throbber
Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`Paper 29
`Entered: February 14, 2014
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CARDIOCOM, LLC
`Petitioner
`
`v.
`
`ROBERT BOSCH HEALTHCARE SYSTEMS, INC.
`Patent Owner
`____________
`
`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
`
`
`Before STEPHEN C. SIU, JUSTIN T. ARBES, and MIRIAM L. QUINN,
`Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`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.
`
`

`

`Case IPR2013-00431, Case IPR2013-00449, Case IPR2013-00451,
`Case IPR2013-00468
`
`
`An initial conference call in the above proceedings was held on
`
`February 13, 2014, among respective counsel for Petitioner and Patent
`
`Owner, and Judges Siu, Arbes, Moore, Ward, and Quinn. The purpose of
`
`the call was to discuss any proposed changes to the Scheduling Order in
`
`each proceeding and any motions the parties intend to file. Prior to the call,
`
`both parties filed lists of proposed motions.2 The following issues were
`
`discussed.
`
`
`
`Schedule
`
`The parties indicated that they do not have any issues with the
`
`Scheduling Orders. See IPR2013-00431, Paper 23; IPR2013-00449, Paper
`
`22; IPR2013-00451, Paper 24; IPR2013-00468, Paper 23. The parties are
`
`reminded that, if necessary, they may stipulate to different dates for DUE
`
`DATES 1 through 3 in the Scheduling Orders, provided the dates are no
`
`later than DUE DATE 4.
`
`
`
`Joinder
`
`Petitioner stated that it intends to file a second petition for inter partes
`
`review of certain claims of Patent 7,587,469 B2, along with a motion for
`
`joinder with Case IPR2013-00451. The Board explained that, should
`
`Petitioner do so, the Board will set a briefing schedule for an opposition and
`
`preliminary response from Patent Owner in the new proceeding. The parties
`
`are directed to 37 C.F.R. § 42.122(b) and Frequently Asked Questions
`
`H1-H6 on the Board’s website at
`
`
`2 See IPR2013-00431, Papers 26, 27; IPR2013-00449, Papers 25, 26;
`IPR2013-00451, Papers 27, 28; IPR2013-00468, Papers 28, 29.
`
`
`
`2
`
`

`

`Case IPR2013-00431, Case IPR2013-00449, Case IPR2013-00451,
`Case IPR2013-00468
`
`http://www.uspto.gov/ip/boards/bpai/prps.jsp for guidance regarding joinder
`
`issues. Specifically, a motion for joinder should (1) set forth the reasons
`
`why joinder is appropriate; (2) identify any new grounds of unpatentability
`
`asserted in the petition; (3) explain what impact (if any) joinder would have
`
`on the trial schedule for the existing review; and (4) address specifically how
`
`briefing and discovery may be simplified in a joined proceeding.
`
`
`
`Page Limits in Case IPR2013-00468
`
`Case IPR2013-00469 was joined with Case IPR2013-00468. See
`
`IPR2013-00469, Paper 21 at 13-15. Patent Owner inquired as to the page
`
`limits for papers filed in Case IPR2013-00468, given the joinder of the
`
`second proceeding. The Board explained that Case IPR2013-00468 is a
`
`single proceeding, and the page limits are those provided by rule (i.e., 60
`
`pages for Patent Owner’s response and 15 pages for Petitioner’s reply).
`
`See 37 C.F.R. §§ 42.24(b)(2), 42.24(c)(1). Patent Owner requested that the
`
`page limit for its response be extended to 120 pages. Petitioner opposed
`
`Patent Owner’s request, but was not opposed to a smaller page extension.
`
`The Board took the matter under advisement.
`
`Given the limited number of grounds on which a trial was instituted in
`
`the two proceedings, and the similarities in prior art and arguments in the
`
`two proceedings, we are persuaded that only a small extension of the page
`
`limits for Case IPR2013-00468 is appropriate. Accordingly, the page limit
`
`for Patent Owner’s response is extended to 70 pages, and the page limit for
`
`Petitioner’s reply is increased by a proportional amount to 17 pages. All
`
`other page limits in the four instant proceedings are unchanged.
`
`
`
`
`
`3
`
`

`

`Case IPR2013-00431, Case IPR2013-00449, Case IPR2013-00451,
`Case IPR2013-00468
`
`
`Motion to Amend
`
`Patent Owner stated that it has not yet determined whether it intends
`
`to file a motion to amend in any of the four proceedings. Should Patent
`
`Owner decide to file a motion to amend, Patent Owner must request a
`
`conference call and confer with the Board before doing so. See 37 C.F.R.
`
`§ 42.121(a).
`
`
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that the page limit for Patent Owner’s response in Case
`
`IPR2013-00468 is extended to 70 pages, and the page limit for Petitioner’s
`
`reply in Case IPR2013-00468 is extended to 17 pages.
`
`
`
`
`
`4
`
`

`

`Case IPR2013-00431, Case IPR2013-00449, Case IPR2013-00451,
`Case IPR2013-00468
`
`PETITIONER:
`
`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
`
`
`PATENT OWNER:
`
`Don Daybell
`Davin M. Stockwell
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`ddaybell@orrick.com
`dstockwell@orrick.com
`
`
`
`
`
`5
`
`

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket