`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE, INC.
`Petitioner
`
`V.
`
`VOIP—PAL.COM, INC.
`Patent Owner
`
`Case IPR2016—01201
`
`Patent 8,542,815
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`DECLARATION OF WILLIAM R. ZIMMERMAN
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`IN SUPPORT OF PRO HAC VICE MOTION
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`
`
`Voip-Pal Ex. 2051
`IPR2016—01201
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`Voip-Pal Ex. 2051
`IPR2016-01201
`
`
`
`IPR20160-01201
`
`Apple, Inc. V. Voip-Pal, Inc.
`
`I, William R. Zimmerman, do hereby declare:
`
`1.
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`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
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`is also a partner in the law firm of Knobbe, Martens, Olson, & Bear, LLP. Mr.
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`Taylor is registered to practice before the United States Patent and Trademark
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`Office and holds Registration No. 43,947. With respect to this proceeding, I will
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`work closely with Mr. Taylor.
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`2.
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`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.
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`I also have
`
`IPR2013—‘00024,
`for example,
`experience in inter partes review proceedings,
`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-
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`00557, and IPR2016—00559.
`
`In numerous of those proceedings, I have conducted
`
`telephone conferences with opposing counsel and Board members, and I have
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`‘ presented the Oral Argument for numerous of those proceedings.
`
`3.
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`I am comfortable and experienced with technically and legally
`
`complex matters, such as will be present in this proceeding.
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`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
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`also served as a law clerk to the Honorable Alvin A. Schall, Circuit Judge of the
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`United States Court of Appeals for the Federal Circuit.
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`
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`IPR20160—01201
`
`Apple, Inc. V. Voip—Pal, Inc.
`
`4.
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`I am familiar with US. Patent 8,542,815 and with the issues in the
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`inter partes review of US. Patent 8,542,815, which forms the basis for this
`
`proceeding.
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`I also am familiar with US. Patent 9,179,005 and with the issues in
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`inter partes review of US. Patent 9,179,005, which forms the basis for related
`
`matter IPR2016—01198. For example, I am aware that the Board has instituted
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`inter partes review of various claims in both proceedings based on two
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`obviousness grounds presented in each of the two respective Fetitions, and that
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`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
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`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—01198.
`5.
`I am a member in good standing of the Bar of the State of California
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`- and the Bar of the District of Columbia.
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`I am admitted to practice before the
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`Supreme Court of the United States and before the United States Court of Appeals
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`for the Federal Circuit.
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`6.
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`I have never been suspended or disbarred from practice before any
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`court or administrative body.
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`7.
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`I have never had a court or administrative body deny my application
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`for admission to practice.
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`8.
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`I have never been sanctioned or cited for contempt by any court or
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`administrative body.
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`
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`IPR20160—01201
`Apple, Inc. V. Voip—Pal, Inc.
`
`9.
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`I have read and will comply with the Office Patent Trial Practice
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`Guide and the Board’s Rules of Practice for Trials set forth in Part 42 of Title 37 of
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`the C.F.R.
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`10.
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`I agree to be subject to the United States Patent and Trademark Office
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`Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq., and
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`disciplinary jurisdiction under 37 C.F.R. § 11.l9(a).
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`11.
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`In the past
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`three (3) years,
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`I have appeared pro hac vice in
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`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;i in the matter of Ariosa
`
`Diagnostics,
`
`Inc.
`
`v.
`
`Illumina, Inc, IPR2014-01093;
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`in the matters of Noven
`
`Pharmaceuticals, Inc. and Mylan Pharmaceuticals Inc. v. Novartis AG and LTS
`
`Lohman Therapie-Systeme AG, IPR2014—00549, IPR2014-00550, IPR2015_—00265
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`and IPR2015-00268; in the matters of Lupin Limited and Lupin Pharmaceuticals
`
`Inc. v. iCeutica Pty Ltd, IPR2016—00397 and lPR2016-00399; and in the matters
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`of Illumina, Inc. 1). Cornell Research Foundation, Inc, IPR2016-00549, IPR2016-
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`00553, IPR2016-00557, and IPR2016—00559.
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`12.
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`I 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 be true;
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`and further that these statements were 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,
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`under Section 1001 of Title 18 of the United States Code.
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`
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`IPR20160-01201
`
`Apple, Inc. V. Voip-Pal, Inc.
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`Dated: 4 [2-61 ‘7
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`By:
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`‘
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`37”“—
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`William R. Zimmerman
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`25753504
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`