UNITED STATES PATENT AND TRADEMARK OFFICE
`
`IPRZOI6-01159
`
`U.S. Pat. NO. 8,694,657
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`FACEBOOK INC.
`
`Petitioner
`
`V.
`
`WINDY CITY INNOVATIONS, LLC
`
`Patent Owner
`
`U.S. Pat. NO. 8,694,657
`Issue Date: April 8, 2014
`Title: REAL TIME COMMUNICATIONS SYSTEM
`
`DECLARATION OF ALFRED R. FABRICANT
`
`IN SUPPORT OF WINDY CITY INNOVATIONS, LLC’S MOTION FOR
`
`PRO HAC VICE ADMISSION OF ALFRED R. FABRICANT PURSUANT
`
`TO 37 C.F.R. § 42.10
`
`Case NO. IPR201 6-01 159
`
`
`
`IPRZOI6-01159
`
`U.S. Pat. NO. 8,694,657
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`FACEBOOK INC.
`
`Petitioner
`
`V.
`
`WINDY CITY INNOVATIONS, LLC
`
`Patent Owner
`
`U.S. Pat. NO. 8,694,657
`Issue Date: April 8, 2014
`Title: REAL TIME COMMUNICATIONS SYSTEM
`
`DECLARATION OF ALFRED R. FABRICANT
`
`IN SUPPORT OF WINDY CITY INNOVATIONS, LLC’S MOTION FOR
`
`PRO HAC VICE ADMISSION OF ALFRED R. FABRICANT PURSUANT
`
`TO 37 C.F.R. § 42.10
`
`Case NO. IPR201 6-01 159
`
`
`
`IPR20l6—0l 159
`
`U.S. Pat. No. 8,694,657
`
`I, Alfred R. Fabricant, declare as follows:
`
`1.
`
`I have been practicing in the field of patent litigation for over 20 years.
`
`I
`
`have been lead counsel in over 30 patent cases over my career.
`
`2.
`
`I am a member in good standing of the Bar of the State of New York and the
`
`Bar of the State of Arizona. I am admitted to practice in the United States District
`
`Courts for the Southern District of New York, the Eastern District of New York,
`
`the District of Arizona, and the Eastern District of Texas; the United States Courts
`
`of Appeal for the Federal Circuit, the Second Circuit, and the Fourth Circuit; and
`
`the United States Supreme Court.
`
`3.
`
`I have never been suspended, disbarred, sanctioned, or cited for any
`
`contempt by any court or administrative body.
`
`4.
`
`I have never had a court or administrative body deny my application for
`
`admission to practice.
`
`5.
`
`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.
`
`6.
`
`I agree to be subject to the USPTO Rules of Professional Conduct as set
`
`forth in 37 C.F.R. §§ ll.l0l, et seq., and disciplinary jurisdiction under 37 C.F.R.
`
`§ l l.19(a) and to be subject to the USPTO Rules of Professional Conduct as set
`
`forth in Changes to Representation of Others Before the United States Patent and
`
`Trademark Office; Final Rule, 78 Fed. Reg. 20180 (Apr. 3, 2013) (effective May 3,
`
`
`
`IPR2016-01159
`
`U.S. Pat. No. 8,694,657
`
`2013).
`
`7.
`
`I am familiar with the subject matter and patent-at—issue in this proceeding.
`
`I have spent a substantial amount of time becoming familiar with the subject matter
`
`of the patent-at-issue, including reviewing the patent itself, the patent’s file history,
`
`the pertinent prior art, the Petition, and the accompanying exhibits. I have spent a
`
`substantial amount of time becoming similarly familiar with the subject matter of
`
`the patents—at—issue in related IPR proceedings. I have spent a substantial amount
`
`of time becoming familiar with the papers and exhibits filed in the instant
`
`proceeding and the related proceedings involving Windy City Innovations, LLC,
`
`which include: IPR2016-01067 (U.S. Pat. No. 8,407,356), IPR2016—01137 (U.S.
`
`Pat. No. 8,473,552), IPR2016-01138 (U.S. Pat. No. 8,473,552), IPR2016—01141
`
`(U.S. Pat. No. 8,458,245), IPR2016-01146 (U.S. Pat. No. 8,473,552), IPR2016-
`
`01147 (U.S. Pat. No. 8,473,552), IPR2016-01155 (U.S. Pat. No. 8,694,657),
`
`IPR2016-01156 (U.S. Pat. No. 8,458,245), IPR2016-01157 (U.S. Pat. No.
`
`8,407,356), IPR2016-01158 (U.S. Pat. No. 8,473,552), and IPR2016-01159 (U.S.
`
`Pat. No. 8,694,657).
`
`8.
`
`In the past three years, I have applied to appear pro hac vice in the following
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`proceedings before the Office: IPR2016—0018 (granted, Paper 23 entered May 4,
`
`2016); IPR2016-00418 (granted, Paper 11 entered May 3, 2016); IPR2016-00419
`
`(granted, Paper 10 entered May 3, 2016); IPR2016-00421 (granted, Paper ll
`
`
`
`entered May 19, 2016); and IPR20I6-00422 (granted, Paper 10 entered May 19,
`
`IPR2016—0l 159
`
`U.S. Pat. No. 8,694,657
`
`2016).
`
`9.
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`I hereby declare statements made herein of my own knowledge are true and
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`that all statements made on information and belief are believed to be true; and
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`further that these statements are made with the knowledge that willful false
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`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 No. 8,694,657.
`
`Dated January 17, 2017
`
`Respectfully submitted,
`
`
`
`Alfred R. F abricant
`
`afabricant brownrudniokcom
`
`Brown Rudniek LLP
`
`7 Times Square
`New York, NY 10036
`Tel: 212-209-4800
`
`Fax. 212-209-4801
`
`
`
`IPR2016-01 159
`
`U.S. Pat. No. 8,694,657
`
`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6(e)(4) & 42.105(a)
`
`A copy of the DECLARATION OF ALFRED R. FABRICANT IN
`
`SUPPORT OF WINDY CITY INNOVATIONS, LLC’S MOTION FOR PRO
`
`HAC VICE ADMISSION OF ALFRED R. FABRICANT PURSUANT TO 37
`
`C.F.R. § 42.10 has been served on Petitioner at the correspondence of the
`
`Petitioner as follows:
`
`By Email:
`
`By Email:
`
`Heidi L. Keefe (Reg. No. 40,673)
`hkeefe@cooley.com
`zpatdcdocketing@oooley.com
`COOLEY LLP
`
`Phillip E. Morton (Reg. No. 57,835)
`pmorton@cooley.com
`zpatdcdocketing@cooley.corn
`COOLEY LLP
`
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington D.C. 20004
`
`By Email:
`
`Andrew C. Mace (Reg. No. 63,342)
`amace@coo1ey.com
`COOLEY LLP
`
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washin ton, DC 20004
`
`January 17, 2017
`
`By:
`
`/Vincent]. Rubino III/
`
`Vincent J. Rubino, III (Reg. No. 68,504)
`Lead Counsel for Petitioner
`
`Brown Rudniok LLP
`
`7 Times Square
`New York, NY 10036
`Tel: 212-209-4800
`
`Fax: 212-209-4801
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