UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD
`MICRON TECHNOLOGY, INC.; AND
`SK HYNIX INC.,
`Petitioners,
`
`v.
`
`ELM 3DS INNOVATIONS, LLC
`Patent Owner
`
`Case IPR2016-00387
`Patent 8,841,778
`
`DECLARATION OF MICHAEL C. NEWMAN IN SUPPORT OF
`UNOPPOSED MOTION FOR PRO HAC VICE ADMISSION
`
`Case IPR2016-00387
`Samsung Electronics Co., LTD,
`
` et al. v. Elm 3DS Innovations, LLC
`
`Elm 3DS Exhibit 2155
`
`

`
`Case IPR2016-00387
`Patent No. 8,841,778
`
`I, Michael C. Newman, being duly sworn and upon oath, hereby attest to the
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`following:
`
`1. I am a Partner at Mintz Levin Cohn Ferris Glovsky and Popeo PC with nine
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`years of experience litigating patents.
`
`2. I am a member in good standing of the Bar of the state of Massachusetts
`
`(Bar # 667520), as well as the following Federal Courts:
`
`a. United States District Court for the District of Massachusetts;
`
`b. United States Court of Appeals for the Federal Circuit.
`
`3. I have not been suspended or disbarred from practice before any court or
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`administrative body.
`
`4. I have never had an application for admission to practice before any court or
`
`administrative body denied.
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`5. No sanction or contempt citation has been imposed against me by any court
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`or administrative body.
`
`6. I have read and will comply with the Office Patent Trial Practice Guide and
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`the Board's Rules of Practice for Trials set forth in Part 42 of 37 C.F.R.
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`7. I will be subject to the USPTO Code of Professional Responsibility set forth
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`in 37 C.F.R. §§ 11.101 et seq. and disciplinary jurisdiction under 37 C.F.R.
`
`§ 11.19(a).
`
`1
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`Elm 3DS Exhibit 2155
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`

`
`Case IPR2016-00387
`Patent No. 8,841,778
`
`8. I applied and was admitted to appear pro hac vice in the following
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`proceedings during the past three (3) years: Samsung Electronics Co., LTD
`
`et. al. v. Straight Path IP Group, Inc. (IPR2014-01366, IPR2014-01367 &
`
`IPR2014-01368) and LG Electronics, Inc. et al. v. Straight Path IP Group,
`
`Inc. (1PR2015-00196; 1PR2015-00198; & 1PR2015-00209).
`
`9. I am an experienced litigation attorney with experience in numerous
`
`litigations involving patent infringement in District Courts throughout the
`
`United States and before the International Trade Commission. My
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`biography is submitted herewith.
`
`10. I am particularly familiar with the subject matter at issue in this proceeding.
`
`I have extensively reviewed the relevant materials for this matter, including
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`all case pleadings, orders, and notices; U.S. Patent No. 8,841,778; the patent
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`prosecution history; and the Petitioner's asserted prior art; and I have a
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`thorough understanding of the grounds of unpatentability asserted in the
`
`Petition, as well as the challenged claims instituted in this action. In
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`addition, I am familiar with the parallel litigations involving U.S. Patent No.
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`8,841,778 filed by Patent Owner in the U.S. District Court for the District of
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`Delaware (Civil Actions Nos. 14-cv-1430-LPS, 14-cv-1431-LPS, 14-cv-
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`1432-LPS).
`
`2
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`Elm 3DS Exhibit 2155
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`

`
`Case IPR2016-00387
`Patent No. 8,841,778
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`11. I hereby declare that all statements made herein of my own knowledge are
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`true and that all statements made on information and belief are believed to
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`be true, and further that these statements are made with the knowledge that
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`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 outcome of
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`this proceeding.
`
`Dated: September 13, 2016
`
`Michael C. Newman
`Mintz, Levin, Cohn, Ferris, Glovsky
`and Popeo, P.C.
`One Financial Center
`Boston, MA 02111
`Telephone: (617) 348-1845
`Facsimile: (617) 542-2241
`ELM 3DS IPRs@mintz.com
`
`3
`
`Elm 3DS Exhibit 2155
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`

`
`MINTZ LEVIN
`Mirltz Levin Cohn Ferris Gov-sky and Popes PC
`
`EDUCATION
`University of \firginia (JD)
`Saint Anselm College (BA,
`Biochemistry)
`
`BAR ADMISSIONS
`Massachusetts
`
`Michael C. Newman
`Member
`
`_
`
`'
`
`vCard
`
`e-mail
`Boston
`+1.617.348.1626
`
`PRACTICES
`Intellectual Property
`
`Pate” '-m9a“°”
`'"te"e°tUa' PFOPGVTY 8‘
`Technology Litigation
`Litigation
`valuation 3. Assessment
`
`INDUSTRIES
`
`Te°hn°'°-9y
`
`Michael's practice is focused on his work with the US International Trade Commission (USITC).
`His cases in federal courts also include patents, trade secrets, and other intellectual property
`matters. The areas of technology in which Michael has particular experience include
`biochemistry, biotechnology, chemistry, computer soflware, mechanical devices, medical
`devices, semiconductors, and converged devices.
`
`Before joining Mintz Levin, Michael worked with the law firms Pepper Hamilton LLP and Fish &
`Richardson PC. He has also worked as a software engineer and has conducted biochemical
`research at Han/ard Medical School.
`
`Representative Matters
`
`Victory at CAFC: PTAB Decision Reversed and Remanded — Represented Straight Path IP
`in successfully appealing to the Court of Appeals ofthe Federal Circuit (CAFC) the adverse
`result of an inter partes review handled by another firm. The IPR decision cancelled all
`challenged claims of Straight Path’s US Patent No. 6,108,704. In the Straight Path IP Group,
`Inc. v. Sipnet EU SRO appeal, the CAFC for the first time completely reversed an adverse
`IPR decision, remanding the matter for further proceedings under the correct construction
`advocated by Minlz Levin and Straight Path.
`
`Defense ofMultiple lPRs — Point-to-Point Communication Over Computer Networks
`Representing Straight Patch IP Group in the defense of seventeen interpartes reviews filed
`against three US patents concerning technology for facilitating point-to-point
`communications over computer networks. Petitioners include Samsung Electronics Co., Ltd.;
`Cisco Systems, |nc.; Avaya |nc.; LG Electronics, |nc.; Toshiba Corp.; VIZIO, |nc.; Verizon
`Communications, |nc.; and Hulu, LLC.
`
`Certain sucralose, Sweeteners Containing sucralose, and Components Thereof (337-TA-
`604) Successfully represented a respondent in an ITC investigation involving patents for
`making sucralose sweeteners.
`
`Certain Probe Card Assemblies, Components Thereof and Certain Tested DRAM and
`NAND Flash Memory Devices and Products Containing Same (337-TA-621) Successfully
`represented a respondent in an ITC investigation involving patents for semiconductor probe
`cards. After nine-day trial, obtained complete victory on behalf of client— invalidating one
`patent and establishing non-infringement and no domestic industry for remaining asserted
`patents.
`
`Certain Electronic Devices, including Handheld, Wireless Communications Devices (337-
`TA-667) Represented complainant in three-patent ITC case and in parallel Federal District
`Court cases. Filed in December 2008, the cases were settled as to all respondents by May
`2010 and resulted in successful licensing agreements with each, including some ofthe
`largest and most recognized names in the converged device space — HTC, Panasonic,
`Research in Motion, and more.
`
`Certain Electronic Imaging Devices (337-TA-726) Represented complainant in this th ree-
`patent ITC case. Filed in June 2010 against converged device manufacturers and focused
`on digital camera technology found in cell phones, laptop computers, and personal digital
`assistants, the matter was fully settled in April 2011. The result was successful licensing
`programs with three out offour respondents, among which are recognized leaders in the
`electronics device manufacturing space — HTC, LG, Research in Motion, and more.
`
`Certain LED Photographic Lighting Devices and Components Thereof (337-TA-804)
`Represented California-based complainant (plaintiff) and its UK parent, companies that
`make LED lighting systems for use in film and TV production, at the International Trade
`Commission. The ITC handed down its Final Initial Determination ofinfringementon
`September 7, 2012. On January 17, 2013, the ITC issued a General Exclusion Order (GEO)
`against respondents (defendants) based in both China and the United States. The result in
`this case is particularly notable because it is rare forthe ITC to issue a GEO. It is much more
`common for complainants to seek and receive a Limited Exclusion Order from the court due
`to the rigorous criteria and careful balancing ofinterests thatapply to requests for GEOs.
`
`Certain Portable Communication Devices (337-TA-827) Represented complainant in the
`ITC and as plaintiffin multiple parallel District of Delaware cases. Successfully licensed all
`respondents, including some of the largest and most recognized names in the converged
`device space — Amazon, LG, Motorola, Pantech Wireless, Research in Motion, Sony, and
`more. Cases were filed in December 2011 and settled in May 2012.
`
`Certain Consumer Electronics and Display Devices and Products Containing Same (337-
`TA-836) Represented owners of the patent portfolio ofthe former Silicon Graphics as
`-
`-
`complainant in the ITC, and as plaintiffin multiple parallel District of Delaw
`e
`were filed between late 2011 and early 2012, and all were resolved by thefi4fiJ:fi Exhlblt
`
`Elm 3DS Exhibit 2155
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`

`
`2013. The technology at issue relates to LCD panels, central processor units, graphics
`processing units, and other microprocessor technology. Successfully licensed all
`respondents, including some of the largest and most recognized names in the converged
`device space — Apple, LG, Research in Motion, Samsung, and Sony.
`
`Certain Consumer Electronics with Display and Processing Capabilities (337-TA-884)
`Represented owners of the patent portfolio ofthe original Silicon Graphics, now known as
`Graphics Properties Holdings, as complainant in the International Trade Commission.
`Investigation was instituted in June 2013 and among the respondent entities were
`Panasonic, Toshiba, Vizio, and ZTE. Most respondents settled. The ITC hearing was held
`over several days in May 2014, and on August29, 2014 Mintz Levin successfully obtained a
`recommendation fora Limited Exclusion Order against the remaining respondent, which
`chose to settle while Commission review ofthe Administrative Law Judge’s was pending.
`
`Certain Communications or Computing Devices and Components Thereof (337-TA-925)
`Represented owner of portfolio of communications and computing patents from former
`enterprise communications business unitoflarge multinational innovation company.
`Investigation was instituted in August2014 as to respondententities Apple, Samsung
`Electronics, LG Electronics and HTC Corporation. Google participated as an intervenor.
`The investigation resolved priorto evidentiary hearing.
`
`Certain Computing or Graphics Systems, Components Thereof, and Vehicles Containing
`Same (337-TA-984) Represented owner of portfolio ofgraphics processing and
`microprocessor patents as Complainant in an ITC investigation adverse to a number of
`automotive manufacturers, and infotainmentsystem and chip suppliers. Respondents
`include Honda, Toyota, BMW, Audi, Volkswagen, NVIDIA, Texas Instruments, Renesas,
`Harman International, and Fujitsu-Ten. The investigation instituted in January of 2016 and
`resolved favorably prior to the conclusion of expert discovery in August of 201 6.
`
`Forbest International USA, LLC, Beijing Forbest Trade Co., Ltd., et. al — Successfully
`represented a group ofdefendants in patent litigation involving a process for making
`sucralose. Plaintiffvoluntarily dismissed its complaint after motions to dismiss for lack of
`standing and lack ofjurisdiction.
`
`Repligen et. al. v. Bristol-Myers Squibb (E.D. Mich. - 2:O0cv73690) — Represented a plaintiff
`in a case relating to the treatmentof rheumatoid arthritis. Case settled.
`
`Medfionic v. Abbott et. al. — Represent the defendant in a patent infringement lawsuit
`relating to cardiovascular stents. Case settled.
`
`Insight Technology Inc. v. SureFire, LLC — Represented the plaintiffin patent litigation
`involving laser aiming modules for handguns. Case settled.
`
`Insight Technology Inc. v. Glock Inc. and Glock Ges.m.b.H — Represented the plaintiff in
`patent litigation involving laser aiming modules for handguns. Case settled.
`
`Aplix, Inc., v. Velcro lndusmes Biz and Velcro USA, Inc. — Represented Velcro in patent
`litigation involving hook and loop fasteners. Case settled.
`
`Rembrandt Vision Technologies, L.F! v. CIBA Vision Corporation — Successfully represented
`the plaintiffin patentlitigation related to silicone hydrogel contact lenses. Obtained a $41
`million jury verdict forthe patentee.
`
`GE Homeland Protection Inc. v. DSA Detection LLC et. al. — Represented defendants in
`trade secrets and patent litigation relating to consumables for trace detection instruments,
`such as ion mobility spectrometers. Case settled.
`
`Represented Ugandan client pro bono in application for political asylum in the United
`States. Clientgranted political asylum
`
`Represented Tibetan client pro bono through removal proceedings in immigration
`court. Clientgranted political asylum
`
`Recognitions & Awards
`
`Massachusetts Super Lawyers: Rising Star— Intellectual Property Litigation (2013 - 2015)
`
`Publications
`
`Co-author, Mintz Levin convinces the Federal Circuit to Completely Reverse and
`Remand an Adverse IPR Final Written Decision for the First Time, Intellectual
`Property Article (12.09.2015)
`
`Co-author, Federal Circuit Affirms ITC Jurisdiction for Non-Practicing Entities,
`Intellectual Property Advisory (02.01 .201 3)
`
`Speaking Engagements
`
`Panelist, Patent Reform Litigation, IP Law Committee: Patent Reform Litigation,
`Massachusetts Chapter of the Federal Bar Association, Boston, MA (09.29.2015)
`
`Newsroom
`
`Quoted in PTAB Reverses Course, Upholds Teleconferencing Patent, Law360
`(05.25.2016)
`
`Elm 3DS Exhibit 2155
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`Elm 3DS Exhibit 2155
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`

`
`Mintz Levin Closes Chapter on Challenges to Patents Owned by Straight Path IP
`Group, (05.24.2016)
`
`Mintz Levin Represents NextGen in Dismissal of Medical Records Patent Case
`Dismissed Under Alice, (05.10.2016)
`
`Mintz Levin Secures IPR Victory on Behalf of Straight Path IP Group, Inc. ,
`(04.07.2016)
`
`Mintz Levin Secures IPR Victory on Behalf of Straight Path IP Group, Inc. ,
`(03.11.2016)
`
`Featured in Straight Path Patents Mostly Survive Samsung-Led AIA Review, Law360
`(03.08.2016)
`
`Quoted in LG, Hulu Tell PTAB Fed Circ. Erred in Reviving Network IP, Law360
`(02.09.2016)
`
`Mintz Levin Secures Unprecedented Appellate Victory on Behalf of Straight Path IP
`Group, Inc. , (11.30.2015)
`
`Eighty-Nine Mintz Levin Attorneys Named 2015 Massachusetts Super Lawyers and
`Rising Stars , (10.19.2015)
`
`Mintz Levin Attorneys Michael C. Newman and Robert J. Moore to Speak on
`Massachusetts Chapter of the Federal Bar Association IP Law Panel , (09.24.2015)
`
`Michael C. Newman Elevated to Member of Mintz Levin, (05.18.2015)
`
`Mintz Levin Elevates Seven Attorneys to Members of the Firm, (05.05.2015)
`
`Eighty-Five Mintz Levin Attorneys Named 2014 Massachusetts Super Lawyers and
`Rising Stars , (10.17.2014)
`
`seventy-Nine Mintz Levin Attorneys Named 2013 Massachusetts Super Lawyers
`and Rising Stars , (10.21.2013)
`
`© 2016 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. All Rights Reserved.
`
`Elm 3DS Exhibit 2155
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`Elm 3DS Exhibit 2155