UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`COSTCO WHOLESALE CORPORATION,
`Petitioner
`
`v.
`
`ROBERT BOSCH LLC,
`Patent Owner
`____________________
`
`Case No. IPR2016-00036
`U.S. Patent No. 6,944,905
`____________________
`
`
`
`DECLARATION OF MARK A. HANNEMANN IN SUPPORT OF
`PATENT OWNER’S MOTION FOR ADMISSION PRO HAC VICE
`
`
`
`
`____________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`COSTCO WHOLESALE CORPORATION,
`Petitioner
`
`v.
`
`ROBERT BOSCH LLC,
`Patent Owner
`____________________
`
`Case No. IPR2016-00036
`U.S. Patent No. 6,944,905
`____________________
`
`
`
`DECLARATION OF MARK A. HANNEMANN IN SUPPORT OF
`PATENT OWNER’S MOTION FOR ADMISSION PRO HAC VICE
`
`
`
`
`
`
`
`I, Mark A. Hannemann, declare as follows:
`
`Case No. IPR2016-00036
`U.S. Patent No. 6,944,905
`
`1.
`
`I am a partner at the law firm of Kenyon & Kenyon LLP, located at
`
`One Broadway, New York, NY 10004.
`
`2.
`
`I make this declaration in support of Patent Owner Robert Bosch
`
`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.
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`I am also duly admitted and authorized to practice law before the U.S. Courts of
`
`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.
`
`4.
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`I have been practicing law and litigating cases for 20 years. During
`
`this time, my practice has focused on patent infringement matters. I have been a
`
`first-chair litigator in several patent infringement trials.
`
`5.
`
`Since 2007, I have been lead counsel for Patent Owner in numerous
`
`patent infringement cases in federal courts and before the U.S. International Trade
`
`Commission involving the same subject matter at issue in this proceeding, Patent
`
`Owner’s beam windshield wiper blade technology. Those cases include: Robert
`
`Bosch LLC v. Alberee Products Inc. et al., Civil Action No. 12-574-LPS (D. Del.)
`
`(consolidated with Civil Action No. 14-142-LPS (D. Del.)); Robert Bosch LLC v.
`
`Ningbo Xinhai Aiduo Automobile Wiper Blade Manufactory Co., No. 2:14-cv-1855
`
`1
`
`
`
`
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`(D. Nev.); Robert Bosch LLC v. Trico Prods. Corp., No. 12-cv-437 (N.D. Ill.);
`
`Case No. IPR2016-00036
`U.S. Patent No. 6,944,905
`
`Robert Bosch LLC v. Corea Autoparts Producing Corp. et al., No. 11-14019 (E.D.
`
`Mich.); Robert Bosch LLC v. Jiujiang Yada Traffic Equipment Co. et al., No. 2:11-
`
`cv-1762 (D. Nev.); Robert Bosch LLC v. UL Enterprises LLC et al., No. 1:11-cv-
`
`2437 (N.D. Ill.); Robert Bosch LLC v. Chin Pech Co., Ltd., No. 2:10-cv-1925 (D.
`
`Nev.); Robert Bosch LLC v. Jiujiang Yada Traffic Equipment Co. et al., No. 2:10-
`
`cv-1926 (D. Nev.); Robert Bosch LLC v. Ningbo Xinhai Automobile Wiper Blade
`
`Manufacturing Co., Ltd., No. 2:10-cv-01927 (D. Nev.); Robert Bosch LLC v.
`
`Ocean Automobile Apparatus Co., No. 2:10-cv-1928 (D. Nev.); Robert Bosch LLC
`
`v. SHB Int'l, Inc et al, No. 2:10-cv-1929 (D. Nev.); Robert Bosch LLC v. ADM 21
`
`Co. et al., No. 2:10-cv-1930 (D. Nev.); Robert Bosch LLC v. Zhejiang Wandeyuan
`
`Vehicle Fittings Co., No. 2:10-cv-1931 (D. Nev.); Robert Bosch LLC v. Unipoint
`
`Electric Mfg. Co., Ltd. et al., No. 2:10-cv-1932 (D. Nev.); Robert Bosch LLC v.
`
`Transbec, No. 2:10-cv-1933 (D. Nev.); Robert Bosch LLC v. Old World Industries,
`
`Inc., No. 1:10-cv-1437 (N.D. Ill.), Robert Bosch LLC v. Pylon Manufacturing
`
`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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`2
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`
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`
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`6,944,905, the patent at issue in this IPR proceeding, was also at issue in
`
`Case No. IPR2016-00036
`U.S. Patent No. 6,944,905
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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
`
`District of Delaware, Robert Bosch LLC v. Alberee Products Inc. et al., Civil
`
`Action No. 12-574-LPS (consolidated with Civil Action No. 14-142-LPS (D.
`
`Del.)). U.S. Patent No. 6,944,905, the patent at issue in this IPR proceeding, is
`
`also at issue in that action.
`
`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
`
`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
`
`Guide and the Board’s Rules of Practice for Trials, as set forth in Part 42 of 37
`
`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
`
`forth in 37 C.F.R. §§ 11.101 et seq. and disciplinary jurisdiction under 37 C.F.R. §
`
`11.19(a). I also agree to be subject to the USPTO Rules of Professional Conduct
`
`3
`
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`
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`as set forth in Changes to Representation of Others Before the United States Patent
`
`Case No. IPR2016-00036
`U.S. Patent No. 6,944,905
`
`and Trademark Office; Final Rule, 78 Fed. Reg. 20180 (Apr. 3, 2013) (effective
`
`May 3, 2013).
`
`12.
`
`In the past three (3) years, I have not been admitted pro hac vice in
`
`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
`
`knowledge are true and that all statements made on information and belief are
`
`believed to be true; and further that these statements are made with the knowledge
`
`that willful false statements and the like so made are punishable by fine or
`
`imprisonment, or both, under Section 1001 of Title 18 of the United States Code
`
`and that such willful false statements may jeopardize the validity of U.S. Patent
`
`By: ________________________
`Mark A. Hannemann
`KENYON & KENYON LLP
`One Broadway
`New York, NY 10004
`Tel: (212) 425-7200
`
`No. 6,944,905.
`
`
`
`DATED: October 30, 2015
`
`
`
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`4
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`
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`Case No. IPR2016-00036
`U.S. Patent No. 6,944,905
`
`Certificate of Service
`
`The undersigned hereby certifies that the foregoing DECLARATION
`
`
`
`OF MARK A. HANNEMANN IN SUPPORT OF PATENT OWNER’S
`
`MOTION FOR ADMISSION PRO HAC VICE was served via electronic mail
`
`on November 2, 2015, in its entirety on the following counsel for Petitioner:
`
`
`
`
`
`
`Richard M. Koehl (richard.koehl@hugheshubbard.com)
`James R. Klaiber (james.klaiber@hugheshubbard.com)
`David E. Lansky (david.lansky@ hugheshubbard.com)
`
`/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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`1
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