`
`APPLE INC.,
`Petitioner
`
`v.
`
`ALIVECOR, INC.,
`Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2021-00971
`Patent 10,595,731
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`DECLARATION OF NOAH C. GRAUBART IN SUPPORT OF
`PETITIONER’S UNOPPOSED MOTION FOR PRO HAC VICE
`ADMISSION
`
`
`
`
`
`
`APPLE 1059
`Apple v. Alivecor
`IPR2021-00971
`
`1
`
`
`
`I, Noah C. Graubart, hereby declare to the following:
`
`Proceeding No.: IPR2021-00971
`Attorney Docket: 50095-0033IP1
`
`
`1.
`
`I am a member in good standing of the State Bar of Georgia, the
`
`Supreme Court of Georgia, Court of Appeals of Georgia, the Supreme Court of the
`
`United States, the U.S. Courts of Appeals for the Second, Fifth, Ninth, Eleventh,
`
`and Federal Circuits, the U.S. District Court for the District of Colorado, the U.S.
`
`District Court for the Middle and Northern Districts of Georgia, and the U.S.
`
`District Court for the Eastern and Western Districts of Texas.
`
`2.
`
`I have not 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, subject to two exceptions. Specifically, in two
`
`instances, my application to appear pro hac vice in the Northern District of
`
`California was denied initially based on inadvertent omission of required
`
`information (i.e., a specific identification of “the highest court of another State” to
`
`which I am admitted). Straight Path IP Group, Inc. v. Avaya Inc., No. 3:14-
`
`cv04309-WHA, Dkt. No. 16 (N.D. Cal. Oct. 30, 2014); Straight Path IP Group,
`
`Inc. v. Avaya Inc., No. 3:16-cv-03459-WHA, Dkt. No. 19 (N.D. Cal. July 19,
`
`2016). In both instances, my application to appear pro hac vice was subsequently
`
`granted after re-submission with the required information. Straight Path IP Group,
`
`Inc. v. Avaya Inc., No. 3:14-cv-04309-WHA, Dkt. No. 20 (N.D. Cal. Oct. 31,
`
`
`
`
`
`2
`
`
`
`2014); Straight Path IP Group, Inc. v. Avaya Inc., No. 3:16-cv-03459-WHA, Dkt.
`
`Proceeding No.: IPR2021-00971
`Attorney Docket: 50095-0033IP1
`
`
`No. 23 (N.D. Cal. July 26, 2016).
`
`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 part 42 of the Code
`
`of Federal Regulations.
`
`6.
`
`I will be subject to the USPTO 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).
`
`7.
`
`In the past three years, I have applied for and received admission pro
`
`hac vice in IPR2018-01250, IPR2018-01251, IPR2018-01280 and IPR2018-01281.
`
`8.
`
`I am an experienced patent litigation attorney with over sixteen years
`
`of experience representing clients in cases involving smartphone software, audio
`
`and video processing, telecommunications solutions, wireless networking, optical
`
`networking, computer hardware interfaces, and semiconductor fabrication
`
`methods. I regularly litigate patent cases before the U.S. District Courts across the
`
`country, at the U.S. International Trade Commission, as well as arguing or briefing
`
`cases in the U.S. Courts of Appeals, including at the Federal Circuit.
`
`
`
`
`
`3
`
`
`
`I am intimately familiar with the issues and subject matter presented
`
`Proceeding No.: IPR2021-00971
`Attorney Docket: 50095-0033IP1
`
`
`9.
`
`in this above-captioned inter partes review proceeding. For example, I have
`
`extensively reviewed the above identified patent, its prosecution history, the
`
`Petition for IPR (including the invalidity grounds therein, and the cited references),
`
`and all exhibits filed in this case.
`
`10. My biography is attached hereto as Appendix A.
`
`11.
`
`I hereby declare that all statements made herein of my own
`
`knowledge are true and that all statements made on information and belief are
`
`believed to be true; and further 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 Title 18 of the United States Code
`
`and that such willful false statements may jeopardize the validity of the application
`
`or any patents issued thereon.
`
`
`
`
`
`Date: March 9, 2022
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`/Noah C. Graubart/
`NOAH C. GRAUBART
`Fish & Richardson P.C.
`Email: Graubart@fr.com
`
`
`
`
`
`
`
`4
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`APPENDIX A
`APPENDIX A
`
`5
`
`
`
`Noah C. Graubart
`Principal
`
`Atlanta, GA
`
`404-724-2820
`
`“He just gets it, he knows exactly what | need. He’s responsive, pragmatic and he really breaksit
`downin an easily digestible manner.”
`
`— Client testimonials, 2019 Chambers and Partners
`
`Overview
`
`
` ÿÿ
`
`
ÿ
`graubart@fr.com
`
`
`
` ÿ! "ÿ "ÿ ÿ ÿ# $"ÿ %&ÿ$ ÿ'ÿ (ÿ )"ÿ " " * ÿ ÿ(ÿ ÿ &ÿ
` #"ÿ
`
`( $ÿ ÿÿ " &ÿ( "
` ÿ +
`B* * $
`,ÿ./0123ÿ3143056207/48ÿ9:;<ÿ.=75>1?4ÿ72@ÿA7?321?4
`CDEFGÿIEJK
` ÿÿ
`ÿ "ÿÿ ( ÿ ÿL " )"ÿÿ ÿ$ ÿ ("ÿ %ÿ ÿ ÿ(
` ÿ ÿ &ÿ" "ÿ ÿ" ÿ ÿ ÿ$ ()"ÿ "ÿ ÿ &ÿ "ÿ
` ÿ &ÿ " "ÿ "ÿ ÿMNÿO " ÿ "ÿ ""ÿ ÿ &ÿÿ ÿMNÿ'
`P( ÿ "" ÿ ÿ ÿMNÿ "ÿ ÿ "ÿ ( ÿÿ ÿL ( ÿ
` )"ÿ ÿ ( "ÿ % ÿ$ ÿÿ( * " ÿ ÿ ÿ ÿ &ÿ ÿ ( ÿ" "
` * * ÿ" ÿ" $ ÿ ( ÿ(ÿ* ( ÿ "" ÿ "ÿ" "ÿ$ ""
` $ # ÿ ÿ $ # ÿ ÿ ($ ÿ "ÿ(ÿ" ( ÿ
`
`
` ("
` ÿ" * "ÿ"ÿ ÿÿ )"ÿA?6ÿQ626ÿ ( ÿ(ÿ "ÿ * &ÿ * * (ÿ ÿ "ÿR?6ÿ
`>626ÿ " "ÿÿ )"ÿR?6ÿ>626ÿ ÿ "ÿ ( (ÿ "ÿ " * ÿ ( "ÿ ÿ"
`(ÿ ( ÿ ÿ ( ÿ" * ÿ( ÿ &ÿ" "ÿÿ ÿ"" " (ÿ ÿ
` ÿ ÿ
`N ÿ ÿ ÿS ÿÿ * "ÿ(ÿ $ÿ" ÿ ÿ ÿÿ ÿ ÿÿ( ÿ"
`ÿ ÿ" * "ÿ ÿ ÿT (ÿ ÿO "ÿ ÿ ÿP %"ÿO ( ÿN * ÿ(ÿ"ÿÿ
` ÿ ÿ ÿ
`(* " &ÿ ÿ ÿU ("ÿ ÿ (ÿ ÿO " ÿVU' OW
`
`graubart@fr.com
`
`
`
` ÿ! "ÿ "ÿ ÿ ÿ# $"ÿ %&ÿ$ ÿ'ÿ (ÿ )"ÿ " " * ÿ ÿ(ÿ ÿ &ÿ
` #"ÿ
`
`( $ÿ ÿÿ " &ÿ( "
` ÿ +
`B* * $
`,ÿ./0123ÿ3143056207/48ÿ9:;<ÿ.=75>1?4ÿ72@ÿA7?321?4
`CDEFGÿIEJK
` ÿÿ
`ÿ "ÿÿ ( ÿ ÿL " )"ÿÿ ÿ$ ÿ ("ÿ %ÿ ÿ ÿ(
` ÿ ÿ &ÿ" "ÿ ÿ" ÿ ÿ ÿ$ ()"ÿ "ÿ ÿ &ÿ "ÿ
` ÿ &ÿ " "ÿ "ÿ ÿMNÿO " ÿ "ÿ ""ÿ ÿ &ÿÿ ÿMNÿ'
`P( ÿ "" ÿ ÿ ÿMNÿ "ÿ ÿ "ÿ ( ÿÿ ÿL ( ÿ
` )"ÿ ÿ ( "ÿ % ÿ$ ÿÿ( * " ÿ ÿ ÿ ÿ &ÿ ÿ ( ÿ" "
` * * ÿ" ÿ" $ ÿ ( ÿ(ÿ* ( ÿ "" ÿ "ÿ" "ÿ$ ""
` $ # ÿ ÿ $ # ÿ ÿ ($ ÿ "ÿ(ÿ" ( ÿ
`
`
` ("
` ÿ" * "ÿ"ÿ ÿÿ )"ÿA?6ÿQ626ÿ ( ÿ(ÿ "ÿ * &ÿ * * (ÿ ÿ "ÿR?6ÿ
`>626ÿ " "ÿÿ )"ÿR?6ÿ>626ÿ ÿ "ÿ ( (ÿ "ÿ " * ÿ ( "ÿ ÿ"
`(ÿ ( ÿ ÿ ( ÿ" * ÿ( ÿ &ÿ" "ÿÿ ÿ"" " (ÿ ÿ
` ÿ ÿ
`N ÿ ÿ ÿS ÿÿ * "ÿ(ÿ $ÿ" ÿ ÿ ÿÿ ÿ ÿÿ( ÿ"
`ÿ ÿ" * "ÿ ÿ ÿT (ÿ ÿO "ÿ ÿ ÿP %"ÿO ( ÿN * ÿ(ÿ"ÿÿ
` ÿ ÿ ÿ
`(* " &ÿ ÿ ÿU ("ÿ ÿ (ÿ ÿO " ÿVU' OW
`
ÿ ÿ!
ÿ ÿ
ÿ ÿ" * (ÿ"ÿÿ$ÿ #ÿ ÿ ÿ
` ÿX &ÿYÿN ÿ ÿ ÿM (
`
`Noahservesasthe Atlanta office’s Pro Bono Coordinatorandis actively involved in numerous pro
`bono causes. Noah'spro bonopractice has included numerouspost-conviction proceedingsin state
`and federal court, including several death penalty cases. Noahassisted in obtaining from the
`Supreme Court of Virginia a reversal and new sentencing hearing for a client facing a death sentence.
`He serves on the Board of Directors for the Texas Defender Service and as a member ofthe Atlanta
`Advisory Committee of Kids in Need of Defense (KIND).
`
`About Noah
`
`Noah C. Graubart is a co-founderof Fish’s Atlanta office, who leads complex patentlitigation and
`otherintellectual property cases for some of the world’s most prominent technology companies.
`Noah regularly represents clients in U.S. District Courts across the country, at the U.S. International
`Trade Commission, in the U.S. Courts of Appeals, including at the Federal Circuit.
`
`Noah’s practice includes experience with a diverse range of high technologylitigation, including cases
`involving smartphonesoftware, audio and video processing, telecommunications solutions, wireless
`networking, optical networking, computer hardware interfaces, and semiconductorfabrication
`methods.
`
`Prior to joining the firm, Noah served asa law clerk for the Honorable Jerry E. Smith of the United
`
`6
`
`
` ÿX &ÿYÿN ÿ ÿ ÿM (
`
`Noahservesasthe Atlanta office’s Pro Bono Coordinatorandis actively involved in numerous pro
`bono causes. Noah'spro bonopractice has included numerouspost-conviction proceedingsin state
`and federal court, including several death penalty cases. Noahassisted in obtaining from the
`Supreme Court of Virginia a reversal and new sentencing hearing for a client facing a death sentence.
`He serves on the Board of Directors for the Texas Defender Service and as a member ofthe Atlanta
`Advisory Committee of Kids in Need of Defense (KIND).
`
`About Noah
`
`Noah C. Graubart is a co-founderof Fish’s Atlanta office, who leads complex patentlitigation and
`otherintellectual property cases for some of the world’s most prominent technology companies.
`Noah regularly represents clients in U.S. District Courts across the country, at the U.S. International
`Trade Commission, in the U.S. Courts of Appeals, including at the Federal Circuit.
`
`Noah’s practice includes experience with a diverse range of high technologylitigation, including cases
`involving smartphonesoftware, audio and video processing, telecommunications solutions, wireless
`networking, optical networking, computer hardware interfaces, and semiconductorfabrication
`methods.
`
`Prior to joining the firm, Noah served asa law clerk for the Honorable Jerry E. Smith of the United
`
`6
`
`
`
`States Court of Appeals for the Fifth Circuit.
`
`Noahlives in Atlanta, Georgia, with his wife of sixteen years, Emily, and their three children.
`
`Focus Areas
`
`Services
`
`e Litigation
`
`e ITC Litigation
`
`e Patent Litigation
`
`Industries
`
`e ConsumerProducts
`
`¢ Digital Media and E-Commerce
`
`e Electrical and Computer Technology
`
`e Internet
`
`e Manufacturing
`
`e Telecommunications
`
`Education
`
`B.A., Political Science, Northwestern University (2001)
`
` ÿ ÿ
`ÿ
ÿ
` ÿ ÿ
` ÿ
`ÿ ÿÿ ÿ ÿ ÿÿ
` ÿ
`ÿ ÿ ÿ ÿÿ ÿ ÿ
`ÿ
`
` !"#$ %&
`'(ÿ&
`*+,-%.!# %
`) ÿ&
` ÿ)
`/ ÿ0 ÿÿ1
`
` ÿÿ
` ÿ ÿ
` ÿ
`ÿ ÿÿ ÿ ÿ ÿÿ
` ÿ
`ÿ ÿ ÿ ÿÿ ÿ ÿ
`ÿ
`
` !"#$ %&
`'(ÿ&
`*+,-%.!# %
`) ÿ&
` ÿ)
`/ ÿ0 ÿÿ1
`
` ÿÿ
ÿ(
`'
`0
`
`(
`
`2/ÿ3456ÿ6898:;<ÿ=:>?:ÿ8@ÿ56?ÿA84@ÿÿB ÿ
`ÿÿ&ÿ ÿCDEEFGÿ0 H ÿI94J?:;45Kÿ8@ÿ
`A64LMN8ÿOM3ÿP?J4?3
`
`'
`0
`
`(
`
`2/ÿ3456ÿ6898:;<ÿ=:>?:ÿ8@ÿ56?ÿA84@ÿÿB ÿ
`ÿÿ&ÿ ÿCDEEFGÿ0 H ÿI94J?:;45Kÿ8@ÿ
`A64LMN8ÿOM3ÿP?J4?3
`
`Qÿ) ÿ ÿ ÿB ÿCDEERG
`ST. +.ÿ*+V!#+W X +.ÿYT% %
`Z4:?[?;;ÿ\4;L8J?:KÿOOAÿJ]ÿ^_`a[?ÿb:M>49NÿOOA<ÿ?5ÿM[]ÿCc/ÿ( ÿDEDEGÿC H ÿ2Gdÿÿ ÿ
`
`QH ÿÿ
ÿ
` ÿ ÿ ÿ ÿ ÿ ÿ
` ÿ ÿ ÿ ÿ ÿ ÿ
ÿÿ
1H ÿ
`
`J.D. with honors, Orderof the Coif , University of Chicago Law School (2004) Member,University of
`Chicago Law Review
`
`Experience
`
`
`
`Patent Infringement Cases
`
`Wireless Discovery LLC v. Bumble Trading LLC,et al. (W.D. Tex. 2020) (Albright, J.): Counsel for
`Bumble in patent infringement caserelated to online dating applications and location-based social
`
`7
`
`
`
`J.D. with honors, Orderof the Coif , University of Chicago Law School (2004) Member,University of
`Chicago Law Review
`
`Experience
`
`
`
`Patent Infringement Cases
`
`Wireless Discovery LLC v. Bumble Trading LLC,et al. (W.D. Tex. 2020) (Albright, J.): Counsel for
`Bumble in patent infringement caserelated to online dating applications and location-based social
`
`7
`
`
`
`networking technology.
`
`Ikorongo Texas LLC,et al. v. Bumble Trading LLC (W.D. Tex. 2020)(Albright, J.): Counsel for
`Bumble in patent infringement case concerning online dating application and location-sharing
`technology.
`
`Clear Imaging Research, LLC v. SamsungElectronics Co., Ltd., et al. (E.D. Tex. 2019) (Gilstrap, J.):
`Counsel for Samsungin patent infringement case concerning digital photography software.
`
`adv. SEVEN Networks LLC (E.D. Tex. 2019) (Gilstrap, J.): Counsel for large electronics supplier in a
`patent dispute involving mobile device and cloud services technologies.
`
`Realtime Adaptive Streaming LLC v. AVAYA, Inc. (D. Colo. 2018) (Brimmer, J.): Counsel for AVAYA
`in patent infringementlitigation related to AV compression standards.
`
` ÿ
`
`ÿÿÿÿ ÿ! ÿ"#$%ÿ&'ÿÿ()*ÿ+ ,ÿ-.-./ÿ(0
12ÿ3/4ÿÿ56 7
ÿ8
`96:1
`96:1
ÿ ÿ;< ÿ 8 : ÿ
`<7 ÿ
`
` ÿ
`<7 ÿ
`
` ÿ
ÿ=< ÿ<;;
`< ÿ<