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 IPR2013-00468
`Patent 7,516,192
`____________
`
`Mailed: November 26, 2013
`____________
`
`
`
`PETITIONER’S MOTION FOR ADMISSION PRO HAC VICE OF
`WILLIAM D. SCHULTZ UNDER 37 C.F.R. § 42.10(c)
`
`
`
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CARDIOCOM LLC
`Petitioner
`
`v.
`
`ROBERT BOSCH HEALTHCARE SYSTEMS, INC.
`Patent Owner
`____________
`
`Case IPR2013-00468
`Patent 7,516,192
`____________
`
`Mailed: November 26, 2013
`____________
`
`
`
`PETITIONER’S MOTION FOR ADMISSION PRO HAC VICE OF
`WILLIAM D. SCHULTZ UNDER 37 C.F.R. § 42.10(c)
`
`
`
`
`
`
`
`Case IPR2013-00468
`Patent 7,516,192
`
`RELIEF REQUESTED
`
`Under 37 C.F.R. § 42.10(c), and in accordance with the Board’s “Order –
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`Authorizing Motion for Pro Hac Vice Admission” in case IPR 2013-00639,
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`petitioners Cardiocom LLC request that the Board admit William D. Schultz pro
`
`hac vice in this proceeding.
`
`
`
`GOVERNING LAWS, RULES, AND PRECEDENT
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`Section 42.10(c) provides the “Board may recognized counsel pro hac vice
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`during a proceeding upon a showing of good cause, subject to the condition that
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`lead counsel be a registered practitioner and any other conditions as the Board may
`
`impose.” The Rule provides that counsel who is not a recognized practitioner
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`“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 July 31, 2013, Notice of Filing Date Accorded to Petition,
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`Paper No. 4, authorized the parties to file motions for pro hac vice admission under
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`37 C.F.R. § 42.10(c). The Notice provided pro hac vice motions shall be filed in
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`accordance with the “Order – Authorizing Motion for Pro Hac Vice Admission” in
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`Case IPR2013-00010 (MPT). On October 15, 2013, the Board issued an Order,
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`Paper No. 7, in Case IPR2013-00639 that provides the guidelines for admission
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`
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`1
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`
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`Case IPR2013-00468
`Patent 7,516,192
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`under 37 C.F.R. § 42.10(c). The Order incorporated changes in the rules, including
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`the publication of the Final Rule in 78 Fed. Reg. 20180 adopting new Rules of
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`Professional Conduct.
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`The October 15, 2013 Order provides motions for pro hac vice “[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.” The Order further provides the motion is to
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`be “accompanied by an affidavit or declaration of the individual seeing to appear
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`attesting to the following:
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`i. Membership in good standing of the Bar of at least one State or the
`
`District of Columbia;
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`ii.
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`No suspensions or disbarments from practice before any court or
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`administrative body;
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`iii. No application for admission to practice before any court or
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`administrative body ever denied;
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`iv. No sanctions or contempt citations imposed by any court or
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`administrative body;
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`v.
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`The individual seeking to appear has read and will 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 set forth in part 42 of 37 C.F.R.;
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`
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`2
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`Case IPR2013-00468
`Patent 7,516,192
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`vi.
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`The individual will be subject to the USPTO Rules of Professional
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`Conduct set forth in 37 C.F.R. §§ 11.101 et. seq. and disciplinary
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`jurisdiction under 37 C.F.R. § 11.19(a);
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`vii. All other proceedings before the Office for which the individual has
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`applied to appear pro hac vice in the last three (3) years; and
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`viii. Familiarity with the subject matter at issue in the proceeding.”
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`
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`TIME OF FILING
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`In accordance with the rules, this motion is being filed no sooner than
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`twenty one (21) days after service of the petition.
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`
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`STATEMENT OF THE FACTS
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`The following facts, supported by the attached Declaration of William D.
`
`Schultz in Support of Petitioner’s Motion for Admission Pro Hac Vice, establish
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`good cause to recognize Mr. Schultz pro hac vice in this proceeding.
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`There is good cause for the Board to recognize counsel William D. Schultz
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`pro hac vice during this proceeding.
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`Petitioner’s Lead counsel, Daniel W. McDonald, is a registered practitioner
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`(Reg. No. 32,044).
`
`
`
`3
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`
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`Case IPR2013-00468
`Patent 7,516,192
`
`Counsel William D. Schultz is an experienced litigating attorney. Mr.
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`Schultz is a partner at the law firm of Merchant & Gould P.C. Mr. Schultz has
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`been a litigating attorney for more than 11 years. Schultz Decl., ¶ 8. His experience
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`includes representing a wide range of clients in intellectual property litigation. Mr.
`
`Schultz has been litigating patent cases for at least 11 years. Id., ¶ 9.
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`Mr. Schultz has established familiarity with the subject matter at issue in this
`
`proceeding. Mr. Schultz has worked with lead counsel in all aspects of preparing
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`Petitioner’s Petition, the expert declaration filed in support of the Petition, and all
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`other filings Petitioner has made. Id., ¶ 11. As such, Mr. Schultz has become
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`familiar with U.S. Patent No. 7,516,192 (the “‘192 Patent”) and with its
`
`prosecution file history. Id. He is familiar with the prior art relied upon in
`
`Petitioner’s Petition. He is also familiar with the legal and factual arguments made
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`by Petitioner and Patent Owner. Id.
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`Mr. Schultz is counsel for Petitioner in a co-pending district court litigation
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`filed by Patent Owner Robert Bosch Healthcare Systems, Inc. Id., ¶ 10. That
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`litigation is captioned Robert Bosch Healthcare Systems, Inc. v. Cardiocom, LLC,
`
`No. 2:13-cv-349 (E.D. Tex., filed April 26, 2013). Id. The litigation involves the
`
`same patent at issue in this proceeding as well as five related patents, including
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`U.S. Patent Nos. 7,921,186; 7,587,469; 7,769,605; 7,840,420; and 7,870,249. Id.
`
`
`
`4
`
`
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`Case IPR2013-00468
`Patent 7,516,192
`
`Mr. Schultz, as counsel for Petitioner, has been actively involved in the district
`
`court litigation. Schultz Decl., ¶ 11.
`
`During the co-pending litigation, Mr. Schultz has worked extensively in
`
`developing invalidity positions for the patent at issue, which required developing a
`
`thorough understanding of the prior art as well as the patent at issue. Id., ¶ 11. Mr.
`
`Schultz has also worked extensively with the expert in the litigation, who is also
`
`the expert in this proceeding. Id.
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`Mr. Schultz is also counsel for Petitioner in the pending case Robert Bosch
`
`Healthcare Systems, Inc. v. Cardiocom, LLC, No. 12-cv-3864 EJD (N.D. Cal.,
`
`filed July 24, 2012). Id., ¶ 12. The patents involved in the California litigation
`
`include U.S. Patent Nos. 6,368,273; 6,968,375; 7,252,636; 7,941,327; 8,015,025;
`
`and 8,140,663. Id.
`
`The ʻ192 patent is related to the patents in the Texas and California litigation
`
`matters. For example, all of the patents in this proceeding and the Texas and
`
`California litigation matters involve similar computerized information systems
`
`technology and the same inventor. Further, the ʻ192 Patent is a child in the same
`
`family as the ‘663, ‘375, and ‘273. Mr. Schultz’s familiarity with the ‘192 Patent
`
`includes his review and analysis of all of the related patents and their file histories
`
`at issue in the district court litigation proceedings. All of those patents are also
`
`
`
`5
`
`
`
`Case IPR2013-00468
`Patent 7,516,192
`
`subject to either inter partes review or reexamination proceedings, which Mr.
`
`Schultz is involved.
`
`Mr. Schultz is in good standing and admitted to practice in Minnesota, the
`
`United States District Court for the Western District of Wisconsin, the United
`
`States Court of Appeals for the Seventh Circuit, the United States Court of Appeals
`
`for the Eighth Circuit, the Minnesota Federal Bar, and the United States District
`
`Court for the District of Minnesota. Schultz Decl., ¶ 1.
`
`Patent Owner’s counsel applying for pro hac vice relied on the pending
`
`litigation in California and Texas as well as the relatedness of the patents in those
`
`suits as a basis for establishing familiarity with the subject matter at issue in the
`
`proceeding. Paper Nos. 8, 9. The Board granted Patent Owner’s pro hac vice
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`motions. Paper Nos. 15, 16.
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`Mr. Schultz has had no suspensions or disbarments from practice before any
`
`court or administrative body. Id., ¶ 2.
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`Mr. Schultz has never been denied application to practice before any court or
`
`administrative body. Id., ¶ 3.
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`Mr. Schultz has never been sanctioned or cited for contempt by any court or
`
`administrative body. Id., ¶ 4.
`
`
`
`6
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`
`
`Case IPR2013-00468
`Patent 7,516,192
`
`Mr. Schultz has read and will comply with the Office Patent Trial Practice
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`Guide and the Board’s Rules of Practice for Trials set forth in part 42 of 37 C.F.R.
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`Id., ¶ 5.
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`Mr. Schultz has agreed to be subject to the United States Patent and
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`Trademark Office Rules of Professional Conduct, as set forth in 37 C.F.R. §§
`
`11.101 et. seq. and disciplinary jurisdiction under 37 C.F.R. § 11.19(a). Id., ¶ 6.
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`Mr. Schultz is applying concurrently with this motion to appear pro hac vice
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`the following proceedings before the Office: IPR2013-00431; IPR2013-00439;
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`IPR2013-00449; IPR2013-00451; IPR2013-00460; and IPR2013-00469. Schultz
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`Decl., ¶ 7.
`
`
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`ANALYSIS
`
`37 C.F.R. § 42.10(c) states that 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 “Order -- Authorizing Motion for Pro Hac Vice Admission” in
`
`
`
`7
`
`
`
`Case IPR2013-00468
`Patent 7,516,192
`
`Case IPR2013-00639 clarified the requirements for a motion for pro hac vice
`
`admission under 37 C.F.R. § 42.10(c).
`
`The Statement of Facts, above, and the Schultz Declaration establish that
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`there is good cause to admit Mr. Schultz pro hac vice in this proceeding under 37
`
`C.F.R. § 42.10(c). Lead counsel, Daniel McDonald, is a registered practitioner. Mr.
`
`Schultz is an attorney experienced litigating attorney with over eleven (11) years of
`
`experience litigating patents. Mr. Schultz has established familiarity with the
`
`subject matter at issue in the proceeding. He is counsel for Petitioner in co-
`
`pending district court litigation involving the same patent at issue in this
`
`proceeding as well as several related patents.
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`Admission of Mr. Schultz pro hac vice will enable Petitioner 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
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`entity has already engaged counsel for parallel district court litigation). As
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`litigation counsel for Petitioner, Mr. Schultz has been actively involved in all
`
`aspects of the district court litigation. He has also been involved in all aspects of
`
`this proceeding. In view of Mr. Schultz’s knowledge of the subject matter at issue
`
`in the district court proceeding and the overlapping knowledge of the subject
`
`
`
`8
`
`
`
`Case IPR2013-00468
`Patent 7,516,192
`
`matter in this proceeding, Petitioner has a substantial need for Mr. Schultz’s pro
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`hac vice admission and involvement in this proceeding.
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`Counsel for Petitioner have met and conferred with counsel for Patent
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`Owner, who indicated that Patent Owner does not oppose this motion.
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`
`
`CONCLUSION
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`For the reasons stated above, Petitioners respectfully request that the Board
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`admit William D. Schultz to appear pro hac vice in this proceeding.
`
`
`
`
`Date: November 26, 2013
`
`
`
`
`
`
`(Trial No. IPR2013-00468)
`
`
`
`Respectfully submitted,
`MERCHANT & GOULD, P.C.
`
` /Daniel W. McDonald /
` Daniel W. McDonald, Reg. No. 32,044
`Andrew J. Lagatta, Reg. No. 62,529
`80 South 8th St., Suite 3200
`Minneapolis, MN 55402
`Telephone: (612) 332-5300
`Fax: (612) 332-9081
`dmcdonald@merchantgould.com
`alagatta@merchantgould.com
`
`
`
` ATTORNEYS FOR PETITIONER
`
`9
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