UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE LLC,
`Petitioner
`
`V.
`
`AGIS SOFTWARE DEVELOPMENT, LLC.
`Patent Owner
`
`Case IPR2018-01079
`
`Patent No. 8,213,970 B2
`
`DECLARATION OF MICHAEL A. BERTA IN SUPPORT OF
`
`PETITIONER GOOGLE’S MOTION FOR
`
`PRO HAC VICE ADMISSION
`
`Google 1021
`
`Google V. AGIS
`IPR2018-01079
`
`Google 1021
`Google v. AGIS
`IPR2018-01079
`
`

`

`IPR2018—01079 ‘
`
`US. Patent No. 8,213,970
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`DECLARATION OF MICHAEL A. BERTA IN SUPPORT OF
`
`PETITIONER GOOGLE’S MOTION FOR PRO HAC VICE ADMISSION
`
`1, Michael A. Berta, declare as follows:
`
`1.
`
`I am a Partner with the law firm of Arnold & Porter Kaye Scholer LLP.
`
`I represent and advise Petitioner Google Inc. (“Google”) in connection with the
`
`above—captioned inter partes review (“IPR”) proceeding.
`
`1 also represent
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`Petitioner’s identified real party in interest, LG Electronics Inc., in connection with
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`the underlying district court litigation (AGIS Software Development, LLC v. LG
`
`Electronics Inc, 17—cV-515—JRG (ED. TeX.)) on the patent at issue in this IPR
`
`proceeding, 8,213,970 (“the ’970 patent”).
`
`2.
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`I have been a member in good standing of the Bar of the State of
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`California since 1998. My California State Bar number is 194650. I am also admitted
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`to practice before numerous federal courts:
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`a. U.S.D.C. for the Northern District of California (since 2000);
`
`b. U.S.D.C. for the Southern District of California (since 201 1);
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`c. U.S.D.C. for the Central District of California (since 2005);
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`d. U.S.D.C. for the District of Columbia (since 2009);
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`e. U.S.D.C. for the Eastern District of Texas (since 2012);
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`f. U.S.D.C. for the District of Colorado (since 2011);
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`g. U.S.D.C. for the Federal Circuit (since 2001);
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`h. US. Court of Appeals for the First Circuit (since 2009);
`
`-1-
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`

`

`IPR2018—01079
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`US. Patent No. 8,213,970
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`i. US. Court of Appeals for the Ninth Circuit (since 2009); and
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`j. US. International Trade Commission (since 2005).
`
`3.
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`I practice litigation, primarily patent
`
`litigation, and have done so
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`throughout my career as an attorney. I have litigated dozens of patent cases across
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`the country, including in California, Delaware, Texas, Washington DC, Colorado,
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`and New York. A copy of my biography is provided as Appendix A.
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`4.
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`I have been actively involved in the present IPR proceeding regarding
`
`the ’970 patent, as well as related IPR proceedings involving US. Patent No.
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`9,408,055, Case No.
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`IPR2018—01080; US. Patent No. 9,467,838, Case No.
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`IPR2019—00403 (related IPR2018-00819), for which Petitioner is also seeking my
`
`admission pro hac vice. I have extensively reviewed the ’970 patent, its prosecution
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`history and related materials, and the Patent Owner’s infringement contentions
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`served in the litigation against Petitioner’s real party in interest identified in the IPR
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`proceedings. I have gained significant familiarity with the claim construction issues
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`(implicit and explicit) in those cases, including the Patent Owner’s asserted claim
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`scope as disclosed in its infringement contentions served in the litigation. These
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`issues significantly overlap with the corresponding issues in these IPR proceedings.
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`Moreover, not only have I reviewed and understand the ’970 patent and its
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`corresponding file history, but my work in the concurrent litigation has also resulted
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`in my detailed review ofthe Petition for Inter Partes Review (including the proposed
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`

`

`IPR2018—01079
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`US. Patent No. 8,213,970
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`invalidity grounds therein, the cited references, and exhibits), the accompanying
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`Declaration of David H. Williams, the Patent Owner’s Preliminary Response, and
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`the Board’s Decision instituting Inter Partes Review in each of the IPR proceedings
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`for which Petitioner is seeking my admissionpro hac vice (e. g. , Case Nos. IPR2018-
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`01079, —01080 and IPR2019—00403).
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`5.
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`In all of these IPR proceedings, I have advised Petitioner on strategy
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`regarding Petitioners’ affirmative arguments and Petitioners’ counterarguments to
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`the Patent Owner’s positions. And, for the present IPR proceeding and for the other
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`related IPR proceedings, I have worked with Petitioner and with lead counsel and
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`backup counsel named in these IPR proceedings to identify and analyzed the
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`references relied upon in the petitions and to draft
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`the petitions and other
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`submissions to the Office.
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`6.
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`The prior art references at issue in the IPR proceedings are also at issue
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`in the underlying litigation in the case against Petitioner’s real party in interest, and
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`I have reviewed a vast amount of additional, related prior art for the invalidity
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`contentions, many of which are implicated in the district court litigation.
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`7.
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`Since 2011, I have represented Petitioner in connection with multiple
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`patent litigations regarding various software and hardware technologies, including,
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`but not limited to, messaging and notification systems and applications at issue in
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`this IPR, which relates generally to forced message alerts for interactive remote
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`

`

`communications, as well as Petitioner’s products. This includes the following
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`IPR2018-01079
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`U.S. Patent No. 8,213,970
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`litigations:
`
`a.
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`Clouding IP LLC v. Google Inc, Case No. 12-cv-00639— LPS (D. Del):
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`I represented Google as counsel of record concerning nine patents-in-suit:
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`U.S. Patent Nos. 7,596,784 (“Method system and apparatus for providing pay-
`
`per—use
`
`distributed computing resources” ;
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`7,065,637
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`(“System for
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`configuration of dynamic computing environments using a visual interface”);
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`7,032,089 (“Replica synchronization using copy—on—read
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`technique”);
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`6,738,799 (“Methods and apparatuses for file synchronization and updating
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`using a signature list”); 5,495,607 (“Network management system having
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`virtual catalog overview of files distributively stored across network
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`domain”); 5,825,891 (“Key management for network communication”);
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`6,925,481 (“Technique for enabling remote data access and manipulation
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`from a pervasive device”); 7,254,621 (“Technique for enabling remote data
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`access and manipulation from a pervasive device”); and 6,963,908 (“System
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`for
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`transferring customized hardware and software settings from one
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`computer
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`to
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`another
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`computer
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`to
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`provide
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`personalized
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`operating
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`environments”).
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`

`

`IPR2018—01079
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`US. Patent No. 8,213,970
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`b.
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`Google Inc. and Microsoft Corp. v. GeoTag, Inc, No. 1:11- cv—00175
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`(D. Del): I represented Google as counsel of record concerning the patent-in—
`
`suit: US. Patent No. 5,930,474 (“Internet organizer
`
`for
`
`accessing
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`geographically and topically based information”).
`
`0.
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`LBS Innovations LLC v. Waze, Inc, No. 2:13-cv-00463 (ED. Tex.),
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`LBS Innovations LLC v. Citgo Petroleum Corp. et a]. , No. 1 1—cv—00408—IVIHS
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`(ED. Tex), and LBS Innovations LLC v. Aaron Brothers, Inc. et al., No. 11—
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`cv00142—JRG (E.D. Tex): I represented Google’s subsidiary and certain of
`
`its customers as counsel of record concerning the patent—in-suit: US. Patent
`
`No. 6,091,956 (“Situation Information System”).
`
`(1.
`
`Personal Web Technologies, LLC et al. v. Google Inc. et al., No. 13—CV—
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`01317—EJD (ND. Cal.): I represent Google as counsel of record concerning
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`five patents-in—suit: US. Patent Nos. 5,978,791 (“Data processing system
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`using substantially unique identifiers to identify data items, whereby identical
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`data items have the same identifiers”); 6,415,280 (“Identifying and requesting
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`data in network using identifiers which are based on contents of data ”);
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`7,802,310 (“Controlling access to data in a data processing system ”);
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`7,949,662 (“De-duplication of data in a data processing system”); and
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`8,001,096 (“Computer file system using content—dependent file identifiers”).
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`

`

`IPR2018-01079
`
`US. Patent No. 8,213,970
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`6.
`
`Blue Spike LLC v. Google Inc, No. 14-cv-01650-YGR (N.D. Cal.): I
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`represented Google as counsel of record concerning five patents—in—suit: US.
`
`Patent Nos. 7,346,472 (“Method and device for monitoring and analyzing
`
`signals”); 7,660,700 (“Method and device for monitoring and analyzing
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`signals”); 7,949,494 (“Method and device for and device for monitoring and
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`analyzing signals”); and 8,712,728 (“Method and device for monitoring and
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`analyzing signals”).
`
`f.
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`Makor Issues & Rights Ltd. v. Google Inc. and Waze, Inc, No. 16-cv—
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`00100 (D. Del.): I represent Google as counsel of record concerning two
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`patents—in—suit: US. Patent Nos. 6,480,783 (“Real Time Vehicle Guidance
`
`and Forecasting System Under Traffic Jam Conditions”); and 6,615,130
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`(“Real Time Vehicle Guidance and Traffic Forecasting System”).
`
`8.
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`Through this work, I have developed in—depth knowledge of the issues
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`and technology within messaging, notification,
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`and mapping application
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`technologies. This knowledge includes my analysis of a significant number of
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`patents,
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`articles, books,
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`software programs, products,
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`industry conference
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`proceedings, and other materials regarding such technologies. I have used this
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`knowledge on behalf of Petitioner to help prepare invalidity contentions, expert
`
`reports on invalidity, and petitions for inter partes review. My experience also
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`includes knowledge gained from working closely with several technical experts from
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`

`

`IPR2018—01079
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`US. Patent No. 8,213,970
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`academia and industry, both as expert witnesses in litigation and as an expert
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`declarant in these IPR proceedings.
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`I have taken and defended numerous expert
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`depositions
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`regarding such technologies,
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`including numerous district court
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`depositions regarding invalidity and other topics. I have also taken and defended
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`numerous factual depositions implicating such technologies,
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`including taking
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`depositions of named inventors and defending depositions of engineers. And I have
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`participate in dozens of meetings with Google’s engineers regarding various
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`software and hardware technologies and applications, including, for example, as
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`related to communications and mapping applications.
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`9.
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`I am familiar with the prior art references at issue in these IPRs because
`
`of my work in these IPRs and due to my work in the concurrent litigation on behalf
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`of Petitioner’s identified real party in interest, LG Electronics Inc.
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`I have reviewed
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`these prior art publications is detail, and furthermore, I understand the Board’s
`
`analysis of the prior art publications set forth in the Institution Decision for this IPR
`
`proceeding.
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`10.
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`I have worked with Mr. Williams, who provided a declaration in this
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`IPR proceeding.
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`I conferred with Mr. Williams during his work on his expert
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`declaration in the present
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`IPR proceeding,
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`and I
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`thoroughly understand
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`Mr. Williams’s testimony related to prior art publications cited in this IPR
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`proceeding.
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`

`

`IPR2018—01079
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`US. Patent No. 8,213,970
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`11.
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`I frequently publish and present on legal issues concerning patent law,
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`some of which is described in my biography attached hereto in Appendix A.
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`12.
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`I have not been suspended or disbarred from practice before any court
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`or administrative body. No sanction or contempt citation has been imposed against
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`me by any court or administrative body. I have never had an application for
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`admission to practice before any court or administrative body denied.
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`13. Within the past three years, I have requested to appear pro hac vice
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`before the Office, and the Board has approved each of those requests.
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`(See, e.g.,
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`IPR2016-01535, Paper 16; IPR2016—01536, Paper 12 ; PR2016-01537, Paper 12.)
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`14.
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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 the Code of Federal
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`Regulations.
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`15.
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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 pursuant to 37 C.F.R.
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`§ 11.19(a).
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`16.
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`I hereby declare that all statements made herein of my own knowledge
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`are true and that all statements made on information and belief are believed to be
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`true. I fiarther declare that these statements were made with the knowledge that
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`willful false statements and the like so made are punishable by fine or imprisonment,
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`or both, under Section 1001 of Title 18 of the United States Code and that such
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`

`

`IPR2018—01079
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`US. Patent No. 8,213,970
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`willful false statements may jeopardize the validity of this proceeding.
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`Respectfully s
`
`Date: March 4, 2019.
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`

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`
`APPENDIX A
`APPENDIX A
`
`

`

`Michael A. Berta
`
`Partner
`
`San Francisco
`Tel +1 415.471.3277
`
`michael.berta@arnoldporter.com
`
`Credentials
`Education
`JD, Georgetown University
`Law Center, 1997, cum laude
`
`BA, Economics, University of
`California, San Diego, 1993
`
`Admissions
`California
`
`District of Columbia
`
`US District Court, Northern
`District of California
`
`US District Court, Southern
`District of California
`
`US District Court, Central
`District of California
`
`US District Court, District of
`Columbia
`
`US District Court, Eastern
`District of Texas
`
`US Court of Appeals for the
`Federal Circuit
`
`US International Trade
`Commission
`
`Michael Berta focuses his practice on intellectual property litigation, with experience
`in both patent and trade secret litigation across a wide range of technologies,
`including data storage systems and software, networking hardware and software,
`microprocessor and flash memory architecture, pharmaceuticals, medical devices,
`and consumer products. Mr. Berta has tried cases before judges and juries in federal
`court and before the International Trade Commission.
`
`Experience
`Intellectual Property
`
`Hardware, software and web-based services companies, including Adobe, Google and
`Hewlett-Packard, in patent litigation in multiple jurisdictions, including the
`Eastern District of Texas and Delaware.
`
`Various pharmaceutical companies in ANDA patent litigation in United States
`District Courts of Delaware and New Jersey, both at trial and in preliminary
`injunction proceedings.
`
`Various pharmaceutical and life sciences companies, including Medicis
`Pharmaceutical, Affymetrix, Ventana Medical Systems, Arcturus Engineering
`Neopharm, VISX (now AMO) and Cell Therapeutics, in patent, trade secret, and drug
`development litigation involving technologies such as transdermal delivery systems,
`DNA/RNA microarrays, DNA probes, laser capture microdissection, and oncological
`pharmaceuticals.
`
`Companies in the semiconductor industry, including Renesas, Sun Microsystems,
`SMIC, SanDisk, Numerical Technologies and Nanya Technology, in patent and trade
`secret litigation involving semiconductor manufacturing technology, DRAM
`architecture, flash controller technology, and server architecture.
`
`Crocs in district court, before the ITC and with Customs, in design and utility patent
`matters against import shoe manufacturers.
`
`RealNetworks in DMCA/antitrust action involving DVD technology.
`
`Global VR in copyright and trade dress action over coin-operated video golf.
`
`Other clients have included MachineZone, Logicube, LeapFrog Enterprises, Fortinet,
`
`

`

`Digital Oilfield, Platinum Equity, the California Lottery, the McClatchy Company,
`UTStarcom and NetSuite.
`
`Recognition
`
`Litigation: Intellectual Property (2017-2019)
`
`Litigation (2015-2018)
`
`"IP Star" (2013-2018)
`
`(2014-2018)
`
`"Top IP Attorneys" (2017)
`
`Patent Litigation: Full Coverage (2013-2014, 2017)
`
`© Arnold & Porter Kaye Scholer LLP 2019 All
`Rights Reserved.
`
`arnoldporter.com
`
`