Order Denying Motion to Withdraw as Counsel IPR2013-00335

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Takeaway: If an attorney wishes to withdraw as counsel, he or she must provide specific evidence supporting such withdrawal and must request authorization to file a motion to withdraw.

In its Order, the Board denied the request of Mr. Michael Smith and Mr. Jeff Hunt, counsel for Patent Owner, to withdraw as counsel. Mr. Smith explained that he and Mr. Hunt cannot continue “in good conscience” to represent Patent Owner because they disagree with Patent Owner’s legal strategy and cannot implement that strategy “going forward” in this trial.

The Board noted that Mr. Smith appeared to suggest that something unethical would follow if the attorneys were to implement Patent Owner’s desired legal strategy, but Mr. Smith did not elaborate or ever explicitly state that the legal strategy was either unethical or otherwise contrary to the Rules of Professional Conduct.  In denying the request, the Board noted that all substantive papers have been filed so there is no opportunity to implement any legal strategy “going forward.”  Further, the Board noted that Patent Owner relieved neither Mr. Smith nor Mr. Hunt of their status as attorneys for Patent Owner.

The Board also discussed the status of two other attorneys for Patent Owner, W. Shawn Staples and Robert C. Curfiss. The Board stated that although Mr. Staples is associated with Customer No. 76,731, no USPTO registration number was ever provided for Mr. Staples and no motion for admission was ever filed for Mr. Staples.  Therefore, Mr. Staples is not an attorney of record in the proceeding.  Mr. Curfiss then tried to argue that although he is an attorney of record for Patent Owner, he does not represent Patent Owner.  The Board noted that this was an inconsistent statement, and that until Mr. Curfiss has filed a motion to withdraw and that motion is granted, he has responsibilities as an attorney of record.

Mobotix Corp. v. E-Watch, Inc., IPR2013-00335
Paper 39: Order on Conduct of the Proceeding
Dated: May 2, 2014
Patent 7,228,429
Before: Jameson Lee, Michael W. Kim, and Matthew R. Clements
Written by: Lee