`571-272-7822
`
`
`
`
`Paper 36
`
`Entered: December 19, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE, INC.,
`Petitioner,
`
`v.
`
`NETWORK-1 TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00343 (Patent 8,640,179 B1)
`Case IPR2015-00345 (Patent 8,205,237 B2)
`Case IPR2015-00347 (Patent 8,010,988 B2)
`Case IPR2015-00348 (Patent 8,656,441 B1)1
`____________
`
`
`Before KEVIN F. TURNER, LYNNE E. PETTIGREW, and
`JON B. TORNQUIST, Administrative Patent Judges.
`
`PETTIGREW, Administrative Patent Judge.
`
`ORDER
`Granting Petitioner’s Motions for Withdrawal and
`Substitution of Counsel
`37 C.F.R. § 42.10
`
`
`
`
`1 We use this caption in this paper to indicate that this Order applies to, and
`is entered in, all four cases. The parties are not authorized to use this
`caption.
`
`
`
`IPR2015-00343 (Patent 8,640,179 B1)
`IPR2015-00345 (Patent 8,205,237 B2)
`IPR2015-00347 (Patent 8,010,988 B2)
`IPR2015-00348 (Patent 8,656,441 B1)
`
`Petitioner, Google, Inc., filed a Motion for Withdrawal and
`Substitution of Counsel in each of these proceedings. IPR2015-00343,
`Paper 34 (“Mot.”); IPR2015-00345, Paper 35; IPR2015-00347, Paper 35;
`IPR2015-00348, Paper 35.2 In each motion, Petitioner requests
`authorization to withdraw its current lead counsel, James J. Elacqua, and its
`current backup counsel, Douglas R. Nemec, and substitute David M.
`Krinsky and Christopher A. Suarez as lead and backup counsel, respectively.
`Mot. 2. Petitioner asserts that good cause exists for the withdrawal and
`substitution because, among other reasons, Mr. Elacqua has retired from the
`practice of law. Id. at 3. Petitioner also states that Patent Owner, Network-1
`Technologies, Inc., does not oppose the motion. Id.
`Having reviewed Patent Owner’s unopposed motions to withdraw
`lead and backup counsel and substitute new lead and backup counsel, we
`grant the motions. We also note that in three of the proceedings, Petitioner
`has filed a Power of Attorney for Messrs. Krinsky and Suarez and
`practitioners associated with their law firm. IPR2015-00343, Paper 36;
`IPR2015-00347, Paper 34; IPR2015-00348, Paper 34. Upon issuance of this
`order, Petitioner shall file a similar Power of Attorney in IPR2015-00345.
`Petitioner also shall file updated Mandatory Notices in these proceedings
`identifying Mr. Krinsky and Mr. Suarez as lead and backup counsel,
`respectively.
`
`
`
`2 Because the motions are virtually identical, we cite to the papers filed in
`IPR2015-00343 unless otherwise indicated.
`
`2
`
`
`
`IPR2015-00343 (Patent 8,640,179 B1)
`IPR2015-00345 (Patent 8,205,237 B2)
`IPR2015-00347 (Patent 8,010,988 B2)
`IPR2015-00348 (Patent 8,656,441 B1)
`
`It is:
`ORDERED that Petitioner’s Motions for Withdrawal and Substitution
`of Counsel in these proceedings are granted;
`FURTHER ORDERED that within five (5) business days of the date
`of this Order, Petitioner shall file a Power of Attorney for Mr. Krinsky and
`Mr. Suarez in IPR2015-00345 in accordance with 37 C.F.R. § 42.10(b); and
`FURTHER ORDERED that within five (5) business days of this
`Order, Petitioner shall file updated Mandatory Notices identifying
`Mr. Krinsky and Mr. Suarez as lead and backup counsel, respectively, in
`accordance with 37 C.F.R. § 42.8(b)(3).
`
`3
`
`
`
`IPR2015-00343 (Patent 8,640,179 B1)
`IPR2015-00345 (Patent 8,205,237 B2)
`IPR2015-00347 (Patent 8,010,988 B2)
`IPR2015-00348 (Patent 8,656,441 B1)
`
`FOR PETITIONER:
`Douglas R. Nemec
`Skadden, Arps, Slate, Meagher & Flom LLP
`Douglas.Nemec@skadden.com
`
`David M. Krinsky
`Christopher A. Suarez
`Williams & Connolly LLP
`dkrinsky@wc.com
`csuarez@wc.com
`
`
`FOR PATENT OWNER:
`Charles R. Macedo
`Brian A. Comack
`Amster, Rothstein & Ebenstein LLP
`cmacedo@arelaw.com
`N1-Google-IPR@arelaw.com
`
`Gregory Dovel
`Dovel & Lunder, LLP
`greg@dovellaw.com
`
`4
`
`
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