`Tel: 571-272-7822
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`
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`Paper 49
`Entered: July 3, 2014
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`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
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`Bas de Blank, Siddhartha Venkatesan, and Lillian Mao in Cases
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`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
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`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
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`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
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`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
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`admission of William D. Schultz are granted, and Mr. Schultz is authorized
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`to represent Petitioner as back-up counsel in Cases IPR2014-00488 and
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`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
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`if Petitioner does so, Mr. Schultz shall be authorized to represent Petitioner
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`as back-up counsel in that proceeding as well under the terms of this Order;
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`FURTHER ORDERED that Petitioner and Patent Owner each are to
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`continue to have a registered practitioner as lead counsel in the instant
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`proceedings;
`
`
`
`4
`
`
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`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
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`forth in 37 C.F.R. §§ 11.101 et seq. and the Office’s disciplinary jurisdiction
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`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
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`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
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`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