Onick Docket No.2 ”83320013
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`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 IPR: IPR2013-00451
`
`Patent No. 7,587,469
`
`ROBERT BOSCH HEALTHCARE SYSTEMS, INC.’S
`
`MOTION FOR PRO HAC VICE
`
`ADMISSION OF LILLIAN MAO
`
`
`
`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 IPR: IPR2013-00451
`
`Patent No. 7,587,469
`
`ROBERT BOSCH HEALTHCARE SYSTEMS, INC.’S
`
`MOTION FOR PRO HAC VICE
`
`ADMISSION OF LILLIAN MAO
`
`
`
`Orrick Docket No.:
`
`l2833.2002:3
`
`ROBERT BOSCH HEALTHCARE SYSTEMS, INC.’S MOTION FOR
`PRO HAC VICE ADMISSION OF LILLIAN MAO
`
`I. RELIEF REQUESTED
`
`Pursuant to 37 C.F.R. § 42.10 (c), Patent Owner, Robert Bosch Healthcare
`
`Systems, Inc., (“Bosch”) respectfiilly requests the pro hac vice admission of
`
`Lillian Mao in this proceeding.
`
`[1. GOVERNING LAWS, RULES AND PRECEDENT
`
`Section 42.10(c) states as follows:
`
`The Board may recognize counsel pro hac vice during a
`
`proceeding upon a showing of good cause, subject to the
`
`condition that lead counsel be a registered practitioner
`
`and to any other conditions as the Board may impose.
`
`For example, where the lead counsel is a registered
`
`practitioner, a motion to appear pro hac vice by counsel
`
`who is not a registered practitioner may be granted upon
`
`showing that counsel is an experienced litigating attorney
`
`and has an established familiarity with the subject matter
`
`at issue in the proceeding.
`
`The Board’s Notice of Filing Date Accorded to Petition, Paper No. 4
`
`in this proceeding (“Filing Date Notice”), states that motions for pro hac vice
`
`admission under 37 CPR. § 42.10(c) must be filed in accordance with the “Order
`
`— Authorizing Motion for Pro Hac Vice Admission” entered in Case [PR2013-
`
`00010 (MPT) (“Pro Hac Vice Order”). Filing Date Notice, Paper No. 4, at 2. In
`
`
`
`Orrick Docket No.:
`
`l2833.2002.-'3
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`accordance with the Pro Hac Vice Order, this motion is being filed no sooner than
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`twenty-one (21) days after service of the petition. Pro Hac Vice Order, at 2. The
`
`Filing Date Notice authorizes the parties to file motions for pro hac vice admission
`
`in this proceeding. Filing Date Notice, Paper No. 4, at 2.
`
`The Pro Hac Vice Order requires that such motions (1) “[e]ontain a
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`statement of facts showing there is good cause for the Board to recognize counsel
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`pro hac vice during the proceeding,” and (2) “[b]e accompanied by an affidavit or
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`deciaration of the individual seeking to appear attesting to the following:
`
`i.
`
`Membership in good standing of the Bar of at least one State or
`
`District of Columbia;
`
`ii.
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`No suspensions or disbarments from practice before any court
`
`or administrative body;
`
`iii.
`
`No application for admission to practice before any court or
`
`administrative body ever denied;
`
`iv.
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`No sanctions or contempt citations imposed by any court or
`
`administrative body;
`
`The individual seeking to appear has read and will comply with
`
`the Office Patent Trial Practice Guide and the Board’s Rules of
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`Practice for Trials set forth in part 42 of the C.F.R.;
`
`
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`On‘ick Docket No.: 1283320013
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`Vi.
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`The individual will be subject to the USPTO Code of
`
`Professional Responsibility set forth in 37 CPR. §§ 10.20 et
`
`seq. and disciplinary jurisdiction under 37 CPR. §§ 11.19(a);
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`vii.
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`All other proceedings before the Office for which the individual
`
`has applied to appear pro hac vice in the last three (3) years;
`
`and
`
`viii.
`
`Familiarity with the subject matter at issue in the proceeding.”
`
`Pro Hac Vice Order, at 3-4.
`
`III.
`
`STATEMENT OF FACTS
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`Based on the following facts, and supported by the Affidavit of Lillian
`
`Mao (BOSCH 2002) submitted herewith, Patent Owner Bosch
`
`requests the pro hac vice admission of Lillian Mao in this proceeding.
`
`1.
`
`Robert Bosch Healthcare Systems, Inc.’s lead counsel, Don
`
`Daybell, is a registered practitioner (Reg. No. 50,877).
`
`Ms. Mao is an associate at the law firm of Orrick Herrington &
`
`Sutcliffe LLP. (BOSCH 2002 1] 3)
`
`Ms. Mao is an experienced litigating attorney and has been a
`
`litigating attorney for more than 3 (three) years.
`
`(Id.,1] 3). Ms.
`
`Mao has been litigating patent cases for over 3 (three) years.
`
`(Id., 1] 4).
`
`
`
`Orrick Docket No.: 12833200213
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`Ms. Mao has established familiarity with the subject matter at
`
`issue in this proceeding. (Id.,11 6). Ms. Mao has litigated
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`patent cases in the area of computerized information systems
`
`since 2010 (161., $1 5). She has become familiar with US. Patent
`
`No. 7,587,469 (the “‘469 Patent”) and with its prosecution file
`
`history.
`
`(1d,, 1] 6). She also has an in-depth familiarity with
`
`Bosch’s related US. Patent Nos. 7,516,192, 7,921,186,
`
`7,870,249, and their file histories. (Id.).
`
`Ms. Mao is counsel for Bosch in a co-pending district court
`
`litigation against Petitioner Cardiocom LLC (“Cardiocom”).
`
`That litigation is captioned Robert Bosch Healthcare Systems,
`
`Inc. v. Cardiocom, LLC, Civil Action No. 2:13-cv-349 (ED.
`
`Tex.), and involves the same patent at issue in this proceeding.
`
`(Id.). As counsel for Bosch, Ms. Mao has been actively
`
`involved in all aspects of its district court litigation. (Id.).
`
`In addition, Ms. Mao is counsel for Bosch in another district
`
`court iitigation against Cardiocom, captioned Robert Bosch
`
`Healthcare Systems, Inc. v. Cardiocom, LLC, Case No. 5:12-
`
`CV-3864-EJD (N.D. Cal). That litigation involves US. Patent
`
`Nos. 6,368,273; 6,968,375; 7,252,636; and 8,140,663 which are
`
`
`
`On'ick Docket No.:
`
`|2833.2002.-"3
`
`related to the patent at issue, and US. Patent Nos. 7,941,327
`
`and 8,015,025, which involve similar computerized information
`
`systems technology as the ‘469 Patent. (Id, 1] 7).
`
`Ms. Mac is a member in good standing of the State Bar of
`
`California. (Id., 1] 8).
`
`Ms. Mao has never been suSpended or disbarred from practice
`
`before any court or administrative body. (Id., 1] 9).
`
`No application of Ms. Mao for admission to practice before any
`
`court or administrative body has ever been denied. (Id., 1] 10).
`
`10.
`
`No sanctions or contempt citations have ever been imposed
`
`against Ms. Mao by any court or administrative body. (1d,, 1]
`
`l 1).
`
`ll.
`
`Ms. Mao has read and will comply with the Office Patent Trial
`
`Practice Guide and the Board’s Rules of Practice for Trials set
`
`forth in part 42 of the Code of Federal Regulators. (Id., 1] 12).
`
`12.
`
`Ms. Mao understands that she will be subject to the USPTO
`
`Code of Professional Responsibility set forth in 37 CPR.
`
`§§ 10.20 et seq. and disciplinary jurisdiction under 37 CPR.
`
`§§ ll.l9(a). (Id.,1] 13).
`
`
`
`Orrick Docket No.:
`
`I2833.2002/3
`
`13. Ms. Mao has not applied to appear pro hac vice in any other
`
`proceedings before the Office in the last three (3) years. (Id.,
`
`1] 14).
`
`IV. GOOD CAUSE EXISTS FOR THE EXPEDITED PRO HAC
`
`VICE ADMISSION OF MS. LILLIAN MAO IN THIS
`
`PROCEEDING
`
`The Board may recognize counsel pro hac vice during a proceeding upon a
`
`showing of good cause, subject to the condition that lead counsel be a registered
`
`practitioner and to any other conditions as the Board may impose. 37 CPR.
`
`§ 42.10(c). Robert Bosch Healthcare Systems, lnc.’s lead counsel, Don Daybell, is
`
`a registered practitioner. Based on the facts contained herein, as supported by Ms.
`
`Mao’s Affidavit, good cause exists to admit Ms. Mao pro hac vice in this
`
`proceeding.
`
`As supported by her Affidavit, Ms. Mao is an experienced litigating attorney
`
`with over 3 (three) years of patent litigation experience. Ms. Mao also has an
`
`established familiarity with the subject matter at issue in this proceeding, as she is
`
`Bosch’s counsel in co-pending district court litigation involving the same patent at
`
`issue in this proceeding, and several related patents.
`
`As counsel for Bosch, Ms. Mao has been actively involved in all aspects of
`
`its district court litigation involving the patent at issue here and the related patents.
`
`In view of Ms. Mao’s knowledge of the subject matter at issue in this proceeding,
`
`
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`Orrick Docket No.: 1283320023
`
`and in view of the interrelatedness of this proceeding and the co-pending district
`
`court litigation, Patent Owner Bosch has a substantial need for Ms. Mao’s pro hac
`
`vice admission and involvement in this proceeding. In addition, admission of Ms.
`
`Mao pro hac vice will enable Bosch to avoid unnecessary expense and duplication
`
`of work between this proceeding and its district court litigation. See 77 Fed. Reg.
`
`157 (Aug. 14, 2012), at 48661 (Office’s comment on final rule discussing concerns
`
`about efficiency and costs where an entity has already engaged counsel for parallel
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`district court litigation). Given Ms. Mao’s experience with the involved patent and
`
`parties, and Patent Owner Bosch’s desire to be represented by the counsel of its
`
`choice, the need for admission of Ms. Mao substantially outweighs any potential
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`prejudice to Petitioner Cardiocom.
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`Undersigned counsel met and conferred with counsel for Petitioner, who
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`indicated that Petitioner does not oppose this motion.
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`V. CONCLUSION
`
`For the foregoing reasons, Bosch respectfully requests that Ms. Mao
`
`be admitted pro hac vice in this proceeding.
`
`
`
`On-ick Docket No.:
`
`I2833.2002."3
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`The Patent Trial and Appeal Board is hereby authorized to charge any
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`fees associated with this filing to Deposit Account 15-0665 (Customer ID
`
`No. 34313).
`
`Dated: October 16, 2013
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`Respectfully submitted,
`
`ORRJCK, HERRINGTON & SUTCLIFFE LLP
`
`By: fDon Daybell/
`Don Daybell, Lead Counsel for Patent
`Owner
`
`Robert Bosch Healthcare Systems, Inc.
`Reg. No. 50,877
`
`Orrick, Hen-ington & Sutcliffe LLP
`2050 Main Street, Suite 1100
`Irvine, CA 92614-8255
`Tel: 949-567-6700
`
`Fax: 949-567-6710
`
`
`
`Orrick Docket No.:
`
`|2833.2002/3
`
`ROBERT BOSCH HEALTHCARE SYSTEMS, INC.’S MOTION FOR
`PRO HAC VICE ADMISSION OF LILLIAN MAO
`
`CERTIFICATION OF SERVICE (37 C.F.R. §§ 41619.1, 42.1051an
`
`The undersigned hereby certifies that
`
`the above-captioned “ROBERT
`
`BOSCH HEALTHCARE SYSTEMS, INC.’s MOTION FOR PRO HAC VICE”
`
`ADMISSION OF LILLIAN MAO”, “AFFIDAVIT OF LILLIAN MAO” and”
`
`PATENT OWNERS EXHIBIT LIST” were served in its entirety on October 16,
`
`2013, upon the following parties via electronic service:
`
`Counsel for Petitioner
`
`Daniel W. McDonald
`
`Andrew J. Lagatta
`Merchant & Gould
`80 South 8"“ St., Suite 3200
`Minneapolis, MN 55402
`CardiocomlPR@merchantgould.com
`
`Respectfully submitted,
`
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`
`Dated: October 16, 2013
`
`By:
`
`fDon Daybell/
`Don Daybell
`Reg. No. 50,877
`Orrick, Herrington & Sutcliffe LLP
`2050 Main Street, Suite 1100
`Irvine, CA 92614-8255
`Tel: 949-567-6700
`
`Fax: 949-567-6710
`
`Customer Number: 34313
`
`
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