`
`Paper
`
`By:
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`Joseph A. Hynds, Lead Counsel
`R. Elizabeth Brenner-Leifer, Back-up Counsel
`Jason M. Nolan, Back-up Counsel
`ROTHWELL, FIGG, ERNST & MANBECK, P.C.
`
`Date filed: July 17, 2015
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`607 14th Street, N.W., Suite 800
`Washington, DC 20005
`Phone: 202-783-6040
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`Facsimile: 202-783-6031
`
`Emails:
`
`jhynds@rothwellfigg.com
`ebrenner@rothwellfigg.com
`jnolan@rothwellfigg.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`US ENDODONTICS, LLC,
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`Petitioner,
`
`V.
`
`GOLD STANDARD INSTRUMENTS, LLC,
`Patent Owner.
`
`Case IPR2015—01476
`
`Patent 8,727,773 B2
`
`DECLARATION OF STEVEN LIEBERMAN IN SUPPORT OF
`
`PATENT OWNER’S MOTION FOR ADMISSION PRO HAC VICE
`
`
`
`Case IPR2015-01476
`
`Patent 8,727,773 B2
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`
`P.O. Box 1450
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`Alexandria, VA 22313-1450
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`I, Steven Lieberman, declare as follows:
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`1.
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`I have been practicing in the field of intellectual property, and
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`particularly, patent litigation, for twenty-four years.
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`2.
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`I am a member in good standing of the Bars of the State of New York
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`and the District of Columbia. I am admitted to practice in the United States
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`District Courts for the District of Columbia, Maryland, the Northern District of
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`California, and the Northern, Eastern, and Southern Districts of New York. I am
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`also admitted to practice in the Courts of Appeals for the District of Columbia, the
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`Second Circuit, the Fourth Circuit, the Federal Circuit, and the United States
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`Supreme Court.
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`3.
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`I am a past President of the Giles S. Rich American Inn of Court, the
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`D.C. Inn devoted to the practice of intellectual property law.
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`4.
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`I have been in private practice since 1985 and have been litigating
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`patent cases since 1990, primarily as lead counsel.
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`5.
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`I have never been suspended or disbarred from practice before any
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`court or administrative body.
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`
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`6.
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`I have never had a court or administrative body deny my application
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`Case IPR2015-01476
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`Patent 8,727,773 B2
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`for admission to practice.
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`7.
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`No sanctions or contempt citations have ever been imposed against
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`me by any court or administrative body.
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`8.
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`I have read and will comply with the Office Patent Trial Practice
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`Guide and the Board’s Rules of Practice for Trials, as set forth in Part 42 of 37
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`C.F.R.
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`9.
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`I agree to be subject to the USPTO Rules of Professional Conduct set
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`forth in 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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`I also agree to be subject to the USPTO Rules of Professional Conduct
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`as set forth in Changes to Representation of Others Before the United States Patent
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`and Trademark Office; Final Rule, 78 Fed. Reg. 20180 (Apr. 3, 2013) (effective
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`May 3, 2013).
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`10.
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`In the past three (3) years, I have been admitted pro hac vice in the
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`following proceedings before the United States Patent and Trademark Office:
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`—
`
`-
`
`—
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`International Securities Exchange, LLC v. Chicago Board Options
`Exchange, Incorporated, CBM2013-00049;
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`International Securities Exchange, LLC v. Chicago Board Options
`Exchange, Incorporated, CBM2013-00050;
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`International Securities Exchange, LLC v. Chicago Board Options
`Exchange, Incorporated, CBM2013—00051;
`
`
`
`Case IPR2015-01476
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`Patent 8,727,773 B2
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`-
`
`—
`
`—
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`International Securities Exchange, LLC v. Chicago Board Options
`Exchange, Incorporated, IPR2014—00097;
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`International Securities Exchange, LLC v. Chicago Board Options
`Exchange, Incorporated, IPR2014-00098;
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`International Securities Exchange, LLC v. Chicago Board Options
`Exchange, Incorporated, IPR2014—00099;
`
`— Toshiba Samsung Storage Technology Korea Corporation 12. LG
`Electronics, Inc., IPR2014—00204;
`
`- Toshiba Samsung Storage Technology Korea Corporation 12. LG
`Electronics, Inc., IPR2014-00205; and
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`- US Endodontics, LLC 12. Gold Standard Instruments, LLC, IPR2015—
`00632.
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`11.
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`I am familiar With the subject matter at issue in this proceeding. I am
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`lead counsel in the Dentsply International, Inc. and Tulsa Dental Products LLC v.
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`US Endodontics, LLC patent infringement litigation (Case No. 2:14-cv-00196-
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`JRG—DHI), which is pending in the United States District Court for the Eastern
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`District of Tennessee and involves the same patent at issue in this proceeding.
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`12.
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`I hereby declare that all statements made herein of my own
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`knowledge are true and that all statements made on information and belief are
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`believed to be true; and further that these statements are made with the knowledge
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`that 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 Code
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`
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`Case IPR2015-01476
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`Patent 8,727,773 B2
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`and that such willful false statements may jeopardize the Validity of U.S. Patent
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`No. 8,727,773.
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`Date: July 16, 2015
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`By:
`
`
`
`
`en Lieberman
`
`THWELL, FIGG, ERNST &
`
`
`MANBECK, P.C.
`
`607 14th St., N.W., Suite 800
`Washington, DC 20005
`Phone: 202-783-6040
`
`Facsimile: 202-783-6031
`
`Email: slieberm@rothwellfigg.com
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`
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`CERTIFICATE OF SERVICE
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`Case IPR2015-01476
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`Patent 8,727,773 B2
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`I hereby certify that on this 17th day of July, 2015, a true and correct copy of
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`the foregoing DECLARATION OF STEVEN LIEBERMAN IN SUPPORT OF
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`PATENT OWNER’S MOTION FOR ADMISSION PRO HAC VICE was served,
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`Via electronic mail upon the following counsel for Petitioner US Endodontics,
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`LLC:
`
`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: j ginsberg@kenyon.com
`mberkowitz@kenyon.com
`eschreiber@kenyon.com
`
`[ Erik van Leeuwen /
`Erik Van Leeuwen
`
`Litigation Operations Coordinator
`Rothwell, Figg, Ernst & Manbeck, P.C.