`By:
`Justin B. Kimble (JKimble-IPR@bcpc-law.com)
`Nicholas C Kliewer (nkliewer@bcpc-law.com)
`Jonathan H. Rastegar (jrastegar@bcpc-law.com)
`Bragalone Conroy PC
`2200 Ross Ave.
`Suite 4500 – West
`Dallas, TX 75201
`Tel: 214.785.6670
`Fax: 214.786.6680
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner,
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`v.
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`VALENCELL, INC.,
`Patent Owner.
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`Case IPR2017-00319
`U.S. Patent No. 8,923,941
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`PRO HAC VICE MOTION TO ADMIT ATTORNEY
`T. WILLIAM KENNEDY PURSUANT TO 37 C.F.R. § 42.10(c)
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`EXHIBIT 2005: DECLARATION OF T. WILLIAM KENNEDY
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
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`I, T. William Kennedy, make the following declaration based on my own
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`personal knowledge and, if called to testify before the court, could and would testify
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`as follows:
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`1.
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`I am an attorney with the law firm of Bragalone Conroy, P.C., located
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`at 2200 Ross Avenue, Suite 4500-West, Dallas, TX 75201.
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`I am a member in good standing of the Texas State Bar.
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`I have never been subject to any suspensions or disbarments from
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`practice before any court or administrative body.
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`4.
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`None of my applications for admission to practice before any court or
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`administrative body has ever been denied.
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`5.
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`I have never been sanctioned nor had contempt citations imposed by
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`any court or administrative body.
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`6.
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`I have read and will comply with the Office Patent Trial Practice Guide
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`and the Board’s Rules of Practice for Trials set forth in part 42 of 37
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`C.F.R.
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`7.
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`I will be subject to the USPTO Rules of Professional Conduct set forth
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`in 37 C.F.R. §§ 11.101 et. seq. and disciplinary jurisdiction under 37
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`C.F.R. § 11.19(a).
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`8.
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`During the past three years, I have applied to appear pro hac vice before
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`the PTAB in fourteen other proceedings, six of which have been
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`granted, two of which involved IPRs that were joined with those for
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`which my pro hac vice motion had been already granted, and two
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`remained pending throughout the life of the IPR. Each of these IPRs
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`involved patent owner Innovative Display Technologies LLC or
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`Delaware Display Group LLC. The other four remain pending and each
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`involve the patent owner Valencell, Inc.
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`i. IPR2014-01096 (granted);
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`ii. IPR2014-01097 (pending – final decision issued);
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`iii. IPR2014-01362 (pending – final decision issued);
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`iv. IPR2015-00487 (granted);
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`v. IPR2015-00506 (granted);
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`vi. IPR2015-01666 (joined with IPR2015-00506 above);
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`vii. IPR2015-01717 (joined with IPR2015-00487 above);
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`viii. IPR2015-01866 (granted);
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`ix. IPR2015-01867 (granted);
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`x. IPR2015-01868 (granted);
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`xi. IPR2017-00315 (pending, filed concurrently herewith);
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`xii. IPR2017-00317 (pending, filed concurrently herewith);
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`xiii. IPR2017-00318 (pending, filed concurrently herewith); and
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`xiv. IPR2017-00321 (pending, filed concurrently herewith).
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`I have not applied to appear pro hac vice in any other proceeding before
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`the PTAB.
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`9.
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`I currently represent the Patent Owner Valencell, Inc. in its assertion of
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`the patent at issue in this proceeding and related patents in two cases in
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`the Eastern District of North Carolina. See, e.g., Valencell, Inc. v.
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`Apple, Inc., No. 5:16-cv-00001 (E.D. N.C., filed Jan. 4, 2016); see also
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`Valencell, Inc. v. Fitbit, Inc., No. 5:16-cv-00002 (E.D. N.C., filed Jan.
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`4, 2016). As counsel in those actions, I have become very familiar with
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`the subject matter at issue in this proceeding, e.g., physiological
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`monitoring technology. Furthermore, in those lawsuits I have
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`developed infringement allegations that assert the patent-at-issue in this
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`petition against various products, including, for example watches with
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`heart rate monitoring functionality. I have also taken and defended
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`several depositions in those matters. In my role as counsel in those
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`litigations, I have spent significant time learning about physiological
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`monitoring technology such as that found in the patent-at-issue in this
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`proceeding. Moreover, I have analyzed the prior art involved in this
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`petition as well as in the petitions for related patents.
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` declare under penalty of perjury that the foregoing is true and correct.
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`Executed this 3rd day of August, 2017.
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`T. William Kennedy
`Bragalone Conroy PC
`2200 Ross Ave.
`Suite 4500 West
`Dallas, TX 75201
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