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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`NICHIA CORPORATION,
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`Petitioner,
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`V.
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`DOCUMENT SECURITY SYSTEMS, INC.,
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`Patent Owner.
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`CASE NO. IPR2018-01166
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`US. Patent No. 7, 256,486
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`DECLARATION OF THOMAS R. MAKIN
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`IN SUPPORT OF PETITIONER’S UNOPPOSED MOTION
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`FOR ADMISSION PRO HAC VICE
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`I, Thomas R. Makin, declare as follows:
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`1.
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`I am a partner at the law firm of Shearman & Sterling LLP, located at
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`599 Lexington Ave., New York, NY 10022.
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`2.
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`I make this declaration in support of Petitioner Nichia Corporation’s
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`Motion for my admission pro hac vice.
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`3.
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`I am a member in good standing of the Bar of New York.
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`I am also
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`duly admitted and authorized to practice law before the United States District
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`Court for the Eastern District of New York, United States District Court for the
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`Southern District of New York, United States District Court for the Eastern District
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`of Michigan, and United States Court of Appeals for the Federal Circuit.
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`4.
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`I have been practicing law and litigating cases for over 17 years.
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`During this time, my practice has focused on patent infringement matters in federal
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`court.
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`5.
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`I am counsel for Petitioner Nichia Corporation in a patent
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`infringement action pending in the United States District Court for the Central
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`District of California involving the same subject matter and patent at issue in this
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`proceeding, captioned Document Security Systems, Inc. v. Nichia Corporation, et
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`at, Case No. 2:17-cv-08849—JVS. In the district court action, Patent Owner
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`asserted patents directed to light emitting diode products, including US. Patent No.
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`2
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`7,256,486 (“the ’486 patent”), the patent at issue in this inter partes review
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`proceeding.
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`I have spent a substantial amount of time becoming familiar with the
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`’087 patent, the underlying light emitting diode products and pertinent prior art.
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`As a result, I have become extremely familiar with the subject matter at issue in
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`this proceeding.
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`6.
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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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`7.
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`I have not been denied admission to practice before any court or
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`administrative body.
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`8.
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`I have never been sanctioned or cited for contempt by any court or
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`administrative body.
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`9.
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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 set forth in Part 42 of 37 C.F.R.
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`10.
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`I will be subject to the United States Patent and Trademark Office
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`Code of Professional Responsibility 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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`I also will be subject to the
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`USPTO Rules of Professional Conduct as set forth in Changes to Representation of
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`Others Before the United States and Trademark Office; Final Rule, 78 Fed. Reg.
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`20180 (Apr. 3, 2013) (effective May 3,2013).
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`11.
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`I am also applying to appear pro hac vice in the following inter partes
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`review proceedings involving patents owned by Patent Owner and asserted against
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`Petitioner in the above-referenced district court case: IPR2018-01165 and
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`IPR2018-01167. In the past three years, I have also been admitted pro hac vice in
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`the following inter partes review proceedings: IPR2015-01087, IPR2016-01750,
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`IPR2016-01751, IPR2016-01753, IPR2016-01754, and IPR2016-01755.
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`I also
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`sought pro hac vice admission in IPR2018—00965 and IPR2018-00966 and waiting
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`for the motions for my pro hac vice admission to be decided.
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`I hereby declare that all statements made herein of my knowledge are true
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`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
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`statements and the like so made are punishable by fine or imprisonment, or both,
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`under § 1001 of Title 18 of the United States Code.
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`”/13“;
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`Thomas R. Makin
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`Back—up Counsel for Petitioner
`Shearman & Sterling LLP
`599 Lexington Ave.
`New York, NY 10022
`212.848.7698
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`Thomas.Makin@Shearman.corn
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