Filed: January 24, 2017
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`Filed on behalf of:
`Patent Owner Voip-Pal.com Inc.
`By: Kerry Taylor
`John M. Carson
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Tel.: (858) 707-4000
`Fax: (858) 707-4001
`Email:
`BoxDigifonica @knobbe.com
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.
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`Petitioner,
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`v.
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`UNOPPOSED MOTION FOR RYAN THOMAS TO APPEAR
`PRO HAC VICE ON BEHALF OF PATENT OWNER
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`VOIP-PAL.COM INC.,
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`Patent Owner
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`Case No. IPR2016-01201
`U.S. Patent 8,542,815
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`Filed on behalf of:
`Patent Owner Voip-Pal.com Inc.
`By: Kerry Taylor
`John M. Carson
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Tel.: (858) 707-4000
`Fax: (858) 707-4001
`Email:
`BoxDigifonica @knobbe.com
`
`
`
`
`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.
`
`Petitioner,
`
`v.
`
`UNOPPOSED MOTION FOR RYAN THOMAS TO APPEAR
`PRO HAC VICE ON BEHALF OF PATENT OWNER
`
`
`
`
`
`
`
`
`VOIP-PAL.COM INC.,
`
`Patent Owner
`
`
`
`
`Case No. IPR2016-01201
`U.S. Patent 8,542,815
`
`
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`IPR2016-01201
`Apple Inc v. Voip-Pal
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`I.
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`STATEMENT OF THE PRECISE RELIEF REQUESTED
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`Pursuant to the Board’s June 18, 2016 Notice of Filing Date (Paper 3) and
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`37 C.F.R. §§ 42.10(c) and 42.22, Patent Owner Voip-Pal.com, Inc. (“Voip-Pal”)
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`hereby move for an Order allowing Ryan Thomas to appear pro hac vice on behalf
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`of Voip-Pal in the above-captioned case.
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`Counsel for Voip-Pal has conferred with counsel for Petitioner Apple Inc.
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`(“Apple”) regarding this motion, and counsel for Apple stated that they do not
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`oppose the motion.
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`II. LIST OF EXHIBITS RELIED UPON FOR THIS MOTION
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` Voip-Pal Ex. 2002 - Declaration of Ryan Thomas in Support of Motion to
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`Appear Pro Hac Vice on Behalf of Patent Owner.
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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
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`of the showings required under 37 C.F.R. § 42.10(c) for recognizing Mr. Thomas
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`pro hac vice. In particular, Mr. Thomas is an experienced litigation attorney with
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`years of experience working with Voip-Pal and its technology. Accordingly,
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`allowing Mr. Thomas to appear pro hac vice on behalf of Voip-Pal is appropriate
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`in this proceeding.
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`IV. STATEMENT OF MATERIAL FACTS
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`1.
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`37 C.F.R. § 42.10(c) provides that “[t]he Board may recognize
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`-1-
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`IPR2016-01201
`Apple Inc v. Voip-Pal
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`counsel pro hac vice during a proceeding upon a showing of good cause, subject to
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`the condition that lead counsel be a registered practitioner and to any other
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`conditions as the Board may impose. For example, where the lead counsel is a
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`registered practitioner, a motion to appear pro hac vice by counsel who is not a
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`registered practitioner may be granted upon showing that counsel is an experienced
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`litigating attorney and has an established familiarity with the subject matter at issue
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`in the proceeding.”
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`2.
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`Lead counsel in this inter partes review proceeding is Kerry Taylor.
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`Mr. Taylor is registered to practice before the United States Patent and Trademark
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`Office and holds Registration No. 43,947.
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`3.
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`As set forth in Voip-Pal Exhibit 2002 (the “Thomas Declaration”),
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`Mr. Thomas is an experienced litigating attorney and has an established familiarity
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`with the subject matter at issue in this proceeding. Thomas Decl. ¶ 4. In
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`particular, Mr. Thomas has over 30 years of experience as a litigator and has
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`represented clients in numerous litigation cases in various California, Idaho and
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`Utah. Id. ¶ 2.
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`4.
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`Further, Mr. Thomas
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`i s comfortable and experienced with
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`technically and legally complex matters, such as will be present in this
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`proceeding. Id. ¶ 3. In particular, Mr. Thomas is experienced with technically
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`and legally complex matters in the field of telephony. Id. ¶ 3. In addition to his
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`-2-
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`IPR2016-01201
`Apple Inc v. Voip-Pal
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`general experience with technically and legally complex patent matters, Mr.
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`Thomas served as Chief Information Officer at Utah Valley University and chaired
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`the technical services committee for the Utah Education Network. Id. ¶ 3.
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`5. Mr. Thomas is familiar with U.S. Patent 8,542,815 and with the
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`legal subject matter, technical subject matter, and prior art discussed in
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`Petitioner’s request for inter partes review of U.S. Patent 8,542,815, which
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`forms the basis for this proceeding. Id. ¶ 4. Mr. Thomas also i s familiar with
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`the U.S. Patents, legal subject matter, technical subject matter, and prior art at
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`issue in related matters. In view of his legal experience, technical background,
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`and familiarity with the issues in the present matter and the related matters,
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`Patent Owner Voip-Pal, Inc., has requested Mr. Thomas’s services in the
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`present matter and related matter IPR2016-01198. Denial of Mr. Thomas’s
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`appearance in this case would create an undue burden on Patent Owner. Id. ¶ 4.
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`6. Mr. Thomas 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. Thomas also agrees to be subject to the United
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`States Patent and Trademark Office Rules of Professional Conduct set forth in 37
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`C.F.R. §§ 11.101 et seq., and disciplinary jurisdiction under 37 C.F.R. § 11.19(a).
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`Id. ¶ 10.
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`7.
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`Finally, Mr. Thomas has attested to the remaining elements of
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`-3-
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`IPR2016-01201
`Apple Inc v. Voip-Pal
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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 (superseding the “Order –
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`Authorizing Motion for Pro Hac Vice Admission” in IPR2013-00010, Paper 6 that
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`issued prior to publication of the “Changes to Representation of Others Before the
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`United States Patent and Trademark Office;” Final Rule, 78 Fed. Reg. 20180 (Apr.
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`3, 2013) (effective May 3, 2013)). Id. ¶¶ 4-10; see Notice of Filing Date Accorded
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`to Petition and Time for Filing Patent Owner Preliminary 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.
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`§ 42.10(c), Patent Owner hereby move for an Order allowing Ryan Thomas to
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`appear pro hac vice on behalf of Patent Owner in the above-captioned case.
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`Respectfully submitted,
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`KNOBBE, MARTENS, OLSON & BEAR, LLP
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`
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`By: /Kerry Taylor/
`Kerry Taylor, Reg. No. 43,947
`John M. Carson, Reg. No. 34,303
`Customer No. 20,995
`Attorneys for Patent Owner
`Voip-Pal.com Inc.
`(858) 707-4000
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`-4-
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`Dated: January 24, 2017
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`IPR2016-01201
`Apple Inc v. Voip-Pal
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`CERTIFICATE OF SERVICE
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`I hereby certify that true and correct copy of UNOPPOSED MOTION
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`FOR RYAN THOMAS TO APPEAR PRO HAC VICE ON BEHALF OF
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`PATENT OWNER is being served on January 24, 2017, via via electronic mail
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`pursuant to 37 C.F.R. § 42.6(e) as addressed below:
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`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
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`Dated: January 24, 2017
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`23627320
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`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
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`
` /Kerry Taylor/
`Kerry Taylor, Reg. No. 43,947
`John M. Carson, Reg. No. 34,303
`Attorneys for Patent Owner
`Voip-Pal.com Inc.
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`-5-
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