UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`BAYERISCHE MOTOREN WERKE AKTIENGESELLSCHAFT &
`BMW OF NORTH AMERICA, LLC,
`Petitioners
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`v.
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`PAICE LLC & THE ABELL FOUNDATION, INC.
`Patent Owners
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`Inter Partes Review No.: IPR2020-01299
`U.S. Patent No. 8,630,761
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`___________________
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`DECLARATION OF JACOB Z. ZAMBRZYCKI IN SUPPORT OF
`MOTION FOR PRO HAC VICE ADMISSION UNDER 37 C.F.R. § 42.10
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`BMW v. Paice, IPR2020-01299
`BMW1087
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`Zambrzycki Pro Hac Vice Declaration
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`I, Jacob Z. Zambrzycki, do hereby declare as follows:
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`1.
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`I am a member in good standing of the Bar of the State of New York,
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`the Bar of the State of California, the Bar of the State of North Carolina, as well as
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`the following federal courts:
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`a.
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`b.
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`c.
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`d.
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`U.S. Court of Appeals for the Federal Circuit;
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`U.S. District Courts for the Southern District of New York;
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`U.S. District Court for the Central District of California; and
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`U.S. District Court for the Northern District of California;
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`2.
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`I have never been suspended, disbarred, sanctioned, or cited for
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`contempt by any court or administrative body.
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`3.
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`I have never had a court or administrative body deny my application
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`for admission to practice.
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`4.
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`I have read and will comply with the Office Patent Trial Practice
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`Guide and the Board’s Rules of Practice for Trials set forth in Part 42 of Title 37 of
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`the Code of Federal Regulations.
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`5.
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`I agree to be subject to the United States Patent and Trademark Office
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`Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq. and
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`disciplinary jurisdiction under 37 C.F.R. § 11.19(a).
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`6. Within the past three (3) years, I have applied to appear pro hac vice
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`before the Office, and was granted permission to do so, in IPR2017-00981,
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`Zambrzycki Pro Hac Vice Declaration
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`IPR2017-01263, IPR2017-01533, IPR2017-01866, IPR2019-00569, IPR2019-
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`00570, and in the related IPR2020-00994. I am presently submitting this
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`application for admission pro hac vice simultaneously in the related IPR2020-
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`01299 and IPR2020-01386 proceedings.
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`7.
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`I have substantial familiarity with the subject matter at issue in this
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`inter partes review proceeding, specifically the challenged patent, and the various
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`prior art references cited in the Petition. I was involved in preparing the Petition in
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`this proceeding; indeed, I was involved in preparing the Petition cited in each of
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`the related IPR2020-00994, IPR2020-01299, and IPR2020-01386 proceedings.
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`8.
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`I hereby declare that all statements made herein of my own
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`knowledge are true and that all statements made on information and belief are
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`believed to be true, and further that these statements were made with the
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`knowledge that willful false statements and the like so made are punishable by fine
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`or imprisonment, or both, under Section 1001 of Title 18 of the United States
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`Code.
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`9.
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`A copy of my biography is enclosed herein.
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`Dated: March 31, 2020
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`Zambrzycki Pro Hac Vice Declaration
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`Respectfully submitted,
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`/Jacob Z. Zambrzycki/
`Jacob Z. Zambrzycki
`Crowell & Moring LLP
`590 Madison Avenue, 20th Floor
`New York, NY 10022-2544
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`Jacob Z. Zambrzycki
`Partner
`New York
`jzambrzycki@crowell.com
`Phone: +1 212.803.4012
`Fax: +1 212.223.4134
`590 Madison Avenue, 20th Floor
`New York, NY 10022-2544
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`Practices
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` Intellectual Property
`Litigation
` Litigation & Trial
` Blockchain / Distributed
`Ledger Technology (DLT)
` Digital Transformation
` Emerging Companies &
`Venture Capital
` IP Strategy, Prosecution &
`Portfolio Management
` Appellate
` U.S. International Trade
`Commission Section 337
`Unfair Import
`Investigations
` Digital Health/MedTech
` Intellectual Property
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`Jacob Z. Zambrzycki is a partner in Crowell & Moring’s New York office with a
`background in computer science. Jacob focuses his practice on intellectual property
`litigation and counseling, and on regulatory counseling with respect to blockchain-based
`technologies. He has been recognized as an intellectual property Rising Star every year
`since 2017 by Super Lawyers magazine.
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`Jacob has litigated and tried numerous intellectual property actions in federal district
`courts around the country and litigated numerous inter partes review proceedings
`before the U.S. Patent and Trademark Office, Section 337 Investigations at the U.S.
`International Trade Commission, and appeals at the U.S. Court of Appeals for the Federal
`Circuit. In his consulting practice, Jacob advises clients regarding protection and
`enforcement of their intellectual property, and provides regulatory and other legal
`advice to companies involved with blockchain technology and digital assets. His clients
`comprise both emerging and Fortune 500 companies spanning various industries,
`including consumer electronics, automotive technologies, railroads, medical devices,
`financial services, cryptocurrencies, electrical fittings, pharmaceuticals, and internet
`technologies.
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`Jacob earned a bachelor’s degree in computer science from Boston College, where he
`focused on software development, and a juris doctor from Brooklyn Law School, where
`he was a Fellow at the Center for the Study of International Business Law.
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`He is a native Polish speaker.
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`Representative Engagements:
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`Represented Respondent DuPont in an ITC Section 337 Investigation related to
`synthetic roof underlayment products in which the Complainant was forced to
`withdraw its Complaint and to move to terminate the Investigation mere days
`after the ALJ issued a claim construction order fatal to Complainant’s
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`Attorney advertising—prior results do not guarantee a similar outcome.
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`Jacob Z. Zambrzycki
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`1
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`
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`case. Certain Synthetic Roofing Underlayment Products and Components Thereof, ITC Inv. No. 337-TA-1202 (U.S.I.T.C.).
`Also representing DuPont and FT Synthetics, Inc. in parallel district court litigation brought by the same plaintiff. Kirsch
`Research and Development, LLC v. DuPont de Nemours, Inc., Case No. 5:20-cv-00057-RWS (E.D. Tex.) and Kirsch Research
`and Development, LLC v. FT Synthetics, Inv., Case No. 5:20-cv-00058 (E.D. Tex.).
`Represented Invenergy, obtaining a preliminary injunction and temporary restraining order preventing the Government
`from reinstating a 25% tariff on imported solar panels. Invenergy Renewables LLC v. U.S. Office of the United States
`Trade Representative, U.S. Customs and Border Protection, No. 19-192 (U.S.C.I.T.).
`Represented Siemens in a wide-ranging, multi-forum intellectual property dispute involving Positive Train Control
`technology, including a jury trial win resulting in a finding of willful infringement and a $15 million damages award, and
`defense of 15 inter partes review petitions before the U.S. Patent and Trademark Office. Siemens Mobility Inc. v.
`Westinghouse Air Brake Technologies, No. 16-cv-284 (D. Del.).
` Defended Breckenridge, through a bench trial, in a Hatch-Waxman patent infringement case concerning Breckenridge’s
`ANDA for a generic version of Kyprolis® (carfilzomib). Onyx Therapeutics, Inc. v. Breckenridge Pharmaceutical, Inc., Nos.
`16-1001, 18-262, and 19-71 (D. Del.).
` Defended Actavis, through a bench trial, in a Hatch-Waxman patent infringement cases concerning Actavis’s ANDA for a
`generic version of Minivelle® (estradiol transdermal system). Noven Pharmaceuticals, Inc. v. Actavis Laboratories UT,
`Inc., Nos. 15-249, 16-465, and 18-758 (D. Del.).
`Represented Spark Networks in a hotly contested patent and trademark infringement action concerning a mobile dating
`application resulting in a favorable settlement and acquisition of defendant.Spark Networks USA, LLC v. Smooch Labs,
`Inc., No. 14-9027 (S.D.N.Y.).
`Represented Arlington, through a bench trial, in a district court contempt proceeding stemming from a prior patent
`infringement suit, resulting in a finding of contempt and an injunction against a direct competitor, and an award of lost
`profits and attorney fees for the patentee. Arlington Industries, Inc. v. Bridgeport Fittings, Inc., No. 2-134 (M.D. Pa.).
` Defended Actavis, through a bench trial, in a Hatch-Waxman district court patent infringement suit related to a generic
`version of Embeda® (morphine sulfate and naltrexone hydrochloride), resulting in stipulation of dismissal after trial.
`Pfizer Inc. et al. v. Actavis Laboratories FL, Inc., No. 11-914 (D. Del.).
`Represented General Motors in an ITC Section 337 Investigation related to automobiles with in-dash GPS navigation
`systems, resulting in termination of the Investigation by the complainant after six months of discovery. Certain
`Automotive GPS Navigation Systems, ITC Inv. No. 337-TA-814 (U.S.I.T.C.).
` Defended Handa and Par, through a bench trial, in a Hatch-Waxman district court patent infringement suit related to a
`generic version of Dexilant® (dexlansoprazole), resulting in a stipulated dismissal while appeal was pending. Takeda
`Pharmaceutical Co., Ltd. et al. v. Handa Pharmaceuticals, LLC and Par Pharmaceutical, Inc., No. 11-840 (N.D. Cal.),
`and Par Pharmaceutical, Inc. and Handa Pharmaceuticals, LLC v. Takeda Pharmaceutical Co., Ltd. et al., No. 13-1927
`(N.D. Cal.).
` Defended Avaya in a patent infringement suit brought by a non-practicing entity against suppliers of network
`communication equipment compliant with the IEEE’s Power Over Ethernet standard. Network-1 Technologies v. Avaya
`et al., No. 6:11-cv-492 (E.D. Tex.).
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`Attorney advertising—prior results do not guarantee a similar outcome.
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`Jacob Z. Zambrzycki
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`2
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`Represented Arlington in a district court patent infringement suit, obtaining a preliminary injunction prohibiting a direct
`competitor from making, using, or selling electrical fittings accused of infringement, and subsequently obtaining a
`summary judgment finding of infringement. (M.D. Pa.).
`Represented complainant Invacare in an ITC Section 337 Investigation related to adjustable-height hospital beds,
`resulting in a Consent Order excluding the accused products from entry into the United States.Certain Adjustable-Height
`Beds, ITC Inv. No. 337-TA-734 (U.S.I.T.C.).
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`Admissions/Affiliations
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`Admitted to Practice: California, New York, North Carolina, U.S. Court of Appeals for the Federal Circuit, U.S. District Courts for
`the Northern and Central Districts of California, U.S. District Court for the Southern District of New York, U.S. District Courts for
`the Western and Middle Districts of North Carolina
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`Memberships
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` New York Intellectual Property Law Association
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`Awards & Recognition
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`2017-2020 Super Lawyers Magazine Rising Star for Intellectual Property in the New York Metro Area
` New York State Bar Association Empire State Counsel
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`Education
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`Boston College, B.A. (2005) computer science
`Brooklyn Law School, J.D. (2009) fellow at the Center for the Study of International Business Law
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`Languages
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`Polish (Fluent)
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`Speaking Engagements
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`"Trade Secret Proceedings at the ITC: Recent Developments Post-TianRui," DuPont & Widener IP CLE, Wilmington, DE
`(October 1, 2013). Presenters: Kathryn L. Clune and Jacob Z. Zambrzycki.
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`Attorney advertising—prior results do not guarantee a similar outcome.
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`Jacob Z. Zambrzycki
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`3
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`Publications
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`"Medical Diagnostic Claims Are Patentable," American Health Lawyers Associations' Life Sciences Practice Group
`publication, Vol. 3, Issue 3 (December 2009). Co-Authors: Kathleen Van De Loo, Jonathan Anastasia, and Jacob
`Zambrzycki.
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`Alerts & Newsletters
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`"Federal Circuit Clarifies the ITC's Domestic Industry Requirement for Licensing Activities, Opening Door for More NPE
`Filings," IP Insights (January 16, 2013). Contacts: Kathryn L. Clune, Jacob Z. Zambrzycki
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`In the News
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`Siemens Train Control Patent Award Boosted To $14.2M
`August 19, 2019 — Law360
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` Arlington Wins $1.4M in Fees in Patent Row with Bridgeport
`June 28, 2016 — Law360
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`Press Releases
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`Crowell & Moring Elects Nine New Partners and Promotes 18 to Counsel Positions (Jan.04.2021)
`Preliminary Injunction Granted Against U.S. Government in Solar Energy Tariff Case (Dec.06.2019)
`Super Lawyers Recognizes 82 Crowell & Moring Lawyers Across United States (Sep.20.2019)
`LITIGATION NOTE: Crowell & Moring Client Siemens Mobility Inc. Awarded $6.7 Million in IP Suit (Jan.25.2019)
`Super Lawyers Recognizes 82 Crowell & Moring Lawyers Across United States (Oct.15.2018)
`Super Lawyers Recognizes 79 Crowell & Moring Lawyers Across United States (Oct.31.2017)
`Crowell & Moring Elects Six New Partners and Promotes Eight Associates to Counsel (Jan.02.2015)
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`Attorney advertising—prior results do not guarantee a similar outcome.
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`Jacob Z. Zambrzycki
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`4
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