`U.S. Patent No. 10,129,825
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`THETA IP, LLC,
`Patent Owner
`
`IPR2024-00817
`U.S. Patent No. 10,129,825
`
`DECLARATION OF COREY JOHANNINGMEIER IN SUPPORT OF
`MOTION FOR PRO HAC VICE ADMISSION
`
`IPR2024-00817
`Theta EX2001
`
`
`
`I, Corey Johanningmeier, being duly sworn and upon oath, hereby attest to
`
`IPR2024-00817
`U.S. Patent No. 10,129,825
`
`
`
`the following:
`
`1.
`
`2.
`
`I am a member in good standing of the Bar of California.
`
`I have never been suspended or disbarred from practice before any
`
`court or administrative body.
`
`3.
`
`I have never been denied an application for admission to practice
`
`before any court or administrative body.
`
`4.
`
`No sanction or contempt citation has ever 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 Title 37,
`
`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 last three (3) years, I have appeared pro hac vice before the
`
`Office in IPR2023-00694, IPR2023-00697, IPR2023-00698, which involved
`
`challenges to patents in the same patent family brought by petitioners Lenovo
`
`(United States) Inc. & Motorola Mobility LLC, and in the following matters
`
`involving patents not related to the family of patents at issue in this proceeding:
`
`IPR2024-00817
`Theta EX2001
`
`
`
`
`IPR2020-00122, IPR2020-00123, IPR2022-00575, IPR2022-00576, IPR2022-
`
`IPR2024-00817
`U.S. Patent No. 10,129,825
`
`
`01283, IPR2021-00076, IPR2021-00077, IPR2022-00792, IPR2024-00667, and
`
`IPR2024-00668, wherein the Board granted my pro hac vice application. I also
`
`filed a pro hac vice application in proceeding IPR2020-00484, which was
`
`terminated before a ruling on my application was made.
`
`8.
`
`I am an experienced litigation attorney having familiarity with the
`
`subject matter at issue in this proceeding. I have been practicing law since 2007
`
`and have extensive experience litigating patent infringement cases in many
`
`different District Courts across the country and in the Federal Circuit, including
`
`participation in multiple trials, Markman hearings, summary judgment
`
`proceedings, and other patent-related hearings and pleadings concerning, inter alia,
`
`patent validity and/or infringement. I have presented and cross-examined
`
`inventors and expert witnesses in patent trials. I have also received professional
`
`recognition in the field of patent litigation, such as invitations to speak and publish
`
`on patent litigation matters, and have been recognized as a “Super Lawyers Rising
`
`Star,” a “Super Lawyer,” and a Managing Intellectual Property “IP STAR.”
`
`9.
`
`I am very familiar with the ’825 Patent and the subject matter at issue
`
`in this inter partes review proceeding. I am one of the primary attorneys in the
`
`pending District Court litigations in Theta IP, LLC v. Motorola Mobility LLC, et
`
`al., Case No. 1:22-cv-03441 (N.D. Ill.) and Theta IP, LLC v. Apple Inc., Case No.
`
`
`
`2
`
`IPR2024-00817
`Theta EX2001
`
`
`
`
`6:23-cv-00314-ADA (W.D. Tex.), in which the ’825 Patent is asserted. I have
`
`IPR2024-00817
`U.S. Patent No. 10,129,825
`
`
`represented Patent Owner against Petitioner in those pending District Court
`
`litigations since their commencement. As counsel in the District Court litigations,
`
`I have, among other things, been extensively involved with analysis of the ’825
`
`Patent, including with respect to validity issues.
`
`10.
`
`In addition, I was one of the primary attorneys representing Theta in
`
`the District Court litigation Theta IP, LLC v. Samsung Electronics Co., Ltd., Case
`
`No. WA:20-cv-00160-AD (W.D. Tex.) in which Theta patents related to the ’825
`
`Patent were asserted, and which included analysis of issues related to prior art and
`
`validity.
`
`11.
`
`I was also principally involved in three IPR proceedings involving the
`
`Theta patent family challenged by Petitioner in this and related proceedings, where
`
`I was admitted pro hac vice: Lenovo (United States) Inc. & Motorola Mobility LLC
`
`v. Theta IP LLC, No. IPR2023-00694 (Patent 7,010,330 B1); Lenovo (United
`
`States) Inc. & Motorola Mobility LLC v. Theta IP LLC, IPR2023-00697 (Patent
`
`10,129,825 B2); Lenovo (United States) Inc. & Motorola Mobility LLC v. Theta IP
`
`LLC, IPR2023-00698 (Patent 10,524,202 B2).
`
`
`
`
`
`
`
`
`
`3
`
`IPR2024-00817
`Theta EX2001
`
`
`
`I declare under penalty of perjury that the foregoing is true and correct.
`
`IPR2024-00817
`U.S. Patent No. 10,129,825
`
`
`
`
`Executed this 5th day of August, 2024, in Oakland, California.
`
`
`
`
`
`
`/s/ Corey Johanningmeier
`Corey Johanningmeier
`
`
`
`4
`
`IPR2024-00817
`Theta EX2001
`
`
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