`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________
`
`APPLE, INC.
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`__________________________________
`
`Case IPR2020-01539
`U.S. Patent 10,588,554
`__________________________________
`
`DECLARATION OF WILLIAM R. ZIMMERMAN
`IN SUPPORT OF PRO HAC VICE MOTION
`
`MASIMO 2002
`Masimo v. Apple
`IPR2020-01539
`
`
`
`I, William R. Zimmerman, declare and state as follows:
`
`1.
`
`I am a partner in the law firm of Knobbe, Martens, Olson & Bear,
`
`LLP. Lead counsel for Patent Owner Masimo Corporation (“Masimo”) in this
`
`inter partes review proceeding is Joseph R. Re, who is also a partner in the law
`
`firm of Knobbe, Martens, Olson & Bear, LLP. Mr. Re is registered to practice
`
`before the United States Patent and Trademark Office and holds Registration No.
`
`31,291. With respect to this proceeding, I will work closely with Mr. Re.
`
`2.
`
`I have approximately 23 years of experience as a patent litigator and
`
`have represented clients in numerous patent litigation cases in various United
`
`States District Courts and the Court of Appeals for the Federal Circuit. I also have
`
`experience in inter partes review proceedings, for example, IPR2013-00024,
`
`IPR2013-00128, IPR2013-00266, IPR2013-00517, IPR2013-00518, IPR2014-
`
`00549,
`
`IPR2014-00550,
`
`IPR2014-01093,
`
`IPR2015-00265,
`
`IPR2015-00268,
`
`IPR2016-00397, IPR2016-00399, IPR2016-00549, IPR2016-00553, IPR2016-
`
`00557,
`
`IPR2016-00559,
`
`IPR2016-01198,
`
`IPR2016-01201,
`
`IPR2017-02172,
`
`IPR2017-02174, IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-
`
`00385,
`
`IPR2018-00795,
`
`IPR2018-00797,
`
`IPR2018-01317,
`
`IPR2019-01201,
`
`IPR2020-000988,
`
`IPR2020-01065,
`
`IPR2020-01125,
`
`IPR2020-01177,
`
`and
`
`IPR2020-01323.
`
`1
`
`
`
`3.
`
`I am comfortable and experienced with technically and legally
`
`complex matters, such as will be present in this proceeding. In particular, I am
`
`experienced with technically and legally complex matters in the field of chemistry
`
`and biotechnology. In addition to my experience with technically and legally
`
`complex patent matters, I hold a Bachelor of Science degree in Chemical
`
`Engineering from the University of Notre Dame. I also served as a law clerk to the
`
`Honorable Alvin A. Schall, Circuit Judge of the United States Court of Appeals for
`
`the Federal Circuit.
`
`4.
`
`I am familiar with U.S. Patent 10,588,554 and with the legal subject
`
`matter, technical subject matter, and cited art discussed in Petitioner Apple, Inc.’s
`
`(“Apple”) request for inter partes review of U.S. Patent 10,588,554, which forms
`
`the basis for this proceeding. In view of my legal experience, technical
`
`background, and familiarity with the issues in the present matter, Masimo has
`
`requested my services in the present matter. Denial of my appearance in this case
`
`would create an undue burden on Patent Owner Masimo.
`
`5.
`
`I am a member in good standing of the Bar of the State of California
`
`and the Bar of the District of Columbia. I am admitted to practice before the
`
`Supreme Court of the United States and before the United States Court of Appeals
`
`for the Federal Circuit.
`
`2
`
`
`
`6.
`
`I have never been suspended or disbarred from practice before any
`
`court or administrative body.
`
`7.
`
`I have never had a court or administrative body deny my application
`
`for admission to practice.
`
`8.
`
`I have never been sanctioned or cited for contempt by any court or
`
`administrative body.
`
`9.
`
`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 Part 42 of Title 37 of
`
`the Code of Federal Regulations.
`
`10.
`
`I agree to be subject to the United States Patent and Trademark Office
`
`Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq., and
`
`disciplinary jurisdiction under 37 C.F.R. § 11.19(a).
`
`11.
`
`In the past three (3) or more years, I have appeared pro hac vice in
`
`proceedings before the United States Patent and Trademark Office in the matter of
`
`Ranbaxy Laboratories Ltd. and Ranbaxy Inc. v. Vertex Pharmaceuticals, Inc.,
`
`IPR2013-00024; in the matters of Intelligent Bio-Systems, Inc. v. Illumina
`
`Cambridge Ltd., IPR2013-00128, IPR2013-00266, IPR2013-00517, and IPR2013-
`
`00518; in the matter of Ariosa Diagnostics, Inc. v. Illumina, Inc., IPR2014-01093;
`
`in the matters of Noven Pharmaceuticals, Inc. and Mylan Pharmaceuticals Inc. v.
`
`Novartis AG and LTS Lohman Therapie-Systeme AG, IPR2014-00549, IPR2014-
`
`3
`
`
`
`00550, IPR2015-00265 and IPR2015-00268; in the matters of Lupin Limited and
`
`Lupin Pharmaceuticals Inc. v. iCeutica Pty Ltd., IPR2016-00397 and IPR2016-
`
`00399; in the matters of Illumina, Inc. v. Cornell Research Foundation, Inc.,
`
`IPR2016-00549, IPR216-00553, IPR2016-00557, and IPR2016-00559; in the
`
`matters of Apple Inc. v. Voip-Pal.com Inc., IPR2016-01198 and IPR2016-01201; in
`
`the matters of Complete Genomics, Inc. v. Illumina Cambridge Ltd., IPR2017-
`
`02172 and IPR2017-02174, in the matters of Illumina, Inc. v. The Trustees of
`
`Columbia University in the City of New York, IPR2018-00291, IPR2018-00318,
`
`IPR2018-00322, IPR2018-00385 and IPR2018-00797; in the matter of Indivior
`
`Inc. v. Rhodes Pharmaceuticals L.P., IPR2018-00795; in the matter of Natera, Inc.
`
`v. Illumina, Inc., IPR2018-01317; in the matter of Illumina, Inc. v. Natera, Inc.,
`
`IPR2019-01201; and in the matters of Illumina, Inc. v. Trustees of Columbia
`
`University in the City of New York, IPR2020-000988, IPR2020-01065, IPR2020-
`
`01125, IPR2020-01177, and IPR2020-01323.1
`
`
`1 I am simultaneously applying for pro hac vice admission in proceedings
`
`before the United States Patent and Trademark Office in the matters of Apple, Inc.
`
`v. Masimo Corp., IPR2020-01520, IPR2020-01536, IPR2020-01537, IPR2020-
`
`01538, and IPR2020-01539.
`
`4
`
`
`
`I declare that all statements made herein of my own knowledge are true and
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`that all statements made on information and belief are believed to be true, and
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`further that these statements were made with the knowledge that willful, false
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`statements and the like so made are punishable by fine or imprisonment, or both,
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`under Section 1001 of Title 18 of the United States Code.
`
`Executed on April 16, 2021, at Washington, DC.
`
`34791491
`
`William R. Zimmerman
`
`