`571-272-7822
`
`
`
`
`
`Paper No. 54
`Entered: December 20, 2017
`
`
`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, JENNIFER MEYER CHAGNON, 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 December 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 N. Malek.2 Petitioner arranged for a
`court reporter to transcribe the call. When a transcript of the call is
`available, Petitioner should file a copy of the transcript using its next
`available exhibit number. In e-mail correspondence requesting the call,
`Petitioner indicated that it was seeking “authorization from the Board to file
`a Motion for Entry of Judgment In Favor Of Petitioner As A Sanction For
`Ex Parte Communications and As a Remedy For Due Process Violations,
`Or, Alternatively, For ‘Entirely New’ and ‘Constitutionally Correct’
`Proceedings” (“Motion”). See Ex. 3002. As a part of the e-mail, Petitioner
`attached six .pdf documents, which we make of record in this proceeding as
`Exhibits 3003–3008.
`
`2. Discussion
`During the call, Petitioner represented that it believed certain
`communications (Exs. 3003–3008) constituted improper ex parte
`communications with the Board that warranted the filing of its requested
`
`2 Prior to the call, the Board received an e-mail containing a letter from
`counsel Ryan L. Thomas for Patent Owner indicating that Mr. Malek had
`been retained to represent Patent Owner during the call. See Ex. 3001.
`Mr. Malek indicated that as of the call, he had attempted, but had not yet
`been able to file a power of attorney in connection with these involved
`proceedings. Petitioner did not object to permitting Mr. Malek’s
`representation of Patent Owner for purpose of the call. To continue his
`representation of Patent Owner, Mr. Malek must file a power of attorney in
`each proceeding.
`
`2
`
`
`
`IPR2016-01198 and IPR2016-01201
`Patent 9,179,005 B2 and 8,542,815 B2
`
`Motion. Petitioner indicated that it was prepared to file its requested Motion
`of up to fifteen (15) pages on December 20, 2017. The panel authorized
`Petitioner to file the Motion. The panel also authorized Patent Owner to file
`an opposition to the Motion of up to fifteen (15) pages by January 12, 2018,
`and Petitioner to file a reply of up to ten (10) pages by January 26, 2018.
`During the call, the panel also informed the parties that it was staying
`the deadline (see 37 C.F.R. § 42.71(d)(2)) in each proceeding for the parties
`to file requests for rehearing to the final written decisions that were issued
`on November 20, 2017. See IPR2016-01198, Paper 53; IPR2016-01201,
`Paper 53. Those stays will be in effect pending a decision on Petitioner’s
`Motion in each case.
`
`3. Order
`
`It is
`ORDERED that Petitioner is authorized to file its requested Motion in
`each proceeding no later than December 20, 2017, and numbering no more
`than fifteen (15) pages; and
`FURTHER ORDERED that Patent Owner is authorized to file an
`opposition to each Motion no later than January 12, 2018, and numbering no
`more than fifteen (15) pages;
`FURTHER ORDERED that Petitioner is authorized to file a reply to
`any opposition to each Motion no later than January 26, 2018, and
`numbering no more than ten (10) pages; and
`FURTHER ORDERED that the deadline for filing a request for
`rehearing of the final written decision in each proceeding is stayed pending a
`decision on Petitioner’s Motion.
`
`
`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
`
`4
`
`
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