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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`Kevin E. Gilpin
`In re Patent of:
`6,836,766 Attorney Docket No.: 49335-0002IP1
`U.S. Patent No.:
`December 28, 2004 Case No. IPR2021-01055
`
`Issue Date:
`Appl. Serial No.: 09/773,101
`
`Filing Date:
`January 31, 2001
`
`Title:
`RULE BASED CONFIGURATION ENGINE FOR A DATABASE
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`DECLARATION OF DR. JEFFREY SHNEIDMAN IN SUPPORT OF
`CONFIGIT A/S MOTION FOR PRO HAC VICE ADMISSION
`
`

`

`
`
`1
`
`CONFIGIT 1052
`Configit A/S v. Versata Dev. Grp.
`IPR2021-01055
`
`
`
`

`

`
`

`
`

`

`Proceeding No.: IPR2021-01055
`Attorney Docket: 49335-0002IP1
`
`
`I, Jeffrey Shneidman, hereby attest to the following:
`

`
`
`
`1.
`
`I am a litigation attorney with the law firm of Fish & Richardson P.C. I
`
`represent Configit A/S (“Configit”).
`
`2.
`
`I am a member in good standing of the State Bar of Massachusetts and have
`
`been since 2011. My Massachusetts State Bar number is 681612. I have practiced
`
`before multiple federal courts, and am admitted to practice in the United States
`
`District Court for the District of Massachusetts and the United States District Court
`
`for the Eastern District of Michigan, the U.S. Court of Appeals for the Sixth Circuit,
`
`and the U.S. Court of Appeals for the Federal Circuit.
`
`3.
`
`I have not been suspended or disbarred from practice before any court or
`
`administrative body.
`
`4.
`
`I have never had an application for admission to practice before any court or
`
`administrative body denied.
`
`5.
`
`No sanction or contempt citation has been imposed against me by any court
`
`or administrative body.
`
`6.
`
`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 32.
`

`

`

`2 
`
`
`
`

`

`I will be subject to the USPTO Rules of Professional Conduct set forth in 37
`
`Proceeding No.: IPR2021-01055
`Attorney Docket: 49335-0002IP1
`

`7.
`
`C.F.R. §§ 11.101 et seq. and disciplinary jurisdiction under 37 C.F.R. § 11.19(a).
`
`8.
`
`I am an experienced litigation attorney who has represented clients in patent
`
`litigation cases involving computer science including patents such as the subject
`
`matter at issue in this inter partes review. For example, I have represented clients
`
`in such computer science patent litigation proceedings in: ByteDance Inc. v. Triller,
`
`Inc., 20-cv-07572 (N.D. Cal.); American Well Corp. v. Teladoc, Inc., 15-cv-12274,
`
`Carl Zeiss AG v. Nikon Inc., 17-cv-07083 (C.D. Cal.); and Carl Zeiss AG v. Nikon
`
`Inc., 337-TA-1059 (I.T.C.). I regularly litigate such cases as part of my practice at
`
`Fish & Richardson, P.C.
`
`9.
`
`Prior to my career as a lawyer, I trained as an electrical engineer and computer
`
`scientist, and have scientific and technical knowledge related to the patent in this
`
`inter partes review. I received my B.S. in Electrical Engineering and Computer
`
`Science from the University of California at Berkeley in 1999, and my Ph.D. in
`
`Computer Science from Harvard University in 2008.
`
`10.
`
`I am intimately familiar with the issues and subject matter presented 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.

`

`

`3 
`
`
`
`

`


`11. Configit has identified me in Petitioner’s Power of Attorney as one of the
`
`Proceeding No.: IPR2021-01055
`Attorney Docket: 49335-0002IP1
`
`attorneys that Configit would like to represent Configit in this inter partes review.
`
`See Paper 1.
`
`12. Within the past three years, I have applied for and been granted leave to appear
`
`pro hac vice in IPR2017-00114, filed August 30, 2017 (Paper 20) granted November
`
`13, 2017 (Paper 26); IPR2020-01567, filed October 1, 2020 (Paper 8), granted
`
`January 19, 2021 (Paper 11); IPR2020-01568,  filed October 1, 2020 (Paper 6),
`
`granted January 19, 2021 (Paper 9); IPR2020-01570, filed October 1, 2020 (Paper
`
`7), granted January 19, 2021 (Paper 10) and IPR2020-01571, filed October 1, 2020
`
`(Paper 6), granted January 19, 2021 (Paper 9).
`
`13.
`
`I hereby declare that all statements made herein of my own knowledge are
`
`true, all statements made herein 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 are punishable by fine or imprisonment, or both, under 35
`
`U.S.C. § 1001.
`
`
`

`

`

`4 
`
`
`
`

`


`
`
`
`Date: October 13, 2021
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Proceeding No.: IPR2021-01055
`Attorney Docket: 49335-0002IP1
`
`Respectfully submitted,
`
`
`
`By: /Jeffrey A. Shneidman/
`Jeffrey A. Shneidman
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`T: 617-542-5070
`F: 877-769-7945
`Email: shneidman@fr.com
`
`
`
`
`
`
`
`
`
`
`

`

`

`5 
`
`
`
`

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