Pro Se or not Pro Se, That is the Question

The Patent Trial and Appeal Board (PTAB) recently denied Patent Owner’s counsel’s motion to withdraw from representation of Patent Owner in Shire Dev. LLC v. LCS Group LLC, IPR2014-00739 (Nov. 21, 2014) (Paper 9). Under 37 C.F.R. § 42.10(e), counsel may not withdraw without PTAB authorization. The Shire Dev. request was denied because the inventor could not proceed pro se as the patent was assigned to LCS Group, LLC, which was also designated as the real party-in-interest.

The PTAB followed the general rule presented in Motorola Mobility, LLC v. Arnouse, IPR2013-00010 (March 21, 2013, Paper 24) (April 19, 2013, Paper 30), that a juristic entity, e.g., a corporate entity, may not represent itself pro se in a proceeding before the PTAB. The panel in Motorola Mobility relied on Talisila, Inc. v. United States, 240 F.3d 1064, 1066 (Fed. Cir. 2001) and 37 C.F.R. § 1.31 (2012). Paper 24 at 3; Paper 30 at 6-7. Notably, neither addresses representation of a patentee or a petitioner before an agency. Tasila concerns whether a corporation may represent itself pro se in federal courts, such as the Court of Federal Claims. Rule 1.31 concerns who may represent an applicant for a patent, noting that juristic entities must be represented by a patent practitioner.

As in Shire Dev., the issue of pro se representation typically arises in the context of a motion to withdraw by patent owner’s counsel. Authorization to proceed pro se depends on whether the party or real party-in-interest is a juristic entity. For example in United States v. Golden, IPR2014-00714, the PTAB authorized Mr. Golden to file a motion to proceed pro se because the record showed that he, “in his personal capacity,” was the Patent Owner. Paper 17 at 2. In contrast, in Motorola Mobility, the PTAB noted that while the power of attorney and mandatory notices identified Mr. Arnouse as the patent owner and sole real party-in-interest, a Complaint from a copending litigation stated that Arnouse Digital Devices Corp (ADD) was the exclusive licensee with “all substantial rights.” Paper 30 at 2-3. As ADD appeared to be the “effective patentee,” Mr. Arnouse could not proceed pro se. Id. at 7. With respect to Shire Dev., the PTAB noted that the mandatory notices identified LCS Group, a juristic entity as the patent owner and real party-in-interest; not the inventor. Paper 9 at 2. Further, this would not necessarily be corrected by assigning ownership back to the inventor, particularly where “any rights” may remain in the juristic entity. Id. The inventor may become the patent power but the juristic entity remains a real party-in-interest. Id.

Even if the motion to proceed pro se is authorized, the PTAB highly advises the party to retain counsel, explaining that “given the complexity and very technical nature of these proceedings, pro se representation carries significant risk.” Golden, Paper 17 at 2.