UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.
`
`Petitioner,
`
`V.
`
`VOlP-PAL.COM, INC.,
`
`Patent Owner
`
`
`
`Case No. IPR2016-01201
`
`US Patent 8,542,815
`
`
`DECLARATION IN SUPPORT OF PATENT OWNER’S
`OPPOSITION TO MOTION FOR SANCTIONS
`
`Voip-Pal Exhibit 2056
`Voip-Pal Exhibit 2056
`IPR2016-01201
`IPR2016-01201
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.
`
`Petitioner,
`
`V.
`
`VOlP-PAL.COM, INC.,
`
`Patent Owner
`
`
`
`Case No. IPR2016-01201
`
`US Patent 8,542,815
`
`
`DECLARATION IN SUPPORT OF PATENT OWNER’S
`OPPOSITION TO MOTION FOR SANCTIONS
`
`Voip-Pal Exhibit 2056
`Voip-Pal Exhibit 2056
`IPR2016-01201
`IPR2016-01201
`
`
`
`IPR2016—01201
`
`Apple Inc. v. Voip—Pal
`
`1, Kevin N. Malek, declare as follows:
`
`1.
`
`I am an attorney registered to practice before the United States Patent
`
`and Trademark Office.
`
`I submit this declaration based on my personal knowledge
`
`of the facts and matters presented herein.
`
`2.
`
`I have reviewed the Exhibits 3003 - 3008' in this proceeding, which are
`
`indicated to be copies of letters sent by Dr. Sawyer (the “Sawyer Letters”).
`
`1 have
`
`also reviewed the Declaration of Adam Knecht dated December 18, 2017 (“Knecht
`
`Declaration” at Exhibit 2057), which I understand is being filed as an Exhibit
`
`herewith.
`
`3.
`
`For purposes of this declaration, all references to the May 1, 2017 letter
`
`of Dr. Sawyer will refer to the copy of the May 1, 2017 letter attached to the Knecht
`
`Declaration, which includes the enclosures omitted in Exhibit 3003.
`
`4.
`
`Exhibit 2058 is a true and correct copy of a document that the May
`
`Sawyer letter cites, at page 2, as “O’Brien, R., Weir, K., & Young, C. (2014, May
`
`1) as “Revealed: Federal judges guilty of owning stock in corporations they ruled
`
`on. Occupy.com,” which I downloaded on January 12, 2018 from the following
`
`Internet
`
`URL:
`
`http://www.occupy.com/article/revealed-federal-judges-guilty-
`
`owning—stock-corporations-they-ru1ed#sthash.dUEdet6.iJSNrn4s.dpbs
`
`‘ All Exhibit numbers used in this Declaration are numbers designated to the various exhibits in this IPR proceeding.
`
`
`
`lPR2016-01201
`
`Apple Inc. v. Voip-Pal
`
`5.
`
`Exhibit 2059 is a true and correct copy of a document that the May
`
`Sawyer letter cites, at page 2, as a letter dated August 7, 2013 from the United States
`
`Patent and Trademark Office of the General Counsel responding to a USPTO FOIA
`
`Request in a proceeding concerning US. Pat. No. 7,139,761, which I downloaded
`
`on
`
`January
`
`12,
`
`2018
`
`from
`
`the
`
`following
`
`Internet
`
`URL:
`
`https://www.fbcoverup.com/docs/library/ZO13—08-07-Patent-Office-FOIA-
`
`Response-REDACTED—CONFLICTS—LOGS-re-Leader—v-Facebook-F-1 3-00218-
`
`Aug-7-2013.pdf
`
`6.
`
`Exhibit 2060 is a true and correct copy of a document that the May
`
`Sawyer letter cites, at page 2, as a “Questionnaire for Non-Judicial Nominees” that
`
`he states was answered by the “Under Secretary of Commerce for Intellectual
`
`PrOperty and Director of the United States Patent and Trademark Office, Michelle
`
`K. Lee,” and which I downloaded on January 12, 2018 from the following Internet
`
`URL
`
`referenced
`
`by
`
`Dr.
`
`Sawyer:
`
`https://www.judiciarysenate.gov/imo/media/doc/Lee%20Questionnaire%20Final.p
`
`df
`
`7.
`
`Exhibit 2061 is a true and correct copy of version of an article that the
`
`May Sawyer letter cites, at page 3, as “Davis, R. (2014, August 14) as “PTAB’S
`
`“Death Squad’ label not totally off-base, chief says,” which I downloaded as a cached
`
`link in Google’s search results on January 12, 2018 for the following Internet URL:
`
`
`
`IPR2016-01201
`
`Apple Inc. v. Voip—Pal
`
`https://www.1aw360.com/articles/567550/ptab-s-death-squad-label-not-totally-off-
`
`base-chief-says
`
`8.
`
`Exhibit 2062 is a true and correct copy of a document that the May
`
`Sawyer letter cites, at page 3, as “Graham, S. & Shuchman, L. (2015, Fall) as “The
`
`Brainy Bunch. Intellectual Property: An ALM Supplement, 6,” which I downloaded
`
`on
`
`January
`
`12,
`
`2018
`
`from
`
`the
`
`following
`
`Internet
`
`URL:
`
`https://www.ropesgray.com/~/media/Files/articles/201S/September/201509I 1_PT
`
`AB_Reprint.ashx
`
`9.
`
`Exhibit 2063 is a true and correct copy of a document that the May
`
`Sawyer letter cites, at page 4, referred to as USPTO PTAB statistics, which I
`
`downloaded on
`
`January
`
`12,
`
`2018
`
`from the
`
`following Internet URL:
`
`httpszllwww.uspto.gov/sites/default/files/documents/aia_statistics_january201 7.pdf
`
`10.
`
`Exhibit 2064 is a true and correct copy of an article that the May Sawyer
`
`letter cites, at page 4, as “Davis, R. (2017, April 24) Fed. Circ. Reverses PTAB nix
`
`of Synopsys Circuit patent. Law 360,” which I downloaded as a cached link in
`
`Google’s search results on January 12, 2018 for the following Internet URL:
`
`httpszllwww.1aw360.com/articles/91 643 1/fed-circ-reverses—ptab—nix—of—synopsys-
`
`circuit-patent
`
`1 1.
`
`Exhibit 2065 is a true and correct copy of a document that the May
`
`Sawyer letter cites, at page 4, as “Scheller, B.M. & Ferraro, V.M. (2017, April 25).
`
`
`
`|PR2016—01201
`
`Apple Inc. v. Voip-Pal
`
`Federal Circuit to PTAB: No short cuts allowed. The National Law Review,” which
`
`I downloaded on January
`
`12, 2018 from the
`
`following Internet URL:
`
`https://www.natlawreview.c0m/article/federal-circuit-to-ptab-no-short-cuts-
`
`allowed
`
`12.
`
`Exhibit 2066 is a true and correct copy of a document that the May
`
`Sawyer letter cites, at pages 4-5, as “Couturier, K. (2016, Dec. 20). How Europe is
`
`going after Apple. Google, and other US. tech giants. New York Times,” which I
`
`downloaded
`
`on
`
`January
`
`12,
`
`2018
`
`from the
`
`following
`
`lntemet URL:
`
`https://www.nytimes.com/interactive/2015/04/13/technology/how—europe-is—going-
`
`after-us-tech-giantshtml
`
`13.
`
`Exhibit 2067 is a true and correct copy of a document that the May
`
`Sawyer letter cites, at page 5, as “Manjoo, F. (2017, Jan. 4). Tech giants seem
`
`invincible. That worries lawmakers. New York Times,” which I downloaded on
`
`January
`
`12,
`
`2018
`
`from
`
`the
`
`following
`
`lntemet
`
`URL:
`
`https://www.nytimes.com/2017/0l/04/technology/techs-next—battle-the-frightful—
`
`five-vs-lawmakers.html
`
`14.
`
`Exhibit 2068 is a true and correct copy of a document that the May
`
`Sawyer letter cites, at page 5, as “Quinn, G. & Brachmann, S. (2017, Feb. 2, 2017).
`
`Michelle Lee’s views on patent quality out of touch with reality facing patent
`
`applicants”, which I downloaded on January 12, 2018 from the following Internet
`
`
`
`lPR2016-01201
`
`Apple Inc. v. Voip-Pai
`
`URL referenced:
`
`http://www.ipwatchdog.com/20l7/02/02/michelle—lees—patent—
`
`quality-reality/id=771 58/
`
`15.
`
`Exhibit 2069 is a true and correct copy of a document that the May
`
`Sawyer letter cites, at page 5, as “Quinn, G. (2017, April 10). Michelle Lee launches
`
`PTAB initiative to “shape and improve’ IPR proceedings,” which I downloaded on
`
`January
`
`12,
`
`2018
`
`from
`
`the
`
`following
`
`Internet
`
`URL:
`
`http://www.ipwatchdog.com/201 7/04/10/michelle-lee-ptab-initiative-ipr-
`
`proceedings/id=8 1 93 2/
`
`16.
`
`Exhibit 2070 is a true and correct copy of a document cited in
`
`attachment 1 to the May Sawyer letter that I downloaded on January 12, 2018 from
`
`the following lntemet URL: http://watchdog.org/265844/google-obama-revolving-
`
`door/ which redirected to Exhibit 2070.
`
`17.
`
`Exhibit 2071 is a true and correct copy of a document cited in
`
`attachment 1 to the May Sawyer letter that I downloaded from the following lntemet
`
`URL: https://theintercept.com/2016/04/22/googles-remarkably-close-relationship—
`
`with—the-obama-white-house-in-two-charts/
`
`18.
`
`Exhibit 2072 is a true and correct copy of a document cited in
`
`attachment 1 to the May Sawyer letter that
`
`I downloaded on January 12, 2018 from
`
`the following Internet URL: https://artistrightswatch.com/2016/11/18/scleland-
`
`how-google-is-anti-employment-anti-property-pro—regulation/
`
`
`
`IPR2016-O1201
`
`Apple Inc. v. Voip—Pal
`
`19.
`
`Exhibit 2073 is a true and correct copy of a press release of Patent
`
`Owner.
`
`20.
`
`1 was unable to locate or retrieve a copy of the document cited in
`
`attachment
`
`1 of the May Sawyer letter as: http://www.ipnav.com/blog/the-fox—
`
`guarding-the—chicken—coop/?printPDF
`
`21.
`
`Exhibit 2074 is a true and correct copy of a document cited in
`
`attachment 1 of the May Sawyer letter, that] downloaded on January 12, 2018 from
`
`the following Internet URL: https://forums.app1einsider.com/discussion/161 152
`
`22.
`
`Exhibit 2075 is a true and correct copy of a document cited in
`
`attachment 1 of the May Sawyer letter that I downloaded on January 12, 2018 from
`
`the following Internet URL: www.patentattorney.com/ipr—statistics-revisited-yep—
`
`its—a-patent—kiHing-field
`
`23.
`
`Exhibit 2076 is a true and correct copy of a document cited in
`
`attachment 1 of the May Sawyer letter that I downloaded on January 12, 2018 from
`
`the following lntemet URL: http://www.ipwatchdog.com/2014/03/24/ptab-death-
`
`squads-are—all-commercia1ly-viable—patents-invalid/id=48642/
`
`24.
`
`Exhibit 2077 is a true and correct copy of a document cited in
`
`attachment 1 of the May Sawyer letter that I downloaded on January 12, 2018 from
`
`the following Internet URL: http://ipwire.com/stories/dear-congress-small-request—
`
`behalf-innovators—theoretically-represent—part-Z/
`
`
`
`IPR2016-O1201
`
`Apple Inc. v. Voip-Pal
`
`25.
`
`Exhibit 2078 is a true and correct copy of a document cited in
`
`attachment 1 0f the May Sawyer letter that I downloaded on January 12, 2018 from
`
`the following Internet URL: http://www.ipwatchdog.com/20l7/04/28/conflicts—of—
`
`interest—ptab-apple/id=82628/
`
`26.
`
`Exhibit 2079 is a true and correct copy of a document cited in
`
`attachment 1 of the May Sawyer letter, that] downloaded on January 12, 2018 from
`
`the
`
`following lntemet URL:
`
`http://www.ipwatchdog.com/2017/02/06/patent-
`
`owners-iprs-bloomberg—aipla/id=78029/
`
`27.
`
`Exhibit 2080 is a true and correct copy of a document cited in
`
`attachment 1 of the May Sawyer letter that I downloaded on January 12, 2018 from
`
`the following lntemet URL: https://atvmdoe.wordpress.com/20l6/04/06/does—
`
`googles-michel1e-lee-work-for-both—google-and-the—u-s-patent-office—at-the-same-
`
`time/
`
`28.
`
`Exhibit 2081 is a true and correct copy of a document cited in
`
`attachment 1 of the May Sawyer letter that I downloaded on January 12, 2018 from
`
`the following lntemet URL: http://www.ipwatchdog.com/20l7/04/23/senate-must-
`
`vet-vishal-amin/id=82326/
`
`29.
`
`Exhibit 2082 is a true and correct copy of a document cited in
`
`attachment 1 of the May Sawyer letter that I downloaded on January 12, 2018 from
`
`
`
`|PR2016-01201
`
`Apple Inc. v. Voip—Pal
`
`the following Internet URL: https://learning.blogs.nytimes.com/2012/05/15/may-
`
`1 5— 1 91 l-supreme—court-orders-standard-oil-to-be-broken-up/
`
`30.
`
`Exhibit 2083 is a true and correct copy of an article that the June 21
`
`Sawyer letter cites, at pages 2-3 thereof, called “How Kill Rates are Affecting
`
`Patents,” which I downloaded as a cached link in Google’s search results on January
`
`12,
`
`2018
`
`for
`
`the
`
`following
`
`Internet
`
`URL:
`
`https://www.1aw360.com/articles/699860/ptab—kill-rates—how—iprs-are-affecting-
`
`patents
`
`31.
`
`Exhibit 2084 is a true and correct copy of an article entitled “IPR
`
`Statistics Revisited, Yep it’s a Killing F ield”, that I downloaded on January 12, 2018
`
`from the following Internet URL: www.patentattorney.com/ipr-statistics-revisited-
`
`yep—its—a-patent-killing-field.
`
`32.
`
`Exhibit 2085 is a true and correct copy of a document that the July 27
`
`Sawyer letter cites and which I downloaded on January 12, 2018 from the following
`
`Internet URL:
`
`http://www.ipwatchdog.com/2017/04/26/unified—patents-model-
`
`would-not-work-in-china/id=82399/
`
`33.
`
`Exhibit 2086 is a true and correct copy of a document that the August
`
`31 Sawyer letter cites, at page 1, as “Brachmann, S. & Quinn, G. (2017, Aug 11).
`
`US Inventor sets patents on fire as part of PTAB protest at USPTO.
`
`IPWatchdog,”
`
`which I downloaded on January 12, 2018 from the following Internet URL:
`
`
`
`IPR2016-01201
`
`Apple Inc. v. Voip—Pal
`
`http://www.ipwatchdog.com/20l 7/08/1 l/us-inventor—patents-on-fire-ptab—protest-
`
`uspto/id=86757
`
`34.
`
`Exhibit 2087 is a true and correct copy of a document that the August
`
`3] Sawyer letter cites, at pages 2-3, as “Selection process for assigning judges to
`
`expanded PTAB panels” from a blog site called “717 Madison Place,” which I
`
`downloaded
`
`on
`
`January
`
`12,
`
`2018
`
`from the
`
`following
`
`Internet URL:
`
`http://www.7 l 7madisonplace.com/?p=9 l 43
`
`3 5.
`
`Exhibit 2088 is a true and correct copy of a document that I downloaded
`
`on
`
`January
`
`12,
`
`2018
`
`from
`
`the
`
`following
`
`URL:
`
`http://www.popularmechanics.com/technology/a21 181/greatest—american-
`
`invention.
`
`36.
`
`Exhibit 2089 is a true and correct copy of a document that I downloaded
`
`on
`
`January
`
`12,
`
`2018
`
`from
`
`the
`
`following
`
`Internet
`
`URL:
`
`http://www.ipwatchdog.com/20l7/06/12/supreme-court-inter-partes-review-
`
`unconstitutional/id=84430/
`
`37.
`
`Exhibit 2090 is a true and correct copy of a document cited in footnote
`
`no. 4 of the appendix of the August 31 Sawyer letter, as “Gene Quinn, 1P Watchdog,
`
`May 22, 2017 ‘Industry reaction to SCOTUS patent venue decision in TC Heartland
`
`v. Kraft Food Group’,” which I downloaded on January 12, 2018 from the following
`
`
`
`|PR2016~01201
`
`Apple Inc, v. Voip-Pal
`
`Internet URL: http://www.ipwatchdog.com/20l7/05/22/industry-reaction—scotus—
`
`patent—venue-decision—tcheartland-v-kraft—food-group/id=835 l 8/
`
`38.
`
`Exhibit 2091 is a true and correct copy of a document cited in footnote
`
`no. 6 ofthe appendix ofthe August 3 1 Sawyer letter, as “Flibbert, Michael J., Queler,
`
`Maureen D 5 Distinctions Between IPRs and District Court Patent Litigation,
`
`Corporate Counsel. December 16, 2015,” which I downloaded on January 12, 2018
`
`from
`
`the
`
`following
`
`Internet
`
`URL:
`
`http://www.f1nnegan.com/resources/articles/articlesdetail.aspx?news=64c22ef3-
`
`9abe-463 7-a445—c75c5 6892ebl
`
`39.
`
`Exhibit 2092 is a true and correct copy of a document cited in the
`
`October Sawyer letter in footnote no.
`
`1 at page 3, which I downloaded on January
`
`12, 2018 from the following Internet URL: https://www.justice.gov/usam/criminal-
`
`resource—manual-2404-hobbs-act-under-color-official-right
`
`40.
`
`Exhibit 2093 is a true and correct copy of a document that I downloaded
`
`on
`
`January
`
`12,
`
`2018
`
`from
`
`the
`
`following
`
`Internet
`
`URL:
`
`http://www.71 7madisonplace.com/?p=9 l 43
`
`41.
`
`Exhibit 2094 is a true and correct copy of a document cited by the
`
`October Sawyer letter in footnote no. 2 at page 6, that I downloaded on January 12,
`
`2018
`
`from
`
`the
`
`following
`
`Internet
`
`URL:
`
`https://2010—
`
`-10-
`
`
`
`IPR2016—01201
`
`Apple Inc. v. Voip—Pal
`
`2014.commerce.gov/sites/default/files/documents/2015/january/eda-
`
`summary_of_ethics_rules-2015.pdf
`
`42.
`
`Exhibit 2095 is a true and correct copy of a document cited in the
`
`October Sawyer letter in footnote no. 3 at page 6, that I downloaded from the
`
`following
`
`Internet
`
`URL:
`
`httpszllwww.uspto.gov/sites/default/files/documents/AIA%2OStatisticstarch201
`
`7.pdf
`
`43.
`
`Exhibit 2096 is a true and correct copy of a document entitled “Kevin
`
`Madigan and Adam Mosoff, ‘Turning Gold to Lead: How Patent Eligibility Doctrine
`
`ls Undermining U.S. Leadership in Innovation,’ George Mason Law & Economics
`
`Research Paper No. 17-16, p. 16,” which I downloaded on January 12, 2018 from
`
`the
`
`following
`
`URL
`
`referenced
`
`by
`
`Dr.
`
`Sawyer:
`
`https://papers.ssrn.com/sol3/cfrdev/AbsByAuth.cfm?per_id=345663
`
`44.
`
`I declare under penalty of perjury under the laws of the United States
`
`of America that the foregoing is true and correct.
`
`Dated: January 12, 2018
`
`By: %‘ mac/64‘
`
`Kevin N. Malek
`
`-11-
`
`
`
`|PR2016-01201
`
`Apple Inc. v. Voip-Pal
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that true and correct copy of DECLARATION OF KEVIN N.
`MALEK IN SUPPORT OF PATENT OWNER’S OPPOSITION TO MOTION
`FOR SANCTIONS is being served on January 12, 2018, via electronic mail, on
`Petitioner, through its counsel, as addressed below:
`
`Adam P. Seitz
`
`Paul R. Hart
`
`Eric A. Buresh
`ERISE IPA, PA.
`6201 College Blvd., Suite 300
`Overland Park, KS 6621 1
`Telephone: (913) 777-5600
`Adam.seitz@eriseip.com
`eric.buresh@eriseip.com
`
`ERISE IPA, P.A.
`5600 Greenwood Plaza Blvd., Suite
`200
`Greenwood Village, CO 801 1 1
`Telephone: (913) 777-5600
`Paul.Hart@EriselP.com
`
`Dated: January 12, 2018 M
`
`Kevin Malek, Reg. No. 53,938
`MALEK MOSS PLLC
`
`340 Madison Avenue, FL 19
`
`New York, New York 10173
`Phone: +1-212—812-1491
`
`Fax: +1-561—910—4134
`
`kevin.malek@malekmoss.com
`
`Attorneys for V0ip-Pal.com
`
`-12-
`
`
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