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`IPR2018-00437
`U.S. Patent No. 9,537,071
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
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`VIZIO, INC.,
`Petitioner,
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`v.
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`NICHIA CORPORATION
`Patent Owner.
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`______________________
`
`Case IPR2018-00437
`Patent 9,537,071
`______________________
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`PETITIONER’S OBJECTIONS TO EXHIBITS SUBMITTED WITH
`PATENT OWNER’S RESPONSE AND CONTINGENT MOTION TO
`AMEND CLAIMS
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`Pursuant to 37 C.F.R. § 42.64(b)(1), Petitioner Vizio, Inc. (“Petitioner”)
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`IPR2018-00437
`U.S. Patent No. 9,537,071
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`hereby submits the following objections to Patent Owner Nichia Corporation’s
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`(“Patent Owner”)’s Exhibits 2008-2010 and 2019-2020 and any reference to or
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`reliance on them, without limitation. Petitioner’s objections below apply the
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`Federal Rules of Evidence (“F.R.E.”). These objections address evidentiary
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`deficiencies in the material submitted by Patent Owner with its Response and
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`Contingent Motion to Amend Claims on September 18, 2018.
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`To the extent Patent Owner does not cite these Exhibits or to paragraphs of
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`its witness declarations (Exhibits 2008 and 2019) in its Patent Owner Response or
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`Contingent Motion to Amend Claims, permitting reference to or reliance on these
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`Exhibits and paragraphs in other submissions of Patent Owner would be
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`impermissible, misleading, irrelevant, and unfairly prejudicial to Petitioner (F.R.E.
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`401, 402, 403). By failing to cite Exhibits or paragraphs of witness declarations,
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`Patent Owner has also waived any arguments as to those Exhibits and portions of
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`the declarations. See Paper 18 at 7; 37 C.F.R. § 42.6(a)(3).
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`I. Objections to Exhibit 2008, And Any Reference to/Reliance Thereon
`Grounds for objection: F.R.E. 702 (“Testimony by Expert Witnesses”);
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`F.R.E. 703 (“Bases of an Expert’s Opinion Testimony”); F.R.E. 602 (“Need for
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`Personal Knowledge”); F.R.E. 801, 802 (Impermissible Hearsay); F.R.E. 401
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`(“Test for Relevant Evidence”); F.R.E. 402 (“General Admissibility of Relevant
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`Evidence”); F.R.E. 403 (“Excluding Relevant Evidence for Prejudice, Confusion,
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`IPR2018-00437
`U.S. Patent No. 9,537,071
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`Waste of Time, or Other Reasons”); 37 C.F.R. § 42.6(a)(3) (Rule Against
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`Incorporation by Reference); 37 C.F.R. § 42.61 (“Admissibility”).
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`Petitioner objects to Exhibit 2008. The declarant of Exhibit 2008, Dr.
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`Schubert, fails to provide sufficient underlying facts or data upon which the
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`statements contained therein could legitimately be based, in violation of F.R.E.
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`702. Dr. Schubert has also not “reliably applied the principles and methods to the
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`facts of the case,” and his opinions in Exhibit 2008 are not “the product of reliable
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`principles and methods,” in violation of F.R.E. 702. Furthermore, there is no
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`indication that Dr. Schubert based his opinions on facts or data upon which an
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`expert in the relevant field would reasonably rely in violation of F.R.E. 703. In
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`addition, Dr. Schubert lacks personal knowledge of material to which he testifies in
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`violation of F.R.E. 602.
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`Further, Dr. Schubert purports to repeat statements in the exhibit and/or
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`other sources they cite for the truth of the matter contained therein, but without
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`demonstrating that any hearsay exception applies, in violation of F.R.E. 801, 802,
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`and 403.
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`Accordingly, permitting reliance on Exhibit 2008 in Patent Owner’s
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`Response or other submissions of Patent Owner would be misleading and unfairly
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`prejudicial to Petitioner (F.R.E. 403).
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`IPR2018-00437
`U.S. Patent No. 9,537,071
`II. Objections to Exhibit 2009, And Any Reference to/Reliance Thereon
`Grounds for objection: 37 C.F.R. § 42.61 (“Admissibility”); 37 C.F.R. §
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`42.64(a) (“Deposition evidence”); 37 C.F.R. § 42.53(f)(8) (Objections in
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`depositions).
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`Exhibit 2009 appears to be a deposition transcript from another proceeding.
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`Petitioner hereby expressly repeats and incorporates by reference all of objections
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`stated on the record in those depositions, and affirmatively maintain all such
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`objections.
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`III. Objections to Exhibit 2010, And Any Reference to/Reliance Thereon
`Grounds for objections: F.R.E. 901 (“Authenticating or Identifying
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`Evidence”); F.R.E. 1002 (“Requirement of the Original”); F.R.E. 1003
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`(“Admissibility of Duplicates”); F.R.E. 401 (“Test for Relevant Evidence”); F.R.E.
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`402 (“General Admissibility of Relevant Evidence”); F.R.E. 403 (“Excluding
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`Relevant Evidence for Prejudice, Confusion, Waste of Time, or Other Reasons”);
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`F.R.E. 801 (“Definitions That Apply to This Article; Exclusions from Hearsay”),
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`802 (“The Rule Against Hearsay”); 37 C.F.R. § 42.61 (“Admissibility”).
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`Petitioners object to the use of Exhibit 2010 under F.R.E. 901, 1002, 1003,
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`and 37 C.F.R. § 42.61 because Patent Owner fails to provide the authentication
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`required for this document, and the Exhibit is not self-authenticating under F.R.E.
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`902.
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`Petitioners object to Exhibit 2010 as impermissible hearsay under F.R.E.
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`IPR2018-00437
`U.S. Patent No. 9,537,071
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`801, 802, and 805 to the extent to which the out of court statements therein, or the
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`out of court statements referenced therein, are offered for the truth of the matters
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`asserted and constitute impermissible hearsay for which Patent Owner has not
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`demonstrated any exception or exclusion to the rule against hearsay (F.R.E. 801,
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`802, 805).
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`IV. Objections to Exhibit 2019, And Any Reference to/Reliance Thereon
`Grounds for objection: F.R.E. 702 (“Testimony by Expert Witnesses”);
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`F.R.E. 703 (“Bases of an Expert’s Opinion Testimony”); F.R.E. 602 (“Need for
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`Personal Knowledge”); F.R.E. 801, 802 (Impermissible Hearsay); F.R.E. 401
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`(“Test for Relevant Evidence”); F.R.E. 402 (“General Admissibility of Relevant
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`Evidence”); F.R.E. 403 (“Excluding Relevant Evidence for Prejudice, Confusion,
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`Waste of Time, or Other Reasons”); 37 C.F.R. § 42.24(a)(1)(vi) (Page-limit for
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`Motions to Amend); 37 C.F.R. § 42.6(a)(3) (Rule Against Incorporation by
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`Reference); 37 C.F.R. § 42.61 (“Admissibility”).
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`Petitioner objects to Exhibit 2019. The declarant of Exhibit 2019, Dr.
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`Schubert, fails to provide sufficient underlying facts or data upon which the
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`statements contained therein could legitimately be based, in violation of F.R.E.
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`702. Dr. Schubert has also not “reliably applied the principles and methods to the
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`facts of the case,” and his opinions in Exhibit 2019 are not “the product of reliable
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`principles and methods,” in violation of F.R.E. 702. Furthermore, there is no
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`IPR2018-00437
`U.S. Patent No. 9,537,071
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`indication that Dr. Schubert based his opinions on facts or data upon which an
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`expert in the relevant field would reasonably rely in violation of F.R.E. 703. In
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`addition, Dr. Schubert lacks personal knowledge of material to which he testifies in
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`violation of F.R.E. 602.
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`Further, Dr. Schubert purports to repeat statements in the exhibit and/or
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`other sources they cite for the truth of the matter contained therein, but without
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`demonstrating that any hearsay exception applies, in violation of F.R.E. 801, 802,
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`and 403.
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`Accordingly, permitting reliance on Exhibit 2019 in Patent Owner’s
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`Contingent Motion to Amend Claims or other submissions of Patent Owner would
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`be misleading and unfairly prejudicial to Petitioner (F.R.E. 403).
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`Petitioner further objects to Exhibit 2019 and the citations thereto in Patent
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`Owner’s Contingent Motion to Amend Claims. The arguments in Exhibit 2019 are
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`improperly incorporated by reference into Patent Owner’s Contingent Motion to
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`Amend Claims in violation of 37 C.F.R. § 42.6(a)(3). Further, incorporation of
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`arguments from Exhibit 2019 violates the page limit of 25 pages allotted under 37
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`C.F.R. § 42.24(a)(1)(vi), especially because, according to Patent Owner’s page
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`numbering, the body of Patent Owner’s Contingent Motion to Amend Claims
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`appears to contain 24 pages and Exhibit 2019 amounts to 101 pages containing
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`IPR2018-00437
`U.S. Patent No. 9,537,071
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`significant amounts of text.
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`V. Objections to Exhibit 2020, And Any Reference to/Reliance Thereon
`Grounds for objection: F.R.E. 401 (“Test for Relevant Evidence”); F.R.E.
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`402 (“General Admissibility of Relevant Evidence”); F.R.E. 403 (“Excluding
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`Relevant Evidence for Prejudice, Confusion, Waste of Time, or Other Reasons”);
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`37 C.F.R. § 42.24(a)(1)(vi) (Page-limit for Motions to Amend); 37 C.F.R. §
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`42.6(a)(3) (Rule Against Incorporation by Reference); 37 C.F.R. § 42.61
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`(“Admissibility”).
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`Petitioner objects to Exhibit 2020 and the citations thereto in Patent Owner’s
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`Contingent Motion to Amend Claims. The arguments in Exhibit 2020 are
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`improperly incorporated by reference into Patent Owner’s Contingent Motion to
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`Amend Claims in violation of 37 C.F.R. § 42.6(a)(3). Further, incorporation of
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`arguments from Exhibit 2020 violates the page limit of 25 pages allotted under 37
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`C.F.R. § 42.24(a)(1)(vi), especially because, according to Patent Owner’s page
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`numbering, the body of Patent Owner’s Contingent Motion to Amend Claims
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`appears to contain 24 pages and Exhibit 2020 amounts to 15 pages containing
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`significant amounts of text other than the claim listing.
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`Dated: September 25, 2018
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`Mailing address for all
`correspondence:
`ROPES & GRAY LLP
`IPRM – Floor 43
`Prudential Tower
`800 Boylston Street
`Boston, MA 02199-3600
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`IPR2018-00437
`U.S. Patent No. 9,537,071
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`Respectfully submitted,
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`ROPES & GRAY LLP
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`By: /Gabrielle E. Higgins/
`
`Gabrielle E. Higgins
`Reg. No. 38,916
`ROPES & GRAY LLP
`1900 University Avenue, 6th Floor
`East Palo Alto, CA 94303-2284
`Phone: +1-650-617-4015
`Fax: +1-617-235-9492
`gabrielle.higgins@ropesgray.com
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`Attorneys for Petitioner, VIZIO, INC.
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`IPR2018-00437
`U.S. Patent No. 9,537,071
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that a copy of the foregoing PETITIONER’S
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`OBJECTIONS TO EXHIBITS SUBMITTED WITH PATENT OWNER’S
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`RESPONSE AND CONTINGENT MOTION TO AMEND CLAIMS was served
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`on September 25, 2018 in its entirety by causing the aforementioned document to
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`be electronically mailed, pursuant to the parties’ agreement, to the following
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`attorneys of record for the Patent Owner listed below:
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`Back-up
`Counsel:
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`Lead Counsel: Martin M. Zoltick
`mzoltick@rfem.com
`ROTHWELL, FIGG, ERNST & MANBECK, P.C.
`607 14th Street, N.W., Suite 800
`Washington, DC 20005
`Phone: +1-202-783-6040
`Fax: +1-202-783-6031
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`Robert P. Parker, rparker@rfem.com
`Derek F. Dahlgren, ddahlgren@rfem.com
`Michael H. Jones, mjones@rfem.com
`Mark T. Rawls, mrawls@rfem.com
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`ROTHWELL, FIGG, ERNST & MANBECK, P.C.
`607 14th Street, N.W., Suite 800
`Washington, DC 20005
`Phone: +1-202-783-6040
`Fax: +1-202-783-6031
`litigationparalegals@rothwellfigg.com
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`Counsel for Patent Owner, NICHIA CORPORATION
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`Dated: September 25, 2018
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`By: /Crena Pacheco/
`Name: Crena Pacheco
`ROPES & GRAY LLP
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