`571-272-7822
`
`
`Paper 12
`Entered: July 19, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`TELULAR CORPORATION,
`Petitioner,
`
`v.
`
`PERDIEM CO., LLC.,
`Patent Owner.
`
`
`Cases1
`IPR2017-00968 (Patent 9,485,314)
`IPR2017-00969 (Patent 8,149,113)
`IPR2017-00973 (Patent 9,319,471)
`IPR2017-01007 (Patent 9,119,033)
`IPR2017-01269 (Patent 9,621,661)
`__________________________
`
`
`Before WILLIAM V. SAINDON, CARL M. DEFRANCO, and
`AMBER L. HAGY, Administrative Patent Judges.
`
`HAGY, Administrative Patent Judge.
`
`
`ORDER
`
`Granting Petitioner’s Motion to Substitute Counsel
`37 C.F.R. § 42.10
`
`
`
`1 This Order addresses issues that are substantially similar in the cases. We
`exercise our discretion to issue one order to be filed in each case.
`
`1
`
`
`
`
`
`
`IPR2017-00968 (Patent 9,485,314)
`IPR2017-00969 (Patent 8,149,113)
`IPR2017-00973 (Patent 9,319,471)
`IPR2017-01007 (Patent 9,119,033)
`IPR2017-01269 (Patent 9,621,661)
`
`On July 18, 2017, pursuant to Board authorization, Petitioner filed a
`
`Motion To Substitute Counsel for each of these proceedings. E.g., IPR2016-
`01061, Paper 40 (“Motion”). Petitioner seeks withdrawal of its current
`backup counsel, Mr. Sharad Bijanki, and replacement of Mr. Bijanki as
`backup counsel with an attorney at the same firm, Mr. Steven G. Hill.
`Motion 2. In a motion filed concurrently, Petitioner seeks admission of Mr.
`Hill pro hac vice. IPR2016-01061, Paper 41 and Exhibit A, which, by way
`of separate order, we have granted. Included within Petitioner’s motion is a
`mandatory notice under 37 C.F.R. § 42.8(b) identifying Mr. Hill as backup
`counsel. In an email dated July 14, 2017, to the Board from counsel for
`Petitioner seeking authorization to file the present motion, Petitioner
`represented that “[t]he parties have conferred and Patent Owner does not
`oppose.”
`Counsel may withdraw from an inter partes review proceeding only
`
`with authorization from the Board. 37 C.F.R. § 42.10(e). Here, we discern
`no reason to deny Petitioner’s motion to substitute Mr. Bijanki with Mr.
`Hill. The change of counsel would not cause any prejudice to either party or
`unnecessary delays in the proceedings, as Petitioner does not seek any
`extensions of time.
`
`It is therefore:
`
`ORDERED that Petitioner’s Motion to Substitute Counsel is granted;
`
`FURTHER ORDERED that Mr. Sharad Bijanki is withdrawn as
`backup counsel from these proceedings; and
`
`
`
`2
`
`
`
`IPR2017-00968 (Patent 9,485,314)
`IPR2017-00969 (Patent 8,149,113)
`IPR2017-00973 (Patent 9,319,471)
`IPR2017-01007 (Patent 9,119,033)
`IPR2017-01269 (Patent 9,621,661)
`
`FURTHER ORDERED that Mr. Steven G. Hill is recognized as
`
`backup counsel for Petitioner in these proceedings.
`
`PETITIONER:
`Vivek Ganti
`Sharad Bijanki
`HILL, KERTSCHER & WHARTON, LLP
`vg@hkw-law.com
`sb@hkw-law.com
`
`
`PATENT OWNER:
`Alan Whitehurst
`Marissa R. Ducca
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`alanwhitehurst@quinnemanuel.com
`marissaducca@quinnemanuel.com
`
`Robert Babayi
`VECTOR IP LAW GROUP
`robert@vectoriplaw.com
`
`
`
`3
`
`
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