UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________________________________
`
`MICROSOFT CORPORATION, MICROSOFT MOBILE INC., SAMSUNG
`ELECTRONICS AMERICA, INC. AND SAMSUNG ELECTRONICS CO. LTD.,
`Petitioners
`
`v.
`
`FASTVDO LLC,
`Patent Owner
`_______________
`
`Case IPR2016-01179
`Patent 5,850,482
`___________________________________________________
`
`APPLE INC.,
`Petitioner
`
`v.
`
`FASTVDO LLC,
`Patent Owner
`_______________
`
`Case IPR2016-01203
`Patent 5,850,482
`___________________________________________________
`
`
`
`PATENT OWNER’S MOTION FOR COUNSEL TO WITHDRAW AND
`TO PERMIT SUBSTITUTION OF NEW COUNSEL1
`
`
`
`1 Permission to use a common caption for both cases involving U.S. Patent No.
`5,850,482 was granted by the Board via e-mail dated September 13, 2016.
`
`
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________________________________
`
`MICROSOFT CORPORATION, MICROSOFT MOBILE INC., SAMSUNG
`ELECTRONICS AMERICA, INC. AND SAMSUNG ELECTRONICS CO. LTD.,
`Petitioners
`
`v.
`
`FASTVDO LLC,
`Patent Owner
`_______________
`
`Case IPR2016-01179
`Patent 5,850,482
`___________________________________________________
`
`APPLE INC.,
`Petitioner
`
`v.
`
`FASTVDO LLC,
`Patent Owner
`_______________
`
`Case IPR2016-01203
`Patent 5,850,482
`___________________________________________________
`
`
`
`PATENT OWNER’S MOTION FOR COUNSEL TO WITHDRAW AND
`TO PERMIT SUBSTITUTION OF NEW COUNSEL1
`
`
`
`1 Permission to use a common caption for both cases involving U.S. Patent No.
`5,850,482 was granted by the Board via e-mail dated September 13, 2016.
`
`
`
`
`I.
`
`37 C.F.R. § 42.10 – STATEMENT OF RELIEF REQUESTED
`
`
`
`Patent Owner FastVDO LLC (“FastVDO”), owner of U.S. Patent No.
`
`5,850,482, respectfully requests that the Patent Trial and Appeal Board (“Board”)
`
`hereby enter the appearance of two additional counsel, Wayne M. Helge (Reg. No.
`
`56,905) and Walter D. Davis (Reg. No. 45,137), designate Wayne M. Helge as
`
`lead counsel, and permit current counsel-of-record Neil A. Rubin (Reg. No.
`
`67,030), Amir Naini (Reg. No. 45,770), and Christian W. Conkle to withdraw from
`
`this action.
`
`II.
`
`STATEMENT OF FACTS SUPPORTING WITHDRAWL OF COUNSEL
`
`
`
`On September 9, 2016, the undersigned counsel contacted the Board by
`
`email seeking permission to file this motion. On September 13, 2016, the Board
`
`responded by email with authorization to file this Motion to Withdraw. Patent
`
`Owner hereby requests that current designated counsel be allowed to withdraw
`
`from this proceeding, and that new counsel be designated accordingly, with Wayne
`
`M. Helge being designated as lead counsel.
`
`Patent Owner’s new counsel all meet the requirements of 37 C.F.R. §
`
`42.10(c) as registered practitioners before the USPTO and are registered users of
`
`PTAB E2E. An executed Power of Attorney appointing Patent Owner FastVDO’s
`
`new counsel accompanies this motion as an Exhibit. FastVDO wishes for new
`
`counsel in the above-captioned inter partes review. Specifically, FastVDO has
`
`
`
`
`
`appointed new counsel will be as follows:
`
`Lead Counsel:
`Wayne M. Helge (Reg. No. 56,905)
`Davidson, Berquist, Jackson &
`Gowdey, LLP
`8300 Greensboro Drive, Suite 500
`McLean, VA 22102
`Email: whelge@dbjg.com
`Tel.: 571-765-7700
`
`
`
`Backup Counsel:
`Walter D. Davis (Reg. No. 45,137)
`Davidson, Berquist, Jackson &
`Gowdey, LLP
`8300 Greensboro Drive, Suite 500
`McLean, VA 22102
`Email: wdavis@dbjg.com
`Tel.: 571-765-7700
`
`It is believed that granting this Motion will not hinder the economy, the
`
`integrity of the patent system, the efficient administration of the Office, or the
`
`ability of the Office to timely complete this proceeding. See 35 U.S.C. § 316(b).
`
`
`
`Patent Owner has conferred with Petitioners’ counsel in each of IPR2016-
`
`01179 and -01203. The Petitioners do not oppose this Motion.
`
`III. CONCLUSION
`
`
`
`Patent Owner FastVDO respectfully requests that the Board grant this
`
`Motion to enter the appearance of two additional counsel, to re-designate lead
`
`counsel to Wayne M. Helge, and to allow current counsel-of-record Neil A. Rubin
`
`(Reg. No. 67,030), Amir Naini (Reg. No. 45,770), and Christian W. Conkle to
`
`withdraw.
`
`Dated: September 13, 2016
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`By:
`
`
`
`/s/ Amir A. Naini
`Registration No. 45,770
`Counsel for Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`I hereby certify that on September 13, 2016, a true and correct copy of the
`
`foregoing Patent Owner’s Motion for Counsel to Withdraw and to Permit Substitution of
`
`Counsel was served on Petitioners in both IPR2016-01179 and IPR2016-01203 by
`
`serving the correspondence email addresses of record as follows:
`
`
`Garth A. Winn
`Reg. No. 33,220
`KLARQUIST SPARKMAN, LLP
`One World Trade Center, Suite 1600
`121 S.W. Salmon St.
`Portland, OR 97204
`Telephone: (503)595-5300
`Facsimile: (203)595-5301
`E-mail: garth.winn@klarquist.com
`
`
`
`IPR2016-01179
`Derrick W. Toddy
`Reg. No. 74,591
`KLARQUIST SPARKMAN, LLP
`One World Trade Center, Suite 1600
`121 S.W. Salmon St.
`Portland, OR 97204
`Telephone: (503)595-5300
`Facsimile: (203)595-5301
`E-mail: derrick.toddy@klarquist.com
`
`John D. Vandenberg
`Reg. No. 33,312
`KLARQUIST SPARKMAN, LLP
`One World Trade Center, Suite 1600
`121 S.W. Salmon St.
`Portland, OR 97204
`Telephone: (503)595-5300
`Facsimile: (203)595-5301
`E-mail: john.vandenberg@klarquist.com
`
`
`
`
`
`
`
`
`
`
`IPR2016-01203
`David L. Fehrman
`Reg. No. 28,600
`Morrison & Foerster, LLP
`707 Wilshire Blvd., Suite 6000
`Los Angeles, CA 90017-3543
`Telephone: (213) 892-5601
`Facsimile: (213) 892-5454
`E-mail: dfehrman@mofo.com
`10694-FastVDO-IPR@mofo.com
`
`
`
`
`
`
`
`
`Martin M. Noonen
`Reg. No. 44,264
`Morrison & Foerster, LLP
`707 Wilshire Blvd., Suite 6000
`Los Angeles, CA 90017-3543
`Telephone: (213) 892-5601
`Facsimile: (213) 892-5454
`E-mail: mnoonen@mofo.com
`
`
`
`
`By:
`
`
`
`/s/ Amir A. Naini
`Registration No. 45,770
`Counsel for Patent Owner
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