UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BMW OF NORTH AMERICA, LLC,
`
`Petitioner,
`
`v.
`
`BLITZSAFE TEXAS, LLC,
`
`Patent Owner.
`
`Patent No. 8,155,342
`Filing Date: June 27, 2006
`Issue Date: April 10, 2012
`
`Title: MULTIMEDIA DEVICE INTEGRATION SYSTEM
`
`DECLARATION OF IRA MARLOWE
`
`Case No. IPR2018-00927
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`
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`Patent Owner Blitzsafe Texas, LLC – Exhibit 2004
`BMW of North America v. Blitzsafe, IPR2018-00927
`Page 1
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`

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`Case IPR2018-00927
`Patent No. 8,155,342
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`I, Ira Marlowe, declare as follows:
`
`1.
`
`I am the named inventor of U.S. Patent No. 8,155,342 (“the ’342
`
`Patent”) and U.S. Patent Application No. 11/475,847 (“the ’847 Application”),
`
`which the ’342 Patent issued from.
`
`2.
`
`I am also the named inventor of the three applications to which the
`
`’342 Patent claims priority:
`
`(1) U.S. Patent Application No. 11/071,667
`(“the ’677 Application,” filed March 3, 2005);
`
`(2) U.S. Patent Application No. 10/732,909
`(“the ’909 Application,” filed Dec. 10, 2003); and
`
`(3) U.S. Patent Application No. 10/316,961
`(“the ’961 Application,” filed Dec. 11, 2002).
`
`3.
`
`From the early 1980s to the present, I have been working as the Chief
`
`Executive Officer and President of Blitzsafe, a company that designs, engineers,
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`manufactures, and sells aftermarket car audio/video equipment.
`
`4.
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`I have been working in the field of car audio/video interfaces since the
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`mid-1990s and I have invented many types of interfaces that connect aftermarket
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`devices to car audio/video systems, several of which are described and claimed in
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`the ’342 Patent and the applications set forth above.
`
`5.
`
`I conceived of the inventions set forth in the ’847 Application prior to
`
`April 4, 2006, and at least as early as March 21, 2006.
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`Marlowe Declaration
`Ex. 2004 – Page 2
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`

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`Case IPR2018-00927
`Patent No. 8,155,342
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`6.
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`At least as early as March 21, 2006, I retained my patent attorneys,
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`including Mr. Michael R. Friscia and Mr. Mark E. Nikolsky of McCarter &
`
`English, LLP (“McCarter & English”), to draft the ’847 Application. I had several
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`teleconferences with Mr. Friscia and Mr. Nikolsky during which I conveyed to
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`them my conception of the invention described and claimed in the ’847
`
`Application and directed them to prepare the ’847 Application on behalf of
`
`Blitzsafe.
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`7.
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`I thereafter continued to work with Mr. Friscia and Mr. Nikolsky to
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`diligently prepare and file the ’847 Application. This included exchanges of drafts
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`of the specification and drawings via email and fax and teleconferences to discuss
`
`those drafts and my feedback on them. As a result of this work, the ’847
`
`Application was filed on June 27, 2006.
`
`8.
`
`Exhibit 2012 is a true and correct copy of an October 13, 2006 email
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`from Kenneth R. Dell, a Senior Accounts Receivable & Collections Assistant at
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`McCarter & English, to me attaching a spreadsheet with McCarter & English’s
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`time and billing records for various matters that they worked on for me, including
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`the drafting and prosecution of the ’847 Application. The McCarter & English
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`matter number corresponding to their work on the ’847 Application is “099879-
`
`00026.”
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`Marlowe Declaration
`Ex. 2004 – Page 3
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`

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`Case IPR2018-00927
`Patent No. 8,155,342
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`9.
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`Exhibit 2013 is a true and correct copy of an April 24, 2006 invoice
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`from McCarter & English to Blitzsafe reflecting time and billing records for work
`
`performed by McCarter & English on various Blitzsafe matters, including on the
`
`’847 Application, through March 31, 2006. See id. at 62–63. These entries
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`correspond to entries in the spreadsheet of Exhibit 2012.
`
`10.
`
`I have reviewed the time entries in Exhibits 2012 and 2013. They are
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`consistent with and collaborate my recollection of my interactions with Mr. Friscia
`
`and Mr. Nikolsky and the work that they performed for Blitzsafe in connection
`
`with the ’847 Application.
`
`11. As indicated in Exhibit 2012, on March 21, 2006, I had
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`teleconferences with Mr. Nikolsky and Mr. Michael R. Friscia regarding the
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`drafting of ’847 Application. The time entries corresponding to theses
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`teleconferences are reproduced below. See also Ex. 2013 at 62.
`
`12. During the March 21, 2006 teleconferences, I conveyed to Mr.
`
`Nikolsky and Mr. Friscia my conception of the inventions that were disclosed and
`
`claimed in the ’847 Application. Exhibit 2005 is a copy of handwritten notes that
`
`appear in the McCarter & English file for the “099879-00026” matter. These notes
`
`
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`Marlowe Declaration
`Ex. 2004 – Page 4
`
`Date
`
`Name / Invoice Number
`
`Amount
`
`Description
`
`3/21/2006 MICHAEL R. FRISCIA
`4/24/2006 Invoice=7416106
`
`93.75 ATTORNEY CONFERENCE REGARDING PROTECTING NEW
`ASPECT OF INVENTION WITH INTEGRATION DEVICE
`BUILT INTO MOBILE UNIT.
`
`Matter Number
`
`099879-00026
`
`3/21/2006 MARK E. NIKOLSKY
`4/24/2006 Invoice=7416106
`
`206.25 TELECONFERENCES WITH I. MARLOWE RE: POTENTIAL
`NEW CIP APPLICATION
`
`099879-00026
`
`

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`Case IPR2018-00927
`Patent No. 8,155,342
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`are consistent with my conception of the inventions that were disclosed and
`
`claimed in the ’847 application as I conveyed to Mr. Nikolsky and Mr. Friscia on
`
`our March 21, 2006 teleconferences. The notes are reproduced below.
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`Marlowe Declaration
`Ex. 2004 – Page 5
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`

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`Case IPR2018-00927
`Patent No. 8,155,342
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`Marlowe Declaration
`Ex. 2004 – Page 6
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`

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`Case IPR2018-00927
`Patent No. 8,155,342
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`13. The following day, March 22, 2006, Mr. Nikolsky prepared a conflict
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`check so that a new matter could be opened for the drafting of the ’847 Application
`
`for me. Exhibit 2006 is a true and correct copy of an email sent by Mr. Niksolky
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`
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`Marlowe Declaration
`Ex. 2004 – Page 7
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`

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`Case IPR2018-00927
`Patent No. 8,155,342
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`requesting that this conflict check be prepared. Exhibit 2007 is a true and correct
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`copy of the resulting Conflict of Interest Report that issued on March 23, 2006.
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`14. Following the March 21, 2006, teleconferences, Mr. Nikolsky and Mr.
`
`Friscia continued to work with me to diligently prepare and file the ’847
`
`Application. Below is a description of our efforts to prepare and file the ’847
`
`Application.
`
`15. On March 22, 2006, I had further telephone calls with Mr. Nikolsky
`
`regarding my ideas for the ’847 Application. Based on our conversations, Mr.
`
`Nikolsky began preparing the drawings for the application. This work is reflected
`
`in the March 22 and 24, 2006 entries from Exhibit 2012, which are reproduced
`
`below. See also Ex. 2013 at 62.
`
`16. On March 27, 2006, I had further teleconferences with Mr. Nikolsky
`
`regarding the ’847 Application. Based on our conversations, Mr. Nikolsky began
`
`preparing a draft of the ’847 Application. This work is reflected in the March 27
`
`and 31, 2006 entries from Exhibit 2012, which are reproduced below. See also
`
`
`
`Ex. 2013 at 62.
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`Marlowe Declaration
`Ex. 2004 – Page 8
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`Date
`
`Name / Invoice Number
`
`Amount
`
`Description
`
`3/22/2006 MARK E. NIKOLSKY
`4/24/2006 Invoice=7416106
`
`343.75 TELEPHONE CALLS WITH I. MARLOWE RE: ADDITIONAL
`FEATURES FOR INCLUSION IN CIP PATENT
`APPLICATION; BEGIN PREPARING DRAWINGS FOR CIP
`APPLICATION
`
`Matter Number
`
`099879-00026
`
`3/24/2006 MARK E. NIKOLSKY
`4/24/2006 Invoice=7416106
`
`343.75 PREPARE DRAWINGS FOR CIP APPLICATION ON
`MULTIMEDIA DEVICE INTEGRATION SYSTEM
`
`099879-00026
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`

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`Case IPR2018-00927
`Patent No. 8,155,342
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`17. Mr. Nikolsky and Mr. Friscia continued working on the draft of ’847
`
`
`
`Application. On April 18, 2006, Mr. Nikolsky faxed me the drawings that were
`
`created for the ’847 Application. Exhibit 2008 is a true and correct copy of this
`
`fax.1 These are the same drawings that were included in the ’847 Application as
`
`Figures 18–23 (Figures 1–17 were created for and included in the prior
`
`applications to which the ’847 Application claimed priority). On that and the
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`following day, April 19, 2006, I conferred with Mr. Nikolsky and Mr. Friscia
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`regarding the drawings and the draft application. This work is reflected in the April
`
`18, 18, and 19, 2006 entries from Exhibit 2012, which are reproduced below.
`
`18. Mr. Nikolsky and Mr. Friscia continued working on the draft of ’847
`
`Application. On May 4, 2006, I had a telephone call with Mr. Nikolsky regarding
`
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`1 Mr. Nikolsky faxed these drawings to me a second on April 19, 2006. Exhibit
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`2009 is a true and correct copy of that fax.
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`
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`Marlowe Declaration
`Ex. 2004 – Page 9
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`Date
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`Name / Invoice Number
`
`Amount
`
`Description
`
`3/27/2006 MARK E. NIKOLSKY
`4/24/2006 Invoice=7416106
`
`275.00 TELECONFERENCES WITH I. MARLOWE RE: NEW
`MATERIAL FOR CONTINUATION-IN-PART APPLICATION
`
`3/31/2006 MARK E. NIKOLSKY
`4/24/2006 Invoice=7416106
`
`481.25 PREPARE DRAFT CONTINUATION-IN-PART PATENT
`APPLICATION
`
`Matter Number
`
`099879-00026
`
`099879-00026
`
`Date
`
`Name / Invoice Number
`
`Amount
`
`Description
`
`4/17/2006 MARK E. NIKOLSKY
`7/5/2006 Invoice=7432429
`
`825.00 PREPARATION OF CONTINUATION-IN-PART PATENT
`APPLICATION
`
`4/18/2006 MICHAEL R. FRISCIA
`7/5/2006 Invoice=7432429
`
`93.75 ATTORNEY CONFERENCE REGARDING CIP; REVIEW
`INITIAL DRAFT DRAWINGS.
`
`4/18/2006 MARK E. NIKOLSKY
`7/5/2006 Invoice=7432429
`
`275.00 FORWARD DRAFT DRAWINGS FOR APPLICATION TO I.
`MARLOWE FOR REVIEW AND COMMENTS; TELEPHONE CALL
`TO I. MARLOWE TO REVIEW SAME
`
`4/19/2006 MARK E. NIKOLSKY
`7/5/2006 Invoice=7432429
`
`137.50 TELEPHONE CALL WITH I. MARLOWE RE: DRAFT
`DRAWINGS FOR CONTINUATION-IN-PART (CIP) PATENT
`APPLICATION
`
`Matter Number
`
`099879-00026
`
`099879-00026
`
`099879-00026
`
`099879-00026
`
`

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`Case IPR2018-00927
`Patent No. 8,155,342
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`the application. On May 10, Mr. Nikolsky met with Mr. Friscia regarding the
`
`application. On May 16, 2006, Mr. Nikolsky emailed me a draft of the ’847
`
`Application. Exhibit 2010 is a true and correct copy of this email and its
`
`attachments. This work is reflected in the May 2, 3, 4, 5, 8, 10 and 15, 2006 entries
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`from Exhibit 2012, which are reproduced below.
`
`19. Following my receipt of the draft application, on May 18, 2006, I had
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`a telephone conference with Mr. Nikolsky regarding the draft. I had another
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`telephone conference with Mr. Nikolsky on May 31, 2006. Based on these
`
`conversations, Mr. Nikolsky and Mr. Friscia revised the draft and sent me another
`
`
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`Marlowe Declaration
`Ex. 2004 – Page 10
`
`Date
`
`Name / Invoice Number
`
`Amount
`
`Description
`
`1,718.75 PREPARE DRAFT CIP APPLICATION
`
`Matter Number
`
`099879-00026
`
`5/2/2006 MARK E. NIKOLSKY
`7/5/2006 Invoice=7432429
`
`5/3/2006 MARK E. NIKOLSKY
`7/5/2006 Invoice=7432429
`
`5/4/2006 MARK E. NIKOLSKY
`7/5/2006 Invoice=7432429
`
`5/5/2006 MARK E. NIKOLSKY
`7/5/2006 Invoice=7432429
`
`550.00 REVISE DRAFT CIP APPLICATION
`
`099879-00026
`
`275.00 TELEPHONE CALL WITH I. MARLOWE RE: ADDITIONAL
`DISCLOSURE FOR CIP APPLICATION; REVISE
`APPLICATION
`
`099879-00026
`
`412.50 REVISE DRAFT CIP APPLICATION
`
`099879-00026
`
`5/8/2006 MARK E. NIKOLSKY
`7/5/2006 Invoice=7432429
`
`481.25 REVISE DRAFT CIP APPLICATION; CIRCULATE TO M.
`FRISCIA FOR REVIEW AND COMMENTS
`
`5/10/2006 MICHAEL R. FRISCIA
`7/5/2006 Invoice=7432429
`
`562.50 REVIEW CIP APPLICATION; ATTORNEY CONFERENCE
`REGARDING APPLICATION.
`
`5/10/2006 MARK E. NIKOLSKY
`7/5/2006 Invoice=7432429
`
`68.75 CONFERENCE WITH M. FRISCIA RE: DRAFT CIP
`APPLICATION
`
`099879-00026
`
`099879-00026
`
`099879-00026
`
`5/15/2006 MICHAEL R. FRISCIA
`7/5/2006 Invoice=7432429
`
`5/15/2006 MARK E. NIKOLSKY
`7/5/2006 Invoice=7432429
`
`93.75 REVIEW REVISED DRAFT CIP APPLICATION.
`
`099879-00026
`
`275.00 REVISE DRAFT CONTINUATION-IN-PART APPLICATION;
`ATTORNEY CONFERENCE RE: SAME; FORWARD DRAFT
`APPLICATION TO I. MARLOWE FOR REVIEW AND
`COMMENTS
`
`099879-00026
`
`

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`Case IPR2018-00927
`Patent No. 8,155,342
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`draft for review. This work is reflected in the May 18 and 31, 2006 entries from
`
`Exhibit 2012, which are reproduced below.
`
`20. On June 1, 2006, I had a further telephone call with Mr. Nikolsky
`
`regarding the revised draft of the application. Based on this conversation, Mr.
`
`Nikolsky and Mr. Friscia further revised the draft. On June 5, 2006, Mr. Nikolsky
`
`emailed me the further revised draft of the ’847 Application based on the feedback
`
`that I provided to Mr. Nikolsky. Exhibit 2011 is a true and correct copy of this
`
`email and its attachments. This work is reflected in the June 1 and 5, 2006 entries
`
`from Exhibit 2012, which are reproduced below.
`
`
`
`
`
`21. On June 13, 2006, I had a telephone call with Mr. Nikolsky regarding
`
`the further revised draft of the application. Thereafter, on June 27, 2006, Mr.
`
`Marlowe Declaration
`Ex. 2004 – Page 11
`
`Name / Invoice Number
`Date
`5/18/2006 MARK E. NIKOLSKY
`7/5/2006 Invoice=7432429
`
`Description
`Amount
`68.75 TELEPHONE CALL WITH I. MARLOWE RE: DRAFT CIP
`APPLICATION
`
`5/31/2006 MARK E. NIKOLSKY
`7/5/2006 Invoice=7432429
`
`550.00 TELEPHONE CALL WITH I. MARLOWE RE: VOICE
`RECOGNITION PRODUCTS MANUFACTURED BY VOICEBOX
`TECHNOLOGIES, INC AND POTENTIAL IMPACT ON
`APPLICATION; REVISE APPLICATION; CIRCULATE
`REVISED APPLICATION TO I. MARLOWE FOR REVIEW
`
`Matter Number
`099879-00026
`
`099879-00026
`
`5/31/2006 MICHAEL R. FRISCIA
`7/5/2006 Invoice=7432429
`
`93.75 REVIEW REVISED DRAFT CIP APPLICATION.
`
`099879-00026
`
`Date
`
`Name / Invoice Number
`
`Amount
`
`Description
`
`6/1/2006 MARK E. NIKOLSKY
`7/5/2006 Invoice=7432429
`
`275.00 TELEPHONE CALL WITH I. MARLOWE RE: COMMENTS ON
`REVISE DRAFT OF CIP APPLICATION
`
`Matter Number
`
`099879-00026
`
`6/1/2006 MICHAEL R. FRISCIA
`7/5/2006 Invoice=7432429
`
`93.75 ATTORNEY CONFERENCE REGARDING CIP APPLICATION
`AND REVISIONS.
`
`099879-00026
`
`6/5/2006 MARK E. NIKOLSKY
`7/5/2006 Invoice=7432429
`
`550.00 TELECONFERENCE WITH I. MARLOWE RE: REVISIONS TO
`DRAFT CIP APPLICATION; REVISE APPLICATION;
`FORWARD REVISED APPLICATION TO CLIENT FOR
`REVIEW
`
`099879-00026
`
`6/5/2006 MICHAEL R. FRISCIA
`7/5/2006 Invoice=7432429
`
`93.75 ATTORNEY CONFERENCE; REVIEW CORRESPONDENCE TO
`CLIENT.
`
`099879-00026
`
`

`

`Case IPR2018-00927
`Patent No. 8,155,342
`Nikolsky, Mr. Friscia, and Ms. Janelle Fava worked to finalize and file the ’847
`
`Application. This work is reflected in the June 13 and 27, 2006 entries from
`
`Exhibit 2012, which are reproduced below.
`
`Date
`
`Name / Inwice Number
`
`: Amount
`
`Description
`
`6/13/2006 MARK E. NIKOLSKY
`7/5/2006 ln\ADice=7432429
`
`68.75 FOLLOW-UP CALL TO I. MARLOWE RE: COMMENTS ON
`REVISED DRAFT OF CIP APPLICATION
`
`6/27/2006 JANELLE FAVA
`7/5/2006 lnvoice=7432429
`
`187.50 PREPARE FORMAL DOCUMENTS FOR FILING WITH CIP
`PATENT APPLICATION; PROCESS PATENT APPLICATION;
`PREPARE DECLARATION AND POWER OF ATTORNEY FOR
`INVENTOR'S SIGNATURE; PREPARE LETTER TO CLIENT
`FORWARDING COPY OF APPLICATION AS FILED WITH
`USPTO AND FORWARDING DOCUMENTS FOR SIGNATURE;
`FINALIZE AND FORWARD LETTER; ADD NEW MATTER TO
`ATTORNEY DOCKET AND DOCKET FOR FOLLOW-UP
`
`Matter Number Y
`
`099879-00026
`
`099879-00026
`
`6/27/2006 MARK E. NIKOLSKY
`7/5/2006 lnvoice=7432429
`
`275.00 TELECONFERENCE WITH I. MARLOWE RE: FINAL
`REVISIONS TO APPLICATION; FINALIZE AND FILE
`APPLICATION
`
`6/27/2006 MICHAEL R. FRISCIA
`7/5/2006 ln\£>ice=7432429
`
`187.50 REVIEW AND EXECUTE TRANSMITTAL PAPERS FOR
`FILING APPLICATION.
`
`099879-00026
`
`099879-00026
`
`I 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
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`further that these statements were made with the knowledge that willful false
`
`statements and the like so made are punishable by fine or imprisonment, or both,
`
`under Section 1001 of Title 18 of the United
`
`Dated: August 8, 2018
`
`Marlowe Declaration
`Ex. 2004 - Page 12
`
`