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Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`Paper 21
`Entered: December 23, 2013
`
`
`
`
`
`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 IPR2013-00439 (Patent 7,769,605 B2)
`Case IPR2013-00449 (Patent 7,840,420 B2)
`Case IPR2013-00451 (Patent 7,587,469 B2)
`Case IPR2013-00460 (Patent 7,870,249 B2)1
`
`
`
`Before STEPHEN C. SIU, JUSTIN T. ARBES, and MIRIAM L. QUINN,
`Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`
`DECISION
`Petitioner’s Motion for Pro Hac Vice Admission of William D. Schultz
`37 C.F.R. § 42.10
`
`
`1 This Order addresses an issue pertaining to all five 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.
`
`
`
`

`
`Cases IPR2013-00431, IPR2013-00439, IPR2013-000449, IPR2013-00451,
`and IPR2013-00460
`
`
`In each of the five instant proceedings, Petitioner Cardiocom, LLC
`
`(“Cardiocom”) filed a motion requesting pro hac vice admission of William
`
`D. Schultz and provided a declaration from Mr. Schultz in support of the
`
`request.2 Patent Owner Robert Bosch Healthcare Systems, Inc. did not file
`
`an opposition to any of the motions. For the reasons stated below,
`
`Cardiocom’s motions are granted. As the motions and declarations in the
`
`five proceedings are substantially similar, we will refer herein to the papers
`
`filed in Case IPR2013-00431 for convenience.
`
`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 C.F.R. § 42.10(c). For example, where the lead counsel is a
`
`registered practitioner, a non-registered practitioner may be permitted to
`
`appear pro hac vice “upon showing that counsel is an experienced litigating
`
`attorney and has an established familiarity with the subject matter at issue in
`
`the proceeding.” Id. In authorizing motions for pro hac vice admission, the
`
`Board requires the moving party to provide a statement of facts showing
`
`there is good cause for the Board to recognize counsel pro hac vice and an
`
`affidavit or declaration of the individual seeking to appear. Paper 4
`
`(referencing the “Order – Authorizing Motion for Pro Hac Vice Admission,”
`
`Paper 6 in IPR2013-00010, at 3-4).
`
`In its motions, Cardiocom argues that there is good cause for Mr.
`
`Schultz’s pro hac vice admission because he is an experienced litigation
`
`
`2 See IPR2013-00431, Paper 17, Ex. 1019; IPR2013-00439, Paper 21,
`Ex. 1017; IPR2013-00449, Paper 16, Ex. 1011; IPR2013-00451, Paper 18,
`Ex. 1011; IPR2013-00460, Paper 18, Ex. 1013.
`
`
`
`2
`
`

`
`Cases IPR2013-00431, IPR2013-00439, IPR2013-000449, IPR2013-00451,
`and IPR2013-00460
`
`attorney and has an established familiarity with the subject matter at issue in
`
`these proceedings. Paper 17 at 7-9. Specifically, Mr. Schultz is counsel for
`
`Cardiocom in Robert Bosch Healthcare Systems, Inc. v. Cardiocom, LLC,
`
`E.D. Tex. Case No. 2:13-cv-00349, where the patents being challenged in
`
`the instant proceedings are being asserted. Paper 17 at 4-5. Cardiocom
`
`contends that Mr. Schultz’s participation in these proceedings will enable
`
`Cardiocom to “avoid unnecessary expense and duplication of work between
`
`[these proceedings] and its district court litigation.” Id. at 8-9. In his
`
`declaration, Mr. Schultz attests that:
`
`(1)
`
`(2)
`
`he is “a member in good standing of the Bar[] of: Minnesota”;
`
`he has had “no suspensions or disbarments from practice before
`any court or administrative body,” “never had any court or
`administrative body deny [his] application to practice before
`said court or administrative body,” and “never been sanctioned
`or cited for contempt by any court or administrative body”;
`
`(3) he 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 37 C.F.R.,” and understands that he “will be
`subject to the USPTO Rules of Professional Conduct set forth
`in 37 C.F.R. §§ 11.101 et seq. and disciplinary jurisdiction
`under 37 C.F.R. § 11.19(a)”;
`
`(4)
`
`he has only applied to appear pro hac vice in the instant
`proceedings and related Cases IPR2013-00468 and
`IPR2013-00469;
`
`(5)
`
`he has been “litigating patent cases for at least eleven years”;
`and
`
`(6) he is “second counsel in the case Robert Bosch Healthcare
`Systems, Inc. v. Cardiocom, LLC, and Abbott Diabetes Care,
`Inc., No. 2:13-CV-349 (E.D. Tex., filed Apr. 26, 2013),” which
`involves the patents being challenged in the instant
`proceedings, and has developed “a thorough understanding of
`the prior art, including the prior art cited in [the instant
`
`
`
`3
`
`

`
`Cases IPR2013-00431, IPR2013-00439, IPR2013-000449, IPR2013-00451,
`and IPR2013-00460
`
`
`proceedings], as well as a thorough understanding of the
`patent[s] at issue.”
`
`Ex. 1019 ¶¶ 1-12. Also, Cardiocom’s lead counsel in these proceedings,
`
`Daniel W. McDonald, is a registered practitioner. Paper 17 at 3.
`
`Based on the facts set forth above, we conclude that Mr. Schultz has
`
`sufficient legal and technical qualifications to represent Cardiocom in these
`
`proceedings and that there is a need for Cardiocom to have its counsel in the
`
`related litigation involved in these proceedings. See IPR2013-00639, Paper
`
`7, dated October 15, 2013 (superseding IPR2013-00010, Paper 6, dated
`
`October 15, 2012, and setting forth the requirements for pro hac vice
`
`admission) (copy available on the Board Web site under “Representative
`
`Orders, Decisions, and Notices”). Accordingly, Cardiocom has established
`
`good cause for Mr. Schultz’s pro hac vice admission. Mr. Schultz will be
`
`permitted to appear pro hac vice in the instant proceedings as back-up
`
`counsel only. See 37 C.F.R. § 42.10(c).
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that Cardiocom’s motions for pro hac vice admission of
`
`William D. Schultz in the instant proceedings are granted and Mr. Schultz is
`
`authorized to represent Cardiocom as back-up counsel in the instant
`
`proceedings;
`
`FURTHER ORDERED that Cardiocom is to continue to have a
`
`registered practitioner as lead counsel in the instant proceedings;
`
`FURTHER ORDERED that Mr. Schultz is to comply with the Office
`
`Patent Trial Practice Guide and the Board’s Rules of Practice for Trials, as
`
`set forth in Title 37, Part 42 of the Code of Federal Regulations; and
`
`
`
`4
`
`

`
`Cases IPR2013-00431, IPR2013-00439, IPR2013-000449, IPR2013-00451,
`and IPR2013-00460
`
`
`FURTHER ORDERED that Mr. Schultz is subject to the USPTO
`
`Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq. and
`
`the Office’s disciplinary jurisdiction under 37 C.F.R. § 11.19(a).
`
`
`
`5
`
`

`
`Cases IPR2013-00431, IPR2013-00439, IPR2013-000449, IPR2013-00451,
`and IPR2013-00460
`
`PETITIONER:
`
`Daniel W. McDonald
`Andrew J. Lagatta
`MERCHANT & GOULD, P.C.
`dmcdonald@merchantgould.com
`alagatta@merchantgould.com
`
`
`
`PATENT OWNER:
`
`Don Daybell
`Davin M. Stockwell
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`ddaybell@orrick.com
`dstockwell@orrick.com
`
`
`
`
`6

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