UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`SZ DJI TECHNOLOGY CO., LTD.,
`Petitioner
`
`v.
`
`DRONE-CONTROL, LLC,
`Patent Owner
`
`
`
`
`Case IPR2018-00205 (Patent 8,380,368 B2)
`Case IPR2018-00206 (Patent 8,649,918 B2)
`Case IPR2018-00207 (Patent 9,079,116 B2)
`Case IPR2018-00208 (Patent 9,568,913 B2)1
`
`
`
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`PATENT OWNER’S MOTION TO WITHDRAW AND
`SUBSTITUTE COUNSEL
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`Submitted Electronically via PTAB E2E
`
`
`1 This Motion addresses issues that are the same in the above-identified proceedings. An identical
`motion is being concurrently filed in IPR2018-00205, IPR2018-00207, and IPR2018-00208.
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`SZ DJI TECHNOLOGY CO., LTD.,
`Petitioner
`
`v.
`
`DRONE-CONTROL, LLC,
`Patent Owner
`
`
`
`
`Case IPR2018-00205 (Patent 8,380,368 B2)
`Case IPR2018-00206 (Patent 8,649,918 B2)
`Case IPR2018-00207 (Patent 9,079,116 B2)
`Case IPR2018-00208 (Patent 9,568,913 B2)1
`
`
`
`
`PATENT OWNER’S MOTION TO WITHDRAW AND
`SUBSTITUTE COUNSEL
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`Submitted Electronically via PTAB E2E
`
`
`1 This Motion addresses issues that are the same in the above-identified proceedings. An identical
`motion is being concurrently filed in IPR2018-00205, IPR2018-00207, and IPR2018-00208.
`
`
`
`IPR2018-00206
`U.S. Patent No. 8,649,918
`
`I.
`
`STATEMENT OF RELIEF REQUESTED
`
`Pursuant to 37 C.F.R. 42.10(e), and as authorized by the Board’s May 13,
`
`2021 e-mail, Patent Owner Drone-Control, LLC (“Patent Owner”) requests the
`
`Board authorize the withdrawal of attorneys Benjamin R. Johnson (Reg. No.
`
`64,483), Grantland Drutchas (Reg. No. 32,565), and George Lyons III (76,884), of
`
`McDonnell Boehnen Hulbert & Berghoff LLP as counsel for Patent Owner. Patent
`
`Owner also respectfully requests that the Board authorize the substitution of
`
`Timothy Devlin as new Lead Counsel in this matter.
`
`Patent Owner has conferred with Petitioner’s counsel. Petitioner does not
`
`oppose this motion.
`
`II.
`
`STATEMENT OF FACTS SHOWING GOOD CAUSE FOR THE
`BOARD TO AUTHORIZE WITHDRAWAL AND SUBSTITUTION OF
`COUNSEL
`
`Patent Owner wishes to remove the above counsel in this proceeding. Patent
`
`Owner wishes for Timothy Devlin (Reg. No. 41,706) of DEVLIN LAW FIRM LLC to
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`be its lead counsel and Derek Dahlgren (pro hac vice to be filed) to be its back-up
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`counsel going forward in this proceeding. No change to the schedule would be
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`required based on the proposed change in counsel as these matters are currently
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`stayed pending the Supreme Court’s review in Arthrex. Patent Owner represents
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`that it would not be prejudiced by the proposed withdrawal and substitution of
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`counsel. In identifying and designating new counsel who are ready and able to
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`
`
`1
`
`
`
`IPR2018-00206
`U.S. Patent No. 8,649,918
`take over the representation, “reasonable steps have been taken to avoid
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`foreseeable prejudice to the rights of the client.” See 37 C.F.R. §10.40(a). Under
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`37 C.F.R. §42.8(a)(3), an updated Mandatory Notice and Power of Attorney will
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`be filed upon grant of the present motion.
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`III. REASONS FOR RELIEF REQUESTED
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`“Counsel may not withdraw from a proceeding before the Board unless the
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`Board authorizes such withdrawal.” 37 C.F.R. §42.10(e).
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`
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`Given the pending change of counsel and the availability of new counsel who
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`are ready and able to take over the representation, it is appropriate to allow
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`Benjamin R. Johnson, Grantland G. Drutchas, and George T. Lyons, III to withdraw
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`from this proceeding.
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`
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`Counsel for Petitioner has been consulted and has indicated that Petitioner
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`would not oppose the motion for substitution and withdrawal. Thus, Patent Owner
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`believes that granting this motion will not hinder the economy, the integrity of the
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`patent system, the efficient administration of the Office, or the ability of the Office
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`to timely complete this proceeding. See 35 U.S.C. § 316(b).
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`The undersigned confirms that granting this motion is consistent with, and
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`that it has complied with, the requirements set forth in 37 C.F.R. § 11.116 (a)-(d).
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`
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`
`
`
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`2
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`
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`IPR2018-00206
`U.S. Patent No. 8,649,918
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`IV. CONCLUSION
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`Patent Owner respectfully requests that the Board grant its motion to withdraw
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`Benjamin R. Johnson, Grantland Drutchas, and George Lyons III as counsel for
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`Patent Owner, and to substitute Timothy Devlin as new Lead Counsel for Patent
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`Owner in this proceeding.
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`
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`Date: May 21, 2021
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`
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`
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`Respectfully submitted,
`
`
`
`/s/ George T. Lyons, III
`Benjamin Johnson (Reg. No. 64,483)
`Grantland Drutchas (Reg. No. 32,565)
`George Lyons III (Reg. No. 76, 884)
`McDonnell Boehnen Hulbert &
`Berghoff LLP
`300 S. Wacker Drive, 32nd Fl.
`Chicago, IL 60606
`(312) 913-2121
`bjohnson@mbhb.com
`drutchas@mbhb.com
`lyons@mbhb.com
`
`Attorneys for Patent Owner
`
`
`
`
`
`
`
`3
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`
`
`IPR2018-00206
`U.S. Patent No. 8,649,918
`
`CERTIFICATE OF SERVICE
`
`
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on May 13,
`
`the foregoing document is being served via electronic mail upon the following
`
`counsel of record for Petitioners:
`
`LEAD COUNSEL
`Stephen E. Kabakoff (Reg. 51,276)
`stephen.kabakoff@finnegan.com
`Finnegan, Henderson, Farabow, Garrett
`& Dunner LLP
`271 17th Street, NW, Suite 1400
`Atlanta, GA 30363-6209
`
`Additional email for service:
`DJI-Synergy-IPR@finnegan.com
`
`
`BACKUP COUNSEL
`Joshua Goldberg (Reg. 59,369)
`Qingyu Yin (Reg. 61,329)
`joshua.goldberg@finnegan.com
`qingyu.yin@finnegan.com
`Finnegan, Henderson, Farabow, Garrett &
`Dunner LLP
`901 New York Avenue, NW
`Washington, D.C. 20001-4413
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`/s/ George T. Lyons, III
`George T. Lyons, III
`
`4
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