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`IN THE 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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`APPLE INC. and FITBIT, INC.,
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`Petitioners,
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`v.
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`VALENCELL, INC.,
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`Patent Owner.
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`––––––––––
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`Case No. IPR2017-00319
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`––––––––––
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`PETITIONER FITBIT, INC.’S
`UNOPPOSED MOTION FOR WITHDRAWAL OF COUNSEL
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`06938-00001/12332186.1
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`IPR2017-00319
`U.S. Patent No. 8,923,941
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`I.
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`STATEMENT OF RELIEF REQUESTED
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`Pursuant to 37 C.F.R. § 42.10, Petitioner respectfully requests that the Board
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`authorize the practitioners associated with Baker Botts LLP, including Jeremy
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`Taylor (Reg. No. 73,912),1 to withdraw from this proceeding. The Board
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`authorized the filing of this motion in an e-mail dated September 17, 2020.
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`II.
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`STATEMENT SHOWING GOOD CAUSE FOR THE BOARD TO
`AUTHORIZE WITHDRAWAL OF COUNSEL
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`On September 1, 2020, Petitioner filed a power of attorney appointing Quinn
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`Emanuel Urquhart & Sullivan, LLP as its attorneys. Quinn Emanuel represented
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`Petitioner on appeal to the Federal Circuit in this proceeding. Concurrent with the
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`filing of the power of attorney, Petitioner submitted updated mandatory notices
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`designating James M. Glass (Reg. No. 46,729) as lead counsel and Ogi Zivojnovic
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`(Reg. No. 69,516) as backup counsel. Petitioner’s new counsel meets the
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`requirements of 37 C.F.R. § 42.10(c) as lead counsel and registered practitioners.
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` Lead counsel recognizes that motions to withdraw are typically made by the
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` 1
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`attorney seeking to withdraw. However, because Mr. Taylor no longer has access
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`to file motions in these proceedings, he has asked lead counsel to file this motion
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`after conferring with PTAB paralegal support staff.
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`IPR2017-00319
`U.S. Patent No. 8,923,941
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`In identifying and designating new counsel who are ready and able to take
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`over the representation, reasonable steps have been taken to “avoid foreseeable
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`prejudice to the rights of the client, including giving due notice to his or her client,
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`[and] allowing time for employment of another practitioner.” See 37 C.F.R.
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`§ 10.40(a). Further, Petitioner believes that granting this motion will not hinder
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`the economy, the integrity of the patent system, the efficient administration of the
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`Office, or the ability of the Office to timely complete this proceeding. See 35
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`U.S.C. § 316(b).
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`III. PATENT OWNER DOES NOT OBJECT TO THIS WITHDRAWAL
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`Patent Owner does not oppose the requested withdrawal of the practitioners
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`associated with Baker Botts LLP.
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`IV. CONCLUSION
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`Petitioner respectfully requests that the Board grant its motion to authorize
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`the practitioners associated with Baker Botts LLP to withdraw from this
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`proceeding.
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`06938-00001/12332186.1
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`Respectfully Submitted,
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`IPR2017-00319
`U.S. Patent No. 8,923,941
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`Date: October 1, 2020
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` By: /Jim Glass/
`James M. Glass (Reg. No. 46,729)
`QUINN EMANUEL URQUHART &
`SULLIVAN LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`Email: jimglass@quinnemanuel.com
`Phone: 212-849-7142
`Fax: 212-849-7100
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`Counsel for Petitioner Fitbit, Inc.
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`06938-00001/12332186.1
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`IPR2017-00319
`U.S. Patent No. 8,923,941
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`CERTIFICATE OF SERVICE (37 C.F.R. §§ 42.6(E), 42.105(A))
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`The undersigned hereby certifies that the foregoing document was served in its
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`entirety on October 1, 2020 upon the following parties via Electronic Mail.
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`Justin B. Kimble
`Jeffrey R. Bragalone
`Daniel F. Olejko
`T. William Kennedy
`Jonathan H. Rastegar
`Marcus Benavides
`R. Scott Rhoades
`Sanford E. Warren, Jr
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`BRAGALONE CONROY PC
`2200 Ross Ave.
`Suite 4500 – West
`Dallas, TX 75201
`JKimble-IPR@bcpc-law.com
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`jbragalone@bcpc-law.com
`dolejko@bcpc-law.com
`bkennedy@bcpc-law.com
`jrastegar@bcpc-law.com
`mbenavides@bcpc-law.com
`srhoades@wriplaw.com
`swarren@wriplaw.com
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`Date: October 1, 2020
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`06938-00001/12332186.1
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` By: /Jim Glass/
`James M. Glass (Reg. No. 46,729)
`QUINN EMANUEL URQUHART &
`SULLIVAN LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`Email: jimglass@quinnemanuel.com
`Phone: 212-849-7142
`Fax: 212-849-7100
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`Counsel for Petitioner Fitbit, Inc.
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