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Filed on behalf of: LG Electronics, Inc. and
`LG Electronics U.S.A., Inc.
`
`Paper __
`
`By: Brian A. Tollefson, Lead Counsel
`Rothwell, Figg, Ernst & Manbeck, P.C.
`607 14th Street, N.W., Suite 800
`Washington, DC 20005
`Phone: 202-783-6040
`Facsimile: 202-783-6031
`Email: btollefson@rfem.com
`
`Date filed: August 19, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LG ELECTRONICS U.S.A., INC. and LG ELECTRONICS, INC.,
`Petitioner,
`
`V.
`
`ROSETTA-WIRELESS CORPORATION,
`Patent Owner.
`
`Case IPR2016-01516
`Patent 7,149,511 Bl
`
`DECLARATION OF STEVEN LIEBERMAN IN SUPPORT OF
`PETITIONER'S MOTION FOR ADMISSION PRO HAC VICE
`
`

`
`Case IPR2016-01516
`Patent 7,149,511 Bl
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`I, Steven Lieberman, declare as follows:
`
`1.
`
`I have been practicing in the field of intellectual property, and
`
`particularly, patent litigation, for twenty-five years.
`
`2.
`
`I am a member in good standing of the Bars of the State of New York
`
`and the District of Columbia. I am admitted to practice in the United States
`
`District Courts for the District of Columbia, Maryland, the Northern District of
`
`California, and the Northern, Eastern, and Southern Districts of New York. I am
`
`also admitted to practice in the Courts of Appeals for the District of Columbia, the
`
`Second Circuit, the Fourth Circuit, the Federal Circuit, and the United States
`
`Supreme Court.
`
`3.
`
`I am a past President of the Giles S. Rich American Inn of Court, the
`
`D. C. Inn devoted to the practice of intellectual property law.
`
`4.
`
`I have been in private practice since 1985 and have been litigating
`
`patent cases since 1990, primarily as lead counsel.
`
`5.
`
`I have never been suspended or disbarred from practice before any
`
`court or administrative body.
`
`2
`
`

`
`Case IPR2016-01516
`Patent 7,149,511 Bl
`
`6.
`
`I have never had a court or administrative body deny my application
`
`for admission to practice.
`
`7.
`
`No sanctions or contempt citations have ever been imposed against
`
`me by any court or administrative body.
`
`8.
`
`I have read and will comply with the Office Patent Trial Practice
`
`Guide and the Board's Rules of Practice for Trials, as set forth in Part 42 of 37
`
`C.F.R.
`
`9.
`
`I agree to be subject to the US PTO Rules of Professional Conduct set
`
`forth in 37 C.F.R. §§ 11.101 et seq. and disciplinary jurisdiction under 37 C.F.R. §
`
`ll.19(a). I also agree to be subject to the USPTO Rules of Professional Conduct
`
`as set forth in Changes to Representation of Others Before the United States Patent
`
`and Trademark Office; Final Rule, 78 Fed. Reg. 20180 (Apr. 3, 2013) ( effective
`
`May 3, 2013).
`
`10.
`
`In the past three (3) years, I have been admitted pro hac vice in the
`
`following proceedings before the United States Patent and Trademark Office:
`
`-
`
`-
`
`-
`
`International Securities Exchange, LLC v. Chicago Board Options
`Exchange, Incorporated, CBM2013-00049;
`
`International Securities Exchange, LLC v. Chicago Board Options
`Exchange, Incorporated, CBM2013-00050;
`
`International Securities Exchange, LLC v. Chicago Board Options
`Exchange, Incorporated, CBM2013-00051;
`
`3
`
`

`
`Case IPR2016-01516
`Patent 7,149,511 Bl
`
`-
`
`-
`
`-
`
`International Securities Exchange, LLC v. Chicago Board Options
`Exchange, Incorporated, IPR2014-00097;
`
`International Securities Exchange, LLC v. Chicago Board Options
`Exchange, Incorporated, IPR2014-00098;
`
`International Securities Exchange, LLC v. Chicago Board Options
`Exchange, Incorporated, IPR2014-00099;
`
`- Toshiba Samsung Storage Technology Korea Corporation v. LG
`Electronics, Inc., IPR2014-00204;
`
`- Toshiba Samsung Storage Technology Korea Corporation v. LG
`Electronics, Inc., IPR2014-00205;
`
`- LG Electronics, Inc., LG Electronics U.S.A., Inc., and LG Electronics
`Mobilecomm U.S.A., Inc. v. Cypress Semiconductor Corporation,
`IPR2014-01302;
`
`- LG Electronics, Inc., LG Electronics U.S.A., Inc., and LG Electronics
`Mobilecomm U.S.A., Inc. v. Cypress Semiconductor Corporation,
`IPR2014-01342;
`
`- LG Electronics, Inc., LG Electronics U.S.A., Inc., and LG Electronics
`Mobilecomm U.S.A., Inc. v. Cypress Semiconductor Corporation,
`IPR2014-01343;
`
`- LG Electronics, Inc., LG Electronics U.S.A., Inc., and LG Electronics
`Mobilecomm U.S.A., Inc. v. Cypress Semiconductor Corporation,
`IPR2014-01386;
`
`- LG Electronics, Inc., LG Electronics U.S.A., Inc., and LG Electronics
`Mobilecomm U.S.A., Inc. v. Cypress Semiconductor Corporation,
`IPR2014-01396;
`
`- LG Electronics, Inc., LG Electronics U.S.A., Inc., and LG Electronics
`Mobilecomm U.S.A., Inc. v. Cypress Semiconductor Corporation,
`IPR2014-01405;
`
`4
`
`

`
`Case IPR2016-01516
`Patent 7,149,511 Bl
`
`- US Endodontics, LLC v. Gold Standard Instruments, LLC, IPR2015-
`00632; and
`
`- US Endodontics, LLC v. Gold Standard Instruments, LLC, PGR2015-
`00019.
`
`11.
`
`I am familiar with the subject matter at issue in this proceeding. I am
`
`lead counsel in the Rosetta-Wireless Corp. v. LG Electronics Co. and LG
`
`Electronics USA Inc. patent infringement litigation (Case No. 1:15-cv-10608-
`
`EEC), which is pending in the United States District Court for the Northern
`
`District of Illinois and involves the patent at issue in this proceeding.
`
`12.
`
`I hereby declare that all statements made herein of my own
`
`knowledge are true and that all statements made on information and belief are
`
`believed to be true; and further that these statements are made with the knowledge
`
`that willful false statements and the like so made are punishable by fine or
`
`imprisonment, or both, under Section 1001 of Title 18 of the United States Code
`
`and that such willful false statements may jeopardize the validity of U.S. Patent
`
`No. 7,149,511 Bl.
`
`Date: August 19, 2016
`
`By: __ ' - - - - - - - - - - - (cid:173)
`S
`R THWELL, FIGG, ERNST &
`MANBECK, P.C.
`607 14th St., N.W., Suite 800
`Washington, DC 20005
`Phone: 202-783-6040
`Facsimile: 202-783-6031
`Email: slieberm@rfem.com
`
`5
`
`

`
`Case IPR2016-01516
`Patent 7,149,511 Bl
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 19th day of August, 2016, a true and correct copy
`
`of the foregoing DECLARATION OF STEVEN LIEBERMAN IN SUPPORT OF
`
`PETITIONER'S MOTION FOR ADMISSION PRO HAC VICE was served, via
`
`overnight courier upon the following counsel of record for Patent Owner Rosetta(cid:173)
`
`Wireless Corporation:
`
`Miranda Y. Jones, Esq.
`Michael F. Heim, Esq.
`Heim, Payne & Chorush, L.L.P.
`600 Travis Street, Suite 6710
`Houston, TX 77002
`Phone: 713-221-2000
`Facsimile: 713-221-2021
`Emails: mjones@hpcllp.com
`mheim@hpcllp.com
`rosettaIPR@hpcllp.com
`
`I Erik van Leeuwen I
`Erik van Leeuwen
`Litigation Operations Coordinator
`Rothwell, Figg, Ernst & Manbeck, P.C.
`
`6

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