Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`Paper 38
`Entered: April 24, 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. Other than the
`motion papers expressly authorized herein, the parties are not authorized to
`use this style heading for any subsequent papers.
`
`
`Tel: 571-272-7822
`
`
`
`Paper 38
`Entered: April 24, 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. Other than the
`motion papers expressly authorized herein, 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
`
`
`A conference call in the above proceedings was held on April 22,
`2014, among respective counsel for Petitioner and Patent Owner, and Judges
`Siu, Arbes, Moore, Ward, and Quinn. The call was requested by Petitioner
`to seek authorization to file a motion for additional discovery.
`Petitioner argued that Patent Owner filed, with each of its responses in
`Cases IPR2013-00431, IPR2013-00449, and IPR2013-00468, a declaration
`from Yadin David, Ed.D. According to Petitioner, Dr. David testifies
`regarding certain secondary considerations of nonobviousness, such as
`commercial success, long-felt need, and copying, and in doing so, relies on
`discussions he had with Patent Owner “personnel” and Stephen J. Brown,
`the named inventor of the challenged patents. For example, Dr. David states
`that “the [Patent Owner] personnel [he] interviewed recalled that the Health
`Buddy was adopted by a number of other hospitals and pharmacies,” and
`“[t]his commercial success is further evidenced” by news articles from the
`time. E.g., IPR2013-00431, Ex. 2006 ¶ 66; see also id. ¶¶ 64, 65, 67, 69, 92,
`93, 95. Petitioner argued that discovery regarding Dr. David’s discussions is
`warranted because he relied on them in forming his opinions and, according
`to Petitioner, Dr. David has insufficient expertise to give the opinions
`expressed in his declarations absent the information he was provided.
`Petitioner requested that Patent Owner be required to identify the specific
`“personnel” with whom Dr. David spoke, and that Patent Owner make the
`individuals available for deposition.
`Patent Owner argued that additional discovery is not necessary
`because the substance of Dr. David’s discussions is recounted in the
`declarations, Dr. David’s opinions are supported by exhibits already in the
`record, and Petitioner will have an opportunity to ask Dr. David about the
`
`
`
`2
`
`
`
`Case IPR2013-00431, Case IPR2013-00449, Case IPR2013-00451,
`Case IPR2013-00468
`
`discussions when it deposes him. Patent Owner further argued that the
`requested depositions would impose an undue burden and costs on Patent
`Owner, and are unlikely to lead to anything useful in these proceedings.
`Patent Owner stated that Dr. David spoke with two “personnel” of Patent
`Owner. Thus, Petitioner’s request is for depositions of three individuals
`(two employees of Patent Owner and Mr. Brown).
`As explained during the call, given the statements in Dr. David’s
`declarations, we determine that a motion for additional discovery under
`37 C.F.R. § 42.51(b)(2) is warranted under the circumstances. Petitioner in
`its motion should explain why it believes depositions of the three individuals
`are “necessary in the interest of justice.” See 35 U.S.C. § 316(a)(5);
`37 C.F.R. § 42.51(b)(2). The parties are directed to Garmin Int’l, Inc. v.
`Cuozzo Speed Techs. LLC, IPR2012-00001, Paper 26 (Mar. 5, 2013), for
`guidance regarding motions for additional discovery. In particular, the mere
`possibility of finding something useful and a mere allegation that something
`useful will be found are insufficient. Further, requests for discovery will not
`be granted if they are unduly broad and burdensome. Petitioner in its motion
`should state how much time it requests for each deposition and identify what
`specific issues would be addressed, should the depositions be permitted.
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner is authorized to file a motion for additional
`discovery by April 29, 2014, limited to five pages; Patent Owner is
`authorized to file an opposition by May 6, 2014, also limited to five pages;
`and no reply is authorized; and
`
`
`
`3
`
`
`
`Case IPR2013-00431, Case IPR2013-00449, Case IPR2013-00451,
`Case IPR2013-00468
`
`
`FURTHER ORDERED that the motion and opposition shall be filed
`in Cases IPR2013-00431, IPR2013-00449, and IPR2013-00468 using a
`heading for all three proceedings.
`
`
`
`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
`
`
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