Resume of Michael Ian Shamos
`Current to February 11, 2020
`
`Education
`
`
`
`A.B. (1968) Princeton University (Physics). Thesis: "Gravitational Radiation
`Reaction." Advisor: John A. Wheeler.
`
`M.A. (1970) Vassar College (Physics). Thesis: "An Absorber Theory of Acoustical
`Radiation." Advisor: Morton A. Tavel.
`
`M.S. (1972) American University (Technology of Management).
`
`M.S. (1973) Yale University (Computer Science).
`
`M.Phil. (1974) Yale University (Computer Science).
`
`Ph.D. (1978) Yale University (Computer Science). Thesis: "Computational Geometry". Thesis
`committee: David Dobkin, Martin H. Schultz, Stanley C. Eisenstat.
`
`J.D. (1981) Duquesne University, cum laude.
`
`Foreign Languages
`
`French, Russian (good reading and technical translation skills, fair conversational ability).
`
`Academic Experience
`
`Distinguished Career Professor, Institute for Software Research and Language Technologies
`Institute, School of Computer Science, Carnegie Mellon University (2001- )
`Principal Systems Scientist (1998-2001)
`Principal Lecturer (2002-2003). Teaching Professor (2003- )
`Faculty, Tepper School of Business, Carnegie Mellon University (1999-2004).
`Co-Director, Carnegie Mellon Institute for eCommerce (1998-2004 )
`Vice-Chair, University Research Council (2000-2002)
`Director, eBusiness Technology degree program, Carnegie Mellon (2003-2018)
`Director, M.S. in Artificial Intelligence and Innovation, Carmegie Mellon (2018-)
`Core faculty, Privacy Engineering degree program (2013-)
`Director, Universal Library, Carnegie Mellon University (1998-)
`Visiting Professor, Faculty of Engineering, The University of Hong Kong (2001- )
`Adjunct Faculty, Carnegie Mellon University, Department of Computer Science (1981-1998)
`Assistant Professor, Carnegie Mellon University, Departments of Computer Science and
`Mathematics (1975-81), Dept. of Statistics (1978-81).
`
`IPR2020-00019
`Fintiv EX2022 Page 1
`
`

`

`Courses taught (Carnegie Mellon):
`Algorithm Design and Analysis 15-451 (Comp. Sci.)
`Intellectual Capital and its Protection 45-886 (MBA)
`Ecommerce Technology 20-751 (MSEC program)
`Electronic Payment Systems 20-753 (MSEC program), 96-774 (MSIT program)
`Ecommerce Law and Regulation 46-840 (MSEC program)
`Electronic Voting 17-803
`Ubiquitous Computing, 96-761 (MSIT Program)
`Electronic Payment Systems (MSIT Program)
`Law of Computer Technology, 17-762/17-662/17-562 (2007-)
`Artificial Intelligence and Future Markets, 11-561 (2018-)
`
`Honors and Awards
`
`Fellow, Society of the Sigma Xi (1974-83).
`
`IBM Fellowship, Yale University (1974–75).
`
`SIAM National Lecturer (1977–78).
`
`Distinguished Lecturer (computer science), University of Rochester (1978); McGill University
`(1979).
`
`Duquesne University Law Review (1980–81).
`
`Black & White Scotch Achiever’s Award (first annual, 1991, for contributions to bagpipe
`musicography).
`
`Industry Service Award of the Billiard and Bowling Institute of America, 1996 (for contributions
`to billiard history).
`
`Billiard Worldcup Association official referee (2001-)
`
`Editorships
`
`Editor-in-Chief, Journal of Privacy Technology (2003- 2006).
`
`Member of Editorial Board, Electronic Commerce Research Journal (2000- ).
`
`Member of Editorial Board, Pittsburgh Journal of Technology Law and Policy (1999-2003).
`
`Dr. Shamos has reviewed scientific papers for Communications of the ACM, Mathematical
`Reviews, IEEE Computer, IEEE Transactions on Computers, Information Processing Letters,
`Journal of the ACM and the Journal of Computational Physics.
`
`IPR2020-00019
`Fintiv EX2022 Page 2
`
`

`

`Contributing Editor, Billiards Digest magazine (1990- ).
`
`Patents
`
`Co-inventor with K. Srinivasan, U.S. Patent 7,330,839, "Method and System for Dynamic
`Pricing," issued February 12, 2008.
`
`Co-inventor with K. Srinivasan, U.S. Patent 7,421,278, "Method and Apparatus for Time-Aware
`and Location-Aware Marketing," issued September 2, 2008.
`
`Co-inventor with K. Srinivasan, U.S. Patent 7,747,465, "Determining the Effectiveness of
`Internet Advertising," issued June 29, 2010.
`
`Co-inventor with K. Srinivasan, U.S. Patent 8,195,197, "Method and Apparatus for Time-Aware
`and Location-Aware Marketing," issued June 5, 2012.
`
`Co-inventor with K. Srinivasan, U.S. Patent 8,280,773, "Method and Apparatus for Internet
`Customer Retention," issued October 2, 2012.
`
`
`
`Legal Experience
`
`Special Counsel, Reed Smith LLP (2000-2003), electronic commerce law.
`
`Shareholder, The Webb Law Firm (1996-2000), intellectual property law. Associate (1990-95).
`
`Private practice of law (1987-90), intellectual property
`
`Associate, law firm of Buchanan, Ingersoll, P. C. (1985-87)(now Buchanan Ingersoll & Rooney,
`PC), Emerging Companies Department.
`
`General Counsel, Carnegie Group, Inc. (1983-85), artificial intelligence company.
`
`Private practice of law (1981-83), computer law.
`
`
`
`Bar Admissions
`
`Supreme Court of Pennsylvania (1981– ).
`
`United States District Court for the Western District of Pennsylvania (1981– ).
`
`United States Patent and Trademark Office (1981– ).
`
`IPR2020-00019
`Fintiv EX2022 Page 3
`
`

`

`United States Tax Court (1982– ).
`
`United States Court of Appeals for the Armed Forces (1982– ).
`
`United States Court of Appeals for the Third Circuit (1982– ).
`
`United States Supreme Court (1985– ).
`
`United States Court of Appeals for the Federal Circuit (1985– ).
`
`Expert Witness
`
`Dr. Shamos has served as an expert witness in multiple computer software and electronic voting
`cases. He has participated in the cases listed below. "D" indicates deposition testimony; "R"
`indicates report, declaration or affidavit; "T" indicates trial testimony.
`
`Total: 281 cases: 217 patent, 14 electronic voting, 14 trade secret, 11 copyright, 36 other.
`Affidavits, reports or declarations submitted in 202 cases.
`Deposed 128 times.
`Testified at trial or hearing in 44 cases.
`Participated in 3 reexams, 3 PGRs, 63 IPRs and 23 CBMs
`
`1. C.W. Communications, Inc. v. International Research Service, Inc., Civil Action No. 84-890,
`(W.D. Pa. 1984), aff'd. Case No. 88-3331 (3d Cir., Oct. 31, 1988). Served as an expert for
`plaintiff publisher as to the fame of its "Computerworld" trademark. Result: permanent
`injunction entered against defendant. Judge McCune's Memorandum and Order states. "We
`accept the conclusion drawn by Dr. Shamos." Firm: Webb, Burden Robinson & Webb (now the
`Webb Law Firm). (D,T)
`
`2. E.F. Hutton, Inc. v. Gipson (W.D. Pa. 1985). Served as an expert for defendant-
`counterclaimant physician as to fraud in the inducement by a computer hardware
`supplier. Plaintiff had provided capital financing for the purchase. Result: defendant was
`awarded compensatory damages + $250,000 punitive damages. (D,T)
`
`3. In re Comprehensive Business Systems, 119 B.R. 573 (S.D. Ohio 1990). Served as an expert
`for a secured creditor in a bankruptcy case in which the creditor sought to obtain software still in
`development for which it had advanced over $2 million in funding. Dr. Shamos opined as to the
`value of the incomplete software. Result: the creditor was able to purchase the software from
`the Trustee for $67,500. The Court referred in its opinion to "the testimony of the eminent and
`impressive Dr. Shamos." (D,R,T)
`
`4. Levinson Steel Co. v. American Software, Inc. et al., Civil Action No. 96-282, W.D. Pa.
`(1996). Served as an expert for plaintiff in a case involving bad faith estimates of computer
`processing capacity resulting in delivery of an inadequate system. Result: settlement in favor of
`
`IPR2020-00019
`Fintiv EX2022 Page 4
`
`

`

`plaintiff in an undisclosed amount. Contact: Reed Smith LLP, 225 Fifth Ave., Pittsburgh, PA
`15222. (D,R)
`
`5. ASE Limited v. INCO Alloys International, Inc., Civil Action No. 98-1266, (W.D. Pa.
`1998). Served as an expert for defendant concerning breach of computer services contract by
`declaratory judgment plaintiff. Result: determination that defendant was free to seek services
`from a different vendor. Firm: Reed Smith LLP, 225 Sixth Ave., Pittsburgh, PA 15222. Attorney:
`Anthony Basinski, Esq. (D,T)
`
`6. Twentieth Century Fox Film Corp. v. iCraveTV., 53 U.S.P.Q. 2d 1831 (W.D. Pa.
`2000). Served as an expert for Plaintiffs concerning Internet technology used to stream video
`from U.S. TV stations through web sites in Canada. Result: TRO and preliminary injunction
`issued against defendants prohibiting continued infringement in the U.S. Firm: Reed Smith
`LLP. Attorney: Gregory Jordan, Esq. (T)
`
`7. Invited testimony before the British House of Lords, Subcommittee B of the European Union
`Committee, April 20, 2000. Subject: European regulation of eCommerce. View testimony.
`
`8. Universal Studios, Inc. v. Reimerdes, 111 F. Supp. 2d 294 (S.D.N.Y. 2000), aff'd 273 F.3d 429
`(2d Cir. 2001). Served as an expert for plaintiff movie studios concerning accused software for
`decrypting DVDs in the first case interpreting the Digital Millennium Copyright Act. Result:
`permanent injunction issued in favor of plaintiffs on August 17, 2000. Contact: William Hart,
`Esq., Proskauer Rose LLP. View testimony. View opinion. View appellate opinion. (D,T)
`
`9. MercExchange, L.L.C. v. eBay, Inc. et al., Case No. 2:01-CV-736 (E.D. Va. 2001). Served as
`an expert for defendant eBay in an infringement case concerning U.S. Patent 6,202,051 for
`Internet auctions. Following Dr. Shamos' reports, Defendants obtained a summary judgment of
`noninfringement of the subject patent. On the other patents, the case went to the U.S. Supreme
`Court, which ruled that injunctions are not automatic in patent cases. Contact: Tim Teter, Esq.,
`Cooley LLP. (D,R)
`
`10. Powerquest Corp. v. Quarterdeck Corp. et al., Case No. 2:97-CV-0783 (D. Utah
`1997). Served as an expert for plaintiff PowerQuest in an infringement case concerning U. S.
`Patents 5,675,769 and 5,706,472 for a method of resizing hard disk partitions. Dr. Shamos
`testified at the Markman hearing. Case settled when one of the defendants acquired
`plaintiff. Attorney: Gregg I. Anderson, Esq., formerly at Merchant & Gould, now an
`Administrative Patent Judge at the Patent Trial and Appeal Board. (R,T)
`
`11. Sightsound.Com Inc. v. N2K Inc. et al., C.A. 98-118 (W.D. Pa. 1998). Served as an expert for
`defendants, including a subsidiary of Bertelsmann AG, concerning validity of U.S. Patents
`5,191,573 and 5,966,440 for distribution of digital audio via telecommunications lines. Case
`settled. Firm: Parcher, Hayes & Snyder, (no longer in existence). Contact: Steven M. Hayes,
`Esq., Simmons Hanley Conroy, LLC, 112 Madison Ave., New York, NY 10016. (D,R)
`
`12. Freemarkets, Inc. v. B2eMarkets, Inc., C.A. 02-162-SLR (D. Del. 2002). Served as an expert
`witness for plaintiff concerning infringement of U.S. patents 6,216,114 and 6,223,167,
`
`IPR2020-00019
`Fintiv EX2022 Page 5
`
`

`

`concerning methods of conducting electronic auctions. Case settled two weeks after expert
`attended a demonstration of the accused product. Contact: D. Michael Underhill, Esq., Boies,
`Schiller & Flexner, LLP, Washington, DC.
`
`13. Lifecast.com, Inc. v. ClubCorp, Inc., AAA Case No. 71Y1170076301 (Dallas, TX). Served as
`an expert witness for respondent in a case alleging copyright infringement of Internet
`websites. Testified at arbitration. Result: Complainant's claims denied; award for respondent
`on counterclaims and for attorney's fees. Contact: Bill Whitehill, Esq., Gardere Wynne Sewell
`LLP, 1601 Elm St., Dallas, TX 75201. (T)
`
`14. IP Innovation LLC v. Thomson Learning, Inc. et al., Case H-02-2031 (S.D. Tex.
`2002). Served as a expert for defendant The Princeton Review, Inc. concerning alleged
`infringement of U.S. Patent 4,877,404 relating to online delivery of educational
`courses. Summary judgment of non-infringement obtained for defendant after favorable
`Markman proceeding. Contact: Peter Vogel, Esq., Gardere Wynne Sewell LLP, 1601 Elm St.,
`Dallas, TX 75201. (R)
`
`15. Starpay.com LLC et al. v. Visa International Service Association et al., Case 3-03-CV-976-L
`(N.D. Tex. 2003). Served as an expert for defendant Visa concerning alleged infringement of
`U.S. Patent 5,903,878 relating to online authentication of credit card customers. Dr. Shamos
`provided the court with a Markman tutorial in 2004 and a non-infringement and invalidity
`declaration in 2008. Case settled in February 2008. Contact: Stanley Young, Esq., Covington &
`Burling LLP, 333 Twin Dolphin Drive, Suite 700, Redwood Shores, CA 94065. (D,R,T)
`
`16. Safeclick LLC v. Visa International Service Association et al., Case C-03-5865 (N.D. Cal.
`2003). Served as an expert for defendant Visa concerning alleged infringement of U.S. Patent
`5,793,028 relating to online authentication of credit card customers. Summary judgment of
`noninfringement granted for Visa based on expert reports, affirmed after appeal to the Federal
`Circuit. Contact: Stanley Young, Esq., Covington & Burling LLP, 333 Twin Dolphin Drive, Suite
`700, Redwood Shores, CA 94065. (D,R)
`
`17. Wells Fargo Bank Minnesota, NA et al. v. UBS Warburg Real Estate Securities, Inc., Case
`02-2849 (192d Judicial District, Dallas Cty., Tex, 2002) and LaSalle Bank, NA et al. v. UBS
`Warburg Real Estate Securities, Inc., Case 02-2899-G (134th Judicial District, Dallas Cty., Tex,
`2002). Served as an expert for defendant UBS Warburg in an electronic discovery matter
`involving a case of first impression regarding Texas Discovery Rule 196.4 allocating costs of
`discovery of electronic records. Firm: Gardere Wynne Sewell LLP, 1601 Elm St., Dallas, TX
`75201. Contact: Dawn Estes, Esq., Taber, Estes Okon Thorne & Carr PLLC, 3811 Turtle Creek
`Blvd., Suite 2000, Dallas, TX 75219. (D, R)
`
`18. American Association of People with Disabilities et al. v. Shelley et al., Case No. CV04-1526
`FMC (PJWx) (C. D. Calif., 2004). Served as an expert for plaintiff AAPD, which has brought a
`claim against the California Secretary of State that requiring DRE voting machines to be
`equipped with audit trails violates the rights of disabled persons. Plaintiffs' application for TRO
`
`IPR2020-00019
`Fintiv EX2022 Page 6
`
`

`

`and preliminary injunction denied. Firm: Howrey LLP, (no longer in existence). Attorney John
`E. McDermott is now a Magistrate Judge in the Central District of California. (R)
`
`19. Paul Ware v. Target Corp., CA 4:03-CV-0243-HLM (N.D. Ga., 2003). Served as an expert
`for defendant Target Corp., a large retailer, in a case involving U.S. patent 4,707,592, claiming a
`method of conducting credit card sales. Case settled during Markman preparations. Contact:
`Thomas P. Burke, Esq., Ropes & Gray LLP, 1211 Ave. of the Americas, New York, NY 10036.
`
`20. Viad Corp., v. C. Alan Cordial et al., No. 03-1408 (W.D. Pa., filed 2003). Served as an
`expert for defendants in an action alleging misappropriation of trade secrets relating to software
`for automating certain aspects of the exhibit booth and trade show industries. Status: case
`settled immediately before trial, after plaintiff's unsuccessful Daubert challenge of Dr.
`Shamos. Contact: Barbara Scheib, Esq., Cohen & Grigsby, P.C., 11 Stanwix Street, Pittsburgh, PA
`15222. (D,R,T)
`
`21. Schade et al. v. Maryland State Bd. of Elections et al., Case No. C0497297 (Cir. Ct. Anne
`Arundel Cty. Md., 2004). Served as an expert for defendants in a case challenging the decision
`of the Board of Elections not to decertify Diebold AccuVote system. Result: Plaintiff's motion for
`preliminary injunction denied, upheld on appeal. Judge Manck's opinion cites Dr. Shamos'
`testimony as follows: "the court finds Dr. Shamos, Defendants' expert, to be the true voice of
`reason and the most credible expert in this matter." The denial of preliminary injunction was
`upheld by the Maryland Court of Appeals, which commented extensively on Dr. Shamos'
`testimony in its opinion. Contact: Michael Berman, Esq., (formerly Maryland Deputy Attorney
`General), Rifkin, Weiner, Livingston, Levitan & Silver, LLC. (R,T)
`
`22. Wexler et al. v. Lepore et al., Case No. 04-80216 (CIV-COHN) (S.D. Fla. 2004) . Served as
`an expert for defendants, various Florida election supervisors against claim by U.S.
`Congressman Robert Wexler that use of DRE voting machines without paper audit trails violates
`the equal protection clause of the U.S. Constitution. Dr. Shamos testified on Oct. 19, 2004. The
`trial judge rendered judgment in favor of defendants on Oct. 25. Contact: Jason Vail, Esq., then
`Assistant Attorney General, Department of Legal Affairs, The Capitol, Tallahassee, FL, now at
`Allen Norton & Blue, PA. Opinion. (T)
`
`23. Siemens Information and Communication Networks, Inc. v. Inter-Commercial Business
`Systems, Inc., Civil Action 3-03CV2171-L (N.D. Tex. 2004). Served as an expert for defendant
`against claim of copyright infringement based on reverse-engineered firmware resident in
`telephone switching systems. Status: case settled shortly after the submission of Dr. Shamos's
`rebuttal report on non-infringement. Contact: Bill Whitehill, Esq., Gardere Wynne Sewell LLP,
`1601 Elm St., Dallas, TX 75201. (R)
`
`24. Soverain Software LLC v. Amazon.com, Inc., C.A. No. 6:04-CV-14 (E.D. Tex. 2004). Served
`as an expert for plaintiff regarding asserted patents 5,708,780, 5,715,314 and 5,909,492, relating
`to the shopping cart paradigm of electronic commerce. Status: settled in Sept. 2005 with
`Amazon paying $40 million to Soverain and taking a license under the patents in suit. Contact:
`Ognian Shentov, Esq., Jones Day, 222 E. 41st St., New York, NY 10017. (D,R)
`
`IPR2020-00019
`Fintiv EX2022 Page 7
`
`

`

`25. CollegeNET, Inc. v. The Princeton Review, Inc., Case '051205KI (D. Ore. 2005). Served as a
`expert for defendant The Princeton Review, Inc. concerning alleged infringement of U.S. Patent
`6,460,042 relating to online delivery of educational courses. Case settled in December
`2007. Contact: Peter Vogel, Esq., Gardere Wynne Sewell LLP, 1601 Elm St., Dallas, TX
`75201. (R)
`
`26. CombineNet, Inc. v. Verticalnet. Inc., GD 05-018911 (Ct. Common Pleas, Allegheny Cty.,
`PA). Served as an expert for plaintiff in an action for trade secret misappropriation relating to a
`system for conducting electronic auctions. Plaintiff won in arbitration. Contact: Mark
`Knedeisen, Esq., K&L Gates LLP, 210 Sixth Avenue, Pittsburgh, PA 15222-2613. (T)
`
`27. RealSource, Inc. v. Best Buy Co., Inc. et al., No. A04-CA-771-LY (W.D. Tex.). Served as an
`expert for defendant Lowe's Companies, Inc., against a claim of infringement of U.S. patent
`5,732,136 relating to validation of point-of-sale debit card transactions. Provided a tutorial to
`the Court during Markman proceedings concerning debit card technology. Defendants won
`summary judgment of non-infringement, affirmed by the Federal Circuit. Defendants Lowe's
`settled and was not involved in the appeal. Contact: Michael S. Connor, Esq., Alston & Bird LLP,
`Bank of America Plaza, 101 South Tryon St, Suite 4000, Charlotte, NC 28280-4000. (R,T)
`
`28. DE Technologies, Inc. v. Dell, Inc. et al., No. 7:04-CV-00628 (W.D. Va.). Served as an
`expert for plaintiff DE Technologies, Inc., asserting a claim of infringement of U.S. patents
`6,460,020 and 6,845,364, relating to a system for implementing international sales
`transactions. Case settled after and adverse summary judgment. However, the Court used Dr.
`Shamos' testimony in its opinion. Contact: David Marder, Esq., Robins Kaplan Miller & Ciresi
`LLP, 800 Boylston Street, 25th Floor, Boston, MA 02199. (D,R,T)
`
`29. Eaton Power Quality Corp. v. J.T. Packard & Associates, No. 05 C 3545 (N.D. Ill.
`2005). Served as expert for plaintiff in a claim of software copyright infringement involving a
`system for configuring industrial uninterruptible power supplies. Case settled in early
`2007. Firm: Dewey & LeBoeuf. Contact: Keith P. Schoeneberger, Esq., Pasulka & Associates
`PC. (D,R)
`
`30. Taylor et al. v. Onorato et al., CA 06-481 (W.D. Pa 2006). Served as an expert for
`Commonwealth of Pennsylvania defendants in an action seeking to enjoin the use of electronic
`voting machines in Allegheny County, PA. Dr. Shamos testified at length in a preliminary
`injunction hearing held April 25-27, 2006 before Judge Lancaster. The injunction was denied
`on April 28. Suit was subsequently dropped by plaintiffs. Contact: Mark Aronchick, Esq.,
`Hangley Aronchick Segal Pudlin & Schiller, One Logan Square, 18th & Cherry Streets, 27th
`Floor, Philadelphia, PA 19103. (T)
`
`31. FedEx Ground Package System, Inc. v. Applications International Corp., CA No. 03-1512
`(W.D. Pa.). Served as an expert for defendant counterclaiming for copyright infringement and
`trade secret misappropriation relating to software for maintaining occupational health and
`safety records. Dr. Shamos's testimony was excluded because he was unable to perform a side-
`
`IPR2020-00019
`Fintiv EX2022 Page 8
`
`

`

`by-side comparison of the original and accused works. Case has settled. Contact: Ronald Hicks,
`Esq., Meyer, Unkovic & Scott LLP, 1300 Oliver Bldg., Pittsburgh, PA 15222. (D,R)
`
`32. NetMoneyIN, Inc. v. Verisign, Inc. et al., Cv-01-441-TUC-RCC (D. Ariz.). Served as an
`expert for defendants Bank of America Merchant Services, Inc. and Wells Fargo Bank, N.A., who
`are accused of infringing claim 23 of U.S. patent 5,822,737, relating to an electronic payment
`system. Wells Fargo and Bank of America have settled. Contact: K&L Gates LLP, State Street
`Financial Center, One Lincoln Street, Boston, Massachusetts 02111-2950. (D,R)
`
`33. Contois Music Technology, LLC v. Apple Computer, Inc., 2:05-CV-163 (D. Vermont, filed
`Feb. 13, 2006). Served as an expert for plaintiff in an action alleging that the Apple iTunes
`software infringed U.S. patent 5,864,868, relating to a method for selecting music from an
`electronic catalog. Case settled after a favorable Markman order. Contact: John Rabena, Esq.,
`Sughrue Mion PLLC, 2100 Pennsylvania Avenue, NW, Suite 800, Washington, DC 20037-3213.
`
`34. Banfield et al. v. Cortés, 442 MD 2006 (PA Cmwlth. Ct.). Served as an expert for defendant
`Secretary of the Commonwealth of Pennsylvania in an action to compel the decertification of all
`electronic voting machines in Pennsylvania. In February 2008 Defendant successfully repelled
`an emergency motion for preliminary injunction. In August 2012, the Court denied Petitioners'
`motion for summary judgment, citing Dr. Shamos's expert report extensively. In October 2013,
`the Commonwealth Court granted summary judgment for the Secretary. The Pennsylvania
`Supreme Court affirmed on February 18, 2015. Contact: Steven E. Bizar, Esq., Buchanan
`Ingersoll & Rooney PC, Two Liberty Place, 50 S. 16th St., Philadelphia, PA 19102-2555. (D,R)
`
`35. Remote Inventory Systems, Inc. v. WESCO Distribution, Inc., AAA Case No. 55 171 00493
`05 (Pittsburgh, PA). Served as an expert for respondent in a case alleging misappropriation of
`trade secrets in a computerized inventory system. Contact: Kirsten Rydstrom, Esq., Reed Smith
`LLP, 225 Fifth Ave., Pittsburgh, PA 15222. (D,R)
`
`36. SyncSort, Inc. v. Innovative Routines International, Inc., Civil Action No. 04-3623 (WHW)
`(D. New Jersey). Served as an expert witness for defendant in an action alleging
`misappropriation of trade secrets embodied in plaintiff's Unix sorting software. Dr. Shamos
`testified at a bench trial in January 2011. Case settled after an appeal to the Third Circuit was
`filed. Contact: David R. Fine, Esq., K&L Gates LLP, 17 N. Second Street, 18th Floor, Harrisburg,
`PA 17101-1507. (D,R,T)
`
`37. Digital Impact, Inc. v. Bigfoot Interactive, Inc., Civil Action C05 00636 (CW) (N.D.
`Cal.). Served as an expert witness for defendant in an action alleging infringement of U.S.
`Patent 6,449,634, relating to determining which file formats can be processed by an email
`client. Result: defendant obtained summary judgment of non-infringement, upheld by the
`Federal Circuit. Contact: Arthur Dresner, Esq., Duane Morris LLP, 1540 Broadway, New York,
`NY 10036. (D,R)
`
`38. Prism Technologies LLC v. Verisign, Inc. et al., CA 05-214-JJF (D. Del.). Served as an
`expert for plaintiff in an action alleging infringement of U.S. Patent 6,516,416, relating to use of
`a hardware key for authentication over networks. Defendants prevailed on summary judgment
`
`IPR2020-00019
`Fintiv EX2022 Page 9
`
`

`

`of non-infringement, which was upheld on appeal. Firm: Robins Kaplan Miller & Ciresi
`LLP. Contact: Dirk D. Thomas. Esq., McKool Smith, 1999 K Street, N.W., Suite 600,
`Washington, DC 20006. (R)
`
`39. AdvanceMe, Inc. v. Rapidpay LLC et al., Civil Action 6:05-cv-424 LED (E.D. Tex., Tyler
`Division). Served as an expert witness for plaintiff in an action alleging infringement of U.S.
`Patent 6,941,281, relating to an automated payment system for dividing credit card proceeds
`between a merchant and another party. Testified at a bench trial in July 2007 before Judge
`Davis, who held the patent infringed but invalid for obviousness. Firm: Paul, Hastings LLP, Five
`Palo Alto Sq., Palo Alto, CA 94306. Contact: Ronald S. Lemieux, Esq., Singularity LLP, 275
`Shoreline Drive, Redwood Shores, CA 94065. (D,R,T)
`
`40. IBM Corp. v. Amazon.com, Inc., CA 9:06-CV-242-RHC (E.D. Tex., Lufkin Div.) and IBM
`Corp. v. Amazon.com, Inc., CA 6:06-CV-452-LED (E.D. Tex., Marshall Div.). Served as an
`expert for IBM in related actions alleging infringement of U.S. Patents 5,319,542, 5,442,771,
`5,446,891, 5,796,967 and 7,072,849, all concerning methods of conducting electronic
`transactions, and a counterclaim for infringement of U.S. Patent 5,826,258, concerning a
`method for querying semistructured data. Case settled early in discovery when the parties cross-
`licensed each other's patents. Contact: Mark J. Ziegelbein, Esq., Dentons US LLP, 2000
`McKinney Ave., Suite 1900, Dallas, TX 75201-1858.
`
`41. The MathWorks, Inc. v. COMSOL AB et al., CA 6:06-CV-334 (E.D. Tex., Tyler
`Division). Served as an expert for plaintiff The MathWorks, providers of the mathematical
`software system MATLAB, in an action alleging copyright infringement and infringement of U.S.
`Patents 7,051,338 and 7,181,745 concerning methods for invoking object methods from external
`environments. After trial, the case settled with defendant admitting infringement, paying
`$12,000,000 in damages and waiving appeal rights. Contact: Krista Schwartz, Esq., Jones Day,
`77 W. Wacker Dr., Chicago, IL 60601-1692.
`
`42. Avante Int'l. Technology Corp. v. Diebold Election Systems et al., Case 4:06-CV-0978 TCM
`(E.D. Mo., Eastern Division). Served as an expert for defendants Sequoia Voting Systems and
`Premier Election Systems in an action alleging infringement of U.S. Patents 6,892,944,
`7,036,730 and 7,077,313 concerning electronic voting technology. Dr. Shamos testified at a 5-
`day trial in February 2009. Result: The jury found Plaintiff's asserted claims invalid as
`anticipated and obvious. Contact: Peter T. Ewald, Esq., Oliff & Berridge, PLC, 277 South
`Washington Street, Suite 500, Alexandria, VA 22314. (D,R,T)
`
`43. Netcraft Corp. v. eBay, Inc. and PayPal, Inc., Case 3:07-cv:00254-bbc (W.D. Wisc.
`2007). Served as an expert for defendants in an action alleging infringement of U.S. Patents
`6,351,739 and 6,976,008 concerning methods of billing for ecommerce transactions over the
`Internet. Defendants were granted summary judgment of non-infringement on Dec, 10, 2007,
`upheld on appeal. Firm: Irell & Manella LLP, 180 Avenue of the Stars, Los Angeles, CA
`90067. Contact: Kenneth Weatherwax, Esq., Goldberg, Lowenstein & Weatherwax LLP, 1925
`Century Park East, Suite 2120, Los Angeles, CA 90067.
`
`IPR2020-00019
`Fintiv EX2022 Page 10
`
`

`

`44. ACLU of Ohio et al. v. Brunner et al., Case 1:09 CV 0145 (N.D. Ohio 2008). Served as an
`expert witness in an action alleging that the use of central count optical scan voting should not
`be permitted in Cuyahoga County, as had been ordered by the county board of elections. A
`preliminary injunction was denied in February 2008. The case became moot and was dismissed
`in May 2008 when the Ohio Legislature granted by statute the relief requested by plaintiff,
`prohibiting the use of central count opscan in Cuyahoga County. Contact: Meredith Bell-Platts,
`Esq., ACLU Voting Rights Project, 2600 Marquis One Tower, Atlanta, GA 30303. (R)
`
`45. Ariba, Inc. v. Emptoris, Inc., Civil Action 9:07-CV-90-RHC (E.D. Tex. 2007). Served as an
`expert for Ariba in an action alleging infringement of U.S. Patents 6,216,114 and 6,499,018,
`relating to the conduct of electronic auctions. Dr. Shamos testified in a jury trial on
`infringement and validity. Result: verdict finding all asserted claims valid and willfully
`infringed. Contact: Robert Fram, Esq., Covington & Burling LLP, One Front St., San Francisco,
`CA 94111. (D,R,T)
`
`46. EpicRealm Licensing, LP v. Autoflex Leasing Inc. et al., CA 5:07-CV-125 (E.D. Tex.
`2005). Served as an expert for defendant Herbalife International of America, Inc. in an action
`alleging infringement of U.S. patents 5,894,554 and 6,415,335, relating to a system for managing
`generation of dynamic Internet web pages. All original defendants settled. See also the Oracle
`case below. Contact: Ognian Shentov, Esq., Jones Day, 222 E. 41st St., New York, NY
`10017. Also served as an expert for defendant FriendFinder in a separate trial in this
`action. After a jury trial before Judge Folsom, the patents were found valid and infringed, but
`the jury awarded only $1.1M, the smallest amount testified to by defendant's damages
`expert. Contact: Michael J. Sacksteder, Esq., Fenwick & West LLP, 555 California St., San
`Francisco, CA 94104. (D,R,T)
`
`47. Oracle Corporation v. EpicRealm Licensing, LP, CA 2-06-414 (D. Del. 2006), later Oracle
`Corporation v. Parallel Networks, LLC. Served as an expert for Oracle in a declaratory
`judgment alleging invalidity of U.S. patents 5,894,554 and 6,415,335, relating to a system for
`managing generation of dynamic Internet web pages. The patents are the same as those in the
`EpicRealm case, above. Oracle obtained summary judgment of non-infringement, reversed on
`appeal to the Federal Circuit. Case settled in May 2011 on the eve of trial. Firm: Kilpatrick
`Townsend & Stockton, LLP, 379 Lytton Ave., Palo Alto. CA 94301. Contact: Theodore T.
`Herhold, Singularity LLP, 275 Shoreline Drive, Redwood Shores, CA 94065. (D,R)
`
`48. Saulic v. Symantec Corporation et al., Case No. SA CV 07-610 AHS (C.D. Cal., Santa Ana
`Division, 2007). Served as an expert for defendant Symantec in a removal action alleging
`violation of California Civil Code §1747.8, relating to the collection of personal identification
`information in connection with credit card transactions. Case settled. Original firm: Heller
`Ehrman. Contact: Chad R. Fuller, Esq., Troutman Sanders LLP, 11682 El Camino Real, Suite
`400, San Diego, CA 92121. (R)
`
`49. Gusciora et al. v. McGreevey et al. (now Gusciora v. Christie), Docket No. MER-L-2691-04
`(N.J. Super., Mercer County). Served as an expert for defendants, including the Governor and
`Attorney General of New Jersey, in a case alleging that the state's AVC Advantage voting
`machines are unconstitutionally insecure. A bench trial was held from January-May, 2009
`
`IPR2020-00019
`Fintiv EX2022 Page 11
`
`

`

`before Judge Linda Feinberg. The Court's opinion adopts Dr. Shamos' testimony and comments
`on it extensively. Affirmed on appeal in October 2013. Contact: Leslie Gore, Esq., Asst. Atty.
`Gen'l., 25 Market Street, P.O. Box 112, Trenton, NJ 08625. (D,R,T)
`
`50. R.R. Donnelley & Sons Company v. Quark, Inc. et al., C.A. No. 06-00032-JJF (D.
`Del.). Served as an expert for plaintiff R.R. Donnelley in a case alleging infringement of U.S.
`Patents 6,205,452, 6,327,599, 6,844,940 and 6,952,801, relating to book assembly, imposition
`of graphics and control of electronic presses. Case has settled. Contact: Stuart W. Yothers, Esq.,
`Ropes & Gray LLP, 1251 Avenue of the Americas, New York, NY 10020.
`
`51. MOAEC, Inc. v. Pandora Media, Inc. et al., Case No. 07-cv-654-bbc (W.D. Wisc.). Served as
`an expert for plaintiff in a case alleging infringement of U.S. Patents 5,969,283, 6,232,539,
`6,953,886 and 7,205,471, relating to systems for organizing and retrieving digital music. Two
`defendants obtained summary judgment of noninfringement; the remaining defendant
`settled. Contact: Joshua Krumholz, Esq., Holland & Knight, LLP, 10 St. James Avenue, 11th
`Floor, Boston, MA 02116. (D,R)
`
`52. Web.com, Inc. v. The Go Daddy Group, Inc., Case No. CV07-01552