Filed on behalf of Cardiocom, LLC
`
`By: Daniel W. McDonald (dmcdonald@merchantgould.com)
`
`Merchant & Gould P.C.
`
`3200 IDS Center
`80 South 8th Street
`
`
`Minneapolis, MN 55402
`
`Tel: (612) 332-5300
`
`Fax: (612) 332-9081
`
`
`
`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 IPR2013-00451
`Patent 7,587,469
`____________
`
`
`
`
`
`MOTION FOR JOINDER OF PETITION FOR INTER PARTES
`REVIEW OF U.S. PATENT NO. 7,587,469
`FILED ON FEBRUARY 14, 2014 WITH
` IPR2013-00451 INSTITUTED ON JANUARY 16, 2014
`
`
`
`
`1
`
`
`
`By: Daniel W. McDonald (dmcdonald@merchantgould.com)
`
`Merchant & Gould P.C.
`
`3200 IDS Center
`80 South 8th Street
`
`
`Minneapolis, MN 55402
`
`Tel: (612) 332-5300
`
`Fax: (612) 332-9081
`
`
`
`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 IPR2013-00451
`Patent 7,587,469
`____________
`
`
`
`
`
`MOTION FOR JOINDER OF PETITION FOR INTER PARTES
`REVIEW OF U.S. PATENT NO. 7,587,469
`FILED ON FEBRUARY 14, 2014 WITH
` IPR2013-00451 INSTITUTED ON JANUARY 16, 2014
`
`
`
`
`1
`
`
`
`I.
`
`Relief Requested
`
`Pursuant to 35 U.S.C. §315(c) and 37 C.F.R. §42.122(b), Petitioner
`
`Cardiocom, LLC (“Cardiocom” or “Petitioner”), hereby moves for joinder of the
`
`petition for inter partes review IPR2014-00436 of claim 1-22 of U.S. Patent No.
`
`7,587,469 (“the ‘469 Patent”) filed by Medtronic, Inc. on February 14, 2014 with
`
`the inter partes review IPR2013-00451 filed by Cardiocom, LLC (“Cardiocom”)
`
`as to the same ‘469 Patent and instituted on January 16, 2014.
`
`II.
`
`Statement of Materials Facts
`
`1. On April 26, 2013, Robert Bosch Healthcare Systems filed a patent
`
`infringement lawsuit against Cardiocom, LLC and Abbott Diabetes Care in
`
`the United States District Court for the Eastern District of Texas, Case No.:
`
`2:13-cv-349 alleging, among other patents, infringement of the ‘469 patent.
`
`2. On July 17, 2013, Cardiocom filed a petition for inter partes review
`
`requesting cancellation of claims 1-22 of the ‘469 patent. Cardiocom, LLC
`
`v. Robert Bosch Healthcare Systems, Inc., IPR2013-00451 (P.T.A.B.) (“First
`
`Petition”). The details of related proceedings and related patents can be
`
`found in the Petition for Inter Partes Review, filed on July 17, 2013, in
`
`IPR2013-00451.
`
`3. Subsequently, Medtronic acquired Cardiocom.
`
`
`
`2
`
`
`
`4. On January 16, 2014, the Board instituted trial as to claims 1, 2, and 5-10 in
`
`IPR2013-451. The Board, however, did not institute trial as to claims 3-4
`
`and 11-22. See IPR2013-00451, Paper 23 at 13, 29.
`
`5. On February 13, 2014, the Board held its initial conference call in IPR2013-
`
`00451 with the parties. In Petitioner’s list of proposed motions, Cardiocom
`
`identified that it would file a motion to join IPR2013-00451 with a Petition
`
`for inter partes review being filed by Medtronic, Inc. February 14, 2014.
`
`6. On February 14, 2014, Medtronic filed a petition for inter partes review
`
`(IPR2014-00436) of the ‘469 patent (“Second Petition”) seeking the
`
`cancellation of claims 1-22.
`
`7. Along with Medtronic’s petition for inter partes review of the ‘469 patent
`
`(Second Petition), Medtronic also filed a motion to join that petition with the
`
`present inter partes review, IPR2013-00451.
`
`8. Medtronic’s grounds for challenging the patentability of claims 1-22 in the
`
`Second Petition are based on prior art references (Cohen and Wahlquist)
`
`included in the First Petition, and on a new prior art reference, European
`
`Publication No. 0342 859 to Kaufman, et al. (“Kaufman”) (IPR2014-00436
`
`at Ex. 1003), not part of IPR2013-00451. Kaufman in combination with the
`
`previously-cited art addresses the reasons inter partes review was denied as
`
`to claims 3-4 and 11-22 and further demonstrates claims 1-22 are invalid.
`
`
`
`3
`
`
`
`III. Governing Rule(s)
`
`§42.122 Multiple Proceedings and Joinder.
`
`(b) Request for Joinder. Joinder may be requested by a patent owner or
`
`petitioner. Any request for joinder must be filed, as a motion under §42.22, no
`
`later than one month after the institution date of any inter partes review for which
`
`joinder is requested. The time period set forth in §42.101(b) shall not apply when
`
`the petition is accompanied by a request for joinder.
`
`IV. Discussion
`
`The Leahy-Smith America Invents Act (AIA) permits the Patent Trial and
`
`Appeal Board (“the Board”) to join inter partes review proceedings in its
`
`discretion. See 35 U.S.C. §315(c). A motion for joinder must be filed no later than
`
`one month after the institution date of any inter partes review for which joinder is
`
`requested. See 37 C.F.R. §42.122(b). This joinder motion is timely as IPR2013-
`
`00451 was instituted on January 16, 2014.
`
`Joinder is appropriate because it will be more efficient for both the Board
`
`and the parties to address the issues in both proceedings, which are related, in one
`
`IPR rather than separately. The Second Petition seeks cancellation of claims 1-22
`
`of the ‘469 Patent based on new prior art in combination with prior art which
`
`supported the grant in part of the First Petition. Moreover, Medtronic acquired
`
`Cardiocom, the Petitioner in IPR2013-00451, and thus combining the two inter
`
`
`
`4
`
`
`
`partes reviews will be more efficient as the two Petitioners are related and have the
`
`same counsel representing them in both proceedings. Both Medtronic and
`
`Cardiocom support joinder and have each filed a motion for joinder. Joinder is
`
`also appropriate as there will be no discernable prejudice to the Patent Owner from
`
`joining the two proceedings. Pursuant to 37 C.F.R. §42.122 (b), the instant motion
`
`was timely filed within one month of the Board instituting IPR2013-00451.
`
`In IPR2013-451, the Board instituted trial on claims 1, 2 and 5-10 as being
`
`obvious over Cohen and Wahlquist and alternatively as being obvious over Cohen,
`
`Wahlquist, Neumann and Jacobs. However, the Board did not institute trial as to
`
`claims 3, 4, and 11-22, finding that Cohen does not teach a “single housing unit”
`
`recited in claim 3 and the “household appliance” recited in claims 4 and 11-22.
`
`IPR2013-00451, Paper 23 at 13. After and based on the Board’s findings and its
`
`claim construction in IPR2013-00451, Medtronic identified a prior art reference,
`
`Kaufman, that in combination with the previously-cited art cures the deficiencies
`
`that led the Board to deny trial on claims 3, 4 and 11-22, and prepared the Petition
`
`filed on February 14, 2014.
`
`Medtronic’s Petition includes two grounds of unpatentability: (1) Claims 1-
`
`6, 11-12 and 17-18 are obvious over Cohen in view of Kaufman, and (2) all claims
`
`are unpatentable as obvious over Cohen in view of Kaufman and further in view of
`
`
`
`5
`
`
`
`Wahlquist. Kaufman provides both the “single housing unit” and “household
`
`appliance” elements found missing in Cohen.
`
`For example, Kaufman discloses the primary and secondary devices being
`
`housed within a “single housing unit” 12 or 102 of the patient assistance system
`
`10. “The system can provide a variety of functions useful to an individual 45 who
`
`may be debilitated or convalescing from an injury or an illness.” IPR2014-00436
`
`at Ex. 1003 (Kaufman), p. 2:44-45; see also p. 6: 9-15. Kaufman also teaches the
`
`housing may include a video display unit 14, display 16b, monitors such as blood
`
`pressure/pulse monitoring cuff stored in region 24, voice synthesizer and
`
`recognition unit 36, modem 40, telephone handset 44, for voice communication
`
`with the patient, microphone for collecting audible responses, a telephone handset,
`
`and a keyboard or a touchscreen along with medical testing devices, such as cuffs,
`
`thermometers, and other analyzers. Id. at p. 8:25-38; p. 6:20-21; p. 5:11-14, 57-58;
`
`p. 4:31-44, 53-58. Kaufman also discloses a “household appliance.” It discloses
`
`that “the invention pertains to a computer based system for providing at home or
`
`institutional assistance to a convalescing or injured patient.” Id. at p. 2:10-12.
`
`Joinder will promote efficiency in view of the close relationship between the
`
`issues in the two matters. The additional issues raised in the new petition are
`
`relatively simple issues, directed to housing the claimed elements in a single
`
`housing unit or household appliance. Inconsistent rulings and results will be
`
`
`
`6
`
`
`
`avoided if the matters are joined. The efficiencies gained will benefit both parties.
`
`For example, briefing can be streamlined into single documents for the issues
`
`going forward. Discovery will be very limited in both proceedings, and to the
`
`extent it is needed it will largely overlap due to the similarity of the issue in both
`
`proceedings and thus can more efficiently be done in one proceeding. Finally, no
`
`depositions have occurred to date in IPR2013-00451. Cardiocom and Medtronic
`
`use the same expert in both IPRs, so a single deposition should suffice. Patent
`
`Owner should be able to use a single expert as well.
`
`While the schedule in this Trial may have to be adjusted to coincide with the
`
`timing for a second trial, such delay is reasonable and can be minimized by
`
`expediting Patent Owner’s preliminary response and Opposition to Medtronic’s
`
`Petition. See SAP America, Inc. v. PI-NET Int’l, Inc., CBM2014-00018, Paper 7 at
`
`3-4 (expediting Patent Owner’s briefing to minimize delay in view of potential
`
`joinder). Moreover, Medtronic was able to search and locate the Kaufman
`
`reference and prepare a complete Petition for inter partes review within one month
`
`of the decision in IPR2013-00451. Patent Owner similarly can review that one
`
`new piece of prior art, which addresses the two specific elements found missing in
`
`Cohen, and respond to two related invalidity grounds on an expedited basis.
`
`Joining the two proceedings and expediting Patent Owner’s response will ensure
`
`that Patent Owner timely receives a final written decision on the patentability of
`
`
`
`7
`
`
`
`the challenged claims of the ‘469 patent. It will also ensure that the issues are
`
`addressed efficiently for both the Board and the parties. A proposed schedule
`
`showing the current dates in IPR2013-00451 and a proposed schedule should the
`
`two IPRs be joined is shown below. Thus, the two IPRs can be joined, and with
`
`expedited briefing in IPR2014-00436, the schedule will only be pushed back by
`
`about one month.
`
`Document
`
`Patent owner’s response to
`the petition
`Patent owner’s motion to
`amend the patent
`Petitioner’s reply to patent
`owner response to petition
`Petitioner’s opposition to
`motion to amend
`Patent owner’s reply to
`petitioner opposition to
`motion to amend
`Motion for observation
`regarding cross-
`examination of reply
`witness
`Motion to exclude
`evidence
`Request for oral argument
`Response to observation
`Opposition to Motion to
`exclude
`Reply to opposition to
`motion to exclude
`Oral argument (if
`requested)
`
`Due
`Date No.
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`
`
`Current Schedule
`(IPR2013-00451)
`April 1, 2014
`
`Proposed Joint
`Schedule
`May 31, 2014
`
`June 10, 2014
`
`July 15, 2014
`
`July 10, 2014
`
`August 15, 2014
`
`July 31, 2014
`
`September 5, 2014
`
`August 14, 2014
`
`September 19, 2014
`
`August 21, 2014
`
`September 26, 2014
`
`September 9, 2014 October 15, 2014
`
`8
`
`
`
`
`In view of the narrow and relatively simple additional issues addressed by
`
`the Medtronic’s Petition, primarily related to newly-cited art that addresses the
`
`“single housing unit” and “household appliance” limitations found lacking in the
`
`previously-cited art, Petitioner respectfully submits that the initial steps involved
`
`with the new Petition may be capable of being addressed within a shorter time
`
`period than the maximum times allowed, which may ultimately minimize the delay
`
`in any decision in the first trial. Further, Petitioner will be receptive to logistical or
`
`scheduling requests of the Patent Owner or the Board which may facilitate joinder
`
`of the proceedings in a manner which maximizes efficiency and minimizes burdens
`
`or potential prejudice.
`
`V. Conclusion
`
`For the foregoing reasons, Petitioner, Cardiocom LLC, respectfully requests
`
`that IPR2013-00451 be joined with the petition for inter partes review, IPR2014-
`
`00436, of claims 1-22 of U.S. Patent No. 7,587,469, filed by Medtronic, Inc. on
`
`February 14, 2014.
`
`
`
`
`
`
`Date: February 14, 2014
`
`Attorneys for Petitioner,
`Cardiocom, LLC
`
`
`
`
`
`
`
`
`Respectfully submitted,
`MERCHANT & GOULD P.C.
`
`
`
`
`/Daniel W. McDonald/
`Daniel W. McDonald, Reg. No. 32,044
`Andrew J. Lagatta, Reg. No. 62,529
`William D. Schultz, pro hac vice
`Jeffrey D. Blake, Reg. No. 58,884
`
`
`
`9
`
`
`
`Certification of Service
`
`Pursuant to 37 C.F.R § 42.6, the undersigned hereby certifies that a copy of
`this MOTION FOR JOINDER OF PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 7,587,469 FILED ON FEBRUARY 14, 2014 WITH IPR2013-
`00451 INSTITUTED ON JANUARY 16, 2014 has been served on February 14,
`2014, by email on counsel of record for the Patent Owner at the following name
`and address:
`
`
`Don Daybell (ddaybell@orrick.com)
`Davin M. Stockwell (dstockwell@orrick.com)
`Bas de Blank (basdeblank@orrick.com)
`Lillian Mao (lmao@orrick.com)
`ORRICK, HERRINGTON, &
`SUTCLIFFE LLP
`2050 Main St., Suite 1100
`Irvine, CA 92614
`Tel: 949-567-6700
`Fax: 949-567-6710
`
`
`
`Date: February 14, 2014
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/Daniel W. McDonald/
`Daniel W. McDonald (Lead Counsel)
`USPTO Registration No. 32,044
`
`
`
`10
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
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.
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.
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
