`Tel: 571-272-7822
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`Paper 29
`Entered: February 14, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`CARDIOCOM, LLC
`Petitioner
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`v.
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`ROBERT BOSCH HEALTHCARE SYSTEMS, INC.
`Patent Owner
`____________
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`Case IPR2013-00431 (Patent 7,921,186 B2)
`Case IPR2013-00449 (Patent 7,840,420 B2)
`Case IPR2013-00451 (Patent 7,587,469 B2)
`Case IPR2013-00468 (Patent 7,516,192 B2)1
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`Before STEPHEN C. SIU, JUSTIN T. ARBES, and MIRIAM L. QUINN,
`Administrative Patent Judges.
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`ARBES, Administrative Patent Judge.
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`
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`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
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`1 Case IPR2013-00469 has been joined with Case IPR2013-00468. This
`Order addresses an issue pertaining to all four cases. Therefore, we exercise
`our discretion to issue one Order to be filed in each case. The parties are not
`authorized to use this style heading for any subsequent papers.
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`
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`Case IPR2013-00431, Case IPR2013-00449, Case IPR2013-00451,
`Case IPR2013-00468
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`An initial conference call in the above proceedings was held on
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`February 13, 2014, among respective counsel for Petitioner and Patent
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`Owner, and Judges Siu, Arbes, Moore, Ward, and Quinn. The purpose of
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`the call was to discuss any proposed changes to the Scheduling Order in
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`each proceeding and any motions the parties intend to file. Prior to the call,
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`both parties filed lists of proposed motions.2 The following issues were
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`discussed.
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`Schedule
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`The parties indicated that they do not have any issues with the
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`Scheduling Orders. See IPR2013-00431, Paper 23; IPR2013-00449, Paper
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`22; IPR2013-00451, Paper 24; IPR2013-00468, Paper 23. The parties are
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`reminded that, if necessary, they may stipulate to different dates for DUE
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`DATES 1 through 3 in the Scheduling Orders, provided the dates are no
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`later than DUE DATE 4.
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`
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`Joinder
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`Petitioner stated that it intends to file a second petition for inter partes
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`review of certain claims of Patent 7,587,469 B2, along with a motion for
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`joinder with Case IPR2013-00451. The Board explained that, should
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`Petitioner do so, the Board will set a briefing schedule for an opposition and
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`preliminary response from Patent Owner in the new proceeding. The parties
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`are directed to 37 C.F.R. § 42.122(b) and Frequently Asked Questions
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`H1-H6 on the Board’s website at
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`2 See IPR2013-00431, Papers 26, 27; IPR2013-00449, Papers 25, 26;
`IPR2013-00451, Papers 27, 28; IPR2013-00468, Papers 28, 29.
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`2
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`
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`Case IPR2013-00431, Case IPR2013-00449, Case IPR2013-00451,
`Case IPR2013-00468
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`http://www.uspto.gov/ip/boards/bpai/prps.jsp for guidance regarding joinder
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`issues. Specifically, a motion for joinder should (1) set forth the reasons
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`why joinder is appropriate; (2) identify any new grounds of unpatentability
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`asserted in the petition; (3) explain what impact (if any) joinder would have
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`on the trial schedule for the existing review; and (4) address specifically how
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`briefing and discovery may be simplified in a joined proceeding.
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`Page Limits in Case IPR2013-00468
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`Case IPR2013-00469 was joined with Case IPR2013-00468. See
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`IPR2013-00469, Paper 21 at 13-15. Patent Owner inquired as to the page
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`limits for papers filed in Case IPR2013-00468, given the joinder of the
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`second proceeding. The Board explained that Case IPR2013-00468 is a
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`single proceeding, and the page limits are those provided by rule (i.e., 60
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`pages for Patent Owner’s response and 15 pages for Petitioner’s reply).
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`See 37 C.F.R. §§ 42.24(b)(2), 42.24(c)(1). Patent Owner requested that the
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`page limit for its response be extended to 120 pages. Petitioner opposed
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`Patent Owner’s request, but was not opposed to a smaller page extension.
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`The Board took the matter under advisement.
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`Given the limited number of grounds on which a trial was instituted in
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`the two proceedings, and the similarities in prior art and arguments in the
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`two proceedings, we are persuaded that only a small extension of the page
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`limits for Case IPR2013-00468 is appropriate. Accordingly, the page limit
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`for Patent Owner’s response is extended to 70 pages, and the page limit for
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`Petitioner’s reply is increased by a proportional amount to 17 pages. All
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`other page limits in the four instant proceedings are unchanged.
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`3
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`Case IPR2013-00431, Case IPR2013-00449, Case IPR2013-00451,
`Case IPR2013-00468
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`Motion to Amend
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`Patent Owner stated that it has not yet determined whether it intends
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`to file a motion to amend in any of the four proceedings. Should Patent
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`Owner decide to file a motion to amend, Patent Owner must request a
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`conference call and confer with the Board before doing so. See 37 C.F.R.
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`§ 42.121(a).
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`In consideration of the foregoing, it is hereby:
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`ORDERED that the page limit for Patent Owner’s response in Case
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`IPR2013-00468 is extended to 70 pages, and the page limit for Petitioner’s
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`reply in Case IPR2013-00468 is extended to 17 pages.
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`4
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`Case IPR2013-00431, Case IPR2013-00449, Case IPR2013-00451,
`Case IPR2013-00468
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`PETITIONER:
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`Daniel W. McDonald
`Andrew J. Lagatta
`William D. Schultz
`Jeffrey D. Blake
`MERCHANT & GOULD, P.C.
`dmcdonald@merchantgould.com
`alagatta@merchantgould.com
`wschultz@merchantgould.com
`jblake@merchantgould.com
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`PATENT OWNER:
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`Don Daybell
`Davin M. Stockwell
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`ddaybell@orrick.com
`dstockwell@orrick.com
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`5
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