Trials@uspto.gov
`571-272-7822
`
`Paper 64
`Entered: April 26, 2022
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`WALMART INC.; Z-SHADE CO., LTD.;
`COSTCO WHOLESALE CORPORATION;
`LOWE’S HOME CENTERS, LLC; and
`SHELTERLOGIC CORP.,
`Petitioner,
`
`v.
`
`CARAVAN CANOPY INTERNATIONAL, INC.,
`Patent Owner.
`_______________
`
`IPR2020-010261
`Patent 5,944,040
`_______________
`
`Before BART A. GERSTENBLITH, JAMES J. MAYBERRY, and
`ERIC C. JESCHKE, Administrative Patent Judges.
`
`JESCHKE, Administrative Patent Judge.
`
`
`ORDER
`Granting Patent Owner’s Motion for
`Withdrawal and Substitution of Counsel
`37 C.F.R. § 42.10
`
`
`
`
`1 Z-Shade Co., Ltd.; Costco Wholesale Corporation; Lowe’s Home
`Centers, LLC; and ShelterLogic Corp., which filed a petition in IPR2021-
`00449, have been joined as petitioner in this proceeding.
`
`
`571-272-7822
`
`Paper 64
`Entered: April 26, 2022
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`WALMART INC.; Z-SHADE CO., LTD.;
`COSTCO WHOLESALE CORPORATION;
`LOWE’S HOME CENTERS, LLC; and
`SHELTERLOGIC CORP.,
`Petitioner,
`
`v.
`
`CARAVAN CANOPY INTERNATIONAL, INC.,
`Patent Owner.
`_______________
`
`IPR2020-010261
`Patent 5,944,040
`_______________
`
`Before BART A. GERSTENBLITH, JAMES J. MAYBERRY, and
`ERIC C. JESCHKE, Administrative Patent Judges.
`
`JESCHKE, Administrative Patent Judge.
`
`
`ORDER
`Granting Patent Owner’s Motion for
`Withdrawal and Substitution of Counsel
`37 C.F.R. § 42.10
`
`
`
`
`1 Z-Shade Co., Ltd.; Costco Wholesale Corporation; Lowe’s Home
`Centers, LLC; and ShelterLogic Corp., which filed a petition in IPR2021-
`00449, have been joined as petitioner in this proceeding.
`
`
`
`IPR2020-01026
`Patent 5,944,040
`
`
`BACKGROUND
`On May 17, 2021, we instituted trial in this inter partes review
`proceeding involving Z-Shade Co., Ltd.; Costco Wholesale Corporation;
`Lowe’s Home Centers, LLC; and ShelterLogic Corp. (collectively,
`“Petitioner”) and Patent Owner, Caravan Canopy International, Inc.
`Paper 22. After trial, we issued a Final Written Decision. Paper 57.
`Following Patent Owner’s Request for Rehearing (Paper 58), we issued a
`Decision Denying the Request for Rehearing. Paper 59.
`On April 13, 2022, Patent Owner filed both a Motion for Withdrawal
`and Substitution of Counsel (Paper 62) and a Notice of Appeal to the U.S.
`Court of Appeals for the Federal Circuit (Paper 63). For the reasons below,
`we grant Patent Owner’s Motion.
`
`
`DISCUSSION
`As a preliminary matter, we first determine whether we have the
`authority to decide Patent Owner’s Motion. The general rule is that the
`Board divests jurisdiction when either party files a notice of appeal to the
`Federal Circuit. See In re Allen, 115 F.2d 936, 939 (CCPA 1940) (“We have
`no doubt that when a notice of appeal and reasons of appeal in an appealable
`case are duly filed with the Commissioner of Patents, jurisdiction of the
`cause is transferred to this court. There is nothing left for the commissioner
`to do other than to certify the record and transmit it to this court.”); but see
`Loshbough v. Allen, 359 F.2d 910, 912 (CCPA 1966) (restating this general
`rule, but discussing some functions that the Board may perform despite an
`applicant having filed a notice of appeal and overruling In re Allen to the
`extent it would prohibit the Board from performing those functions).
`
`2
`
`
`
`IPR2020-01026
`Patent 5,944,040
`
`
`Even after an applicant has filed a notice of appeal, however, the
`Board still “can exercise a purely ministerial function in [its] administrative
`capacity” that does not make a “new or different determination of an issue[]”
`and “exercise[s] no judicial function.” In re Grier, 342 F.2d 120, 123
`(CCPA 1965) (allowing the Board to correct a typographical error where it
`concluded a decision with “AFFIRMED” rather than “AFFIRMED-IN-
`PART”); Loshbough, 359 F.2d at 912 (remanding appeal to the Board of
`Patent Interferences for it to consider appellee’s motion “to ‘cancel’ from the
`interference the 5 counts on which priority was awarded to him and to
`substitute a new count”). We view deciding whether a party can withdraw
`and substitute counsel as a “purely ministerial function” that does not make
`a “new or different determination of an issue[]” and “exercise[s] no judicial
`function.” Grier, 342 F.2d at 123; see Loshbough, 359 F.2d at 912.
`Accordingly, we are able to decide Patent Owner’s Motion, even though a
`Notice of Appeal has already been filed.
`We now turn to the Motion itself. A party represented by counsel
`must designate a lead counsel and at least one back-up counsel. 37 C.F.R.
`§ 42.10(a). Counsel may not withdraw from a proceeding unless the Board
`authorizes such withdrawal. 37 C.F.R. § 42.10(e). A power of attorney
`must be filed with the designation of counsel, unless the designated counsel
`is already counsel of record. 37 C.F.R. § 42.10(b). The parties must provide
`certain mandatory notices, including identification of lead and back-up
`counsel. 37 C.F.R. § 42.8. Where there is a change of information, a party
`must file a revised notice within 21 days of the change. 37 C.F.R.
`§ 42.8(a)(3).
`
`3
`
`
`
`IPR2020-01026
`Patent 5,944,040
`
`
`Here, Patent Owner has requested authorization to withdraw lead
`counsel Kyle W. Kellar and backup-counsel Jason C. Martone and Steven
`French from this proceeding, and has identified substitute lead counsel
`Stephen Lobbin (Reg. No. 41,159) and back-up counsel Joshua Osborn
`(Reg. No. 77,858), who are registered practitioners. See Mot. 1; Paper 61
`(Patent Owner’s Updated Mandatory Notices) at 2. Patent Owner asserts
`that its “new counsel meet the requirements of 37 C.F.R. § 42.10(c) as lead
`counsel and registered practitioners.” Mot. 1. Patent Owner also states that
`“Petitioner has indicated it does not oppose the requested withdrawal and
`substitution of counsel for Patent Owner.” Id. at 2. Patent Owner filed a
`power of attorney for Mr. Lobbin and Mr. Osborn and an updated
`Mandatory Notice identifying Mr. Lobbin and Mr. Osborn as lead and back-
`up counsel, respectively. See Paper 60 (Power of Attorney) at 1; Paper 61
`at 2. We determine that Patent Owner’s Motion meets the requirements
`above. Thus, we grant Patent Owner’s Motion.
`
`It is hereby:
`ORDERED that Patent Owner’s Motion is granted;
`FURTHER ORDERED that Kyle W. Kellar is allowed to withdraw as
`lead counsel from this proceeding, and Stephen Lobbin is allowed to be
`substituted as lead counsel; and
`FURTHER ORDERED Jason C. Martone and Steven French are
`allowed to withdraw as back-up counsel from this proceeding, and Joshua
`Osborn is allowed to be substituted as back-up counsel.
`
`
`
`4
`
`
`
`IPR2020-01026
`Patent 5,944,040
`
`FOR PETITIONER:
`
`David A. Reed
`Tyler McAllister
`Kathleen R. Geyer (pro hac vice)
`KILPATRICK TOWNSEND & STOCKTON LLP
`dreed@kilpatricktownsend.com
`tmcallister@kilpatricktownsend.com
`kgeyer@kilpatricktownsend.com
`Attorneys for Walmart Inc.
`
`Kerry Taylor
`Andrew M. Douglas
`Lauren K. Katzenellenbogen
`KNOBBE MARTENS OLSON & BEAR, LLP
`2KST@knobbe.com
`2AMD@knobbe.com
`2LXK@knobbe.com
`Attorneys for Z-Shade Co., Ltd. and Costco Wholesale Corporation
`
`Richard A. Neifeld
`NEIFELD IP LAW, PC
`rneifeld@neifeld.com
`Attorney for Lowe’s Home Centers, LLC
`
`Damian K. Gunningsmith
`CARMODY TORRANCE SANDAK AND HENNESSEY LLP
`dgunningsmith@carmodylaw.com
`Attorney for ShelterLogic Corp.
`
`William J. Brown, Jr.
`BROWN WEGNER LLP
`bill@brownwegner.com
`Attorney for Lowe’s Home Centers, LLC
`
`
`
`
`
`
`5
`
`
`
`IPR2020-01026
`Patent 5,944,040
`
`FOR PATENT OWNER:
`
`Stephen M. Lobbin
`Joshua N. Osborn
`SML AVVOCATI P.C.
`sml@smlavvocati.com
`jno@smlavvocati.com
`
`6
`
`
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