Orrick Docket No.: 12833.2003
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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: IPR2013-00468
`Patent No. 7,516,192
`_____________________
`
`ROBERT BOSCH HEALTHCARE SYSTEMS, INC.’S
`MOTION FOR PRO HAC VICE
`ADMISSION OF SIDDHARTHA VENKATESAN
`
`OHSUSA:756345913.1
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`Page 1 of 10
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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 IPR: IPR2013-00468
`Patent No. 7,516,192
`_____________________
`
`ROBERT BOSCH HEALTHCARE SYSTEMS, INC.’S
`MOTION FOR PRO HAC VICE
`ADMISSION OF SIDDHARTHA VENKATESAN
`
`OHSUSA:756345913.1
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`Page 1 of 10
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`
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`Orrick Docket No.: 12833.2003
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`I. RELIEF REQUESTED
`
`Pursuant to 37 C.F.R. § 42.10 (c), Patent Owner, Robert Bosch Healthcare
`
`Systems, Inc., (“Bosch”) respectfully requests the pro hac vice admission of
`
`Siddhartha Venkatesan in this proceeding.
`
`II. 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 C.F.R. § 42.10(c) must be filed in accordance with the “Order
`
`– Authorizing Motion for Pro Hac Vice Admission” entered in Case IPR2013-
`
`00010 (MPT)” (“Prior Order”) Filing Date Notice, Paper No. 4, at 2. Subsequent
`
`to the issuance of the Filing Date Notice, in IPR2013-000639 the PTAB issued
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`OHSUSA:756345913.1
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`Page 2 of 10
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`Orrick Docket No.: 12833.2003
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`revised requirements for motions for pro hac vice, which supersede the Prior
`
`Order. Order - Authorizing Motion for Pro Hac Vice Admission, IPR2013-
`
`000369, Paper No. 7, at 2 (PTAB, October 15, 2013) (“Pro Hac Vice Order”). In
`
`accordance with the Pro Hac Vice Order, this motion is being filed no sooner than
`
`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) “[c]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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`declaration of the individual seeking to appear attesting to the following:
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`i. Membership in good standing of the Bar of at least one State or
`
`District of Columbia;
`
`ii. 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. No sanctions or contempt citations imposed by any court or
`
`administrative body;
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`OHSUSA:756345913.1
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`Page 3 of 10
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`Orrick Docket No.: 12833.2003
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`v.
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`The individual seeking to appear 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.;
`
`vi.
`
`The individual 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);
`
`vii. 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.
`
`III.
`
`STATEMENT OF FACTS
`
`Based on the following facts, and supported by the Affidavit of
`
`Siddhartha Venkatesan (BOSCH 2006) submitted herewith, Patent
`
`Owner Bosch requests the pro hac vice admission of Siddhartha
`
`Venkatesan in this proceeding.
`
`1.
`
`Robert Bosch Healthcare Systems, Inc.’s lead counsel, Don
`
`Daybell, is a registered practitioner (Reg. No. 50,877).
`
`2.
`
`Mr. Venkatesan is a partner at the law firm of Orrick
`
`Herrington & Sutcliffe LLP. (BOSCH 2006¶ 3)
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`OHSUSA:756345913.1
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`Orrick Docket No.: 12833.2003
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`3.
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`Mr. Venkatesan is an experienced litigating attorney and has
`
`been a litigating attorney for more than nine years. (Id.,¶ 3).
`
`Mr. Venkatesan has been litigating patent cases for over nine
`
`years. (Id., ¶ 4).
`
`4.
`
`Mr. Venkatesan has established familiarity with the subject
`
`matter at issue in this proceeding. (Id., ¶ 6). Mr. Venkatesan
`
`has litigated patent cases in the area of computerized
`
`information systems since 2000 (Id., ¶ 5). He has become
`
`familiar with U.S. Patent No. 7,516,192 (the “‘192 Patent”) and
`
`with its prosecution file history. (Id., ¶ 6). He also has an in-
`
`depth familiarity with Bosch’s related U.S. Patent Nos.
`
`7,840,420, 7,921,186, 7,870,249, and their file histories. (Id.).
`
`5.
`
`Mr. Venkatesan 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 (E.D. Tex.), and involves the same patent at issue
`
`in this proceeding. (Id.). As counsel for Bosch, Mr. Venkatesan
`
`has been actively involved in all aspects of its district court
`
`litigation. (Id.).
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`OHSUSA:756345913.1
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`Page 5 of 10
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`Orrick Docket No.: 12833.2003
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`6.
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`Mr. Venkatesan is a member in good standing of the State Bar
`
`of California and New York. (Id., ¶ 7).
`
`7.
`
`Mr. Venkatesan has never been suspended or disbarred from
`
`practice before any court or administrative body. (Id., ¶ 8).
`
`8.
`
`No application of Mr. Venkatesan for admission to practice
`
`before any court or administrative body has ever been denied.
`
`(Id., ¶ 9).
`
`9.
`
`No sanctions or contempt citations have ever been imposed
`
`against Mr. Venkatesan by any court or administrative body.
`
`(Id., ¶ 10).
`
`10. Mr. Venkatesan 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 Section 37 of the Code of
`
`Federal Regulations. (Id., ¶ 11).
`
`11. Mr. Venkatesan 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). (Id., ¶ 12).
`
`12. Mr. Venkatesan has not applied to appear pro hac vice in any
`
`other proceedings before the Office in the last three (3) years.
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`OHSUSA:756345913.1
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`Page 6 of 10
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`Orrick Docket No.: 12833.2003
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`(Id., ¶ 13). Mr. Venkatesan is concurrently applying to appear
`
`pro hac vice before the Office in the following inter partes
`
`review proceedings:
`
`Proceeding
`
`IPR2013-00431
`
`IPR2013-00449
`
`IPR2013-00451
`
`IPR2013-00468
`
`(Id.)
`
`U.S. Patent No.
`
`7,921,186
`
`7,840,420
`
`7,587,469
`
`7,516,192
`
`IV. GOOD CAUSE EXISTS FOR THE EXPEDITED PRO HAC
`VICE ADMISSION OF MR. SIDDHARTHA VENKATESAN 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 C.F.R. §
`
`42.10(c). Robert Bosch Healthcare Systems, Inc.’s lead counsel, Don Daybell, is a
`
`registered practitioner. Based on the facts contained herein, as supported by Mr.
`
`Venkatesan’s Affidavit, good cause exists to admit Mr. Venkatesan pro hac vice in
`
`this proceeding.
`
`As supported by his Affidavit, Mr. Venkatesan is an experienced litigating
`
`attorney with over nine years of patent litigation experience. Mr. Venkatesan also
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`OHSUSA:756345913.1
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`Page 7 of 10
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`Orrick Docket No.: 12833.2003
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`has an established familiarity with the subject matter at issue in this proceeding, as
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`he 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, Mr. Venkatesan 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 Mr. Venkatesan’s knowledge of the subject matter at
`
`issue in this proceeding, and in view of the interrelatedness of this proceeding and
`
`the co-pending district court litigation, Patent Owner Bosch has a substantial need
`
`for Mr. Venkatesan’s pro hac vice admission and involvement in this proceeding.
`
`In addition, admission of Mr. Venkatesan pro hac vice will enable Bosch to avoid
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`unnecessary expense and duplication of work between this proceeding and its
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`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 district court litigation). Given Mr.
`
`Venkatesan’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
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`admission of Mr. Venkatesan substantially outweighs any potential prejudice to
`
`Petitioner Cardiocom.
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`OHSUSA:756345913.1
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`Page 8 of 10
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`Orrick Docket No.: 12833.2003
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`Undersigned counsel met and conferred with counsel for Petitioner, who
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`indicated that Petitioner does not oppose Bosch’s motions for pro hac vice in this
`
`case.
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`V. CONCLUSION
`
`For the foregoing reasons, Bosch respectfully requests that Mr.
`
`Venkatesan be admitted pro hac vice in this proceeding.
`
`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).
`
`Respectfully submitted,
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`
`Dated: February 28, 2014
`
`By:
`
`/s/ Don Daybell
`Don Daybell, Lead Counsel for Patent
`Owner
`Robert Bosch Healthcare Systems, Inc.
`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
`
`OHSUSA:756345913.1
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`Page 9 of 10
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`Orrick Docket No.: 12833.2003
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`CERTIFICATION OF SERVICE (37 C.F.R. §§ 42.6(e))
`
`The undersigned hereby certifies that
`
`the above-captioned “ROBERT
`
`BOSCH HEALTHCARE SYSTEMS, INC.’S MOTION FOR PRO HAC VICE
`
`ADMISSION OF SIDDHARTHA VENKATESAN” with exhibits and updated
`
`Exhibit List was served in its entirety on February 28, 2014, upon the following
`
`parties via electronic mail:
`
`Counsel for Petitioner
`
`Daniel W. McDonald
`Andrew J. Lagatta
`Merchant & Gould
`80 South 8th St., Suite 3200
`Minneapolis, MN 55402
`CardiocomIPR@merchantgould.com
`
`/s/ Sally Hartwell
`Sally Hartwell
`
`OHSUSA:756345913.1
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`Page 10 of 10
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