`Tel: 571-272-7822
`
`Paper 12
`Date: October 31, 2022
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Patent Owner.
`____________
`
`IPR2022-00337 (Patent 10,454,655 B2)
`IPR2022-00338 (Patent 8,995,357 B2)
` IPR2022-00343 (Patent 9,300,432 B2)1
`____________
`
`
`Before SALLY C. MEDLEY, SHARON FENICK,
`STEVEN M. AMUNDSON, and STEPHEN E. BELISLE,
`Administrative Patent Judges.2
`
`PER CURIAM.
`
`
`ORDER
`Granting Motion to Withdraw and Substitute Counsel
`37 C.F.R. § 42.10
`
`
`
`
`
`1 We exercise our discretion to issue one Order for these proceedings. These
`proceedings have not been consolidated, and the parties are not permitted to
`use this caption.
`2 This is not an expanded panel. A three-judge panel is assigned to each
`proceeding.
`
`
`
`
`
`IPR2022-00337 (Patent 10,454,655 B2)
`IPR2022-00338 (Patent 8,995,357 B2)
`IPR2022-00343 (Patent 9,300,432 B2)
`
`
`In IPR2022-00337, Apple Inc. (“Petitioner”) filed a Petition
`requesting an inter partes review of claims 1–40 in U.S. Patent No.
`10,454,655 B2, and Telefonaktiebolaget LM Ericsson (“Patent Owner”)
`filed a Preliminary Response. In IPR2022-00338, Petitioner filed a Petition
`requesting an inter partes review of claims 1–4, 6–10, 12, 14–17, and 19–24
`in U.S. Patent No. 8,995,357 B2, and Patent Owner filed a Preliminary
`Response. In IPR2022-00343, Petitioner filed a Petition requesting an inter
`partes review of claims 1–18 in U.S. Patent No. 9,300,432 B2, and Patent
`Owner filed a Preliminary Response.
`In each proceeding, Patent Owner filed a Motion to withdraw and
`substitute counsel. Paper 9. 3 In particular, Patent Owner “requests that
`Brian W. Oaks, be permitted to withdraw as counsel of record and that Chad
`Walters (Reg. No. 48,022) be substituted as Lead Counsel.” Id. at 1. Patent
`Owner states that “Mr. Walters is currently First Backup Counsel in these
`proceedings, is a registered practitioner, meets the requirements of 37 C.F.R.
`§ 42.10, and is ready and able to take over representation in these
`proceedings” and that “withdrawal will not cause any material prejudice
`to any party or any delay in any of the proceedings.” Id.
`Patent Owner states that Petitioner’s counsel “has indicated that
`Petitioner will not oppose the withdrawal of Mr. Oaks.” Id.
`Mr. Oaks no longer works for the law firm representing Patent Owner
`in these proceedings. See Ex. 3001.
`
`
`3 We cite to paper and exhibit numbers filed in IPR2022-00337. Similar
`papers were filed in each proceeding, and we enter the same exhibit in each
`proceeding.
`
`2
`
`
`
`IPR2022-00337 (Patent 10,454,655 B2)
`IPR2022-00338 (Patent 8,995,357 B2)
`IPR2022-00343 (Patent 9,300,432 B2)
`
`
`Under these circumstances, Patent Owner has shown good cause to
`withdraw Mr. Oaks as lead counsel and substitute Mr. Walters as lead
`counsel.
`Accordingly, it is
`ORDERED that Patent Owner’s Motion to withdraw and substitute
`counsel is granted.
`
`
`
`
`3
`
`
`
`IPR2022-00337 (Patent 10,454,655 B2)
`IPR2022-00338 (Patent 8,995,357 B2)
`IPR2022-00343 (Patent 9,300,432 B2)
`
`PETITIONER:
`
`W. Karl Renner
`Thomas A. Rozylowicz
`Andrew. B. Patrick
`Joel A. Henry
`Kim Leung
`Jeremy J. Monaldo
`Hyun Jin In
`Karan Jhurani
`FISH & RICHARDSON P.C.
`IPR50095-0059IP1@fr.com
`IPR50095-0060IP1@fr.com
`IPR50095-0065IP1@fr.com
`PTABInbound@fr.com
`renner@fr.com
`rozylowicz@fr.com
`patrick@fr.com
`jhenry@fr.com
`leung@fr.com
`monaldo@fr.com
`in@fr.com
`jhurani@fr.com
`
`
`PATENT OWNER:
`
`Chad C. Walters
`James Williams
`Matthew Chuning
`BAKER BOTTS L.L.P.
`chad.walters@bakerbotts.com
`james.williams@bakerbotts.com
`matthew.chuning@bakerbotts.com
`
`
`
`4
`
`
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