Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`Paper 49
`Entered: July 3, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CARDIOCOM, LLC and MEDTRONIC, INC.,1
`Petitioners,
`
`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)
`Case IPR2014-00488 (Patent 7,769,605 B2)
`Cases IPR2014-00607 and IPR2014-00691 (Patent 7,870,249 B2)2
`
`
`Before STEPHEN C. SIU, JUSTIN T. ARBES, BRYAN F. MOORE,
`TRENTON A. WARD, and MIRIAM L. QUINN, Administrative Patent
`Judges.
`
`ARBES, Administrative Patent Judge.
`
`1 Cardiocom, LLC (“Cardiocom”) is the petitioner in Cases IPR2013-00431,
`IPR2013-00449, IPR2013-00451, and IPR2013-00468. Medtronic, Inc.
`(“Medtronic”) is the petitioner in Cases IPR2014-00488, IPR2014-00607,
`and IPR2014-00691. Cardiocom is a wholly-owned subsidiary of
`Medtronic.
`
` 2
`
` Case IPR2013-00469 has been joined with Case IPR2013-00468. This
`Order addresses issues pertaining to all seven 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.
`
`
`Tel: 571-272-7822
`
`
`
`Paper 49
`Entered: July 3, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CARDIOCOM, LLC and MEDTRONIC, INC.,1
`Petitioners,
`
`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)
`Case IPR2014-00488 (Patent 7,769,605 B2)
`Cases IPR2014-00607 and IPR2014-00691 (Patent 7,870,249 B2)2
`
`
`Before STEPHEN C. SIU, JUSTIN T. ARBES, BRYAN F. MOORE,
`TRENTON A. WARD, and MIRIAM L. QUINN, Administrative Patent
`Judges.
`
`ARBES, Administrative Patent Judge.
`
`1 Cardiocom, LLC (“Cardiocom”) is the petitioner in Cases IPR2013-00431,
`IPR2013-00449, IPR2013-00451, and IPR2013-00468. Medtronic, Inc.
`(“Medtronic”) is the petitioner in Cases IPR2014-00488, IPR2014-00607,
`and IPR2014-00691. Cardiocom is a wholly-owned subsidiary of
`Medtronic.
`
` 2
`
` Case IPR2013-00469 has been joined with Case IPR2013-00468. This
`Order addresses issues pertaining to all seven 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.
`
`
`
`IPR2013-00431, IPR2013-00449, IPR2013-00451, IPR2013-00468,
`IPR2014-00488, IPR2014-00607, and IPR2014-00691
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`This Order resolves various pending motions in the instant
`
`proceedings and addresses an issue regarding related matters.
`
`
`
`Motions for Pro Hac Vice Admission
`
`Petitioner filed a motion requesting pro hac vice admission of William
`
`D. Schultz in Cases IPR2014-00488 (Paper 12) and IPR2014-00607 (Paper
`
`11). Patent Owner filed motions requesting pro hac vice admission of
`
`Bas de Blank, Siddhartha Venkatesan, and Lillian Mao in Cases
`
`IPR2014-00488 (Papers 9, 10, and 11), IPR2014-00607 (Papers 8, 9, and
`
`10), and IPR2014-00691 (Papers 7, 8, and 9). The parties filed affidavits
`
`from the attorneys in support of their motions.3 The parties’ motions are
`
`similar to the motions filed previously in the other proceedings, which were
`
`granted. See, e.g., IPR2013-00431, Papers 15, 16, 20, 32. The pending
`
`motions are granted for the same reasons.
`
`We note that Petitioner did not file a motion in Case IPR2014-00691.
`
`Should Petitioner desire for Mr. Schultz to be admitted pro hac vice in that
`
`proceeding as well, Petitioner shall file a notice and affidavit similar to those
`
`it filed in the other proceedings.
`
`
`3 Patent Owner filed its affidavits in Case IPR2014-00488 as Exhibits 2001,
`2002, and 2003. Because other exhibits already were filed using those
`numbers, the affidavits will be renumbered as Exhibits 2061, 2062, and
`2063.
`
`
`
`
`2
`
`
`
`IPR2013-00431, IPR2013-00449, IPR2013-00451, IPR2013-00468,
`IPR2014-00488, IPR2014-00607, and IPR2014-00691
`
`
`Motion to Correct
`
`In Case IPR2014-00488, Patent Owner filed an unopposed motion
`
`(Paper 8) to submit a corrected version of Exhibit 2058 and expunge the
`
`original version filed on June 13, 2014. Patent Owner states that the original
`
`version, titled “House Report 112-98 – AMERICA INVENTS ACT,” is
`
`incorrect due to a clerical error, and the replacement version, titled “House
`
`Report 112-98,” is correct. The motion is granted.
`
`
`
`Related Matters
`
`Parties to an inter partes review are required to file mandatory notice
`
`information, including “[i]dentify[ing] any other judicial or administrative
`
`matter that would affect, or be affected by, a decision in the proceeding.”
`
`37 C.F.R. § 42.8(b)(2). Mandatory notice information must be updated
`
`within 21 days of any change. 37 C.F.R. § 42.8(a)(3).
`
`We note that the instant proceedings have a substantial number of
`
`related matters and that at least some such matters have not been cited in the
`
`parties’ mandatory notice information. See, e.g., IPR2014-00436, Paper 17
`
`at 3 (noting an ex parte reexamination that was not identified). To ensure a
`
`clear understanding of all related matters, the parties shall file a joint notice
`
`listing, collectively, all related matters for the instant proceedings, including
`
`district court infringement cases, ex parte reexaminations, inter partes
`
`reexaminations, and inter partes reviews. The joint notice shall be in chart
`
`form and shall list, for each matter, the matter name and number, patent(s)
`
`involved, claim(s) involved, filing date, and status. The joint notice shall be
`
`filed in each of the seven instant proceedings.
`
`
`
`3
`
`
`
`IPR2013-00431, IPR2013-00449, IPR2013-00451, IPR2013-00468,
`IPR2014-00488, IPR2014-00607, and IPR2014-00691
`
`
`For the parties’ convenience, should the related matters for any of the
`
`instant proceedings change during the pendency of the proceeding, the
`
`parties are authorized to file an updated joint notice, rather than each filing
`
`updated mandatory notice information. Doing so does not relieve the parties
`
`of their obligation to update other aspects of their mandatory notice
`
`information (e.g., real party-in-interest, lead and backup counsel) within
`
`21 days of any change.
`
`
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that Patent Owner’s motions for pro hac vice admission
`
`of Bas de Blank, Siddhartha Venkatesan, and Lillian Mao are granted, and
`
`Mr. de Blank, Mr. Venkatesan, and Ms. Mao are authorized to represent
`
`Patent Owner as back-up counsel in Cases IPR2014-00488, IPR2014-00607,
`
`and IPR2014-00691;
`
`FURTHER ORDERED that Petitioner’s motions for pro hac vice
`
`admission of William D. Schultz are granted, and Mr. Schultz is authorized
`
`to represent Petitioner as back-up counsel in Cases IPR2014-00488 and
`
`IPR2014-00607;
`
`FURTHER ORDERED that Petitioner is authorized to file a notice
`
`and affidavit from Mr. Schultz in Case IPR2014-00691 by July 9, 2014, and
`
`if Petitioner does so, Mr. Schultz shall be authorized to represent Petitioner
`
`as back-up counsel in that proceeding as well under the terms of this Order;
`
`FURTHER ORDERED that Petitioner and Patent Owner each are to
`
`continue to have a registered practitioner as lead counsel in the instant
`
`proceedings;
`
`
`
`4
`
`
`
`IPR2013-00431, IPR2013-00449, IPR2013-00451, IPR2013-00468,
`IPR2014-00488, IPR2014-00607, and IPR2014-00691
`
`
`FURTHER ORDERED that Mr. de Blank, Mr. Venkatesan, Ms. Mao,
`
`and Mr. Schultz are 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;
`
`FURTHER ORDERED that Mr. de Blank, Mr. Venkatesan, Ms. Mao,
`
`and Mr. Schultz are 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);
`
`FURTHER ORDERED that the copies of Exhibits 2001, 2002, and
`
`2003 filed on June 18, 2014 in Case IPR2014-00488 are renumbered as
`
`Exhibits 2061, 2062, and 2063, respectively;
`
`FURTHER ORDERED that the copy of Exhibit 2058 in Case
`
`IPR2014-00488 filed on June 13, 2014 and titled “House Report 112-98” is
`
`entered, and the version also filed on June 13, 2014 and titled “House Report
`
`112-98 – AMERICA INVENTS ACT” is expunged from the record of the
`
`proceeding; and
`
`FURTHER ORDERED that the parties shall file, in each of the instant
`
`proceedings, a joint notice listing all related matters for the proceedings, as
`
`explained herein, by July 9, 2014.
`
`
`
`
`
`5
`
`
`
`IPR2013-00431, IPR2013-00449, IPR2013-00451, IPR2013-00468,
`IPR2014-00488, IPR2014-00607, and IPR2014-00691
`
`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
`D2DPTABDocket@orrick.com
`D2SPTABDocket@orrick.com
`
`6
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
