`Trials@uspto.gov
`571-272-7822 Entered: January 22, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNITED SERVICES AUTOMOBILE ASSOCIATION,
`Petitioner,
`
`v.
`
`NADER ASGHARI-KAMRANI and KAMRAN ASGHARI-KAMRANI,
`Patent Owner.
`____________
`
`Case IPR2015-01842
`Patent 8,266,432 B2
`____________
`
`
`Before SALLY C. MEDLEY, JUSTIN T. ARBES, and
`KIMBERLY McGRAW, Administrative Patent Judges.
`
`McGRAW, Administrative Patent Judge.
`
`
`ORDER
`Motion to Withdraw and Substitute Counsel
`37 C.F.R. § 42.10
`
`Jae Youn Kim, Harold L. Novick, and Sang Ho Lee, counsel for
`
`Patent Owner, have filed a motion to withdraw as counsel. Paper 8. Patent
`
`Owner concurrently filed a power of attorney appointing Reece Nienstadt of
`
`Mei & Mark LLP as lead counsel and Krystyna Colantoni and Lei Mei, both
`
`of Mei & Mark LLP as back-up counsel. Paper 9.
`
`Petitioner opposes the withdrawal of the Novick, Kim & Lee
`
`
`
`
`
`Case IPR2015-01842
`Patent 8,266,432 B2
`
`
`attorneys and appointment of the Mei & Mark attorneys. Paper 11.
`
`Petitioner contends the Mei & Mark attorneys are also counsel of record in a
`
`co-pending district court litigation and that allowing counsel to proceed in
`
`both proceedings creates the potential for abuse through the amendment
`
`process. Id. at 4. Petitioner requests adoption of a protective order that
`
`allows Petitioner to reveal confidential information in the district court
`
`litigation without that information being used in this inter partes proceeding.
`
`Id. at 5–6. Petitioner also asserts that absent entry of a protective order, if
`
`Patent Owner switches firms again, “[Petitioner] is left unprotected when the
`
`next firm shows up.” Id. at 6.
`
`We are not persuaded by Petitioner’s arguments. Petitioner’s
`
`concerns primarily relate to the disclosure of information in the district court
`
`proceeding. The proper forum for seeking relief on that issue is the district
`
`court. At this time, Petitioner has not cited any order, in the district court
`
`proceeding or otherwise, that would prohibit the Mei & Mark attorneys from
`
`participating in this proceeding. Id. at 5. We presume that if anything
`
`changes in that regard, counsel will promptly notify the Board.
`
`Regarding disclosure of confidential material in this proceeding, we
`
`direct the parties’ attention to the Practice Guide, which provides guidance
`
`on the entry of protective orders. Office Patent Trial Practice Guide, 77 Fed.
`
`Reg. 48756, 48760–61, 48769–71 (Aug. 14, 2012).
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that Patent Owner’s motion to withdraw and substitute
`
`counsel is granted.
`
`
`
`
`
`2
`
`
`
`3
`
`Case IPR2015-01842
`Patent 8,266,432 B2
`
`
`PETITIONER:
`
`Michael Zoppo
`zoppo@fr.com
`
`Thomas Rozylowicz
`Ipr36137-0007ip1@fr.com
`
`
`
`PATENT OWNER:
`
`Reece Nienstadt
`rnienstadt@meimark.com
`
`Krystyna Colantoni
`kcolantoni@meirmark.com
`
`Lei Mei
`mei@merimark.com
`
`
`
`Jae Youn Kim
`skim@nkllaw.com
`
`Harold L. Novick
`hnovick@nkllaw.com
`
`Sang Ho Lee
`slee@nkllaw.com
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