`Date: September 8, 2020
`
`Trials@uspto.gov
`571-272-7822
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`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FITBIT, INC.1
`Petitioner
`
`v.
`
`VALENCELL, INC.
`Patent Owner
`____________
`
`Case IPR2017-003192
`Patent 8,923,941 B2
`____________
`
`Before BRIAN J. McNAMARA, JAMES B. ARPIN, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`ARPIN, Administrative Patent Judge.
`
`DECISION
`Granting Motion to Withdraw
`37 C.F.R. § 42.10(e)
`
`
`
`
`1 Petitioner Apple, Inc. is no longer a party in this proceeding. Fitbit, Inc. v.
`Valencell, Inc., 964 F.3d 1112, 1114 (Fed. Cir. 2020) (“Following the [Final
`Written Decision], Apple withdrew from the proceeding.”).
`2 Case IPR2017-01555 has been joined with this proceeding.
`
`
`
`
`
`IPR2017-00319
`
`Patent 8,923,941 B2
`On September 1, 2020, Patent Owner filed updated Mandatory Notices
`(Paper 47) naming new lead and back-up counsel and an updated power of attorney
`(Paper 46). On September 2, 2020, after obtaining our e-mail authorization
`pursuant to 37 C.F.R. § 42.20(b), Harper Batts and Christopher Ponder (hereinafter
`“the withdrawing attorneys”) of Sheppard, Mullin, Richter & Hampton LLP filed a
`joint Motion to Withdraw as Petitioner’s counsel in this inter partes review.
`IPR2017-00319, Paper 49 (“Mot.”). No opposition has been filed, and the
`withdrawing attorneys indicate that Patent Owner does not oppose this Motion to
`Withdraw. Mot. 2. For the following reasons, the motion is granted.
`Counsel may withdraw from an inter partes review proceeding only with
`authorization from the Board. 37 C.F.R. § 42.10(e). Normally, this is
`accomplished by filing a motion to withdraw, which requires Board authorization
`before filing. See 37 C.F.R. § 42.20(b). Once authorization is granted, the motion
`then is made by the attorney(s) seeking to withdraw. See, e.g., IPR2013-00010,
`Paper 30.
`The withdrawing attorneys have complied with our procedures. Petitioner
`already has designated new lead and back-up counsel, who are a registered
`practitioners, and does not seek any time extensions.
`
`It is therefore
`
`ORDERED that the withdrawing attorneys’ Motion to Withdraw is granted;
`FURTHER ORDERED that Harper Batts and Christopher Ponder are
`
`permitted to withdraw as counsel in this inter partes review;
`
`FURTHER ORDERED that James M. Glass is recognized as Petitioner’s
`lead counsel, and Sam Stake and Ogi Zivojnovic of Quinn Emanuel Urquhart &
`Sullivan, LLP are recognized as Petitioner’s back-up counsel, in this inter partes
`review; and
`
`2
`
`
`
`
`IPR2017-00319
`
`Patent 8,923,941 B2
`
`FURTHER ORDERED that Petitioner shall update the Board’s electronic
`filing system to reflect the change in lead counsel.
`
`
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`3
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`
`
`IPR2017-00319
`Patent 8,923,941 B2
`
`WITHDRAWING ATTORNEYS:
`
`Harper Batts
`Christopher Ponder
`SHEPPARD, MULLIN, RICHTER & HAMPTON LLP
`hbatts@sheppardmullin.com
`cponder@sheppardmullin.com
`
`For PETITIONER:
`
`James Glass
`Ogi Zivojnovic
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`jimglass@quinnemanuel.com
`ogizivojnovic@quinnemanuel.com
`
`For PATENT OWNER:
`
`Justin Kimble
`Nicholas Kliewer
`BRAGALONE CONROY PC
`JKimble-IPR@bcpc-law.com
`nkliewer@bcpc-law.com
`
`
`
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`
`
`
`
`4
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