`Tel: 571-272-7822
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`Paper 15
`Entered: November 14, 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
`
`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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`
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`Before JUSTIN T. ARBES, BRYAN F. MOORE, and
`TRENTON A. WARD, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
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`DECISION
`Patent Owner’s Motion for Pro Hac Vice Admission of Lillian Mao
`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)
`
`
`In both of the instant proceedings, Patent Owner Robert Bosch
`Healthcare Systems, Inc. (“Bosch”) filed a motion requesting pro hac vice
`admission of Lillian Mao and provided an affidavit from Ms. Mao in support
`of the request.2 Petitioner Cardiocom, LLC did not file an opposition to
`either of the motions. For the reasons stated below, Bosch’s motions are
`granted. As the motions and affidavits in the two proceedings are
`substantially similar, we will refer herein to the papers filed in Case
`IPR2013-00468 for convenience.
`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.” 37 C.F.R. § 42.10(c). For example, where the lead counsel is a
`registered practitioner, a non-registered practitioner may be permitted to
`appear pro hac vice “upon showing that counsel is an experienced litigating
`attorney and has an established familiarity with the subject matter at issue in
`the proceeding.” Id. In authorizing motions for pro hac vice admission, the
`Board requires the moving party to provide a statement of facts showing
`there is good cause for the Board to recognize counsel pro hac vice and an
`affidavit or declaration of the individual seeking to appear. Paper 4
`(referencing the “Order – Authorizing Motion for Pro Hac Vice Admission,”
`Paper 6 in IPR2013-00010, at 3-4).
`In its motions, Bosch argues that there is good cause for Ms. Mao’s
`pro hac vice admission because she is an experienced litigation attorney and
`has an established familiarity with the subject matter at issue in these
`
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`2 See IPR2013-00468, Paper 9, Ex. 2005; IPR2013-00469, Paper 9,
`Ex. 2004.
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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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`proceedings. Paper 9 at 4-8. Specifically, Ms. Mao is counsel for Bosch in
`Robert Bosch Healthcare Systems, Inc. v. Cardiocom, LLC, E.D. Tex. Case
`No. 2:13-cv-00349, where the patent being challenged in the instant
`proceedings is being asserted. Paper 9 at 5-6. Bosch contends that given
`Ms. Mao’s involvement in the related litigation, there is a need for her to be
`involved in the instant proceedings “to avoid unnecessary expense and
`duplication of work” between the proceedings. Id. at 7-8. In her affidavit,
`Ms. Mao attests that:
`(1)
`she is “a member in good standing of the State Bar of
`California”;
`she has “never been suspended or disbarred from practice
`before any court or administrative body,” “[n]o court or
`administrative body has ever denied [her] application for
`admission to practice before it,” and “[n]o court or
`administrative body has ever imposed sanctions or contempt
`citations on [her]”;
`she 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 [Title 37 of] the Code of Federal
`Regulations,” and “understand[s] that [she] 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)”;
`she has “not applied to appear pro hac vice in any other
`proceedings before the Office in the last three (3) years”;
`she has been “litigating patent cases for over 3 (three) years”;
`and
`she is “counsel for Bosch in . . . Robert Bosch Healthcare
`Systems, Inc. v. Cardiocom, LLC, Civil Action No. 2:13-cv-349
`(E.D. Tex.),” which “involves U.S. Patent No. 7,516,192 also at
`issue in this inter partes review proceeding,” and has been
`“actively involved in preparing the technical aspects of the case
`relating to infringement and validity of the ‘192 Patent,
`
`(2)
`
`(3)
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`(4)
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`(5)
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`(6)
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`3
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`Case IPR2013-00468 (Patent 7,516,192 B2)
`Case IPR2013-00469 (Patent 7,516,192 B2)
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`including detailed analysis of the ‘192 Patent and its file
`history.”
`Ex. 2005 ¶¶ 3-14. Also, Bosch’s lead counsel in the instant proceedings,
`Don Daybell, is a registered practitioner. Paper 9 at 4.
`Based on the facts set forth above, we conclude that Ms. Mao has
`sufficient legal and technical qualifications to represent Bosch in these
`proceedings and that there is a need for Bosch to have its counsel in the
`related litigation involved in these proceedings. See IPR2013-00639, Paper
`7, dated October 15, 2013 (superseding IPR2013-00010, Paper 6, dated
`October 15, 2012, and setting forth the requirements for pro hac vice
`admission) (copy available on the Board Web site under “Representative
`Orders, Decisions, and Notices”). Accordingly, Bosch has established good
`cause for Ms. Mao’s pro hac vice admission. Ms. Mao will be permitted to
`appear pro hac vice in the instant proceedings as back-up counsel only. See
`37 C.F.R. § 42.10(c).
`In consideration of the foregoing, it is hereby:
`ORDERED that Bosch’s motions for pro hac vice admission of
`Lillian Mao in the instant proceedings are granted and Ms. Mao is
`authorized to represent Bosch as back-up counsel in the instant proceedings;
`FURTHER ORDERED that Bosch is to continue to have a registered
`practitioner as lead counsel in the instant proceedings;
`FURTHER ORDERED that Ms. Mao is 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; and
`FURTHER ORDERED that Ms. Mao is subject to the USPTO Rules
`of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq. and the
`Office’s disciplinary jurisdiction under 37 C.F.R. § 11.19(a).
`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:
`
`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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