Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 34
`Entered: March 20, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CARDIOCOM, LLC
`Petitioner
`
`v.
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`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.
`
`
`DECISION
`Patent Owner’s Motion for Pro Hac Vice Admission of
`Siddhartha Venkatesan
`37 C.F.R. § 42.10
`
`
`1 Case IPR2013-00469 has been joined with Case IPR2013-00468. This
`Decision addresses an issue pertaining to all four cases. Therefore, we
`exercise our discretion to issue one Decision 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
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`In each of the four instant proceedings, Patent Owner Robert Bosch
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`Healthcare Systems, Inc. (“Bosch”) filed a motion requesting pro hac vice
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`admission of Siddhartha Venkatesan and provided a declaration from
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`Mr. Venkatesan in support of the request.2 Petitioner Cardiocom, LLC did
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`not file an opposition to any of the motions. For the reasons stated below,
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`Bosch’s motions are granted. As the motions and declarations in the four
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`proceedings are substantially similar, we will refer herein to the papers filed
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`in Case IPR2013-00431 for convenience.
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`The Board may recognize counsel pro hac vice during a proceeding
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`“upon a showing of good cause, subject to the condition that lead counsel be
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`a registered practitioner and to any other conditions as the Board may
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`impose.” 37 C.F.R. § 42.10(c). For example, where the lead counsel is a
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`registered practitioner, a non-registered practitioner may be permitted to
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`appear pro hac vice “upon showing that counsel is an experienced litigating
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`attorney and has an established familiarity with the subject matter at issue in
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`the proceeding.” Id. In authorizing motions for pro hac vice admission, the
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`Board requires the moving party to provide a statement of facts showing
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`there is good cause for the Board to recognize counsel pro hac vice and an
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`affidavit or declaration of the individual seeking to appear. Paper 4
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`(referencing the “Order – Authorizing Motion for Pro Hac Vice Admission,”
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`Paper 6 in IPR2013-00010, at 3-4).
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`In its motions, Bosch argues that there is good cause for Mr.
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`Venkatesan’s pro hac vice admission because he is an experienced litigation
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`attorney and has an established familiarity with the subject matter at issue in
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`2 See IPR2013-00431, Paper 30, Ex. 2005; IPR2013-00449, Paper 29,
`Ex. 2009; IPR2013-00451, Paper 33, Ex. 2008; IPR2013-00468, Paper 32,
`Ex. 2006.
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`
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`2
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`

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`Case IPR2013-00431, Case IPR2013-00449, Case IPR2013-00451,
`Case IPR2013-00468
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`these proceedings. Paper 30 at 7-8. Specifically, Mr. Venkatesan is counsel
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`for Bosch in Robert Bosch Healthcare Systems, Inc. v. Cardiocom, LLC,
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`E.D. Tex. Case No. 2:13-cv-00349, where the patents being challenged in
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`the instant proceedings are being asserted. Paper 30 at 5. Bosch contends
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`that Mr. Venkatesan’s participation in these proceedings will enable Bosch
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`to “avoid unnecessary expense and duplication of work between [these
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`proceedings] and its district court litigation.” Id. at 8. In his declaration,
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`Mr. Venkatesan attests that:
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`(1)
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`(2)
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`he is “a member in good standing of the State Bar[s] of
`California and New York”;
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`he has “never been suspended or disbarred from practice before
`any court or administrative body,” “[n]o court or administrative
`body has ever denied [his] application for admission to practice
`before it,” and “[n]o court or administrative body has ever
`imposed sanctions or contempt citations on [him]”;
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`(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 Section 37 of the Code of Federal
`Regulations,” and “understand[s] 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)”;
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`(4)
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`he 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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`(5)
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`he has been “litigating patent cases for over nine years”; and
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`(6) he is “counsel for Bosch in . . . Robert Bosch Healthcare
`Systems, Inc. v. Cardiocom, LLC, Civil Action No. 2:13-cv-349
`(E.D. Tex.),” which “involves U.S. Patent No. 7,921,186 also at
`issue in this inter partes review proceeding,” and has been
`“actively involved in preparing the technical aspects of the case
`relating to infringement and validity of the ‘186 Patent,
`including detailed analysis of the ‘186 Patent and its file
`history.”
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`
`3
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`

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`Case IPR2013-00431, Case IPR2013-00449, Case IPR2013-00451,
`Case IPR2013-00468
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`Ex. 2005 ¶¶ 1-13. Also, Bosch’s lead counsel in the instant proceedings,
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`Don Daybell, is a registered practitioner. Paper 30 at 4.
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`Based on the facts set forth above, we conclude that Mr. Venkatesan
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`has sufficient legal and technical qualifications to represent Bosch in these
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`proceedings and that there is a need for Bosch to have its counsel in the
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`related litigation involved in these proceedings. See Unified Patents, Inc. v.
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`Parallel Iron, LLC, IPR2013-00639, Paper 7 (Oct. 15, 2013) (superseding
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`IPR2013-00010, Paper 6, dated October 15, 2012, and setting forth the
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`requirements for pro hac vice admission) (copy available on the Board Web
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`site under “Representative Orders, Decisions, and Notices”). Accordingly,
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`Bosch has established good cause for Mr. Venkatesan’s pro hac vice
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`admission. Mr. Venkatesan will be permitted to appear pro hac vice in the
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`instant proceedings as back-up counsel only. See 37 C.F.R. § 42.10(c).
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`In consideration of the foregoing, it is hereby:
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`ORDERED that Bosch’s motions for pro hac vice admission of
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`Siddhartha Venkatesan in the instant proceedings are granted and
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`Mr. Venkatesan is authorized to represent Bosch as back-up counsel in the
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`instant proceedings;
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`FURTHER ORDERED that Bosch is to continue to have a registered
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`practitioner as lead counsel in the instant proceedings;
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`FURTHER ORDERED that Mr. Venkatesan is to comply with the
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`Office Patent Trial Practice Guide and the Board’s Rules of Practice for
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`Trials, as set forth in Title 37, Part 42 of the Code of Federal Regulations;
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`and
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`
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`4
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`

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`Case IPR2013-00431, Case IPR2013-00449, Case IPR2013-00451,
`Case IPR2013-00468
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`FURTHER ORDERED that Mr. Venkatesan is subject to the USPTO
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`Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq. and
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`the Office’s disciplinary jurisdiction under 37 C.F.R. § 11.19(a).
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`
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`5
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`

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`Case IPR2013-00431, Case IPR2013-00449, Case IPR2013-00451,
`Case IPR2013-00468
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`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
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`PATENT OWNER:
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`Don Daybell
`Davin M. Stockwell
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`ddaybell@orrick.com
`dstockwell@orrick.com
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`6
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