`Tel: 571-272-7822
`
`
`Paper 47
`Entered: May 5, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE INC.,
`Petitioner
`
`v.
`
`PATRICK ZUILI,
`Patent Owner.
`____________
`
`Case CBM2016-00022
`Patent 8,326,763 B2
`_______________
`
`
`
`Before JAMESON LEE, GLENN J. PERRY, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`
`LEE, Administrative Patent Judge.
`
`Decision
`On Counsel’s Motion to Withdraw
`37 C.F.R. § 42.10(e)
`
`
`
`
`
`
`
`
`
`
`
`
`CBM2016-00022
`Patent 8,326,763 B2
`
`
`On February 13, 2017, a Motion to Withdraw was filed by Petitioner’s
`counsel Brian Rosenthal. Paper 45. Mr. Rosenthal represents that he joined
`a new law firm on January 19, 2017 after resigning from the law firm whose
`Customer Number was identified in Petitioner’s Power of Attorney for this
`proceeding. Id. Mr. Rosenthal was not specifically named in that Power of
`Attorney. Paper 2. An Updated Mandatory Notice was filed by Petitioner
`on January 31, 2017, which designated Robert G. Pluta as Lead Counsel and
`Saqib J. Siddiqui as Backup Counsel. Paper 41. Thus, after the proposed
`withdrawal of Brian Rosenthal, Petitioner still will be represented by a Lead
`Counsel and a Backup Counsel.
`Patent Owner opposes the proposed withdrawal of Brian Rosenthal as
`counsel for Petitioner. Paper 46. Patent Owner submits two reasons for its
`opposition: (1) that according to Patent Owner, Mr. Rosenthal violated
`numerous rules of the United States Patent and Trademark Office, in
`connection with Patent Owner’s position that certain exhibits of Petitioner
`had been tampered with or falsified; and (2) that according to Patent Owner,
`the Motion to Withdraw is filed late, by 12 days, based on 37 C.F.R.
`§ 41.108. Id. at 3–4. For reasons discussed below, these reasons are
`insufficient to preclude granting of the Motion to Withdraw, in light of the
`circumstances presented in the Motion to Withdraw.
`On May 23, 2016, Mr. Rosenthal was granted pro hac vice admission
`to this proceeding. Paper 9. In support of that admission, Mr. Rosenthal had
`agreed to be subject to the Office’s Rules of Professional Conduct as set
`forth in 37 C.F.R. §§ 11.101 et. seq. and disciplinary jurisdiction under
`37 C.F.R. § 11.19(a). Ex. 1039 ¶ 6. We also ordered that Mr. Rosenthal
`will be subject to the Office’s Rules of Professional Conduct as set forth in
`
`2
`
`
`
`CBM2016-00022
`Patent 8,326,763 B2
`
`37 C.F.R. §§ 11.101 et. seq. and disciplinary jurisdiction under 37 C.F.R.
`§ 11.19(a). Paper 9, 3. Withdrawal of Mr. Rosenthal as counsel for
`Petitioner does not negate or nullify the applicability of the Office’s Rules of
`Professional Conduct to Mr. Rosenthal or the imposition of the Office’s
`discipline jurisdiction over Mr. Rosenthal for misconduct, if any, engaged by
`Mr. Rosenthal in this proceeding prior to his withdrawal.
`Part 41 of Title 37 of the Code of Federal Regulations governs appeals
`and interferences before the Board. 37 C.F.R. § 41.1. Part 42 of Title 37 of
`the Code of Federal Regulations governs proceedings before the Board,
`including this covered business method patent review proceeding. 37 C.F.R.
`§ 42.1. Under 37 C.F.R. § 42.8, a party has 21 days to inform the Board of a
`change in information regarding its counsel. Petitioner filed its Updated
`Mandatory Notice on January 31, 2017, indicating a change of circumstance
`for Brian Rosenthal and referencing an even earlier request for authorization
`to file a motion to withdraw with respect to Mr. Rosenthal. Paper 41, 2.
`Patent Owner’s assertion of lateness was based on applying January 19,
`2017, the date when Mr. Rosenthal joined another firm, as the triggering
`date of the applicable time period within which to notify the Board of the
`change. Paper 46, 4. The 12 days between January 19, 2017, and January
`31, 2017, is within the 21 day period permitted by 37 C.F.R. § 42.8.
`Subsequent to the filing of Petitioner’s Updated Mandatory Notice, on
`February 10, 2017, we authorized Mr. Rosenthal to file a Motion to
`Withdraw by February 25, 2017. Paper 43, 3. The Motion to Withdraw was
`filed on February 13, 2017. Paper 45. The record does not support Patent
`Owner’s assertion that the Motion to Withdraw was filed late. Even
`assuming that the Motion to Withdraw was filed 12 days late as alleged by
`
`3
`
`
`
`CBM2016-00022
`Patent 8,326,763 B2
`
`Patent Owner (Paper 46, 4), precluding Mr. Rosenthal from withdrawing is
`not an appropriate remedy when he no longer possesses an effective power
`of attorney.
`
`ORDER
`
`Accordingly, it is
`ORDERED that Brian Rosenthal’s Motion to Withdraw as counsel for
`Petitioner is granted.
`
`
`
`
`Counsel for Petitioner:
`
`4
`
`Robert Pluta
`Saqib Siddiqui
`MAYER BROWN LLP
`rpluta@mayerbrown.com
`ssiddiqui@mayerbrown.com
`
`
`
`Patent Owner (pro se):
`
`Patrick Zuili
`patrick@tenderbox.tv
`
`
`
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