`
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`SHENZHEN ZHIYI TECHNOLOGY CO. LTD., D/B/A ILIFE,
`Petitioner,
`
`v.
`
`IROBOT CORP.,
`Patent Owner.
`
`
`
`
`DECLARATION OF STEPHEN A. MARSHALL IN SUPPORT OF
`PATENT OWNER’S MOTION FOR PRO HAC VICE ADMISSION
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2017-02061
`Patent 6,809,490
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`1
`
`IROBOT 2016
`Shenzhen Zhiyi v. iRobot
`IPR2017-02061
`
`
`
`Proceeding No.: IPR2017-02061
`Attorney Docket: 44360-0004IP1
`DECLARATION OF STEPHEN A. MARSHALL IN
`SUPPORT OF PETITIONER’S MOTION FOR PRO HAC
`VICE ADMISSION
`
`I, Stephen A. Marshall, hereby declare the following:
`
`I am a member in good standing of the state Bars of the Commonwealth of
`
`
`
`1.
`
`Massachusetts and the District of Columbia, as well as the United States District
`
`Court for the Eastern District of Texas, United States District Court for the Eastern
`
`District of Wisconsin, the United States District Court for the District of
`
`Massachusetts, the United States Court of Appeals for the First Circuit, and the
`
`United States Court of Appeals for the Federal Circuit.
`
`2.
`
`I have not been suspended or disbarred from practice before any court or
`
`administrative body.
`
`3.
`
`I have never had an application for admission to practice before any court or
`
`administrative body denied.
`
`4.
`
`No sanction or contempt citation has been imposed against me by any court
`
`or administrative body.
`
`5.
`
`I have read and will comply with the Office Patent Trial Practice Guide and
`
`the Board’s Rules of Practice for Trials set forth in part 42 of the Code of Federal
`
`Regulations.
`
`6.
`
`I will be subject to the USPTO 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).
`
`
`
`2
`
`
`
`Proceeding No.: IPR2017-02061
`Attorney Docket: 44360-0004IP1
`I have not applied to appear pro hac vice before the Office in any other
`
`7.
`
`proceedings during the past three years. I am also concurrently applying to appear
`
`in IPR2017-02137.
`
`8.
`
`I am an experienced litigation attorney with nearly 12 years of experience
`
`representing clients in patent cases involving telecommunications, computer
`
`networking, embedded systems and software, and robotics. I regularly litigate
`
`patent cases in various forums including the United States Court of Appeals for the
`
`Federal Circuit, federal district courts, and the International Trade Commission.
`
`Through my experience in patent litigation matters, I have represented clients in
`
`many phases of litigation including discovery, Markman hearings, jury trials, and
`
`appeals. My biography is attached hereto as Exhibit A. I am serving as lead or co-
`
`lead counsel for iRobot in two related matters, Certain Robotic Vacuum Cleaning
`
`Devices and Components Thereof Such as Spare Parts, Inv. No. 337-TA-1057
`
`(Int’l Trade Comm’n), filed April 18, 2017 and iRobot Corp. v. Shenzhen Zhiyi
`
`Technology Co., Ltd., d/b/a iLife, Case No. 1:17-cv-10652 (D. Mass.). These
`
`related litigations each involve the patent at issue in this inter partes review
`
`proceeding.
`
`I hereby declare that all statements made herein of my own knowledge are true and
`
`that all statements made on information and belief are believed to be true; and
`
`further that these statements were made with the knowledge that willful false
`
`
`
`3
`
`
`
`Proceeding No.: IPR2017-02061
`Attorney Docket: 44360-0004IP1
`statements and the like so made are punishable by fine or imprisonment, or both,
`
`under Section 1001 of Title 18 of the United States Code and that such willful false
`
`statements may jeopardize the validity of the application or any patents issued
`
`thereon.
`
`
`
`
`Date: August 28, 2018
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/Stephen A. Marshall/
`Stephen A. Marshall
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 202-783-5070
`Email: smarshall@fr.com
`
`
`
`
`
`4
`
`
`
`
`
`
`
`
`
`
`
`
`EXHIBIT A
`EXHIBIT A
`
`5
`
`
`
`Stephen A. Marshall | Attorney - Washington, DC | Fish
`
`
`
`Linked
`
`
`Facebo
`
`
`Bit.ly
`
`
`Addthis
`
` Menu
`
` Fish Team
`
`
`
`
`
`Stephen A. Marshall
`Principal
`
` Washington, D.C.
`
` 202-626-6414
`
` smarshall@fr.com Download vCard
`
`
`Background
`
`Steve Marshall is a Principal in the Washington, DC, ofce of Fish & Richardson. His practice focuses on complex patent
`litigation and counseling with an emphasis on embedded sysems and software, artifcial intelligence, and robotics. Mr. Marshall
`has litigated patent cases across a variety of indusries and technologies, including semiconductors, telecommunications,
`computer networking, optical data sorage, electro-optical/infrared countermeasures sysems, fre suppression sysems, and
`medical devices. Mr. Marshall has represented clients before U.S. Disrict Courts around the country, in the Court of Appeals for
`the Federal Circuit, and in Section 337 proceedings before the U.S. International Trade Commission (ITC).
`
`Mr. Marshall’s patent litigation experience covers all major aspects of litigation. He is experienced in pre-fling invesigations,
`case management, all phases of fact and expert discovery, including taking and defending depositions, motion practice, claim
`consruction, including arguing terms during Markman proceedings, summary judgment, trial, and appeal. He has been an
`active member of trial and appellate teams, and has taken tesimony at trial.
`
`Steve was previously a Summer Associate with the frm (2005). Mr. Marshall’s technical experience includes work as an
`Integration Engineer in EMC Corporation’s eLab (2000-2003), SAP Basis Adminisrator with The Gillette Company (1999), and
`an Analys in the SAP Solution Center at Andersen Consulting, LLP (1998-1999).
`
`Education
`J.D., Wake Fores University School of Law 2006
`
`Research Editor, Wake Fores Law Review
`cum laude, Order of the Coif
`
`B.S., University of Notre Dame 1998
`
`Computer Science
`cum laude, Tau Beta Pi
`Notre Dame Scholar
`
`Admissions
`• Massachusetts 2006
`• District of Columbia 2013
`
`https://www.fr.com/stephen-a-marshall/[8/22/2018 3:53:10 PM]
`
`6
`
`
`
`Stephen A. Marshall | Attorney - Washington, DC | Fish
`
`• U.S. Court of Appeals for the Federal Circuit
`• U.S. Court of Appeals for the First Circuit
`• U.S. District Court for the District of Massachusetts
`• U.S. District Court for the Eastern District of Texas
`• U.S. District Court for the Eastern District of Wisconsin
`
`Other Disinctions
`Accolades
`
`Named a 2012 and 2014-2016 “Rising Star” by Super Lawyers Magazine
`
`Selected Publications
`
`“Enfsh and TLI: A Study of the CAFC’s Recent Section 101 Opinions ,” Fish Litigation Blog (May 31, 2016).
`
`“The Alice-Efect: An Empirical Study of Section 101 Motion Practice,” Fish Litigation Blog (March 9, 2015).
`
`Speaking Engagements
`
`Straford Webinar, “Patent Prosecution and Defeating Absractness: Minimizing the Risk of Section 101 Rejection,” (November
`10, 2016).
`
`Fish Insights Webinar, “Alice and Octane Fitness: Patent Reform in the Federal Judiciary,” (May 20, 2015).
`
`Experience
`Certain Robotic Vacuum Cleaning Devices and Components Thereof Such As Spare Parts; Inv. No. 337-TA-1057 (ITC) – Lead
`attorney representing Complainant iRobot in an invesigation relating to robotic vacuum cleaners, autonomous behavior, and
`embedded sysems processing.
`
`01 Communique Laboratory, Inc. v. Citrix Sysems, Inc. (N.D. Ohio) – Representing defendant Citrix in a case relating to remote
`computer access technology. Obtained jury verdict of non-infringement.
`
`Parallel Networks Licensing, LLC v. Microsoft Corp. (D. Del.) – Representing defendant Microsoft in a case relating to load
`balanced processing of dynamic Web page requess.
`
`
`
`
`
`
`
`
`
`
`
`
`view all
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Services
`
`
`
`• Litigation
`
`
`
`• ITC Litigation
`
`
`• Patent Litigation
`
`
`Indusries
`
`
`
`
`
`
`• Consumer Products
`
`
`
`
`
`
`• Electrical and Computer Technology
`
`
`
`• Hardware
`
`• Software
`• Telecommunications
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`What's trending with Steve
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Filter by
`
`Show All
`
`News
`
`
`
`
`
`Events
`
`Blogs
`
`
`
`
`
`Fish Litigation Blog
`Event
`Fish Litigation Blog
`Event
`November 10th, 2016
`| 1:00 pm EST
`May 31, 2016
`May 20th, 2015
`| 1:00 pm EDT
`March 9, 2015
`
`
`
`Straford Webinar: Patent Prosecution and DefeatingEnfsh and TLI: A Study of the CAFC’s Recent SectionINSIGHTS Webinar: Alice and Octane Fitness: PatentThe Alice-Efect: An Empiric
`Motion Practice
`
`Absractness: Minimizing the Risk of Section 101101 Opinions
`Reform in the Federal Judiciary
`Rejection
`
`Speaking Engagement Webinar
`
`
`Webinar
`
`
`
`
`
`
`
`https://www.fr.com/stephen-a-marshall/[8/22/2018 3:53:10 PM]
`
`7
`
`
`
`Stephen A. Marshall | Attorney - Washington, DC | Fish
`
`News
`January 8, 2014
`Fish Elevates 14 Attorneys to Principal
`
`Press Release
`
`Author: Stephen A. Marshall
`
`News
`IP Litigation Federal Circuit
`
`January 21, 2009
`Fish settles patent case for Repligen
`
`Articles
`
`Author: Stephen A. Marshall
`
`IP Litigation
`
` load more topics
`
`MENU
`
` Careers
` News & Events
` Contact Us
`
` Austin
` Delaware
` New York
` Twin Cities
`
` Services & Industries
` Clients & Cases
`
`
`
`
` Boston
` Houston
` Silicon Valley
` Washington, D.C.
`
`Menu
`
`Quick Links
`
`People
`About Fish
`Offices
`
` Contact Us
`
`Atlanta
`Dallas
`Munich
`Southern California
`
` Global Reach
`
`© 2018 - Fish & Richardson
`
`Privacy Policy
`
`
`
`
`Disclaimer
`
`
`
`
`FISH On the Go
`
`
`
`
`Fish Internal
`
`
`
`
`
`
`
`
`
`
`https://www.fr.com/stephen-a-marshall/[8/22/2018 3:53:10 PM]
`
`8
`
`