Case 2:15-cv-01274-JRG-RSP Document 143-1 Filed 09/12/16 Page 1 of 8 PageID #: 4597
`Case 2:l5—cv—Ol274—JRG—RSP Document 143-1 Filed 09/12/16 Page 1 of 8 Page|D #: 4597
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`EXHIBIT A
`EXHIBIT A
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`Case 2:15-cv-01274-JRG-RSP Document 143-1 Filed 09/12/16 Page 2 of 8 PageID #: 4598
`Case 2:15—cv—O1274—JRG—RSP Document 143-1 Filed 09/12/16 Page 2 of 8 Page|D #: 4598
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE EASTERN DISTRICT OF TEXAS
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`MARSHALL DIVISION
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`BLITZSAFE TEXAS, LLC,
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`Plaintiff,
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`v.
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`Civil Action No. 2:15-cv-01274-JRG-RSP
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`HONDA MOTOR CO., LTD. ET AL
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`(LEAD CASE)
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`Defendants.
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`JURY TRIAL DEMANDED
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`BLITZSAFE TEXAS, LLC,
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`Plaintiff,
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`v.
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`Civil Action No. 2:15-cv-01277-JRG-RSP
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`TOYOTA MOTOR CORPORATION ET AL
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`(CONSOLIDATED CASE)
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`Defendants.
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`JURY TRIAL DEMANDED
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`DECLARATION OF MATTHEW G. BERKOWITZ
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`1)
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`1, Matthew G. Berkowitz, make this declaration in connection with the case captioned
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`Blitzsafe Texas, LLC v. Toyota Motor Corp et a1., 2:15-cv-01277-JRG-RSP (E.D. Tex)
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`(“Blitzsafe matter” or “Blitzsafe case”).
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`2)
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`I am currently a partner with the law firm of Shearman & Sterling LLP (“Shearman”). I
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`joined Shearman on November 9, 2015. I also currently have a part-time role as a seconded
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`attorney at Toyota Motor Sales, U.S.A., Inc. (“TMS”).
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`I have held this secondment position
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`since December 2015.
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`3)
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`Prior to joining Shearrnan, I was a partner at the law firm of Kenyon & Kenyon LLP
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`(“Kenyon”). I was a partner at Kenyon effective from January 1, 2014 through November 6,
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`2015. Prior to being promoted to partner at Kenyon, I held the title of Associate.
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`I held this title
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`from September 2005 through the end of 2013.
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`4)
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`While at Kenyon, I represented Toyota entities in numerous patent infringement
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`litigations. I also represented Toyota in many inter partes review (“IPR”) proceedings. The
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`patent litigation matters in which I represented one or more Toyota entities included at least the
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`following:
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`'
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`Signal IP Inc. V. Toyota North America, 2:15—cv-05162 (C.D. Cal.);
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`° American Vehicular Sciences V. Toyota Motor Corp., et al., 8:15—cv-01391 (C.D. Cal.);
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`° American Vehicular Sciences V. Toyota Motor Corp., et al., No. 6:12-cV-00404 (E.D.
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`Tex.);
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`° American Vehicular Sciences V. Toyota Motor Corp., et al., No. 6:12-cv-00405 (E.D.
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`Tex.);
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`° American Vehicular Sciences V. Toyota Motor Corp., et al., No. 6:12-cV-00406 (E.D.
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`Tex.);
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`° American Vehicular Sciences V. Toyota Motor Corp., et al., No. 6:12-cV-00407 (E.D.
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`Tex.);
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`° American Vehicular Sciences V. Toyota Motor Corp., et al., No. 6:12-cV-00408 (E.D.
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`Tex.);
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`° American Vehicular Sciences V. Toyota Motor Corp., et al., No. 6:12-cV—00409 (E.D.
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`Tex.);
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`° American Vehicular Sciences V. Toyota Motor Corp., et al., No. 6:12-cv-00410 (E.D.
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`Tex.);l
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`°
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`Fernandez V. Toyota Motor Corp., et al. 2:11-cv-09605 (C.D. Cal.).
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`' Affinity Labs of Texas, LLC V. Toyota Motor North America, Inc. et al., 6:13-cv-00365
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`(W.D. Tex.)
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`°
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`Joao Control and Monitoring Systems of California LLC V. ACTI Corp. Inc. et al. (8:10-
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`cv-1909 (C.D. Cal.)
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`°
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`In re Hybrid Electric Vehicles and Components Thereof, Inv. No. 337-TA-688
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`5)
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`I am familiar with Kenyon’s representation of Toyota entities in these matters until the
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`time that I left the firm, including the Kenyon team that worked on those matters, and the
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`communications to and from Toyota regarding those matters. I also have familiarity with certain
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`billing records of attorneys working on Toyota patent litigation matters.
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`6)
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`Vincent Rubino was employed by Kenyon as an associate attorney from 2007 until at
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`least late summer 2015.
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`7)
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`During the course of his employment at Kenyon, Mr. Rubino represented Toyota in
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`several patent litigations, including the AVS matters.
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`8)
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`In two of the AVS matters, aspects of Toyota’s Entune and Enform technology were
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`accused of patent infringement. In particular, American Vehicular Sciences V. Toyota Motor
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`Corp., et al., No. 6:12-cv-00404 (E.D. Tex.) (“the -404 case”) and American Vehicular Sciences
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`1 The cases against American Vehicular Sciences that were filed in the District Court for the Eastern
`District of Texas may be collectively referred to as the “AVS matters.” Certain of these cases were
`transferred to the District Court for the Eastern District of Michigan in July 2014, approximately two
`years after the cases were filed. Toyota filed 14 IPR petitions challenging the validity of patents
`asserted in the various AVS matters.
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`

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`V. Toyota Motor Corp., et al., No. 6:12-cv-00405 (E.D. Tex.) (“the -405 case”) involved
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`allegations that aspects of Entune and Enform technology infringed patents purportedly owned
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`by AVS.
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`9)
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`I understand that Exhibit 1 is a copy of Vincent Rubino’s billing records from Kenyon for
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`various Toyota matters. See September 9, 2016 Declaration of Kathleen Deering.
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`10)
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`As reflected in Exhibit 1, since 2013, Mr. Rubino billed more than 1500 hours to various
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`Toyota litigation matters. A significant proportion of those 1500 hours were spent working on
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`one or more of the AVS matters.
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`11)
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`On a typical patent litigation matter for Toyota, all attorneys on the Kenyon team were
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`privy to, and expected to be familiar with, client communications. On a typical patent litigation
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`for Toyota, Kenyon would create an email list serv that included the email addresses of all team
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`members. This email list serv was copied on nearly all (if not all) emails exchanged with
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`Toyota. This approach was used on the AVS matters.
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`12)
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`Internally, Kenyon team members working on a Toyota patent litigation typically used
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`the group email list serv on all significant internal correspondence, including case strategy
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`emails. This approach was used on the AVS matters.
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`13)
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`During the course of his work on Toyota matters, Mr. Rubino was privy to, and
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`participated in, numerous highly-sensitive and privileged communications with Toyota.
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`14)
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`Mr. Rubino was privy to a Kenyon email to Toyota shortly after the filing ofB1itzsafe’s
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`complaint in the instant case, in which Kenyon commented on Blitzsafe, its prior litigation
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`history, and the patents-in-suit. See Exhibit 2.
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`15)
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`Mr. Rubino participated significantly in the AVS matters. Exhibit 3 is an email
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`indicating that Mr. Rubino’s email address was added to the Kenyon email list serv for the AVS
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`matters (~~Toyota v. AVS 77610/211) on February 20, 2013 at 12:38pm Eastern Time. Any
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`email sent to that email list serv after February 20, 2013 was received by Mr. Rubino, up until
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`the day that he left Kenyon. Mr. Rubino received thousands of confidential emails to or from
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`Toyota relating to one or more of the AVS matters.
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`16)
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`Mr. Rubino was involved with reviewing and logging privileged Toyota documents in the
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`various AVS matters, including documents relating to the -404 and -405 cases involving
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`accusations against aspects of Toyota’s Entune and Enform technology. An email attached as
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`Exhibit 4 reflects an email from Mr. Rubino to the Toyota email list serv for the AVS matters
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`distributing an internal draft of the privilege log that he had worked on. The reference to AVS 1
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`and 2 in the email reflects internal designations for the -404 case and the -405 case, respectively.
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`The privileged documents that are the subject of the privilege log circulated by Mr. Rubino
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`include multiple communications to or from Brian Inouye and/or Satoshi Hata. See Exhibit 5.
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`Mr. Rubino also had specific communications with other Kenyon attorneys about logging
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`privileged documents to or from Mr. Satoshi Hata and Mr. Brian Inouye. See Exhibit 6.
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`17)
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`Mr. Rubino was also privy to Toyota’s general strategy regarding whether and when to
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`file IPR petitions, and the various risks and rewards associated with filing IPRs. As one
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`example, attached as Exhibit 7 is a presentation made by Kenyon to Toyota regarding such
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`strategies for IPR proceedings, as well as specific assessments of the risks and rewards of
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`challenging the patents asserted against Entune and Enfonn systems in the -404 and -405 AVS
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`cases. Mr. Rubino received this presentation, as reflected in Exhibit 8.
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`18)
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`During the course of the AVS matters, I interviewed many potential Toyota witnesses to
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`assess their knowledge base and evaluate potential trial witnesses. Ipersonally distributed a
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`memorandum, attached as Exhibit 9, to the entire Kenyon team, including Mr. Rubino, reflecting
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`my evaluation of those witnesses. One of the witnesses evaluated in the memorandum was Mr.
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`Satoshi Hata. Other evaluated witnesses had knowledge related to aspects of Entune and Enform
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`technology. Mr. Rubino received this memorandum (both via the email list serv and by separate
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`copy to his direct email address). See Exhibit 10.
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`19)
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`During the course of Kenyon’s work on the AVS matters, attorneys interviewed many
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`potential expert witnesses. Attached as Exhibit 11 is a memorandum I sent to Toyota, reflecting
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`Kenyon’s impressions of potential expert witnesses. Some of these potential experts were being
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`considered for testimony relating to aspects of Entune and Enform technology. Mr. Rubino
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`received this memo, which was attached to an email commenting on various experts. See
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`Exhibit 12.
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`20)
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`Kenyon had discussions with Toyota during the course of the AVS matters regarding
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`general settlement strategy in patent cases and the effect of institution and final IPR decisions on
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`that settlement strategy. Mr. Rubino was privy to these discussions, as shown, for example, in
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`Exhibits 13-19 and 28.
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`21)
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`Kenyon had discussions with Toyota about Judge Folsom’s mediation practices and
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`tactics (Judge Folsom was the mediator in the AVS matters). Mr. Rubino was privy to these
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`discussions, as shown in, for example, Exhibits 20-21.
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`22)
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`Kenyon had strategy discussions with Toyota during the course of the AVS matters
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`regarding local strategies to be employed in the District Courtlfor the Eastern District of Texas,
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`Case 2:15-cv-01274-JRG-RSP Document 143-1 Filed 09/12/16 Page 8 of 8 PageID #: 4604
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`including summary judgment strategy, and the pros and cons of moving to stay pending IPR
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`proceedings. Mr. Rubino was privy to these strategy discussions, as shown, for example, by
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`Exhibits 22-25.
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`23)
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`During the course of the AVS matters, Kenyon provided Toyota with advice regarding
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`potential recovery of fees under 35 U.S.C. § 285. Mr. Rubino was privy to this advice, as shown
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`by Exhibit 26.
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`24)
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`During the course of the AVS matters, Toyota provided its comments to Kenyon
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`regarding its relationship with its suppliers, the potential for supplier indemnification, and how
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`its discussions with suppliers affect its settlement strategy. One of the suppliers in the AVS
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`cases that was the subject of such Toyota comments was Denso. See Exhibits 27-28.
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`25) Working under my direction, Mr. Rubino had responsibility for Toyota’s IPR petitions
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`relating to patents asserted in the -406 and -410 AVS cases. Mr. Rubino was privy to, and
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`participated in, Toyota’s IPR strategy for those matters. In connection with his responsibilities,
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`Mr. Rubino was also privy to, and participated in, significant strategy discussions relating to
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`Toyota’s general approach to invalidity arguments, including ex parte reexamination requests,
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`additional IPR petitions, and IPR joinder motions.
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`26)
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`Toyota was not aware that Mr. Rubino might be working on the Blitzsafe matter until
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`August 2016.
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`I declare under penalty of perjury that the foregoin
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`d correct.
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`Matthew G. Berkowitz
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`Executed on this date:
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`9;‘ l3-/Ié