UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, DC
`
`Before the Honorable Cameron Elliot
`Administrative Law Judge
`
`In the Matter of
`
`CERTAIN LTE-COMPLIANT
`CELLULAR COMMUNICATION
`DEVICES
`
`Inv. No. 337-TA-1253
`
`RESPONDENT MOTOROLA MOBILITY LLC’S INITIAL
`IDENTIFICATION OF EXPERT WITNESSES
`
`Pursuant to the Procedural Schedule (Order No. 5), Respondent Motorola Mobility LLC
`
`hereby identifies the following expert witnesses who may offer opinions and/or testimony in this
`
`Investigation. This identification of expert witnesses is based on Respondent’s current
`
`understanding of the evidence and issues to be decided at the hearing. Respondent reserves the
`
`right to amend or supplement these disclosures as appropriate, including in response to new
`
`information or allegations.
`
`1.
`
`Harry V. Bims, Ph.D.
`
`Dr. Bims is the CEO of CUPP Cybersecurity, LLC, an expert consultant for Protocomm
`
`Systems, LLC and Bims Laboratories, LLC, both of which he founded. He received a B.S. in
`
`Computer and Systems Engineering from Rensselaer Polytechnic Institute and an M.S. and Ph.D.
`
`in Electrical Engineering from Stanford University. Dr. Bims has over seventeen years of
`
`telecommunications industry experience, and holds twenty-two US patents in network
`
`architecture and chip design for wireless communications. He is an expert in computer science,
`
`computer engineering, and networking, including wireless communications, wireless networks,
`
`and network systems.
`
`

`

`A copy of Dr. Bims’ curriculum vitae is attached as Exhibit 1.
`
`Dr. Bims may offer opinions and/or testimony in this Investigation relating to the
`
`technical background and state of the art relevant to the asserted claims of the asserted patents;
`
`the interpretation and scope of the asserted claims of the asserted patents; whether the asserted
`
`claims of the asserted patents are valid and enforceable; the design, development, and operation
`
`of Respondent’s accused products and Complainant’s domestic industry products; whether the
`
`accused products infringe the asserted claims of the asserted patents; whether Complainant’s
`
`domestic industry products practice the asserted claims of the asserted patents; the standards
`
`setting process; the standard setting process with respect to the portions of the standard at issue
`
`in this Investigation; and technical issues concerning the public interest. Dr. Bims may further
`
`offer opinions and/or testimony in rebuttal to Complainant’s expert testimony and/or other issues
`
`asserted by Complainant.
`
`2.
`
`Jorge Contreras
`
`Professor Contreras is a Presidential Scholar at the University of Utah and an expert in
`
`the background, purposes, and policies of standard setting organizations, including regarding
`
`ETSI, the ETSI IPR Policy, and FRAND commitments. Professor Contreras’ curriculum vitae,
`
`attached hereto as Exhibit 2, sets forth his qualifications. Professor Contreras may provide
`
`testimony regarding FRAND and FRAND commitments; the background, purposes, and policies
`
`of standard setting organizations such as ETSI; and the standards at issue in this litigation.
`
`Professor Contreras may also offer opinions and/or testimony in rebuttal to Complainant’s expert
`
`testimony and/or other issues asserted by Complainant.
`
`3.
`
`Paul Meyer
`
`Mr. Meyer is President and Co-Founder of TM Financial Forensics, LLC. Mr. Meyer
`
`was formerly a Managing Director with Navigant Consulting and the President and co-founder
`
`

`

`of Tucker Alan. He is a Certified Public Accountant and Certified Fraud Examiner, as well as
`
`Accredited in Business Valuation (CPA-ABV). For over 25 years, Mr. Meyer has held various
`
`appointments at Stanford University, including Adjunct Professor and Consulting Professor,
`
`within the School of Civil and Environmental Engineering, and has also taught at the Saudi
`
`International Development Fund Business and Leadership Program at Stanford University.
`
`Additionally, he frequently addresses industry groups on damages and intangible asset valuation
`
`issues. Mr. Meyer an experienced practitioner in the valuation of proprietary properties, systems
`
`and platforms, including enterprise software; application software; content delivery networks;
`
`mainframe data storage systems; cloud-based platforms; video gaming platforms; online
`
`commerce and auction platforms; industry leading audio codecs; video codecs; and air interface
`
`standard essential technologies including cellular, 802.11, h.264 and Bluetooth.
`
`Mr. Meyer has over 30 years of experience consulting on financial, accounting, economic
`
`and damages matters, as well as significant testimony experience. He has testified in over 250
`
`depositions and approximately 75 trials and major arbitrations in State Court, Federal Court,
`
`Federal Bankruptcy Court, Court of Federal Claims, International Trade Commission, the
`
`London Court of International Arbitration (“LCIA”) and the International Court of Arbitration of
`
`the International Chamber of Commerce (“ICC”).
`
`A copy of Mr. Meyer’s curriculum vitae is attached as Exhibit 3.
`
`Mr. Meyer may offer opinions and/or testimony in this Investigation relating to the
`
`economics of Complainant’s purported domestic industry (or lack thereof), issues relating to
`
`FRAND economics, the public interest, the appropriate remedy and/or bond rate should the
`
`Commission find a violation of Section 337, including the scope of remedy, and secondary
`
`considerations of non-obviousness. Mr. Meyer may further offer opinions and/or testimony in
`
`rebuttal to Complainant’s expert testimony and/or other issues asserted by Complainant.
`
`

`

`4.
`
`Paul S. Min, Ph.D.
`
`Dr. Min is a professor in the Department of Electrical Systems Engineering at
`
`Washington University in Saint Louis. He received his Ph.D. in electrical engineering from the
`
`University of Michigan in 1987. He is an expert in computer science and computer engineering,
`
`including in the fields of electronic devices, wireless communications, computer systems,
`
`programming languages, and software engineering, including the use of programming language
`
`to effectuate wireless communication systems. With decades of experience in the field, Dr. Min
`
`has published numerous technical articles on topics such as telecommunications, wireless
`
`networks, virtual computing, and network architecture.
`
`A copy of Dr. Min’s curriculum vitae is attached as Exhibit 4.
`
`Dr. Min may offer opinions and/or testimony in this Investigation relating to the technical
`
`background and state of the art relevant to the asserted claims of the asserted patents; the
`
`interpretation and scope of the asserted claims of the asserted patents; whether the asserted
`
`claims of the asserted patents are valid and enforceable; the design, development, and operation
`
`of Respondent’s accused products and Complainant’s domestic industry products; whether the
`
`accused products infringe the asserted claims of the asserted patents; whether Complainant’s
`
`domestic industry products practice the asserted claims of the asserted patents; and technical
`
`issues concerning the public interest. Dr. Min may further offer opinions and/or testimony in
`
`rebuttal to Complainant’s expert testimony and/or other issues asserted by Complainant.
`
`5.
`
`Matthew B. Shoemake, Ph.D.
`
`Dr. Shoemake is the owner of technology consulting firm Peritum LLC. He received a
`
`B.S. in electrical engineering and a B.S. in computer science from Texas A&M University and
`
`an M.S. and Ph.D. in electrical engineering from Cornell University. He is an expert in (among
`
`other things) computer science, computer engineering, and networking, including in the fields of
`
`

`

`electronic devices, wireless communications, wireless networks, network systems, multimedia,
`
`programming languages, and software and hardware engineering, including the use of
`
`programming language to effectuate wireless communication systems. With over 20 years of
`
`experience, he has authored a variety of technical papers in various journals and conferences, and
`
`he holds thirty-eight U.S. Patents.
`
`A copy of Dr. Shoemake’s curriculum vitae is attached as Exhibit 5.
`
`Dr. Shoemake may offer opinions and/or testimony in this Investigation relating to the
`
`technical background and state of the art relevant to the asserted claims of the asserted patents;
`
`the interpretation and scope of the asserted claims of the asserted patents; whether the asserted
`
`claims of the asserted patents are valid and enforceable; the design, development, and operation
`
`of Respondent’s accused products and Complainant’s domestic industry products; whether the
`
`accused products infringe the asserted claims of the asserted patents; whether Complainant’s
`
`domestic industry products practice the asserted claims of the asserted patents; and technical
`
`issues concerning the public interest. Dr. Shoemake may further offer opinions and/or testimony
`
`in rebuttal to Complainant’s expert testimony and/or other issues asserted by Complainant.
`
`6.
`
`Dr. Philippe Stoffel-Munck
`
`Dr. Stoffel-Munck has expertise in the areas set forth in his curriculum vitae, including
`
`French civil law applied in business life, including the law of contracts, liability, and security.
`
`Dr. Stoffel-Munck may provide testimony regarding FRAND and the standards at issue in this
`
`litigation, including, but not limited to, the enforceability, effect, and construction of ETSI
`
`FRAND undertakings under French law. Dr. Stoffel-Munck may testify as part of Motorola’s
`
`

`

`case-in-chief as well as in rebuttal to address Complainant’s expert testimony. A copy of Dr.
`
`Stoffel-Munck’s curriculum vitae is attached as Exhibit 6.
`
`Dated: May 28, 2021
`
`Respectfully submitted,
`
`/s/ Sean Cunningham
`Sean C. Cunningham
`Erin P. Gibson
`DLA PIPER LLP (US)
`401 B Street, Suite 1700
`San Diego, CA 92101-4297
`Tel: (619) 699-2700
`Fax: (619) 699-2701
`
`Michael Jay
`Nandan Padmanabhan
`DLA PIPER LLP (US)
`2000 Avenue of the Stars
`Suite 400 North Tower
`Los Angeles, CA 90067-4704
`Tel: (310) 595-3000
`Fax: (310) 595-3300
`
`Erin McLaughlin
`DLA PIPER LLP (US)
`1251 Avenue of the Americas
`New York, NY 10020-1104
`Tel: (212) 335-4500
`Fax: (212) 335-4501
`
`Stephanie Lim
`DLA PIPER LLP (US)
`444 West Lake Street
`Chicago, IL 60606-0089
`Tel: (312) 368-4000
`Fax: (312) 236-7516
`
`Counsel for Respondent Motorola Mobility LLC
`
`

`

`EXHIBIT 1
`
`EXHIBIT 1
`
`
`

`

`A
`
`Dr. Harry V. Bims
`1314 Chilco Street
`Menlo Park, CA 94025
`harrybims@me.com
`650-283-4174
`
`
`
`PROFESSIONAL SUMMARY
`Harry Bims, PhD, EE, provides expert witness support services for telecommunications-related
`intellectual property litigation. These services include deposition and court testimony, expert reports,
`and infringement research, for patent, copyright, and trade secret litigation matters. He has 17+ years of
`telecommunications industry experience, and holds twenty-two US patents in network architecture and
`chip design for wireless communications.
`
`
`
`EMPLOYMENT HISTORY
`12/2001 - 05/2004 AirFlow Networks, Inc. LLC ● Sunnyvale, California
`Position: CEO/CTO & Founder
`As the sole founder of the company, created the original business plan, raised
`venture capital, and hired the core engineering team. Grew the company to 32
`people and shipped products for revenue in the US and overseas. Fifteen patents
`on the core technology have issued. These patents, which relate to wireless
`network infrastructure based on the 802.11 specification, have been sold to
`Broadcom.
`
`
`
`
`
`
`
`03/2001 - 12/2001 Bay Partners LLC ● Cupertino, California
`Position: Entrepreneur in Residence
`Reported to the partners of this VC firm as a technology expert on a range of
`wireless and networking subjects. Reviewed business plans and participated in
`due diligence activities related to several startups seeking funding. Developed a
`business plan for a startup that builds network infrastructure for 802.11 enterprise
`networks.
`
`
`
`09/1999 - 03/2001 Symmetry Communications Systems LLC ● San Jose, California
`Position: Director, Software Architecture
`Reporting to the CEO, responsible for the software architecture of their core
`
`
`
`Last Update: May 7, 2020
`
`Page A-1
`
`

`

`SGSN and GGSN products for the GPRS market. Formulated a software
`technology roadmap, showing the evolution from 2.5G to 3G SGSN and GGSN
`products. Management responsibility for Firmware, Hardware, Performance, and
`Systems Engineering Groups. Provided management support of early field trials
`of the system on a global basis.
`
`
`
`
`
`
`
`07/1999 - 09/1999 T-SPAN Systems Corporation LLC ● Palo Alto, California
`Position: Member of Technical Staff
`Designed a wireless home LAN protocol for the company. Also designed and
`built a PC-based platform to demonstrate their technology. Company is now
`publicly traded as Atheros Communications.
`
`
`
`07/1992 - 12/1998 Glenayre Technologies-Wireless Access Group ● San Jose, California
`Position: Member of Technical Staff; Sr. Member of Technical Staff; Manager of NOC
`Systems
`Employee #6 at the company, which was acquired by Glenayre Technologies,
`Nov 1997. Designed and built a 4-channel ReFLEX50 pager demonstration in 1
`week. Participated in early field trials and feasibility studies, culminating in a
`Pioneer’s Preference license award from the FCC to SkyTel Corporation for
`Narrowband PCS development.
`Invented, designed, and built from concept through full implementation, a
`patented two-way pager test system for the ReFLEX50 and ReFLEX25
`protocols. This system was used throughout company operations for
`performance testing of the ReFLEX pager designs from Wireless Access, and
`Motorola. Over 16 systems were deployed around the country for manufacturing
`tests, engineering protocol tests, antenna tests, and pager repair tests.
`The project required technical skills in PC hardware design, C++, object-oriented
`programming, signal processing techniques, NT device driver development,
`Win32 user interface development, real-time, multi-threaded control, and
`proficiency with wireless communications lab equipment. Three patents have
`been issued based on technical inventions in this capacity.
`Co-developed a wireless application protocol for sending and receiving
`encrypted email messages over the paging channel. Led the project team that
`deployed a software encryption module based on this protocol for government
`agencies.
`
`
`
`8/2018 – Present CUPP Cybersecurity, LLC ● Palo Alto, California
`Position: CEO
`
`Last Update: May 7, 2020
`
`Page A-2
`
`

`

`Developing a suite of network security products and technologies aimed at
`consumers to protect their online internet access.
`
`
`10/2012 – Present BoughtStuff, Inc ● Palo Alto, California
`Position: Founder
`The company has developed a mobile application for storage and delivery of
`product information to smartphones over wireless networks.
`
`
`
`
`
`Bims Laboratories, LLC Work History
`
`
`
`
`
`
`
`
`
`6/2009 – 7/2009 Eastman Kodak Company ● Rochester, NY
`Position: Technology Consultant
`Providing technology assessment on certain wireless communication patents.
`
`10/2009 – 1/2017 IEEE 802.16 Working Group
`Task Group Secretary, Task Group Vice-Chair, Task Group Chair, Working
`Group Vice-Chair & Secretary, IEEE 802.16 Expert
`Served in several leadership capacities within this group that is working on
`improvements to the IEEE 802.16 standard, otherwise known as WiMAX. The
`802.16 Working Group entered hibernation on March 2018. From that time until
`the present, I am on the roster of Experts designated by the Chair to answer
`questions and provide clarification about the 802.16 standards.
`
`Position:
`
`
`2/2014 – Present Access Network Protocol Development
`Position: Technical Lead Developer
`Developing a C++17-based DES of SDRs for wired and wireless network
`protocols, that includes IMT-2020 channel models. Implementations of the IEEE
`802 and LTE protocol families, plus PTP, PPoE, IPv6, digital cable, Bluetooth,
`DSL, frame relay and many other managed node models for smart grid and
`vertical IoT applications. Used for technical analysis of emerging wireless
`standards amendments.
`
`
`
`Protocomm Systems, LLC Consulting History
`
`Last Update: May 7, 2020
`
`Page A-3
`
`

`

`04/1999–07/1999 Gigabit Wireless, Inc. ● San Jose, California
`Position: Technical Leader
`Technical leader for the Wireless MAC design group. Responsible for
`comparative analysis of competing wireless MAC protocol standards.
`Responsible for the creation of a proprietary MAC protocol specification
`document, simulation of the protocol, and implementation in a prototype.
`Participated in early 802.16 protocol standards. This company was acquired by
`Intel Corporation.
`
`
`
`3/2007 – 10/2009 Apple, Inc. ● Cupertino, CA
`Position: Technology Consultant
`Participating in IEEE 802.16 standards meetings as an affiliate of the client.
`7/2003 – Present Various expert witness engagements (see below)
`Position: Technical Expert Witness
`Testified as a wireless technology expert in patent infringement cases. For a list
`of such cases, see below.
`
`
`
`
`
`
`
`
`Technical Expert Witness Experience
`
`
`
`
`
`8/2019 – Present Client: Fish & Richardson (representing LG Electronics, Inc.)
`Case: Bell Northern Research, LLC v. LG Electronics, Inc., et. al.
`USDC-SDCA Civil Action No. 18-cv-2864-CAB-BLM
`Location: UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF
`CALIFORNIA
` Testifying expert on wired/wireless communication in gaming systems.
`Expert Report:
`November 20, 2019 Declaration ISO motion for summary judgment
`Attorneys: For Plaintiff:
`Skiermont Derby LLP
`For Defendant: Fish & Richardson
`Status: Case ongoing
`
`Last Update: May 7, 2020
`
`Page A-4
`
`

`

`1/2020 – Present Client: Holland & Knight (representing Motorola Mobility, LLC)
`Case: Wi-LAN Inc., et. al. v. Motorola Mobility, LLC, et. al.
`Civil Action No. 1:19-cv-00941
`Location: UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF
`ILLINOIS
` Testifying expert on 3GPP mobile device operation.
`Expert Report:
`None.
`
`Attorneys: For Plaintiff:
`For Defendant: Holland & Knight
`Status: Case ongoing
`
`
`
`11/2014 – Present Client: Fish & Richardson (representing Regents of the University of
`Minnesota)
`Case: Regents of the University of Minnesota v. AT&T Mobility, LLC, Sprint
`Solutions, Inc., T-Mobile USA, Inc., Cellco Partnership d/b/a Verizon Wireless
`Civil Action No. 14-cv-4666
`Location: UNITED STATES DISTRICT COURT FOR THE DISTRICT OF MINNESOTA
` Testifying expert on 3GPP error correction coding, precoding, and modulation.
`Expert Report:
`None.
`Attorneys: For Plaintiff: Fish & Richardson
`For Defendant:
`
`Status: Case ongoing
`
`
`7/2019 – Present Client: O’Melveny & Myers LLP (representing Apple Inc.)
`Case: Maxell, Ltd. v. Apple Inc.,
`Case No. 5:19-cv-00036-RWS.
`Location: UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF
`TEXAS
` Testifying expert on 3G cellular telephone technology.
`Expert Report:
`
`Last Update: May 7, 2020
`
`Page A-5
`
`

`

`None.
`Attorneys: For Plaintiff: Mayer Brown LLP
`For Defendant: O’Melveny & Myers LLP
`Status: Case ongoing
`
`
`4/2019 – Present Client: Perkins Coie (representing Nintendo of America, Inc.)
`Case: Genuine Enabling Technology LLC v. Nintendo Company Ltd., and Nintendo of
`America, Inc., W.D. Wash.,
`Civil Action No. 2:19-cv-00351-RSM
`Location: UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF
`WASHINGTON
` Testifying expert on wired/wireless communication in gaming systems.
`Expert Declarations:
`October 23, 2019 Declaration ISO claim constructions
`November 26, 2019 Sur-reply declaration ISO claim constructions
`January 23, 2020 Declaration ISO motion for summary judgment
`Expert Depositions:
`December 19, 2019
`Attorneys: For Plaintiff:
`Bayard, P.A.
`For Defendant: Perkins Coie
`Status: Case ongoing
`
`
`12/2019 – Present Client: Erise IP (representing Apple Inc.), Haynes and Boone, LLP
`(representing Ericsson Inc)
`Case: Ericsson Inc. (Petitioner) v. Uniloc 2017, LLC (Patent Owner)
`Apple Inc. (Petitioner) v. Uniloc 2017, LLC (Patent Owner) Case No. IPR2020-
`00224
`Location: UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
`PATENT TRIAL AND APPEAL BOARD
` Testifying expert in this IPR proceeding involving ARQ data exchange on LTE
`networks.
`Expert Declarations:
`
`Last Update: May 7, 2020
`
`Page A-6
`
`

`

`Erise IP; Haynes and Boone, LLP
`
`
`April 19, 2019 Declaration ISO Petition for Inter Partes Review of U. S.
`Patent No. 7,075,917
`December 17, 2019 Declaration ISO Petition for Inter Partes Review of U. S.
`Patent No. 7,075,917
`Attorneys: For Petitioner:
`
`For Patent Owner:
`Status: Case ongoing
`
`6/2019 – Present Client: Fish & Richardson (representing Microsoft Corporation)
`Case: Uniloc 2017, LLC v. Microsoft Corp.
`USDC Central District of California, Case Nos. 8:18-cv-2053, 8:18-cv-2054,
`8:18-cv-2224; 8:19-cv-0428, 8:19-cv-0477, 8:19-cv-0196
`Location: UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF
`CALIFORNIA
` Testifying expert involving 3GPP transport formats and channels.
`Expert Declarations:
`August 6, 2019 Declaration in support of claim construction
`Attorneys: For Plaintiff:
`Feinberg Day LLP
`For Defendant: Fish & Richardson
`Status: Case ongoing
`
`10/2018 – Present Client: Kramer Levin Naftalis & Frankel, LLP (representing Finjan, Inc.)
`Case: Finjan, Inc. v. Eset, Inc.
`Civil Action No. 3:17-cv-00183-CAB-BGS
`Location: UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF
`CALIFORNIA SAN DIEGO DIVISION
` As a testifying expert, provided a technology tutorial in this patent case involving
`internet security technology.
`Expert Declaration:
`October 5, 2018 Tutorial expert report on security technology.
`March 11, 2020 Jury trial testimony.
`Attorneys: For Plaintiff:
`Kramer Levin, Naftalis, & Frankel LLP
`For Defendant:
`
`
`Last Update: May 7, 2020
`
`Page A-7
`
`

`

`Status: Jury Trial Mistrial due to COVID-19.
`
`9/2018 – Present Client: Kramer Levin Naftalis & Frankel, LLP (representing Finjan, Inc.)
`Case: Finjan, Inc. v. Juniper, Inc.
`Civil Action No. 15-cv-03295-BLF-SVK
`Location: UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF
`CALIFORNIA SAN JOSE DIVISION
` As a testifying expert, provided a technology tutorial in this patent case involving
`internet security technology.
`Expert Declaration:
`September, 11, 2018 Tutorial expert report on security technology.
`Videotaped Deposition:
`November 7, 2018
`Attorneys: For Plaintiff:
`Kramer Levin, Naftalis, & Frankel LLP
`For Defendant:
`
`Status: Case ongoing
`
`Client: Barnes & Thornburg LLP (representing Lenovo, Google, and
`10/2018 –
`Huawei, Inc.)
`10/2019
`Case: Alex Is The Best v. Lenovo Holding Company, Inc. and Lenovo (United States)
`Inc.
`Alex Is The Best v. Huawei Device USA Inc., et. al.
`Civil Action No. 1:16-cv-00770 (RGA)
`Location: UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE
` Testifying expert regarding 3G and LTE technology.
`Attorneys: For Plaintiff:
`Bayard, P.A.
`For Defendant: Barnes & Thornburg LLP
`Status: Case closed
`
`9/2017 – 9/2018 Client: (Covington & Burling representing Huawei Device USA, Inc.)
`Case: Optis Wireless Technology, LLC, et. al. v. Huawei Technologies Co. Ltd, et. al.
`Civil Action No. 2:17-cv-123-JRG-RSP
`
`Last Update: May 7, 2020
`
`Page A-8
`
`

`

`Location: UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF
`TEXAS MARSHALL DIVISION
` Testifying expert regarding 3G and LTE technology.
`Expert Declarations and Reports:
`November 3, 2017: Declaration regarding Claim Construction.
`March 26, 2018: Initial Expert Report Regarding Invalidity
`April 23, 2018:
`
`Rebuttal Expert Report on Non-Infringement
`April 27, 2018:
`
`Rebuttal Expert Report on Secondary Considerations
`Videotaped Deposition:
`May 10, 2018
`May 14, 2018:
`Judgment
`Jury Trial Testimony: August 22, 2018 and August 23, 2018
`
`Declaration in support of Motion for Partial Summary
`
`
`
`Attorneys:
`
`
`
`For Plaintiff: McKool Smith
`For Defendant: Covington & Burling
`Status: Jury award
`
`6/2017 – 4/2018 Client: Kramer Levin Naftalis & Frankel, LLP (representing Finjan, Inc.)
`Case: Finjan, Inc. v. Symantec, Inc.
`Civil Action No. 4:14-cv-02998-HSG
`Location: UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF
`CALIFORNIA OAKLAND DIVISION
` As a testifying expert, provided a technology tutorial in this patent case involving
`internet security technology.
`Expert Declaration:
`July 27, 2017 Tutorial expert report on security technology.
`Videotaped Deposition:
`August 29, 2017
`Kramer Levin, Naftalis, & Frankel LLP
`Attorneys: For Plaintiff:
`For Defendant: Quinn Emmanuel
`Status: Case settled
`
`
`
`
`
`Last Update: May 7, 2020
`
`Page A-9
`
`

`

`5/2017 – Present Client: Barnes & Thornburg, LLP (representing Ooma, Inc.)
`Case: Ooma, Inc. (Petitioner) v. Deep Green Wireless, LLC (Patent Owner)
`Location: UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
`PATENT TRIAL AND APPEAL BOARD
` As a testifying expert, provided a technology tutorial in this patent case involving
`voice and data communications over wireless networks.
`Expert Declaration:
`June 8, 2017 Expert report on prior art wireless network technology.
`Videotaped Deposition:
`February 15, 2018
`Attorneys: For Petitioner: Barnes & Thornburg LLP
`For Defendant: Mischcon De Reya New York, LLP
`Status: Case ongoing
`
`
`
`3/2017 – 6/2019 Client: Fish & Richardson (representing Apple, Inc.) / Gibson, Dunn &
`Crutcher LLP (representing Compal Electronics, et. al.)
`Case: Apple Inc. v. Qualcomm Inc.
`Qualcomm Inc. v. Compal Electronics, Inc., et. al.
`Civil Action No. 3:17-cv-00108 / Civil Action No. 3:17-cv-01010
`Location: UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF
`CALIFORNIA
` Testifying expert regarding LTE technology.
`Expert Declaration:
`December 11, 2017: Declaration regarding Claim Construction.
`Expert Report:
`June 29, 2018: Opening Expert Report regarding invalidity
`August 3, 2018: Expert Report on infringement
`October 2, 2018: Rebuttal Expert Report on Invalidity
`Videotaped Deposition:
`October 25, 2018
`None
`Attorneys: For Apple:
`
`Fish & Richardson
`
`
`
`Last Update: May 7, 2020
`
`Page A-10
`
`

`

`
`
`
`
`For Qualcomm: Quinn Emanuel Urquhart & Sullivan LLP / Cravath, Swaine &
`Moore LLP
`For Compal Electronics, Inc., et. al: Gibson, Dunn & Crutcher LLP
`Status: Case settled.
`
`3/2017 – 1/2018 Client: Kramer Levin Naftalis & Frankel, LLP (representing Finjan, Inc.)
`Case: Finjan, Inc. v. Blue Coat Systems, LLC
`Civil Action No. 15-cv-03295-BLF-SVK
`Location: UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF
`CALIFORNIA SAN JOSE DIVISION
` As a testifying expert, provided an opening technology tutorial at trial in this
`patent case involving internet security technology.
`Expert Declaration:
`March 29, 2017 Tutorial expert report on security technology.
`Videotaped Deposition:
`May 2, 2017
`October 31 – November 2, 2017: Jury Trial Testimony
`January 8-10, 2018: Jury Trial Testimony (retrial after mistrial):
`Live Testimony on Network Security Technology Tutorial
`Attorneys: For Plaintiff:
`Kramer Levin, Naftalis, & Frankel LLP
`For Defendant: Morrison & Forrester & Quinn Emmanuel
`Status: Jury award
`
`3/2017 – Present Client: Russ, August & Kabat LLP (representing Vivato Technologies)
`Case: Vivato Technologies. v. Amped Wireless
`Location: UNITED STATES DISTRICT COURT FOR THE CENTRAL DISTRICT OF
`CALIFORNIA
` Testifying expert in this patent case involving physical layer MIMO antenna
`technology.
`Expert Reports:
`none
`Attorneys: For Plaintiff:
`
`Russ, August & Kabat LLP
`
`Last Update: May 7, 2020
`
`Page A-11
`
`

`

`
`
`
`
`For Defendant: Robins Kaplan LLP
`Status: Case ongoing
`
`1/2017 – 7/2017 Client: Foster Pepper LLP (representing Dali Wireless)
`Case: Dali Wireless, Inc. (Petitioner) v. CommScope Technologies, LLC (Patent
`Owner)
`Location: UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
`PATENT TRIAL AND APPEAL BOARD
` Testifying expert in this patent case involving RF transport networks.
`Expert Reports:
`4-26-17 Declaration ISO petition for IPR
`6-30-17 Declaration ISO Opening claim construction brief
`Videotaped Deposition:
`July 24, 2017
`Status: Case closed
`
`1/2017 – 6/2019 Client: Dorsey & Whitney LLP (representing Dali Wireless)
`Case: CommScope Technologies, LLC (Plaintiff/Counterclaim Defendant) v. Dali
`Wireless, Inc. (Defendant/Counterclaim Plaintiff)
`Civil Action No.: 3:16-cv-477
`Location: UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF
`TEXAS DALLAS DIVISION
` Testifying expert in this patent case involving RF transport networks.
`Expert Reports:
`8-24-18 Expert Report regarding Invalidity of CommScope patents
`8-24-18 Expert Report regarding Infringement of Dali Wireless patents
`11-5-18 Expert Report regarding Validity of Dali Wireless patents
`11-5-18 Expert Report regarding Non-Infringement of CommScope patents
`1-9-19 Declaration ISO opposition to MSJ
`1-18-19 Declaration ISO partial MSJ on Non-infringement and Invalidity
`5-2-19 Declaration ISO Motion for Sanctions
`Videotaped Deposition:
`
`Last Update: May 7, 2020
`
`Page A-12
`
`

`

`November 20, 2018
`Live Testimony at Jury Trial:
`June 10-13, 2019
`Dorsey & Whitney, LLC
`Attorneys: For Plaintiff:
`For Defendant: Carlson Caspers, P.A.
`Status: Jury award.
`
`
`
`11/2016 – 4/2019 Client: Boies, Schiller & Flexner LLP (representing Apple Inc.)
`Case: Evolved Wireless, LLC v. Apple, Inc.
`Civil Action No.: 1:15-cv-00542-SLR
`Location: UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE
` Testifying expert in this patent case involving LTE wireless networks.
`Expert Reports:
`11-06-17 Declaration ISO Summary Judgment of Validity
`10-05-17 Declaration ISO Summary Judgment of Non-Infringment
`10-03-17 Supplemental Expert Report on Non-Infringement
`07-24-17 Supplemental Expert Report on Secondary Considerations of Non-
`Obviousness
`6-26-17 Expert Report on Non-Infringement
`5-22-17 Expert Report on Invalidity
`Videotaped Deposition:
`August 11, 2017
`Live Testimony at Jury Trial:
`March 29 - April 1, 2019
`
`Boies, Schiller & Flexner LLP
`Attorneys: For Plaintiff:
`For Defendant: Robins Kaplan LLP
`Status: Jury verdict of non-infringement.
`
`
`
`7/2016 – 4/2018 Client: Jackson Walker LLP (representing D&M Holdings, Inc., et. al.)
`
`Last Update: May 7, 2020
`
`Page A-13
`
`

`

`Case: Sonos, Inc., v. D&M Holdings, d/b/a The D+M Group, D&M Holdings U.S. Inc.,
`and Denon Electronics (USA), LLC
`Civil Action No.: 14-1330-RGA
`Location: UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE
` Testifying expert in this patent case involving wireless speaker networks.
`Expert Reports:
`4-17-17 Expert Report on Non-Infringement
`Videotaped Deposition:
`February 7, 2017 and February 8, 2017
`Jury Trial, December 11-15, 2017:
`Live Testimony on Non-infringement
`March 15, 2018: Post-trial Declaration
`
`Attorneys: For Plaintiff:
`For Defendant:
`Status: Jury Award
`
`Potter Anderson & Corroon LLP
`Jackson Walker LLP
`
`7/2016 – 1/2018 Client: Kramer Levin Naftalis & Frankel, LLP (representing Finjan, Inc.)
`Case: Palo Alto Networks, Inc. (Petitioner) v. Finjan, Inc. (Patent Owner)
`Case IPR2015-02001, Case IPR2016-00157. US Patent No. 8,225,408 B2
`Case IPR2015-01974
`Location: UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
`PATENT TRIAL AND APPEAL BOARD
` Testifying expert in this patent case involving wireless speaker networks.
`Expert Declaration:
`8-9-16 Expert Declaration, Patent 7,647,633
`8-9-16 Expert Declaration, Patent 8,225,408
`8-30-16 Supplemental Expert Declaration, 7,647,633
`Status: Case settled
`
`5/2016 – 7/2018 Client: (Winston & Strawn LLP representing Atlantic Broadband Group,
`
`
`
`
`
`Last Update: May 7, 2020
`
`Page A-14
`
`

`

`LLC, et. al.)
`Case: ChanBond LLC v. Atlantic Broadband Group, LLC, et. al.
`Civil Action No: 15-842-RGA, 15-843-RGA, 15-844-RGA, , 15-845-RGA, , 15-
`846-RGA, , 15-847-RGA, , 15-848-RGA, , 15-849-RGA, , 15-850-RGA, , 15-
`851-RGA, , 15-852-RGA, , 15-853-RGA, , 15-854-RGA
`Location: UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE
` Testifying expert regarding digital cable technology.
`Expert Report:
`10-24-17 Expert Report on Invalidity
`Videotaped Deposition:
`None
`Bayard, P.A.
`Attorneys: For Plaintiff:
`For Defendant: Winston & Strawn LLP
`Status: Case settled
`
`5/2016 – Present Client: (Torys LLP representing Telus, Bell, and Rogers)
`Case: Wi-LAN Inc. v Telus Communications Company, Rogers Communications
`Canada Inc., and Bell Mobility Inc.
`Court File