Takeaway: To withdraw as counsel, the client should either have alternative counsel enter an appearance or the withdrawing counsel should represent in the Motion to Withdraw that the possibility of not having representation has been discussed with the client.

In its Order, the Board dismissed without prejudice counsel for Thought, Inc.’s Motion to Withdraw as Counsel. Current counsel stated in its Motion that Thought had retained alternative counsel, however, to date, no other counsel had appeared on behalf of Thought. Current counsel agreed to confer with Thought regarding its legal representation and will inform Thought that if he files another motion seeking withdrawal, Thought could be without representation. The Board indicated that if current counsel files a new motion to withdraw, it must indicate that counsel has discussed these issues with Thought or made a good faith effort to have such discussion.

Oracle Corp. v. Thought, Inc., IPR2014-00117-19
Paper 14: Order on Conduct of the Proceeding
Patents 6,985,912; 7,103,600; 7,167,862
Before: Karl D. Easthom, Barbara A. Benoit, and Stacey G. White
Written by: White