Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 19
`Entered: August 31, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`
`
`SQUARE, INC.,
`Petitioner,
`
`v.
`
`THINK COMPUTER CORPORATION,
`Patent Owner.
`_______________
`
`Case CBM2015-00067
`Patent 8,396,808 B2
`_______________
`
`
`
`Before TONI R. SCHEINER, MICHAEL W. KIM, and
`BART A. GERSTENBLITH, Administrative Patent Judges.
`
`KIM, Administrative Patent Judge.
`
`
`
`ORDER
`Motion to Withdraw as Counsel
`37 C.F.R. §§ 42.5, 42.10
`
`On August 15, 2015, Mr. Sean Goodwin filed a Motion to Withdraw
`as Counsel. Paper 18; “Motion.” Mr. Goodwin is lead counsel for Patent
`Owner. Papers 6, 8. Mr. Michael Aschenbrener has been admitted as pro
`hac vice counsel in this proceeding, and is recognized as backup counsel.
`
`
`Tel: 571-272-7822
`
`Paper 19
`Entered: August 31, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`
`
`SQUARE, INC.,
`Petitioner,
`
`v.
`
`THINK COMPUTER CORPORATION,
`Patent Owner.
`_______________
`
`Case CBM2015-00067
`Patent 8,396,808 B2
`_______________
`
`
`
`Before TONI R. SCHEINER, MICHAEL W. KIM, and
`BART A. GERSTENBLITH, Administrative Patent Judges.
`
`KIM, Administrative Patent Judge.
`
`
`
`ORDER
`Motion to Withdraw as Counsel
`37 C.F.R. §§ 42.5, 42.10
`
`On August 15, 2015, Mr. Sean Goodwin filed a Motion to Withdraw
`as Counsel. Paper 18; “Motion.” Mr. Goodwin is lead counsel for Patent
`Owner. Papers 6, 8. Mr. Michael Aschenbrener has been admitted as pro
`hac vice counsel in this proceeding, and is recognized as backup counsel.
`
`
`
`CBM2015-00067
`Patent 8,396,808 B2
`
`Papers 6, 8. In the Motion, Mr. Goodwin requests that the Board waive the
`requirement under 37 C.F.R. § 42.10(c) that pro hac vice counsel is allowed
`only where the lead attorney is a registered patent practitioner, allow him to
`withdraw as lead counsel, and allow Mr. Aschenbrener to continue to serve
`as backup counsel, but without any lead counsel. For the reasons set forth
`below, the Motion is denied.
`Mr. Goodwin asserts that he is no longer providing of-counsel
`services for Aschenbrener Law P.C., has no contractual relationship with
`Patent Owner, and that Patent Owner will continue to be represented by
`Aschenbrener Law P.C. Motion 1–2. We are not persuaded, however, that
`Mr. Goodwin’s contractual status, or lack thereof, with Aschenbrener Law
`P.C. and Patent Owner is sufficient to outweigh the aforementioned rules’
`implication that the presence of a registered practitioner as lead counsel is
`highly desirable to protect a party’s rights in these potentially technically
`complex proceedings.
`Mr. Goodwin asserts further that his contractual terms are such that he
`has never been paid, he was misled to the extent of representation and the
`nature of the client, and that he has endured personal and financial hardships
`due to this representation. Id. Although Mr. Goodwin’s assertions engender
`our sympathy, we have to balance the interests of counsel seeking
`withdrawal with the interests of the client, as well as the interests of the
`United States Patent Office, the profession, and the public. See, e.g.,
`http://www.uspto.gov/patent/laws-and-regulations/america-invents-act-
`aia/message-chief-judge-james-donald-smith-board#heading-4 (discussing
`how the rules pertaining to pro hac vice admission balance various needs).
`When Patent Owner’s Power of Attorney appointing Mr. Goodwin as lead
`
`
`
`2
`
`
`
`CBM2015-00067
`Patent 8,396,808 B2
`
`counsel was entered in this proceeding, Mr. Goodwin understood, or should
`have understood, the requirement that lead counsel be a registered patent
`practitioner under 37 C.F.R. § 42.10(c). Whatever contractual relationship
`Mr. Goodwin entered with Aschenbrener Law P.C., it was incumbent upon
`Mr. Goodwin to understand that he was stepping into an important role in
`the proceeding and that the time demands upon him would be commensurate
`in scope with the duties of lead counsel.
`Additionally, Mr. Goodwin’s assertions with respect to payment and
`representations regarding the extent of representation are not supported by
`any evidence before us. We do not suggest, however, that Mr. Goodwin
`should have submitted his contractual agreement into the record of this
`proceeding; rather, Mr. Goodwin’s assertions regarding payment for his
`services do not outweigh the Board’s requirement that lead counsel be a
`registered practitioner. If Mr. Goodwin has a dispute with Aschenbrener
`Law P.C. regarding payment for his services, that issue is for another day,
`and another proceeding.
`Further, Mr. Goodwin acknowledges in his Motion that there are “few
`matters” remaining. Motion 2. Thus, although we recognize that his
`continued representation of Patent Owner may be burdensome, that burden
`is nearing its end, whether the end comes as a result of the conclusion of this
`matter or Patent Owner’s retention of replacement counsel.
`Mr. Goodwin asserts also that it is his information and belief that
`Patent Owner has been actively searching for replacement counsel at least
`since July 2015, and that there is no reason to think that Patent Owner will
`not be able to find a replacement. This assertion does not weigh in favor of
`granting the Motion. If Patent Owner is able to find a registered practitioner
`
`
`
`3
`
`
`
`CBM2015-00067
`Patent 8,396,808 B2
`
`to serve as replacement counsel, Mr. Goodwin may request withdrawal at
`that time.
`Mr. Goodwin asserts additionally that the remaining procedural steps
`in this matter can be performed by backup counsel, Mr. Aschenbrener, and
`that a registered patent practitioner is not necessary for those steps.
`Motion 2. This assertion also does not weigh in favor of granting the
`Motion, as Mr. Aschenbrener has been, and continues to be free to conduct
`all remaining matters, whether or not Mr. Goodwin is lead counsel.
`IT IS ORDERED that Mr. Goodwin’s Motion (Paper 18) is denied;
`
`and
` IT IS FURTHER ORDERED that insofar as traveling to attend any
`hearing may impose additional financial hardships on Mr. Goodwin,
`Mr. Goodwin is authorized to attend the hearing telephonically.
`
`
`
`
`
`4
`
`
`
`CBM2015-00067
`Patent 8,396,808 B2
`
`
`For PETITIONER:
`
`Michael T. Rosato
`Robin L. Brewer
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`mrosato@wsgr.com
`rbrewer@wsgr.com
`
`For PATENT OWNER:
`
`Sean Goodwin
`Michael Aschenbrener
`ASCHENBRENER LAW, P.C.
`sgg@aschenbrenerlaw.com
`mja@aschenbrenerlaw.com
`
`
`
`
`5
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