`571–272–7822
`
`
`
`
`Paper 17
`Entered: May 3, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SONY CORPORATION,
`Petitioner,
`
`v.
`
`ONE-E-WAY, INC.,
`Patent Owner.
`_______________
`
`Case IPR2016-01638 (Patent 9,282,396 B2)
`Case IPR2016-01639 (Patent 9,282,396 B2)1
`_______________
`
`
`
`Before DAVID C. MCKONE, ROBERT J. WEINSCHENK, and
`JOHN F. HORVATH, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`1 This Order pertains to both of these cases. Therefore, we exercise our
`discretion to issue a single Order to be filed in each case. The parties are not
`authorized to use this style heading for any subsequent papers.
`
`
`
`
`
`IPR2016-01638 (Patent 9,282,396 B2)
`IPR2016-01639 (Patent 9,282,396 B2)
`
`
`I.
`
`INTRODUCTION
`
`As set forth in the Teleconference Summary entered on
`
`April 28, 2017, Patent Owner’s lead counsel, Ms. Megan Lyman, requested
`
`authorization to withdraw from representation of Patent Owner in these
`
`cases because she was closing her legal practice to pursue another
`
`opportunity. IPR2016-01638, Paper 15; IPR2016-01639, Paper 11. The
`
`substance of previous telephone conference calls regarding Ms. Lyman’s
`
`request to withdraw are summarized in the Teleconference Summary. On
`
`May 1, 2017, Judges McKone, Weinschenk, and Horvath held another
`
`telephone conference call with counsel for Petitioner and Patent Owner and
`
`Mr. C. Earl Woolfork, the Chief Executive Officer of Patent Owner. During
`
`the call, Mr. Woolfork stated that Patent Owner had retained new lead
`
`counsel, Ms. Daphne Burton, and new back-up counsel, Mr. Thomas
`
`Robbins. Mr. Woolfork also stated that he expected Patent Owner to file a
`
`new power of attorney shortly. We again explained to Mr. Woolfork, and
`
`Mr. Woolfork stated that he understood, the importance of retaining new
`
`counsel for Patent Owner as soon as possible.
`
`On May 1, 2017, Patent Owner filed a new power of attorney in both
`
`cases. The power of attorney filed in IPR2016-01638 identifies Ms. Burton
`
`as lead counsel and Mr. Robbins as back-up counsel. However, the power
`
`of attorney filed in IPR2016-01639 only identifies Ms. Burton as lead
`
`counsel. Thus, Patent Owner should file a new power of attorney in
`
`IPR2016-01639 that also identifies Mr. Robbins as back-up counsel. In
`
`addition, Patent Owner should file updated mandatory notices in both cases
`
`that designate Ms. Burton as lead counsel and Mr. Robbins as back-up
`
`counsel. See 37 C.F.R. § 42.8. The updated mandatory notices should
`
`2
`
`
`
`IPR2016-01638 (Patent 9,282,396 B2)
`IPR2016-01639 (Patent 9,282,396 B2)
`
`remove the designation of Ms. Lyman as lead counsel and Mr. Jim Passe as
`
`back-up counsel. After the new power of attorney is filed in IPR2016-01639
`
`and the updated mandatory notices are filed in both cases, Ms. Lyman is
`
`authorized to file a motion to withdraw from representation of Patent Owner
`
`in both cases. Further, as noted in the Teleconference Summary, Mr. Passe
`
`did not file a power of attorney from Patent Owner in either case. As a
`
`result, Mr. Passe need not file a motion to withdraw from representation of
`
`Patent Owner in these cases, but, as discussed above, Patent Owner should
`
`remove the designation of Mr. Passe as back-up counsel in the updated
`
`mandatory notices in both cases.
`
`II. ORDER
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that Patent Owner should file a new power of attorney in
`
`IPR2016-01639 that identifies Mr. Robbins as back-up counsel;
`
`FURTHER ORDERED that Patent Owner should file updated
`
`mandatory notices in both cases that designate Ms. Burton as lead counsel
`
`and Mr. Robbins as back-up counsel and that remove the designation of
`
`Ms. Lyman as lead counsel and Mr. Passe as back-up counsel; and
`
`FURTHER ORDERED that, after the new power of attorney is filed
`
`in IPR2016-01639 and the updated mandatory notices are filed in both cases,
`
`Ms. Lyman is authorized to file a motion to withdraw from representation of
`
`Patent Owner in both cases.
`
`
`
`
`
`3
`
`
`
`IPR2016-01638 (Patent 9,282,396 B2)
`IPR2016-01639 (Patent 9,282,396 B2)
`
`PETITIONER:
`
`John Flock
`Paul T. Qualey
`ANDREWS KURTH KENYON LLP
`johnflock@andrewskurthkenyon.com
`paulqualey@andrewskurthkenyon.com
`
`
`
`PATENT OWNER:
`
`Megan E. Lyman
`LYMAN PATENT SERVICES
`melyman@lymanpatents.com
`
`Jim Passe
`PASSE INTELLECTUAL PROPERTY, LLC
`jpasse@passeip.com
`
`Daphne Burton
`BURTON IP LAW GROUP
`dburton@burtoniplaw.com
`
`Thomas D. Robbins
`tom@trpatents.com
`
`4
`
`
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