UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE, INC.
`Petitioner
`
`V.
`
`. VOIP-PAL.COM,, INC.
`Patent Owner
`
`Case IPR2016—01198
`
`Patent 9,179,005
`
`DECLARATION OF WILLIAM R. ZIMMERMAN
`
`IN SUPPORT OF PRO HAC VICE MOTION
`
`Voip-Pal Ex. 2051
`IPR2016—01198
`
`Voip-Pal Ex. 2051
`IPR2016-01198
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE, INC.
`Petitioner
`
`V.
`
`. VOIP-PAL.COM,, INC.
`Patent Owner
`
`Case IPR2016—01198
`
`Patent 9,179,005
`
`DECLARATION OF WILLIAM R. ZIMMERMAN
`
`IN SUPPORT OF PRO HAC VICE MOTION
`
`Voip-Pal Ex. 2051
`IPR2016—01198
`
`Voip-Pal Ex. 2051
`IPR2016-01198
`
`
`
`IPR20160-01198
`
`Apple, Inc. V. Voip—Pal, Inc.
`
`I, William R. Zimmerman, do hereby declare:
`
`1.
`
`I am a partner in the law firm of Knobbe Martens Olson & Bear,
`
`LLP. Lead counsel in this inter partes review proceeding is Kerry S. Taylor, who
`
`is also a partner in the law firm of Knobbe, Martens, Olson, & Bear, LLP. Mr.
`Taylor is registered to practice before the United States Patent and Trademark
`
`Office and holds Registration No. 43,947. With respect to this proceeding, I will
`
`work closely with Mr. Taylor.
`
`2.
`
`I have over 18 years of experience as a patent litigator and have
`
`represented clients in numerous patent litigation cases in various United States
`
`District Courts and the Court of Appeals for the Federal Circuit.
`
`I also have
`
`experience in inter partes review proceedings,
`
`for example,
`
`IPR2013—00024,
`
`IPR2013-00128,
`
`IPR2013-00266,
`
`IPR2013—00517,
`
`IPR2013—00518,
`
`IPR2014-
`
`00549,
`
`IPR2014—00550,
`
`IPR2014-01093,
`
`IPR2015—00265,
`
`IPR2015-00268,
`
`IPR2016—00397,
`
`IPR2016-00399,
`
`IPR2016—00549,
`
`IPR2016—00553,
`
`IPR2016-
`
`00557, and IPR2016-00559.
`
`In numerous of those proceedings, I have conducted
`
`telephone conferences with opposing counsel and Board members, and I have
`
`presented the Oral Argument for numerous of those proceedings.
`
`3.
`
`I am comfortable and experienced with technically and legally
`
`complex matters, such as will be present in this proceeding.
`
`In addition to my
`
`experience with technically and legally complex patent matters, I hold a Bachelor
`
`of Science degree in Chemical Engineering from the University of Notre Dame.
`
`I
`
`also served as a law clerk to the Honorable Alvin A. Schall, Circuit Judge of the
`
`United States Court of Appeals for the Federal Circuit.
`
`
`
`IPR20160—01198
`
`Apple, Inc. V. Voip-Pal, Inc.
`
`4.
`
`I am familiar with US. Patent 9,179,005 and with the issues in the
`
`inter partes review of US. Patent 9,179,005, which forms the basis for this
`
`proceeding.
`
`I also am familiar with US. Patent 8,542,815 and with the issues in
`
`inter partes review of US. Patent 8,542,815, which forms the basis for related .
`
`matter IPR2016-01201. For example, I am aware that the Board has instituted
`
`inter partes review of various claims in both proceedings based on two
`
`obviousness grounds presented in each of the two respective Petitions, and that
`
`Patent Owner has filed respective Responses discussing prior reduction to practice
`
`and non-obviousness of the claims.
`
`In view of my experience in inter partes
`
`review proceedings, legal and technical background, and familiarity with the issues
`
`in the present matter and the related matter, Patent Owner Voip-Pal, Inc. has
`
`requested my services in the present matter and related matter IPR2016-01201.
`
`5.
`
`I am a member in good standing of the Bar of the State of California
`
`and the Bar of the District of Columbia.
`
`I am admitted to practice before the
`
`Supreme Court of the United States and before the United States Court of Appeals
`
`for the Federal Circuit.
`
`6.
`
`I have never been suspended or disbarred from practice before any
`
`court or administrative body.
`
`7.
`
`I have never had a court or administrative body deny my application
`
`for admission to practice.
`
`8.
`
`I have never been sanctioned or cited for contempt by any court or
`
`administrative body.
`
`
`
`IPR20160—01198
`
`Apple, Inc. V. Voip—Pal, Inc.
`
`9.
`
`I have read and will comply with the Office Patent Trial Practice
`
`Guide and the Board’s Rules of Practice for Trials set forth in Part 42 of Title 37 of
`
`the CPR.
`
`p
`
`10.
`I agree to be subject to the United States Patent and Trademark Office
`Rules of Professional Conduct set forth in 37 C.F.R. §§ ll.10l et seq., and
`
`disciplinary jurisdiction under 37 C.F.R. § ll.l9(a).
`
`11.
`
`In the past
`
`three (3) years,
`
`I have appeared pro hac vice in
`
`proceedings before the United States Patent and Trademark Office in the matters of
`
`Intelligent Bio—Systems,
`
`Inc.
`
`v.
`
`Illumina Cambridge Ltd,
`
`IPR2013—00128,
`
`IPR2013—00266, IPR2013—00517, and IPR2013—00518;
`
`in the matter of Ariosa
`
`Diagnostics,
`
`Inc. v.
`
`Illumina, Ina,
`
`IPR2014—01093;
`
`in the matters of Noven
`
`Pharmaceuticals, Inc. and Mylan Pharmaceuticals Inc. v. Novartis AG and LTS
`
`Lohman Therapie-Systeme AG, IPR2014—00549, IPR20l4—00550, IPR2015—00265
`and IPR2015—00268; in the matters of Lupin Limited and Lupin Pharmaceuticals
`
`Inc. v. iCeutica Pty Ltd, IPR2016—OO397 and IPR2016~00399g and in the matters
`
`of Illumina, Inc. v. Cornell Research Foundation, Inc, IPR2016—00549, IPR2016—
`
`00553, IPR2016—00557, and IPR2016—00559.
`
`12.
`I 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 were 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.
`
`
`
`IPR20160-01198
`
`Apple, Inc. v. Voip—Pal, Inc.
`Dated: 412M l7
`
`W
`By: '
`
`i
`
`William R. Zimmerman
`
`25765497
`
`
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