`Patent No.: 8,843,125
`DECLARATION OF JOHN W. DOWNING IN SUPPORT OF PATENT
`OWNER’S REQUEST FOR REHEARING PURSUANT TO 37 C.F.R. §§
`42.71(b) and (d)
`
`I, John W. Downing, declare as follows:
`I am an attorney with the law firm of Kasowitz Benson Torres LLP, am over
`
`eighteen years of age, and would be competent to testify as to the matters set forth
`
`herein if called upon to do so.
`
`1.
`
`Apple and Fintiv met and conferred on November 25, 2019 and
`
`December 3, 2019 regarding Apple’s request to supplement its IPR petition. Travis
`
`Jensen represented Apple and John Downing and Marcus Barber represented Fintiv.
`
`2.
`
`During the meet-and confer discussions, counsel for Apple indicated
`
`that it planned to submit an “industry standard” to address the district court’s
`
`construction of “OTA proxy.” Counsel for Apple indicated that it planned to submit
`
`a few exhibits to show the knowledge of one skilled in the art, that it may submit an
`
`expert declaration, and would not share the proposed supplement with counsel for
`
`Fintiv because the submission was attorney work product. Counsel for Apple did
`
`not specify any statutory grounds that supported Apple’s request to supplement
`
`during the meet-and-confer discussions.
`
`3.
`
`Exhibit 2002 is an email dated November 20, 2019 from Travis Jensen
`
`to counsel for Fintiv notifying counsel for Fintiv that Apple intended to “notify the
`
`Board regarding the district court’s oral claim construction rulings and would seek
`
`IPR2020-00019
`Fintiv EX2001 Page 1
`
`
`
`Case No. IPR2020-00019
`Patent No.: 8,843,125
`
`leave to file the Markman order when it issues along with a short paper and
`
`accompanying exhibits that address how Apple contends the prior art satisfies the
`
`OTA proxy limitation as construed by the district court.”
`
`4.
`
`Exhibit 2003 is an email dated November 22, 2019 from Travis Jensen
`
`to the Board requesting a “conference call with the Board to seek leave to file the
`
`Markman Order as well as a 5-page paper (and accompanying exhibits) that address
`
`how Apple contends the prior art satisfies one claim construction issued by the
`
`district court that was not proposed by either party.”
`
`5.
`
`Ex. 2004 is an email dated December 3, 2019 from Travis Jensen to
`
`John Downing representing that Apple intended to rely on Section II.B.6 of the July
`
`2019 Trial Practice Guide Update as statutory grounds for its proposed supplemental
`
`filing.
`
`6.
`
`Ex. 2005 is an email dated December 3, 2019 from Travis Jensen to the
`
`Board confirming that the parties met and conferred and seeking a conference call
`
`to address Apple’s request to “file a 5-page paper (and accompanying exhibits) that
`
`that address how Apple contends the prior art satisfies one claim construction issued
`
`by the district court that was not proposed by either party.”
`
`7.
`
`Ex. 2006 is a true and correct copy of the July 2019 Trial Practice Guide
`
`Update.
`
`-2-
`
`IPR2020-00019
`Fintiv EX2001 Page 2
`
`
`
`Case No. IPR2020-00019
`Patent No.: 8,843,125
`
`I hereby declare under penalty of perjury under the laws of the United States
`
`of America that the foregoing is true and correct to the best of my knowledge,
`
`information, and belief, formed after reasonable inquiry under the circumstances.
`
`Executed on the 20th day of December, 2019, in Redwood Shores, California.
`
`Respectfully submitted,
`
`/s/ John W. Downing
`John W. Downing
`
`
`
`-3-
`
`IPR2020-00019
`Fintiv EX2001 Page 3
`
`
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