UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`INTUITIVE SURGICAL, INC.,
`Petitioner,
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`v.
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`ETHICON LLC,
`Patent Owner.
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`Case IPR2018-01247
`Patent 8,479,969
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`DECLARATION OF ROGER A. DENNING IN SUPPORT OF
`PETITIONER’S UNOPPOSED MOTION FOR PRO HAC VICE
`ADMISSION
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`1
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`IS 1028
`Intuitive v. Ethicon
`IPR2018-01247
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`Proceeding No.: IPR2018-01247
`Attorney Docket: 11030-0049IP5 
`I, Roger A. Denning, hereby declare the following:
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`1.
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`2.
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`I am a Principal with the law firm of Fish & Richardson P.C.
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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 2003 and a member in good standing of the Bar of the State of
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`Arizona since 1997. My California State Bar number is 228998 and my Arizona
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`State Bar number is 18315. I am also admitted to practice before the United States
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`District Court for the Southern District of California since 2003 and the United
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`States District Court for the District of Arizona since 1997.
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`3.
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`I am an experienced litigation attorney with more than 20 years of
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`experience representing clients in patent cases involving medical devices, software,
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`micro-electronics, and life sciences. I regularly litigate patent cases in federal
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`district courts. Through my experience in patent litigation matters, I have
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`represented clients in many phases of litigation including discovery, Markman
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`hearings, trials, and appeals. My biography is attached hereto as Appendix A.
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`4.
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`I have appeared pro hac vice before the Board in the following
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`proceedings;  IPR2013-00511, IPR2013-00512, IPR2013-00514, IPR2013-00515,
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`IPR2013-00516, IPR2016-01724, IPR2016-01735, IPR2017-00059, IPR2017-
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`00061,
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`IPR2017-00062,
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`IPR2017-00272,
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`IPR2017-00501,
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`IPR2017-00504,
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`IPR2017-00632, and IPR2017-01789. I am concurrently applying to appear pro hac
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`2 
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`Proceeding No.: IPR2018-01247
`Attorney Docket: 11030-0049IP5 
`vice in the following proceedings: IPR2018-01247, IPR2018-01248, and IPR2018-
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`01254.
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`5.
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`I have not been suspended or disbarred from practice before any court
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`or administrative body.
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`6.
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`No court or administrative body has denied my admission to practice
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`before then.
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`7.
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`No sanction or contempt citation has been imposed against me by any
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`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 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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`9.
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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 under 37 C.F.R. §
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`11.19(a).
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`10.
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`I hereby declare that all statements made herein of my own knowledge
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`are true, all statements made herein on information and belief are believed to be true,
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`and further that these statements were made with the knowledge that willful false
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`statements and the like are punishable by fine or imprisonment, or both, under 35
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`U.S.C. § 1001.
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`3 
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`Proceeding No.: IPR2018-01247
`Attorney Docket: 11030-0049IP5 
`Respectfully submitted,
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`
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`/Roger A. Denning/
`Roger A. Denning
`Fish & Richardson P.C.
`12390 El Camino Real
`San Diego, CA 92130
`Tel:
`858-678-4784
`Email: denning@fr.com
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`Date: Sept. 11, 2019
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`4 
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`Proceeding No.: IPR2018-01247
`Attorney Docket: 11030-0049IP5
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`APPENDIX A
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`5
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`Roger A. Denning | Patent Trial Attorney - San Diego | Fish
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`Page 1 of 6
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`Roger A. Denning
`Principal
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` San Diego, CA  858-678-4784
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` denning@fr.com
`
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`Background
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`Roger Denning is a trial lawyer specializing in complex litigation, including patent infringement and other technology-related cases.  As
`lead counsel, Roger has helped some of the world’s best-known companies win their most important cases.  Roger has tried patent
`cases to verdict throughout the country, particularly in the patent-heavy dockets in California, Texas, Delaware, as well as the
`International Trade Commission.  Roger also has tried to verdict a number of complex commercial cases, including in the areas of
`products liability, unfair competition and the False Claims Act.  Roger also has advised clients in inter partes review proceedings in the
`Patent and Trademark Office.
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`An engineer by training, Roger has experience teaching juries and judges about a wide variety of technologies, including medical
`devices, pharmaceuticals, computer software, semiconductors, network interfaces, satellite communications, and golf ball design.
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`Roger joined Fish & Richardson in 2003, after beginning his career with Brown & Bain in Phoenix.  He has been the Managing Principal
`of Fish & Richardson’s Southern California office since 2009.  Previously, Roger served as the Fish & Richardson’s nationwide hiring
`principal from 2008 to 2014, and he served on the firm’s seven-member Management Committee from 2013 to 2017.
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`Roger was born and raised in rural Kansas, where he met his wife, Michele. They have been married for over 20 years and have three
`children.
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`Services
`• Litigation
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`• Commercial Litigation
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`• False Claims Act and Qui Tam
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`• Hatch-Waxman
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`• ITC Litigation
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`• Patent Litigation
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`Industries
`• Electrical and Computer Technology
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`• Hardware
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`• Internet
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`• Life Sciences
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`• Manufacturing
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`• Medical Devices
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`• Semiconductors
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`https://www.fr.com/roger-a-denning/
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`Roger A. Denning | Patent Trial Attorney - San Diego | Fish
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`Page 2 of 6
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`• Software
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`• Telecommunications
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`Education
`University of Chicago Law School 1997
`J.D.
`University of Chicago Legal Forum
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`Kansas State University 1993
`Electrical Engineering, B.S.
`Tau Beta Sigma
`cum laude, Phi Kappa Phi
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`Admissions
`• Arizona 1997
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`• California 2003
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`• U.S. Court of Appeals for the Federal Circuit
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`Memberships & Affiliations
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`Roger lectures frequently on topics relating to trial practice and patent law. He is a Master in the Clifford Wallace Inn of Court and a
`member of the San Diego Intellectual Property Association.
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`Other Distinctions
`Accolades
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`Named “Lawyer of the Year- Litigation, Intellectual Property in San Diego” by Best Lawyers in America (2020)
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`Selected as a “Top Attorney of San Diego” by San Diego Daily Transcript (numerous years)
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`Selected as one of “San Diego’s Best Attorneys” by SD Metro (2016)
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`Named to the Daily Transcript’s list of “100 Influential Leaders in San Diego” (2016).
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`Named one of San Diego’s “Top Influentials” by San Diego Daily Transcript (2013)
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`Fellow, Litigation Counsel of America (Invited in 2016)
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`Selected by peers for inclusion in The Best Lawyers in America© (numerous years)
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`Recognized as a Super Lawyer (numerous years)
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`Recipient of the Wiley W. Manuel Award for Pro Bono Legal Services from the State Bar of California in 2010
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`Recent Speaking Engagements
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`Roger lectures frequently on trial practice in patent and other complex cases. Roger’s recent appearances include:
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`“All Things PTAB,” Federal Circuit Bar Association Bench & Bar Conference (Coronado, California, June 23, 2018)
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`“The Emerging Role of Science and Technology in Mass Tort Litigation,” Association of Corporate Counsel Annual Meeting (San
`Diego, California, December 14, 2017)
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`https://www.fr.com/roger-a-denning/
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`Roger A. Denning | Patent Trial Attorney - San Diego | Fish
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`Page 3 of 6
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`“The ITC as a Strategic Tool,” Association of Corporate Counsel Annual Meeting (San Diego, California, December 15, 2016)
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`“Non-IP Life Sciences Litigation,” Life Sciences IP Summit, Panel Discussion (San Francisco, California, November 4, 2016)
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`“What’s on the Patent Landscape for 2015 and Beyond: What You Need to Know Now,” 3rd Annual Patent Disputes for Corporate
`Counsel Forum (Southern California, May 20, 2015)
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`“Winning Trial Techniques for the Complex Patent Litigator,” Patent Disputes Forum 2014 (San Diego, California, September 30,
`2014)”
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`“Managing Discovery (Including Electronic Discovery) in Complex Litigation,” Federal Circuit Bar Association, 2014 Advanced Complex
`Litigation Series (San Diego, California, January 29, 2014)
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`“Strategic Patent Litigation Issues,” USC IP Institute, (Beverly Hills, California, March 14, 2013)
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`“Trying Hatch-Waxman Bench Trials and The Difference in Strategy for Bench vs. Jury Trials,” Harris Martin Intellectual Property Law
`Conference (Dallas, Texas, June 14, 2012)
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`“Patent Damages Law: Life after Lucent, ResQNet, and Uniloc,” Federal Bar Association (San Diego, California, April 11, 2012)
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`“Qui Tam and Fraud Claims – Current Strategies and Developments,” Life Sciences Intellectual Property Summit (San Diego,
`California, May 19, 2011)
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`Experience
`Medical Devices
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`In the Matter of Certain Sleep-Disordered Breathing Treatment Mask Systems and Components Thereof — Int’l Trade Comm’n
`Investigation No. 337-TA-1022 (I.T.C.).  Lead counsel for complainant ResMed in investigation against New Zealand manufacturer
`Fisher & Paykel Healthcare involving two ResMed patents on CPAP masks to treat sleep apnea. Trial scheduled for May 2017.
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`Fisher & Paykel Healthcare Ltd. v. ResMed Corp. — No. 16-CV-2068 (S.D. Cal.).  Lead counsel for defendant and counter-claimant
`ResMed in patent case against Fisher & Paykel Heathcare involving 16 total patents relating to CPAP masks and flow generators to
`treat sleep apnea.
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`In the Matter of Certain Sleep-Disordered Breathing Treatment Systems and Components Thereof — Int’l Trade Comm’n Investigation No.
`337-TA-997 (I.T.C. and companion case in S.D. Cal.).  Lead counsel for complainant ResMed in investigation against Chinese
`manufacturer BMC and U.S. distributor 3B Medical involving four ResMed patents on CPAP flow generators to treat sleep apnea. 
`Case settled on eve of trial in January 2017.
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`In the Matter of Certain Sleep-Disordered Breathing Treatment Systems and Components Thereof — Int’l Trade Comm’n Investigation No.
`337-TA-890 (I.T.C. and companion case in S.D. Cal.).  Lead counsel for complainant ResMed in investigation against Chinese
`manufacturer BMC and U.S. distributor 3B Medical relating to six ResMed patents on CPAP masks and flow generators to treat sleep
`apnea.  Six-day trial held in April 2014.  Final determination finding violation and issuing exclusion order against all accused BMC
`masks in December 2014; remanded to ITC in April 2016 for reconsideration of domestic industry in light of Lelo Inc. v. International
`Trade Commission; on remand, in November 2016, ALJ Pender found domestic investments to be qualitatively but not quantitatively
`significant under Lelo.
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`In the Matter of Certain Sleep-Disordered Breathing Treatment Systems and Components T hereof — Int’l Trade Comm’n Investigation
`No. 337-TA-879 (I.T.C. and companion case in C.D. Cal.).  Counsel for ResMed in ITC investigation against Taiwanese manufacturer
`APEX involving seven ResMed patents on CPAP masks and flow generators for treating sleep apnea.  ITC investigation resulted in
`consent order barring APEX from importing, selling or importing for sale any infringing products; hearing on Apex’s request for
`advisory opinion regarding certain design-around products held in March 2014.
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`Bard Peripheral Vascular, Inc. v. W.L. Gore & Associates, Inc. — Civ. No. 03-0597 (D. Ariz.).  Represented Gore on remand from Federal
`Circuit relating to issues of willfulness and related impact on original trial.
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`https://www.fr.com/roger-a-denning/
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`Roger A. Denning | Patent Trial Attorney - San Diego | Fish
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`Page 4 of 6
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`Products Liability
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`In re Fresenius GranuFlo/NaturaLyte Dialysate Products Liability Litigation — (MDL No. 2428 and various state court actions).  Trial
`counsel for Fresenius in products liability mass tort litigation relating to the use of acid concentrate products during dialysis, which the
`plaintiffs alleged resulted in sudden cardiac arrest.
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`Dial v. Fresenius Medical Care Holdings, Inc. – C.A. No. 14-11101-DPW (D. Mass.).  Trial counsel for defendant Fresenius in four-week
`trial in which plaintiff alleged use of NaturaLyte liquid acid concentrate in hemodialysis treatment caused patient’s death; obtained
`defense verdict of no causation in March 2017.
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`Ogburn-Sisneros v. Fresenius Medical Care Holdings, Inc. – No. MICV2013-05050 (Mass. Sup. Ct.).  Trial counsel for defendant
`Fresenius in three-week trial in which plaintiff alleged use of GranuFlo granulated acid concentrate in hemodialysis treatment caused
`patient’s death; obtained defense verdict of no causation in December 2015.
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`Pharmaceuticals (Hatch-Waxman)
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`Allergan, Inc. v. Sandoz, Inc. — No. 2:12-cv-207-JRG (E.D. Tex.).  Trial counsel for Allergan in bench trial in October 2016 in Hatch-
`Waxman case in which defendant sought to manufacture and sell a generic version of Allergan’s COMBIGAN® (brimonidine tartrate,
`timolol maleate) glaucoma treatment, protected by three patents.  Court (J. Gilstrap) found for Allergan, keeping in place the previous
`permanent injunction.
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`Allergan, Inc. v. Sandoz, Inc. et al. — No. 6:11-cv-441 (E.D. Tex.).  Trial counsel for Allergan in five-day bench trial in July 2013 in Hatch-
`Waxman case in which four defendants sought to manufacture and sell a generic version of Allergan’s LUMIGAN® .01% (bimatoprost)
`glaucoma treatment, protected by five patents.  Court (J. Schneider) found all asserted claims valid and infringed and granted Allergan
`a permanent injunction keeping the generics off the market.  Published at 2013 WL 139350 (E.D. Tex. Jan. 10, 2013) and 2013 WL
`1314188 (E.D. Tex. March 28, 2013)
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`Allergan, Inc. v. Apotex Inc. et al. — No. 1:10-cv-681 (M.D.N.C.).  Trial counsel for Duke and Allergan in eight-day bench trial in
`November 2012 in Hatch-Waxman case in which three defendants sought to manufacture and sell a generic version of Allergan’s
`LATISSE® (bimatoprost) treatment for hypotrichosis, protected by two patents.
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`Allergan, Inc. v. Sandoz, Inc. et al. — No. 2:09-cv-097 (E.D. Tex.).  Trial counsel for Allergan in bench trial in August 2011 in Hatch-
`Waxman case in which four defendants sought to manufacture and sell a generic version of Allergan’s COMBIGAN® (brimonidine
`tartrate, timolol maleate) glaucoma treatment, protected by four patents.  Court (J. Ward) found for Allergan, granted Allergan a
`permanent injunction.  Federal Circuit affirmed with regard to at least one patent, keeping the generics off the market.  Published at
`726 F.3d 1286, 2013 WL 1810852 (Fed. Cir. May 1, 2013); 818 F. Supp. 2d 974 (E.D. Tex. 2011); 2011 WL 3794364 (E.D. Tex. Aug. 25
`2011); 2011 WL 2563238 (E.D. Tex. June 28, 2011); and 2011 WL 1599049 (E.D. Tex. April 27, 2011).
`
`Allergan, Inc. v. Barr Labs., Inc. et al. — No. 09-333-SLR (D. Del.).  Represented Allergan in bench trial in February 2011 in Hatch-
`Waxman case in which three defendants sought to manufacture and sell a generic version of Allergan’s LUMIGAN® 0.03%
`(bimatoprost) glaucoma treatment, protected by two patents.  Court (J. Robinson) found all asserted claims valid and infringed and
`granted permanent injunction keeping the generics off the market.  Affirmed by Federal Circuit.  Published at 501 Fed. Appx. 965, 2013
`WL 314446 (Fed. Cir. 2013); and 808 F. Supp. 2d 715 (D. Del. 2011)
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`False Claims Act
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`United States ex rel. Gonzalez v. Fresenius Medical Care — No. 07-CV-247 (W.D. Tex.).  Defended Fresenius Medical Care in qui tam
`action involving seven counts under the False Claims Act.  Tried to jury verdict in month-long trial in El Paso, Texas in February 2010.
` Jury found for Fresenius on all claims; affirmed by Fifth Circuit Court of Appeals.  Published at 748 F. Supp. 2d 95 (W.D. Tex. 2010);
`761 F. Supp. 2d 442 (W.D. Tex. 2010); and 689 F.3d 470 (5th Cir. 2012)
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`Software and Encryption
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`RPost Holdings, Inc. v. Zix Corp. — No. 2:11-cv-00064 (E.D. Tex.).  Represented Zix in patent litigation relating to RPost’s assertions
`that Zix’s ZixMail e-mail encryption system infringed RPost patent relating to e-mail receipt confirmation.  Case settled favorably after
`claim construction.
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`https://www.fr.com/roger-a-denning/
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`Roger A. Denning | Patent Trial Attorney - San Diego | Fish
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`Page 5 of 6
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`Zix Corp. v. Echoworx Corp. — No. 3:12-cv-1102 (N.D. Tex.).  Represented Zix in patent litigation asserting that Echoworx’s product
`infringe two Zix patents relating to e-mail security and encryption.  Case settled favorably.
`
`Uniloc USA, Inc. v. Microsoft Corp. — No. 03–440S. (D.R.I.).  Trial counsel for Microsoft in jury trial in March 2012 on damages issues
`relating to patent on software registration technology; case settled in second week of trial.  This case, along with the Lucent case
`below, is regularly cited among the most important damages cases in patent law in recent years.  Published at 632 F.3d 1292 (Fed.
`Cir. 2011); 640 F. Supp. 2d 150 (D.R.I. 2009); 290 Fed. Appx. 337 (Fed. Cir. 2008); and 447 F. Supp. 2d 177 (D.R.I. 2006).
`
`Lucent Technologies, Inc. v. Gateway, Inc. et al. — No. 07-CV-2000 H (S.D. Cal.).  Trial counsel for Microsoft in jury trial in July 2011 on
`remand from the Federal Circuit relating to damages on user-interface technology patent; original jury had awarded over $356 million;
`second jury awarded $70 million; Court (J. Huff) granted post-trial JMOL reducing damages to $26 million.  Case settled shortly
`thereafter.  This case, along with the Uniloc case above, is regularly cited among the most important damages cases in patent law in
`recent years.  Published at 2011 WL 5513225 (S.D. Cal. 2011); 580 F.3d 1301 (Fed. Cir. 2009); and 580 F. Supp. 2d 1016 (S.D. Cal.
`2008).
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`Microsoft Corp. v. Lucent Technologies, Inc. — No. 06-CV-0684 H (S.D. Cal.).  Lead counsel for Microsoft in 7-week jury trial in April-
`June 2008 in patent case relating to video compression technology.  Plaintiff sought more than $400 million in damages.  Jury found
`that none of Microsoft’s products infringe and awarded no damages.  Named, with the case below, one of the “Top 10 Litigation Wins
`of 2008″ by IP Law and Business.  Published at 2008 WL 2872738 (S.D. Cal. 2008).
`
`Microsoft Corp. v. Lucent Technologies, Inc. — No. 07-CV-2000 H (S.D. Cal.).  Trial counsel for Microsoft in 6-week jury trial in February-
`April 2008 in patent case relating to four patents on video compression, video displays, stylus-based input devices and user interfaces.
` Plaintiff sought more than $2 billion in damages.  Jury found Lucent’s video compression patent invalid; found that Microsoft’s
`products do not infringe the video compression or video display patents, and awarded reduced damages on the other two patents,
`which were further reduced after appeal.  Named, with the case above, one of the “Top 10 Litigation Wins of 2008″ by IP Law and
`Business.  Published at 580 F.3d 1301 (Fed. Cir. 2009); and 580 F. Supp. 2d 1016 (S.D. Cal. 2008).
`
`Lanham Act and Unfair Competition
`
`Avid Identification Sys., Inc. v. Philips Semiconductors Inc. — No. 2:04-cv-183 (E.D. Tex.).  Trial counsel for Avid in two-week jury trial
`asserting patent infringement (3 patents) and Lanham Act claims relating to RFID transponders and readers.  Tried to jury verdict in
`May 2006. Obtained mid-trial settlement from two defendants and jury verdict against remaining defendants, including Lanham Act
`damages of $6 million.  Published at 2006 WL 278265 (E.D. Tex. May 18, 2006); 2006 WL 278265 (E.D. Tex. February 3, 2006); 2007
`WL 2901415 (E.D. Tex. Sept. 28, 2007); 603 F.3d 967, 973 (Fed. Cir. 2010)
`
`Stonebreaker v. Medical Management Int’l, Inc. — No. GIC 830293 (Cal. Sup. Ct.).  Trial counsel for Stonebreaker and Avid Identification
`Systems in jury trial asserting unfair competition under California Code Section 17200 and the Lanham Act relating to RFID technology.
` Tried to jury in July 2005. Obtained mid-trial settlement that included recovery of damages and a stipulated permanent injunction
`against the defendant.
`
`Semiconductors and Communications
`
`Applied Signal Technologies, Inc. v. ViaSat, et al. — No. 09-cv-02180 (N.D. Cal.) – Represented ViaSat in patent litigation relating to five
`patents on satellite communications and cancellation technology.  Case settled favorably.
`
`Coppola v. Powerware Corp. — CV 03-03667 (C.D. Cal.).  Defended Powerware in patent infringement case relating to uninterruptible
`power supplies for computers and computer networks.  Case settled prior to Markman hearing.
`
`Maxim Integrated Products adv. Microelectronics Modules Corp. — No. 01 C 0272 (E.D. Wi.).  Defended Maxim in patent infringement
`case relating to circuit design for switching voltage regulators.  Case settled after favorable Markman ruling.
`
`Lemelson Medical, Educational & Research Foundation v. Intel Corp. — No. 98-1413 (D. Ariz.).  Defended Intel in patent infringement
`case relating to semiconductor manufacturing and machine vision and bar-coding technology.  Case settled after favorable Markman
`ruling.  Published at 2002 WL 31323299, 64 U.S.P.Q.2d 1172 (D. Ariz. July 30, 2002); 2002 WL 453212, 61 U.S.P.Q.2d 1905 (D. Ariz.
`Feb. 26, 2002); 1999 WL 813940, 52 U.S.P.Q.2d 1122 (D. Ariz. Aug. 18, 1999).
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`https://www.fr.com/roger-a-denning/
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`Page 6 of 6
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`Maxim Integrated Products adv. Sipex Corp. — 99 CF 10096 RCL (D. Mass.).  Represented Maxim as plaintiff in infringement case
`asserting patent relating to automatic shutdown circuitry for RS-232 interface devices.  Case settled after favorable Markman ruling.
` Published at 2002 WL 1046699 (D. Mass. May 24, 2002).
`
`Cypress Semiconductor Corp. adv. EMI Group North America, Inc. — No. Civ.A. 98-350 (D. Del.).  Defended Cypress in infringement
`case relating to two patents on semiconductor manufacturing technology.  Tried to jury verdict in 1999. Jury verdict of non-
`infringement of all claims and invalidity based on non-enablement, lack of utility, anticipation and obviousness; judgment affirmed by
`Federal Circuit.  Published at 268 F.2d 1342 (Fed. Cir. 2001); 104 F. Supp. 2d 370 (D. Del. 2000); 68 F. Supp. 2d 421 (D. Del. 1999).
`
`Consumer Goods
`
`Callaway Golf Co. v. Acushnet Co. — No. 06-91 (D. Del.).  Trial counsel for Callaway Golf in case asserting that Acushnet’s popular
`Titleist Pro V1 and Pro V1x golf balls infringe four Callaway Golf patents on golf ball construction.  Tried to jury verdict in December
`2007, then again in March 2010, with intervening appeal to the Federal Circuit. Case ultimately settled.  Published at 523 F. Supp. 2d
`388 (D. Del. 2007); 576 F.3d 1331 (Fed. Cir. 2009).
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`© 2019 - Fish & Richardson
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`https://www.fr.com/roger-a-denning/
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