`To:
`Subject:
`
`Date:
`
`Greg Gibbs
`Trials
`RE: IPR2021-01534, IPR2021-01560 - Request for Authority to File Consented Motion to Withdraw as Counsel for
`Patent Owners
`Monday, December 13, 2021 8:40:15 AM
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Ms. King,
`This communication is to confirm that the Patents Owners, two individuals, for the -01534
`matter, wish to represent themselves pro se.
`
`The -01534 Patent Owners and myself (counsel) are available for a conference with the Board
`panel Tuesday, December 14th, from 12 – 2PM Eastern (9-11 AM Pacific), with a suggested
`call time of 1 PM Eastern (10AM Pacific) Tuesday.
`The -01534 Patent Owners and myself are also available Wednesday, December 15th, from 12
`– 6 PM Eastern (9 AM – 3 PM Pacific), with a suggested call time of 1 PM Eastern (10 AM
`Pacific) Wednesday.
`One of the -01534 Patent Owner individuals is also authorized officer for EMP Enterprises
`(-01560 Patent Owner) and can advise of their intentions during the call.
`Petitioner’s Counsel has been advised of the Board panel’s request. I have not heard
`confirmation of their availability for the conference, yet will advise and remind them once the
`Board panel has set a conference call time with details.
`
`Please feel free to contact me if you have questions or seek additional information.
`Thank you and have a good day,
`Greg Gibbs
`
`Weide & Miller, Ltd.
`Patents, Trademarks, Copyrights, Trade Secrets and Related Litigation
`
`10655 Park Run Drive, Suite 100
`Las Vegas, NV 89144
`702-382-4804 (voice)
`702-382-4805 (facsimile)
`GGibbs@weidemiller.com
`
`From: Trials <Trials@USPTO.GOV>
`Sent: Friday, December 10, 2021 9:40 AM
`To: Greg Gibbs <GGibbs@weidemiller.com>; Trials <Trials@USPTO.GOV>
`Subject: RE: IPR2021-01534, IPR2021-01560 - Request for Authority to File Consented Motion to
`Withdraw as Counsel for Patent Owners
`
`Counsel,
`
`Thank you for your emails regarding this matter. Before formally addressing the requests for
`IPR2021-01534, -01560
`Ex. 3001
`
`
`
`authorization to withdraw from each of these matters, the Panel needs clarification given the
`different patent owners in each proceeding. In the -01534 matter, Patent Owners are two
`individuals, and the Panel interprets the email below to request withdrawal so that the two
`individuals can represent “themselves” pro se in the -01534 matter. Please confirm that
`understanding is correct. The Board generally counsels against proceeding pro se in such matters
`due to the complexity of the issues and tight timelines, but the Panel may authorize withdrawal in
`appropriate circumstances.
`
`In the -01560 matter, Patent Owner is EMP Enterprises, Inc., a corporation and juristic entity that
`cannot represent itself pro se before the Board. See, e.g., 37 C.F.R. § 1.31 (“An applicant for a patent
`may file and prosecute the applicant’s own case, or the applicant may give power of attorney so as
`to be represented by one or more patent practitioners or joint inventors, except that a juristic entity
`(e.g., organizational assignee) must be represented by a patent practitioner even if the juristic entity
`is the applicant.”); Motorola Mobility v. Michael Arnouse, Case IPR2013-00010, slip op. at 6–7 (PTAB
`Apr. 19, 2013) (Paper 30). The Board generally denies authorization to withdraw if Patent Owner
`does not indicate that it will retain its own counsel promptly, and failure of Patent Owner to retain
`counsel in a timely manner may eventually result in adverse judgment against Patent Owner. Given
`the eventual need to retain counsel, at least in the -01560 matter, please clarify whether Patent
`Owner in that matter, EMP Enterprises, Inc., plans on promptly retaining counsel. Please also clarify
`whether that impacts the decision of Patent Owners in the -01534 matter to proceed pro se.
`
`The Panel instructs counsel for Patent Owners to forward a copy of this correspondence to the
`patent owners in the respective cases. The Panel looks forward to a response on these issues. If
`either of the patent owners in the -01534 case intends to proceed pro se, the Panel requests to
`schedule a conference call with all counsel of record and the respective patent owners in each case
`to determine how best to proceed. The parties and counsel are to meet and confer to jointly
`propose at least two time times they are all available for a call with the Panel to discuss the matter
`during the week of December 13, 2021.
`
`Thank you,
`
`Maria King
`Deputy Chief Clerk for Trials
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`703-756-1288
`
`
`
`From: Greg Gibbs <GGibbs@weidemiller.com>
`Sent: Thursday, December 9, 2021 2:19 PM
`To: Trials <Trials@USPTO.GOV>
`Subject: IPR2021-01534, IPR2021-01560 - Request for Authority to File Consented Motion to
`Withdraw as Counsel for Patent Owners
`
`
`
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Good afternoon,
`Our firm is seeking authority to file a Motion to Withdraw as Patent Owner’s Counsel for the
`2 IPRs identified above. Note that we had made a similar requests, including on November
`9th, November 22nd, and December 6th, and we had initially been advised then that no panel
`had as yet been assigned for these cases, and that we should check back in a couple of weeks.
`Our firm had formerly handled the prosecution of the patents at issue. The attorney who
`handled the prosecution is no longer with the firm.
`
`While, due to time constraints, we undertook the filing of the Patent Owners’ Mandatory
`Notices, the Patent Owners at that time (October 21th) also then directly communicated that
`they wished to have the former attorney’s new firm (Thorpe North & Western) handle the
`proceedings and that they had contacted that firm. Since then, we have learned that the Patent
`Owners wish to, and are, handling the matter directly themselves, and they have advised us of
`their consent for our withdrawal from these matters.
`
`We ask that Authority be granted for our firm to file a Motion to Withdraw as Patent Owner’s
`Counsel for IPR2021-01534 and IPR2021-01560.
`Respectfully submitted,
`Greg Gibbs, Reg. No. 51036
`
`Weide & Miller, Ltd.
`Patents, Trademarks, Copyrights, Trade Secrets and Related Litigation
`10655 Park Run Drive, Suite 100
`Las Vegas, NV 89144
`702-382-4804 (voice)
`702-382-4805 (facsimile)
`GGibbs@weidemiller.com
`
`
`
`
`
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