`______________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________________
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`APPLE INC.,
`Petitioners,
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`v.
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`PARTHENON UNIFIED MEMORY ARCHITECTURE LLC,
`Patent Owner.
`______________________________
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`Case IPR No.: IPR2016-01135
`Patent 5,812,789
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`DECLARATION OF AMIR ALAVI IN SUPPORT OF PATENT OWNER’S
`UNOPPOSED MOTION FOR PRO HAC VICE ADMISSION OF AMIR
`ALAVI UNDER 37 C.F.R. § 42.10(c)
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`PUMA Exhibit 2008
`APPLE v. PUMA, IPR 2016‐01135
`Page 1
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`1.
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`2.
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`I, Amir Alavi, being duly sworn and upon oath, hereby attest to the following:
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`I am an attorney with the AZA law firm and represent the Patent Owner
`Parthenon Unified Memory Architecture LLC (“PUMA”) in the above
`captioned proceeding. I am submitting this declaration in support of Patent
`Owner’s Unopposed Motion for Pro Hac Vice Admission of Amir Alavi
`Under 37 C.F.R. § 42.10(c).
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`I am a member in good standing of the Bar of Texas, as well as the following
`Federal Courts:
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`a) U.S. District Court for the Northern District of Texas;
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`b) U.S. District Court for the Southern District of Texas;
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`c) U.S. District Court for the Western District of Texas;
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`d) U.S. District Court for the Eastern District of Texas; and
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`e) U.S. Court of Appeals for the Fifth Circuit.
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`3.
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`I have not been suspended or disbarred from practice before any court or
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`administrative body;
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`4.
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`I have never had an application for admission to practice before any court or
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`administrative body denied;
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`5.
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`I have never been subject to any sanction or contempt citation imposed by any
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`court or administrative body.
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`6.
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`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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`PUMA Exhibit 2008
`APPLE v. PUMA, IPR 2016‐01135
`Page 2
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`7.
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`I agree to be subject to the USPTO Rules of Professional Conduct set forth in
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`37 C.F.R. §§ 11.101 et. seq. and disciplinary jurisdiction under 37 C.F.R. §
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`11.19(a).
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`8.
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`I have applied to appear pro hac vice before the Office in IPR2015-01500;
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`IPR2015-01501; IPR2015-01502; IPR2016-00923; and IPR2016-00924 in
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`the last three (3) years; and
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`9.
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`I am an experienced litigation attorney, with experience in a significant
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`number of District Court litigation involving patent infringement, including
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`jury trials and Markman hearings. My biography is attached as Exhibit
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`2008. I am lead counsel for Parthenon Unified Memory Architecture in a
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`co-pending litigation in which U.S. Patent No. 5,812,789 is asserted against
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`HTC Corporation, HTC America, Inc., and Apple Inc. In those cases I have
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`been directly involved in all aspects of the case, including arguing two
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`Markman hearings and conduction discovery into infringement and
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`invalidity. As a result, I am familiar with the subject matter at issue in this
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`proceeding as result, including the prior art on which Petition relies in this
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`request, as well as the issues of claim construction that been briefed in the
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`litigation.
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`PUMA Exhibit 2008
`APPLE v. PUMA, IPR 2016‐01135
`Page 3
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`Respectfully Submitted,
`By: /s/ Amir Alavi
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`Amir Alavi
`Attorney for Patent Owner
`Parthenon Unified Memory
`Architecture, LLC
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`AHMAD, ZAVITSANOS, ANAIPAKOS,
`ALAVI &MENSING, P.C.
`1221 McKinney Street, Suite 2500
`Houston, TX 77010
`Telephone: 713-655-1101
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`Dated: January 12, 2017
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`PUMA Exhibit 2008
`APPLE v. PUMA, IPR 2016‐01135
`Page 4
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`Amir H. Alavi
`AHMAD, ZAVITSANOS, ANAIPAKOS, ALAVI & MENSING P.C.
`1221 McKinney St., Ste. 2500
`Houston, Texas 77010
`aalavi@azalaw.com
`(713) 655‐1101; Fax (713) 655‐0062
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`Amir H. Alavi represents plaintiffs and defendants in complex commercial litigation throughout
`the United States. He has litigated cases involving hedge funds and investment partnerships,
`intellectual property, securities fraud, mergers, energy trading, software development, natural
`gas pipelines, oil & gas mineral interests, construction defects, and the automotive industry.
`Since 2006, he has recovered more than half‐a‐billion dollars in settlements and verdicts for his
`clients.
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`Mr. Alavi is Board Certified in Civil Trial Law by the Texas Board of Legal Specialization, a
`distinction reserved for Texas trial lawyers with a high degree of trial experience and expertise.
`He has been recognized by attorneys across the country as one of the Best Lawyers in America
`for commercial litigation, is AV‐rated by Martindale Hubbell and is a Life Fellow of the Texas Bar
`Foundation. He has been consistently recognized on the Thomson Reuters Texas Super
`Lawyers listing and by H Texas magazine as a “Top Lawyer in Houston.”
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`Prior to joining the Firm, Mr. Alavi was the general counsel of a privately‐held company with over
`5,000 employees. While there, he managed the mergers and acquisition department and handled
`several acquisitions of public and private companies.
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`Some of Mr. Alavi’s representative cases include:
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` Rembrandt Wireless Technologies, LP v. Samsung Electronics Co. Ltd., et al. – Represented
`Rembrandt in a patent infringement lawsuit against Samsung involving Bluetooth™ EDR
`technology. After a one‐week trial, a jury returned a verdict in the amount of $15.75 million for
`Rembrandt.
` XimpleWare, Inc. v. Versata Software Inc., et al. – Represented Versata and its clients in a patent
`infringement lawsuit, and companion copyright lawsuit, brought by an open source software
`provider. Secured dismissal of claims against Versata’s clients and the case was settled on a
`confidential basis on the eve of a ruling by the Court on a sanctions motion filed by Versata and
`its clients.
` Houston v. Saracen Energy Advisors, L.P., et al. – Represented a natural gas energy trader in
`claims for $30 million in bonus and deferred compensation. The case settled on a confidential
`basis.
` Versata Software Inc. et al v. SAP America Inc et al. – Mr. Alavi was a member of the AZA legal
`team that Versata/Trilogy hired a few months before the retrial of a significant patent case. AZA
`was tasked with developing the lost profits claim for Versata/Trilogy. With AZA’s help,
`Versata/Trilogy secured the second largest patent verdict reported to Verdict Search nationwide
`in 2011 as of May 31. Read about the patent verdict here.
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`PUMA Exhibit 2008
`APPLE v. PUMA, IPR 2016‐01135
`Page 5
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` Culliver v. George Bishop, et al. – Represented the plaintiff, a shareholder of an independent oil
`and gas company, in a shareholder oppression case seeking over $150 million. The case settled
`on a confidential basis prior to trial.
` Brown Investment Management, L.P. v. Parkcentral Global, L.P. – Represented an investor in the
`Parkcentral hedge fund which, with a related hedge fund, lost over $2.5 billion. In an important
`case involving hedge funds, Mr. Alavi secured a verdict granting his client access to the fund’s
`investor list. The case was appealed to the Delaware Supreme Court and affirmed.
` Mr. Alavi represented the former employee of an independent oil and gas exploration company
`in an arbitration seeking to recover plaintiff’s $60 million ownership interest in various oil and
`gas properties. The case was resolved on a confidential basis.
` Tennessee Gas Pipeline Co. v. Columbia Gulf Transmission Co. – Represented Columbia Gulf
`Transmission Co. in a breach of contract lawsuit involving control (and the original construction)
`of the Blue Water offshore natural gas pipeline system. Following a bench trial, the case was
`resolved on a confidential basis.
` Marc Werner, et al v. KPMG, LLP – Represented limited partners of an investment partnership in
`a securities fraud case against KPMG. The case was resolved on a confidential basis.
` WesternGeco, LLC v. GX Technology Corporation, et al. – Represented six employees of GX
`Technology in a multi‐million dollar theft of trade secrets lawsuit by WesternGeco. Secured a
`voluntary dismissal of all six defendants on the eve of trial.
`Lenore Schmick Trust, et al v. KPMG, LLP – Represented limited partners of an investment
`partnership in securities fraud case against KPMG. During trial, the case was resolved on a
`confidential basis.
` Collins v. Beazer Homes USA, Inc. et al. – Represented Judy Collins in one of the first Sarbanes‐
`Oxley cases to be filed in federal court.(see Business Week article).
` Rowe v. Baker Hughes, Inc. – Represented Paula Rowe in ERISA whistleblower and age
`discrimination case against Baker Hughes.
` Alan Ferguson v. Baker Hughes, Inc. et al. – Represented Alan Ferguson in a whistleblower lawsuit
`against Baker Hughes (see New York Times article). As a result of Mr. Ferguson’s allegations, the
`Department of Justice and the Securities and Exchange Commission began an investigation into
`Baker Hughes’ business practices (see news article). As a result of that investigation, which
`expanded to include conduct in other countries, Baker Hughes reached a record $44.1 million
`settlement with the SEC and Department of Justice which included one of its subsidiaries pleading
`guilty to violations of the Foreign Corrupt Practices Act (see Reuters Article). Mr. Ferguson’s case
`was resolved on a confidential basis.
` Chung’s Gourmet Foods v. Delta DailyFoods Texas – Represented Chung’s Gourmet Foods, one
`of the world’s largest manufacturers of egg rolls in a tortuous interference case against Delta
`DailyFoods. After nearly two weeks of trial, Mr. Alavi and the trial team obtained a verdict and
`judgment in the amount of nearly $18 million.
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`EDUCATION
` Stanford University (B.A.)
` University of Chicago Law School (J.D. with honors)
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`PUMA Exhibit 2008
`APPLE v. PUMA, IPR 2016‐01135
`Page 6
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`HONORS & DISTINCTIONS
`Law Clerk to the Honorable Jerry E. Smith, United States Court of Appeals, 5th Circuit
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` The Best Lawyers in America, 2013 – 2017
` Texas Super Lawyers, 2005‐ 2016
` Texas Rising Star, 2004‐2005
` Houston’s Top Lawyers, 2006‐2007, H Texas Magazine
` Houston’s Top Lawyers for the People, 2005‐2009, H Texas Magazine
` Professionals on the Fast Track, 2004‐2005, H Texas Magazine
` Million Dollar Advocates Forum
` Multi Million Dollar Advocates Forum
` Marquis Who’s Who in American Law (14th Edition)
` Editor‐in‐Chief, Harvard Journal of Public Policy Symposium Edition, 1995
` The John Olin Foundation Fellowship for the Study of Law and Economics
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`PROFESSIONAL AFFILIATIONS
` State Bar of Texas
` United States Court of Appeals for the Fifth Circuit
` United States District Court for the Southern District of Texas
` United States District Court for the Eastern District of Texas
` United States District Court for the Western District of Texas
` Texas Bar Foundation Life Fellow
` The College of the State Bar of Texas
` American Bar Association
` Houston Bar Association
` Houston Young Lawyers Association
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`JUDICIAL OPINIONS
` Amschwand v. Spherion Corp., 505 F.3d 342 (5th Cir. 2007)
` Gordon v. Cinergy Corp., 2007 WL 471130 (S.D.Tex. 2007)
` Werner v. KPMG, LLP, 415 F.Supp.2d 688 (S.D.Tex. 2006)
` Willis v. Donnelly, 199 S.W.3d 262 (Tex. 2006)
` Collins v. Beazer Homes USA, Inc., 334 F.Supp.2d 1365 (N.D. Ga. 2004)
` Willis v. Donnelly, 118 S.W.3d 10 (Tex.App. – Houston [14th Dist.] 2003)
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`PUBLICATIONS, PAPERS AND CLE PRESENTATIONS
` Reducing Litigation Costs in a Down Economy, Donavan Watkins Continuing Legal Education
`Program, June 2009.
` Requests for Production of Documents and Requests for Disclosure, University of Houston Law
`Foundation, Advanced Evidence and Discovery Course, November 2008.
` Practical Considerations in Dealing with Intellectual Capital, Lorman Education Services,
`Documents Employers Can’t Live Without, June 2006.
` Retaliation Claims: Including Sarbanes‐Oxley, University of Houston Law Foundation, Employer‐
`Side Employment Law, December 2005.
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`PUMA Exhibit 2008
`APPLE v. PUMA, IPR 2016‐01135
`Page 7
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` Preparing your Witness for Deposition and Trial, University of Houston Law Foundation, Litigation
`and Trial Tactics, October 2005.
` Theft of Trade Secrets, Employee Raiding and Unfair Competition, University of Houston Law
`Foundation, Corporate Partnership and Business Law, June 2004.
` Retaliation Claims in Federal and State Court: Including Sarbanes‐Oxley Whistleblower Claims,
`University of Houston Law Foundation, Employment Law Seminar, April 2004.
` Preparing your Witness for Deposition and Trial, University of Houston Law Foundation, Litigation
`and Trial Tactics, March 2004.
` Unfair Competition, Theft of Trade Secrets, and Employee Raiding, University of Houston Law
`Foundation, Corporate Partnership and Business Law, June 2003.
` Employment Law Aspects of the Sarbanes‐Oxley Corporate Responsibility Statute (co‐author),
`University of Houston Law Foundation, Employment Law Seminar, March 2003.
` Point/Counterpoint of the Sarbanes‐Oxley Act of 2002: a View from the Employer’s and
`Employee’s Perspectives (co‐author), State Bar of Texas, Advanced Employment Law Course
`2003, February 2003.
` Employment Contracts: What to include, What to Avoid, South Texas College of Law, Business
`Organization Course, October 2002.
` Credibility and Impeachment: Fundamentals of Direct and Cross‐Examination, University of
`Houston Law Foundation, How to Offer and Exclude Evidence, September 2002.
` Trade Secrets and Covenants Not to Compete, University of Houston Law Foundation,
`Employment and Labor Law, September 2002.
` Evidence Without Witnesses: Stipulations, Discovery Products, Judicial Notice, Summons, Etc.,
`University of Houston Law Foundation, Trial Tactics, September 2002.
` Protecting or Raiding Intellectual Capital, South Texas College of Law’s Labor and Employment
`Law Conference, July 2002.
` Preparing your Witness for Deposition or Trial, University of Houston Law Foundation, May 2002.
` Featured Speaker, IT Service Summit, San Francisco, California, March 2000.
` Contributing author, Survey of State Class Action Law, A Report of the State Laws Subcommittee
`of the Class Actions and Derivative Suits Committee, Section of Litigation, American Bar
`Association, 1999.
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`PUMA Exhibit 2008
`APPLE v. PUMA, IPR 2016‐01135
`Page 8
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