Takeaway: Counsel may not withdraw from a proceeding unless the Board authorizes such withdrawal, and a motion seeking withdrawal may only be filed after obtaining the Board’s authorization to file such a motion.

In its Order, the Board ordered Patent Owner’s Substitute Power of Attorney be expunged from the record and authorized Patent Owner to file a Motion for Withdrawal and Substitution of Counsel.

Leading to the Order, Patent Owner had filed a substitute power of attorney designating new counsel for Patent Owner, who then emailed the Board requesting authorization to file a motion to substitute counsel for Patent Owner. “Because Paper 23 purports to substitute new lead and backup counsel, it is effectively an attempt to withdraw previously-designated counsel for the proceeding.” However, a “party may not simply give notice that it has designated substitute counsel as it did here.”

Under 37 C.F.R. § 42.10(e), . . . counsel may not withdraw from a proceeding before the Board unless the Board authorizes such a withdrawal. Moreover, a party may only move to withdraw after having obtained Board authorization to file a motion to withdraw. 37 C.F.R. § 42.20(b).

Here, “Patent Owner’s Substitute Power of Attorney is an unauthorized paper and should not be entered.” However, the Board “authorize[d] Patent Owner to file a Motion for Withdrawal and Substitution of Counsel in the above identified proceeding.” “In its Motion, Patent Owner is instructed to indicate whether Petitioner opposes the Motion and to verify no extensions of time will be sought by Substitute Counsel.”

Netflix, Inc. v. Copy Protection LLC, IPR2015-00921
Paper 24: Order on Conduct of Proceedings
Dated: December 8, 2015
Patent: 7,079,649
Before: Trenton A. Ward, Lynne E. Pettigrew, and William M. Fink
Written by: Fink