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UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SEMICONDUCTOR COMPONENTS INDUSTRIES, LLC d/b/a
`ON SEMICONDUCTOR
`Petitioner
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`v.
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`POWER INTEGRATIONS, INC.
`Patent Owner
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`Case IPR2016-01600
`Patent No. 7,834,605
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`PATENT OWNER’S UNOPPOSED MOTION TO WITHDRAW LEAD
`COUNSEL AND SUBSTITUTION OF COUNSEL
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`Case IPR2016-01600
`Attorney Docket No: 10256-0021IPC
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`I. PRECISE RELIEF REQUESTED
`Pursuant to 37 C.F.R. § 42.10, Patent Owner respectfully requests that the
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`Board authorize withdrawal of its current lead counsel, Stephen Schaefer, Reg. No.
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`37,927, formerly of Fish & Richardson, P.C.
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`Patent Owner further requests that the Board authorize registered
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`practitioner and current backup counsel Neil Warren, Reg. No. 63,582 of Fish &
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`Richardson, P.C. to appear as lead counsel for Patent Owner in this proceeding.
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`Patent Owner requests that the Board authorize the addition of John C.
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`Phillips, Reg. No. 35,322 of Fish & Richardson, P.C. to appear as first backup
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`counsel and Howard Pollack (Pro Hac Vice Admission granted September 14,
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`2017) to appear as backup counsel for Patent Owner in this proceeding.
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`II. STATEMENT SHOWING GOOD CAUSE FOR THE BOARD
`TOAUTHORIZE WITHDRAWAL AND SUBSTITUTION OF
`COUNSEL
`On September 1, 2016, Patent Owner filed a Power of Attorney designating
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`the practitioners associated with Customer No. 26171 (Fish & Richardson, P.C.) as
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`its counsel in this proceeding. (Paper No. 5.). Patent Owner identified Stephen
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`Schaefer, Reg. No. 37,927 as its lead counsel and Neil Warren, Reg. No. 63,582 as
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`back-up counsel in its Mandatory Notices (Paper No. 4).
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`1
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`Case IPR2016-01600
`Attorney Docket No: 10256-0021IPC
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`Lead counsel Stephen Schaefer, Reg. No. 37,927 has since left the firm Fish
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`& Richardson, P.C. Therefore, Patent Owner respectfully submits that good cause
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`exists for the withdrawal of Mr. Schaefer as its lead counsel in this proceeding.
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`Patent Owner further requests that Mr. Warren be designated as its new lead
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`counsel, Mr. Phillips be added as new first backup counsel and Mr. Pollack be
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`added as backup counsel.
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`In designating the Patent Owner’s chosen registered practitioner as new lead
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`counsel, in maintaining Fish & Richardson P.C. as its counsel in this proceeding,
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`adding Mr. Philips as first back-up counsel and in adding Mr. Pollack as backup
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`counsel, reasonable steps have been taken to avoid foreseeable prejudice to the
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`rights of the client. See 37 C.F.R. § 10.40(a). Further, Patent Owner believes that
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`granting this motion will not hinder the economy, the integrity of the patent
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`system, the efficient administration of the Office, or the ability of the Office to
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`timely complete this proceeding. See 35 U.S.C. § 316(b).
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`Petitioner has indicated that it does not oppose the requested withdrawal and
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`substitution of counsel for Patent Owner. The Board authorized the filing of this
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`motion via email on September 13, 2017.
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`III. CONCLUSION
`Patent Owner respectfully requests that the Board grant this motion and (i)
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`authorize withdrawal of Stephen Schaefer, Reg. No. 37,927 as lead counsel for
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`2
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`Case IPR2016-01600
`Attorney Docket No: 10256-0021IPC
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`Patent Owner in this proceeding, (ii) authorize Neil Warren, Reg. No. 63,582 to
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`appear as lead counsel for Patent Owner in this proceeding, (iii) authorize John C.
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`Phillips, Reg. No. 35,322 to appear as first backup counsel for Patent Owner, and
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`(iv) authorize Howard Pollack (Pro Hac Vice Admission granted September 14,
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`2017) to appear as backup counsel for Patent Owner. Upon grant of this motion,
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`Patent Owner’s new lead counsel will promptly file updated mandatory
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`disclosures.
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`Date: 9/25/2017
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`Customer Number 26171
`Fish & Richardson P.C.
`Telephone: (650) 839-5070
`Facsimile: (877) 769-7945
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`Respectfully submitted,
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`/Neil A. Warren/
`Neil Warren, Reg. No. 63,582
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`3
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`Case IPR2016-01600
`Attorney Docket No: 10256-0021IPC
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.6(e)(4), the undersigned certifies that on September
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`25, 2017, a complete and entire copy of this Patent Owner’s Unopposed Motion to
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`Withdraw Lead Counsel and Substitution of Counsel was provided via email to the
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`Petitioner by serving the correspondence email address of record as follows:
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`Roger Fulghum
`Brett Thompsen
`Baker Botts L.L.P.
`One Shell Plaza, 910 Louisiana Street
`Houston, TX 77002-4995
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`Email: roger.fulghum@bakerbotts.com
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` brett.thompsen@bakerbotts.com
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`/Diana Bradley/
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`Diana Bradley
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`(858) 678-5667
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`4
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