UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner
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`v.
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`COMARCO WIRELESS TECHNOLOGIES, INC.,
`Patent Owner
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`Case IPR2015-01879
`Patent 8,492,933
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`DECLARATION OF BRETT J. WILLIAMSON IN SUPPORT
`OF PETITIONER’S MOTION FOR PRO HAC VICE
`ADMISSION
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`Proceeding No.: IPR2015-01879
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`I, Brett J. Williamson, declare as follows:
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`1.
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`I am a Partner with the law firm of O’Melveny & Myers LLP. I
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`represent and advise Petitioner Apple Inc. (“Apple”) in connection with the
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`above-captioned inter partes review (“IPR”) proceeding and I am lead counsel in
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`the underlying district court litigation (Comarco Wireless Technologies, Inc. v. Apple
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`Inc., Case No. 8:15-cv-00145-AG-DFM (C.D. Cal.)) on the patent at issue in
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`this IPR, U.S. Patent No. 8,492,933 (“’933 Patent”).
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`2.
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`I have been a member in good standing of the Bar of the State of
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`California since 1989. My California State Bar number is 145235. I have been
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`a member in good standing of the Bar of the District of Columbia since
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`February 2015. My D.C. Bar number is 1024759. I am also admitted to
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`practice before numerous federal courts:
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`a.
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`b.
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`c.
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`d.
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`e.
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`f.
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`g.
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`h.
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`U.S.D.C. for the Northern District of California (since 1993);
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`U.S.D.C. for the Eastern District of California (since 1993);
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`U.S.D.C. for the Southern District of California (since 1993);
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`U.S.D.C. for the Central District of California (since 1989);
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`U.S.D.C. for the District of Colorado (since 1999)
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`U.S.C.A. for the Second Circuit (since 2014);
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`U.S.C.A. for the Ninth Circuit (since 1989);
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`U.S.C.A. for the Federal Circuit (since 2002); and
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`Proceeding No.: IPR2015-01879
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`i.
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`U.S. Supreme Court (since 1995).
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`3.
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`I have over 25 years of experience practicing patent and technology
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`related litigation. I have litigated numerous patent cases across the country,
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`including in Alabama, California, Colorado, Connecticut, Delaware, the District
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`of Columbia, Illinois, Nevada, Ohio, Texas, Utah, and Virginia, and litigated
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`many of them through both trial and appeal. A copy of my biography is
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`provided as Appendix A.
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`4.
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`I am familiar with the subject matter at issue in this proceeding. I have
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`supervised and been actively involved in the present IPR proceeding regarding
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`the ’933 Patent. I represent Petitioner in concurrent litigation involving the
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`’933 Patent, and I have extensively reviewed the patent, its file history, the
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`Patent Owner’s preliminary infringement contentions served in the litigation,
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`and the prior art being asserted in the petition for IPR in this proceeding. I
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`have gained significant familiarity with the implicit claim construction issues in
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`the underlying litigation, including the Patent Owner’s claimed claim scope as
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`disclosed in its infringement contentions. These issues significantly overlap
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`with the corresponding issues in this IPR proceeding.
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`5. Moreover, I have advised Petitioner on strategy regarding Petitioner’s
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`affirmative arguments in this IPR proceeding, supervised the drafting of the
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`petition, reviewed the accompanying Declaration of Dr. Nathaniel Davis IV,
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`and worked with Petitioner to find and identify the references relied upon in
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`Proceeding No.: IPR2015-01879
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`the petition and to draft other submissions to the Office.
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`6.
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`The prior art references at issue in the IPR proceedings are also at issue
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`in the underlying litigation. I have reviewed both that art and a vast amount of
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`additional, related prior art — all of which were disclosed in invalidity
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`contentions that I participated in preparing and signed.
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`7.
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`I have represented clients in connection with many patent litigations
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`regarding technology similar to that at issue in this IPR, which relates generally
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`to mobile devices and electrical signals.
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`8.
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`I have worked closely with Dr. Davis, who provided a declaration in this
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`IPR, regarding his declaration. I was also involved in identifying and retaining
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`Dr. Davis as an expert in this IPR, and I signed his engagement letter.
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`9.
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`I frequently publish on issues concerning patent law and technology
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`related litigation.
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`10.
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`I have not been suspended or disbarred from practice before any court
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`or administrative body. I have never had an application for admission to
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`practice before any court or administrative body denied. No sanction or
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`contempt citation has been imposed against me by any court or administrative
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`body.
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`11.
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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 37 C.F.R.
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`12.
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`Proceeding No.: IPR2015-01879
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`I agree to and will be subject to the USPTO Rules of Professional
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`Conduct 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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`13.
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`I have not applied to appear pro hac vice before the Office in any other
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`proceeding in the last three years.
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`14.
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`I hereby declare that all statements made herein of my own knowledge
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`are true and that all statements made on information and belief are believed to
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`be true. I further declare that these statements were 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
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`Code and that such willful false statements may jeopardize the validity of the
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`application or any patents issued thereon.
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`Respectfully submitted,
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`/s/ Brett J. Williamson
`Brett J. Williamson
`O’Melveny & Myers LLP
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`Date: 9/30/2015
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`APPENDIX A
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`Page 1
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`Resident Office(s)
`Newport Beach:
`610 Newport Center
`Drive
`17th Floor
`Newport Beach, CA
`92660
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`Telephone
`+1 (949) 823-7947
`Facsimile
`+1-949-823-6994
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`New York:
`Times Square Tower
`7 Times Square
`New York, NY 10036
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`Telephone
`+1-212-326-2000
`Facsimile
`+1-212-326-2061
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`Brett J. Williamson
`Partner | bwilliamson@omm.com
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`Brett Williamson is one of O’Melveny’s most seasoned IP
`litigators, with over 25 years of experience handling patent and
`technology litigation in a wide variety of industries, including
`computer hardware and software, telecommunications, electronics,
`medical devices, and environmental engineering. Brett helps both
`established and emerging technology companies solve their most
`critical legal challenges through a practical approach that prioritizes
`fundamental “big picture” advice over procedural tactics that can
`obscure the client’s ultimate business goals, while maintaining the
`sharp adversarial edge required to ensure the best outcome possible.
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`Brett is routinely recognized among the most skilled IP litigators in
`the country. He was named a 2015 Top Intellectual Property
`Lawyer in California by the Daily Journal, the same publication that
`listed his trial victory for client Allergan, Inc. as a Top Verdict of
`2012. Brett has been named a “Super Lawyer” in Intellectual
`Property Litigation for nine consecutive years (2007-2015) in a
`survey conducted by Law & Politics Media Inc. and published in
`Los Angeles magazine, and he has been described as “a skilled and
`very practical patent litigator” and a “notable trade secret lawyer” by
`Legal 500.
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`Illustrative Professional Experience
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`Brett’s litigation experience includes technologies as diverse as
`artificial respirators, neurological therapies, cardioplegic
`pharmaceuticals, automated loan origination and financial services,
`optoelectronic transceivers, surface emitting lasers, wireless
`networking methods, gaming machines and systems, biometric
`sensors, thermal printers, video conferencing, sports trading cards,
`and digital rights management and encryption software. He has
`handled IP cases for dozens of the firm’s clients, including Allergan,
`Inc.; Apex Digital; Apple Inc.; B. Braun Medical; Corel Corp.;
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`Corelogic, Inc.; Dole Food Co.; Excite@Home; FutureLogic, Inc.;
`The Hershey Co.; Home Depot; Igloo Products; International Game
`Technology; JDS Uniphase; Merck & Co., Inc.; Metagenics, Inc.;
`Novartis; OneWest Bank; Pacific Sunwear; PepsiCo.; Samsung
`Electronics; Staples, Inc.; University Medical Pharmaceuticals; The
`Upper Deck Company; U.S. Bancorp, and Western Digital.
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`Recent Engagements
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`Allergan, Inc. v. Merz Pharmaceuticals. Brett and his team
`prevailed in a three-week trial for Allergan, a global leader in the
`development of innovative pharmaceutical and medical device
`products, involving misappropriation of trade secrets relating to
`marketing of Allergan’s Botox® product. 2012 U.S. Dist LEXIS
`31981 (C.D. Cal., Mar. 9, 2012). The court entered an injunction
`preventing a major competitor from selling or marketing its product
`anywhere in the United States for an entire year following the
`judgment, an extraordinary remedy in a trade secrets case.
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`Aristocrat Technologies v. International Game Technology.
`Brett represented International Game Technology (IGT) in defending
`this patent infringement claim involving multi-line slot machines.
`Following a favorable claim construction after the Markman
`hearing, IGT prevailed on a motion for summary judgment resulting
`in a full dismissal of all claims, which was affirmed by the Federal
`Circuit on appeal (521 F.3d 1328 (2008)). Brett has also served as
`lead litigation counsel for IGT in other major patent cases, including
`successful infringement claims against Bally Technologies in the
`District of Delaware.
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`At Home Bondholders Liquidating Trust v. Citrix
`Online. Brett is currently lead trial counsel representing the
`successor-in-interest to pioneering Internet services company
`@Home Corp. in enforcement of a patent covering web-based
`video conferencing systems and methods against multiple
`defendants. Following district court rulings that effectively precluded
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`our client from establishing infringement of any valid claims, Brett
`argued the appeal to the Federal Circuit which resulted in a reversal
`of the non-infringement judgment and remand to the district court,
`where the case remains pending. 770 F.3d 1371 (Fed. Cir. 2014).
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`Central Admixture Pharmacy Services, Inc. v. Advanced
`Cardiac Solutions. Brett represented plaintiff CAPS in a case
`involving a patent for intravenous pharmaceuticals used during open
`heart surgery to minimize heart muscle damage caused by the
`interruption of blood flow. At trial, Brett successfully proved willful
`infringement, and the court entered a permanent injunction estimated
`to be worth tens of millions of dollars in recovered sales revenue.
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`Comarco Wireless Technologies v. Apple Inc. Brett serves as
`lead trial counsel for Apple in defense of this patent infringement
`action relating to power supply control and authentication
`technology, as well as in connection with parallel Inter Partes
`review proceedings at the Patent Trial and Appeal Board.
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`IGT v. Bally Gaming. On behalf of client International Game
`Technology, Brett and his team obtained summary judgment of
`infringement and no invalidity in the District of Delaware on two
`patents relating to automated casino management and bonusing
`systems, and defeated counterclaims alleging antitrust violations—
`judgments that were affirmed by the Federal Circuit on appeal. 659
`F.3d 1109 (Fed Cir. 2011).
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`Mortgage Grader, Inc. v. OneWest Bank. Brett was lead trial
`counsel for OneWest Bank, the largest Southern California retail
`banking and lending institution, in multi-defendant patent infringement
`litigation involving claims to a process for evaluating the credit of
`prospective home mortgage borrowers. Brett and his team won a
`complete victory when the complaint was dismissed in the face of a
`patentability challenge.
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`Network Signatures, Inc. v. Staples, Inc.. Brett represents
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`Staples in defending an infringement complaint on a patent that
`claims a method for authentication of Internet-based transactions.
`He has previously defended Dole Food Co., The Hershey Co.,
`Home Depot, Merck, Novartis, PepsiCo, U.S. Bank, and Wellpoint
`Inc. in similar cases, all of which settled on favorable terms for our
`clients.
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`Powerwave Technologies, Inc. v.
`MicroeletronicsTechnologies, Inc. Brett represented
`Powerwave, a leading provider of infrastructure solutions for
`wireless communications networks, relating to the enforcement of
`patents covering an innovative method of connecting components to
`a multi-layer printed circuit board while minimizing power demands.
`The case settled on favorable terms.
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`Samsung Electronics v. nVidia Corporation. Brett represents
`Samsung in this case involving eight patents directed to
`semiconductor manufacturing processes, computer memory control,
`and video data transmission. Following favorable claim constructions
`at the Markman hearing, the case is scheduled for trial in January
`2016.
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`Virginia Innovation Sciences, Inc. v. Samsung Electronics.
`Brett is lead trial counsel for Samsung in defense of a series of patent
`infringement actions filed in the “rocket docket” Eastern District of
`Virginia, collectively alleging infringement of eight patents directed to
`smartphone technology and a system for processing and transmitting
`multimedia content received via wireless networks onto alternative
`display devices. In the first phase of litigation at the trial court, Brett
`and his team obtained final judgments of non-infringement on all
`patents-in-suit. 983 F.Supp.2d 713 (E.D. Va. 2014). Related cases
`remain pending.
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`TransAct Technologies, Inc. v. FutureLogic, Inc. Brett serves
`as lead litigation counsel for FutureLogic, a leader in thermal printer
`design and technology. In bi-coastal patent litigation brought by
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`FutureLogic’s principal competitor, Brett successfully defeated a
`motion for a preliminary injunction at the outset of the case and, after
`defeating a renewed request for a preliminary injunction a year later,
`the case settled on very favorable terms. Brett has also represented
`FutureLogic in litigation as a plaintiff, enforcing the client’s innovative
`“dual port” promotional printing patent against another competitor.
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`Education
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`University of Southern California, J.D., 1989: Order of the
`Coif; Articles Editor, Southern California Law Review
`University of California, Irvine, B.A., 1986: cum laude
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`Professional Activities
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`Admitted, California; District of Columbia
`Admitted to Practice, US District Court, Northern, Eastern,
`Central, and Southern Districts of California, and the District of
`Colorado; US Court of Appeals, Federal, Second, and Ninth
`Circuits; US Supreme Court
`Member, American Bar Association; Federal Circuit Bar
`Association; American Intellectual Property Law Association
`(AIPLA); Howard T. Markey Intellectual Property Inn of Court;
`Orange County Bar Association; Association of Business Trial
`Lawyers (ABTL), Orange County Chapter
`Board of Directors, Public Law Center of Orange County;
`University of California, Irvine— Center for the Study of
`Democracy
`Lawyer Representative, Ninth Circuit Judicial Conference
`(2009-2012)
`Author,  “Is The Seagate Test For Willful Infringement Here To
`Stay?” Law 360 (April 7, 2015); “Maintaining the Standard of
`Proof on Invalidity,” Law 360 (February 9, 2011); “IP in a
`downturn,” IP Review (Summer 2009) (co-author); “Post-
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`Seagate: Advice of Counsel in Patent Defense,” Intellectual
`Property Litigation (Fall 2008) (co-author); “Struggle for
`Ownership,” The Recorder (April 11, 2007) (discussing KSR
`International Co. v. Teleflex, Inc. case); “Remedying Injury to
`Goodwill and Reputation: Beacon Mutual and 'Public
`Confusion' Under the Lanham Act,” Intellectual Property
`Litigation (American Bar Association, Winter 2005)
`Honors, Named a 2015 Top Intellectual Property Lawyer in
`California by the Daily Journal; named a “Super Lawyer” in
`surveys conducted by Law & Politics Media Inc. and published in
`Los Angeles magazine (2007-2015)
`Speaker, “The Future of Medical Diagnostic and Treatment
`Patents,” O’Melveny Corporate Counsel Seminar (September
`2010); “Improving Patent Adjudication Through ADR and Court
`Reform: International Mediation and Arbitration of Patent Cases,”
`Thomas Jefferson School of Law Patent Law Symposium (April 3,
`2009); “Patents and The Real-World: How Recent Supreme Court
`Cases and Proposed Legislation Will Impact You and Your
`Business,” O'Melveny & Myers LLP Special Patent Law
`Presentation (Sept. 18 and 20, 2007)
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