`Tel: 571-272-7822
`
`
`
`
`Paper 33
`Entered: April 3, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.
`Petitioner,
`
`v.
`
`PAPST LICENSING GMBH & CO. KG,
`Patent Owner.
`____________
`
`Case IPR2016-01839 Patent 6,470,399 B1
`Case IPR2016-01842 Patent 9,189,437 B2
`Case IPR2016-01860 Patent 8,966,144 B2
`Case IPR2016-01863 Patent 8,504,746 B2
`Case IPR2016-01864 Patent 6,470,399 B11
`____________
`
`
`Before JONI Y. CHANG, JAMES B. ARPIN, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`ARPIN, Administrative Patent Judge.
`
`
`
`
`DECISION
`On Motion to Withdraw
`37 C.F.R. § 42.10(e)
`
`
`
`
`
`
`
`
`1 We exercise our discretion to issue one Decision to be entered in each case.
`
`
`
`IPR2016-01839 Patent 6,470,399 B1
`IPR2016-01842 Patent 9,189,437 B2
`IPR2016-01860 Patent 8,966,144 B2
`IPR2016-01863 Patent 8,504,746 B2
`IPR2016-01864 Patent 6,470,399 B1
`
`
`I. DISCUSSION
`
`Apple Inc. (“Petitioner”), has filed authorized motions to withdraw its
`current lead counsel and to substitute counsel. IPR2016-01839, Paper 44;
`IPR2016-01842, Paper 32; IPR2016-01860, Paper 30; IPR2016-01863,
`Paper 32; IPR2016-01864, Paper 36. Lori A. Gordon (Registration No.
`50,633), current lead counsel for Petitioner, is no longer associated with the
`law firm Sterne Kessler Goldstein & Fox, P.L.L.C. (Customer No. 26111),
`to whom Petitioner granted power of attorney. IPR2016-01839, Paper 1;
`IPR2016-01842, Paper 1; IPR2016-01860, Paper 1; IPR2016-01863, Paper
`1; IPR2016-01864, Paper 1. Each motion indicates that Patent Owner does
`not oppose the motions to withdraw. IPR2016-01839, Paper 44, 1;
`IPR2016-01842, Paper 32, 1; IPR2016-01860, Paper 30, 1; IPR2016-01863,
`Paper 32, 1; IPR2016-01864, Paper 36, 1. Each motion also indicates that
`current backup counsel, Michael D. Specht (Registration No. 54,463), also
`of Sterne Kessler Goldstein & Fox, P.L.L.C. and named in the respective
`power of attorney (IPR2016-01839, Papers 1 and 42; IPR2016-01842,
`Papers 1 and 31; IPR2016-01860, Papers 1 and 29; IPR2016-01863, Papers
`1 and 31; IPR2016-01864, Papers 1 and 34), will assume the role of lead
`counsel (IPR2016-01839, Paper 44, 1; IPR2016-01842, Paper 32, 1;
`IPR2016-01860, Paper 30, 1; IPR2016-01863, Paper 32, 1; IPR2016-01864,
`Paper 36, 1). Thus, Petitioner will be represented in each case by lead
`counsel, who is a registered patent attorney, after withdrawal of its current
`lead counsel.
`
`2
`
`
`
`IPR2016-01839 Patent 6,470,399 B1
`IPR2016-01842 Patent 9,189,437 B2
`IPR2016-01860 Patent 8,966,144 B2
`IPR2016-01863 Patent 8,504,746 B2
`IPR2016-01864 Patent 6,470,399 B1
`
`
`We understand that Petitioner will file updated Mandatory Notices
`removing Ms. Gordon and identifying Mr. Specht as lead counsel.
`IPR2016-01839, Paper 44, 1; IPR2016-01842, Paper 32, 1; IPR2016-01860,
`Paper 30, 1; IPR2016-01863, Paper 32, 1; IPR2016-01864, Paper 36, 1.
`On the basis of the foregoing, the motions are granted.
`
`II. ORDER
`
`It is
`ORDERED that Lori A. Gordon is no longer recognized as counsel
`for Petitioner in these cases; and
`FURTHER ORDERED that Michael D. Specht is recognized as lead
`counsel for Petitioner in these cases, effective the date of this Decision.
`
`
`
`
`
`3
`
`
`
`IPR2016-01839 Patent 6,470,399 B1
`IPR2016-01842 Patent 9,189,437 B2
`IPR2016-01860 Patent 8,966,144 B2
`IPR2016-01863 Patent 8,504,746 B2
`IPR2016-01864 Patent 6,470,399 B1
`
`For PETITIONER:
`
`Michael Specht
`Steven W. Peters
`Tyler Dutton
`STERNE, KESSLER, GOLDSTEIN & FOX
`mspecht-ptab@sternekessler.com
`speters-ptab@skgf.com
`ymourtad-ptab@skgf.com
`
`
`For PATENT OWNER:
`
`Gregory S. Donahue
`Minghui Yang
`DiNOVO PRICE ELLWANGER & HARDY LLP
`gdonahue@dpelaw.com
`myang@dpelaw.com
`
`Michael R. Fleming
`IRELL & MANELLA LLP
`mfleming@irell.com
`
`Anthony Meola
`Jason. A. Murphy
`Victor J. Baranowshi
`Arlen L. Olsen
`SCHMEISER, OLSEN & WATTS, LLP
`ameola@iplawusa.com
`jmurphy@iplawsa.com
`vbaranowski@iplawusa.com
`aolsen@iplawusa.com
`
`
`4
`
`
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