UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PAYPAL, INC.,
`
`Petitioner,
`
`MONEYCAT LTD.,
`Patent Owner
`
`IPR2017-00542
`
`U.S. Patent No. 8,712,918
`
`Title: ELECTRONIC CURRENCY, ELECTRONIC WALLET THEREFOR
`AND ELECTRONIC PAY1\/IENT SYSTEMS E1\/[PLOYING THEM
`
`DECLARATION OF JARED BOBROW IN SUPPORT OF PETITIONER’S
`
`MOTION FOR ADMISSION PRO HAC VICE
`
`Mail Stop “PA TENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`
`P.O. Box 1450
`
`Alexandria, VA 22313-1450
`
`PayPal Ex.1027, p.1
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PAYPAL, INC.,
`
`Petitioner,
`
`MONEYCAT LTD.,
`Patent Owner
`
`IPR2017-00542
`
`U.S. Patent No. 8,712,918
`
`Title: ELECTRONIC CURRENCY, ELECTRONIC WALLET THEREFOR
`AND ELECTRONIC PAY1\/IENT SYSTEMS E1\/[PLOYING THEM
`
`DECLARATION OF JARED BOBROW IN SUPPORT OF PETITIONER’S
`
`MOTION FOR ADMISSION PRO HAC VICE
`
`Mail Stop “PA TENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`
`P.O. Box 1450
`
`Alexandria, VA 22313-1450
`
`PayPal Ex.1027, p.1
`
`
`
`
`I, Jared Bobrow, hereby declare as follows:
`
`1.
`
`I am a member in good standing of the State Bar of California.
`
`I was
`
`admitted to the California State Bar on June 16, 1988. My California Bar
`
`membership number is 133712.
`
`I am admitted to practice before the District
`
`Courts of the Northern, Central, Southern and Eastern Districts of California, and
`
`the Eastern District of Texas.
`
`I am also admitted to practice before the California
`
`State Supreme Court, U.S. Court of Appeals for the Federal Circuit, Ninth Circuit,
`
`and First Circuit. Since 1988 I have practiced in the field of civil litigation. For
`
`over 25 years, my practice has been focused on the field of intellectual property,
`
`particularly patent litigation.
`
`2.
`
`I have never been suspended or disbarred from practice before any court or
`
`administrative body.
`
`3.
`
`I have never had a court or administrative body deny my application for
`
`admission to practice.
`
`4.
`
`I have never had any sanctions or contempt citations imposed on me by any
`
`court or administrative body.
`
`5.
`
`I have read and will comply with the Office Patent Trial Practice Guide and
`
`the Board’s Rules of Practice for Trials set forth in part 42 of 37 CFR.
`
`PayPal Ex.1027, p.2
`
`
`
`
`6.
`
`I agree to be subject to the United States Patent and Trademark Office 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).
`
`7.
`
`I have applied to appear pro hac vice before this office in the following
`
`proceedings in the past three years: CBM2014-00091, CBM20l4-00092, and
`
`CBM2014-00093.
`
`I was admitted to practice in these proceedings, which are
`
`related to the current proceeding, as back-up counsel on March 10, 2015, subject to
`
`filing a supplemental declaration, which filing occurred on March 19, 2015. I have
`
`also applied to appear pro hac vice before this office in the following proceeding in
`
`the past three years:
`
`IPR2015-00657, IPR2015-00658, IPR20l5-00660, IPR2015-
`
`00662, and IPR2015-00666.
`
`I was admitted to practice in these proceedings as
`
`back-up counsel only on May 29, 2015. I have also applied to appear pro hac vice
`
`before this office in the following proceedings in the past three years: IPR2014-
`
`01197, IRP2014-01207, and IPR2014-01209. I was admitted to practice in these
`
`proceedings as back-up counsel on September 16, 2015.
`
`I have also applied to
`
`appear pro hac vice before this office in the following proceedings in the past three
`
`years:
`
`IPR2016-00320, lPR2016—00322, IPR2016—00323, IPR2016-00330.
`
`I was
`
`admitted to practice in these proceedings as back-up counsel on September 26,
`
`2016.
`
`I have also applied to appear pro hac vice before this office in the following
`
`proceeding in the past three years:
`
`IPR2016—00782. The application was filed on
`
`PayPal Ex.1027, p.3
`
`
`
`
`October 3, 2016 and is pending before this office.
`
`I have also applied to appear
`
`pro hac vice before this office in the following proceedings: IPR2017-00279,
`
`IPR2017-00280,
`
`IPR2017-00281,
`
`IPR20l7-00282,
`
`IPR2017-00391,
`
`IPR2017-
`
`OO392, and IPR2017—00406. These applications were filed on January 20, 2017
`
`and are pending before this office.
`
`I am also concurrently applying to appear pro
`
`hac vice before this office in the following proceedings: CBM2017-00024,
`
`CBM20l7-00025,
`
`CBM2017-00026,
`
`CBM2017-00027,
`
`CBM2017-00028,
`
`CBM2017-00029, as well as CBM20l7-00030, and IPR2017-00541.
`
`8.
`
`I am an experienced litigation attorney, with particular experience in patent
`
`infringement litigations in District Courts across the country, including experience
`
`with fact and expert deposition discovery, claim construction, Markman hearings,
`
`motion practice, trials, and hearings.
`
`9.
`
`I am counsel for PayPal, Inc. (“PayPal”), Petitioner and the defendant in a
`
`related pending litigation in the United States District Court for the Northern
`
`District of California,
`
`in which U.S. Patent Nos. 7,590,602, 8,051,011, and
`
`8,195,578 are asserted by the Patent Owner (MoneyCat, Ltd. v. PayPal, Inc., Case
`
`No. 14—cV-02490-JST (N.D. Cal.)). U.S. Patent No. 8,712,918 (the “918 patent”)
`
`is a continuation of U.S. Patent No. 8,195,578 (the “578 patent”).
`
`In
`
`CBM2014-00093, a proceeding in which I was admitted pro hac vice as
`
`backup counsel for the petitioner eBay Inc., the Board entered a final written
`
`PayPal Ex.1027, p.4
`
`
`
`
`decision that claims 1-3, 5-11, and 13-23 of the 578 patent are unpatentable.
`
`Additionally, I was admitted pro hac vice as backup counsel for eBay in
`
`CBM2014-00091
`
`and CBM2014-00092,
`
`concerning U.S. Patent Nos.
`
`8,051,011 and 7,590,602, Which are also related to the 918 patent.
`
`I am
`
`familiar with the subject matter at issue in this proceeding as a result of my
`
`representation of PayPal in the related pending litigation, my representation of
`
`eBay in CBM2014-00091, CBM2014-00092, and CBM2014-00093, and my
`
`representation of eBay in MoneyCat’s appeal of the Board’s final Written decisions
`
`in those CBM proceedings to the Federal Circuit Court of Appeals (see Fed. Cir.
`
`Nos. 2016-1399, 2016-1405, and 2016-1408).
`
`I am familiar with the invalidity
`
`defenses raised and prior art asserted in the related pending litigation and in the
`
`related CBM proceeding, and am familiar with the prior art raised in this
`
`proceeding,
`
`including: Canadian Patent No. 2,221,399 (“Teramura”); Michael
`
`Peirce and Donal O’Mahony, “Scalable, Secure Cash Payment
`
`for WW
`
`Resources With the PayMe Protocol Set,” World Wide Web Journal, Nov. 1995, at
`
`587-601 (“Peirce”); WIPO Pub. No. W0 97/ 19414 (“Haynes”); and U.S. Patent
`
`No. 5,715,402 (“Popolo”).
`
`I have reviewed the briefs and papers filed in this
`
`proceeding
`
`and
`
`in
`
`IPR2017-00541, CBM2014—0009l, CBM20l4-00092,
`
`CBM2014-00093, and CBM20l7—00030.
`
`PayPal Ex.1027, p.5
`
`
`
`
`I declare that all statements made herein of my own knowledge are true and
`
`correct and that all statements made on information and belief are believed to be
`
`true, and further that these statements were 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.
`
`Respectfully submitted,
`
`Dated: February 7, 2017
`
`PayPal Ex.1027, p.6
`
`
`
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