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