`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`
`SIRIUS XM RADIO INC.,
`
`Petitioner,
`
`v.
`
`
`FRAUNHOFER-GESELLSCHAFT ZUR FÖRDERUNG DER
`ANGEWANDTEN FORSCHUNG E.V.,
`Patent Owner.
`
`____________________
`
`Case IPR2018-00690
`U.S. Patent No. 6,314,289
`__________________________________________________________
`
`
`SIRIUS XM RADIO INC.’S MOTION FOR PRO HAC VICE ADMISSION
`OF MARK. A BAGHDASSARIAN UNDER 37 C.F.R. § 42.10(c)
`
`
`
`
`
`
`
`
`
`Motion for Pro Hac Vice Admission of Mark Baghdassarian
`IPR2018-00690 (U.S. Patent No. 6,314,289)
`
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`Pursuant to 37 C.F.R. § 42.10(c) and as authorized in the Board’s Notice of
`
`I.
`
`Filing Date issued April 4, 2018 (Paper 5) (the “Notice of Filing Date”) Sirius XM
`
`Radio Inc. (“Sirius XM” or “Petitioner”) respectfully requests the pro hac vice
`
`admission of Mark A. Baghdassarian in this proceeding.
`
`II. GOVERNING LAWS AND RULES
`Under 37 C.F.R. § 42.10(c), the Board may recognize counsel pro hac vice
`
`“during a proceeding upon a showing of good cause, subject to the condition that
`
`lead counsel be a registered practitioner.” 37 C.F.R. § 42.10(c). Where lead
`
`counsel is a registered practitioner, “a motion to appear pro hac vice by counsel
`
`who is not registered may be granted upon a showing that counsel is an
`
`experienced litigation attorney and has an established familiarity with the subject
`
`matter at issue in the proceeding.” Id.
`
`As stated in the Notice of Filing Date, any motion for pro hac vice
`
`admission under 37 C.F.R. § 42.10(c) must be filed in accordance with the
`
`guidance specified in the “Order – Authorizing Motion for Pro Hac Vice
`
`Admission” in Case IPR2013-00639, Paper 7. According to that guidance, pro hac
`
`vice motions can be filed “no sooner than (21) days after service of the petition.”
`
`1
`
`
`
`Motion for Pro Hac Vice Admission of Mark Baghdassarian
`IPR2018-00690 (U.S. Patent No. 6,314,289)
`
`
`III. STATEMENT OF FACTS
`Based on the following facts, and supported by the Affidavit of Mr.
`
`Baghdassarian (“Baghdassarian Aff.”) submitted herewith, Petitioner requests the
`
`pro hac vice admission of Mr. Baghdassarian in this proceeding:
`
`1.
`
` Petitioner’s lead counsel, Jonathan S. Caplan, is a registered
`
`practitioner (Reg. No. 38,094).
`
`2. Mr. Baghdassarian is a partner in the Intellectual Property Department
`
`in the New York office of the law firm Kramer Levin Naftalis & Frankel LLP
`
`(Baghdassarian Aff., ¶ 3).
`
`3. Mr. Baghdassarian is an experienced litigation attorney. He has been
`
`practicing law since 1999 and has extensive experience litigating patent
`
`infringement cases in many different district courts across the United States.
`
`(Id., ¶ 4). Among his experience in patent litigation matters, Mr. Baghdassarian
`
`has been trial counsel in several lawsuits, including having active roles in patent-
`
`related hearings and pleadings concerning, inter alia, patent validity and
`
`infringement issues. (Id., ¶ 5).
`
`4. Mr. Baghdassarian has established familiarity with the subject matter
`
`at issue in this proceeding. In particular, Mr. Baghdassarian is one of Sirius XM’s
`
`lead trial counsel in the co-pending district court litigation, Fraunhofer-
`
`Gesellschaft Zur Forderung der angewandten Forschung e.V. v. Sirius XM Radio
`
`2
`
`
`
`Motion for Pro Hac Vice Admission of Mark Baghdassarian
`IPR2018-00690 (U.S. Patent No. 6,314,289)
`
`
`Inc., Civil Action No. 1:17-cv-00184 (D. Del.) (the “District Court Litigation”),
`
`which involves the same patent at issue in this proceeding (U.S. Patent No.
`
`6,314,289 (the “’289 Patent”)). As lead counsel, he has been actively involved in
`
`all aspects of the District Court Litigation including Petitioner’s factual
`
`investigation and development of its noninfringement and invalidity positions
`
`regarding the claims of the ’289 Patent being challenged in this proceeding.
`
`(Id., ¶ 12).
`
`5. Mr. Baghdassarian is a member in good standing of the State Bar of
`
`New York and Connecticut. (Id., ¶ 6).
`
`6. Mr. Baghdassarian has never been suspended or disbarred from
`
`practice before any court or administrative body. (Id.). However, Mr.
`
`Baghdassarian did receive an administrative suspension for a misunderstanding on
`
`the payment of fees to the State of Connecticut. Once this payment of fees was
`
`resolved, the administrative suspension was promptly lifted.
`
`7.
`
`No application, on behalf of Mr. Baghdassarian, for admission to
`
`practice before any court or administrative body has ever been denied. (Id., ¶ 7).
`
`8.
`
`No sanctions or contempt citations have ever been imposed against
`
`Mr. Baghdassarian by any court or administrative body. (Id., ¶ 8).
`
`3
`
`
`
`Motion for Pro Hac Vice Admission of Mark Baghdassarian
`IPR2018-00690 (U.S. Patent No. 6,314,289)
`
`
`9. Mr. Baghdassarian has read and will comply with the Office Patent
`
`Trial Practice Guide and the Board’s Rules of Practice for Trials set forth in part 42
`
`of 37 of C.F.R. (Id., ¶ 9).
`
`10. Mr. Baghdassarian understands that he will be subject to the USPTO
`
`Code of Professional Responsibility set forth in 37 C.F.R. §§ 11.101 et seq. and
`
`disciplinary jurisdiction under 27 C.F.R. § 11.19(a). (Id., ¶ 10).
`
`11. Mr. Baghdassarian has not applied to appear pro hac vice before the
`
`Office within the past three years. (Id., ¶ 11).
`
`12. This motion was filed no sooner than 21 days after service of the
`
`Petition in this proceeding, which occurred on August 14, 2015.
`
`IV. GOOD CAUSE EXISTS FOR THE PRO HAC VICE ADMISSION OF
`MR. BAGHDASSARIAN IN THIS PROCEEDING
`The Board may recognize counsel pro hac vice during a proceeding upon a
`
`showing of good cause, subject to the condition that lead counsel be a registered
`
`practitioner and to any other conditions as the Board may impose. 37 C.F.R.
`
`§ 42.10(c). Petitioner’s lead counsel, Jonathan S. Caplan, is a registered
`
`practitioner. Based on the facts contained herein, as supported by Mr.
`
`Baghdassarian’s affidavit, good cause exists to admit Mr. Baghdassarian pro hac
`
`vice in this proceeding.
`
`4
`
`
`
`Motion for Pro Hac Vice Admission of Mark Baghdassarian
`IPR2018-00690 (U.S. Patent No. 6,314,289)
`
`
`As supported by his affidavit, Mr. Baghdassarian is a patent litigator with
`
`extensive experience litigating patent infringement cases in many different district
`
`courts across the United States. Mr. Baghdassarian also has a deep and established
`
`familiarity with the subject matter at issue in this proceeding as he is one of Sirius
`
`XM’s lead trial counsel in the District Court Litigation which involves the same at
`
`issue in this proceeding. As counsel for Petitioner, Mr. Baghdassarian has
`
`substantively reviewed all materials filed in the Inter Partes Review and has been
`
`engaged with Sirius XM’s actions involved in this Inter Partes Review to date.
`
`In view of Mr. Baghdassarian’s extensive knowledge of the precise subject
`
`matter at issue in this proceeding, and in view of the interrelatedness of this
`
`proceeding and the District Court Litigation, Petitioner has a substantial need for
`
`Mr. Baghdassarian’s pro hac vice admission in conjunction with Petitioner, Sirius
`
`XM Radio Inc., continued prosecution of this proceeding. Admission of Mr.
`
`Baghdassarian pro hac vice will enable Petitioner to avoid unnecessary expense
`
`and duplication of work between this proceeding and the District Court Litigation.
`
`See 77 Fed. Reg. 157 (Aug. 14, 2012), at 48661 (Office’s comment on final rule
`
`discussing concerns about efficiency and costs where an entity has already engaged
`
`counsel for parallel district court litigation). Admission of Mr. Baghdassarian will
`
`also ease the burden on Petitioner’s existing lead and backup counsel in upcoming
`
`actions.
`
`5
`
`
`
`Motion for Pro Hac Vice Admission of Mark Baghdassarian
`IPR2018-00690 (U.S. Patent No. 6,314,289)
`
`
`V. CONCLUSION
`For the foregoing reasons as well as the reasons contained in the attached
`
`affidavit, Sirius XM respectfully requests the admission of Mark A. Baghdassarian
`
`as counsel pro hac vice in this proceeding.
`
`Dated: April 17, 2020
`
`
`
`(Case No. IPR2018-00690)
`
`Respectfully submitted,
`
`
`
`
`
`/Jonathan S. Caplan/
`
`Jonathan S. Caplan (Reg. No. 38,094)
`Mark Baghdassarian (pro hac vice pending)
`Shannon Hedvat (Reg. 68,417)
`Jeffrey H. Price (Reg. No. 69,141)
`Kramer Levin Naftalis & Frankel LLP
`1177 Avenue of the Americas
`New York, NY 10036
`Tel: 212.715.9488
`
`Attorneys for Petitioner
`Sirius XM Radio Inc.
`
`
`6
`
`
`
`Motion for Pro Hac Vice Admission of Mark Baghdassarian
`IPR2018-00690 (U.S. Patent No. 6,314,289)
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies, in accordance with 37 C.F.R. § 42.6(e), that
`
`service was made on the Patent Owner as detailed below.
`
`Date of service April 17, 2020
`
`Manner of service Electronic Mail
`(byorks@irell.com; bredjaian@irell.com;
`dmcphie@irell.com; kvakili@irell.com)
`
`
`
`Documents served MOTION FOR PRO HAC VICE ADMISSION OF
`MARK BAGHDASSARIAN
`
`Persons Served (Ben J. Yorks; Babak Redjaian; David McPhie; Kamran
`Vakili)
`
`
`
`
`/Jonathan S. Caplan /
`Jonathan S. Caplan
`Registration No. 38,094
`Counsel for Petitioner
`
`
`1
`
`
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