`U.S. Patent No. 8,841,778
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_____________________
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`SAMSUNG ELECTRONICS CO., LTD.;
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`MICRON TECHNOLOGY, INC.;
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`and SK HYNIX INC.
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`
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`V.
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`ELM 3DS INNOVATIONS, LLC
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`PATENT OWNER
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`_____________________
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`CASE IPR2016-00387
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`PATENT No. 8,841,778
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`PATENT OWNER’S MOTION FOR WITHDRAWAL AND
`SUBSTITUTION OF COUNSEL
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`IPR2016-00387
`U.S. Patent No. 8,841,778
`
`V. 37 C.F.R. § 42.10 – STATEMENT OF RELIEF REQUESTED
`
`Pursuant to 37 C.F.R. § 42.10, Patent Owner respectfully requests that the
`
`Board authorize withdrawal of its current counsel, Cyrus Morton, Kelsey
`
`Thorkelson, and Samuel Walling of Robins Kaplan LLP.
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`VI. STATEMENT SHOWING GOOD CAUSE FOR THE BOARD TO
`AUTHORIZE WITHDRAWAL AND SUBSTITUTION OF COUNSEL
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`On January 19, 2016, Patent Owner appointed Cyrus Morton and James
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`Carmichael as its attorneys in the above-captioned inter partes review. On May 5,
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`2016, Patent Owner appointed Kelsey Thorkelson as its attorney in the above-
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`captioned inter partes review. On July 1, 2016 the Board granted pro hac vice
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`admission to Samuel Walling to represent Patent Owner in the above-captioned
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`inter partes review. For good cause, Patent Owner requests that Cyrus Morton,
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`Kelsey Thorkelson, and Samuel Walling be deemed withdrawn from the present
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`proceeding, and new counsel, William Meunier and Michael T. Renaud of Mintz
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`Levin Cohn Ferris Glovsky and Popeo PC (“Mintz Levin”), be designated lead and
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`back-up counsel, respectively, to represent Patent Owner in this proceeding. James
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`Carmichael will remain back-up counsel.
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`Patent Owner’s new counsel meet the requirements of 37 C.F.R. § 42.10(c)
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`as lead counsel and registered practitioners. Patent Owner has filed Powers of
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`2
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`IPR2016-00387
`U.S. Patent No. 8,841,778
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`Attorney for its new counsel. In identifying and designating new counsel who are
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`ready and able to take over the representation, reasonable steps have been taken to
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`“avoid foreseeable prejudice to the rights of the client, including giving due notice
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`to his or her client, [and] allowing time for employment of another practitioner.”
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`See 37 C.F.R. § 10.40(a). Further, Patent Owner believes that granting this motion
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`will not hinder the economy, the integrity of the patent system, the efficient
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`administration of the Office, or the ability of the Office to timely complete this
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`proceeding. See 35 U.S.C. § 316(b).
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`VII. PETITIONER DOES NOT OBJECT TO THIS SUBSTITUTION
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`The parties have met and conferred regarding the proposed withdrawal and
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`substitution of Patent Owner’s lead and back-up counsel. Petitioner has indicated
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`that it does not oppose the requested withdrawal and substitution of counsel for
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`Patent Owner.
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`VIII.
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`CONCLUSION
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`Patent Owner respectfully requests that the Board grant its motion to
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`authorize withdrawal of counsel and permit substitution of counsel. Upon grant of
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`this motion, new counsel for Patent Owner will promptly file Amended Patent
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`Owner’s Mandatory Notices.
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`3
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`
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`Dated: September 16, 2016
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`IPR2016-00387
`U.S. Patent No. 8,841,778
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`Respectfully submitted,
`
`/s/Cyrus Morton
`Cyrus Morton
`Kelsey Thorkelson
`Samuel Walling
`ROBINS KAPLAN LLP
`800 LaSalle Avenue
`Suite 2800
`Minneapolis, MN 55402
`
`
`/s/James Carmichael
`James Carmichael
`CARMICHAEL IP PLLC
`8000 Towers Crescent Drive
`13th Floor
`Tysons Corner, VA 22182
`
`/s/William Meunier
`William Meunier
`Michael Renaud
`MINTZ LEVIN COHN FERRIS
`GLOVSKY AND POPEO PC
`One Financial Center
`Boston, Massachusetts 02111
`Telephone: 617-348-1870
`Fax: 617-542-2241
`
`
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`4
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`IPR2016-00387
`U.S. Patent No. 8,841,778
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`CERTIFICATE OF SERVICE
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`
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`The undersigned hereby certifies that on September 16, 2016, the foregoing
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`was served electronically via email in its entirety on the following counsel of
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`record for the Petitioners:
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`Jason A. Engel (Reg. No. 51,654)
`K&L GATES LLP
`70 West Madison Street, Suite 3100
`Chicago, IL 60602
`Telephone: (312) 807-4236
`Facsimile: (312) 827-8145
`jason.engel.PTAB@klgates.com
`
`Naveen Modi (Reg. No. 46,224)
`PAUL HASTINGS LLP
`875 15th Street, N.W.
`Washington, D.C. 20005
`Telephone: (202) 551-1700
`Facsimile: (202) 551-1705
`PH-Samsung-ELM-IPR@paulhastings.com
`
`John Kappos (Reg. No. 37,861)
`O’MELVENY & MYERS LLP
`610 Newport Center Drive, 17th Floor
`Newport Beach, CA 92660
`Telephone: (949) 823-6900
`Facsimile: (949) 823-6994
`PTABMICRONELM@omm.com
`jkappos@omm.com
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`
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`Dated: September 16, 2016
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`IPR2016-00387
`U.S. Patent No. 8,841,778
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` ROBINS KAPLAN LLP
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`
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`By: /s/Cyrus A. Morton
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`Cyrus A. Morton (Reg. No. 44,954)
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`Attorney for Patent Owner
`
`2
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