UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NETFLIX, INC. and
`
`ROKU, INC.
`
`Petitioners,
`
`V.
`
`UNILOC 2017 LLC,
`
`Patent Owner.
`
`PTAB Case No. IPR2020-0004I
`
`Patent No. 8,407,609 B2
`
`AFFIDAVIT 0F MATTHEW C. BERNSTEIN IN SUPPORT OF
`
`PETITIONERS’ UNOPPOSED MOTION FOR PRO HAC VICE
`
`ADMISSION UNDER 37 C.F.R. §42.10(c)
`
`|PR2020-00041
`
`NETFLIX, INC. EXHIBIT 1006
`
`IPR2020-00041
`NETFLIX, INC. EXHIBIT 1006
`
`

`

`Affidavit of Matthew C. Bernstein
`
`PTAB Case No. IPR2020-00041
`
`I, Matthew C. Bernstein, being duly sworn and upon oath, hereby apply to
`
`appear pro hac vice before the Office in inter partes review proceedings under
`
`PTAB Case No. IPR2020—00041.
`
`I hereby attest to the following:
`
`1.
`
`I am a member in good standing of the state Bar of California, the
`
`Southern, Central, and Northern Districts of California, the Eastern District of
`
`Texas, the United States Court of Appeals for the Federal Circuit, and the United
`
`States Supreme Court.
`
`2.
`
`I have never been suspended or disbarred from practice before any
`
`court or administrative body.
`
`3.
`
`I have never had an application for admission to practice before any
`
`court or administrative body denied.
`
`4.
`
`No sanction or contempt citation has been imposed against me by any
`
`court or administrative body.
`
`5.
`
`I have read and will comply with the Office Patent Trial Practice
`
`Guide and the Board’s Rules of Practice for Trials set forth in 37 C.F.R. Part 42.
`
`6.
`
`I will be subject to the USPTO Rules of Professional Conduct set
`
`forth in 37 OF .R. §§ 11.101 et seq. and disciplinary jurisdiction under 37
`
`C.F.R. § ll.l9(a).
`
`|PR2020-00041
`
`NETFLIX, INC. EXHIBIT 1006
`
`IPR2020-00041
`NETFLIX, INC. EXHIBIT 1006
`
`

`

`Affidavit of Matthew C. Bernstein
`
`PTAB Case No. IPR2020-00041
`
`7.
`
`l have applied, and have been admitted by the Office, to appear pro
`
`hac vice before the Office in the last three (3) years. I have applied to appear
`
`before the PTAB in the following PTAB proceedings:
`
`i. HTC Corporation et al. v. Advanced Audio Devices, LLC
`Cases:
`IPR2014-01154 (Patent 6,587,403 B 1)
`lPR2014—01155 (Patent 7,289,393 B2)
`IPR2014-01156 (Patent 7,817,502 B2)
`IPR2014—01157 (Patent 7,933,171 B2)
`IPR2014—01158 (Patent 8,400,888 B2)
`
`ii. HTC Corporation et al. v. NFC Technology, LLC
`Cases:
`IPR2014—01198 (Patent 6,700,551 B2)
`IPR2014—01199 (Patent 7,665,664 B2)
`IPR2015-003 84 (Patent 7,665,664 B2)
`
`iii.
`
`Starbucks Corporation v. Ameranth, Inc.
`Cases:
`CBM2015-00091 (Patent 6,3 84,850)
`CBM2015-00099 (Patent 6,871,325)
`
`iV. Merosoft Corporation v. Bradium Technologies LLC
`Cases:
`IPR2015—01432 (Patent 7,139,794)
`IPR2016-00449 (Patent 8,924,506)
`IPR2016-01897 (Patent 9,253 ,23 9)
`
`V. Netflix, Inc. and Roku, Inc. v. Convergent Media Solutions, LLC
`Case:
`IPR2016—01761 (Patent 8,850,507)
`
`Vi.
`
`Vii.
`
`Roku, Inc. v. Convergent Media Solutions, LLC
`Case:
`IPR2016-01762 (Patent 8,893,212)
`
`Nezflix, Inc. v. Convergent Media Solutions, LLC
`Cases:
`IPR2016-01811 (Patent 8,527,640)
`IPR2016-01812 (Patent 8,640,183)
`IPR2016-01813 (Patent 8,689,273)
`IPR2016-01814 (Patent 8,914,840)
`
`|PR2020-00041
`
`NETFLIX, INC. EXHIBIT 1006
`
`IPR2020-00041
`NETFLIX, INC. EXHIBIT 1006
`
`

`

`Affidavit of Matthew C. Bernstein
`
`PTAB Case No. IPR2020-0004l
`
`viii. Amazon. com, Inc. et al. v. Digital Media Technologies, Inc
`Cases:
`IPR2017—00284 (Patent 8,964,764)
`IPR2017—00285 (Patent 9,300,657)
`
`ix.
`
`T-Mobile US, Inc. et al v. Bar/can Wireless Access Technologies, LP.
`Cases:
`IPR2017-01098 (Patent 8,559,369)
`IPR2017-01099 (Patent 9,042,306)
`
`X. HTC Corporation et al. v. Electronic Scripting Products. Inc.
`Cases:
`IPR2018-01032 (Patent 8,553,935)
`
`8.
`
`I am an experienced litigation attorney With more than 20 years of
`
`experience representing clients in patent cases involving computer hardware and
`
`software, semiconductors, Internet and e—commerce, hand held computers, and
`
`other mobile devices. I regularly litigate patent cases in various forums including
`
`the United States Court of Appeals for the Federal Circuit, various federal district
`
`courts, and the International Trade Commission. Through my experience in patent
`
`litigation matters, I have represented clients in many phases of litigation including
`
`discovery, Markman hearings, jury trials, and appeals. My biography is attached
`
`hereto as Appendix A.
`
`9.
`
`I have an established familiarity With the subject matter at issue in this
`
`proceeding. I am lead counsel for Petitioners in the related district court case
`
`(Uniloc 2017 LLC v. Netflix, Inc, Case No. 8:18-cv—2055—GW-DFMX (CD. Cal.)
`
`(filed November 17, 2018)). I also represented Petitioners as lead counsel in other
`
`court cases involving similar technology (Digital Media Technologies, Inc. v.
`
`|PR2020-00041
`
`NETFLIX, INC. EXHIBIT 1006
`
`IPR2020-00041
`NETFLIX, INC. EXHIBIT 1006
`
`

`

`Affidavit of Matthew C. Bernstein
`
`PTAB Case No. IPR2020-00041
`
`Amazon. com, Inc., Case No. 4:16-cv- 00244 (ND. Fla.) (filed April 26, 2016),
`
`Digital Media Technologies, Inc. v. Hula, LLC, Case No. 4:16-cv-00245 (N.D.
`
`Fla.) (filed April 26, 2016), and Digital Media, Technologies, Inc. v. Netflix, Inc.,
`
`Case No. 4:16-cv-00243 O\ID. Fla.) (filed April 26, 2016); Convergent Media
`
`Solutions, LLC v. AT&T, Inc., 3:15-cv-2156-M (ND. TeX.)(filed June 26, 2015)
`
`Trans Video Electronics Ltd. v. Hula, LLC, 1:13-cv-Ol399 (D. Del.) (filed August
`
`7, 2013), TransVideo Electronics Ltd. v. Netflix, Inc., 1:12—cv-Ol743 (D. Del.)
`
`(filed December 20, 2012)).
`
`10.
`
`I am familiar with the technologies and issued claims in the 8,407,609
`
`Patent. 1 am familiar with the prior art references cited in PTAB Case
`
`No. lPR2020-00041 and the associated invalidity grounds before the PTAB.
`
`I hereby declare that all statements made of my own knowledge are true and
`
`that all statements made on information and belief are believed to be true. I further
`
`declare that these statements were made with the knowledge that willful false
`
`statements and the like so made are punishable by fine or imprisonment, or both,
`
`under Section 1001 of the Title 18 of the United States Code.
`
`|PR2020-00041
`
`NETFLIX, INC. EXHIBIT 1006
`
`IPR2020-00041
`NETFLIX, INC. EXHIBIT 1006
`
`

`

`Affidavit of Matthew C. Bernstein
`
`PTAB‘HGase N0. IPR2020-00041
`
`Dated:
`
`/2' /3/[ /? Matthew C. Bernstei .
`
`Perkins Coie LLP
`
`11452 El Camino Real, Suite 300
`
`San Diego, CA 92130
`
`|PR2020-00041
`
`NETFLIX, INC. EXHIBIT 1006
`
`IPR2020-00041
`NETFLIX, INC. EXHIBIT 1006
`
`

`

`APPENDIX A
`
`APPENDIX A
`
`|PR2020-00041
`
`NETFLIX, INC. EXHIBIT 1006
`
`IPR2020-00041
`NETFLIX, INC. EXHIBIT 1006
`
`

`

`Professional Biography
`
`MATTHEW BERNSTEIN PARTNER
`
`|
`
`Managing Partner, San Diego;
`Co-Managing Partner, Taipei (Perkins Coie Foreign Legal Affairs Attorneys at Law)
`
`SAN DIEGO
`11452 El Camino Real, Suite 300
`San Diego, CA 92130-2080
`T +1.858.720.5721
`M+1.619.254.3273
`F +1.858.720.5821
`MBernstein@perkinscoie.com
`
`TAIPEI
`Taipei 101 Tower, Suite F, 45th Floor,
`No. 7, Sec. 5, Xinyi Road, Xinyi District
`T + 886.2.8101.2031Ext. 6712
`M+ 886.936.751.432
`F + 886.2.8101.2038
`
`LOS ANGELES
`1888 Century Park East, Suite 1700
`Los Angeles, CA 90067-1721
`T +1.310.788.3304
`M+1.619.254.3273
`F +1.310.788.3399
`
`Matt is a go-to patent litigator and trial attorney for his U.S. and international clients with a record of successful results for his
`clients. Whether it is negotiating early zero-dollar settlements, winning dispositive motions, or prevailing at trial and at the federal
`circuit, Matt works with his clients to find the most efficient, cost-effective ways to achieve their goals. Having represented both
`plaintiffs and defendants in district courts throughout the U.S., the International Trade Commission (ITC) and at the Patent Trial
`and Appeal Board (PTAB), Matt sees the big strategic picture, but also knows how to actually implement case-specific strategies.
`He recently tried five patent jury cases in district court and two patent cases at the ITC. He’s also handled dozens of inter partes
`reviews, including arguing at the oral hearings (trial) and at the federal circuit.
`
`Some of Matt’s recent patent litigation successes include:
`
`Successfully defended a software company in the second-largest patent infringement case in U.S. history.
`Successfully defended Taiwanese handset manufacturer in ITC action, including obtaining a finding of no liability at hearing/trial
`and at the Federal Circuit.
`Obtained zero-dollar dismissals with prejudice for clients in the Eastern District of Texas, District of Delaware, Southern District
`of Texas, Southern District of California, Western District of Washington, and the District of Minnesota.
`Invalidated all challenged claims of five audio patents through IPR, and successfully affirmed the PTAB’s decision at the
`Federal Circuit.
`Successfully invalidated a digital rights management patent at the motion to dismiss stage under Alice / 101 for three of the
`largest streaming companies, and successfully affirmed the decision at the Federal Circuit.
`Obtained stipulated judgment of noninfringement for two streaming clients in the District of Delaware following a successful
`early Markman.
`Obtained a jury verdict of infringement, willful infringement, significant damages and validity against a major semiconductor
`company, and then obtained a permanent injunction, enhanced damages and attorneys’ fees from the district court.
`Obtained a jury verdict on liability and significant damages for a computer hardware company, and then obtained injunction,
`enhanced damages and attorneys’ fees from the district court.
`
`He has litigated and counseled clients in a wide variety of technologies and industries, including computer software and hardware,
`mobile, electronics, e-commerce, medical devices, media, automotive systems, weapons systems, biotechnology and others. In
`addition to his patent infringement work, Matt also represents clients in trademark, trade secret, trade dress, copyright and
`government contract matters.
`
`Matt’s intellectual property and litigation skills have been recognized in both San Diego and nationally. He has been named a Top
`Attorney, Best Lawyer, Best of the Bar, and Super Lawyer.
`
`BIO IN OTHER LANGUAGES
`Simplified Chinese Bio | 中文简体
`
`IPR2020-00041
`NETFLIX, INC. EXHIBIT 1006
`
`

`

`Traditional Chinese Bio | 中文繁体
`
`PROFESSIONAL RECOGNITION
`Named in The Best Lawyers in America, Practicing in: Commercial Litigation; Litigation - Intellectual Property; Litigation -
`Patent, 2015 - 2020
`Super Lawyer (Intellectual Property), 2013 - 2019
`Named in Best Lawyers, San Diego, Practicing in: Litigation - Intellectual Property, 2015 - 2016
`San Diego Business Journal's, Best of the Bar, 2014 - 2017
`Named a "Top Attorney" (Intellectual Property Litigation) in San Diego by the San Diego Daily Transcript, 2007 - 2013, 2015;
`San Diego Top Attorney Emeritus in 2014
`Recipient of the Wiley W. Manuel award for Pro Bono Service
`
`PROFESSIONAL LEADERSHIP
`State Bar of California
`San Diego County Bar Association
`The Fellows of the American Bar Foundation
`American Bar Association
`American Intellectual Property Law Association
`Intellectual Property Owners Association
`
`RELATED EMPLOYMENT
`Fish & Richardson P.C., San Diego, CA, Partner
`DLA Piper (formally Gray Cary Ware & Freidenrich), San Diego, CA, Associate
`United States Agency for International Development, Washington, D.C., Law Clerk
`
`EXPERIENCE
`
`PATENT LITIGATION
`
`IN THE MATTER OF CERTAIN MOVABLE BARRIER OPERATOR SYSTEMS AND COMPONENTS THEREOF, U.S. INTERNATIONAL
`TRADE COMMISSION INVESTIGATION NO. 337-TA-1118
`Lead counsel for Respondents Nortek Security & Control LLC f/k/a Linear, LLC, Nortek, Inc., and GTO Access Systems, LLC in a
`three-patent case before ALJ McNamara concerning garage door and gate openers; pending.
`
`THE CHAMBERLAIN GROUP, INC. V. NORTEK SECURITY & CONTROL LLC
`U.S. District Court for the Southern District of California
`Counsel for Nortek Security & Control LLC f/k/a Linear, LLC in a three-patent case before Judge Janis L. Sammartino and
`Magistrate Judge Andrew G. Schopler concerning garage door and gate openers; pending.
`
`UNILOC 2017 LLC, V. NETFLIX, INC., ET AL.
`U.S. District Court for the Central District of California
`Lead counsel for Hulu, Netflix, and Roku in a patent case related to presenting audio and visual content on a computer or computer
`network; pending.
`
`CLOUDING IP, LLC, V. MICROSOFT CORPORATION
`U.S. District Court for the District of Delaware
`Lead counsel for Microsoft in 15 patent case related to cloud computing.
`
`NONEND INVENTIONS, N.V. V. MICROSOFT CORPORATION, ET AL.
`U.S. District Court for the Eastern District of Texas
`Lead counsel for Microsoft, HTC America, HP, and Fujitsu in patent case related to media streaming.
`
`BRADIUM TECHNOLOGIES LLC V. MICROSOFT CORPORATION
`U.S. District Court for the District of Delaware
`Lead counsel for Microsoft in patent case related to mapping software.
`
`AMERANTH, INC. V. STARBUCKS CORP.
`
`IPR2020-00041
`NETFLIX, INC. EXHIBIT 1006
`
`

`

`U.S. District Court for the Southern District of California
`Lead counsel for Starbucks in patent litigation related to online menu generation and mobile payment.
`
`STARBUCKS CORP. V. NEOMEDIA TECHNOLOGIES, INC.
`U.S. District Court for the Western District of Washington
`Lead counsel for Starbucks in patent litigation related to QR codes.
`
`LEMAIRE ILLUMINATION TECHNOLOGIES, LLC V. HTC CORPORATION
`U.S. District Court for the Eastern District of Texas
`Lead counsel for HTC Corporation in patent litigation related to controlling and powering a solid-state light source such as a light-
`emitting diodes (LED).
`
`NFC TECHNOLOGY LLC V. HTC AMERICA, INC. ET AL.
`U.S. District Court for the Eastern District of Texas
`Lead counsel for HTC America in patent litigation related to near field communications.
`
`AGIS SOFTWARE DEVELOPMENT, LLC V. HTC CORPORATION
`U.S. District Court for the Eastern District of Texas
`Lead counsel for HTC in a patent case related to mapping location services.
`
`ELECTRONIC SCRIPTING PRODUCTS, INC. V. HTC AMERICA, INC., ET AL.
`U.S. District Court for the Northern District of California
`Lead counsel for HTC America in a patent case related to virtual reality technologies.
`
`ADVANCED AUDIO DEVICES, LLC V. HTC AMERICA, INC.
`U.S. District Court for the Northern District of Illinois
`Lead counsel for HTC America in patent litigation related to audio playlists.
`
`DISPLAY TECHNOLOGIES, LLC V. HTC AMERICA, INC.
`U.S. District Court for the Western District of Washington
`Lead counsel for defendant HTC America in a single patent case before Judge Jones involving NFC and Bluetooth wireless
`connectivity. Case dismissed with prejudice.
`
`R&D ENTERPRISES OF SAN JOSE, LLC V. DERMA ART TECHNOLOGIES, INC., ONE INK SEVEN LLC, ET AL.
`U.S. District Court for the District of Minnesota
`Lead counsel for Derma Art Technologies, Inc. and Painful Pleasures, Inc. in patent cases related to tattoo ink technology.
`
`BARKAN WIRELESS ACCESS TECHNOLOGIES, L.P. V. T-MOBILE US, INC. ET AL.
`U.S. District Court for the Eastern District of Texas
`Lead counsel for T-Mobile in a patent case related to wireless networking.
`
`ROTHSCHILD STORAGE RETRIEVAL INNOVATIONS, LLC. V. HTC CORPORATION, ET AL.
`U.S. District Court for the Northern District of California
`Lead counsel for HTC America and HTC Corp. in patent case related to distributing wireless images.
`
`E-WATCH, INC., ET AL. V. APPLE, INC., ET AL.
`U.S. District Court for the Eastern District of Texas
`Lead counsel for HTC America and HTC Corp. in patent litigation related to mobile image systems.
`
`CHINOOK LICENSING DE, LLC V. HULU, LLC
`U.S. District Court for the District of Delaware
`Lead counsel for Hulu in patent litigation related to online recommendations.
`
`TRANSVIDEO ELECTRONICS, LTD. V. HULU, LLC
`U.S. District Court for the District of Delaware
`Lead counsel for Hulu in patent litigation related to video distribution systems.
`
`TRANSVIDEO ELECTRONICS, LTD. V. NETFLIX, INC.
`U.S. District Court for the District of Delaware
`Lead counsel for Netflix in patent litigation related to video distribution systems.
`
`ZIPLINK, INC. V. MICROSOFT CORPORATION
`U.S. District Court for the District of Connecticut
`Lead counsel for Microsoft in patent litigation related to anti-spoofing and anti-spam technologies.
`
`OROSTREAM LLC V. NHL INTERACTIVE CYBERENTERPRISES, LLC
`
`IPR2020-00041
`NETFLIX, INC. EXHIBIT 1006
`
`

`

`U.S. District Court for the Eastern District of Texas
`Lead counsel for NHL Interactive in patent litigation related to distributing media content.
`
`OROSTREAM LLC V. ZUFFA, LLC
`U.S. District Court for the Eastern District of Texas
`Lead counsel for Zuffa in patent litigation related to distributing media content.
`
`INMOTION IMAGERY TECHNOLOGIES, LLC V. CYBERLINK.COM CORP. D/B/A TEXAS CYBERLINK CORP
`U.S. District Court for the Eastern District of Texas
`Lead counsel for Cyberlink in patent litigation related to video indexing system.
`
`OVERLAND STORAGE, INC., V. QUALSTAR CORPORATION
`U.S. District Court for the Southern District of California
`Lead counsel for Qualstar in patent litigation related to media libraries.
`
`ORIENTVIEW TECHNOLOGIES LLC, V. JUST FABULOUS, INC.
`U.S. District Court for the District of Delaware
`Lead counsel for Just Fabulous in patent litigation related to online marketing.
`
`TIERRAVISION INC. V. MICROSOFT CORPORATION
`U.S. District Court for the Southern District of California
`Lead counsel for Microsoft in patent litigation related to mobile mapping functionality.
`
`TRANSCENIC INC. V. GOOGLE INC., ET AL.
`U.S. District Court for the District of Delaware
`Lead counsel for Microsoft in patent litigation related to street level imagery.
`
`LODSYS, LLC V. HULU
`U.S. District Court for the Eastern District of Texas
`Lead counsel for Hulu in patent litigation related to online reviews.
`
`FIGA V. HTC CORPORATION
`U.S. District Court for the District of Massachusetts
`Lead counsel for HTC in patent litigation related to caller-id functionality on mobile phones.
`
`LBS INNOVATIONS, LLC V. AARON BROTHERS, INC., ET AL.
`U.S. District Court for the Eastern District of Texas
`Lead counsel for Adams Golf in patent litigation related to online store locators.
`
`LBS INNOVATIONS LLC V. BP AMERICA INC., ET AL.
`U.S. District Court for the Eastern District of Texas
`Lead counsel for McDonald's, Starbucks, Target, Costco, U.S. Bank and others in patent litigation related to online store locators.
`
`LBS INNOVATIONS, LLC V. SALLY BEAUTY SUPPLY LLC, ET AL
`U.S. District Court for the Eastern District of Texas
`Lead counsel for Sally Beauty in patent litigation related to online store locators.
`
`COMPRESSION TECHNOLOGY SOLUTIONS LLC V. CA. INC., ET AL.
`U.S. District Court for the Eastern District of Missouri
`Lead counsel for Quest Software in patent litigation related to data compression.
`
`ZIPLINK, INC. V. TIME WARNER CABLE INC.
`U.S. District Court for the District of Connecticut
`Lead counsel for Time Warner in patent litigation related to anti-spoofing and anti-spam technologies.
`
`STYLEPATH, INC. V. JUST FABULOUS, INC.
`U.S. District Court for the Central District of California
`Lead counsel for Just Fabulous in patent litigation related to online marketing.
`
`E.DIGITAL CORPORATION V. INTEL CORPORATION
`U.S. District Court for the Southern District of California
`Counsel for Intel in patent litigation related to flash memory.
`
`FLASHPOINT TECHNOLOGY INC. V. HTC CORPORATION, ET AL.
`U.S. District Court for the District of Delaware
`Counsel for HTC in patent litigation concerning 10 patents related to mobile technologies; pending.
`
`FLASHPOINT TECHNOLOGY INC. V. HTC CORPORATION, HTC AMERICA INC., ET AL.
`
`IPR2020-00041
`NETFLIX, INC. EXHIBIT 1006
`
`

`

`U.S. International Trade Commission
`Counsel for HTC in patent litigation concerning camera functionality in smart phones; win at trial and initial ID. ITC proceeding 337-
`TA-726
`
`FUJINON CORPORATION V. HTC CORPORATION AND HTC AMERICA INC.
`U.S. District Court for the Southern District of Texas
`Counsel for HTC in patent litigation concerning optical lens structures found in cellular phones; pending.
`
`LARGAN PRECISION, COMPANY LTD. V. FUJINON CORPORATION
`U.S. District Court for the Northern District of California
`Counsel for Largan in patent litigation concerning optical lens structures; dismissed.
`
`TREEFROG DEVELOPMENTS, INC. D/B/A LIFEPROOF V. SEIDIO, INC.
`U.S. District Court for the Southern District of California
`Counsel for LifeProof in patent litigation related to iPhone cases.
`
`TREEFROG DEVELOPMENTS, INC. D/B/A LIFEPROOF V. JOY FACTORY, INC.
`U.S. District Court for the Southern District of California
`Counsel for LifeProof in patent litigation related to iPhone cases.
`
`TREEFROG DEVELOPMENTS, INC. D/B/A LIFEPROOF V. KLEARKASE, LLC, ET AL.
`U.S. District Court for the Southern District of California
`Counsel for LifeProof in patent litigation related to iPhone cases.
`
`ATEN INTERNATIONAL COMPANY, LTD. V. BELKIN CORPORATION
`U.S. District Court for the Central District of California
`Counsel for ATEN in patent litigation related to KVM switches.
`
`NONEND INVENTIONS, N.V. V. AMAZON.COM, INC., ET AL
`U.S. District Court for the Eastern District of Texas
`Counsel for Amazon in patent case related to streaming and sharing media.
`
`CLOUDING IP, LLC, V. AMAZON.COM, INC. AND AMAZON WEB SERVICES, LLC
`U.S. District Court for the District of Delaware
`Counsel for Amazon in multiple patent case related to cloud computing.
`
`CLOUDING IP, LLC, V. RACKSPACE HOSTING, INC., ET AL.
`U.S. District Court for the District of Delaware
`Counsel for Rackspace in multiple patent case related to cloud computing.
`
`CLOUDING IP, LLC, V. DROPBOX, INC.
`U.S. District Court for the District of Delaware
`Counsel for Dropbox in multiple patent case related to cloud computing.
`
`SIMPLEAIR, INC., V. MICROSOFT CORPORATION, ET AL.
`U.S. District Court for the Eastern District of Texas
`Counsel for HTC in two patent case related to remote notification technology for mobile devices; plaintiff voluntarily dismissed
`claims against HTC.
`
`LUCENT TECHNOLOGIES V. MICROSOFT CORPORATION*
`U.S. District Court for the Southern District of California
`Federal Circuit Court of Appeals
`Defended Microsoft in patent litigation jury trial related to audio encoders and decoders.
`
`Z4 TECHNOLOGIES, INC. V. MICROSOFT CORPORATION AND AUTODESK INC.*
`U.S. District Court for the Eastern District of Texas
`Federal Circuit Court of Appeals
`Defended Microsoft in patent litigation jury trial related to software anti-piracy.
`
`MICROTUNE, L.P. V. BROADCOM CORP.*
`U.S. District Court for the Eastern District of Texas
`Represented Microtune in patent litigation jury trial related to integrated TV tuners.
`
`CROSSROADS SYSTEMS, INC. V. CHAPARRAL NETWORK STORAGE, INC.*
`U.S. District Court for the Western District of Texas
`Federal Circuit Court of Appeals
`Represented Crossroads Systems in patent litigation jury trial related to storage routers.
`
`IPR2020-00041
`NETFLIX, INC. EXHIBIT 1006
`
`

`

`CROSSROADS SYSTEMS, INC. V. PATHLIGHT TECHNOLOGY, INC.*
`U.S. District Court for the Western District of Texas
`Represented Crossroads Systems in patent litigation jury trial related to storage routers.
`
`POLAROID CORP. V. HEWLETT-PACKARD CO.*
`U.S. District Court for the District of Delaware
`Defended Hewlett-Packard in patent litigation related to image enhancement algorithms.
`
`PRODUCT ACTIVATION CORP. V. AUTODESK, INC.*
`U.S. District Court for the Eastern District of Texas
`Defended Autodesk in patent litigation related to software anti-piracy.
`
`HÅKAN LANS AND UNIBOARD AKTIEBOLAG V. HEWLETT-PACKARD CO.*
`U.S. District Court for the District of Columbia
`Federal Circuit Court of Appeals
`Defended Hewlett-Packard in patent litigation related to digital graphics.
`
`DIGITAL DEVELOPMENT CORP. V. HEWLETT-PACKARD CO.*
`U.S. District Court for the Northern District of California
`Defended Hewlett-Packard in patent litigation related to computer data integrity.
`
`TYPERIGHT KEYBOARD CORP. V. MICROSOFT CORPORATION*
`U.S. District Court for the Southern District of California
`Defended Microsoft in patent litigation related to ergonomic keyboards.
`
`ORION IP LLC V. AMERICAN SUZUKI MOTOR CORP.*
`U.S. District Court for the Eastern District of Texas
`Defended American Suzuki Motor Corp. in patent litigation related to online advertising and online parts ordering.
`
`ALPHATEC SPINE, INC. V. X-SPINE SYSTEMS, INC.*
`U.S. District Court for the Southern District of California
`Lead counsel for patent holder Alphatec Spine in patent litigation related to cervical plate and fixation systems.
`
`ALPHATEC SPINE, INC. V. THEKEN SPINE LLC, ET AL.*
`U.S. District Court for the Southern District of California
`Lead counsel for patent holder Alphatec Spine in patent litigation related to cervical plate and fixation systems. The case favorably
`settled.
`
`SEQUAL TECHNOLOGIES, INC. V. INOGEN, INC.*
`U.S. District Court for the Southern District of California
`Represented patent holder Sequal in patent litigation related to portable oxygen concentrators. The case favorably settled.
`
`INTELLECTUAL PROPERTY LITIGATION
`
`LORILLARD TOBACCO CO. V. B&L LIQUOR*
`U.S. District Court for the Central District of California
`Represented Lorillard Tobacco in litigation involving trademark and counterfeit.
`
`LORILLARD TOBACCO CO. V. J&J LIQUOR*
`U.S. District Court for the Central District of California
`Represented Lorillard Tobacco in trademark and counterfeit litigation.
`
`DR. SEUSS ENTERPRISES, L.P. V. SOFT THINGS, INC.*
`U.S. District Court for the Southern District of California
`Represented Dr. Seuss Enterprises in trademark, trade dress and copyright litigation.
`
`METABOLIFE INTERNATIONAL, INC. V. ONTRACK WELLNESS, INC.*
`U.S. District Court for the Southern District of California
`Represented Metabolife International in trademark and trade dress litigation.
`
`ORINCON CORP. V. INTELLIGENT AUTOMATION CORP.*
`Superior Court of California, San Diego County
`Represented Orincon in trade secret and unfair competition litigation.
`
`MICROTUNE INC. V. BROADCOM*
`U.S. District Court for the Western District of Texas
`Represented Microtune in antitrust litigation.
`
`IPR2020-00041
`NETFLIX, INC. EXHIBIT 1006
`
`

`

`MICROTUNE INC. V. SILICON WAVE INC.*
`Superior Court of California, San Diego County
`Represented Microtune in breach of contract litigation.
`
` *
`
` Prior Experience
`
`NEWS
`
`09.09.2019
`Perkins Coie Recognized as a Leading Firm in 2019 IPR Intelligence Report
`Press Releases
`Perkins Coie is pleased to announce that the firm and ten partners were recognized as leaders in inter partes review (“IPR”) in
`Patexia’s 2019 IPR Intelligence Report, an annual comprehensive report of IPR data and analysis over the last five years.
`
`08.15.2019
`Best Lawyers® 2020 Recognizes 283 Perkins Coie Attorneys
`Press Releases
`Perkins Coie is proud to announce that 282 of its attorneys were selected by their peers for inclusion in the 2020 edition of The
`Best Lawyers in America®.
`
`12.05.2018
`Perkins Coie Moves San Diego Office
`Press Releases
`Perkins Coie has announced that its San Diego office will relocate on December 10, 2018 to 11452 El Camino Real, Suite 300. The
`firm’s new 37,000-square-foot space will accommodate the office’s recent and planned growth in its existing and additional practice
`areas.
`
`11.13.2018
`Perkins Coie Attorneys Mentioned in Law360 - Fed. Circ. Upholds Win for Netflix In Online Viewing IP Row
`General News
`Law360
`Dan Bagatell, Matthew Bernstein, Andrew Dufresne and Martin Gilmore mentioned as counsel for Netflix in “Fed. Circ. Upholds Win
`for Netflix In Online Viewing IP Row, and article in Law360, regarding the Federal Circuit court upholding the lower court decision
`that Digital Media Technologies Inc.'s patent was invalid.
`
`11.09.2018
`Partner Dan Bagatell Quoted in Law360 - Netflix, DMT Spar Over Online Viewing Patent In Fed. Circ.
`General News
`Law360
`Dan Bagatell was quoted in “Netflix, DMT Spar Over Online Viewing Patent In Fed. Circ.,” an article in Law360, regarding the patent
`infringement case brought against Netflix Inc. and how U.S. District Judge Mark E. Walker used the Alice test to rule in favor of
`Netflix.
`
`08.20.2018
`Best Lawyers® 2019 Recognizes 277 Perkins Coie Attorneys
`Press Releases
`Perkins Coie is proud to announce that 277 of its attorneys were selected by their peers for inclusion in the 2019 edition of The
`Best Lawyers in America®.
`
`03.19.2018
`Perkins Coie Team Mentioned in Law360 - HTC Beats $45M Virtual Reality Patent Suit, For Now
`General News
`Law360
`The Perkins Coie team representing HTC America Inc. was mentioned in the Law360 article, “HTC Beats $45M Virtual Reality
`Patent Suit, For Now,” regarding a California federal judge’s decision to dismiss a $45 million lawsuit against HTC America Inc.
`
`08.15.2017
`Best Lawyers® 2018 Recognizes 281 Perkins Coie Attorneys
`Press Releases
`Perkins Coie is proud to announce that 281 of its attorneys were selected by their peers for inclusion in the 2018 edition of The
`Best Lawyers In America®.
`
`08.15.2016
`
`IPR2020-00041
`NETFLIX, INC. EXHIBIT 1006
`
`

`

`Best Lawyers® 2017 Recognizes 252 Perkins Coie Attorneys
`Press Releases
`Perkins Coie is proud to announce that 252 of its attorneys were selected by their peers for inclusion in the 2017 edition of The
`Best Lawyers In America®, the oldest and most respected peer-review publication in the legal profession.
`
`08.17.2015
`Best Lawyers® 2016 Recognizes 245 Perkins Coie Attorneys
`Press Releases
`Perkins Coie is proud to announce that 245 of its attorneys were selected by their peers for inclusion in the 2016 edition of The
`Best Lawyers In America®, the oldest and most respected peer-review publication in the legal profession; a more than 10 percent
`increase over the 221 firm attorneys recognized by Best Lawyers in the 2015 edition.
`
`08.18.2014
`Best Lawyers® 2015 Recognizes 221 Perkins Coie Attorneys
`Press Releases
`Perkins Coie is proud to announce that 221 of its attorneys were selected by their peers for inclusion in the 2015 edition of The
`Best Lawyers In America®, the oldest and most respected peer-review publication in the legal profession.
`
`08.07.2013
`Perkins Coie Partners Named to The Daily Transcript's 2013 Top Attorneys List
`Press Releases
`Perkins Coie is pleased to announce that two partners in the firm’s San Diego office have been named by their peers to The Daily
`Transcript's 2013 Top Attorneys list.
`
`08.02.2012
`Perkins Coie Attorneys Named to The Daily Transcript's 2012 Top Attorneys List
`Press Releases
`Perkins Coie is pleased to announce that four partners in the San Diego office have been named by their peers to The Daily
`Transcript's 2012 Top Attorneys list. The annual listing recognizes the best lawyers in 14 categories that cover the private,
`corporate, academic, and government practice in San Diego County.
`
`PUBLICATIONS
`
`02.09.2017
`Patent Litigation Strategies Against Patent Trolls
`Articles
`Lexis Practice Advisor Journal
`The majority of patent cases are brought by non-practicing entities (NPEs), also called patent trolls or patent assertion entities
`(PAEs). These parties litigate or license their patents but have no real products or services. NPE Lawsuits are commonly brought
`against U.S. companies and pose unique challenges. For example, many NPEs are represented on a contingent fee basis, and
`because NPEs do not have products, a defendant typically cannot level the playing field by asserting its own patents against the
`NPE. Whether you should litigate aggressively through trial or try to negotiate a quick settlement depends on your view of NPEs
`and the circumstances of the case.
`
`12.13.2015
`35 U.S.C. § 101: Post-Alice Landscape
`Articles
`NTUT Journal of Intellectual Property Law and Management
`
`07.15.2015
`Judge Mayer’s Quest for Section 101 Reform in the U.S.
`Articles
`Managing Intellectual Property: The Global IP Resource
`
`5.17.2010
`How has the change in pleading requirements, implemented by recent Supreme Court decisions, affected patent
`infringement cases? And how can companies overcome this strategy for dismissal by patent infringers?
`Articles
`Expert Insights: Intellectual Property
`
`02.25.2010
`Beware Patent Markers
`Articles
`
`IPR2020-00041
`NETFLIX, INC. EXHIBIT 1006
`
`

`

`San Diego Daily Transcript
`
`PRESENTATIONS
`
`09.10.2019
`Patent Attacks: Pros, Cons, Advantages, Disadvantages and Lessons Learned at the District Court, ITC and PTAB
`Speaking Engagements
`ACC / San Diego, CA
`
`09.12.2018 | 2018年9月12日 &
`09.17.2018 | 2018年9月17日
`From Idea to Money: Patent Enforcement, Licensing and Procurement - What Every Taiwanese Company Needs to
`Know | 專利IP資產管理策略、美國PTAB專利舉發 & AI人工智能之專利趨勢分析
`Speaking Engagements
`Taipei, Taiwan
`Zhubei City, Taiwan
`
`03.16.2018 | 2018年3月16日
`Looking Back at the Year of the Rooster & Looking Ahead to the Year of the Dog: Key U.S. & Taiwanese Patent Cases |
`2017~2018年迎新犬送舊雞 --美台重要專利案例回顧
`Seminars
`
`10.30.2017 | 2017年10月30日
`Something Old & New in IP Law | 專利新潮舊浪 - 管理美國專利