`Trials@uspto.gov
`571-272-7822 Entered: April 28, 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 B2
`____________
`
`
`
`
`
`Before BARBARA A. BENOIT, LYNNE E. PETTIGREW, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`MARGOLIES, Administrative Patent Judge.
`
`ORDER
`Patent Owner’s Unopposed Motion for Pro Hac Vice Admission of
`William R. Zimmerman
`37 C.F.R. § 42.10
`
`
`
`
`
`
`
`
`IPR2016-01198, IPR2016-01201
`Patent 9,179,005 B2, Patent 8,542,815 B2
`
`Voip-Pal.com, Inc. (“Patent Owner”) filed an Unopposed Motion for
`William R. Zimmerman to Appear Pro Hac Vice on Behalf of Patent Owner.
`Paper 29 (“Motion”).1 Patent Owner also filed a declaration from Mr.
`Zimmerman in support of the Motion. Ex. 2051 (“Declaration”). Apple Inc.
`(“Petitioner”) does not oppose the Motion.
`Having reviewed the Motion and the Declaration, we conclude that
`Mr. Zimmerman has sufficient qualifications to represent Patent Owner in
`these proceedings and that Patent Owner has shown good cause for Mr.
`Zimmerman’s pro hac vice admission. See Unified Patents, Inc. v. Parallel
`Iron, LLC, Case IPR2013-00639 (PTAB Oct. 15, 2013) (Paper 7) (setting
`forth the requirements for pro hac vice admission). Mr. Zimmerman will be
`permitted to appear pro hac vice in these proceedings as back-up counsel
`only. See 37 C.F.R. § 42.10(c).
`Patent Owner is reminded of its obligation under 37 C.F.R. § 42.8 to
`update its mandatory notices with back-up counsel information within 21
`days of a change of information. We take this opportunity to note that,
`despite the granting of Patent Owner’s motion for Pro Hac Vice admission
`of Mr. Ryan Thomas on January 27, 2017 (Paper 16), Patent Owner has not
`updated its mandatory notices to reflect Mr. Thomas’s status.
`
`ORDER
`ORDERED that the Unopposed Motion for William R. Zimmerman to
`Appear Pro Hac Vice on Behalf of Patent Owner is granted, and Mr.
`
`
`1 Patent Owner filed similar motions in IPR2016-01198 and IPR2016-
`01201. For convenience, we cite papers and exhibits filed in IPR2016-
`01198.
`
`2
`
`
`
`IPR2016-01198, IPR2016-01201
`Patent 9,179,005 B2, Patent 8,542,815 B2
`
`Zimmerman is authorized to represent Patent Owner only as back-up
`counsel in these proceedings;
`FURTHER ORDERED that Patent Owner is to continue to have a
`registered practitioner as lead counsel in these proceedings;
`FURTHER ORDERED that Mr. Zimmerman is to comply with the
`Office Patent Trial Practice Guide and the Board’s Rules of Practice for
`Trials, as set forth in Title 37, Part 42 of the Code of Federal Regulations;
`and
`
`FURTHER ORDERED that Mr. Zimmerman is subject to the
`USPTO’s disciplinary jurisdiction under 37 C.F.R. § 11.19(a), and the
`USPTO’s Rules of Professional Conduct set forth at 37 C.F.R. §§ 11.101–
`11.901.
`
`
`
`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
`
`3
`
`