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`I2833.2002I5B
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`CARDIOCOM, LLC.
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`Petitioner
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`V.
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`ROBERT BOSCH HEALTHCARE SYSTEMS, INC.
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`Patent Owner
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`CASE IPR: IPR2013-00468
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`Patent No. 7,516,192
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`ROBERT BOSCH HEALTHCARE SYSTEMS, [NC.’S
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`MOTION FOR PRO HAC VICE
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`ADMISSION OF LILLIAN MAO
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`ROBERT BOSCH HEALTHCARE SYSTEMS, INC.’S MOTION FOR
`PRO HAC VICE ADMISSION OF LILLIAN MAO
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`I. RELIEF REQUESTED
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`Pursuant to 37 C.F.R. § 42.10 (c), Patent Owner, Robert Bosch Healthcare
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`Systems, Inc., (“Bosch”) respectfully requests the pro hac vice admission of
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`Lillian Mao in this proceeding.
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`II. GOVERNING LAWS, RULES AND PRECEDENT
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`Section 42.l0(c) states as follows:
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`The Board may recognize counsel pro hac vice during a
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`proceeding upon a showing of good cause, subject to the
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`condition that lead counsel be a registered practitioner
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`and to any other conditions as the Board may impose.
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`For example, where the lead counsel is a registered
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`practitioner, a motion to appear pro hac vice by counsel
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`who is not a registered practitioner may be granted upon
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`showing that counsel is an experienced litigating attorney
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`and has an established familiarity with the subject matter
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`at issue in the proceeding.
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`The Board’s Notice of Filing Date Accorded to Petition, Paper No. 4
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`in this proceeding (“Filing Date Notice”), states that motions for pro hac vice
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`admission under 37 C.F.R. § 42.l0(c) must be filed in accordance with the “Order
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`— Authorizing Motion for Pro Hac Vice Admission” entered in Case IPR20l 3-
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`00010 (MPT) (“Pro Hac Vice Order”). Filing Date Notice, Paper No. 4, at 2. In
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`accordance with the Pro Hac Vice Order, this motion is being filed no sooner than
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`twenty-one (21) days after service of the petition. Pro Hac Vice Order, at 2. The
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`Filing Date Notice authorizes the parties to file motions for pro hac vice admission
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`in this proceeding. Filing Date Notice, Paper No. 4, at 2.
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`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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`Membership in good standing of the Bar of at least one State or
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`District of Columbia;
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`No suspensions or disbarments from practice before any court
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`or administrative body;
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`iii.
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`No application for admission to practice before any court or
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`administrative body ever denied;
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`iv.
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`No sanctions or contempt citations imposed by any court or
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`administrative body;
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`The individual seeking to appear has read and will comply with
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`the Office Patent Trial Practice Guide and the Board’s Rules of
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`Practice for Trials set forth in part 42 of the C.F.R.;
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`vi.
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`The individual will be subject to the USPTO Code of
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`Professional Responsibility set forth in 37 C.F.R. §§ 10.20 et
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`seq. and disciplinary jurisdiction under 37 C.F.R. §§ 1 1.19(a);
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`vii.
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`All other proceedings before the Office for which the individual
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`has applied to appear pro hac vice in the last three (3) years;
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`and
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`viii.
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`Familiarity with the subject matter at issue in the proceeding.”
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`Pro Hac Vice Order, at 3-4.
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`III.
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`STATEMENT OF FACTS
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`Based on the following facts, and supported by the Affidavit of Lillian
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`Mao (BOSCH 2002) submitted herewith, Patent Owner Bosch
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`requests the pro hac vice admission of Lillian Mao in this proceeding.
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`1.
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`Robert Bosch Healthcare Systems, Inc.’s lead counsel, Don
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`Daybell, is a registered practitioner (Reg. No. 50,877).
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`Ms. Mao is an associate at the law firm of Orrick Herrington &
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`Sutcliffe LLP. (BOSCH 2002 1] 3)
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`Ms. Mao is an experienced litigating attomey and has been a
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`litigating attomey for more than 3 (three) years.
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`(1d.,1] 3). Ms.
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`Mao has been litigating patent cases for over 3 (three) years.
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`(1d., 11 4).
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`Ms. Mao has established familiarity with the subject matter at
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`issue in this proceeding. (Id., 1] 6). Ms. Mao has litigated
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`patent cases in the area of computerized information systems
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`since 2010 (Id., 1] 5). She has become familiar with U.S. Patent
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`No. 7,516,192 (the “‘l92 Patent”) and with its prosecution file
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`history. (Id., 1] 6). She also has an in-depth familiarity with
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`Bosch’s related U.S. Patent Nos. 7,921,186, 7,587,469,
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`7,870,249, and their file histories. ([d.).
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`Ms. Mao is counsel for Bosch in a co—pending district court
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`litigation against Petitioner Cardiocom LLC (“Cardiocom”).
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`That litigation is captioned Robert Bosch Healthcare Systems.
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`Inc. v. Cardiocom, LLC, Civil Action No. 2:13-cv-349 (E.D.
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`Tex.), and involves the same patent at issue in this proceeding.
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`(Id.). As counsel for Bosch, Ms. Mao has been actively
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`involved in all aspects of its district court litigation. (Id.).
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`In addition, Ms. Mao is counsel for Bosch in another district
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`court litigation against Cardiocom, captioned Robert Bosch
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`Healthcare Systems, Inc. v. Cardiocom, LLC, Case No. 5:12-
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`CV-3864-EJD (N.D. Cal.). That litigation involves U.S. Patent
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`Nos. 6,368,273; 6,968,375; 7,252,636; and 8,140,663 which are
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`related to the patent at issue, and U.S. Patent Nos. 7,941,327
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`and 8,015,025, which involve similar computerized information
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`systems technology as the ‘I92 Patent. (Id., 1] 7).
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`Ms. Mao is a member in good standing of the State Bar of
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`California. (Id., 1] 8).
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`Ms. Mao has never been suspended or disbarred from practice
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`before any court or administrative body. (Id.,1] 9).
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`No application of Ms. Mao for admission to practice before any
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`court or administrative body has ever been denied. (Id., 11 10).
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`10.
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`No sanctions or contempt citations have ever been imposed
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`against Ms. Mao by any court or administrative body. (Id., 1|
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`1 1).
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`ll.
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`Ms. Mao has read and will comply with the Office Patent Trial
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`Practice Guide and the Board’s Rules of Practice for Trials set
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`forth in part 42 of the Code of Federal Regulators. (Id., 1] 12).
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`12.
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`Ms. Mao understands that she will be subject to the USPTO
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`Code of Professional Responsibility set forth in 37 C.F.R.
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`§§ 10.20 et seq. and disciplinary jurisdiction under 37 C.F.R.
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`§§ l1.l9(a). (Id., 1] 13).
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`13. Ms. Mao has not applied to appear pro hac vice in any other
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`proceedings before the Office in the last three (3) years.
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`(£21.,
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`1] 14).
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`IV. GOOD CAUSE EXISTS FOR THE EXPEDITED PRO HAC
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`VICE ADMISSION OF MS. LILLIAN MAO IN THIS
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`PROCEEDING
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`The Board may recognize counsel pro hac vice during a proceeding upon a
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`showing of good cause, subject to the condition that lead counsel be a registered
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`practitioner and to any other conditions as the Board may impose. 37 C.F.R.
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`§ 42.l0(c). Robert Bosch Healthcare Systems, Inc.’s lead counsel, Don Daybell, is
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`a registered practitioner. Based on the facts contained herein, as supported by Ms.
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`Mao’s Affidavit, good cause exists to admit Ms. Mao pro hac vice in this
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`proceeding.
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`As supported by her Affidavit, Ms. Mao is an experienced litigating attorney
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`with over 3 (three) years of patent litigation experience. Ms. Mao also has an
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`established familiarity with the subject matter at issue in this proceeding, as she is
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`Bosch’s counsel in co-pending district court litigation involving the same patent at
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`issue in this proceeding, and several related patents.
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`As counsel for Bosch, Ms. Mao has been actively involved in all aspects of
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`its district court litigation involving the patent at issue here and the related patents.
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`In view of Ms. Mao’s knowledge of the subject matter at issue in this proceeding,
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`and in view of the interrelatedness of this proceeding and the co-pending district
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`court litigation, Patent Owner Bosch has a substantial need for Ms. Mao’s pro hac
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`vice admission and involvement in this proceeding. In addition, admission of Ms.
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`Mao pro hac vice will enable Bosch to avoid unnecessary expense and duplication
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`of work between this proceeding and its district court litigation. See 77 Fed. Reg.
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`157 (Aug. 14, 2012), at 48661 (Office’s comment on final rule discussing concerns
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`about efficiency and costs where an entity has already engaged counsel for parallel
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`district court litigation). Given Ms. Mao’s experience with the involved patent and
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`parties, and Patent Owner Bosch’s desire to be represented by the counsel of its
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`choice, the need for admission of Ms. Mao substantially outweighs any potential
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`prejudice to Petitioner Cardiocom.
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`Undersigned counsel met and conferred with counsel for Petitioner, who
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`indicated that Petitioner does not oppose this motion.
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`V. CONCLUSION
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`For the foregoing reasons, Bosch respectfiilly requests that Ms. Mao
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`be admitted pro hac vice in this proceeding.
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`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
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`No. 34313).
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`Respectfully submitted,
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`ORRICK, I-IERRINGTON & SUTCLIFFE LLP
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`Dated: October 16, 2013
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`By:
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`/Don Daybelll
`Don Daybell, Lead Counsel for Patent
`Owner
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`Robert Bosch Healthcare Systems, Inc.
`Reg. No. 50,877
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`Orrick, Herrington & Sutcliffe LLP
`2050 Main Street, Suite I 100
`Irvine, CA 92614-8255
`Tel: 949-567-6700
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`Fax: 949-567-6710
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`OHSUSA:75-I6 10950.1
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`l2833.2002."5B
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`ROBERT BOSCH HEALTHCARE SYSTEMS, INC.’S MOTION FOR
`PRO HAC VICE ADMISSION OF LILLIAN MAO
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`CERTIFICATION OF SERVICE 37 C.F.R.
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`42.6 e 42.105 a
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`The undersigned hereby certifies that
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`the above-captioned “ROBERT
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`BOSCH HEALTHCARE SYSTEMS, INC.’s MOTION FOR PRO HAC VICE”
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`ADMISSION OF LILLIAN MAO”, “AFFIDAVIT OF LILLIAN MAO” and”
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`PATENT OWNERS EXHIBIT LIST” were served in its entirety on October 16,
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`2013, upon the following parties via electronic service:
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`Counsel for Petitioner
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`Daniel W. McDonald
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`Andrew J. Lagatta
`Merchant & Gould
`80 South 3"‘ St., Suite 3200
`Minneapolis, MN 55402
`CardiocomlPR@merchantgould.com
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`Respectfiilly submitted,
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`ORRICK, HERRINGTON & SUTCLIFF E LLP
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`Dated: October 16,2013
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`By:
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`/Don Daybelll
`Don Daybell
`Reg. No. 50,877
`Orrick, Herrington & Sutcliffe LLP
`2050 Main Street, Suite 1100
`Irvine, CA 92614-8255
`Tel: 949-567-6700
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`Fax: 949-567-6710
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`Customer Number: 34313
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