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`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 REPLY IN SUPPORT OF MOTION FOR PRO
`HAC VICE ADMISSION OF MARK. A BAGHDASSARIAN UNDER 37
`C.F.R. § 42.10(c)
`
`
`
`
`
`Reply ISO Motion for Pro Hac Vice Admission of Mark A. Baghdassarian
`IPR2018-00690 (U.S. Patent No. 6,314,289)
`
`
`Pursuant to the Board’s April 28, 2020 authorization, Petitioner Sirius XM
`
`Radio Inc. (“Sirius XM” or “Petitioner”) hereby submits this Reply to Patent
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`Owner’s Opposition (Paper 51, “Opposition”) to Sirius XM’s Motion for Pro Hac
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`Vice Admission of Mark A. Baghdassarian (Paper 49, “Motion”).
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`I.
`
`ARGUMENT
`Patent Owner does not contest that Sirius XM’s Motion for Pro Hac Vice
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`Admission of Mark A. Baghdassarian complies with 37 C.F.R. § 42.10(c). As the
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`Motion and supporting affidavit demonstrate, Mr. Baghdassarian “is an
`
`experienced litigation attorney and has an established familiarity with the subject
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`matter at issue in the proceeding.” 37 C.F.R. § 42.10(c).
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`Ignoring the sufficiency of the Motion, Patent Owner seeks to oppose the
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`Motion based on its misplaced and misguided reliance on inapposite case law–
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`American Megatrends, Inc. v. Kinglite Holdings, Inc., IPR2015-01079, Paper 49
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`(Oct. 27, 2016). Paper 51 at 3.
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`Specifically, in American Megatrends, the pro hac admission at issue was
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`contested in the context of a Motion to Exclude deposition testimony where the
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`attorney seeking pro hac admission conducted the deposition before the Board
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`could rule on the pro hac motion. American Megatrends, Paper 49 at 25-29.
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`Unlike here, in American Megatrends, the pro hac motion was filed “two days
`
`before [the subject] deposition [thereby] preclud[ing] the 10 day window during
`
`1
`
`
`
`Reply ISO Motion for Pro Hac Vice Admission of Mark A. Baghdassarian
`IPR2018-00690 (U.S. Patent No. 6,314,289)
`
`
`which Petitioner could have opposed the motion.” Id. at 27. Yet, notwithstanding
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`this, the Board denied the motion to exclude noting that “Petitioner does not allege
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`any prejudice as a result of [the subject attorney] conducting the cross examination
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`or argue that [the subject attorney] behaved improperly during the deposition.” Id.
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`Here, Petitioner filed its Motion with more than sufficient time for Patent
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`Owner to oppose and for the Board to evaluate and rule on it. Moreover, Patent
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`Owner does not raise any prejudice on Patent Owner as a result of the Motion nor
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`the timing of the same. Rather, Patent Owner claims that Petitioner “will not be
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`prejudiced in any way” because of “three of the[] existing counsel” that Petitioner
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`has in the case. But that is not the relevant inquiry as confirmed by the very case
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`Patent Owner cites. Indeed, there can be no prejudice to Fraunhofer as they have
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`been on notice of Mr. Baghdassarian as back up counsel since the outset of these
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`proceedings and have even included Mr. Baghdassarian on correspondence and
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`service e-mails regarding these proceedings. Instead, Fraunhofer seeks to prevent
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`having Petitioner’s chosen counsel be admitted into these proceedings.
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`Notably, Patent Owner fails to acknowledge that Patent Owner itself has
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`four named counsel on the instant proceedings. Notwithstanding this, because
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`Patent Owner has failed to provide any applicable support for its Opposition ad
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`admits the Motion satisfies the requirements under 37 C.F.R. § 42.10(c), Sirius
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`XM respectfully requests that its Motion be granted.
`
`2
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`
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`Reply ISO Motion for Pro Hac Vice Admission of Mark A. Baghdassarian
`IPR2018-00690 (U.S. Patent No. 6,314,289)
`
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`Respectfully submitted,
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`Dated: April 30, 2020
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`
`
`(Case No. IPR2018-00690)
`
`
`
`
`
`/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.
`
`
`3
`
`
`
`Reply ISO Motion for Pro Hac Vice Admission of Mark A. 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
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`service was made on the Patent Owner as detailed below.
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`Date of service April 30, 2020
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`Manner of service Electronic Mail
`(byorks@irell.com; bredjaian@irell.com;
`dmcphie@irell.com; kvakili@irell.com)
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`
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`Documents served REPLY IN SUPPORT OF MOTION FOR PRO HAC
`VICE ADMISSION OF MARK A. BAGHDASSARIAN
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`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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`
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