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Paper 39
`Trials@uspto.gov
`571-272-7822 Entered: September 20, 2016
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`MICRON TECHNOLOGY, INC., and SK HYNIX, INC.,
`Petitioner,
`v.
`ELM 3DS INNOVATIONS, LLC,
`Patent Owner.
`____________
`
`Cases1
`IPR2016-00386 (Patent 8,653,672) IPR2016-00387 (Patent 8,841,778)
`IPR2016-00388 (Patent 7,193,239) IPR2016-00389 (Patent 8,035,233)
` IPR2016-00390 (Patent 8,629,542) IPR2016-00391 (Patent 8,796,862)
` IPR2016-00393 (Patent 7,193,239) IPR2016-00394 (Patent 8,410,617)
`IPR2016-00395 (Patent 7,504,732)
`____________
`
`
`
`
`
`
`
`Before GLENN J. PERRY, BARBARA A. BENOIT, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`BENOIT, Administrative Patent Judge.
`DECISION
`Patent Owner’s Motion for Withdrawal and Substitution of Counsel
`37 C.F.R. § 42.10
`
`
`1 This Order addresses issues that are substantially similar in the
`proceedings. We exercise our discretion to issue one order to be entered in
`each case.
`
`

`
`IPR2016-00386 (Patent 8,653,672)
`IPR2016-00388 (Patent 7,193,239)
`IPR2016-00390 (Patent 8,629,542)
`IPR2016-00393 (Patent 7,193,239)
`IPR2016-00395 (Patent 7,504,732)
`
`
`IPR2016-00387 (Patent 8,841,778)
`IPR2016-00389 (Patent 8,035,233)
`IPR2016-00391 (Patent 8,796,862)
`IPR2016-00394 (Patent 8,410,617)
`
`
`
`Pursuant to 37 C.F.R. § 42.10, and as authorized by the Board, Patent
`Owner filed a motion seeking to withdraw current counsel and substitute
`new counsel. Paper 40.2 The motion is unopposed. Id. at 3.
`Under 37 C.F.R. § 42.10(e), the Board may authorize withdrawal of
`counsel. Patent Owner moves to withdraw current lead counsel Mr. Cyrus
`Morton (Reg. No. 44,954), backup counsel Ms. Kelsey Thorkelson
`(Reg. No. 73,130), and Mr. Samuel Walling. Patent Owner seeks to
`substitute Mr. William Meunier (Reg. No. 41,193) as lead counsel, and
`Mr. Michael T. Renaud (Reg. No. 44,299) as backup counsel. Patent Owner
`indicates that Mr. James Carmichael (Reg. No. 45,306) will remain back-up
`counsel.
`As required by 37 C.F.R. § 42.10(b), Patent Owner provides a
`substitute power of attorney, appointing Mr. Meunier and Mr. Renaud, in
`support of its motion. Paper 34. Patent Owner represents that, upon grant of
`its motion, “new counsel for Patent Owner will promptly file Amended
`Patent Owner’s Mandatory Notices,” as required by 37 C.F.R. § 42.8(b).
`Paper 40, 3.
`Patent Owner contends granting its motion will not hinder the
`economy, the integrity of the patent system, the efficient administration of
`the Board, or the ability of the Board to timely complete these proceedings.
`Id.; see 35 U.S.C. § 316(b). Patent Owner also indicates that new counsel
`
`
`2 Paper numbers refer to IPR2016-00386.
`
`2
`
`

`
`IPR2016-00387 (Patent 8,841,778)
`IPR2016-00389 (Patent 8,035,233)
`IPR2016-00391 (Patent 8,796,862)
`IPR2016-00394 (Patent 8,410,617)
`
`IPR2016-00386 (Patent 8,653,672)
`IPR2016-00388 (Patent 7,193,239)
`IPR2016-00390 (Patent 8,629,542)
`IPR2016-00393 (Patent 7,193,239)
`IPR2016-00395 (Patent 7,504,732)
`
`meet the requirements of 37 C.F.R. § 42.10(c) and are registered
`practitioners. Paper 40, 2.
`Under the circumstances presented, the motion is granted.
`
`
`
`
`ORDER
`
`
`
`Accordingly, it is:
`ORDERED that Mr. Cyrus Morton (Reg. No. 44,954), Ms. Kelsey
`Thorkelson (Reg. No. 73,130), and Mr. Samuel Walling are no longer
`counsel in the instant proceedings;
`
`FURTHER ORDERED that Mr. William Meunier (Reg. No. 41,193)
`is designated as lead counsel for Patent Owner, and Mr. Michael T. Renaud
`(Reg. No. 44,299) is designated as backup counsel for Patent Owner in the
`instant proceedings; and
`FURTHER ORDERED that Mr. James Carmichael (Reg. No. 45,306)
`will remain as back-up counsel for Patent Owner in the instant proceedings.
`
`
`3
`
`

`
`
`
`IPR2016-00387 (Patent 8,841,778)
`IPR2016-00389 (Patent 8,035,233)
`IPR2016-00391 (Patent 8,796,862)
`IPR2016-00394 (Patent 8,410,617)
`
`IPR2016-00386 (Patent 8,653,672)
`IPR2016-00388 (Patent 7,193,239)
`IPR2016-00390 (Patent 8,629,542)
`IPR2016-00393 (Patent 7,193,239)
`IPR2016-00395 (Patent 7,504,732)
`
`
`FOR PETITIONER:
`Jason Engel
`jason.engel.PTAB@klgates.com
`Naveen Modi
`Allan Soobert
`Phillip Citroen
`PH-Samsung-ELM-IPR@paulhastings.com
`John Kappos
`PTABMICRONELM@omm.com
`Benjamin Weed
`Skhynix-Elm@klgates.com
`Xin-Yi (Vincent) Zhou
`vzhou@omm.com
`Brian Cook
`bcook@omm.com
`
`FOR PATENT OWNER:
`Cyrus A. Morton
`camorton@rkmc.com
`James Carmichael
`jim@carmichaelip.com
`Kelsey J. Thorkelson
`kthorkelson@robinskaplan.com
`William A. Meunier
`wameunier@mintz.com
`Michael T. Renaud
`mtrenaud@mintz.com
`
`
`4

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