`____________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
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`BOYDSTUN EQUIPMENT MANUFACTURING, LLC,
`Petitioner,
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`v.
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`COTTRELL, INC.,
`Patent Owner
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`____________________
`
`Case IPR2017-00962
`U.S. Patent No. 7,585,140
`____________________
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`DECLARATION OF KYLE M. AMBORN IN
`SUPPORT OF MOTION FOR PRO HAC VICE
`ADMISSION UNDER 37 C.F.R. § 42.10
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`COTTRELL Exhibit 2001 Page 1
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`I, Kyle M. Amborn, declare and attest as follows:
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`IPR2017-00962
`Patent No. 7,585,140
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`1.
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`I am a Counsel for the firm Perkins Coie LLP. I make this
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`declaration in support of Patent Owner Cottrell, Inc.’s Motion for Kyle M.
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`Amborn to Appear Pro Hac Vice Under 37 C.F.R. § 42.10, filed in the above-
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`captioned IPR, No. 2017-00962, involving U.S. Patent No. 7,585,140 (“the ’140
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`patent”).
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`2.
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`I have more than 9 years of litigation experience, and specialize in
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`patent litigation involving a number of technologies, including (for example)
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`computer software, mobile devices, video game hardware, computer displays,
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`pharmaceuticals, aerospace, and mechanical devices, including devices like those
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`at issue here. Attached as Exhibit A is a copy of my professional biography as
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`provided by Perkins Coie LLP, my current employer.
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`3.
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`In 2005, I earned a bachelor’s degree in computer science from
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`Washington University in St. Louis, Missouri.
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`4.
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`Since graduating from the University of Virginia School of Law in
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`2008, I have worked extensively on patent litigation matters, including cases in
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`various federal district courts and the U.S. Court of Appeals for the Federal
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`Circuit. I have represented clients in many phases of litigation including
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`discovery, Markman hearings, jury trials, and appeals.
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`COTTRELL Exhibit 2001 Page 2
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`5.
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`I was admitted to the Washington State Bar on November 14, 2014,
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`IPR2017-00962
`Patent No. 7,585,140
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`and have been a member in good standing since that time. I am also currently a
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`member in good standing of the District of Columbia Bar, and am admitted to
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`practice in the U.S. District Court for the Eastern District of Texas and the U.S.
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`Court of Appeals for the Federal Circuit.
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`6.
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`I have never been suspended or disbarred by any court or
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`administrative body. Nor have I ever been disciplined by a court, bar association,
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`or committee thereof that would reflect unfavorably upon my conduct,
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`competency or fitness as a member of the Bar. No sanctions or contempt
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`citations have been imposed upon me by any court or administrative body. I have
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`never been denied application for admission to practice before any court or
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`administrative body.
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`7.
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`I have read and will comply with the Office Patent Trial Practice
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`Guide and the Board's Rules of Practice for Trials set forth in part 42 of 37 C.F.R.
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`I also understand that I am subject to the USPTO Rules of Professional Conduct
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`set forth in 37 C.F.R. §§ 11.101 et seq. and disciplinary jurisdiction under 37
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`C.F.R. §§ 11.19(a).
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`8.
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`I have not previously applied to appear pro hac vice in other
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`proceedings before the Patent Trial and Appeal Board.
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`COTTRELL Exhibit 2001 Page 3
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`9.
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`I understand that I would be admitted for the limited purpose of
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`IPR2017-00962
`Patent No. 7,585,140
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`appearing in this case only.
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`10.
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`I am familiar with the subject matter of this proceeding. Since June
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`of this year, I have been counsel of record for Patent Owner in a related litigation
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`filed by Petitioner (Boydstun Equipment Manufacturing, LLC v. Cottrell, Inc.,
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`No. 16-00790, D. Or.), which also involves the ’140 patent. I have also worked
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`closely with Lead Counsel and Back-Up Counsel in support of Patent Owner’s
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`efforts in this matter since at least August of this year. As part of this effort, I
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`have closely reviewed the ’140 patent, its prosecution history, the IPR Petition
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`and subsequent filings in this IPR, the declaration offered in support of
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`Boydstun’s Petition, the Board’s Decision on Institution, and the prior art of
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`record. I am, therefore, very familiar with the technology, patent and prior art at
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`issue in this IPR. As such, and in view of my many years of patent litigation, I
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`have knowledge and experience that is important to representing Patent Owner’s
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`interests in this matter.
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`I declare under penalty of perjury that the foregoing is true and correct.
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`Executed on October 26, 2017 in Seattle, Washington.
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`/s/ Kyle M. Amborn
`Kyle M. Amborn
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`COTTRELL Exhibit 2001 Page 4
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that on October 26, 2017, copies of the
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`IPR2017-00962
`Patent No. 7,585,140
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`foregoing document was served on Petitioner at the following email addresses:
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`
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`Stephen Joncus
`Joncus Law LLC
`P.O. Box 838
`Clackamas, OR 97015
`Phone: 971.236.1200
`Email: steve@joncus.net
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`David Madden
`Mersenne Law
`9600 SW Oak Street, Ste. 500
`Tigard, OR 97223
`Phone: 503.679.1671
`Email: dhm@mersenne.com
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`
`
`
` /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
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`COTTRELL Exhibit 2001 Page 5
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`EXHIBIT A
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`EXHIBIT A
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`COTTRELL Exhibit 2001 Page 6
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`Professional Biography
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`|
`KYLE M. AMBORN COUNSEL
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`SEATTLE
`1201 Third Avenue, Suite 4900
`Seattle, WA
`+1.206.359.6876
`KAmborn@perkinscoie.com
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`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.
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`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.
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`RELATED EMPLOYMENT
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`Gibson, Dunn & Crutcher LLP, Washington, D.C., Associate, 2008 - 2011; Summer Associate, 2007
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`Blakely, Sokoloff, Taylor & Zafman LLP, Portland, OR, Summer Associate, 2006
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`The Boeing Company, Integrated Defense Systems, St. Louis, MO, Software Engineering Intern, 2004
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`General Electric Security/Supra Products, Salem, OR, Software Engineering Intern, 2002
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`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.
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`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.
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`REC SOFTWARE V. MOTOROLA
`Representing Motorola Mobility in a case related to handset operating systems.
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`IMMERSION V. HTC
`International Trade Commission
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`COTTRELL Exhibit 2001 Page 7
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`
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`International Trade Commission
`U.S. District Court for the District of Delaware
`Representing HTC in a case related to mobile handset software.
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`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.
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`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.
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`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.
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`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.
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`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.
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`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.
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`AREAS OF FOCUS
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`PRACTICES
`Intellectual Property Law
`Litigation
`Patent Litigation
`Trademark & Copyright Litigation
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`BAR AND COURT ADMISSIONS
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`Washington
`District of Columbia
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`COTTRELL Exhibit 2001 Page 8
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`U.S. District Court for the Western District of Washington
`U.S. District Court for the Eastern District of Texas
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`EDUCATION
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`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
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`© 2017 Perkins Coie LLP
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`COTTRELL Exhibit 2001 Page 9
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