UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`BOYDSTUN EQUIPMENT MANUFACTURING, LLC,
`Petitioner,
`
`v.
`
`COTTRELL, INC.,
`Patent Owner
`
`____________________
`
`Case IPR2017-00962
`U.S. Patent No. 7,585,140
`____________________
`
`DECLARATION OF KYLE M. AMBORN IN
`SUPPORT OF MOTION FOR PRO HAC VICE
`ADMISSION UNDER 37 C.F.R. § 42.10
`
`
`
`COTTRELL Exhibit 2001 Page 1
`
`
`____________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`BOYDSTUN EQUIPMENT MANUFACTURING, LLC,
`Petitioner,
`
`v.
`
`COTTRELL, INC.,
`Patent Owner
`
`____________________
`
`Case IPR2017-00962
`U.S. Patent No. 7,585,140
`____________________
`
`DECLARATION OF KYLE M. AMBORN IN
`SUPPORT OF MOTION FOR PRO HAC VICE
`ADMISSION UNDER 37 C.F.R. § 42.10
`
`
`
`COTTRELL Exhibit 2001 Page 1
`
`
`
`
`
`
`
`I, Kyle M. Amborn, declare and attest as follows:
`
`IPR2017-00962
`Patent No. 7,585,140
`
`1.
`
`I am a Counsel for the firm Perkins Coie LLP. I make this
`
`declaration in support of Patent Owner Cottrell, Inc.’s Motion for Kyle M.
`
`Amborn to Appear Pro Hac Vice Under 37 C.F.R. § 42.10, filed in the above-
`
`captioned IPR, No. 2017-00962, involving U.S. Patent No. 7,585,140 (“the ’140
`
`patent”).
`
`2.
`
`I have more than 9 years of litigation experience, and specialize in
`
`patent litigation involving a number of technologies, including (for example)
`
`computer software, mobile devices, video game hardware, computer displays,
`
`pharmaceuticals, aerospace, and mechanical devices, including devices like those
`
`at issue here. Attached as Exhibit A is a copy of my professional biography as
`
`provided by Perkins Coie LLP, my current employer.
`
`3.
`
`In 2005, I earned a bachelor’s degree in computer science from
`
`Washington University in St. Louis, Missouri.
`
`4.
`
`Since graduating from the University of Virginia School of Law in
`
`2008, I have worked extensively on patent litigation matters, including cases in
`
`various federal district courts and the U.S. Court of Appeals for the Federal
`
`Circuit. I have represented clients in many phases of litigation including
`
`discovery, Markman hearings, jury trials, and appeals.
`
`
`
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`-1-
`
`
`
`COTTRELL Exhibit 2001 Page 2
`
`
`
`
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`
`
`5.
`
`I was admitted to the Washington State Bar on November 14, 2014,
`
`IPR2017-00962
`Patent No. 7,585,140
`
`and have been a member in good standing since that time. I am also currently a
`
`member in good standing of the District of Columbia Bar, and am admitted to
`
`practice in the U.S. District Court for the Eastern District of Texas and the U.S.
`
`Court of Appeals for the Federal Circuit.
`
`6.
`
`I have never been suspended or disbarred by any court or
`
`administrative body. Nor have I ever been disciplined by a court, bar association,
`
`or committee thereof that would reflect unfavorably upon my conduct,
`
`competency or fitness as a member of the Bar. No sanctions or contempt
`
`citations have been imposed upon me by any court or administrative body. I have
`
`never been denied application for admission to practice before any court or
`
`administrative body.
`
`7.
`
`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 C.F.R.
`
`I also understand that I am subject to the USPTO Rules of Professional Conduct
`
`set forth in 37 C.F.R. §§ 11.101 et seq. and disciplinary jurisdiction under 37
`
`C.F.R. §§ 11.19(a).
`
`8.
`
`I have not previously applied to appear pro hac vice in other
`
`proceedings before the Patent Trial and Appeal Board.
`
`
`
`
`-2-
`
`
`
`COTTRELL Exhibit 2001 Page 3
`
`
`
`
`
`
`
`9.
`
`I understand that I would be admitted for the limited purpose of
`
`IPR2017-00962
`Patent No. 7,585,140
`
`appearing in this case only.
`
`10.
`
`I am familiar with the subject matter of this proceeding. Since June
`
`of this year, I have been counsel of record for Patent Owner in a related litigation
`
`filed by Petitioner (Boydstun Equipment Manufacturing, LLC v. Cottrell, Inc.,
`
`No. 16-00790, D. Or.), which also involves the ’140 patent. I have also worked
`
`closely with Lead Counsel and Back-Up Counsel in support of Patent Owner’s
`
`efforts in this matter since at least August of this year. As part of this effort, I
`
`have closely reviewed the ’140 patent, its prosecution history, the IPR Petition
`
`and subsequent filings in this IPR, the declaration offered in support of
`
`Boydstun’s Petition, the Board’s Decision on Institution, and the prior art of
`
`record. I am, therefore, very familiar with the technology, patent and prior art at
`
`issue in this IPR. As such, and in view of my many years of patent litigation, I
`
`have knowledge and experience that is important to representing Patent Owner’s
`
`interests in this matter.
`
`I declare under penalty of perjury that the foregoing is true and correct.
`
`Executed on October 26, 2017 in Seattle, Washington.
`
`/s/ Kyle M. Amborn
`Kyle M. Amborn
`
`
`
`
`
`
`
`
`
`-3-
`
`
`
`
`
`
`
`
`COTTRELL Exhibit 2001 Page 4
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that on October 26, 2017, copies of the
`
`IPR2017-00962
`Patent No. 7,585,140
`
`foregoing document was served on Petitioner at the following email addresses:
`
`
`
`Stephen Joncus
`Joncus Law LLC
`P.O. Box 838
`Clackamas, OR 97015
`Phone: 971.236.1200
`Email: steve@joncus.net
`
`
`
`
`
`
`
`David Madden
`Mersenne Law
`9600 SW Oak Street, Ste. 500
`Tigard, OR 97223
`Phone: 503.679.1671
`Email: dhm@mersenne.com
`
`
`
`
` /s/ Ryan J. McBrayer
`Ryan J. McBrayer, Reg. No. 54,299
`PERKINS COIE LLP
`1201 Third Avenue, Suite 4900
`Seattle, WA 98101
`Phone: 206-359-3073
`Fax: 206-359-4073
`Email: RMcBrayer@perkinscoie.com
`
`
`
`
`-4-
`
`
`
`COTTRELL Exhibit 2001 Page 5
`
`
`
`
`
`
`EXHIBIT A
`EXHIBIT A
`
`
`
`
`
`
`
`COTTRELL Exhibit 2001 Page 6
`
`
`
`Professional Biography
`
`|
`KYLE M. AMBORN COUNSEL
`
`SEATTLE
`1201 Third Avenue, Suite 4900
`Seattle, WA
`+1.206.359.6876
`KAmborn@perkinscoie.com
`
`Kyle Amborn is an attorney with the firm's Intellectual Property practice, focusing primarily on Patent Litigation. Kyle has
`experience representing clients in several areas of litigation, including patents, copyrights, trademarks, antitrust, and
`government and commercial contracts. He has represented clients before a variety of state and federal courts, as well
`as various government agencies. He also has experience prosecuting patents.
`
`Kyle has a computer science background and his practice spans a broad array of industries and technologies, including
`software applications, mobile devices, video game hardware, computer displays, pharmaceuticals, aerospace, and
`mechanical devices.
`
`RELATED EMPLOYMENT
`
`Gibson, Dunn & Crutcher LLP, Washington, D.C., Associate, 2008 - 2011; Summer Associate, 2007
`
`Blakely, Sokoloff, Taylor & Zafman LLP, Portland, OR, Summer Associate, 2006
`
`The Boeing Company, Integrated Defense Systems, St. Louis, MO, Software Engineering Intern, 2004
`
`General Electric Security/Supra Products, Salem, OR, Software Engineering Intern, 2002
`
`EXPERIENCE
`
`PATENT LITIGATION
`
`IA LABS CA, LLC V. NINTENDO COMPANY, LTD & NINTENDO OF AMERICA INC.
`U.S. District Court for the District of Maryland
`Successfully defended and obtained summary judgment of non-infringement for Nintendo in a patent infringement action
`brought by IA Labs related to exercise gaming technology.
`
`IMPULSE TECHNOLOGY LIMITED V. NINTENDO OF AMERICA INC., ET AL.
`U.S. District Court for the Northern District of Ohio
`Defended Nintendo in patent lawsuit relating to exercise videogames. Plaintiff voluntarily dismissed case following claim
`construction.
`
`REC SOFTWARE V. MOTOROLA
`Representing Motorola Mobility in a case related to handset operating systems.
`
`IMMERSION V. HTC
`International Trade Commission
`
`COTTRELL Exhibit 2001 Page 7
`
`
`
`International Trade Commission
`U.S. District Court for the District of Delaware
`Representing HTC in a case related to mobile handset software.
`
`APPLE INC. V. HTC CORPORATION
`International Trade Commission
`U.S. District Court for the District of Delaware
`Defended HTC in actions in the International Trade Commission (ITC) and district court alleging infringement of twenty
`patents relating to operating systems and mobile handsets.
`
`IA LABS CA, LLC. V. NINTENDO COMPANY, LTD., ET AL.
`U.S. District Court for the District of Maryland
`Won summary judgment representing defendant, proving non-infringement.
`
`IMPULSE TECHNOLOGY LTD. V. NINTENDO OF AMERICA INC., ET AL.
`U.S. District Court for the Northern District of Ohio
`Plaintiff dismissed with prejudice after Markman ruling favorable to client Nintendo.
`
`THINKOPTICS, INC. V. NINTENDO OF AMERICA INC., ET AL.
`U.S. District Court for the Eastern District of Texas
`Defended Nintendo in a patent case in the Eastern District of Texas relating to direct-pointing devices and methods.
`
`QUINTAL RESEARCH V. NINTENDO OF AMERICA INC.
`U.S. District Court for the Northern District of California
`Represented Nintendo in a case relating to handheld gaming consoles. Secured summary judgment of noninfringement.
`
`NEWS
`
`01.04.2016
`Perkins Coie Announces 2016 Counsel Promotions
`Press Releases
`Perkins Coie has announced that 32 attorneys have been promoted to the firm’s counsel position, effective January 1,
`2016.
`
`PUBLICATIONS
`
`07.2017/08.2017
`Smartphone Wars Shift to Antitrust and FRAND Disputes
`Articles
`Intellectual Property Magazine
`Smartphone litigation continues to rage on in new battlegrounds involving standards-essential patents and competition
`law.
`
`AREAS OF FOCUS
`
`PRACTICES
`Intellectual Property Law
`Litigation
`Patent Litigation
`Trademark & Copyright Litigation
`
`BAR AND COURT ADMISSIONS
`
`Washington
`District of Columbia
`
`COTTRELL Exhibit 2001 Page 8
`
`
`
`U.S. District Court for the Western District of Washington
`U.S. District Court for the Eastern District of Texas
`
`EDUCATION
`
`University of Virginia School of Law, J.D., Order of the Coif, 2008, Editor, Virginia Tax Review
`Washington University in St. Louis, B.S., Computer Science and Economics, summa cum laude , 2005
`
`© 2017 Perkins Coie LLP
`
`COTTRELL Exhibit 2001 Page 9
`
`
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