Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 39
`Date Entered: January 12, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
` FORD MOTOR COMPANY, JAGUAR LAND ROVER NORTH AMERICA,
`LLC, VOLVO CARS OF NORTH AMERICA, LLC, TOYOTA MOTOR NORTH
`AMERICA, INC., NISSAN NORTH AMERICA, INC., and
`SUBARU OF AMERICA, INC.,
`Petitioner,
`
`v.
`
`CRUISE CONTROL TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00281
`Patent 6,324,463
`____________
`
`
`
`Before JOSIAH C. COCKS, HYUN J. JUNG, and GEORGE R. HOSKINS,
`Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`
`DECISION
`Motions for Counsel to Withdraw and Permit Substitution of New Counsel
`37 C.F.R. § 42.10
`
`
`571-272-7822
`
`
`Paper No. 39
`Date Entered: January 12, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
` FORD MOTOR COMPANY, JAGUAR LAND ROVER NORTH AMERICA,
`LLC, VOLVO CARS OF NORTH AMERICA, LLC, TOYOTA MOTOR NORTH
`AMERICA, INC., NISSAN NORTH AMERICA, INC., and
`SUBARU OF AMERICA, INC.,
`Petitioner,
`
`v.
`
`CRUISE CONTROL TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00281
`Patent 6,324,463
`____________
`
`
`
`Before JOSIAH C. COCKS, HYUN J. JUNG, and GEORGE R. HOSKINS,
`Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`
`DECISION
`Motions for Counsel to Withdraw and Permit Substitution of New Counsel
`37 C.F.R. § 42.10
`
`
`
`Case IPR2014-00281
`Patent 6,324,463
`
`
`1. Introduction
`
`Petitioner entity Ford Motor Company (“Ford”) and Petitioner entity Volvo
`
`Cars of North America, LLC (“Volvo”) have each filed a Motion for counsel to
`withdraw and permit substitution of new counsel. Papers 33 and 34. Each Motion
`requests authorization for withdrawal of Matthew J. Moore as lead counsel and
`Michael B. Eisenberg as back-up counsel, with Mr. Moore to remain as back-up
`counsel. The Motions also request substitution of Eric A. Buresh (Reg. No.
`50,394) as lead counsel, and Jason R. Mudd (Reg. No. 57,700) as back-up counsel
`in this proceeding. Paper 33, 1; Paper 34, 1. The Motions indicate they are not
`opposed by the Patent Owner. Paper 33, 2; Paper 34, 2.
`
`2. Conference Call
`A conference call was held on January 9, 2015 between Judges Cocks and
`
`Jung, and counsel for the respective parties. The Petitioner was represented by
`Robert Steinberg and Jason Mudd. The Patent Owner was represented by John
`Kasha. The purpose of the call was to discuss the above-noted Motions to
`withdraw and substitute counsel. During the call, the panel explained to the parties
`that lead counsel must be a person who speaks on behalf of, and represents, all of
`the companies or entities that constitute the Petitioner in this inter partes
`proceeding. Thus, although the Motions are styled as being submitted by the
`entities Ford and Volvo, in so designating new lead counsel, that lead counsel
`would represent all the entities that make up the Petitioner. Counsel on the call for
`Petitioner acknowledged that lead counsel in this proceeding represents all of the
`entities that form the Petitioner. In that regard, counsel for Petitioner indicated that
`should the motions be granted, the Petitioner understands that Mr. Buresh will
`serve as lead counsel on behalf of all the entities that constitute the Petitioner in
`
`
`
`2
`
`
`
`Case IPR2014-00281
`Patent 6,324,463
`
`this proceeding. Counsel for Patent Owner indicated that the Patent Owner does
`not oppose the Motions, and has no objection to Mr. Buresh serving as lead
`counsel on behalf of the Petitioner.
`
`During the call, counsel for Petitioner also explained that the reference to
`Michael B. Eisenberg in the Motions was a typographical error. In that respect,
`counsel explained that Robert Steinberg had been substituted for Mr. Eisenberg as
`back-up counsel in an earlier updated Mandatory Notices filing (Paper 21). In
`light of that explanation, the panel understands that the pertinent Motions should
`not be regarded as requesting withdrawal of Mr. Eisenberg as back-up counsel, as
`Mr. Eisenberg is no longer counsel of record in this inter partes review proceeding.
`
`3. Conclusion
`In view of the conference call noted above, the panel understands that the
`
`pertinent Motions for withdrawal and substitution of counsel in IPR2014-00281
`were both filed on behalf of the Petitioner as a whole, and that the reference to Mr.
`Eisenberg as a part of those Motions is a typographical error. With that
`understanding in mind, the Motions are granted.
`
`4. Orders
`
`It is
`
`ORDERED that the Motions for withdrawal and substitution of counsel are
`
`granted;
`
`FURTHER ORDERED that Eric A. Buresh is recognized as lead counsel in
`this proceeding;
`
`FURTHER ORDERED that Jason R. Mudd is recognized as back-up
`counsel in this proceeding;
`
`
`
`3
`
`
`
`Case IPR2014-00281
`Patent 6,324,463
`
`FURTHER ORDERED that Matthew J. Moore is now recognized as back-
`
`up counsel in this proceeding; and
`
`FURTHER ORDERED that Petitioner must file updated Mandatory Notices
`under 37 C.F.R § 42.8(b)(3) and (b)(4) in this proceeding, and update the Board’s
`electronic Patent Review Processing System with the appropriate counsel
`information.
`
`
`
`
`
`
`4
`
`
`
`Case IPR2014-00281
`Patent 6,324,463
`
`PETITONER:
`
`Eric A. Buresh
`ERISE IP, P.A.
`eric.buresh@eriseip.com
`
`Jason R. Mudd
`ERISE IP, P.A.
`jason.mudd@eriseip.com
`
`Matthew J. Moore
`LATHAM & WATKINS LLP
`matthew.moore@lw.com
`
`Robert Steinberg
`LATHAM & WATKINS LLP
`bob.steinberg@lw.com
`
`Matthew D. Satchwell
`DLA PIPER LLP (US)
`matthew.satchwell@dlapiper.com
`
`John M. Caracappa
`STEPTOE & JOHNSON LLP
`jcaracap@steptoe.com
`
`Wab Kadaba
`KILPATRICK TOWNSEND & STOCKTON LLP
`wkadaba@kilpatricktownsend.com
`
`William H. Mandir
`SUGHRUE MION PLLC
`wmandir@sughrue.com
`
`
`
`
`
`
`
`
`
`5
`
`
`
`Case IPR2014-00281
`Patent 6,324,463
`
`PATENT OWNER:
`
`John R. Kasha
`KASHA LAW LLC
`john.kasha@kashalaw.com
`
`Kelly L. Kasha
`KASHA LAW LLC
`kelly.kasha@kashalaw.com
`
`
`
`
`
`
`
`
`6
`
`
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