DOCKET NO.: 0107131-00564US1
`Filed on behalf of Intel Corporation
`By: David L. Cavanaugh, Reg. No. 36,476
`Richard Goldenberg, Reg. No. 38,895
`Wilmer Cutler Pickering Hale and Dorr LLP
`60 State Street
`Boston, Massachusetts 02109
`Email: david.cavanaugh@wilmerhale.com
` richard.goldenberg@wilmerhale.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`Intel Corporation
`Petitioner
`
`v.
`
`Qualcomm Incorporated
`Patent Owner
`
`Case IPR2018-01152
`U.S. Patent No. 8,698,558
`
`DECLARATION OF LOUIS W. TOMPROS IN SUPPORT OF
`MOTION FOR ADMISSION PRO HAC VICE
`
`Intel v. Qualcomm
`Exhibit 1025
`IPR2018-01152
`
`
`Filed on behalf of Intel Corporation
`By: David L. Cavanaugh, Reg. No. 36,476
`Richard Goldenberg, Reg. No. 38,895
`Wilmer Cutler Pickering Hale and Dorr LLP
`60 State Street
`Boston, Massachusetts 02109
`Email: david.cavanaugh@wilmerhale.com
` richard.goldenberg@wilmerhale.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`Intel Corporation
`Petitioner
`
`v.
`
`Qualcomm Incorporated
`Patent Owner
`
`Case IPR2018-01152
`U.S. Patent No. 8,698,558
`
`DECLARATION OF LOUIS W. TOMPROS IN SUPPORT OF
`MOTION FOR ADMISSION PRO HAC VICE
`
`Intel v. Qualcomm
`Exhibit 1025
`IPR2018-01152
`
`
`
`Case No. IPR2018-01152
`
`
`
`I, Louis Tompros, declare as follows:
`1.
`I am a partner at the law firm of Wilmer Cutler Pickering Hale
`
`and Dorr LLP in Boston, Massachusetts.
`
`2.
`
`I have been practicing law for approximately fifteen years. My
`
`practice during much of that time has focused on intellectual property
`
`litigation, and particularly, patent litigation.
`
`3.
`
`I am a member in good standing of the Bar of the
`
`Commonwealth of Massachusetts, and am admitted to practice before the
`
`United States Supreme Court, the Massachusetts Supreme Judicial Court, the
`
`United States Courts of Appeal for the First, Seventh, Ninth, and Federal
`
`Circuits, and the United States District Courts for the District of
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`Massachusetts and the Eastern District of Michigan.
`
`4. My Massachusetts Bar No. is 657791.
`
`5.
`
`I have represented parties in patent litigation cases in the
`
`District of Massachusetts, the Eastern District of Texas, the District of
`
`Delaware, the Northern, Central, Eastern, and Southern Districts of
`
`California, the District of Minnesota, and the International Trade
`
`Commission, among other jurisdictions. Those cases have involved, among
`
`other issues, issues involving Patent Office rules, regulations, and
`
`procedures, including inventorship disputes, inequitable conduct,
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`1
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`Case No. IPR2018-01152
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`
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`prosecution history disclaimer, and other issues for which review of a
`
`patent’s prosecution history is critical. See, e.g., General Electric Company
`
`v. Wilkins, No. 1:10-cv-00674-LJO-JLT (E.D. Cal.) (involving disputed
`
`inventorship); Qualcomm, Inc. v. Broadcom Corporation, No. 3:05-cv-1958
`
`(S.D. Cal.) (involving allegations of inequitable conduct).
`
`6.
`
`I have represented parties in patent appeals to the United States
`
`Court of Appeals for the Federal Circuit in more than thirty cases. Several
`
`of those cases were appeals from the Patent Trial and Appeal Board (“the
`
`Board”)—including In re Thomas G. Packard, No. 13-1204 (PTAB No.
`
`12/004,324), and In re Klein, 647 F.3d 1343, No. 2010-1411 (BPAI No.
`
`10/2007,747). I was lead counsel in the Klein and Packard cases.
`
`7.
`
`I have, on pro hac vice admission, represented parties in inter
`
`partes reexamination matters before the Board in three matters, Reexam
`
`Control Nos. 95/000,580, 95/000,633, and 95/001,272.
`
`8.
`
`I have, on pro hac vice admission, represented parties in inter
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`partes review matters before the Board in seven maters, Case Nos. IPR2016-
`
`00287, IPR2016-00288, IPR2016-00289, IPR2016-00290, IPR2018-01033,
`
`IPR2018-01040, and IPR2018-01040. I have also applied to appear pro hac
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`vice in inter partes review matters before the Board in eight other matters,
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`Case Nos. IPR2018-01296; IPR2019-00034; IPR2018-01326; IPR2018-
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`2
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`
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`01327; IPR2018-01328; IPR2018-01329; IPR2018-01330; and IPR2018-
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`
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`Case No. IPR2018-01152
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`01340.
`
`9.
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`I have never been suspended, disbarred, sanctioned or cited for
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`contempt by any court or administrative body.
`
`10.
`
`I have never had a court deny my application for admission to
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`practice.
`
`11. On November 7, 2013, the Patent Office denied my petition to
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`be admitted pro hac vice as backup counsel in inter partes reexamination
`
`proceeding Control No. 95/001,272. However, upon a petition for
`
`reconsideration, the Board subsequently admitted me pro hac vice in those
`
`proceedings in its decision dated December 12, 2013. In addition, on
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`August 9, 2016, the Patent Office denied my motion to be admitted pro hac
`
`vice in Case Nos. IPR2016-00287, IPR2016-00288, IPR2016-00289 and
`
`IPR2016-00290 for inadvertently omitting averments required by the ’639
`
`Order, part 2(b), paragraphs ii and iv. However, upon correction of my
`
`declaration in each of those Cases, the Board subsequently admitted me pro
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`hac vice in each Case.
`
`12.
`
`I have read and will comply with Office Patent Trial Practice
`
`guide and the Board’s Rules of Practice for Trials, as set forth in Part 42 of
`
`37 C.F.R.
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`3
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`Case No. IPR2018-01152
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`13.
`
`I agree to be subject to the United States Patent and Trademark
`
`Office 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).
`
`14.
`
`I am familiar with the subject matter at issue in this proceeding.
`
`I participated in the drafting of the Petition filed in this proceeding, and I
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`have reviewed the papers filed in this proceeding.
`
`15.
`
`I am representing and have represented Apple Inc. (“Apple”),
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`which Petitioner Intel has identified as a real party-in-interest, in Certain
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`Mobile Electronic Devices and Radio Frequency and Processing
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`Components Thereof, Investigation No. 337-ITC-1065 (the “Apple ITC
`
`litigation”, which is a related matter to this proceeding) and in Qualcomm
`
`Inc. v. Apple Inc., No. 3:17-cv-1375 (S.D. Cal.) (the “Apple litigation”,
`
`which is a related matter to this proceeding). In addition, I am representing
`
`and have represented Petitioner Intel Corporation in multiple patent-related
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`matters, including the following United States District Court cases: VLSI
`
`Tech. LLC v. Intel Corp., No. 5:17-cv-05671 (N.D. Cal.); VLSI Tech. LLC v.
`
`Intel Corp., No. 1:18-cv-00966 (D. Del.); DSS Technology Management,
`
`Inc. v. Intel Corp., Nos. 6:15-cv-00130 and 6:14-cv-00197 (E.D. Tex.); and
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`Power Management Solutions v. Intel Corp., No. 1:11-cv-00743 (D. Del.).
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`Case No. IPR2018-01152
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`16.
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`I hereby declare that all statements made herein of my own
`
`knowledge are true and that all statements made on information and belief
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`are believed to be true; and further that these statements are made with the
`
`knowledge that willful false statements and the like are punishable by fine,
`
`imprisonment, or both, under Section 1001 of Title 18 of the United States
`
`Code.
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`5
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`Case No. IPR2018-01152
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`Respectfully Submitted,
`
`/Louis W. Tompros/
`
`Louis W. Tompros
`WILMER CUTLER PICKERING HALE
`AND DORR LLP
`60 State St.
`Boston, MA 02109
`louis.tompros@wilmerhale.com
`Tel.: 627-526-6886
`Fax: 627-526-6000
`
`
`
`
`
`
`
`
`
`
`
`February 15, 2019
`
`6
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`
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