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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________________
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`COSTCO WHOLESALE CORPORATION,
`Petitioner
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`v.
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`ROBERT BOSCH LLC,
`Patent Owner
`____________________
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`Case No. IPR2016-00034
`U.S. Patent No. 6,973,698
`____________________
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`DECLARATION OF MARK A. HANNEMANN IN SUPPORT OF
`PATENT OWNER’S MOTION FOR ADMISSION PRO HAC VICE
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`I, Mark A. Hannemann, declare as follows:
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`Case No. IPR2016-00034
`U.S. Patent No. 6,973,698
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`1.
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`I am a partner at the law firm of Kenyon & Kenyon LLP, located at
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`One Broadway, New York, NY 10004.
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`2.
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`I make this declaration in support of Patent Owner Robert Bosch
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`LLC’s Motion for my admission pro hac vice.
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`3.
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`I am a member in good standing of the Bar of the State of New York.
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`I am also duly admitted and authorized to practice law before the U.S. Courts of
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`Appeals for the Federal Circuit and the Second Circuit, and the U.S. District
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`Courts for the Eastern District of New York, the Southern District of New York,
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`and the Eastern District of Michigan.
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`4.
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`I have been practicing law and litigating cases for 20 years. During
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`this time, my practice has focused on patent infringement matters. I have been a
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`first-chair litigator in several patent infringement trials.
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`5.
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`Since 2007, I have been lead counsel for Patent Owner in numerous
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`patent infringement cases in federal courts and before the U.S. International Trade
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`Commission involving the same subject matter at issue in this proceeding, Patent
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`Owner’s beam windshield wiper blade technology. Those cases include: Robert
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`Bosch LLC v. Alberee Products Inc. et al., Civil Action No. 12-574-LPS (D. Del.)
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`(consolidated with Civil Action No. 14-142-LPS (D. Del.)); Robert Bosch LLC v.
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`Ningbo Xinhai Aiduo Automobile Wiper Blade Manufactory Co., No. 2:14-cv-1855
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`(D. Nev.); Robert Bosch LLC v. Trico Prods. Corp., No. 12-cv-437 (N.D. Ill.);
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`Case No. IPR2016-00034
`U.S. Patent No. 6,973,698
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`Robert Bosch LLC v. Corea Autoparts Producing Corp. et al., No. 11-14019 (E.D.
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`Mich.); Robert Bosch LLC v. Jiujiang Yada Traffic Equipment Co. et al., No. 2:11-
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`cv-1762 (D. Nev.); Robert Bosch LLC v. UL Enterprises LLC et al., No. 1:11-cv-
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`2437 (N.D. Ill.); Robert Bosch LLC v. Chin Pech Co., Ltd., No. 2:10-cv-1925 (D.
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`Nev.); Robert Bosch LLC v. Jiujiang Yada Traffic Equipment Co. et al., No. 2:10-
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`cv-1926 (D. Nev.); Robert Bosch LLC v. Ningbo Xinhai Automobile Wiper Blade
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`Manufacturing Co., Ltd., No. 2:10-cv-01927 (D. Nev.); Robert Bosch LLC v.
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`Ocean Automobile Apparatus Co., No. 2:10-cv-1928 (D. Nev.); Robert Bosch LLC
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`v. SHB Int'l, Inc et al, No. 2:10-cv-1929 (D. Nev.); Robert Bosch LLC v. ADM 21
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`Co. et al., No. 2:10-cv-1930 (D. Nev.); Robert Bosch LLC v. Zhejiang Wandeyuan
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`Vehicle Fittings Co., No. 2:10-cv-1931 (D. Nev.); Robert Bosch LLC v. Unipoint
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`Electric Mfg. Co., Ltd. et al., No. 2:10-cv-1932 (D. Nev.); Robert Bosch LLC v.
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`Transbec, No. 2:10-cv-1933 (D. Nev.); Robert Bosch LLC v. Old World Industries,
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`Inc., No. 1:10-cv-1437 (N.D. Ill.), Robert Bosch LLC v. Pylon Manufacturing
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`Corp, No. 1:08-cv-542 (D. Del.), Robert Bosch LLC v. Jamak Fabrication-Tex
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`Ltd., No. 1:07-cv-676 (D. Del.); and In re Certain Wiper Blades, Investigation No.
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`337-TA-816 (U.S. Int’l Trade Comm’n). In each of these cases, Patent Owner
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`asserted patents directed to beam wiper blade technology. U.S. Patent No.
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`6,973,698, the patent at issue in this IPR proceeding, was also at issue in
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`Case No. IPR2016-00034
`U.S. Patent No. 6,973,698
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`several of these prior proceedings.
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`6.
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`I am lead counsel for Patent Owner in a patent infringement case
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`currently pending against Petitioner in the United States District Court for the
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`District of Delaware, Robert Bosch LLC v. Alberee Products Inc. et al., Civil
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`Action No. 12-574-LPS (consolidated with Civil Action No. 14-142-LPS (D.
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`Del.)). U.S. Patent No. 6,973,698, the patent at issue in this IPR proceeding, is
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`also at issue in that action.
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`7.
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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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`8.
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`I have never had a court or administrative body deny my application
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`for admission to practice.
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`9.
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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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`10.
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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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`11.
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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). 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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`Case No. IPR2016-00034
`U.S. Patent No. 6,973,698
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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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`12.
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`In the past three (3) years, I have not been admitted pro hac vice in
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`any matters pending before the United States Patent and Trademark Office.
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`13.
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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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`and that such willful false statements may jeopardize the validity of U.S. Patent
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`By: ________________________
`Mark A. Hannemann
`KENYON & KENYON LLP
`One Broadway
`New York, NY 10004
` Tel: (212) 425-7200
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`No. 6,973,698.
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`DATED: October 30, 2015
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`Case No. IPR2016-00034
`U.S. Patent No. 6,973,698
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`Certificate of Service
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`The undersigned hereby certifies that the foregoing DECLARATION
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`OF MARK A. HANNEMANN IN SUPPORT OF PATENT OWNER’S
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`MOTION FOR ADMISSION PRO HAC VICE was served via electronic mail
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`on November 2, 2015, in its entirety on the following counsel for Petitioner:
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`Richard M. Koehl (richard.koehl@hugheshubbard.com)
`James R. Klaiber (james.klaiber@hugheshubbard.com)
`David E. Lansky (david.lansky@ hugheshubbard.com)
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`/Eric T. Schreiber/
`Eric T. Schreiber
`Reg. No. 58,771
`KENYON & KENYON LLP
`One Broadway
`New York, NY 10004-1007
` Tel: (212) 425-7200
` Counsel for Patent Owner
`Robert Bosch LLC
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