IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Apple, Inc.,
`Petitioner
`
`v.
`
`California Institute of Technology
`Patent Owner
`
`IPR2017-00219
`U.S. Patent No. 7,116,710
`
`DECLARATION OF JAMES M. DOWD IN SUPPORT OF MOTION FOR
`ADMISSION PRO HAC VICE
`
`Apple v. Caltech
`IPR2017-00219
`APPLE 1227
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Apple, Inc.,
`Petitioner
`
`v.
`
`California Institute of Technology
`Patent Owner
`
`IPR2017-00219
`U.S. Patent No. 7,116,710
`
`DECLARATION OF JAMES M. DOWD IN SUPPORT OF MOTION FOR
`ADMISSION PRO HAC VICE
`
`Apple v. Caltech
`IPR2017-00219
`APPLE 1227
`
`
`
`IPR2017-00219
`U.S. Patent No. 7,116,710
`
`I, James M. Dowd, declare as follows:
`
`1.
`
`I was admitted to the Virginia State Bar in 1997 and have been
`
`practicing law for 20 years. During the entire time that I have been practicing law,
`
`my practice has focused on the field of intellectual property, and particularly,
`
`patent litigation.
`
`2.
`
`I am a member in good standing of the Virginia State Bar, the District
`
`of Columbia Bar, and the State Bar of California, and am admitted to practice
`
`before the Supreme Court of the United States, the United States Court of Appeals
`
`for the Federal Circuit, the Ninth Circuit, and the Fourth Circuit, and the United
`
`States District Courts for the Central District of California, the Northern District of
`
`California, the Southern District of California, the Eastern District of California,
`
`and the Eastern District of Virginia.
`
`3.
`
`My Virginia State Bar membership number is 41406. My District of
`
`Columbia Bar membership number is 465230. My State Bar of California
`
`membership number is 259576.
`
`4.
`
`Over the course of my career, I have been counsel in dozens of patent
`
`litigations. Several of these cases have concerned patent office rules and
`
`regulations. For example, I litigated a number of cases concerning the duty of
`
`candor to the patent office embodied in 37 C.F.R. §1.56. Cases that I have been
`-1-
`
`
`
`involved in which implicate this rule include Cal. Inst. of Tech. v. Broadcom Ltd.,
`
`IPR2017-00219
`U.S. Patent No. 7,116,710
`
`
`et al., Civ. No. 2:16-cv-3714-GW (AGRx) (C.D. Cal. 2017) (the “Caltech
`
`litigation”, which is a related matter to this proceeding); Enerqetiq Tech., Inc. v.
`
`ASML Netherlands B.V. et al., Civ. No. 1:15-cv-10240-LTS (D. Mass. 2016); Cal.
`
`Inst. of Tech. v. Hughes Commc’ns, Inc., Civ. No. 2:13-cv-02745 (C.D. Cal. 2014)
`
`(the “Hughes litigation”); ASML Netherlands B.V. v. Nikon Corp., Civ. No. 3:02-
`
`cv-05601 (N.D. Cal. 2004); SanDisk Corp. v. STMicroelectronics, Inc., Civ. No.
`
`5:06-cv-00194 (N.D. Cal. 2006); In the Matter of Certain NAND Flash Memory
`
`Circuits and Products Containing Same, Inv. No. 337-TA-526 (USITC 2006); and
`
`In the Matter of Certain NOR and NAND Flash Memory Devices and Products
`
`Containing Same, Inv. No. 337-TA-560 (USTIC 2006).
`
`5.
`
`I have never been suspended or disbarred from practice before any
`
`court or administrative body.
`
`6.
`
`I have never had a court or administrative body deny my application
`
`for admission to practice.
`
`7.
`
`I have never had any sanctions or contempt citations imposed on me
`
`by any court or administrative body.
`
`
`
`-2-
`
`
`
`I have read and will comply with the Office Patent Trial Practice
`
`IPR2017-00219
`U.S. Patent No. 7,116,710
`
`
`8.
`
`Guide and the Board’s Rules of Practice for Trials, as set forth in 37 C.F.R. Part
`
`42.
`
`9.
`
`I agree to be subject to the United States Patent and Trademark Office
`
`Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq. and
`
`disciplinary jurisdiction under 37 C.F.R. § 11.19(a).
`
`10. Within the last three years, I have been admitted to appear pro hac
`
`vice in the following proceedings before the United States Patent and Trademark
`
`Office:
`
` ASML Netherlands B.V., ASML U.S., Inc., Excelitas Technologies Corp.,
`and Qioptic Photonics GmbH & Co. KG v. Energetiq Technology, Inc.,
`Case IPR2015-00130;
` ASML Netherlands B.V., ASML U.S., Inc., Excelitas Technologies Corp.,
`and Qioptic Photonics GmbH & Co. KG v. Energetiq Technology, Inc.,
`Case IPR2015-01279;
` ASML Netherlands B.V., ASML U.S., Inc., Excelitas Technologies Corp.,
`and Qioptic Photonics GmbH & Co. KG v. Energetiq Technology, Inc.,
`Case IPR2015-01277;
` ASML Netherlands B.V., ASML U.S., Inc., Excelitas Technologies Corp.,
`and Qioptic Photonics GmbH & Co. KG v. Energetiq Technology, Inc.,
`Case IPR2015-01377;
` ASML Netherlands B.V., ASML U.S., Inc., Excelitas Technologies Corp.,
`and Qioptic Photonics GmbH & Co. KG v. Energetiq Technology, Inc.,
`Case IPR2015-01362;
` ASML Netherlands B.V., ASML U.S., Inc., Excelitas Technologies Corp.,
`and Qioptic Photonics GmbH & Co. KG v. Energetiq Technology, Inc.,
`Case IPR2015-01375; and
`
`
`
`-3-
`
`
`
`IPR2017-00219
`U.S. Patent No. 7,116,710
`
`
` ASML Netherlands B.V., ASML U.S., Inc., Excelitas Technologies Corp.,
`and Qioptic Photonics GmbH & Co. KG v. Energetiq Technology, Inc.,
`Case IPR2015-01368.
`
`11.
`
`I am familiar with the subject matter at issue in this proceeding. I
`
`have reviewed U. S. Patent No. 7,116,710 (the “’710 patent”), which is being
`
`challenged in this proceeding, as well as its file history, the Petition, the Institution
`
`Decision, and the exhibits in this proceeding. I have also reviewed and am familiar
`
`with the relevant prior art.
`
`12. Beginning in 2016 and continuing until the present, I have represented
`
`Petitioner Apple Inc. in the Caltech litigation, which is a related matter to this
`
`proceeding. The validity of the ’710 patent is a contested issue in the Caltech
`
`litigation. The validity of other patents in the same patent family as the ’710 patent
`
`over some of the prior art raised in this proceeding are also contested issues in the
`
`Caltech litigation.
`
`13.
`
`I previously litigated the validity of the ’710 patent and other patents
`
`in the same family as the ’710 patent in the Hughes litigation. While representing
`
`Hughes Communications in the Hughes litigation, I participated in the drafting of
`
`briefing regarding claim construction for, and the validity of, the ’710 patent. I
`
`also took and defended expert depositions regarding the invalidity of the ’710
`
`patent in the Hughes litigation.
`
`
`
`-4-
`
`
`
`I hereby declare that all statements made herein of my own
`
`IPR2017-00219
`U.S. Patent No. 7,116,710
`
`
`14.
`
`knowledge are true and that all statements made on information and belief are
`
`believed to be true; and further that the statements are made with the knowledge
`
`that willful false statements and the like are punishable by fine, imprisonment, or
`
`both, under Section 1001 of Title 18 of the United States Code.
`
`
`
`Respectfully Submitted,
`
`/s/ James M. Dowd
`James M. Dowd
`
`WILMER CUTLER PICKERING
`HALE AND DORR LLP
`350 South Grand Avenue, Suite 2100
`Los Angeles, California, 90071
`james.dowd@wilmerhale.com
`Tel.: 213-443-5309
`Fax: 213-443-5400
`
`Dated: October 24, 2017
`
`
`
`
`
`-5-
`
`
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