`U.S. Patent No. 9,445,930
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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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`RESHAPE MEDICAL LLC et al.
`Petitioners
`v.
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`FULFILLIUM, INC.
`Patent Owner
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`Patent No. 9,445,930
`Issue Date: Sep. 20, 2016
`Title: METHODS, DEVICES, AND SYSTEMS FOR
`OBESITY TREATMENT
`_______________
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`Inter Partes Review No. IPR2018-00958
`____________________________________________________________
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`DECLARATION OF NICOLA A. PISANO, ESQ.
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`RESHAPE 1019
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`Case IPR2018-00958
`U.S. Patent No. 9,445,930
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`I, Nicola A. Pisano, declare and state as follows:
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`1.
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`I am an attorney at law duly licensed in the States of California and
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`New York and before the United States Patent and Trademark Office. I am a
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`Partner at the law firm of Foley & Lardner LLP, lead counsel for ReShape Medical
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`LLC in Fulfillium, Inc. v. ReShape Medical LLC et al., Civil Action No. 2:17-cv-
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`08419-RGK-PLA (C.D. Cal.), and lead counsel in this Petition for Petitioners
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`ReShape Medical LLC (“ReShape Medical”) and ReShape Lifesciences, Inc. I
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`make this declaration based upon my personal knowledge, and if called upon to do
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`so, I could and would competently testify to the matters stated herein.
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`2.
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`Foley & Lardner LLP was retained by ReShape Medical, Inc., in early
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`2017 to respond to the original complaint by Fulfillium, Inc. in Fulfillium, Inc. v.
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`ReShape Medical, Inc., Case No. 1:17-cv-00453-RGA (D. Del.). From the outset,
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`ReShape Medical undertook a strategy to seek prompt resolution of that litigation,
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`but to pursue Inter Partes Review of the ’915 and ’930 patents asserted in that
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`complaint if no settlement were possible. As stated in my declaration filed May 7,
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`2018, in the above litigation (D.I. 106-2), ReShape Medical undertook several
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`unsuccessful efforts to negotiate resolution of the litigation, and delayed in filing
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`its IPRs specifically so that the substantial filing costs could be allocated to
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`settlement. See Exhibit 1020 at ¶¶ 2-3. When it became clear that Fulfillium had
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`no interest in a negotiated resolution, I directed that the IPRs for the ’915 and ’930
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`patents be filed on April 20, 2018.
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`3.
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`In early October 2017, I was informed that ReShape Medical had been
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`acquired by Enteromedics, Inc. on October 3, 2017. In connection with that
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`RESHAPE 1019
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`Case IPR2018-00958
`U.S. Patent No. 9,445,930
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`acquisition, ReShape Medical, Inc. was first merged with a wholly-owned
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`subsidiary of Enteromedics, Inc., named Nixon Subsidiary Holdings LLC, and the
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`resulting company was then merged into another wholly-owned subsidiary of
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`Enteromedics and renamed ReShape Medical LLC. On October 19, 2017,
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`Enteromedics, Inc. changed its name to ReShape Lifesciences, Inc. My
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`understanding is that the former shareholders of ReShape Medical, Inc. ultimately
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`are responsible for the costs of this proceeding.
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`5.
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`Upon reviewing the Patent Owner’s Preliminary Response filed herein
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`on August 8, 2018, I realized that although ReShape Lifesciences, Inc. was
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`identified in the Notice of Each Real-Party-In-Interest it was not specifically
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`labeled as a real-party-in-interest. I promptly contacted the Board to request
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`permission to file an updated mandatory notice to correct the Notice of Each Real-
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`Party-In-Interest to reflect that both ReShape Medical LLC and ReShape
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`Lifesciences, Inc. are real-parties-in-interest.
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`I declare under penalty of perjury that the foregoing is true and correct.
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`Executed on August 29, 2018.
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`By:
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`/Nicola A. Pisano/
`Nicola A. Pisano
`Reg. No. 34,408
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`RESHAPE 1019
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`Case IPR2018-00958
`U.S. Patent No. 9,445,930
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a true and correct copy of the
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`Declaration of Nicola A. Pisano, Esq. is being filed on the PTAB E2E system and
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`served on August 29, 2018 via electronic service to the following email addresses,
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`and as consented in Paper 4.
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`Gardella Grace P.A.
`455 Massachusetts Ave, NW, Suite 507
`Washington, DC 20001
`Telephone: 703-556-9600
`ggardella@gardellagrace.com
`info@gardellagrace.com
`ngrace@gardellagrace.com
`rdavila@gardellagrace.com
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`By:
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`/Nicola A. Pisano/
`Nicola A. Pisano
`Reg. No. 34,408
`Counsel for Petitioners
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`4838-9170-1873
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`3
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`RESHAPE 1019
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