`Tel: 571-272-7822
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`Paper 19
`Entered: December 23, 2013
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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
`Petitioner
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`v.
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`ROBERT BOSCH HEALTHCARE SYSTEMS, INC.
`Patent Owner
`____________
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`Case IPR2013-00468 (Patent 7,516,192 B2)
`Case IPR2013-00469 (Patent 7,516,192 B2)1
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`Before JUSTIN T. ARBES, BRYAN F. MOORE, and
`TRENTON A. WARD, Administrative Patent Judges.
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`ARBES, Administrative Patent Judge.
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`DECISION
`Petitioner’s Motion for Pro Hac Vice Admission of William D. Schultz
`37 C.F.R. § 42.10
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`1 This Order addresses an issue pertaining to both 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.
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`
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`Case IPR2013-00468 (Patent 7,516,192 B2)
`Case IPR2013-00469 (Patent 7,516,192 B2)
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`In both of the instant proceedings, Petitioner Cardiocom, LLC
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`(“Cardiocom”) filed a motion requesting pro hac vice admission of William
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`D. Schultz and provided a declaration from Mr. Schultz in support of the
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`request.2 Patent Owner Robert Bosch Healthcare Systems, Inc. did not file
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`an opposition to either of the motions. For the reasons stated below,
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`Cardiocom’s motions are granted. As the motions and declarations in the
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`two proceedings are substantially similar, we will refer herein to the papers
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`filed in Case IPR2013-00468 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, Cardiocom argues that there is good cause for Mr.
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`Schultz’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 IPR2013-00468, Paper 17, Ex. 1012; IPR2013-00469, Paper 16,
`Ex. 1012.
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`2
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`Case IPR2013-00468 (Patent 7,516,192 B2)
`Case IPR2013-00469 (Patent 7,516,192 B2)
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`these proceedings. Paper 17 at 7-9. Specifically, Mr. Schultz is counsel for
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`Cardiocom in Robert Bosch Healthcare Systems, Inc. v. Cardiocom, LLC,
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`E.D. Tex. Case No. 2:13-cv-00349, where the patent being challenged in the
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`instant proceedings is being asserted. Paper 17 at 4-5. Cardiocom contends
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`that Mr. Schultz’s participation in these proceedings will enable Cardiocom
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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 8-9. In his declaration,
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`Mr. Schultz 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 Bar[] of: Minnesota”;
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`he has had “no suspensions or disbarments from practice before
`any court or administrative body,” “never had any court or
`administrative body deny [his] application to practice before
`said court or administrative body,” and “never been sanctioned
`or cited for contempt by any court or administrative body”;
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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 37 C.F.R.,” and understands 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 only applied to appear pro hac vice in the instant
`proceedings and related Cases IPR2013-00431,
`IPR2013-00439, IPR2013-00449, IPR2013-00451, and
`IPR2013-00460;
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`(5)
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`he has been “litigating patent cases for at least eleven years”;
`and
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`(6) he is “second counsel in the case Robert Bosch Healthcare
`Systems, Inc. v. Cardiocom, LLC, and Abbott Diabetes Care,
`Inc., No. 2:13-CV-349 (E.D. Tex., filed Apr. 26, 2013),” which
`involves the patent being challenged in the instant proceedings,
`and has developed “a thorough understanding of the prior art,
`including the prior art cited in [the instant proceedings], as well
`as a thorough understanding of the patent at issue.”
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`3
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`
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`Case IPR2013-00468 (Patent 7,516,192 B2)
`Case IPR2013-00469 (Patent 7,516,192 B2)
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`Ex. 1012 ¶¶ 1-12. Also, Cardiocom’s lead counsel in these proceedings,
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`Daniel W. McDonald, is a registered practitioner. Paper 17 at 3.
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`Based on the facts set forth above, we conclude that Mr. Schultz has
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`sufficient legal and technical qualifications to represent Cardiocom in these
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`proceedings and that there is a need for Cardiocom to have its counsel in the
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`related litigation involved in these proceedings. See IPR2013-00639, Paper
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`7, dated October 15, 2013 (superseding IPR2013-00010, Paper 6, dated
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`October 15, 2012, and setting forth the requirements for pro hac vice
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`admission) (copy available on the Board Web site under “Representative
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`Orders, Decisions, and Notices”). Accordingly, Cardiocom has established
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`good cause for Mr. Schultz’s pro hac vice admission. Mr. Schultz will be
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`permitted to appear pro hac vice in the instant proceedings as back-up
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`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 Cardiocom’s motions for pro hac vice admission of
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`William D. Schultz in the instant proceedings are granted and Mr. Schultz is
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`authorized to represent Cardiocom as back-up counsel in the instant
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`proceedings;
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`FURTHER ORDERED that Cardiocom is to continue to have a
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`registered practitioner as lead counsel in the instant proceedings;
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`FURTHER ORDERED that Mr. Schultz is to comply with the Office
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`Patent Trial Practice Guide and the Board’s Rules of Practice for Trials, as
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`set forth in Title 37, Part 42 of the Code of Federal Regulations; and
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`FURTHER ORDERED that Mr. Schultz 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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`4
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`Case IPR2013-00468 (Patent 7,516,192 B2)
`Case IPR2013-00469 (Patent 7,516,192 B2)
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`PETITIONER:
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`Daniel W. McDonald
`Andrew J. Lagatta
`MERCHANT & GOULD, P.C.
`dmcdonald@merchantgould.com
`alagatta@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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`5
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