`
`On behalf of:
`Voip-Pal, Inc.
`By: Kerry S. Taylor
`John M. Carson
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Fax: (858) 707-4001
`Ph.: (858) 707-4000
`E-mail: BoxDigifonica@knobbe.com
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`Filed April 26, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________
`
`APPLE, INC.
`Petitioner
`
`v.
`
`VOIP-PAL.COM, INC.
`Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2016-01198
`Patent 9,179,005
`
`
`
`
`
`
`
`
`
`
`UNOPPOSED MOTION FOR WILLIAM R. ZIMMERMAN TO APPEAR
`PRO HAC VICE ON BEHALF OF VOIP-PAL.COM, INC.
`
`
`
`
`
`
`
`
`
`
`
`IPR2016-01198
`Apple, Inc. v. Voip-Pal, Inc.
`
`
`I.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`
`Pursuant to the Board’s June 18, 2016 Notice of Filing Date (Paper 3) and
`
`37 C.F.R. §§ 42.10(c) and 42.22, Patent Owner Voip-Pal.com, Inc. (“Voip-Pal”)
`
`hereby moves for an Order allowing William R. Zimmerman of Knobbe, Martens,
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`Olson & Bear, LLP to appear pro hac vice on behalf of Voip-Pal in the above-
`
`captioned case. Patent Owner Voip-Pal has conferred with Petitioner Apple, Inc.
`
`(“Apple”), and Apple does not oppose Voip-Pal’s motion to allow Mr. Zimmerman
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`to appear pro hac vice in this matter.
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`II. LIST OF EXHIBITS RELIED UPON FOR THIS MOTION
`
`Voip-Pal Exhibit 2051 - Declaration of William R. Zimmerman in Support
`
`of Motion to Appear Pro Hac Vice on Behalf of Voip-Pal, Inc.
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`III. REASONS THE REQUESTED RELIEF SHOULD BE GRANTED
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`As set forth below in the Statement of Material Facts, Voip-Pal has made all
`
`of
`
`the showings required under 37 C.F.R. § 42.10(c) for recognizing
`
`Mr. Zimmerman pro hac vice. In particular, Mr. Zimmerman is an experienced
`
`litigating attorney who has represented clients in numerous patent litigation cases
`
`in various United States District Courts and the Court of Appeals for the Federal
`
`Circuit, including technically and legally complex matters such as will be present
`
`in this proceeding. Accordingly, allowing Mr. Zimmerman to appear pro hac vice
`
`on behalf of Voip-Pal is appropriate in this proceeding.
`
`1
`
`
`
`IPR2016-01198
`Apple, Inc. v. Voip-Pal, Inc.
`
`
`IV. STATEMENT OF MATERIAL FACTS
`
`1.
`
`37 C.F.R. § 42.10(c) provides that “[t]he Board may recognize
`
`counsel pro hac vice during a proceeding upon a showing of good cause, subject
`
`to the condition that lead counsel be a registered practitioner and to any other
`
`conditions as the Board may impose. For example, where the lead counsel is a
`
`registered practitioner, a motion to appear pro hac vice by counsel who is not a
`
`registered practitioner may be granted upon showing that counsel is an
`
`experienced litigating attorney and has an established familiarity with the subject
`
`matter at issue in the proceeding.”
`
`2.
`
`Lead counsel in this inter partes review proceeding is Kerry S.
`
`Taylor. Mr. Taylor is registered to practice before the United States Patent and
`
`Trademark Office and holds Registration No. 43,947.
`
`3.
`
`As set
`
`forth
`
`in Voip-Pal Exhibit 2051
`
`(the “Zimmerman
`
`Declaration”), Mr. Zimmerman is an experienced litigating attorney with
`
`substantial experience in inter partes review proceedings and familiarity with the
`
`subject matter at issue in this proceeding. Zimmerman Decl. ¶ 2, 4. In particular,
`
`Mr. Zimmerman has over 18 years of experience as a patent litigator and has
`
`represented clients in numerous patent litigation cases in various United States
`
`District Courts and the Court of Appeals for the Federal Circuit. Id. ¶¶ 2, 3. In
`
`addition, Mr. Zimmerman has experience in inter partes review proceedings, for
`
`2
`
`
`
`IPR2016-01198
`Apple, Inc. v. Voip-Pal, Inc.
`
`example, IPR2013-00024, IPR2013-00128, IPR2013-00266, IPR2013-00517,
`
`IPR2013-00518, IPR2014-00549, IPR2014-00550, IPR2014-01093, IPR2015-
`
`00265,
`
`IPR2015-00268,
`
`IPR2016-00397,
`
`IPR2016-00399,
`
`IPR2016-00549,
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`IPR2016-00553, IPR2016-00557, and IPR2016-00559. Id. ¶ 2.
`
`4.
`
`Further, Mr. Zimmerman holds a Bachelor of Science degree in
`
`Chemical Engineering from the University of Notre Dame and served as a law
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`clerk to the Honorable Alvin A. Schall, Circuit Judge of the United States Court of
`
`Appeals for the Federal Circuit. Id. ¶ 3. Moreover, Mr. Zimmerman is
`
`experienced with technically and legally complex matters, such as will be present
`
`in this proceeding. Id.
`
`5. With regard to U.S. Patent 9,179,005 (“the ’005 patent”), the patent at
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`issue in this proceeding, Mr. Zimmerman is familiar with the ’005 patent, and with
`
`the issues in the inter partes review of the ’005 patent, which forms the basis of
`
`this proceeding. Id. ¶ 4. Mr. Zimmerman also is familiar with U.S. Patent
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`8,542,815, and with the issues in related matter IPR2016-01201. In view of his
`
`experience in inter partes review proceedings, legal and technical background, and
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`familiarity with the issues in the present matter and the related matter, Patent
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`Owner Voip-Pal, Inc., has requested his services in the present matter and related
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`matter IPR2016-01201. Id. Denial of his appearance in this case would create an
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`undue burden on Patent Owner.
`
`3
`
`
`
`IPR2016-01198
`Apple, Inc. v. Voip-Pal, Inc.
`
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`6. Mr. Zimmerman has read and will comply with the Office Patent Trial
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`Practice Guide and the Board’s Rules of Practice for Trials set forth in Part 42 of
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`Title 37 of the C.F.R. Id. ¶ 9. Mr. Zimmerman also agrees to be subject to the
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`United States Patent and Trademark Office Rules of Professional Conduct set forth
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`in 37 C.F.R. §§ 11.101 et seq., and disciplinary jurisdiction under 37 C.F.R.
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`§ 11.19(a). Id. ¶ 10.
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`7.
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`Finally, Mr. Zimmerman has attested to the remaining elements of
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`Paragraph 2(b) of the representative “Order – Authorizing Motion for Pro Hac
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`Vice Admission” in Case IPR2013-00639, Paper 7. Id. ¶¶ 4-11; see Notice of
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`Filing Date Accorded to Petition and Time for Filing Patent Owner Preliminary
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`Response (Paper 3) at 2.
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`V. CONCLUSION
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`In view of the foregoing, and having satisfied the requirements of 37 C.F.R.
`
`§ 42.10(c), Voip-Pal hereby moves for an Order allowing William R. Zimmerman
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`of Knobbe, Martens, Olson, & Bear, LLP to appear pro hac vice on behalf of Voip-
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`Pal in the above-captioned case.
`
`
`
`Respectfully submitted,
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
`By: /Kerry Taylor/
`
`
`
`
`
`
`Dated: April 26, 2017
`
`4
`
`
`
`IPR2016-01198
`Apple, Inc. v. Voip-Pal, Inc.
`
`
`
`
`Kerry S. Taylor, Reg. No. 43,947
`John M. Carson, Reg. No. 34,303
`Customer No. 20,995
`Attorneys for Patent Owner
`Voip-Pal, Inc.
`(858) 707-4000
`
`5
`
`
`
`IPR2016-01198
`Apple, Inc. v. Voip-Pal, Inc.
`
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`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify that a true and correct copy of the foregoing UNOPPOSED
`
`MOTION FOR WILLIAM R. ZIMMERMAN TO APPEAR PRO HAC
`
`VICE ON BEHALF OF VOIP-PAL, INC., is being served on April 26, 2017 via
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`e-mail, pursuant to 37 C.F.R. § 42.6(e), to counsel for Apple, Inc., at the addresses
`
`below:
`
`Adam P. Seitz
`Eric A. Buresh
`ERISE IPA, P.A.
`6201 College Blvd., Suite 300
`Overland Park, KS 66211
`Telephone: (913) 777-5600
`Adam.seitz@eriseip.com
`eric.buresh@eriseip.com
`
`
`
`
`Paul R. Hart
`ERISE IPA, P.A.
`5600 Greenwood Plaza Blvd., Suite 200
`Greenwood Village, CO 80111
`Telephone: (913) 777-5600
`Paul.Hart@EriseIP.com
`
`
`By: /Kerry Taylor/
`Kerry S. Taylor, Reg. No. 43,947
`John M. Carson, Reg. No. 34,303
`Attorneys for Patent Owner
`Voip-Pal.com Inc.
`
`
`
`Dated: April 26, 2017
`
`
`25765487
`
`
`
`
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