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`_______________
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`
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_______________
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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 IPR2016-00038
`Patent 6,292,974
`
`_______________
`
`
`
`DECLARATION OF JAMES W. DABNEY
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`Costco Exhibit 1019, p. 1
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`IPR2016-00038
`DECLARATION OF JAMES W. DABNEY
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`I, James W. Dabney, declare as follows:
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`1.
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`I am a partner and co-chair of the Intellectual Property group at the
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`law firm of Hughes Hubbard & Reed LLP, located at One Battery Park Plaza, New
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`York, NY 10004.
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`2.
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`I make this declaration in support of Petitioner TC Heartland LLC’s
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`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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`and the State of New Jersey. I am also duly admitted and authorized to practice law
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`before the Supreme Court of the United States, the Courts of Appeals for the Sec-
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`ond, Third, Fourth, Fifth, Sixth, Seventh, Eighth, Ninth, Tenth, Eleventh and Fed-
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`eral Circuits, and various federal district courts throughout the country.
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`4.
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`I have been practicing law and litigating cases for 36 years. During
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`most of this time, my practice has included patent infringement matters. I have
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`been lead counsel in several patent infringement trials and appeals. I am an Ad-
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`junct Professor of Law at Cornell Law School, where I teach patent law.
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`5.
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`Since 2014, I have been lead trial counsel for Petitioner in Robert
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`Bosch LLC v. Alberee Products, Inc., et al., No. 12-574-LPS (D. Del.) (the “Dela-
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`ware Action”), which involves the same subject matter at issue in this proceeding.
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`U.S. Patent No. 6,292,974, the patent at issue in this IPR proceeding, is also at is-
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`sue in the pending Delaware Action. I have spent a substantial amount time be-
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`
`
`Costco Exhibit 1019, p. 2
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`
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`IPR2016-00038
`DECLARATION OF JAMES W. DABNEY
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`coming familiar with this patent and the patents in related IPR proceedings, includ-
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`ing learning the underlying windshield wiper blade technology and pertinent prior
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`art. As a result, I have become very familiar with the subject matter at issue in this
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`proceeding.
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`6.
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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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`7.
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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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`8.
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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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`9.
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`I am submitting herewith applications to be admitted pro hac vice in
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`five co-pending related inter partes review proceedings, Cases IPR2016-00034,
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`IPR2016-00036, IPR2016-00039, IPR2016-00040, and IPR2016-00041. In the past
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`three (3) years I have been admitted pro hac vice in three other matters pending be-
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`fore the United States Patent and Trademark Office, Cases IPR2015-01128,
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`IPR2015-01129, and IPR2015-01131.
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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 United States Patent and Trademark Rules
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`Costco Exhibit 1019, p. 3
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`IPR2016-00038
`DECLARATION OF JAMES W. DABNEY
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`of Professional Conduct set fo&th in 37 C.F.R.)( 11.101et seq. and disciplinary
`jurisdiction under 37 C.F.R. ( I L19(a).
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`I declare under penalty of perjury under
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`the laws of the United States of America
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`that
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`the foregoing is true and correct.
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`Executed on: July 1, 2016
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`.~ i'
`
`a,:~ ( l~-
`James
`.~Dabney
`Hughes Hubbard k Reed LL
`One Battery Park Plaza
`New York, NY 10004
`'ames.dabne
`rahu heshubbard.com
`(212) 837-6803
`
`70827716
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`Costco Exhibit 1019,p. 4