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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Intel Corporation
`Petitioner
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`v.
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`Qualcomm Incorporated
`Patent Owner
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`IPR2018-01153
`U.S. Patent No. 8,698,558
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`DECLARATION OF JAMES M. DOWD IN SUPPORT OF MOTION FOR
`ADMISSION PRO HAC VICE
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`INTEL v. QUALCOMM
`IPR2018-01153
`EXHIBIT 1124
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`I, James M. Dowd, declare as follows:
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`IPR2018-01153
`U.S. Patent No. 8,698,558
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`1.
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`I was admitted to the Virginia State Bar in 1997 and have been
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`practicing law for over 21 years. During the entire time that I have been practicing
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`law, my practice has focused on the field of intellectual property, and particularly,
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`patent litigation.
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`2.
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`I am a member in good standing of the Virginia State Bar, the District
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`of Columbia Bar, and the State Bar of California, and am admitted to practice
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`before the Supreme Court of the United States, the United States Court of Appeals
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`for the Federal Circuit, the Ninth Circuit, and the Fourth Circuit, and the United
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`States District Courts for the Central District of California, the Northern District of
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`California, the Southern District of California, the Eastern District of California,
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`and the Eastern District of Virginia.
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`3. My Virginia State Bar membership number is 41406. My District of
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`Columbia Bar membership number is 465230. My State Bar of California
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`membership number is 259578.
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`4.
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`Over the course of my career, I have been counsel in dozens of patent
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`litigations. Several of these cases have concerned patent office rules and
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`regulations. For example, I litigated a number of cases concerning the duty of
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`candor to the patent office embodied in 37 C.F.R. §1.56. Cases that I have been
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`involved in which implicate this rule include Certain Mobile Electronic Devices
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`IPR2018-01153
`U.S. Patent No. 8,698,558
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`and Radio Frequency and Processing Components Thereof, Investigation No. 337-
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`ITC-1065 (the “Apple ITC litigation”, which is a related matter to this proceeding);
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`Qualcomm Inc. v. Apple Inc., No. 3:17-cv-1375 (S.D. Cal.) (the “Apple litigation”,
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`which is a related matter to this proceeding); Cal. Inst. of Tech. v. Broadcom Ltd.,
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`et al., Civ. No. 2:16-cv-3714-GW (AGRx) (C.D. Cal. 2017) (the “Caltech
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`litigation”); Enerqetiq Tech., Inc. v. ASML Netherlands B.V. et al., Civ. No. 1:15-
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`cv-10240-LTS (D. Mass. 2016); Cal. Inst. of Tech. v. Hughes Commc’ns, Inc., Civ.
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`No. 2:13-cv-02745 (C.D. Cal. 2014) (the “Hughes litigation”); ASML Netherlands
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`B.V. v. Nikon Corp., Civ. No. 3:02-cv-05601 (N.D. Cal. 2004); SanDisk Corp. v.
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`STMicroelectronics, Inc., Civ. No. 5:06-cv-00194 (N.D. Cal. 2006); In the Matter
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`of Certain NAND Flash Memory Circuits and Products Containing Same, Inv. No.
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`337-TA-526 (USITC 2006); and In the Matter of Certain NOR and NAND Flash
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`Memory Devices and Products Containing Same, Inv. No. 337-TA-560 (USTIC
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`2006).
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`5.
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`I have never been suspended or disbarred from practice before any
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`court or administrative body.
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`6.
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`I have never had a court or administrative body deny my application
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`for admission to practice.
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`-2-
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`I have never had any sanctions or contempt citations imposed on me
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`IPR2018-01153
`U.S. Patent No. 8,698,558
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`7.
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`by any court or administrative body.
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`8.
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`I have read and will comply with the Office Patent Trial Practice
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`Guide and the Board’s Rules of Practice for Trials, as set forth in 37 C.F.R. Part
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`42.
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`9.
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`I agree to be subject to the United States Patent and Trademark Office
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`Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq. and
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`disciplinary jurisdiction under 37 C.F.R. § 11.19(a).
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`10. Within the last three years, I have been admitted to appear pro hac
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`vice in the following proceedings before the United States Patent and Trademark
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`Office:
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` Apple, Inc. v. California Institute of Technology, Case IPR2017-00210;
` Apple, Inc. v. California Institute of Technology, Case IPR2017-00219;
` Apple, Inc. v. California Institute of Technology, Case IPR2017-002971;
` Apple, Inc. v. California Institute of Technology, Case IPR2017-00700;
` Apple, Inc. v. California Institute of Technology, Case IPR2017-00701;
` Apple, Inc. v. California Institute of Technology, Case IPR2017-00728.
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`11.
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`I am familiar with the subject matter at issue in this proceeding. I
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`have reviewed U. S. Patent No. 8,698,558 (the “’558 patent”), which is being
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`1 IPR2017-00423 was consolidated with IPR2017-00297.
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`-3-
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`challenged in this proceeding, as well as its file history, the Petition, the Institution
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`IPR2018-01153
`U.S. Patent No. 8,698,558
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`Decision, and the exhibits in this proceeding. I have also reviewed and am familiar
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`with the relevant prior art.
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`12. Beginning in 2017 and continuing until the present, I have represented
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`Apple Inc. (“Apple”), which Petitioner Intel has identified as a real party-in-
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`interest in the Apple litigation, which is a related matter to this proceeding. The
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`validity of the ’558 patent is a contested issue in the Apple litigation.
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`13.
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`I previously litigated the validity of the ’558 patent in the Apple ITC
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`litigation. While representing Apple in the Apple ITC litigation and the Apple
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`litigation, I participated in the drafting of briefing regarding claim construction for,
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`and the validity of, the ’558 patent. I also took and defended expert depositions
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`regarding the invalidity of the ’558 patent in the Apple ITC litigation and the
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`Apple litigation.
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`14.
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`I hereby declare that all statements made herein of my own
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`knowledge are true and that all statements made on information and belief are
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`believed to be true; and further that the statements are made with the knowledge
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`that willful false statements and the like are punishable by fine, imprisonment, or
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`both, under Section 1001 of Title 18 of the United States Code.
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`-4-
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`IPR2018-01153
`U.S. Patent No. 8,698,558
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`Respectfully Submitted,
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`/James M. Dowd/
`James M. Dowd
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`WILMER CUTLER PICKERING
`HALE AND DORR LLP
`350 South Grand Avenue, Suite 2100
`Los Angeles, California, 90071
`james.dowd@wilmerhale.com
`Tel.: 213-443-5309
`Fax: 213-443-5400
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`Dated: February 11, 2019
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`-5-
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