Expungement of Unauthorized Motion to Withdraw as Counsel IPR2014-01523


Takeaway: Under 37 C.F.R. § 42.10(e), counsel may withdraw from an inter partes review proceeding only with prior authorization from the Board.

In its Order, the Board – sua sponte – ordered that Patent Owner’s Motion to Withdraw be expunged from the record.  According to the Board, the Motion was improperly filed.  Thus, counsel for Patent Owner will remain the same until further developments so dictate.

Patent Owner had filed a Motion to Withdraw without obtaining advance authorization from the Board.  Counsel for Patent Owner had filed the Motion because he had not received any engagement letter or retainer from Patent Owner.  Counsel for Patent Owner could not answer when the Board inquired whether Patent Owner had retained alternate/replacement counsel.

The Board reminded counsel for Patent Owner that he has “real responsibilities as attorney of record” until a motion to withdraw is granted.  Noting that counsel may not withdraw without receiving prior authorization, the Board went on to say that it would not authorize counsel for Patent Owner to file a motion to withdraw at this point because Patent Owner had not yet relieved Patent Owner’s counsel of his duties.  Instead, counsel for Patent Owner had simply not received instructions from this client.  The Board ended up expunging the Motion to Withdraw from the record because it was improperly filed without advance authorization.

Kinik Company v. Chien-Min Sung, IPR2014-01523
Paper 7: Order on Conduct of the Proceeding

Dated: November 7, 2014

Patent 8,777,699

Before: Michael W. Kim, Donna M. Praiss, and Barry L. Grossman
Written By: Crumbley