`571–272–7822
`
`
`
`
`Paper 11
`Entered: April 28, 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.
`
`TELECONFERENCE SUMMARY
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`1 This Summary pertains to both of these cases. Therefore, we exercise our
`discretion to issue a single Summary 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)
`
`
`In an email on March 30, 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. On April 6, 2017, Judges Weinschenk and
`Horvath held a telephone conference call with counsel for Petitioner and
`Patent Owner. During the call, Ms. Lyman indicated that Patent Owner was
`in the process of finding new lead counsel, but had not retained anyone yet.
`We requested that Ms. Lyman explain to Patent Owner the importance of
`retaining new lead counsel as soon as possible and requested that Ms.
`Lyman provide us with a status update by April 12, 2017. We also
`explained to Patent Owner’s identified back-up counsel, Mr. Jim Passe, that
`he must file a power of attorney from Patent Owner if he intends to serve as
`back-up counsel for Patent Owner in these cases. In an email on April 12,
`2017, Ms. Lyman informed us that Patent Owner had not retained new lead
`counsel yet.
`On April 24, 2017, Judges McKone, Weinschenk, and Horvath held a
`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 identified new lead
`counsel, Ms. Daphne Burton, but had not executed a formal agreement to
`retain Ms. Burton yet. Mr. Woolfork stated that he expected Patent Owner
`to execute a formal agreement to retain Ms. Burton shortly. Because of the
`upcoming deadlines in these cases, we explained to Mr. Woolfork the
`importance of retaining new lead counsel for Patent Owner as soon as
`possible.
`
`2
`
`
`
`IPR2016-01638 (Patent 9,282,396 B2)
`IPR2016-01639 (Patent 9,282,396 B2)
`
`
`Specifically, during the call on April 24, 2017, we explained to Mr.
`Woolfork, and Mr. Woolfork stated that he understood, each of the
`following: 1) that one possible outcome in these cases is that the claims of
`the challenged patent owned by Patent Owner may be found unpatentable;
`2) that the likelihood of an outcome adverse to Patent Owner in these cases
`may increase significantly if Patent Owner is unrepresented or does not
`retain new lead counsel promptly; 3) that Patent Owner’s Responses to the
`Petitions in these cases are currently due May 17, 2017; and 4) that any
`arguments for patentability not raised in Patent Owner’s Responses may be
`waived. Accordingly, we encouraged Mr. Woolfork to retain new lead
`counsel for Patent Owner, and to have new lead counsel file a power of
`attorney and make an appearance in these cases by updating Patent Owner’s
`mandatory notices by April 28, 2017.
`
`
`
`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
`
`4
`
`
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