn of Court. The D.C.
`
`Inn is devoted to the practice of intellectual property law.
`
`5.
`
`I have been in private practice and litigating patent cases since 2010,
`
`except for a one year period during my clerkship at the Federal Circuit. I also
`
`served as a full-time law clerk working on various patent matters under the
`
`supervision of attorneys from 2007 until my graduation from law school in
`
`February 2010.
`
`2
`
`
`
`Case IPR2015-00632
`Patent 8,727,773 B2
`I have never been suspended or disbarred from practice before any
`
`6.
`
`court or administrative body.
`
`7.
`
`I have never had a court or administrative body deny my application
`
`for admission to practice.
`
`8.
`
`No sanctions or contempt citations have ever been imposed against
`
`me by any court or administrative body.
`
`9.
`
`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 of37
`
`C.P.R.
`
`10.
`
`I agree to be subject to the USPTO Rules of Professional Conduct set
`
`forth in 37 C.P.R. §§ 11.101 et seq. and disciplinary jurisdiction under 37 C.P.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).
`
`11.
`
`In the past three (3) years, I have been admitted pro hac vice in the
`
`following proceeding before the United States Patent and Trademark Office:
`
`Unverferth Manufacturing Co., Inc. v. J&M Manufacturing Co., Inc.,
`IPR2014-00758.
`
`12.
`
`I am familiar with the subject matter at issue in this proceeding. I am
`
`counsel in the Dentsply International, Inc. and Tulsa Dental Products LLC v. US
`
`3
`
`
`
`Case IPR2015-00632
`Patent 8,727,773 B2
`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.
`
`13.
`
`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.
`
`Date: June 3, 2015
`
`By:-------rQ~_,......, ...... ~~--
`
`Derek F. Dahlgren
`ROTHWELL, FIGG, ERNST &
`MANBECK, P.C.
`607 14th St., N.W., Suite 800
`Washington, DC 20005
`Phone: 202-783-6040
`Facsimile: 202-783-6031
`Email: ddahlgren@rothwellfigg.com
`
`4
`
`
`
`CERTIFICATE OF SERVICE
`
`Case IPR20 15-00632
`Patent 8, 727,773 B2
`
`I hereby certify that on this June 3, 2015, a true and correct copy of the
`
`foregoing DECLARATION OF DEREK F. DAHLGREN 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:
`
`JeffreyS. 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
`
`I Erik van Leeuwen I
`Erik van Leeuwen
`Litigation Operations Coordinator
`Rothwell, Figg, Ernst & Manbeck, P.C.
`
`5
`
`