` Entered: May 11, 2019
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`Trials@uspto.gov
`571-272-7822
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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 FORDERNUNG DER
`ANGEWANDTEN E.V.,
`Patent Owner.
`____________
`
`IPR2018-00690
`Patent 6,314,289 B1
`____________
`
`
`
`Before JEFFREY S. SMITH, STACEY G. WHITE, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`SMITH, Administrative Patent Judge.
`
`
`
`ORDER
`Petitioner’s Motion for Admission
`Pro Hac Vice of Mark A. Baghdassarian
`37 C.F.R. § 42.10
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`
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`IPR2018-00690
`Patent 6,314,289 B1
`
`
`Petitioner filed a Motion for Pro Hac Vice Admission of Mark A.
`Baghdassarian in this proceeding. Paper 49 (“Motion”). Patent Owner filed
`an Opposition to the Motion. Paper 51 (“Opp.”). Petitioner filed a Reply to
`the Opposition. Paper 55 (“Reply”). The Motion is granted.
`In its Motion, Petitioner states that there is good cause for the Board
`to recognize Mr. Baghdassarian during this proceeding because “Mr.
`Baghdassarian . . . has extensive experience litigating patent infringement
`cases,” and because “Mr. Baghdassarian has familiarity with the subject
`matter at issue in this proceeding.” Motion 2. The Motion includes an
`Affidavit made by Mr. Baghdassarian, attesting to and sufficiently
`explaining these facts. Ex. 1033. In addition, Mr. Baghdassarian
`acknowledges that he will be subject to the USPTO Rules of Professional
`Conduct set forth in 37 C.F.R. §§ 11.101 et seq. and to disciplinary
`jurisdiction under 37 C.F.R. § 11.19(a). Id.
`Upon consideration, Petitioner has demonstrated sufficiently that
`Mr. Baghdassarian has sufficient legal and technical qualifications to
`represent Petitioner in this proceeding.
`In its Opposition, Patent Owner contends that Petitioner could have
`filed the Motion twenty-six months earlier, and does not explain the delay.
`Opp. 2–3 (citing American Megatrends, Inc. v. Kinglite Holdings, Inc.,
`IPR2015-01079, Paper 49 at 27 (Oct. 27, 2016)). Patent Owner also
`contends that Petitioner will not be prejudiced by denial of the Motion. Id.
`In its Reply, Petitioner contends that the Motion in American
`Megatrends was filed two days before the subject deposition, thereby
`precluding the 10 day window during which the petitioner could have
`opposed the Motion. Reply 1–2. In contrast, Petitioner contends that in this
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`IPR2018-00690
`Patent 6,314,289 B1
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`case, Petitioner filed its Motion with sufficient time for Patent Owner to
`oppose it and for the Board to rule on it. Id. at 2. Petitioner also contends
`that Patent Owner does not allege any prejudice as a result of the Motion,
`nor as a result of the timing of the same. Id.
`In this case, the absence of prejudice to Patent Owner as a result of the
`Motion, and the absence of prejudice to Patent Owner as a result of the
`timing of the Motion, lead us to conclude that the Motion should be granted.
`
`It is
`ORDERED that Petitioner’s motion for pro hac vice admission of
`Mark A. Baghdassarian is granted; Mr. Baghdassarian is authorized to
`represent Petitioner only as back-up counsel in the instant proceeding;
`FURTHER ORDERED that Petitioner is to continue to have a
`registered practitioner represent it as lead counsel for the instant proceeding;
`FURTHER ORDERED that Mr. Baghdassarian is to comply with the
`Office Patent Trial Practice Guide and the Board’s Rules of Practice for
`Trials, as set forth in Part 42 of Title 37, Code of Federal Regulations; and
`FURTHER ORDERED that Mr. Baghdassarian is to be subject to the
`Office’s disciplinary jurisdiction under 37 C.F.R. § 11.19(a), and the
`USPTO Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et
`seq.
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`IPR2018-00690
`Patent 6,314,289 B1
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`PETITIONER:
`
`Jonathan Caplan
`Shannon Hedvat
`Jeffrey Price
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`jcaplan@kramerlevin.com
`shedvat@kramerlevin.com
`jprice@kramerlevin.com
`
`PATENT OWNER:
`
`Ben Yorks
`Babak Redjaian
`David McPhie
`Kamran Vakili
`IRELL & MANELLA LLP
`byorks@irell.com
`bredjaian@irell.com
`dmcphie@irell.com
`kvakili@irell.com
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