`
`_______________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`
`
`COSTCO WHOLESALE CORPORATION,
`Petitioner,
`
`v.
`
`ROBERT BOSCH LLC,
`Patent Owner.
`
`_______________
`
`
`
`Case IPR2016-00036
`Patent 6,944,905
`
`_______________
`
`
`
`DECLARATION OF JAMES W. DABNEY
`
`Costco Exhibit 1022, p. 1
`
`
`
`
`
`
`
`
`
`IPR2016-00036
`DECLARATION OF JAMES W. DABNEY
`
`
`I, James W. Dabney, declare as follows:
`
`1.
`
`I am a partner and co-chair of the Intellectual Property group at the
`
`law firm of Hughes Hubbard & Reed LLP, located at One Battery Park Plaza, New
`
`York, NY 10004.
`
`2.
`
`I make this declaration in support of Petitioner TC Heartland LLC’s
`
`Motion for my admission pro hac vice.
`
`3.
`
`I am a member in good standing of the bar of the State of New York
`
`and the State of New Jersey. I am also duly admitted and authorized to practice law
`
`before the Supreme Court of the United States, the Courts of Appeals for the Sec-
`
`ond, Third, Fourth, Fifth, Sixth, Seventh, Eighth, Ninth, Tenth, Eleventh and Fed-
`
`eral Circuits, and various federal district courts throughout the country.
`
`4.
`
`I have been practicing law and litigating cases for 36 years. During
`
`most of this time, my practice has included patent infringement matters. I have
`
`been lead counsel in several patent infringement trials and appeals. I am an Ad-
`
`junct Professor of Law at Cornell Law School, where I teach patent law.
`
`5.
`
`Since 2014, I have been lead trial counsel for Petitioner in Robert
`
`Bosch LLC v. Alberee Products, Inc., et al., No. 12-574-LPS (D. Del.) (the “Dela-
`
`ware Action”), which involves the same subject matter at issue in this proceeding.
`
`U.S. Patent No. 6,944,905, the patent at issue in this IPR proceeding, is also at is-
`
`sue in the pending Delaware Action. I have spent a substantial amount time be-
`
`
`
`Costco Exhibit 1022, p. 2
`
`
`
`IPR2016-00036
`DECLARATION OF JAMES W. DABNEY
`
`coming familiar with this patent and the patents in related IPR proceedings, includ-
`
`ing learning the underlying windshield wiper blade technology and pertinent prior
`
`art. As a result, I have become very familiar with the subject matter at issue in this
`
`proceeding.
`
`6.
`
`I have never been suspended or disbarred from practice before any
`
`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 am submitting herewith applications to be admitted pro hac vice in
`
`five co-pending related inter partes review proceedings, Cases IPR2016-00034,
`
`IPR2016-00038, IPR2016-00039, IPR2016-00040, and IPR2016-00041. In the past
`
`three (3) years I have been admitted pro hac vice in three other matters pending be-
`
`fore the United States Patent and Trademark Office, Cases IPR2015-01128,
`
`IPR2015-01129, and IPR2015-01131.
`
`10.
`
`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 of 37
`
`C.F.R.
`
`11.
`
`I agree to be subject to the United States Patent and Trademark Rules
`
`Costco Exhibit 1022, p. 3
`
`
`
`
`
`IPR2016-00036
`DECL~TION OE JAMES %. DABNEY
`
`of Professional Conduct set forth in 37 C.F.R.() 11.101et seq. and disciplinary
`jurisdiction under 37 C.F.R.) 11.19(a).
`
`I declare under penalty of perjury under
`
`the laws of the United States of America
`
`that
`
`the foregoing is true and correct.
`
`Executed on: July 1, 2016
`
`By:~i
`James
`. Dabney
`s Hubbard 2 Reed LLP
`Hug
`One Battery Park Plaza
`New York, NY 10004
`ames.dabne
`u~hu heshubbai d.com
`(212) 837-6803
`
`Costco Exhibit 1022, p. 4
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