IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`In the Inter Partes Review of:
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`U.S. Patent No. 7,587,469
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`Filed: January 29, 2007
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`Issued: September 8, 2009
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`Inventors: Stephen J. Brown
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`Assignee: Health Hero Network, Inc.
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`Trial Number: ___________
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`Attorney Docket No.:
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`12771.0106USWX
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`Title: AUDIO INSTRUCTIONS FOR
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`Panel: To Be Assigned
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`APPLIANCES
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`MOTION FOR JOINDER OF PETITION FOR INTER PARTES
`REVIEW IPR2014-00436 OF U.S. PATENT NO. 7,587,469
`FILED ON FEBRUARY 14, 2014 WITH
` IPR2013-00451 INSTITUTED ON JANUARY 16, 2014
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`1
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`
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`In the Inter Partes Review of:
`
`
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`U.S. Patent No. 7,587,469
`
`Filed: January 29, 2007
`
`Issued: September 8, 2009
`
`
`
`
`
`
`
`Inventors: Stephen J. Brown
`
`Assignee: Health Hero Network, Inc.
`
`Trial Number: ___________
`
`Attorney Docket No.:
`
`12771.0106USWX
`
`Title: AUDIO INSTRUCTIONS FOR
`
`Panel: To Be Assigned
`
`APPLIANCES
`
`
`
`
`
`
`
`
`
`
`
`MOTION FOR JOINDER OF PETITION FOR INTER PARTES
`REVIEW IPR2014-00436 OF U.S. PATENT NO. 7,587,469
`FILED ON FEBRUARY 14, 2014 WITH
` IPR2013-00451 INSTITUTED ON JANUARY 16, 2014
`
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`1
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`I.
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`Relief Requested
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`Pursuant to 35 U.S.C. §315(c) and 37 C.F.R. §42.122(b), Petitioner
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`Medtronic, Inc. (“Medtronic” or “Petitioner”), hereby moves for joinder of the
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`concurrently-submitted petition for inter partes review (IPR2014-00436) of claim
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`1-22 of U.S. Patent No. 7,587,469 (“the ‘469 Patent”) filed by Medtronic, Inc. on
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`February 14, 2014 with the inter partes review IPR2013-00451 filed by
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`Cardiocom, LLC (“Cardiocom”) as to the same ‘469 Patent and instituted on
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`January 16, 2014.
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`II.
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`Statement of Materials Facts
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`1. On April 26, 2013, Robert Bosch Healthcare Systems filed a patent
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`infringement lawsuit against Cardiocom, LLC and Abbott Diabetes Care in
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`the United States District Court for the Eastern District of Texas, Case No.:
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`2:13-cv-349 alleging, among other patents, infringement of the ‘469 patent.
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`2. On July 17, 2013, Cardiocom filed a petition for inter partes review
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`requesting cancellation of claims 1-22 of the ‘469 patent. Cardiocom, LLC
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`v. Robert Bosch Healthcare Systems, Inc., IPR2013-00451 (P.T.A.B.) (“First
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`Petition”). The details of related proceedings and related patents can be
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`found in the Petition for Inter Partes Review, filed on July 17, 2013, in
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`IPR2013-00451.
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`3. Subsequently, Medtronic acquired Cardiocom.
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`4. On January 16, 2014, the Board instituted trial as to claims 1, 2, and 5-10 in
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`IPR2013-451. The Board, however, did not institute trial as to claims 3-4
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`and 11-22. See IPR2013-00451, Paper 23 at 13, 29.
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`5. On February 13, 2014, the Board held its initial conference call in IPR2013-
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`00451 with the parties. In Cardiocom’s list of proposed motions, Cardiocom
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`identified that it would file a motion to join IPR2013-00451 with a Petition
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`for inter partes review being filed (the present Petition).
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`6. On February 14, 2014, Medtronic filed a petition for inter partes review of
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`the ‘469 patent (“Second Petition”) seeking the cancellation of claims 1-22.
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`7. Medtronic’s grounds for challenging the patentability of claims 1-22 in the
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`Second Petition are based on prior art references (Cohen and Wahlquist)
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`included in the First Petition, and on a new prior art reference, European
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`Publication No. 0342 859 to Kaufman, et al. (“Kaufman”) (Ex. 1003), not
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`part of IPR2013-00451. Kaufman in combination with the previously-cited
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`art addresses the reasons inter partes review was denied as to claims 3-4 and
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`11-22 and further demonstrates claims 1-22 are invalid.
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`III. Governing Rule(s)
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`§42.122 Multiple Proceedings and Joinder.
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`(b) Request for Joinder. Joinder may be requested by a patent owner or
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`petitioner. Any request for joinder must be filed, as a motion under §42.22, no
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`3
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`later than one month after the institution date of any inter partes review for which
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`joinder is requested. The time period set forth in §42.101(b) shall not apply when
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`the petition is accompanied by a request for joinder.
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`IV. Discussion
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`The Leahy-Smith America Invents Act (AIA) permits the Patent Trial and
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`Appeal Board (“the Board”) to join inter partes review proceedings in its
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`discretion. See 35 U.S.C. §315(c). A motion for joinder must be filed no later than
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`one month after the institution date of any inter partes review for which joinder is
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`requested. See 37 C.F.R. §42.122(b). This joinder motion is timely as IPR2013-
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`00451 was instituted on January 16, 2014 and the present Petition has just been
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`filed.
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`Joinder is appropriate because it will be more efficient for both the Board
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`and the parties to address the issues in both proceedings, which are related, in one
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`IPR rather than separately. The Second Petition (IPR2014-00436) seeks
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`cancellation of claims 1-22 of the ‘469 Patent based on new prior art in
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`combination with prior art which supported the grant in part of the First Petition.
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`Moreover, Medtronic acquired Cardiocom, the Petitioner in IPR2013-00451, and
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`thus combining the two inter partes reviews will be more efficient as the two
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`Petitioners are related and have the same counsel representing them in both
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`proceedings. Both Medtronic and Cardiocom support joinder. Joinder is also
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`appropriate as there will be no discernable prejudice to the Patent Owner from
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`joining the two proceedings. Pursuant to 37 C.F.R. §42.122 (b), the instant motion
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`was timely filed within one month of the Board instituting IPR2013-00451 and
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`before the trial is instituted in the present proceeding.
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`In IPR2013-451, the Board instituted trial on claims 1, 2 and 5-10 as being
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`obvious over Cohen and Wahlquist and alternatively as being obvious over Cohen,
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`Wahlquist, Neumann and Jacobs. However, the Board did not institute trial as to
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`claims 3, 4, and 11-22, finding that Cohen does not teach a “single housing unit”
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`recited in claim 3 and the “household appliance” recited in claims 4 and 11-22.
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`After and based on the Board’s findings and its claim construction in IPR2013-
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`00451, Medtronic identified a prior art reference, Kaufman, that in combination
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`with the previously-cited art cures the deficiencies that led the Board to deny trial
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`on claims 3, 4 and 11-22, and prepared the present Petition.
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`Medtronic’s Petition includes two grounds of unpatentability: (1) Claims 1-
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`6, 11-12 and 17-18 are obvious over Cohen in view of Kaufman, and (2) all claims
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`are unpatentable as obvious over Cohen in view of Kaufman and further in view of
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`Wahlquist. Kaufman provides both the “single housing unit” and “household
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`appliance” elements found missing in Cohen.
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`For example, Kaufman discloses the primary and secondary devices being
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`housed within a “single housing unit” 12 or 102 of the patient assistance system
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`5
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`10. “The system can provide a variety of functions useful to an individual 45 who
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`may be debilitated or convalescing from an injury or an illness.” Ex. 1003 at
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`(Kaufman), p. 2:44-45; see also p. 6: 9-15. Kaufman also teaches the housing may
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`include a video display unit 14, display 16b, monitors such as blood pressure/pulse
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`monitoring cuff stored in region 24, voice synthesizer and recognition unit 36,
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`modem 40, telephone handset 44, for voice communication with the patient,
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`microphone for collecting audible responses, a telephone handset, and a keyboard
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`or a touchscreen along with medical testing devices, such as cuffs, thermometers,
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`and other analyzers. Id. at p. 8:25-38; p. 6:20-21; p. 5:11-14, 57-58; p. 4:31-44,
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`53-58. Kaufman also discloses a “household appliance.” It discloses that “the
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`invention pertains to a computer based system for providing at home or
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`institutional assistance to a convalescing or injured patient.” Id. at p. 2:10-12.
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`Joinder will promote efficiency in view of the close relationship between the
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`issues in the two matters. The additional issues raised in the new petition are
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`relatively simple issues, directed to housing the claimed elements in a single
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`housing unit or household appliance. Inconsistent rulings and results will be
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`avoided if the matters are joined.
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`The efficiencies gained will benefit both parties. For example, briefing can
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`be streamlined into single documents for the issues going forward. Discovery will
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`be very limited in both proceedings, and to the extent it is needed it will largely
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`6
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`overlap due to the similarity of the issue in both proceedings, which can be done
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`more efficiently in one proceeding. Finally, no depositions have occurred to date
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`in IPR2013-00451. Cardiocom and Medtronic use the same expert in both IPRs,
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`so a single deposition should suffice. Patent Owner should be able to use a single
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`expert as well.
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`While the schedule in the first trial may have to be adjusted to coincide with
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`the timing for a second trial, such delay is reasonable and can be minimized by
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`expediting Patent Owner’s preliminary response and Opposition to Medtronic’s
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`Petition. See SAP America, Inc. v. PI-NET Int’l, Inc., CBM2014-00018, Paper 7 at
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`3-4 (expediting Patent Owner’s briefing to minimize delay in view of potential
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`joinder). Moreover, Petitioner was able to search and locate the Kaufman
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`reference and prepare a complete Petition for inter partes review within one month
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`of the decision in IPR2013-00451. Patent Owner similarly can review that one
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`new piece of prior art, which addresses the two specific elements found missing in
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`Cohen, and respond to two related invalidity grounds on an expedited basis.
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`Joining the two proceedings and expediting Patent Owner’s response will ensure
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`that Patent Owner timely receives a final written decision on the patentability of
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`the challenged claims of the ‘469 patent. It will also ensure that the issues are
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`addressed efficiently for both the Board and the parties.
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`7
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`A proposed schedule showing the current dates in IPR2013-00451 and a
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`proposed schedule should the two IPRs be joined is shown below. The two IPRs
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`can be joined, and with reasonably expedited briefing in this IPR, the schedule in
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`IPR2013-00451 will be pushed back only about one month.
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`Document
`
`Patent owner’s response to
`the petition
`Patent owner’s motion to
`amend the patent
`Petitioner’s reply to patent
`owner response to petition
`Petitioner’s opposition to
`motion to amend
`Patent owner’s reply to
`petitioner opposition to
`motion to amend
`Motion for observation
`regarding cross-
`examination of reply
`witness
`Motion to exclude
`evidence
`Request for oral argument
`Response to observation
`Opposition to Motion to
`exclude
`Reply to opposition to
`motion to exclude
`Oral argument (if
`requested)
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`Due
`Date No.
`1
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`2
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`3
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`4
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`5
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`6
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`7
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`Current Schedule
`(IPR2013-00451)
`April 1, 2014
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`Proposed Joint
`Schedule
`May 31, 2014
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`June 10, 2014
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`July 15, 2014
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`July 10, 2014
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`August 15, 2014
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`July 31, 2014
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`September 5, 2014
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`August 14, 2014
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`September 19, 2014
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`August 21, 2014
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`September 26, 2014
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`September 9, 2014 October 15, 2014
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`8
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`In view of the narrow and relatively simple additional issues addressed by
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`the new Petition, primarily related to newly-cited art that addresses the “single
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`housing unit” and “household appliance” limitations found lacking in the
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`previously-cited art, Petitioner respectfully submits that the initial steps involved
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`with the new Petition may be capable of being addressed within a shorter time
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`period than the maximum times allowed, which may ultimately minimize the delay
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`in any decision in the first trial. Further, Petitioner will be receptive to logistical or
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`scheduling requests of the Patent Owner or the Board which may facilitate joinder
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`of the proceedings in a manner which maximizes efficiency and minimizes burdens
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`or potential prejudice.
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`V. Conclusion
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`For the foregoing reasons, Petitioner, Medtronic, Inc., respectfully requests
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`that IPR2013-00451 filed by Cardiocom LLC be joined with the petition for inter
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`partes review (IPR2014-00436) of claims 1-22 of U.S. Patent No. 7,587,469, filed
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`by Medtronic, Inc. on February 14, 2014.
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`Date: February 14, 2014
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`Attorneys for Petitioner,
`Medtronic, Inc.
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`Respectfully submitted,
`MERCHANT & GOULD P.C.
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`
`
`/Daniel W. McDonald/
`Daniel W. McDonald, Reg. No. 32,044
`Andrew J. Lagatta, Reg. No. 62,529
`William D. Schultz, pro hac vice
`Jeffrey D. Blake, Reg. No. 58,884
`
`9
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`Certification of Service
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`Pursuant to 37 C.F.R § 42.6, the undersigned hereby certifies that a copy of
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`this MOTION FOR JOINDER TO RELATED PETITION FOR INTER PARTES
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`REVIEW IPR2014-00436 OF U.S. PATENT NO. 7,587,469 FILED ON
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`FEBRUARY 14, 2014 has been served on February 14, 2014, via Federal Express,
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`postage prepaid, to the Patent Owner by serving the correspondence address of
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`record for the ‘469 Patent, as well as litigation counsel for the copending lawsuit
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`captioned in the concurrently-submitted Petition (litigation counsel also served by
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`e-mail):
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`Attorney(s) of Record
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`Attn: Harold C. Moore
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`Maginot Moore & Beck LLP
`One Indiana Square, Suite 2200
`Indianapolis, IN 46204
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`Robert Bosch Healthcare Systems, Inc.
`Attn: Anthony Serventi
`2400 Geng Road, Suite 200
`Palo Alto, CA 94303
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`Litigation Counsel
`Attn: Chris R. Ottenweller
`Orrick, Herrington & Sutcliffe LLP
`1000 Marsh Road
`Menlo Park, CA 94025
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`
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`Date: February 14, 2014
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`Respectfully submitted,
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`/Daniel W. McDonald/
`Daniel W. McDonald (Lead Counsel)
`USPTO Registration No. 32,044
`
`10
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