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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_________________________
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`GoPro, Inc., Garmin Int’l, Inc. and Garmin USA, Inc.,
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`Petitioners
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`v.
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`Cellspin Soft, Inc.,
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`Patent Owner
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`_________________________
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`CASE: IPR2019-01107
`Patent No. 9,258,698
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`PETITIONER’S UNOPPOSED MOTION FOR PRO HAC VICE
`ADMISSION OF KARINEH KHACHATOURIAN
` UNDER 37 C.F.R. § 42.10(c)
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`IPR2019-01107
`Unopposed Motion for Pro Hac Vice Admission of Karineh Khachatourian
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`I.
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`STATEMENT OF PRECISE RELIEF REQUESTED
`Pursuant to 37 C.F.R. § 42.10(c) authorizing the petitioner to file motions
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`for pro hac vice admission, GoPro Inc. requests that the Patent Trial and Appeal
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`Board (the “Board”) admit Karineh Khachatourian pro hac vice in this proceeding,
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`IPR2019-01107.
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`II.
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`STATEMENT OF FACTS SHOWING GOOD CAUSE FOR THE
`BOARD TO RECOGNIZE COUNSEL PRO HAC VICE DURING THE
`PROCEEDING
`In accordance with 37 C.F.R. § 42.10(c), the Board may recognize counsel
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`pro hac vice, subject to the condition that lead counsel be a registered practitioner
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`and to any other conditions that the Board may impose. Section 42.10(c) provides
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`that “where the lead counsel is a registered practitioner, a motion to appear pro hac
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`vice by counsel who is not a registered practitioner may be granted upon showing
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`that counsel is an experienced litigating attorney and has an established familiarity
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`with the subject matter at issue in the proceeding.” See Unified Patents, Inc. v.
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`Parallel Iron, LLC, IPR2013-00639, Paper 7 (P.T.A.B. Oct. 15, 2013). The
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`following facts establish good cause for the Board to recognize Karineh
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`Khachatourian pro hac vice in this proceeding:
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`1.
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`The undersigned, David T. Xue, lead counsel in this proceeding, is a
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`registered practitioner.
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`2
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`IPR2019-01107
`Unopposed Motion for Pro Hac Vice Admission of Karineh Khachatourian
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`2. Ms. Khachatourian is a partner at Rimon Law and manages the Palo
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`Alto office. In addition, Ms. Khachatourian is an experienced patent litigator of
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`more than twenty years, and has represented GoPro in patent litigation and PTAB
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`proceedings for the last six years. Ms. Khachatourian is a member in good
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`standing of the California Bar, and has never been suspended, disbarred,
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`sanctioned, cited for contempt of court, or had a court or administrative body deny
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`her application for admission to practice. Ms. Khachatourian has read and agrees
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`to comply with the Office Patent Trial Practice Guide and the Board’s Rules of
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`Practice for Trials set forth in Part 42 of Title 37 of the C.F.R., and understands
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`that she will be subject to the USPTO Rules of Professional Conduct set forth in 37
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`C.F.R. §§ 11.101 et. seq. and disciplinary jurisdiction under 37 C.F.R. § 11.19(a).
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`3. Ms. Khachatourian has applied to appear pro hac vice in twelve other
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`Board, or United States Patent and Trademark Office (“USPTO”), proceedings as
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`listed in the accompanying Declaration of Ms. Khachatourian (Exhibit 1035).
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`4. Ms. Khachatourian has established familiarity with the subject matter
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`at issue in this proceeding from her participation as lead trial counsel in co-pending
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`litigation involving the subject patent. Specifically, U.S. Patent No. 9,258,698 is
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`currently asserted against Petitioner in co-pending litigation captioned Cellspin
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`Soft, Inc., v. GoPro Inc., Case No. 4:17-cv-05939 (N.D. Cal.) (filed Mar. 2, 2018)
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`(“the co-pending litigation”). Ms. Khachatourian has been representing the
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`3
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`IPR2019-01107
`Unopposed Motion for Pro Hac Vice Admission of Karineh Khachatourian
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`Petitioner as lead counsel in the co-pending litigation since its inception, and has
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`been actively involved in all aspects of the case. Ms. Khachatourian has also
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`represented Petitioner before the Federal Circuit involving Cellspin’s appeal of the
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`district court’s order invalidating the patent at issue based on 35 U.S.C. § 101
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`grounds.
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`5.
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`As part of her participation in the co-pending litigation involving the
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`subject patent, Ms. Khachatourian is familiar with the subject matter of the claimed
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`invention. Moreover, Petitioner has hired Ms. Khachatourian to represent it in this
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`Petition because of her litigation and PTAB experience. Ms. Khachatourian also
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`participated in the preparation of GoPro’s Petition, and is familiar with the prior art
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`references based on that preparation. Petitioner wishes to apply Ms.
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`Khachatourian’s knowledge concerning the patent and her experience generally in
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`patent law and working for GoPro by employing her as counsel in this proceeding.
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`Moreover, admission of Ms. Khachatourian pro hac vice will enable Petitioner to
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`avoid unnecessary expense and duplication of work between this proceeding and
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`the co-pending litigation.
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`6.
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`Petitioner’s lead counsel, David T. Xue, is a registered practitioner
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`and Ms. Khachatourian is an experienced patent litigation attorney having
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`established familiarity with the subject matter at issue in this proceeding.
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`4
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`IPR2019-01107
`Unopposed Motion for Pro Hac Vice Admission of Karineh Khachatourian
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`Therefore, Petitioner respectfully submits that there is good cause for the Board to
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`recognize Ms. Khachatourian as counsel pro hac vice during this proceeding.
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`7. While Patent Owner and Canon are represented by counsel who have
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`been involved in all aspects of the underlying litigation, including the appeal to the
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`Federal Circuit of the district court’s Section 101 ruling, Ms. Khachatourian is the
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`only member of the GoPro/Garmin team to have equal knowledge.
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`8.
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`This Motion for Pro Hac Vice Admission is supported by a
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`Declaration of Ms. Khachatourian (Exhibit 1035).
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`9.
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`Counsel for Patent Owner initially indicated that it opposed Ms.
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`Khachatourian appearing pro hac vice during this proceeding. Patent Owner has
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`advised that “GoPro’s stated desire to have its litigation counsel admitted pro hac
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`vice seems at odds with the limited role for which it states intention to occupy.”
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`Patent Owner further stated that “Including in view of what GoPro proposes as
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`such a limited role in the proceeding, in view of the fact that Canon’s litigation
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`counsel are already involved, and in view of the fact that Garmin’s litigation
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`counsel is proposing to be involved as well, Cellspin isn’t understanding why
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`GoPro’s litigation counsel needs to be admitted pro hac, especially at this stage but
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`later as well.” Counsel for Patent Owner then indicated thereafter that “After
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`further discussion and consideration, Cellspin is not opposing your upcoming pro
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`hac vice application. (Exhibit 1035, A).
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`5
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`IPR2019-01107
`Unopposed Motion for Pro Hac Vice Admission of Karineh Khachatourian
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`10. GoPro is entitled to its counsel of choice. Even if that were not the
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`case, the Board would benefit from Petitioner’s counsel having the same
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`experience with the underlying litigation as Patent Owner and Canon’s counsel.
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`The PTAB has previously recognized a need for Petitioners to have their counsel in
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`related district court litigation involved with PTAB proceedings. See Google Inc. v.
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`Jongerius Panoramic Technologies, LLC, IPR2013-00191, Paper 50 at *3
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`(P.T.A.B. Feb. 13, 2014). Moreover, Canon does not represent Petitioner.
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`Likewise, in light of the motion for joinder, and Patent Owner’s and Canon’s
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`opposition, there may be issues specific to GoPro where being represented by its
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`litigation counsel will be necessary to fully and adequately represent its interests
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`and provide a full record to the Board in its determination of the motion. Finally,
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`should Canon drop out of the IPR proceedings, or if there are issues specific to
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`Petitioner where it was permitted by the Board to act on its own behalf, GoPro
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`would no longer be in an understudy role. None of the above reasons undermine
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`GoPro’s representation that it will act in an understudy role should the motion for
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`joinder be granted. To the contrary, need for GoPro’s lead litigation counsel to be
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`admitted pro hac vice has only increased by Patent Owner’s and Canon’s position
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`to oppose the motion for joinder.
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`6
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`IPR2019-01107
`Unopposed Motion for Pro Hac Vice Admission of Karineh Khachatourian
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`III. CONCLUSION
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`For the foregoing reasons, Petitioner respectfully requests that the
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`Board admit Karineh Khachatourian pro hac vice in this proceeding.
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`Respectfully submitted,
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`GoPro Inc.,
`Petitioner
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`By: /David T. Xue/
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`David T. Xue
`Registration No. 54,554
`Rimon, P.C.
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`Dated: June 18, 2019
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`Tel: (650) 223-7724
`Fax: (650) 223-7724
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`7
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`IPR2019-01107
`Unopposed Motion for Pro Hac Vice Admission of Karineh Khachatourian
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`CERTIFICATE OF SERVICE
`I hereby certified that on June 18, 2019, a copy of PETITIONER’S
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`UNOPPOSED MOTION FOR PRO HAC VICE ADMISSION OF KARINEH
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`KHACHATOURIAN UNDER 37 C.F.R. § 42.10(c), DECLARATION OF
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`KARINEH KHACHATOURIAN, associated EXHIBIT 1035 and PETITIONER’S
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`UPDATED EXHIBIT LIST were served by filing these documents through the
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`PTAB E2E Filing System as well as delivering a copy via electronic mail upon the
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`following:
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`Counsel for Patent Owner, Cellspin Soft, Inc.
`John J. Edmonds, Reg. No. 56,184
`Edmonds & Schlather, PLLC
`355 South Grand Avenue, Suite 2450
`Los Angeles, CA 90071
`pto-edmonds@ip-lit.com
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`Stephen F. Schlather, Reg. No. 45,081
`Edmonds & Schlather, PLLC
`1616 South Voss Road, Suite 125
`Houston, Texas 77057
`sschlather@ip-lit.com
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`Dated: June 18, 2019
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`/David T. Xue/
`David T. Xue
`Reg. No. 54,554
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