`Date: September 16, 2020
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FITBIT, INC.
`Petitioner
`
`v.
`
`VALENCELL, INC.
`Patent Owner
`____________
`
`Case IPR2017-003191
`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 and Substitute Counsel
`37 C.F.R. § 42.10(e)
`
`
`
`On September 14, 2020, Patent Owner filed updated Mandatory Notices
`(IPR2017-00319, Paper 55) naming new back-up counsel and also filed an updated
`power of attorney (IPR2017-00319, Paper 54). On September 14, 2020, after
`
`
`1 Case IPR2017-01555 has been joined with this proceeding.
`
`
`
`
`
`IPR2017-00319
`
`Patent 8,923,941 B2
`obtaining our e-mail authorization pursuant to 37 C.F.R. § 42.20(b), Patent Owner
`filed a Motion to Withdraw and Substitute Counsel requesting (1) to withdraw
`Nicholas C. Kliewer and Brian P. Herrmann (hereinafter “the withdrawing
`attorneys”), formerly of Bragalone Conroy PC, as Patent Owner’s counsel in this
`inter partes review and (2) to add Daniel F. Olejko of Bragalone Conroy PC, as
`back-up counsel. IPR2017-00319, Paper 52 (“Mot.”). No opposition has been
`filed, and Patent Owner indicates that Petitioner does not oppose this motion.
`Mot. 1. For the following reasons, the motion is granted.
`
`DISCUSSION
`
`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 the Board’s prior
`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; IPR2013-00067, Paper 35. Here, Patent Owner filed a
`motion to withdraw on behalf of the withdrawing attorneys and requests to add a
`new back–up counsel. The motion was signed by Patent Owner’s lead counsel,
`rather than by the withdrawing attorneys.
`Patent Owner and the withdrawing attorneys have not followed the correct
`procedure. Nevertheless, because Petitioner does not oppose the motion, Patent
`Owner continues to be represented by registered practitioners, and there is no
`reason to believe that the withdrawing attorneys do not seek to withdraw; there is
`no prejudice shown. Consequently, the panel treats the motion as if it were
`properly filed by the withdrawing attorneys. Turning to Patent Owner’s request to
`substitute counsel, the motion requests to add new back-up counsel. A motion is
`not required to add back-up counsel, a registered practitioner, if named on a power
`
`2
`
`
`
`
`
`
`IPR2017-00319
`
`Patent 8,923,941 B2
`of attorney of record and identified as back-up counsel in timely-filed Mandatory
`Notices. Under the circumstances, although procedurally incorrect, we see no
`reason to deny the motion.
`It is therefore
`ORDERED that Patent Owner’s motion is granted;
`FURTHER ORDERED that Nicholas C. Kliewer and Brian P. Herrmann are
`permitted to withdraw as counsel in this proceeding; and
`FURTHER ORDERED that Daniel F. Olejko is recognized as Patent
`Owner’s back-up counsel in this proceeding.
`
`
`3
`
`
`
`
`
`
`
`
`IPR2017-00319
`Patent 8,923,941 B2
`
`WITHDRAWING ATTORNEYS:
`
`Nicholas C. Kliewer
`BUETHER JOE & COUNSELORS
`nick.kliewer@BJCIPLaw.com
`
`Brian P. Herrmann
`NELSON BUMGARDNER ALBRITTON P.C.
`brian@nbafirm.com
`
`For PETITIONER:
`
`James Glass
`Ogi Zivojnovic
`Sam Stake
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`jimglass@quinnemanuel.com
`ogizivojnovic@quinnemanuel.com
`sstake@quinnemanuel.com
`
`For PATENT OWNER:
`
`Justin Kimble
`Daniel F. Olejko
`BRAGALONE CONROY PC
`JKimble-IPR@bcpc-law.com
`dolejko@bcpc-law.com
`
`
`4
`
`
`
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