Paper No. 34
`Date Filed: May 24, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
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`GOOGLE INC.
`Petitioner
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`v.
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`NETWORK-1 TECHNOLOGIES, INC.,
`Patent Owner.
`__________________
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`Case No. IPR2015-00345
`Patent No. 8,205,237
`__________________
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`PETITIONER’S UNOPPOSED MOTION FOR WITHDRAWAL AND
`SUBSTITUTION OF COUNSEL
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`1
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`EGAL_U
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`Date Filed: May 24, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
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`GOOGLE INC.
`Petitioner
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`v.
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`NETWORK-1 TECHNOLOGIES, INC.,
`Patent Owner.
`__________________
`
`Case No. IPR2015-00345
`Patent No. 8,205,237
`__________________
`
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`PETITIONER’S UNOPPOSED MOTION FOR WITHDRAWAL AND
`SUBSTITUTION OF COUNSEL
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`1
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`EGAL_U
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`Case No. IPR2015-00345
`Patent No. 8,205,237
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`I.
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`PRECISE RELIEF REQUESTED
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`Pursuant to 37 C.F.R. § 42.10 and the Board’s order authorizing this motion
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`via email on May 11, 2018, Petitioner respectfully requests that the Board authorize
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`withdrawal of its current lead counsel, James J. Elacqua (Reg. No. 28,412), and
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`backup counsel, Douglas R. Nemec (Reg. No. 41,219), who are current or former
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`practitioners at Skadden, Arps, Slate, Meagher, & Flom LLP.
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`Petitioner further requests that the Board authorize registered practitioners
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`David M. Krinsky (Reg. No. 72,339) and Christopher A. Suarez (Reg. No. 72,553)
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`of Williams & Connolly LLP, to appear in this proceeding as lead and backup
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`counsel, respectively. Petitioner, concurrent with this motion, has filed a power of
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`attorney in this proceeding designating these attorneys as lead and backup counsel.
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`II.
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`STATEMENT SHOWING GOOD CAUSE FOR THE BOARD TO
`AUTHORIZE WITHDRAWAL AND SUBSTITUTION OF
`COUNSEL
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`In 2016, Google appointed Williams & Connolly LLP as its lead counsel in
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`Network-1 Technologies, Inc. v. Google, Inc. & YouTube, LLC, 14-cv-2396
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`(S.D.N.Y.) (the “New York District Court Litigation”). Williams & Connolly has
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`become familiar with this inter partes review proceeding ever since it appeared in
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`the New York District Court Litigation, and this inter partes review proceeding will
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`impact the scope and timing of that District Court litigation. Therefore, Google
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`wishes to appoint Williams & Connolly LLP as its counsel here. Concurrently with
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`Case No. IPR2015-00345
`Patent No. 8,205,237
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`this motion, Petitioner has thus filed a new Power of Attorney designating the
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`practitioners associated with Customer No. 129657 (Williams & Connolly LLP) as
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`its counsel in this proceeding.
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`Good cause exists for the withdrawal of Mr. Elacqua and Mr. Nemec. First,
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`Mr. Elacqua has retired from the practice of law and is no longer available to serve
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`as lead counsel. Second, because this motion seeks the appointment of Williams &
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`Connolly LLP’s attorneys as lead and back-up counsel at Petitioner’s behest, and
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`those attorneys are experienced practitioners who have litigated numerous other
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`inter partes review proceedings before this Board, reasonable steps have been taken
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`to avoid foreseeable prejudice to the rights of the client. See 37 C.F.R. § 10.40(a).
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`Finally, Petitioner believes that granting this motion will not hinder the economy,
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`the integrity of the patent system, the efficient administration of the Office, or the
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`ability of the Office to timely complete this proceeding. See 35 U.S.C. § 316(b).
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`Patent Owner has indicated that it does not oppose the requested withdrawal
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`and substitution of counsel for Petitioner. As noted above, the Board authorized
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`the filing of this motion via an email order on May 11, 2018.
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`III. CONCLUSION
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`Petitioner respectfully requests that the Board grant this motion and (i)
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`authorize withdrawal of James J. Elacqua (Reg. No. 28,412), and backup counsel,
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`Douglas R. Nemec (Reg. No. 41,219), of Skadden, Arps, Slate, Meagher, & Flom
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`Case No. IPR2015-00345
`Patent No. 8,205,237
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`LLP; (ii) authorize David M. Krinsky (Reg. No. 72,339) of Williams & Connolly
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`LLP to appear as lead counsel for Petitioner in this proceeding; and (iii) authorize
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`Christopher A. Suarez (Reg. No. 72,553), to appear as back-up counsel for
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`Petitioner in this proceeding. Upon grant of this motion, Petitioner’s new lead
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`counsel will promptly file updated mandatory disclosures.
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`Dated: May 24, 2018
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` Respectfully Submitted,
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`___/Douglas R. Nemec/______
`Douglas R. Nemec
`Reg. No. 41,219
`Skadden, Arps, Slate, Meagher,
`& Flom LLP
`Telephone: 650-470-4510
`Facsimile: 650-470-4570
`Email:
`douglas.nemec@skadden.com
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`Attorney for Petitioner
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`Case No. IPR2015-00345
`Patent No. 8,205,237
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`CERTIFICATE OF SERVICE
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`I hereby certify that on May 24, 2018, I caused a true and correct copy of the
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`foregoing Petitioner's Unopposed Motion for Withdrawal and Substitution of
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`Counsel to be served electronically on the following counsel of record for Patent
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`Owner at the following email address:
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`
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`Charles R. Macedo
`Amster, Rothstein & Ebenstein LLP
`90 Park Avenue
`New York, New York 10016
`Tel.: (212) 336-8074
`Email: cmacedo@arelaw.com
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`Marc. A Fenster & Brian D. Ledahl
`Russ, August & Kabat LLP
`12424 Wilshire Boulevard, 12th Floor
`Los Angeles, California 90025
`Tel.: (310) 826-7474
`Email: mfenster@raklaw.com
`Email: bledahl@raklaw.com
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`By: /Douglas R. Nemec/
` Douglas R. Nemec (Reg. No. 41,219)
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