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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MICRON TECHNOLOGY, INC., AND MICRON MEMORY JAPAN, INC.,
`Petitioners
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`v.
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`MASSACHUSETTS INSTITUTE OF TECHNOLOGY
`Patent Owner
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`Case: IPR2015-01087
`U.S. Patent No. 6,057,221
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`AFFIDAVIT OF THOMAS R. MAKIN IN SUPPORT OF
`MOTION FOR PRO HAC VICE ADMISSION
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`Submitted Electronically via the Patent Review Processing System
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`1.
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`I, Thomas R. Makin, am more than twenty-one years of age, am
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`competent to present this affidavit, and have personal knowledge of the facts set
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`forth herein.
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`2.
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`This affidavit is given in support of the Motion by Petitioners Micron
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`Technology, Inc. ("Micron") and Micron Memory Japan, Inc. ("Micron Memory
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`Japan") for Pro Hac Vice Admission of Thomas R Makin.
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`3.
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`4.
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`I am a partner at the law firm of Kenyon & Kenyon LLP ("Kenyon").
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`I am an experienced litigation attorney, and have been an attorney at
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`Kenyon for nearly 15 years. I have experience litigating patent infringement cases
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`in many district courts and before the U.S. International Trade Commission. I
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`have been counsel at trial and Markman hearings, and with respect to patent(cid:173)
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`related summary judgment proceedings and other patent-related hearings and
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`pleadings concerning, inter alia, patent validity and infringement issues.
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`5.
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`I received a Bachelor' s of Science degree in Engineering in 1997 and
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`have several years of experience litigating patents specifically directed to
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`semiconductor devices (and fabrication thereof), including for clients Micron,
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`Elpida Memory, Inc. ("Elpida"), Nichia Corp., Olympus, and Sony Electronics,
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`Inc.
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`1
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`6.
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`I am lead trial counsel for Petitioners Micron and Micron Memory Japan
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`in co-pending district court litigation against the Patent Owner, MIT v. Micron
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`Tech., Inc. et al., Civil Action No. 1 :15-cv-10374, filed on February 12, 2015, in
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`the U.S. District Court for the District of Massachusetts, which involves the same
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`patent at issue in this proceeding (U.S. Patent No. 6,057,221 or the "'221 patent").
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`7.
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`I have been actively involved in all aspects of the aforementioned district
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`court litigation, including Petitioners' on-going factual investigation and
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`development of their non-infringement and invalidity positions regarding the
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`claims of the '221 patent, and have consequently gained in-depth familiarity with
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`the subject matter at issue in this proceeding.
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`8.
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`In 2012 and 2013, I represented Elpida, which has been succeeded by
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`Petitioner Micron Memory Japan, in licensing negotiations with Patent Owner
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`Massachusetts Institute of Technology ("MIT") relating to the '221 patent.
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`9.
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`Through this representation, which included presenting invalidity and
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`non-infringement positions to MIT, I acquired further familiarity with the claims of
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`the '221 patent that are the subject matter of this proceeding.
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`I 0.
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`I have stayed up-to-date regarding the documents filed and actions taken
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`to date in the present matter, Case No. IPR2015-01087, and have carefully
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`reviewed Petitioners' petition.
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`2
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`11.
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`I am a member in good standing of the State Bar of New York, as well as
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`the following Federal Courts:
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`United States District Court for the Eastern District of New York
`United States District Court for the Southern District of New York
`United States Court of Appeals for the Federal Circuit
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`12.
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`I have never been suspended or disbarred from practice before any court
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`or administrative body.
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`13.
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`I have never made an application for admission to practice before any
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`court or administrative body that has been denied.
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`14. No sanctions or contempt citations have been imposed against me by any
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`court or administrative body.
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`15.
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`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 Title 37 of the
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`Code of Federal Regulations.
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`16.
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`I understand that I will be subject to the USPTO Rules of Professional
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`Conduct as set forth in 37 C.F.R. §§ 11.101 et. seq. and disciplinary jurisdiction
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`under 37 C.F.R. § 11.19(a).
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`1 7.
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`I have applied to appear pro hac vice in the following proceedings before
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`the United States Patent and Trademark Office in the last three (3) years:
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`IPR2013-00412, IPR2013-00413, IPR2013-00414, IPR2013-00415, IPR2013-
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`3
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`00416, IPR20 13-00417, IPR20 13-00419, IPR20 13-00420, IPR20 13-00421,
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`IPR2013-00422, IPR2013-00423, and IPR2013-00424.
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`18.
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`I declare that all statements made herein of my own knowledge are
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`true and that all statements made on information and belief are believed to
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`be true, and further that these statements were made with the knowledge that
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`willful false statements and the like so made are punishable by fine or
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`imprisonment, or both, under Section 1001 of Title 18 of the United States
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`Code.
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`Executed on June 9, 2015.
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`Thomas R. Makin
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`4
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