`571-272-7822
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` Paper 24
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`Entered: March 21, 2013
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MOTOROLA MOBILITY LLC
`Petitioner,
`
`v.
`
`MICHAEL ARNOUSE
`Patent Owner.
`____________
`
`Case IPR2013-00010 (MPT)
`Patent 7,516,484
`____________
`
`
`
`
`Before MICHAEL P. TIERNEY, JONI Y. CHANG, and JENNIFER S. BISK,
`Administrative Patent Judges.
`
`
`
`CHANG, Administrative Patent Judge.
`
`ORDER
`Authorizing Motion to Withdraw as Counsel
`37 C.F.R. § 42.10(e)
`
`
`
`
`
`
`
`
`Case IPR2013-00010
`Patent 7,516,484
`
`On March 19, 2013, a telephone conference call was held including the
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`following individuals:
`(1) Thomas D. Kohler, counsel for the patent owner;
`(2) Mr. Michael Arnouse;
`(3) Ko-Fang Chang and Steven D. Moore, counsel for Motorola Mobility
`LLC; and
`(4) Michael P. Tierney, Joni Y. Chang, and Jennifer S. Bisk,
`Administrative Patent Judges.
`Mr. Kohler initiated the conference call to seek authorization to file a motion
`to withdraw as counsel. Mr. Kohler indicated that Mr. Arnouse would like to
`represent himself as a pro se patent owner. Mr. Kohler requested mandatory
`withdrawal under 37 C.F.R. § 10.40(b)(4). Mr. Kohler alleged that Mr. Arnouse
`discharged him as counsel, and that he could not continue his representation of the
`patent owner in this proceeding. Mr. Arnouse did not raise an objection to Mr.
`Kohler’s continuing his representation of the patent owner until such time as the
`Board authorizes Mr. Kohler’s withdrawal as counsel.
`The Board explained that, under 37 C.F.R. § 42.10(e), counsel may not
`withdraw from a proceeding before the Board unless the Board authorizes such
`withdrawal. In that regard, 37 C.F.R. § 10.40(a) provides that “a practitioner shall
`not withdraw from employment until the practitioner has taken reasonable steps to
`avoid foreseeable prejudice to the rights of the client, including giving due notice
`to his or her client, [and] allowing time for employment of another practitioner.”
`In deciding a motion to withdraw as counsel, the Board will consider the effect of
`granting such a motion “on the economy, the integrity of the patent system, the
`efficient administration of the Office, and the ability of the Office to timely
`complete proceedings.” See 35 U.S.C. § 316(b).
`
`
`
`2
`
`
`
`Case IPR2013-00010
`Patent 7,516,484
`
`
`The Board raised several concerns regarding Mr. Kohler’s request to
`withdraw as counsel, specifically the burden on the patent owner to proceed in this
`trial without counsel and what reasonable steps have been taken by counsel to
`avoid foreseeable prejudice to the patent owner’s rights. Moreover, based on this
`record, it is uncertain whether Arnouse Digital Devices Corp. (“ADD”) is
`effectively the patent owner.
`On June 16, 2011, ADD, as exclusive licensee of the ’484 patent, filed a law
`suit against Motorola Mobility, Inc. for patent infringement.1 (Ex. 2003, 1.)
`According to the first amended complaint filed on October 5, 2011, “ADD’s
`exclusive license runs for the full term of the ’484 patent and includes all
`substantial rights in such patent, including the explicit right to sue and recover
`damages for infringement of the ’484 patent and to otherwise seek enforcement of
`the rights it owns under the ’484 patent.” (Ex. 1007, 2:11.)
`If ADD is effectively the patent owner, Mr. Arnouse may not represent
`himself as a pro se patent owner in this instant trial. See Talasila, Inc. v. United
`States, 240 F.3d 1064, 1066 (Fed. Cir. 2001). Even if Mr. Arnouse is permitted to
`represent himself as a pro se patent owner, it is unclear whether counsel has
`informed Mr. Arnouse of the possible consequences of the withdrawal without
`replacement counsel. Therefore, any motion to withdraw as counsel filed in this
`trial must also include: (1) a statement by counsel of what information has been
`given to Mr. Arnouse regarding the possible consequences of the withdrawal of
`counsel without replacement counsel; and (2) a statement signed by Mr. Arnouse
`that he understood those possible consequences.
`
`
`
`1 Arnouse Digital Devices Corp. v. Motorola Mobility, Inc., No. 5:11-cv-00155-cr
`(D. Vt.).
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`
`
`3
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`
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`Case IPR2013-00010
`Patent 7,516,484
`
`
`It is
`ORDERED that counsel for the patent owner is authorized to file a motion
`to withdraw as counsel; the motion is due on March 26, 2013;
`FURTHER ORDERED that the motion to withdraw as counsel must
`identify which identity is the patent owner, the basis of the withdrawal, and the
`steps that have been taken by counsel to avoid foreseeable prejudice to the patent
`owner’s rights; and
`FURTHER ORDERED that the motion to withdraw as counsel must
`include: (1) a statement by counsel of what information has been given to Mr.
`Arnouse regarding the possible consequences of the withdrawal of counsel without
`replacement counsel; and (2) a statement signed by Mr. Arnouse that he
`understood those possible consequences.
`
`
`
`PETITIONER:
`Ko-Fang Chang,
`Steven D. Moore,
`KILPATRICK TOWNSEND & STOCKTON LLP
`kchang@kilpatricktownsend.com
`smoore@kilpatricktownsend.com
`
`PATENT OWNER:
`Lawrence H. Meier,
`Thomas D. Kohler,
`Downs Rachlin Martin PLLC
`lmeier@drm.com
`tkohler@drm.com
`
`
`
`4