`______________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`YITA LLC,
`Petitioner
`
`v.
`
`MACNEIL IP LLC,
`Patent Owner
`__________________
`
`Case No. IPR2020-01139
`Patent No. 8,382,186
`______________________
`
`
`PATENT OWNER MACNEIL IP LLC
`MOTION FOR WITHDRAWAL AND SUBSTITUTION OF COUNSEL
`
`
`
`
`
`
`
`
`
`I.
`
`Case IPR2020-01139
`
`Patent No. 8,382,186
`
`37 C.F.R. §42.10 – STATEMENT OF RELIEF REQUESTED
`
`Pursuant to 37 C.F.R. § 42.10(e), Patent Owner respectfully requests that the
`
`Board authorize withdrawal of Michele Bosch, David Reese, and Nicholas Cerulli,
`
`of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP as its counsel, and
`
`appointment of David G. Wille of Baker Botts LLP as lead counsel, and Chad C.
`
`Walters and Clarke W. Stavinoha of Baker Botts LLP as backup counsel in this
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`matter. The Board authorized Patent Owner to file this motion via email on October
`
`8, 2020. Petitioner does not oppose this motion.
`
`II. STATEMENT SHOWING GOOD CAUSE FOR THE BOARD TO
`AUTHORIZE WITHDRAWAL AND SUBSTITUTION OF COUNSEL
`
`On July 21, 2020, Patent Owner submitted its Mandatory Notices Under 37
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`C.F.R. §§ 42.8(a)(2) and 42.8(b), appointing Michele Bosch, David Reese, Nicholas
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`Cerulli, and Jefferson Perkins as its counsel in the above-captioned inter partes
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`review (Paper 5).
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`For good cause, Patent Owner requests that Michele Bosch, David Reese, and
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`Nicholas Cerulli as counsel be deemed withdrawn from the present proceeding, and
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`new counsel, David G. Wille be designated as lead counsel, and Chad C. Walters,
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`and Clarke W. Stavinoha be designated as back-up counsel, to represent Patent
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`Owner in this proceeding. David G. Wille (Reg. No. 38,363), Chad C. Walters
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`(Reg. No. 48,022), and Clarke W. Stavinoha (Reg. No. 71,152) are registered
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`
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`2
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`
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`Case IPR2020-01139
`
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`Patent No. 8,382,186
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`practitioners. Jefferson Perkins of Perkins IP Law Group LLC remains as backup
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`counsel.
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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, Patent Owner 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 U.S.C.
`
`§ 316(b).
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`III. PETITIONER DOES NOT OBJECT TO THE SUBSTITUTION
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`Petitioner has indicated it does not oppose the requested withdrawal and
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`substitution of counsel for Patent Owner.
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`IV. CONCLUSION
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`Patent Owner respectfully requests that the Board grant its motion to
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`authorize withdrawal of counsel and permit substitution of counsel. Concurrently,
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`Patent Owner respectfully files a Substitute Power of Attorney in accordance with
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`37 C.F.R. § 42.10(b) appointing David G. Wille as lead counsel, and Chad C.
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`Walters, Clarke W. Stavinoha, and Jefferson Perkins as back-up counsel to effect
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`this designation of substitute counsel. Patent Owner also respectfully files Updated
`
`
`
`3
`
`
`
`Case IPR2020-01139
`
`
`Patent No. 8,382,186
`
`
`Mandatory Notices in accordance with 37 C.F.R. § 42.8(a)(3) should the present
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`motion be granted.
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`
`
`Respectfully submitted,
`
`Date: October 8, 2020
`
`
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`
`
`By: /Michele C. Bosch/
`Michele C. Bosch, Lead Counsel
`Registration No. 40,524
`
`
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`
`4
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`
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`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Motion for
`
`Case IPR2020-01139
`Patent No. 8,382,186
`
`Withdrawal and Substitution of Counsel was served on October 8, 2020, via
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`email directed to counsel of record for the Petitioner at the following:
`
`
`
`Mark P. Walters (Reg. No. 46,050)
`walters@LoweGrahamJones.com
`
`Ralph W. Powers III, Reg. No. 63,504
`tpowers-PTAB@sternekessler.com
`
`Jason A. Fitzsimmons, Reg. No. 65,367
`jfitzsimmons-PTAB@sternekessler.com
`
`Stephen A. Merrill, Reg. No. 72,955
`smerrill-PTAB@sternekessler.com
`
`John J. Bamert, Reg. No. 74,859
`bamert@LoweGrahamJones.com
`
`PTAB@sternekessler.com
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`
`
`Date: October 8, 2020
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`/Bradley J. Moore/
`Bradley J. Moore
`Litigation Legal Assistant
`
`FINNEGAN HENDERSON
`FARABOW, GARRETT &
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`DUNNER LLP
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`5
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