`U.S. Patent No. 8,023,580
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`APPLE INC.,
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`Petitioner,
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`v.
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`REMBRANDT WIRELESS TECHNOLOGIES, LP,
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`Patent Owner.
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`____________
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`Case IPR2020-00033
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`U.S. Patent No. 8,023,580
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`____________
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`DECLARATION OF DRAGO GREGOV IN SUPPORT OF PETITION FOR
`INTER PARTES REVIEW OF UNITED STATES PATENT NO. 8,023,580
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`Apple Exhibit 1031
`Apple Inc. v. Rembrandt Wireless
`IPR2020-00033
`Page 00001
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`IPR2020-00033
`U.S. Patent No. 8,023,580
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`I, Drago Gregov, make the following Declaration pursuant to 28 U.S.C.
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`§ 1746:
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`1.
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`I am a Lead Litigation Paralegal Specialist at the law firm of Ropes &
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`Gray LLP.
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`2.
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`I provide this Declaration in support of the Petition for Inter Partes
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`Review of United States Patent No. 8,023,580 that is being requested at the United
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`States Patent and Trademark Office (“USPTO”) by Petitioner Apple Inc. Unless
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`otherwise stated, the facts stated in this Declaration are based on my personal
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`knowledge.
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`3.
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`Ex. 1001 is a true and correct copy of United States Patent No.
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`8,023,580, which was obtained from the United States Patent and Trademark
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`Office’s Public Patent Application Information Retrieval system (USPTO Public
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`PAIR) on September 30, 2019. This document has been marked with an exhibit
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`label and page numbers on each page at the bottom right corner. However, no
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`alterations, other than these noted markings, have been made to this document.
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`4.
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`Ex. 1002 is a true and correct copy of the entire prosecution Image File
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`Wrapper of United States Patent No. 8,023,580, which was obtained from the
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`USPTO’s Public PAIR system on September 30, 2019. This document has been
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`marked with an exhibit label and page numbers on each page at the bottom right
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`IPR2020-00033 Page 00002
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`IPR2020-00033
`U.S. Patent No. 8,023,580
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`corner. However, no alterations, other than these noted markings, have been made
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`to this document.
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`5.
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`Ex. 1004 is a true and correct copy of United States Patent No.
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`5,905,448, which was obtained from the USPTO’s Public PAIR system on
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`September 30, 2019. This document has been marked with an exhibit label and page
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`numbers on each page at the bottom right corner. However, no alterations, other than
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`these noted markings, have been made to this document.
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`6.
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`Ex. 1005 is a true and correct copy of United States Patent No.
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`5,689,440, which was obtained from the USPTO’s Public PAIR system on
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`September 30, 2019. This document has been marked with an exhibit label and page
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`numbers on each page at the bottom right corner. However, no alterations, other than
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`these noted markings, have been made to this document.
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`7.
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`Ex. 1006 is a true and correct copy of Prosecution File History of
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`United States Patent No. 5,689,440, which was retrieved from the USPTO at my
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`request. This document has been marked with an exhibit label and page numbers on
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`each page at the bottom right corner. However, no alterations, other than these noted
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`markings, have been made to this document.
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`8.
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`Ex. 1007 is a true and correct copy of United States Patent No.
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`5,521,926, which was obtained from the USPTO’s Public PAIR system on
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`September 30, 2019. This document has been marked with an exhibit label and page
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`2
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`IPR2020-00033 Page 00003
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`IPR2020-00033
`U.S. Patent No. 8,023,580
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`numbers on each page at the bottom right corner. However, no alterations, other than
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`these noted markings, have been made to this document.
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`9.
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`Ex. 1008 is a true and correct copy of United States Patent No.
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`5,239,306, which was obtained from the USPTO’s Public PAIR system on
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`September 30, 2019. This document has been marked with an exhibit label and page
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`numbers on each page at the bottom right corner. However, no alterations, other than
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`these noted markings, have been made to this document.
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`10. Ex. 1009 is a true and correct copy of United States Patent No.
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`4,875,038, which was obtained from the USPTO’s Public PAIR system on
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`September 30, 2019. This document has been marked with an exhibit label and page
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`numbers on each page at the bottom right corner. However, no alterations, other than
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`these noted markings, have been made to this document.
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`11. Ex. 1010 is a true and correct copy of the entire prosecution Image File
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`Wrapper of Ex Parte Reexamination No. 90/013,808 of United States Patent No.
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`8,023,580, which was obtained from the USPTO’s Public PAIR system on
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`September 30, 2019. This document has been marked with an exhibit label and page
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`numbers on each page at the bottom right corner. However, no alterations, other than
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`these noted markings, have been made to this document.
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`12. Ex. 1011 is a true and correct copy of the Claim Construction
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`Memorandum and Order, Docket No. 114, from Rembrandt Wireless Techs., LP v.
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`3
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`IPR2020-00033 Page 00004
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`IPR2020-00033
`U.S. Patent No. 8,023,580
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`Samsung Elecs. Co., Ltd., No. 2:13-cv-00213-JRG-RSP (E.D. Tex. July 10, 2014),
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`which was obtained from the United States Court’s Public Access to Court
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`Electronic Records (PACER) system on September 30, 2019. This document has
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`been marked with an exhibit label and page numbers on each page at the bottom
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`right corner. However, no alterations, other than these noted markings, have been
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`made to this document.
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`13. Ex. 1012 is a true and correct copy of the April 17, 2017 Federal Circuit
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`Decision, Docket No. 66, from Rembrandt v. Samsung, United States Court of
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`Appeals for the Federal Circuit, Case No. 16-1729, which was obtained from the
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`PACER system on September 30, 2019. This document has been marked with an
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`exhibit label and page numbers on each page at the bottom right corner. However,
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`no alterations, other than these noted markings, have been made to this document.
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`14. Ex. 1013 is a true and correct copy of the P.R. 4-3 Joint Claim
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`Construction Statement, Docket No. 70, from Rembrandt Wireless Technologies, LP
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`v. Apple Inc., No. 2:19-cv-00025-JRG, (E.D. Tex. Sept. 9, 2019), which was
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`obtained from the PACER system on September 30, 2019. This document has been
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`marked with an exhibit label and page numbers on each page at the bottom right
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`corner. However, no alterations, other than these noted markings, have been made
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`to this document.
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`4
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`IPR2020-00033 Page 00005
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`IPR2020-00033
`U.S. Patent No. 8,023,580
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`15. Ex. 1014 is a true and correct copy of United States Provisional Patent
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`Application No. 60/067,562, which was obtained from the USPTO’s Public PAIR
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`system on September 30, 2019. This document has been marked with an exhibit
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`label and page numbers on each page at the bottom right corner. However, no
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`alterations, other than these noted markings, have been made to this document.
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`16. Ex. 1015 is a true and correct copy of the Final Written Decision, Paper
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`47, from Samsung Elecs. Co. Ltd., et al. v. Rembrandt Wireless Techs., LP, IPR2014-
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`00518 (P.T.A.B. Sept. 17, 2015), which was obtained from PTAB E2E on
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`September 30, 2019. This document has been marked with an exhibit label and page
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`numbers on each page at the bottom right corner. However, no alterations, other than
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`these noted markings, have been made to this document.
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`17. Ex. 1016 is a true and correct copy of Rembrandt’s Response in
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`Opposition to Samsung Defendants’ Rule 50(b) Renewed Motion for Judgment as a
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`Matter of Law and/or Rule 59(a) Motion for a New Trial on Liability Issues, Docket
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`No. 335, from Rembrandt Wireless Techs., LP v. Samsung Elecs. Co., Ltd., No. 2:13-
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`cv-00213-JRG-RSP (E.D. Tex. Sept. 7, 2015), which was obtained from the PACER
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`system on September 30, 2019. This document has been marked with an exhibit
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`label and page numbers on each page at the bottom right corner. However, no
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`alterations, other than these noted markings, have been made to this document.
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`5
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`IPR2020-00033 Page 00006
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`IPR2020-00033
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`18. Ex. 1017 is a true and correct copy of Samsung Defendants’ Reply to
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`Rule 50(b) Renewed Motion for Judgment as a Matter of Law and/or Rule 59(a)
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`Motion for New Trial on Liability Issues, Docket No. 338, from Rembrandt Wireless
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`Techs., LP v. Samsung Elecs. Co., Ltd., No. 2:13-cv-00213-JRG-RSP (E.D. Tex.
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`Sept. 22, 2015), which was obtained from the PACER system on September 30,
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`2019. This document has been marked with an exhibit label and page numbers on
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`each page at the bottom right corner. However, no alterations, other than these noted
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`markings, have been made to this document.
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`19. Ex. 1019 is a true and correct copy of the Memorandum Opinion and
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`Order, Docket No. 352, from Rembrandt Wireless Techs., LP v. Samsung Elecs. Co.,
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`Ltd., No. 2:13-cv-00213-JRG, (E.D. Tex. Feb. 17, 2016), which was obtained from
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`the PACER system on September 30, 2019. This document has been marked with
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`an exhibit label and page numbers on each page at the bottom right corner. However,
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`no alterations, other than these noted markings, have been made to this document.
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`20. Ex. 1020 is a true and correct copy of United States Patent No.
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`6,034,621, which was obtained from the USPTO’s Public PAIR system on October
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`7, 2019. This document has been marked with an exhibit label and page numbers
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`on each page at the bottom right corner. However, no alterations, other than these
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`noted markings, have been made to this document.
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`6
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`IPR2020-00033 Page 00007
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`21. Ex. 1021 is a true and correct copy of the Declaration of Jon Mears and
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`attached article titled “Communication Protocols for Embedded Systems,” by
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`B. Upender and P. Koopman, Jr., which is Ex. 1218 from Samsung Elecs. Co. Ltd.,
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`et al. v. Rembrandt Wireless Techs., LP, IPR2014-00518, and which was obtained
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`from PTAB E2E on September 30, 2019, Also attached is a true and correct copy
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`of the article titled “Communication Protocols for Embedded Systems,” by
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`B. Upender
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`and P. Koopman,
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`Jr., which was
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`downloaded
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`from
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`https://users.ece.cmu.edu/-koopman/protsrvy/protsrvy.html on October 8, 2019.
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`These documents have been marked with an exhibit label and page numbers on each
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`page at the bottom right corner. However, no alterations, other than these noted
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`markings, have been made to these documents.
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`22. Ex. 1022 is a true and correct copy of the Petition for Inter Partes
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`Review of U.S. Patent No. 8,023,580 from Samsung Elecs. Co. Ltd., et al. v.
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`Rembrandt Wireless Techs., LP, IPR2014-00518, Pap. 1 (P.T.A.B. Mar. 20, 2014),
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`which was obtained from PTAB E2E on September 30, 2019. This document has
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`been marked with an exhibit label and page numbers on each page at the bottom
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`right corner. However, no alterations, other than these noted markings, have been
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`made to this document.
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`23. Ex. 1023 is a true and correct copy of the Decision Institution of Inter
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`Partes Review 37 C.F.R. §42.108 from Samsung Elecs. Co. Ltd., et al. v. Rembrandt
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`7
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`IPR2020-00033 Page 00008
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`IPR2020-00033
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`Wireless Techs., LP, IPR2014-00518, Pap. 16 (P.T.A.B. Sept. 23, 2014). This
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`document has been marked with an exhibit label and page numbers on each page at
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`the bottom right corner. However, no alterations, other than these noted markings,
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`have been made to this document.
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`24. Ex. 1024 is a true and correct copy of the Declaration of David
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`Goodman from Samsung Elecs. Co. Ltd., et al. v. Rembrandt Wireless Techs., LP,
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`IPR2014-00518 (Ex. 1220). This document has been marked with an exhibit label
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`and page numbers on each page at the bottom right corner. However, no alterations,
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`other than these noted markings, have been made to this document.
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`25. Ex. 1025 is a true and correct copy of the article titled “RAM Mobile
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`Data Prepares for Nationwide Rollout” by Reily Gregson, RCR Wireless News,
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`dated,
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`Mar.
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`17,
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`1997
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`which
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`was
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`downloaded
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`from
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`https://www.rcrwireless.com/19970317/carriers/ram-mobile-data-prepares-for-
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`nationwide-rollout on October 8, 2019. This document has been marked with an
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`exhibit label and page numbers on each page at the bottom right corner. However,
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`no alterations, other than these noted markings, have been made to this document.
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`26.
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`I hereby declare that all statements made herein of my own knowledge
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`are true and that all statements made on information and belief are believed to be
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`true; and further that these statements were made with the knowledge that willful
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`false statements and the like so made are punishable by fine or imprisonment, or
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`IPR2020-00033 Page 00009
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`both, under 18 U.S.C. 1001. If called to testify as to the truth of the matters stated
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`herein, I could and would testify competently.
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`27.
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`I declare under penalty of perjury that the foregoing is true and correct.
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`Executed this 5th day of November, 2019, in East Palo Alto, California.
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`/s/ Drago Gregov
`Drago Gregov
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