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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: IPR2013-00469
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`Patent No. 7,516,192
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`ROBERT BOSCH HEALTHCARE SYSTEMS, INC.’S
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`MOTION FOR PRO HAC VICE
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`ADMISSION OF BAS DE BLANK
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`Orrick Docket No.1 l2333.2002-"5A
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`ROBERT BOSCH HEALTHCARE SYSTEMS, INC.’S MOTION FOR
`PRO HAC VICE ADMISSION OF BAS DE BLANK
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`I. RELIEF REQUESTED
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`Pursuant to 37 CPR. § 42.10 (c), Patent Owner, Robert Bosch Healthcare
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`Systems, Inc., (“Bosch”) respectfully requests the pro hac vice admission of Bas
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`de Blank in this proceeding.
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`11. GOVERNING LAWS, RULES AND PRECEDENT
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`Section 42.10(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. 5
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`in this proceeding (“Filing Date Notice”), states that motions for pro hac vice
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`admission under 37 CPR. § 42.10(c) must be filed in accordance with the “Order
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`— Authorizing Motion for Pro Hac Vice Admission” entered in Case IPR2013-
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`00010 (MPT)” (“Pro Hac Vice Order”). Filing Date Notice, Paper No. 5, at 2. In
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`Orrick Docket No.:
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`l2833.2002."SA
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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. 5, at 2.
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`The Pro Hac Vice Order requires that such motions (l) “[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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`i.
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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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`ii.
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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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`Orrick Docket No.:
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`l2833.2002.-5A
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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 CPR. §§ 10.20 et
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`seq. and disciplinaryjurisdiction under 37 C.F.R. §§ l 1.l9(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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`111.
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`STATEMENT OF FACTS
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`Based on the following facts, and supported by the Affidavit of Bas de
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`Blank (BOSCH 2001) submitted herewith, Patent Owner Bosch
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`requests the pro hac vice admission of Bas de Blank in this
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`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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`Mr. de Blank is a partner at the law firm of Orrick Herrington
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`& Sutcliffe LLP. (BOSCH 2001‘" 3)
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`Mr. de Blank is an experienced litigating attorney and has been
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`a litigating attorney for more than 15 (fifieen) years.
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`(Id.,‘|] 3).
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`
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`Orrick Docket No.:
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`|2833.20()2!5A
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`Mr. de Blank has been litigating patent cases for over 15
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`(fifteen) years. (Id., 1] 4).
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`Mr. de Blank has established familiarity with the subject matter
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`at issue in this proceeding. (Id., 1] 6). Mr. de Blank has
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`litigated patent cases in the area of computerized information
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`systems since 2000 (Id., 11 5). He has become familiar with
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`U.S. Patent No. 7,516,192 (the “‘ 192 Patent”) and with its
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`prosecution file history. (M, ‘H 6). He also has an in-depth
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`familiarity with Bosch’s related US. Patent Nos. 7,921,186,
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`7,587,469, 7,870,249, and their file histories. (Id.).
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`Mr. de Blank 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, Mr. de Blank has been actively
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`involved in all aspects of its district court litigation. (Id.).
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`In addition, Mr. de Blank is counsel for Bosch in another
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`district court litigation against Cardiocom, captioned Robert
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`Bosch Healthcare Systems, Inc. v. Cardiocom, LLC, Case No.
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`
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`Orrick Docket No.:
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`l2833.2002.-'5A
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`5:12-CV-3864—EJD (ND. Cal.). That litigation involves US.
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`Patent Nos. 6,368,273; 6,968,375; 7,252,636; and 8,140,663
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`which are related to the patent at issue, and US. Patent Nos.
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`7,941,327 and 8,015,025, which involve similar computerized
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`information systems technology as the ‘192 Patent. ([d., 1] 7).
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`Mr. de Blank is a member in good standing of the State Bar of
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`California. (Id., 1] 8).
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`Mr. de Blank has never been suspended or disbarred from
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`practice before any court or administrative body. (Id., 1] 9).
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`No application of Mr. de Blank for admission to practice before
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`any court or administrative body has ever been denied. (Id., 1]
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`10).
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`10.
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`No sanctions or contempt citations have ever been imposed
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`against Mr. de Blank by any court or administrative body. (Id.,
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`1] 11).
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`ll.
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`Mr. de Blank has read and will comply with the Office Patent
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`Trial Practice Guide and the Board’s Rules of Practice for
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`Trials set forth in part 42 of the Code of Federal Regulators.
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`(Id.,1] 12).
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`
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`Orrick Docket No.: 12833.20()2ISA
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`12. Mr. de Blank understands that he will be subject to the USPTO
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`Code of Professional Responsibility set forth in 37 CPR.
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`§§ 10.20 et seq. and disciplinary jurisdiction under 37 CPR.
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`§§ 11.19(a). (Id.,‘|] 13).
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`13. Mr. de Blank has not applied to appear pro hac vice in any
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`other proceedings before the Office in the last three (3) years.
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`(Id., ll 14).
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`IV. GOOD CAUSE EXISTS FOR THE EXPEDITED PRO HAC
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`VICE ADMISSION OF MR. BAS DE BLANK 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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`§ 42.1003). 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 Mr.
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`de Blank’s Affidavit, good cause exists to admit Mr. de Blank pro hac vice in this
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`proceeding.
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`As supported by his Affidavit, Mr. de Blank is an experienced litigating
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`attorney with over 15 (fifteen) years of patent litigation experience. Mr. de Blank
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`also has an established familiarity with the subject matter at issue in this
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`Orrick Docket No.: 12833.2002.-'5A
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`proceeding, as he is Bosch’s counsel in co-pending district court litigation
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`involving the same patent at issue in this proceeding, and several related patents.
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`As counsel for Bosch, Mr. de Blank has been actively involved in all aspects
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`of its district court litigation involving the patent at issue here and the related
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`patents. In view of Mr. de Blank’s knowledge of the subject matter at issue in this
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`proceeding, and in view of the interrelatedness of this proceeding and the co-
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`pending district court litigation, Patent Owner Bosch has a substantial need for Mr.
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`de Blank’s pro hac vice admission and involvement in this proceeding.
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`In
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`addition, admission of Mr. de Blank pro hac vice will enable Bosch 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
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`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). Given Mr.
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`de Blank’s experience with the involved patent and parties, and Patent Owner
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`Bosch’s desire to be represented by the counsel of its choice, the need for
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`admission of Mr. de Blank substantially outweighs any potential prejudice to
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`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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`On'ick Docket No: 128333002514
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`V. CONCLUSION
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`For the foregoing reasons, Bosch respectfully requests that Mr. de
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`Blank be admitted pro Izac 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, HERRTNGTON & SUTCLIFFE LLP
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`Dated: October 16, 2013
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`By:
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`/Don Daybell/
`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 1100
`Irvine, CA 92614-8255
`Tel: 949-567—6700
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`Fax: 949-567-6710
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`
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`Orrick Docket No.:
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`I2833.2002/5A
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`ROBERT BOSCH HEALTHCARE SYSTEMS, INC.’S MOTION FOR
`PRO HAC VICE ADMISSION OF BAS DE BLANK
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`CERTIFICATION OF SERVICE (37 C.F.R. §§ 42.61e), 42.1051an
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`The undersigned hereby certifies that the above-captioned “ROBERT BOSCH
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`HEALTHCARE SYSTEMS,
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`INC.’S MOTION FOR PRO HAC VICE
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`ADMISSION OF BAS DE BLANK”, “AFFIDAVIT OF BAS DE BLANK” ” 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 mail:
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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 8‘“ St., Suite 3200
`Minneapolis, MN 55402
`CardiocomIPR@merchantgould.com
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`Respectfully submitted,
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`ORRICK, HERRINGTON & SUTCLIFFE LLP
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`Dated: October 16,2013
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`By:
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`fDon Daybellf
`Don Daybell
`Reg. No. 50,877
`Orrick, Herrington & Sutcliffe LLP
`2050 Main Street, Suite 1 100
`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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`