`571-272-7822
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`
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` Paper 65
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`Entered: November 7, 2014
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SIPNET EU S.R.O.
`Petitioner,
`
`v.
`
`STRAIGHT PATH IP GROUP, INC.
`Patent Owner.
`____________
`
`Case IPR2013-00246
`Patent 6,108,704
`____________
`
`
`
`
`
`THOMAS L. GIANNETTI, Administrative Patent Judge.
`
`DECISION
`MOTION TO AUTHORIZE WITHDRAWAL
`37 C.F.R. § 42.10(e)
`
`
`Patent Owner has filed a motion to authorize withdrawal of its current
`
` .
`
`
`
`
`
`
`
`counsel, Alicia Carney, Alan Fisch, and Patrick Lee. Paper 64. Patent Owner
`
`
`
`IPR2013-00246
`Patent 6,108,704
`
`states that the motion is unopposed. For the following reasons the motion is
`
`granted.
`
`
`
`
`
`DISCUSSION
`
`Counsel may withdraw from an inter partes review proceeding only with
`
`authorization from the Board. 37 C.F.R. § 42.10(e). Normally, this is
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`accomplished by filing a motion to withdraw, which requires Board authorization
`
`before filing. See 37 C.F.R. § 42.20(b). Once authorization is granted, the motion
`
`is then made by the attorneys seeking to withdraw. See, e.g., Case IPR2013-00010,
`
`Paper 30.
`
`
`
`Here, the motion to withdraw was filed by the Patent Owner, and signed by
`
`Mr. Lee. Patent Owner has filed a new Power of Attorney. Exhibit 2049. The
`
`motion was authorized in advance by the Board.
`
`
`
`Patent Owner has not followed the correct procedure in that the motion
`
`should have been filed by withdrawing counsel. However, because there is no
`
`prejudice shown, the Board will treat the motion as if it were filed by withdrawing
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`counsel.
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`
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`Turning to the merits, the motion designates substitute counsel and back-up
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`counsel who are stated to be registered practitioners and does not seek any time
`
`extensions. In fact, Patent Owner has advised the Board that the substitution of
`
`counsel will not delay the proceeding.
`
`
`
`
`
`
`
`It is therefore
`
`ORDERED that Patent Owner’s Motion to Authorize Withdrawal of
`
`Counsel (Paper 64) is granted;
`
`
`
`2
`
`
`
`IPR2013-00246
`Patent 6,108,704
`
`
`
`FURTHER ORDERED that Alicia Carney, Alan Fisch, and Patrick Lee are
`
`permitted to withdraw as counsel for Patent Owner in this proceeding;
`
`
`
`FURTHER ORDERED that Patent Owner shall file updated mandatory
`
`disclosures within five days of entry of this order designating William A. Meunier
`
`and Matthew D. Durell as lead and back-up counsel, respectively;
`
`
`
`FURTHER ORDERED that withdrawal by Alicia Carney, Alan Fisch, and
`
`Patrick Lee shall become effective upon filing by Patent Owner of the updated
`
`mandatory disclosures specified above.
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`
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`
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`
`
`3
`
`
`
`IPR2013-00246
`Patent 6,108,704
`
`
`
`
`PETITIONER:
`
`Pavel I. Pogodin
`Sanjay Pasad
`Pavel@transpecificlaw.com
`
`
`PATENT OWNER:
`
`Patrick J. Lee
`Alicia M. Carney
`Alan M. Fisch
`alicia.carney@fischllp.com
`patrick.lee@fischllp.com
`
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`4
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`
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