`Tel: 571-272-7822
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`
`
`Paper 30
`Entered: February 14, 2014
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`
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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 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. 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
`
`
`An initial conference call in the above proceedings was held on
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`February 13, 2014, among respective counsel for Petitioner and Patent
`
`Owner, and Judges Siu, Arbes, Moore, Ward, and Quinn. The purpose of
`
`the call was to discuss any proposed changes to the Scheduling Order in
`
`each proceeding and any motions the parties intend to file. Prior to the call,
`
`both parties filed lists of proposed motions.2 The following issues were
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`discussed.
`
`
`
`Schedule
`
`The parties indicated that they do not have any issues with the
`
`Scheduling Orders. See IPR2013-00431, Paper 23; IPR2013-00449, Paper
`
`22; IPR2013-00451, Paper 24; IPR2013-00468, Paper 23. The parties are
`
`reminded that, if necessary, they may stipulate to different dates for DUE
`
`DATES 1 through 3 in the Scheduling Orders, provided the dates are no
`
`later than DUE DATE 4.
`
`
`
`Joinder
`
`Petitioner stated that it intends to file a second petition for inter partes
`
`review of certain claims of Patent 7,587,469 B2, along with a motion for
`
`joinder with Case IPR2013-00451. The Board explained that, should
`
`Petitioner do so, the Board will set a briefing schedule for an opposition and
`
`preliminary response from Patent Owner in the new proceeding. The parties
`
`are directed to 37 C.F.R. § 42.122(b) and Frequently Asked Questions
`
`H1-H6 on the Board’s website at
`
`
`2 See IPR2013-00431, Papers 26, 27; IPR2013-00449, Papers 25, 26;
`IPR2013-00451, Papers 27, 28; IPR2013-00468, Papers 28, 29.
`
`
`
`2
`
`
`
`Case IPR2013-00431, Case IPR2013-00449, Case IPR2013-00451,
`Case IPR2013-00468
`
`http://www.uspto.gov/ip/boards/bpai/prps.jsp for guidance regarding joinder
`
`issues. Specifically, a motion for joinder should (1) set forth the reasons
`
`why joinder is appropriate; (2) identify any new grounds of unpatentability
`
`asserted in the petition; (3) explain what impact (if any) joinder would have
`
`on the trial schedule for the existing review; and (4) address specifically how
`
`briefing and discovery may be simplified in a joined proceeding.
`
`
`
`Page Limits in Case IPR2013-00468
`
`Case IPR2013-00469 was joined with Case IPR2013-00468. See
`
`IPR2013-00469, Paper 21 at 13-15. Patent Owner inquired as to the page
`
`limits for papers filed in Case IPR2013-00468, given the joinder of the
`
`second proceeding. The Board explained that Case IPR2013-00468 is a
`
`single proceeding, and the page limits are those provided by rule (i.e., 60
`
`pages for Patent Owner’s response and 15 pages for Petitioner’s reply).
`
`See 37 C.F.R. §§ 42.24(b)(2), 42.24(c)(1). Patent Owner requested that the
`
`page limit for its response be extended to 120 pages. Petitioner opposed
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`Patent Owner’s request, but was not opposed to a smaller page extension.
`
`The Board took the matter under advisement.
`
`Given the limited number of grounds on which a trial was instituted in
`
`the two proceedings, and the similarities in prior art and arguments in the
`
`two proceedings, we are persuaded that only a small extension of the page
`
`limits for Case IPR2013-00468 is appropriate. Accordingly, the page limit
`
`for Patent Owner’s response is extended to 70 pages, and the page limit for
`
`Petitioner’s reply is increased by a proportional amount to 17 pages. All
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`other page limits in the four instant proceedings are unchanged.
`
`
`
`
`
`3
`
`
`
`Case IPR2013-00431, Case IPR2013-00449, Case IPR2013-00451,
`Case IPR2013-00468
`
`
`Motion to Amend
`
`Patent Owner stated that it has not yet determined whether it intends
`
`to file a motion to amend in any of the four proceedings. Should Patent
`
`Owner decide to file a motion to amend, Patent Owner must request a
`
`conference call and confer with the Board before doing so. See 37 C.F.R.
`
`§ 42.121(a).
`
`
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that the page limit for Patent Owner’s response in Case
`
`IPR2013-00468 is extended to 70 pages, and the page limit for Petitioner’s
`
`reply in Case IPR2013-00468 is extended to 17 pages.
`
`
`
`
`
`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