UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`In re Patent of: Cameron et al.
`U.S. Patent No.: 5,915,210
`Issue Date:
`June 22, 1999
`Appl. Serial No.: 08/899,476
`Filing Date:
`July 24, 1997
`Title:
`Method and system for providing multicarrier simulcast
`transmission
`IPR2017-00637
`
`IPR:
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`
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`
`
`DECLARATION OF DR. JAY P. KESAN
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`1. My name is Dr. Jay P. Kesan. I understand that I am submitting a
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`declaration for Mobile Telecommunications Technologies LLC (MTel”),
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`offering technical opinions in connection with the above-referenced Inter
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`Partes Review (IPR) proceeding pending in the United States Patent and
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`Trademark Office for U.S. Patent No. 5,915,210 (the “’210 Patent”), and
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`prior art references relating to its subject matter. My current curriculum
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`vitae is attached as Appendix A.
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`2.
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`I also provide selected background information here relevant to
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`myself, my experience, and this proceeding.
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`3.
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`I am a Professor at the University of Illinois at Urbana-Champaign,
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`where I am appointed in the College of Law, the Department of Electrical
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`and Computer Engineering, the Coordinated Science Laboratory, and the
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`Information Trust Institute. I have a Ph.D. in Electrical and Computer
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`1
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`MTel., Exhibit 2007, Aruba v. MTel., Page 1, IPR2017-00637
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`Engineering from the University of Texas at Austin and a J.D., summa
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`cum laude from Georgetown University. I have also worked as a
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`research scientist at the IBM T.J. Watson Research Center, and I am a
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`named inventor on several United States patents. I have also served as a
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`technical expert and legal expert in patent infringement lawsuits. I have
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`been appointed to serve as a Special Master in patent disputes.
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`Additionally, I have been appointed as a Thomas Edison Scholar at the
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`United States Patent and Trademark Office (“USPTO”).
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`4. My opinions in this report are based on my experience and expertise
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`in the field relevant to the Asserted Patents. To prepare this Report, I
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`have reviewed and considered materials shown in Appendix B and
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`referred to herein, principally including the ‘210 Patent, the Rault, Mojoli,
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`Nakamura, and Saalfrank references, and the extrinsic evidence cited.
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`5.
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`I anticipate using some of the above-referenced documents and
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`information, or other information and material that may be produced
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`during the course of this proceeding (such as by deposition testimony), as
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`well as representative charts, graphs, schematics and diagrams,
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`animations, and models that will be based on those documents,
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`information, and material, to support and to explain my testimony before
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`the Board regarding the validity of the ’210 Patent.
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`2
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`6. This report is based on information currently available to me. To the
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`extent that additional information becomes available (whether from
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`documents that may be produced, from testimony that may be given or in
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`depositions yet to be taken, or from any other source), I reserve the right
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`to continue the investigation and study. I may thus expand or modify my
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`opinions as that investigation and study continues. I may also
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`supplement my opinions in response to such additional information that
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`becomes available to me, any matters raised by and/or opinions provided
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`by MTel’s experts, or in light of any relevant orders from the Board.
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`7. Throughout this report, I cite to certain documents or testimony that
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`support my opinions. These citations are not intended to be and are not
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`exhaustive examples. Citation to documents or testimony is not intended
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`to signify and does not signify that my expert opinions are limited by or
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`based solely on the cited sources.
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`8.
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`I am an attorney, registered to practice before the United States Patent
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`and Trademark Office, and a legal expert in United States Patent Law.
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`9. A person of ordinary skill in the art at the time of the invention
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`(POSA) of the ’210 Patent would possess a bachelor’s degree in
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`electrical or its equivalent and about four years working in the field of
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`wireless telecommunications networks, or the equivalent.
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`3
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`10.
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`I previously reviewed the ‘210 Patent and Saalfrank in IPR2016-
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`00765 (“the ARRIS IPR”). Ex. 2001 is a copy of my declaration (“the
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`ARRIS Declaration”) in the ARRIS IPR.
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`11.
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`Independent claims 1, 10, and 19 of the ‘210 Patent are challenged in
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`the Petition in the above referenced IPR.
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`12.
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`In the ARRIS IPR, I found that “the limitation of independent claims
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`1, 10, and 19 of the ‘210 Patent that each of the first plurality of carrier
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`signals represent a portion of the information signal substantially not
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`represented by others of the first plurality of carrier signals can be
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`referred to as the non-redundancy limitation.” Ex. 2001 at 23. I
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`understand that the Board referred to this limitation as the “No
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`Redundancy Limitation” in the decision not to institute of the ARRIS
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`IPR. As a result, I will hereinafter refer to this limitation as the “No
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`Redundancy Limitation.”
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`13.
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`I understand that in the Petition of this IPR is it asserted that Rault
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`teaches or suggests the No Redundancy Limitation of claims 1, 10, and
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`19 of the ‘210 Patent.
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`14. Rault, in its abstract, describes that it is directed to a coded orthogonal
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`frequency division multiplexing (COFDM) system designed within the
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`framework of the DAB (Digital Audio Broadcasting) EUREKA 147
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`4
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`project. Ex. 1004 at 7. In the first section of the paper, Rault recalls the
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`characteristics of the urban radio channel and introduces the problems
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`which have to be solved in order to ensure transmission of high bit rates.
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`Id. In the second section of the paper, Rault deals with the general
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`principles of the COFDM technique that is proposed in order to cope
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`with the multipath propagation. Id.
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`15. As the Board summarized in the ARRIS IPR with regard to Saalfrank,
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`I provided several exhibits discussing DAB and COFDM to support my
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`contention that the type of DAB and COFDM described in Saalfrank
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`necessarily includes substantial redundancy and would, therefore, not
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`satisfy the No Redundancy Limitation. Ex. 2008 at 10.
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`16.
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`In this IPR, I submit that the type of DAB and COFDM described in
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`Rault is the same type of DAB and COFDM Saalfrank. Therefore, Rault
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`necessarily includes substantial redundancy and would also not satisfy
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`the No Redundancy Limitation.
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`17.
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`I understand that in the Petition of this IPR is it asserted that
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`Nakamura teaches or suggests the No Redundancy Limitation of claims 1,
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`10, and 19 of the ‘210 Patent.
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`18. Nakamura is directed to a method to achieve good performance of a
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`256 QAM modem with 400 Mbit/s transmission capacity. Ex. 1019 at
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`5
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`Abstract. A variety of novel techniques include 1) an accurate 256 QAM
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`modulator employing a new monolithic multiplier IC, 2) a carrier
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`recovery circuit which satisfies such requirements, 3) a highly stable
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`high-level decision circuit, and 4) a forward error correcting code. Id.
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`19. Nakamura does describe that in each of its four modulators “eight
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`binary streams are differentially encoded (quadrant symmetry encoding)
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`and redundant bits for error correcting are added by an FEC coder circuit.
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`Ex. 1013 at 4.
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`20. However, Nakamura does not explicitly describe how its encoding is
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`performed. Nakamura describes that its error correcting code is a
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`forward error correction code (FEC), but it does not describe how the
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`redundant bits are calculated. Ex. 1013 at 8. It simply suggests that
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`redundant bits are added. Id. at 4. Thus, Nakamura cannot teach or
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`suggest that each of a first plurality of carrier signals represent a portion
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`of the information signal substantially not represented by others of the
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`first plurality of carrier signals.
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`21. Further, a POSA would not be motivated to combine Saalfrank’s
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`multicarriers, multiple transmitters, and simulcast transmission with
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`Nakamura’s four carrier modulation scheme. First of all, Nakamura is
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`simply directed to a modulating scheme to improve the performance
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`
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`6
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`between a single transmitter and single receiver as measured in bits /
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`second / Hertz. Ex. 1013 at 4. In contrast, Saalfrank explicitly describes
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`that the “objective of the invention is to provide a procedure for the
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`identification of transmitter or region, which abstains from interfering
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`with the common-wave operation of the transmission network.” Ex.
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`1010 at 2. Quite simply, Saalfrank is directed to the interaction among
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`multiple transmitters and Nakamura only involves a modulation scheme
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`for one transmitter.
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`22. Further, I have previously reviewed Saalfrank and Nakamura in the
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`ARRIS IPR and IPR2016-00766 (“the Aruba IPR”). I find that the
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`Petition in this IPR is presenting substantially the same arguments that
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`were made in the ARRIS IPR and the Aruba IPR with regard to
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`Saalfrank and Nakamura.
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`23.
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`I hereby declare that all statements made herein of my own
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`knowledge are true and that all statements made on information and
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`belief are believed to be true; and further that these statements were made
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`with the knowledge that willful false statements and the like so made are
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`punishable by fine or imprisonment, or both, under Section 1001 of Title
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`18 of the United States Code.
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`7
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`MTel., Exhibit 2007, Aruba v. MTel., Page 7, IPR2017-00637
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`Dated: May 1, 2017
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`Respectfully submitted,
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`
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`Dr. Jay P. Kesan
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`8
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`MTel., Exhibit 2007, Aruba v. MTel., Page 8, IPR2017-00637
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`Appendix A
`
`Vitae of Dr. Jay P. Kesan
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`
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`MTel., Exhibit 2007, Aruba v. MTel., Page 9, IPR2017-00637
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`

`

`JAY P. KESAN
`2709 Windward Blvd.
`Champaign, IL 61821
`(217)333-7887 (Work)
`kesan@illinois.edu
`
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`SCIENTIFIC & LEGAL WORK EXPERIENCE:
`
`IBM T.J. Watson Research Center, Yorktown Heights, NY
`Research Staff Scientist
`
`Massachusetts Institute of Technology, Cambridge, MA (concurrent with IBM)
`Visiting Scientist, National Magnet Laboratory
`
`Columbia University, New York, NY (concurrent with IBM)
`Thesis Supervisor of Doctoral Students
`
`
`
`
`
`Technical and/or Legal Expert & Consultant
`Served as Technical Expert and/or Patent Law Expert in numerous patent litigations;
`Technical expert in microelectronics, microwave/millimeter wave circuits and devices,
` optoelectronics, wireless communications and software;
`Appointed by U.S. federal judges as Special Master in patent litigations;
`Served on the Board of Directors/Advisors of numerous technology start-ups
`
`Pennie & Edmonds LLP, Washington, DC
`
`
`Associate Attorney (1996-97); Patent Agent & Law Clerk (1993-96)
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`Law Clerk to the Hon. Patrick E. Higginbotham, Dallas, TX
`U.S. Circuit Judge, U.S. Court of Appeals for the Fifth Circuit
`
`United States Patent & Trademark Office (USPTO), Alexandria, VA
`Thomas A. Edison Scholar
`
`
`Expert/Adviser
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`
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`DiMuro Ginsberg PC, Alexandria, VA
`Of Counsel
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`
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`ACADEMIC WORK EXPERIENCE:
`
`University of Illinois at Urbana-Champaign
`Professor & Director, Program in Intellectual Property & Technology Law
`H. Ross & Helen Workman Research Scholar
`
`
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`Research Professor, Coordinated Science Laboratory
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`
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`Affiliate Professor, Department of Electrical & Computer Engineering
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`Professor, College of Business
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`
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`Professor, Agricultural & Consumer Economics
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`
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`Program Leader, Biofuel Law & Regulation, Energy Biosciences Institute (EBI)
`Professor & Group Leader, Business, Economics and Law of Genomic Biology
`
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`(BioBEL) research theme, Institute of Genomic Biology (IGB)
`
`
`Mildred Van Voorhis Jones Faculty Scholar
`
`
`
`Faculty Fellow, Office of the Vice President for Technology & Economic Development
`Associate Professor, College of Law and the Institute of Government
`& Public Affairs (IGPA)
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`1989-1993
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`1990-1993
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`1989-1993
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`1998-Present
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`1993-1997
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`1997-1998
`
`Oct. 2012-Feb. 2013
`July 2013-June 2014
`
`Aug. 2014-Present
`
`2004-Present
`2010-Present
`2003-Present
`1999-Present
`2008-Present
`2004-Present
`2007-Present
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`2006-2015
`2007-2009
`2009-2011
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`2002-2004
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`1
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`MTel., Exhibit 2007, Aruba v. MTel., Page 10, IPR2017-00637
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`1998-2002
`
`
`
`
`Assistant Professor, College of Law
`1999-2002
`
`
`Assistant Professor, Institute of Government & Public Affairs (IGPA)
`Subjects Taught: Civil Procedure; Property; Introduction to Intellectual Property; Patent Law;
`Managing Intellectual Property; Intellectual Property Transactions; Privacy and Security Law; Patent Litigation;
`Digital Forensics; Law of Renewable Energy; Law & Regulation of Cyberspace; Law & Economics; Theoretical
`Foundations of Intellectual Property; Legal Issues in Technology Entrepreneurship
`Areas of Interest: Patent Law; Intellectual Property; Cyber Security and Privacy; Internet Law & Regulation;
` Renewable Energy/Biofuel Regulation; Empirical & Analytical Methods in the Law; Law and Computation;
`
`Law and Economics; Agricultural Biotechnology Law
`
`Florida State University School of Law
`Visiting Professor of Law
`Subject Taught: Introduction to Intellectual Property
`
`Seattle University School of Law
`Visiting Professor of Law
`Subject Taught: Patent Litigation
`
`University of Illinois, USA – Oxford University, UK – University of Victoria, BC
`Co-Director, Summer Study Abroad Program in International & Comparative
`
`Intellectual Property
`
`
`
`Subjects Taught: Int’l & Comparative Patent Law; IP Issues in Emerging Technologies
`
`DePaul University College of Law
`Jerold Hosier Distinguished Visiting Chair in Intellectual Property
`
`Georgetown University Law Center
`
`
`
`Visiting Assistant Professor
`Subjects Taught: Patent Law; Theoretical Foundations of Intellectual Property
`
`
`
`University of Illinois at Urbana-Champaign
`
`
`
`
`
`Resident Associate, Center for Advanced Study (CAS)
`Co-organizer of year-long seminar series on “The University=s Changing Role: Defining
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`Values for Research & Technology”
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`Fall 2010
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`Fall 2009
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`Summer 2002-2007
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`Spring 2004
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`Fall 2001
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`
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`2000-2001
`
`
`University of Tokyo, Japan
`JSPS Invited Fellow and Visiting Associate Professor
`
`University of Washington, Seattle
`Fellow, CASRIP Intellectual Property Summer Institute
`Invited Faculty
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`Institute of Intellectual Property (IIP), Tokyo, Japan
`Invited Foreign Research Fellow
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`Dec. 2000-Jan. 2001
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`July 2000
`July 2001-04
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`Nov.-Dec. 2003
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`
`
`EDUCATION:
`
`Georgetown University Law Center, Washington, DC
`J.D., December 1996, summa cum laude (2 conferred out of 623 graduates)
`GPA:
`11.59/12.0
`Honors:
`Charles A. Keigwin Award for Academic Excellence
`Order of the Coif; Dean's List All Years
`Best Paper Awards in Criminal Justice, Constitutional Law and
` Commercial Law
`Law Review: The Georgetown Law Journal, Associate Editor
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`2
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`MTel., Exhibit 2007, Aruba v. MTel., Page 11, IPR2017-00637
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`Hebrew University, Faculty of Law, Jerusalem, Israel
`Tulane/Cardozo Uri & Caroline Bauer Program, August 1996
`Studied religious, international and comparative law
`GPA:
`3.89/4.0
`
`
`University of Texas at Austin, Austin, TX
`Ph.D. in Electrical & Computer Engineering, 1989
`M.S. in Electrical & Computer Engineering, 1986
`GPA:
`3.86/4.0
`Honors:
`Commendation from the Dean of the Graduate School for
` Outstanding Doctoral Dissertation
`
`
`National Institute of Technology, Karnataka (NITK)
`Surathkal, India
`B.S. in Electrical Engineering, Highest Honors, 1984
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`
`
`HONORS AND AWARDS:
`
` @
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` Senior Commentator, Edison Fellowship Program, Center for Protection of Intellectual Property (CPIP), George
` Mason University, Arlington, VA, 2014-16, 2016-2018
`@ Microsoft Faculty Research Award, 2015 ($40,000), 2016 ($60,000)
`@ Named by Intellectual Asset Management (IAM) Magazine in their list of “Top 12 IP Personalities of 2012” (only
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`two academics in this list), 2013
`@ Thomas A. Edison Scholar, United States Patent & Trademark Office (USPTO), 2012-2013
`@ Honorable Mention Award ($1,000), Research Competition on Cyberdeterrence conducted by the National
` Research Council (NRC) for work on “Thinking Through Active Defense in Cyberspace,” 2011
`@ Best Paper Award for Contributions to Foundations of Electronic Governance at the 4th International Conference
` on Theory and Practice of Electronic Governance (ICEGOV), Beijing, China, Oct. 25-28, 2010
`@ Microsoft Faculty Research Award for work on technology standards, 2010 ($40,000)
`@ Best Paper Award, for paper on an Empirical Examination of Open Standards Development (with R. Shah), 41st
` Hawaii International Conference on System Sciences (HICSS), Jan. 9, 2008, Manoa, Hawaii
`@ Best Paper Award, for paper on an Empirical Study of Open Standards (with R. Shah) published in the
` Proceedings of the 8th Annual International Conference on Digital Government Research, May 21-23, 2007,
`Philadelphia, PA
`@ 2006 IBM Faculty Award (unrestricted award--$25,000)
`@ Appointed Special Master by federal judges in patent litigation cases
`@ Invited Fellow, University of Washington, Seattle, Center for Advanced Study and Research in Intellectual
` Property (CASRIP), Summer 2000; Invited Instructor, July 2001-July 2004
`@ Invited Foreign Research Fellow, Institute of Intellectual Property (IIP), Tokyo, Japan, Nov.-Dec. 2003
`@ METI/JSPS Invited Fellow and Visiting Professor, University of Tokyo, Japan, Dec. 2000 - Jan. 2001
`@ Resident Associate, Center for Advanced Study (CAS), University of Illinois, 2000-2001
`@ Recipient of the 1995-96 H. Thomas Austern National Legal Writing Competition Award ($1,000)
`@ Holder of 10 U.S. patents and several other patents world-wide
`@ Recipient of 2 IBM Invention Achievement Awards, 1990-1992
`@ Invited Editor of a special issue of the Journal of Vacuum Science and Technology B (published by the
`American Vacuum Society), Mar./Apr. 1992
`@ Microelectronics and Computer Technology Corporation (MCC) Award for Graduate Research Excellence,
`1989
`@ Recipient of a Joint Services Electronics Program Assistantship for graduate study, 1985-1989
`@ Best Student Paper Award at the 1988 Electronic Materials Conference, Boulder, CO
`
`3
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`MTel., Exhibit 2007, Aruba v. MTel., Page 12, IPR2017-00637
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`RESEARCH GRANTS:
`
` @
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` University of Illinois Campus Research Board Grant, “Patents As Incomplete Contracts@ $13,000 (1999)
`@ University of Illinois Campus Research Board Scholar=s Travel Grant (2000)
`@ The Net Institute, “Internet Regulation: The Political Economy of ICANN and the Shaping of New Regulatory
` Regimes for the Internet,” (with A. Gallo), $15,000 (2003)
`@ National Science Foundation (NSF) Grant, “Understanding ‘Code’: How Information Technologies Regulate
`Behavior@ $300,000 (2000-2004)
`@ U.S. Department of Agriculture, Illinois-Missouri Biotechnology Alliance, “The Role and Function of the
`Patent System in Industrialized Agriculture: Innovation and Rent-sharing in Corn and Soybean Supply
`Chains@ $210,000 (2001-2004)
`@ Coleman Foundation Grant, “Development of Online Course on Legal Issues in Technology
`Entrepreneurship@ $14,000 (2001-2002)
`@ U.S. Department of Agriculture, Illinois-Missouri Biotechnology Alliance, Supplementary Research Grant,
`“Improving Efficiency and Minimizing Adverse Selection in Seed Production Contracts,” $120,000 (2003-2005)
`
`@ U.S. Department of Agriculture, Soybean Disease Biotechnology Center, “Understanding the Role of Intellectual
` Property in Soybean Innovation,” $150,000 (2003-2006)
`@ U.S. Department of Agriculture, Soybean Disease Biotechnology Center, “Empirical Studies of Patent Litigation
`and Ag-Biotech Innovation,” $100,000 (2005-2008)
`@ National Science Foundation (NSF) Grant, “Governing with Information Technologies,” $395,155 (2004-2007)
` Supplemental Funding, $76,190 (2007-2008)
`@ U.S. Department of Agriculture, Soybean Disease Biotechnology Center, “Plant Innovation and Intellectual
`Property Regimes: Time for a Change?,” with B. Endres, $60,314 (2007-2008)
`@ U.S. Department of Agriculture, Soybean Disease Biotechnology Center, “Evolving Biodiesel Markets:
`Opportunities and Challenges for Small/Medium-sized Biodiesel Firms" with R. Agarwal, $40,000 (2007-2008)
`@ Federal Judicial Center, The Research Arm of the Federal Courts, “Empirical Study of the Role of Special
`Masters in Patent Litigation, $20,000 (2007-2008)
`@ Energy Biosciences Institute, “Biofuel Law and Regulation,” with B. Endres, $510,000/year (2008-2011)
`@ National Science Foundation (NSF) Grant, “REGNET-Information Management and Compliance Assistance for
` Patent Laws and Regulations,” $200,000 (2008-2011)
`@ National Science Foundation (NSF) Grant, “Innovation Personnel and their Ecosystem: Career Choices and
` Trajectories of Scientists--Industry or Academia and Basic or Applied?” with R. Agarwal, $33,000 (2010-2013)
`@ Microsoft Research Grant, unrestricted grant, $57,000 (2011), $80,000 (2012), $40,000 (2015)
`@ National Academy of Sciences, Board of Science, Technology and Economic Policy (STEP), $7,500 (2012)
`@ Energy Biosciences Institute, “Biofuel Law and Regulation,” $175,000/year (2012-2014)
`@ National Science Foundation (NSF) Grant, “Program in Digital Forensics,” with R. Campbell, M. Bashir, D.
` Nicol and W. Sanders, $548,720 (2012-2016)
`@ National Science Foundation (NSF) Grant, “Illinois Cyber Security Scholar Program (ICSSP),” with R.
` Campbell, M. Bashir, D. Nicol and W. Sanders, $5,378,577 (2013-2017)
`@ Microsoft Research Grant, unrestricted grant, $40,000 (2015); $60,000 (2016)
`@ Department of Homeland Security (DHS), Critical Infrastructure Resilience Institute (CIRI), “Cyberinsurance as a
` Market Based Solution to Improve Cybersecurity,” with S. Shetty, and D. Nicol, $300,000 (2015-2016; 2016-
` 2017)
`
`
`
`SCIENTIFIC PUBLICATIONS (see attached list of publications, books, book chapters & patents):
`
` @
`
` Published over 60 papers in several peer-reviewed journals, 6 authored or edited books, 18 book chapters
` and over 45 law review articles
`@ Scientific contributions featured in The Wall Street Journal, Electronic Engineering Times, Lasers and
` Optronics, and other technical publications
`@ Presented numerous invited talks and contributed talks at international conferences and universities world-wide
`
`4
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`MTel., Exhibit 2007, Aruba v. MTel., Page 13, IPR2017-00637
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`@ Holder of 14 U.S. patents and numerous other foreign patents
`
`
`
`GOVERNMENT TESTIMONY:
`
`“Toward a Better Informed Patent Office,” Presented testimony and participated twice in panels at the FTC & DOJ
`Hearings on the Implications of Competition and Patent Law and Policy, http://www.ftc.gov/opp/intellect/index.htm,
`April 10, 2002, & October 25, 2002, Washington, D.C.
`
`Testified at the Second Public Hearing conducted by the U.S. Patent and Trademark Office (USPTO) in
`conjunction with the Small Business Association (SBA) on “Study of International Patent Protection for Small
`Businesses,” at the University of Southern California, Los Angeles, CA, Nov. 1, 2011.
`
`Testified about the Renewable Fuel Standard (RFS2) Program to the House Subcommittee on Energy and the
`Environment, the U.S. House of Representatives Committee on Science, Space, and Technology, and the hearing
`was on “Conflicts and Unintended Consequences of Motor Fuel Standards,” Nov. 2, 2011.
`
`
`
`BAR AND COURT ADMISSIONS:
`
`U.S. Patent & Trademark Office (1993 - Reg. No. 37,488); Virginia (1997); District of Columbia (1998);
`Fourth Circuit; Fifth Circuit; Federal Circuit; U.S. Dist. Court, Eastern Dist. of VA; Sup. Ct. of VA
`
`
`
`SCHOLARLY & PROFESSIONAL ACTIVITIES:
`
` @
`
` Regular Radio Commentator for “Legal Issues in the News,” WILL-AM-FM Radio,
` http://will.illinois.edu/legalissuesinthenews, 2010-Present
`@ Senior Commentator, Edison Fellowship Program, Center for Protection of Intellectual Property (CPIP), George
` Mason University, Arlington, VA, 2014-16; 2016-2018
`@ Faculty Editor-in-Chief, Journal of Law, Technology and Policy (JLTP), University of Illinois,
` http://www.jltp.illinois.edu, 2000-Present
`@ National Science Foundation (NSF) Panel Review Member, 2000-Present
`@ Advisory Group Member, Bipartisan Policy Center (BPC), Options for Reforming the Renewable Fuel
` Standard (2014), attended meetings and worked on final report issued in Dec. 2014
`@ Workshop Co-Organizer, Workshop on Computation, Mathematics, and the Law, University of San Diego, Mar.
` 22, 2014, San Diego, CA
`@ Conference Organizer, “Traditional Knowledge and Folklore in Uganda, Jun. 28, 2013, Kampala, Uganda
`@ Kauffman Certified Facilitator and Program Director, Kauffman Foundation FastTrac TechVenture
` Entrepreneurship Education Program, Certificate in Entrepreneurship and Management (CEM), 2011-2014
`@ Symposium Co-organizer, Biofuel Law and Regulation Conference, Annual Conference held each year in April
` since 2009-2014, University of Illinois
`@ Conference Co-organizer (with AIPLA), Conference on Small Claims Patent Court, University of Illinois Illini
` Center, Feb. 28, 2013, Chicago, IL.
`@ Symposium Co-organizer, 30th Anniversary Celebration of the U.S. Sup. Ct. decision in Diamond v. Chakrabarty,
` Sept. 22, 2010, University of Illinois
`@ Member, International Editorial Board, I/S: A Journal of Law and Policy for the Information Society, 2007-Present
`@ Symposium Co-organizer, “The Promise of the Prairie: University-Industry Interactions,” University of Illinois,
` Union League Club of Chicago, Apr. 11-12, 2008, Chicago, IL
`@ Symposium Co-organizer, “Intellectual Property Protection in Asia: Moving Beyond Producers and Consumers,”
` Part of year-long program, “Science and Technology in the Pacific (STIP),” Center for Advanced Study,
` University of Illinois, Mar. 7-8, 2008, Champaign, IL
`@ Program Committee Member, ICEGOV2008: 2nd International Conference on Theory and Practice of
`
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`MTel., Exhibit 2007, Aruba v. MTel., Page 14, IPR2017-00637
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`

`

` Electronic Governance.
`@ Program Committee Member, International Conference on Digital Government Research, 2006-Present;
` Member, Digital Government Society of North America (DGSNA)
`@ External Panel Review Member for Research Proposals on Social and Economic Dimensions of Biofuels,
` Energy Biosciences Institute (EBI), UC-Berkeley, UIUC and LBNL, 2007
`@ Group Leader, Business, Economics and Law of Genomic Biology (BioBEL) research theme, Institute of
` Genomic Biology (IGB)
`@ National Human Genome Research Initiative (NHGRI), National Institutes of Health (NIH), Intellectual
` Property Panel Review Member, 2005
`@ Symposium Co-organizer, “Law in the Age of Networks: Implications of Network Science for Legal Analysis,”
`
` University of Illinois, Mar. 10, 2006, Champaign, Illinois
`@ Symposium Organizer, “Seeds of Change: Intellectual Property Protection for Agricultural Biotechnology,”
`
` University of Illinois, April 8-10, 2004, Champaign, Illinois.
`@ Symposium Co-organizer, University of Illinois Law Review Symposium on AIntellectual Property Challenges in
`the Next Century,@ April 2000
`@ Co-organizer, Center for Advanced Study (CAS), University of Illinois Seminar Series, AThe University=s
` Changing Role: Defining Values for Research & Technology,@ 2000-01
`@ Co-taught, Capstone Undergraduate Course, University of Illinois, Colloquium in South, Southeast and
` Southwest Asian Studies, ABasmati, Software and Pharmaceuticals: Trade, Technology and Intellectual
`Property in South Asia,@ Spring 2000
`@ Supervised law students enrolled in the Transactional Law Clinic at the University of Illinois and working on
` patent prosecution matters, 1998-Present
`@ Special Master, Appointed by U.S. federal judges in patent litigations
`@ Consultant, U.S. Department of Commerce, Technology Commercialization and Intellectual Property,
`1999-2002
`@ Consultant, U.S. Civilian Research & Development Foundation (CRDF), Technology Commercialization and
`Intellectual Property, 1999-2002
`@ Lecturer, Patent Bar-Bri, Patent Bar Examination Preparation Course, 1999-Present
`@ Member, Litigation Committee & Member, IP Strike Force, American Association of University Professors
`
`(AAUP), 2000-Present
`@ Giles S. Rich American Inn of Court, Pupil-Student (1995-97)
`@ Referee for scientific publications in peer-reviewed scientific journals
`@ Blog at Talk Standards, http://www.talkstandards.com
`
`
`
`SERVICE ACTIVITIES:
`
` @
`
` University of Illinois College of Law, Served on: Placement & Clerkships Committee, Student Diversity
`Committee, Technology Committee (served as Chair for several years), Admissions Committee, International
`Programs & Studies Committee, Advancement Committee, and Student Scholarships Committee, Curriculum
`Committee (Chair), Technology/Online Courses Committee, Faculty Retreat Committee
`@ Faculty Adviser, Asian American Law Students Association, University of Illinois College of Law, 1998-
`Present
`@ Member, Five Year Review Committee for Director, University Laboratory High School, Spring-Summer 2014
`@ Member, Executive Committee, Certificate on Entrepreneurship and Management (CEM) for Life Scientists,
` University of Illinois, 2008-2014; Program Director, 2011-2014
`@ Member, Executive Committee, Institute of Genomic Biology (IGB), University of Illinois, 2008-2015
`@ Member, Institute of Genomic Biology (IGB) Executive Director Search Committee, University of Illinois, 2011-
` 2012
`@ Faculty Fellow, Office of the Vice President for Technology & Economic Development, University of Illinois
` System, 2009-2011
`
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`MTel., Exhibit 2007, Aruba v. MTel., Page 15, IPR2017-00637
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`

`@ Member, University-wide Revenue Generation Committee, Chair, Sub-Committee on Intellectual,
` Commercialization and Entrepreneurship and drafted Section of Report devoted to commercialization, Spring
` 2010
`@ Member, Steering Committee, Information Trust Institute (ITI), University of Illinois, 2008-2010
`@ Member, University of Illinois System-Wide Committee on Intellectual Property, 2003-2010
`@ Member, University of Illinois College of Law Dean Search Committee, 2001-2002
`@ Member, Provost Committee for Development of the Office of Technology Management (OTM) Business Plan,
` University of Illinois, 2000-2001 (business plan presented, approved and implemented)
`@ Member, Provost Committee on Campus IP Policy, 2001 (formulated and wrote first draft of IP policy for the
` university, with special emphasis on online education issues)
`@ Member, University of Illinois Faculty Senate, Statutes and Senate Procedures Committee, 2000-2001
`@ Member, University of Illinois Faculty Senate, Information Technology Committee, 2001-2002
`@ Member, Board of Advisors, iTEC (Illinois Technology Entrepreneur Center), University of Illinois, 2000-2004
`@ Member, Board of Advisors, OTM (Office of Technology Management), University of Illinois, 2000-2004
`@ Conduct “Outlining” and “Exam-Taking” Workshops for law students, University of Illinois College of Law,
` 1998-2000
`@ College of Law Senator, University of Illinois Faculty Senate, 1999-2001
`
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`

`

`JAY P. KESAN
`
`PUBLICATIONS, BOOKS, BOOK CHAPTERS & PATENTS
`
`
`
`
`PEER-REVIEWED JOURNAL PUBLICATIONS:
`
`
`1. J.P. Kesan, D.P. Neikirk, B.G. Streetman, and P.A. Blakey, "A New Transit Time Device using
`Quantum Well Injection," IEEE Electron Device Lett., vol. EDL-8, no. 4, pp. 129-131, Apr. 1987.
`
`
`2. A.C. Campbell, J.P. Kesan, G.E. Crook, C.M. Maziar, D.P. Neikirk, and B.G. Streetman,
`"Impedance Switching Effects in GaAs/AlAs Barrier Structures," Elect. Lett., vol. 23, no. 18, pp. 926-927,
`27 Aug. 1987.
`
`
`3. C.W. Farley, G.E. Crook, J.P. Kesan, T.R. Block, H.A. Stevens, T.J. Mattord, D.P. Neikirk, and
`B.G. Streetman, "Substrate Rotation and Carbon Generation in a Molecular Beam Epitaxy System," J.
`Vac. Sci. & Technol. B, vol. 5, no. 5, pp. 1374-2476, Sep./Oct. 1987.
`
`
`4. A.C. Campbell, J.P. Kesan, G.E.