`571-272-7822
`
`
`
`
`
`Paper No. 62
`Entered: January 19, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`VOIP-PAL.COM INC.,
`Patent Owner
`____________
`
`Cases IPR2016-01198 and IPR2016-01201
`Patents 9,179,005 B2 and 8,542,815 B21
`____________
`
`
`Before JOSIAH C. COCKS and JOHN A. HUDALLA, Administrative
`Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`1 This Order pertains to both noted proceedings. The Board exercises its
`discretion to issue a single Order for entry in each proceeding. The parties
`are not authorized to use this style heading for any subsequent papers.
`
`
`
`IPR2016-01198 and IPR2016-01201
`Patent 9,179,005 B2 and 8,542,815 B2
`
`
`1. Introduction
`On January 19, 2017, a call was held between counsel for the
`respective parties and Judges Cocks, Chagnon, and Hudalla. Apple Inc.
`(“Petitioner”) was represented by Adam Seitz. Voip-Pal.com, Inc. (“Patent
`Owner”) was represented by Kevin Malek. In e-mail correspondence
`requesting the call, Patent Owner indicated that it was seeking authorization
`to file a motion for withdrawal of counsel associated with the Knobbe
`Martens law firm2 who had been representing Patent Owner in these
`proceedings.3
`
`2. Discussion
`During the call, counsel for Patent Owner (Mr. Malek) indicated that
`Patent Owner had discharged its prior counsel (Knobbe Martens) and that
`such was the reason for the request to file a motion for withdrawal.
`Petitioner indicated that it objected to Patent Owner’s request to file a
`motion for withdrawal of counsel because a motion requesting sanctions
`against Patent Owner is pending in each of IPR2016-01198 and IPR2016-
`01201 (Paper 55 in each proceeding, “Motions for Sanctions”). According
`to Petitioner, those Motions for Sanctions raise the question of the
`involvement of counsel associated with Knobbe Martens in connection with
`certain correspondence to the Board.
`Pursuant to 37 C.F.R. § 42.10(e), “[c]ounsel may not withdraw from a
`proceeding before the Board unless the Board authorizes such withdrawal.”
`
`
`2 No counsel associated with Knobbe Martens was present on the call.
`3 Both parties had arranged for a court reporter on the call. As agreed by the
`parties, when a transcript of the call is available, Petitioner will file a copy of
`the transcript using its next available exhibit number.
`
`2
`
`
`
`IPR2016-01198 and IPR2016-01201
`Patent 9,179,005 B2 and 8,542,815 B2
`
`At this time, and pending resolution of the Motions for Sanctions, we do not
`authorize either a motion for withdrawal of counsel or any withdrawal of
`counsel. Mr. Malek, however, may take the necessary steps to designate
`himself lead counsel for Patent Owner going forward in these proceedings.
`3. Order
`It is ORDERED that a motion for the withdrawal of counsel is not
`authorized, nor is any counsel authorized to withdraw from these
`proceedings at this time.
`
`
`
`
`
`
`
`
`
`
`3
`
`
`
`IPR2016-01198 and IPR2016-01201
`Patent 9,179,005 B2 and 8,542,815 B2
`
`FOR PETITIONER:
`
`Adam P. Seitz
`Eric A. Buresh
`Paul R. Hart
`ERISE IP, P.A.
`adam.seitz@eriseip.com
`eric.buresh@eriseip.com
`paul.hart@eriseip.com
`
`
`FOR PATENT OWNER:
`
`Kerry Taylor
`John M. Carson
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2kst@knobbe.com
`2jmc@knobbe.com
`BoxDigifonica@knobbe.com
`
`Kevin Malek
`MALEK MOSS PLLC
`kevin.malek@malekmoss.com
`
`4
`
`