throbber
UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C. 20436
`
`Before the Honorable Robert K. Rogers, Jr.
`Administrative Law Judge
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`In the Matter of
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`CERTAIN WIRELESS DEVICES
`WITH 3G AND/OR 4G CAPABILITIES
`AND COMPONENTS THEREOF
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`Investigation No. 337-TA-868
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`HUAWEI RESPONDENTS’ CORRECTED
`IDENTIFICATION OF EXPERT WITNESSES
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`Pursuant to the Ground Rule 6 and Order No. 34, Huawei Technologies Co., Ltd.,
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`Futurewei Technologies, Inc. and Huawei Device USA, Inc. (collectively, “Huawei”), by the
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`undersigned attorneys, hereby identify the following individuals as experts that Huawei currently
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`believes may testify on behalf of Huawei in this investigation. Huawei also incorporates by
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`reference the identification of any other expert witnesses identified by any other Respondent in
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`this Investigation.
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`This identification of experts and expected areas of testimony is preliminary and is based
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`on Huawei’s current understanding of the evidence and defenses produced during discovery.
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`Discovery is ongoing and Huawei reserves the right to supplement this identification.
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`1.
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`Mr. Laurent Aynes
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`Mr. Aynes is an expert on French contract law. A copy of Mr. Aynes’s curriculum vitae
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`is attached hereto as Exhibit A. Mr. Aynes may be called on to testify regarding the
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`enforceability, effect, and construction of ETSI FRAND undertakings under French law. Mr.
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`Aynes may also be called to rebut the testimony of InterDigital’s expert or fact witnesses, should
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`any be presented, regarding the same.
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`SV: 74072-2
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`BLACKBERRY EX. 1026, pg. 1
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`2.
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`Mr. Jonathan Barney
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`Mr. Barney is an expert in the licensing and economic aspects of intellectual property. A
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`copy of Mr. Barney’s curriculum vitae is attached as Exhibit B. Mr. Barney may be called on to
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`testify regarding matters relating to, at least, fair, reasonable, and non-discriminatory license
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`terms and conditions, including royalty rates and levels. Mr. Barney may also be called to rebut
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`the testimony of InterDigital’s expert or fact witnesses, should any be presented, regarding the
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`same.
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`3.
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`Mr. Richard Buttrick
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`Mr. Buttrick is an expert on the ETSI IPR policy and the history of its adoption. A copy
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`of Mr. Buttrick’s curriculum vitae is attached hereto as Exhibit C. Mr. Buttrick may be called on
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`to testify regarding matters relating to, at least, Standard Setting Organization obligations,
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`commitments, and procedures. Mr. Buttrick may also be called to rebut the testimony of
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`InterDigital’s expert or fact witnesses, should any be presented, regarding the same.
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`4.
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`Dr. Alan Cox
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`Dr. Cox is an expert in the licensing and economic aspects of intellectual property. A
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`copy of Dr. Cox’s curriculum vitae is attached as Exhibit D. Dr. Cox may be called on to testify
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`regarding matters relating to, at least, fair, reasonable, and non-discriminatory license terms and
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`conditions, including royalty rates and levels. Dr. Cox may also be called to rebut the testimony
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`of InterDigital’s expert or fact witnesses, should any be presented, regarding the same.
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`5.
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`Professor Jacques deLisle
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`Professor deLisle is an expert in Chinese law. A copy of Professor deLisle’s curriculum
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`vitae is attached as Exhibit X. Professor deLisle may be called on to testify regarding matters
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`relating to, at least, Chinese law, procedures in Chinese courts, due process protections in China,
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`BLACKBERRY EX. 1026, pg. 2
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`litigations between Chinese and foreign corporations, judicial decision-making in China, and
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`other issues relating to the resolution of disputes in Chinese courts. Professor deLisle may also
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`be called to rebut the testimony of InterDigital’s expert or fact witnesses, should any be
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`presented, regarding the same.
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`6.
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`Dr. Christian Dippon
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`Dr. Dippon is an expert in the licensing and economic aspects of intellectual property. A
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`copy of Dr. Dippon’s curriculum vitae is attached as Exhibit E. Dr. Dippon may be called on to
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`testify regarding matters relating to, at least, the impact any exclusion order would have upon the
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`public interest; and fair, reasonable, and non-discriminatory license terms and conditions,
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`including royalty rates and levels. Dr. Dippon may also be called to rebut the testimony of
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`InterDigital’s expert or fact witnesses, should any be presented, regarding the same.
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`7.
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`Dr. Charles Eldering
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`Dr. Eldering is an expert in the licensing and economic aspects of intellectual property.
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`A copy of Dr. Eldering’s curriculum vitae is attached as Exhibit F. Dr. Eldering may be called
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`on to testify regarding matters relating to, at least, fair, reasonable, and non-discriminatory
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`license terms and conditions, including royalty rates and levels. Dr. Eldering may also be called
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`to rebut the testimony of InterDigital’s expert or fact witnesses, should any be presented,
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`regarding the same.
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`8.
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`Dr. Richard Gilbert
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`Dr. Gilbert is an expert in the licensing and economic aspects of intellectual property. A
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`copy of Dr. Gilbert’s curriculum vitae is attached as Exhibit G. Dr. Gilbert may be called on to
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`testify regarding matters relating to, at least, fair, reasonable, and non-discriminatory license
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`terms and conditions, including royalty rates and levels. Dr. Gilbert may also be called to rebut
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`BLACKBERRY EX. 1026, pg. 3
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`the testimony of InterDigital’s expert or fact witnesses, should any be presented, regarding the
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`same.
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`9.
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`Mr. John Jarosz
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`Mr. Jarosz is an expert in the licensing and economic aspects of intellectual property. A
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`copy of Mr. Jarosz’s curriculum vitae is attached as Exhibit H. Mr. Jarosz may be called on to
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`testify regarding matters relating to, at least, fair, reasonable, and non-discriminatory license
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`terms and conditions, including royalty rates and levels. Mr. Jarosz may also be called to rebut
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`the testimony of InterDigital’s expert or fact witnesses, should any be presented, regarding the
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`same.
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`10.
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`Dr. Apostolos Kakaes
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`Dr. Kakaes is an expert in the field of wireless communications. A copy of Dr. Kakaes’s
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`curriculum vitae is attached as Exhibit I. Dr. Kakaes may be called on to testify regarding
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`matters relating to, at least, the technical background of InterDigital’s patents; the interpretation
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`of the claims in those patents; the design, structure, function, and operation of the accused
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`products and any article asserted to be protected by the patents; the knowledge of a person of
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`ordinary skill in the art; the scope of the prior art; other issues in connection with infringement,
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`validity, enforceability, and/or the technical prong of the domestic industry requirement; the
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`degree of importance, if any, of the InterDigital patents with respect to any industry standard
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`and/or any accused product, as it may relate to the FRAND royalty rate for any such patent; and
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`any other technical issue that may arise. Dr. Kakaes may also be called to rebut the testimony of
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`InterDigital’s expert or fact witnesses, should any be presented, regarding the same.
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`11. Mr. David Kennedy
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`Mr. Kennedy is an expert in the licensing and economic aspects of intellectual property.
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`BLACKBERRY EX. 1026, pg. 4
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`IPR2014-01508
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`A copy of Mr. Kennedy’s curriculum vitae is attached as Exhibit J. He may be called on to
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`testify regarding matters relating to, at least, domestic industry; licensing; the appropriateness
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`and/or scope of a remedy for this Investigation; and the appropriate amount of any bond to be set
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`in any remedial orders for importation during the Presidential review period. Mr. Kennedy may
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`also be called to rebut the testimony of InterDigital’s expert or fact witnesses, should any be
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`presented, regarding the same.
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`12.
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`Dr. Alon Konchitsky
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`Dr. Konchitsky is an expert in the field of wireless communications. A copy of Dr.
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`Konchitsky’s curriculum vitae is attached as Exhibit K. Dr. Konchitsky may be called on to
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`testify regarding matters relating to, at least, the technical background of InterDigital’s patents;
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`the interpretation of the claims in those patents; the design, structure, function, and operation of
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`the accused products and any article asserted to be protected by the patents; the knowledge of a
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`person of ordinary skill in the art; the scope of the prior art; other issues in connection with
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`infringement, validity, enforceability, and/or the technical prong of the domestic industry
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`requirement; the degree of importance, if any, of the InterDigital patents with respect to any
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`industry standard and/or any accused product, as it may relate to the FRAND royalty rate for any
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`such patent; and any other technical issue that may arise. Dr. Konchitsky may also be called to
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`rebut the testimony of InterDigital’s expert or fact witnesses, should any be presented, regarding
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`the same.
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`13. Mr. Mark Lanning
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`Mr. Lanning is an expert in the field of wireless communications. A copy of Mr.
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`Lanning’s curriculum vitae is attached as Exhibit L. Mr. Lanning may be called on to testify
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`regarding matters relating to, at least, the technical background of InterDigital’s patents; the
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`BLACKBERRY EX. 1026, pg. 5
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`interpretation of the claims in those patents; the design, structure, function, and operation of the
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`accused products and any article asserted to be protected by the patents; the knowledge of a
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`person of ordinary skill in the art; the scope of the prior art; other issues in connection with
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`infringement, validity, enforceability, and/or the technical prong of the domestic industry
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`requirement; the degree of importance, if any, of the InterDigital patents with respect to any
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`industry standard and/or any accused product, as it may relate to the FRAND royalty rate for any
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`such patent; and any other technical issue that may arise. Mr. Lanning may also be called to
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`rebut the testimony of InterDigital’s expert or fact witnesses, should any be presented, regarding
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`the same.
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`14. Mr. Michael Lasinski
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`Mr. Lasinski is an expert in the licensing and economic aspects of intellectual property.
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`A copy of Mr. Lasinski’s curriculum vitae is attached as Exhibit M. Mr. Lasinski may be called
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`on to testify regarding matters relating to, at least, fair, reasonable, and non-discriminatory
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`license terms and conditions, including royalty rates and levels. Mr. Lasinski may also be called
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`to rebut the testimony of InterDigital’s expert or fact witnesses, should any be presented,
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`regarding the same.
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`15.
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`Dr. Vijay Madisetti
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`Dr. Madisetti is an expert in the field of wireless communications. A copy of Dr.
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`Madisetti’s curriculum vitae is attached as Exhibit N. Dr. Madisetti may be called on to testify
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`regarding matters relating to, at least, the technical background of InterDigital’s patents; the
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`interpretation of the claims in those patents; the design, structure, function, and operation of the
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`accused products and any article asserted to be protected by the patents; the knowledge of a
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`person of ordinary skill in the art; the scope of the prior art; other issues in connection with
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`BLACKBERRY EX. 1026, pg. 6
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`infringement, validity, enforceability, and/or the technical prong of the domestic industry
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`requirement; the degree of importance, if any, of the InterDigital patents with respect to any
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`industry standard and/or any accused product, as it may relate to the FRAND royalty rate for any
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`such patent; and any other technical issue that may arise. Dr. Madisetti may also be called to
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`rebut the testimony of InterDigital’s expert or fact witnesses, should any be presented, regarding
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`the same.
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`16.
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`Dr. Steven McLaughlin
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`Dr. McLaughlin is an expert in the field of wireless communications. A copy of Dr.
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`McLaughlin’s curriculum vitae is attached as Exhibit O. Dr. McLaughlin may be called on to
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`testify regarding matters relating to, at least, the technical background of InterDigital’s patents;
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`the interpretation of the claims in those patents; the design, structure, function, and operation of
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`the accused products and any article asserted to be protected by the patents; the knowledge of a
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`person of ordinary skill in the art; the scope of the prior art; other issues in connection with
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`infringement, validity, enforceability, and/or the technical prong of the domestic industry
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`requirement; the degree of importance, if any, of the InterDigital patents with respect to any
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`industry standard and/or any accused product, as it may relate to the FRAND royalty rate for any
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`such patent; and any other technical issue that may arise. Dr. McLaughlin may also be called to
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`rebut the testimony of InterDigital’s expert or fact witnesses, should any be presented, regarding
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`the same.
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`17. Mr. Paul Meyer
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`Mr. Meyer is an expert in the licensing and economic aspects of intellectual property. A
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`copy of Mr. Meyer’s curriculum vitae is attached as Exhibit P. He may be called on to testify
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`regarding matters relating to, at least, fair, reasonable, and non-discriminatory license terms and
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`BLACKBERRY EX. 1026, pg. 7
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`IPR2014-01508
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`conditions, including royalty rates and levels. Mr. Meyer may also be called to rebut the
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`testimony of InterDigital’s expert or fact witnesses, should any be presented, regarding the same.
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`18.
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`Dr. Paul Min
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`Dr. Min is an expert in the field of wireless communications. A copy of Dr. Min’s
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`curriculum vitae is attached as Exhibit Q. Dr. Min may be called on to testify regarding matters
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`relating to, at least, the technical background of InterDigital’s patents; the interpretation of the
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`claims in those patents; the design, structure, function, and operation of the accused products and
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`any article asserted to be protected by the patents; the knowledge of a person of ordinary skill in
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`the art; the scope of the prior art; other issues in connection with infringement, validity,
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`enforceability, and/or the technical prong of the domestic industry requirement; the degree of
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`importance, if any, of the InterDigital patents with respect to any industry standard and/or any
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`accused product, as it may relate to the FRAND royalty rate for any such patent; and any other
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`technical issue that may arise. Dr. Min may also be called to rebut the testimony of InterDigital’s
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`expert or fact witnesses, should any be presented, regarding the same.
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`19.
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`Dr. James Olivier
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`Dr. Olivier is an expert in the field of wireless communications. A copy of Dr. Olivier’s
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`curriculum vitae is attached as Exhibit R. Dr. Olivier may be called on to testify regarding
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`matters relating to, at least, the technical background of InterDigital’s patents; the interpretation
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`of the claims in those patents; the design, structure, function, and operation of the accused
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`products and any article asserted to be protected by the patents; the knowledge of a person of
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`ordinary skill in the art; the scope of the prior art; other issues in connection with infringement,
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`validity, enforceability, and/or the technical prong of the domestic industry requirement; the
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`degree of importance, if any, of the InterDigital patents with respect to any industry standard
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`BLACKBERRY EX. 1026, pg. 8
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`IPR2014-01508
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`and/or any accused product, as it may relate to the FRAND royalty rate for any such patent; and
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`any other technical issue that may arise. Dr. Olivier may also be called to rebut the testimony of
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`InterDigital’s expert or fact witnesses, should any be presented, regarding the same.
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`20.
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`Dr. Michael Samuels
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`Dr. Samuels is an expert in the field of international trade and public affairs. A copy of
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`Dr. Samuels’s curriculum vitae is attached as Exhibit S. Dr. Samuels may be called on to testify
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`regarding matters relating to, at least, international trade practice and policy and any impact or
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`relation an ITC remedy has on the same; and the impact of InterDigital’s conduct to international
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`trade, and the impact on the public interest factors. Dr. Samuels may also be called to rebut the
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`testimony of InterDigital’s expert or fact witnesses, should any be presented, regarding the same.
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`21. Mr. Robert Stoll
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`Mr. Stoll is an expert in the field of intellectual property and legislation and policy of
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`patents. A copy of Mr. Stoll’s curriculum vitae is attached as Exhibit T. Mr. Stoll may be called
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`on to testify regarding matters relating to, at least, InterDigital’s patent prosecution practices; the
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`practices and policies of the intellectual property system; the USPTO; and the impact of
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`InterDigital’s conduct to the patent system. Mr. Stoll may also be called to rebut the testimony
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`of InterDigital’s expert or fact witnesses, should any be presented, regarding the same.
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`22.
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`Dr. Thomas Vander Veen
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`Dr. Vander Veen is an expert in the licensing and economic aspects of intellectual
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`property. A copy of Dr. Vander Veen’s curriculum vitae is attached as Exhibit U. He may be
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`called on to testify regarding matters relating to, at least, domestic industry; licensing; the
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`appropriateness and/or scope of a remedy for this Investigation; and the appropriate amount of
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`any bond to be set in any remedial orders for importation during the Presidential review period.
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`9
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`BLACKBERRY EX. 1026, pg. 9
`Blackberry v. Zipit
`IPR2014-01508
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`Dr. Vander Veen may also be called to rebut the testimony of InterDigital’s expert or fact
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`witnesses, should any be presented, regarding the same.
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`23.
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`Dr. Michael Walker
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`Dr. Walker is an expert in the field of standard setting organizations and ETSI. A copy
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`of Dr. Walker’s curriculum vitae is attached as Exhibit V. He may be called on to testify
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`regarding matters relating to, at least, standard setting organization obligations, commitments
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`and procedures. Dr. Walker may also be called to rebut the testimony of InterDigital’s expert or
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`fact witnesses, should any be presented, regarding the same.
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`24.
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`Dr. Tim Williams
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`Dr. Williams is an expert in the field of wireless communications. A copy of Dr.
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`Williams’s curriculum vitae is attached as Exhibit W. Dr. Williams may be called on to testify
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`regarding matters relating to, at least, the technical background of InterDigital’s patents; the
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`interpretation of the claims in those patents; the design, structure, function, and operation of the
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`accused products and any article asserted to be protected by the patents; the knowledge of a
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`person of ordinary skill in the art; the scope of the prior art; other issues in connection with
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`infringement, validity, enforceability, and/or the technical prong of the domestic industry
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`requirement; the degree of importance, if any, of the InterDigital patents with respect to any
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`industry standard and/or any accused product, as it may relate to the FRAND royalty rate for any
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`such patent; and any other technical issue that may arise. Dr. Williams may also be called to
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`rebut the testimony of InterDigital’s expert or fact witnesses, should any be presented, regarding
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`the same.
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`25.
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`Opinion Testimony from Other Witnesses
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`In addition to the expert witnesses identified above, Huawei reserves the right to offer
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`BLACKBERRY EX. 1026, pg. 10
`Blackberry v. Zipit
`IPR2014-01508
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`opinion testimony from lay witnesses called at the hearing in this Investigation as to matters
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`within the perception of the lay witness. Huawei further reserves the right to elicit testimony that
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`may be deemed expert testimony from lay witnesses who have the requisite scientific, technical,
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`or other specialized knowledge to provide that testimony and hereby designates those lay
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`witnesses as expert with regard to such testimony. These reservations include, but are not limited
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`to, opinion or expert testimony regarding the design, operation, functionality, implementation,
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`manufacture, marketing, sale, or importation of any relevant device, product, or technology.
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`Dated: June 27, 2013
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`Respectfully submitted,
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`
`
`/s/ Wallace J. Lee
`Sturgis M. Sobin
`Ashley E. Miller
`Virginia M. Bruner
`COVINGTON & BURLING LLP
`1201 Pennsylvania Avenue, NW
`Washington, DC 20004-2401
`Tel: 202.662.6000 | Fax: 202.662.6291
`
`David W. Haller
`COVINGTON & BURLING LLP
`620 Eighth Avenue
`New York, New York 10018
`Tel: 212.841.1057
`Fax: 646.441.9057
`
`Stanley Young
`Robert T. Haslam
`Wallace J. Lee
`COVINGTON & BURLING LLP
`333 Twin Dolphin Drive, Suite 700
`Redwood Shores, CA 94065-1418
`Tel: 650.632.4701 | Fax: 650.632.4801
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`BLACKBERRY EX. 1026, pg. 11
`Blackberry v. Zipit
`IPR2014-01508
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`Winslow B. Taub
`COVINGTON & BURLING LLP
`One Front Street
`San Francisco, CA 94111-5356
`Tel: 415.6591.6000 | Fax: 415.6591.6091
`
`Counsel for Respondents Huawei Technologies,
`Co., Ltd., Huawei Device USA, Inc., and Futurewei
`Technologies, Inc.
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`BLACKBERRY EX. 1026, pg. 12
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`EXHIBIT A
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`BLACKBERRY EX. 1026, pg. 13
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`IPR2014-01508
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`BLACKBERRY EX. 1026, pg. 14
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`BLACKBERRY EX. 1026, pg. 15
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`EXHIBIT B
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`BLACKBERRY EX. 1026, pg. 16
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`IPR2014-01508
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`Jonathan is the founder and CEO of PatentRatings, LLC and an
`equity partner in Ocean Tomo, LLC, where he developed and
`patented statistical algorithms for quantitative patent analysis,
`strategic patent capital investment and other initiatives broadly
`aimed at creating and enhancing the value of intellectual capital.
`Jonathan is also the founder and CEO of MQ Gaming, LLC, co-
`founder and CEO of Creative Kingdoms Technologies, LLC,
`and co-founder and former CEO of Creative Kingdoms, LLC
`(now owned and operated by Great Wolf Resorts, Inc.). Prior to
`that Jonathan was a partner at Knobbe, Martens, Olson & Bear,
`LLP, where he specialized in patent prosecution, patent
`licensing and strategic patent management.
`
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`As an engineer, inventor, lawyer and entrepreneur, Jonathan has led the development,
`patenting, commercialization and licensing of new technologies for automated patent
`rating, valuation and analysis, and motion-sensitive controllers and related toys for
`gaming, among others. Jonathan is a prolific inventor and has been awarded over four
`dozen U.S. patents and has been named as an inventor on more than two dozen pending
`patents. Jonathan continues to develop and manage a worldwide portfolio of over 50
`issued and pending patents and related licensing and enforcement initiatives.
`
`Jonathan is a frequent speaker on IP-related topics. He has spoken at Notre Dame's
`Mendoza College of Business, the Chicago-Kent College of Law, Rutgers University and
`before various professional organizations, such as the Licensing Executives Society
`(LES), Licensing Executives Society International (LESI), and the Organisation for
`Economic Co-operation and Development (OECD). Jonathan has been recognized by
`Intellectual Asset Management magazine as one of the world’s top 250 IP Strategists.
`
`Jonathan is a registered patent lawyer and a graduate of Virginia Tech University
`(B.S.M.E. 1987, cum laude) and The University of Michigan Law School (J.D. 1993,
`cum laude).
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`Publications:
`J.Barney & J.Malackowski, "What is Patent Quality? -- A Merchant Banc's Perspective,"
`Les Nouvelles (June 2008)
`J. Barney, "The Quality Conundrum," Intellectual Asset Management (IAM)
`(October/November 2006)
`J. Barney, "A Study of Patent Mortality Rates: Using Statistical Analysis to Rate and
`Value Patent Assets," AIPLA Quarterly Journal (2002)
`J. Barney, "Comparative Quality Analysis – A Statistical Approach for Rating and
`Valuing Patent Assets," NACVA Valuation Examiner (2001)
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`BLACKBERRY EX. 1026, pg. 17
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`EXHIBIT C
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`BLACKBERRY EX. 1026, pg. 18
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`Richard Buttrick
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`Curriculum Vitae
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`Summary of Career
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`2002 – 2009 Senior Vice President, IP& Standards, Philips Electronics
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`1996 – 2002 Deputy Head of Patents Division, BTG International Ltd
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`1988 – 1996 IPR Adviser, British Telecommunications plc
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`1982 – 1988 Patent Attorney, Batchellor, Kirk & Eyles,
`Chartered Patent Attorneys
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`1979 – 1982 Trainee Patent Attorney, Frank B, Dehn & Co,
`Chartered Patent Attorneys
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`Skill set and Accomplishments
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`Richard’s leadership skills have been recognized through senior management
`roles in Philips and BTG, seats on the Board of several private companies, and
`two Board Chairmanships, where he has used his natural diplomatic and
`facilitation skills to lead, guide, and where necessary drive, diverse stakeholders
`to shared goals.
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`Throughout his business career, with BT, BTG and Philips, Richard has worked
`with, and in, teams enabling and empowering people to work together. With
`more senior roles and the evolving world of Intellectual Property, Richard has
`created and grown increasingly diverse teams of Business, Accounting and
`Technical people, as well Legal and IP Specialists, to create and win business.
`
`As a skilled professional, Richard, brings the rich experience of 30 years in the
`field of Intellectual Property, with early work as a Patent Attorney being
`augmented by skills in IP Management and IP Licensing, where he has led,
`managed and/or controlled many hundreds of licensing projects ranging from
`technology licensing to patent litigation, to generate large, sustained licensing
`incomes. He has a particular specialism in the field of IP issues on standards,
`including licensing through patent pools. He has participated in the creation of
`this business sector since the early 1990s, and has worked with others to create
`and manage over a dozen patent pools.
`
`BLACKBERRY EX. 1026, pg. 19
`Blackberry v. Zipit
`IPR2014-01508
`
`

`
`Career Review
`
`Philips Electronics, March 2002 – April 2009
`
`4 successive, major roles, leading teams and managing projects to bring in large,
`sustained IP licensing revenues and manage complex IP issues. Joined Philips
`in April 2002 as Vice President, promoted to Senior Vice President in July 2005
`
`January 2008 – April 2009
`
`BG Executive in Philips Intellectual Property & Standards organization
`responsible for all IP matters for Philips’ Consumer Lifestyle Sector
`(CLS)
`
`Scope of duties included leading 10 man Management Team responsible
`for day to day management of
`IP matters in CLS, e.g. IP (inc Patent and
`Trademark) Creation and Management, IP Value Extraction (inc
`Licensing),
`IP Acquisitions, and IP Counseling, e.g. IP aspects of
`Purchasing and Supply Contracts, IP aspects of Research and
`Development Contracts. The professional team working on CLS IP issues
`was over 100, the Patent Portfolio ~ 2500 patent families; licensing
`revenues > $500M, Purchasing and Supply contract value >> $1B
`
`December 2006 – January 2008
`
`Value Extraction (Licensing) Executive responsible for all IP Value
`Extraction activities in Philips.
`
`Scope of duties included leading team of 6 Value Extraction (Licensing)
`managers responsible for getting value from Philips entire IP portfolio
`including through technology, trademark and patent licensing. Also direct
`involvement in major licensing projects.
`
`Scale of responsibilities: Licensing revenues > $500M
`
`January 2005 – November 2006
`
`Licensing Director responsible for General Patent Licensing and
`Technology Licensing in Philips
`
`BLACKBERRY EX. 1026, pg. 20
`Blackberry v. Zipit
`IPR2014-01508
`
`

`
`Scope of duties included leading team of 5 managers responsible for
`patent licensing and technology licensing. Scale of responsibilities:
`Licensing revenues > $200M
`
`April 2002 – December 2004
`
`Licensing Manager responsible for General Patent Licensing in
`Philips
`
`Scope of duties included managing licensing projects relating to Philips
`patent portfolio, and leading major projects. Scale of responsibilities:
`Licensing revenues > $100M
`
`Other Responsibilities
`
`Various Board Positions in IP related companies in which Philips owned
`minority interest, including periods of Board Chairmanship. Companies varied
`in scale up to $1B turnover and >$100M capital investment.
`
`BLACKBERRY EX. 1026, pg. 21
`Blackberry v. Zipit
`IPR2014-01508
`
`

`
`BTG International Ltd, May 1996 – March 2002
`
`Deputy Head of Patents Division with delegated responsibility and authority for
`all patent matters for BTG’s Electronics Division (E2IT), which developed
`technology licensing opportunities from mainly academic sources.
`
`Duties included direct line management of all E2IT UK patents attorneys (4 full
`time attorneys, 2 external consultants, and other, shared, internal attorneys);
`general authority for BTG’s Patents Division as Deputy to Head of Patents;
`delegated authority for corporate matters in absence Head of Patents.
`
`Other Delegated Management activities from Head of Patents- for example
`invoice auditing for approx £1M external spend; Patents oversight for New
`Finance System
`
`External Face of BTG for patents in Electronics sphere (Clients and Customers
`conferences, media interviews, general patents PR)
`
`Patent attorney work including prosecution and due diligence (e.g. Drug and
`Explosive Detection using NQR, Radio Frequency Tagging (RFID), General
`Radio Portfolio)
`
`Delegated Responsibility for Corporate review on investments etc
`
`British Telecommunications plc, 1988-1996
`
`IPR Adviser with a range of responsibilities evolving from Patent Attorney,
`through IP Adviser on Standards, to a full time Licensing Executive.
`
`Initially, Patent Attorney responsible for Radio and Video technology portfolios
`and management of trainee patent agent. Later, IPR adviser responsible for:
`IPR issues, particularly licensing issues, relating to telecommunications
`standardisation, including representing BT in the European Telecommunications
`Standards Institute (ETSI) during creation of its IPR Policy, involving roles as:
`
` adviser to high-level negotiating team from ETSI to EC Commission
`(1992), and
`Vice-Chairman to ETSI Special Committee in IPR (1994).
`
`
`
`Also, providing support to senior BT management committee responsible for
`policy on IPR/Standards issues.
`
`BLACKBERRY EX. 1026, pg. 22
`Blackberry v. Zipit
`IPR2014-01508
`
`

`
`Later Licensing Executive responsible for broad portfolio of licensing, agreement
`and patent related work, including continuing responsibility for IPR issues relating
`to telecommunications standardisation, as well as activities on portfolio
`management and exploitation.
`
`Batchellor, Kirk & Eyles, Chartered Patent Agents, May 1982 –
`July 1988
`Frank B, Dehn & Co, Chartered Patent Attorneys September
`1979 – May 1982
`
`Trainee Patent Attorney/ Patent Attorney doing:
`
`drafting and prosecution of GB, EP and Foreign Patent Applications for UK
`companies and in particular a large heavy engineering company which produced
`Rolling Mills and associated equipment;
`
`filing and prosecution of EP, DE and FR patent applications for large Japanese
`company (dealing direct with their Patent Department), of varied subject matter
`including several cases relating NMR apparatus, copying machines, and semi-
`conductor devices, as well as numerous other cases; and
`
`Filing and prosecution of GB and EP patent applications for Japanese agents,
`relating in particular to Automobiles and Mechanical Pencils.
`
`University Education
`
`University of Birmingham, 1976-1979
`
`Course: Electronic Engineering & Physics (Joint Honours)
`
`Professional Qualifications:
`
`Chartered Patent Attorney (Passed CIPA Final Examination, 1984)
`
`European Patent Attorney (Passed European Qualifying Examination, 1984)
`
`BLACKBERRY EX. 1026, pg. 23
`Blackberry v. Zipit
`IPR2014-01508
`
`

`
`EXHIBIT D
`
`BLACKBERRY EX. 1026, pg. 24
`Blackberry v. Zipit
`IPR2014-01508
`
`

`
`
`
`
`
`
`
`
`
`
`
`
`
`Education
`
`Alan J. Cox
`Senior Vice President
`
`National Economic Research Associates, Inc.
`1 Front St., Suite 2600
`San Francisco, California 94111
`+1 415 291 1000 Fax +1 415 291 1020
`Direct dial: +1 415 291 1009
`alan.cox@nera.com
`www.nera.com
`
`
`Alan J. Cox
`
`
`
`
`
`University of California, Berkeley
`Ph.D., Business Administration, Economic Analysis and Policy Program, 1989
`Major Fields: Industrial Organization, Finance, Econometrics
`
`University of British Columbia
`M.A., Economics, 1978
`
`York University, Toronto
`B.S., Environmental Science, 1976
`
`Professional Experience
`
`2001-
`
`NERA Econo

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