`571-272-7822
`
`
`
` Paper 50
`Entered: April 28, 2016
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WHATSAPP INC. and FACEBOOK, INC.,
`Petitioner,
`
`v.
`
`TRIPLAY, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00740
`Patent 8,332,475 B2
`____________
`
`
`
`Before BENJAMIN D. M. WOOD, BRIAN J. McNAMARA, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`IPPOLITO, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`IPR2015-00740
`Patent 8,332,475 B2
`
`
`On April 26, 2016, by email correspondence to the Board, Patent
`Owner requested authorization to designate additional testimony of Patent
`Owner’s expert to be considered with the testimony cited by Petitioner.
`Patent Owner proposed a filing similar to that authorized in an unrelated
`case before a different panel in Deere & Company v. Richard Gramm,
`IPR2015-00898 (Paper 27). In its email, Patent Owner indicated that
`Petitioner opposes Patent Owner’s request as creating unnecessary work for
`the parties, but Petitioner requests authorization to submit a responsive filing
`if Patent Owner’s request is granted.
`Having considered the parties’ arguments, we deny Patent Owner’s
`request. A separate filing is not necessary because Patent Owner has the
`opportunity to discuss its expert’s responsive testimony at the Oral Hearing.
`Similarly, Petitioner may respond to Patent Owner’s presentation at the Oral
`Hearing should it choose to do so.
`In Patent Owner’s email, Patent Owner further informed us that lead
`counsel, Mr. Barry Schindler, is to present at the 15th IATI-BIOMED 2016
`Conference and is scheduled to fly out of the United States early in the
`afternoon on the day of the Oral Hearing. Thus, Mr. Schindler will not be
`able to attend the Oral Hearing scheduled for May 19, 2016. Patent Owner
`requests that back-up counsel, Mr. Douglas Weider, be permitted to argue
`without Mr. Schindler’s attendance at Oral Hearing. Petitioner does not
`object to this request.
`We remind the parties, generally, we expect that lead counsel will, and
`back-up counsel may, participate in all hearings. Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48,756, 48,758 (Aug. 14, 2012) (emphasis added).
`Nonetheless, given the circumstances, we grant Patent Owner’s request on
`
`2
`
`
`
`
`
`IPR2015-00740
`Patent 8,332,475 B2
`
`the condition that Patent Owner is further represented by a registered
`practitioner present in person at the Oral Hearing. We previously granted
`Patent Owner’s request for pro hac vice admission of Mr. Weider in the
`instant proceeding as back-up counsel. We note that, according to PRPS,
`Patent Owner is also represented by back-up counsel, Mr. Jeremy Monaldo,
`who is a registered practitioner.
`In consideration of the foregoing, it is hereby:
`ORDERED that Patent Owner’s request to designate additional
`testimony of Patent Owner’s expert as responsive to testimony cited by
`Petitioner is denied; and
`FURTHER ORDERED that back-up counsel, Mr. Douglas Weider,
`may argue at the Oral Hearing in Mr. Barry Schindler’s (lead counsel)
`absence on the condition that Patent Owner is represented by a registered
`practitioner present in person at the Oral Hearing.
`
`
`
`PETITIONER:
`
`Heidi Keefe
`hkeefe@cooley.com
`
`Andrew Mace
`amace@cooley.com
`
`Reuben Chen
`WhatsApp_PTAB_IPR@cooley.com
`
`Mark R. Weinstein
`mweinstein@cooley.com
`
`3
`
`
`
`
`
`IPR2015-00740
`Patent 8,332,475 B2
`
`
`
`
`PATENT OWNER:
`
`
`Barry Schindler
`njdocket@gtlaw.com
`
`Jeremy Monaldo
`Monaldo@fr.com
`
`
`4
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