UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________
`
`MEDTRONIC, LLC.
`Petitioner
`v.
`ROBERT BOSCH HEALTHCARE SYSTEMS, INC.
`Patent Owner
`_____________________
`CASE: IPR2014-00436
`Patent No. 7,587,469
`_____________________
`
`ROBERT BOSCH HEALTHCARE SYSTEMS, INC.’S
`MOTION FOR PRO HAC VICE
`ADMISSION OF SIDDHARTHA VENKATESAN
`
`
`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________
`
`MEDTRONIC, LLC.
`Petitioner
`v.
`ROBERT BOSCH HEALTHCARE SYSTEMS, INC.
`Patent Owner
`_____________________
`CASE: IPR2014-00436
`Patent No. 7,587,469
`_____________________
`
`ROBERT BOSCH HEALTHCARE SYSTEMS, INC.’S
`MOTION FOR PRO HAC VICE
`ADMISSION OF SIDDHARTHA VENKATESAN
`
`
`
`I. RELIEF REQUESTED
`
`Pursuant to 37 C.F.R. § 42.10 (c), Patent Owner, Robert Bosch Healthcare
`
`Systems, Inc., (“Bosch”) respectfully requests the pro hac vice admission of
`
`Siddhartha Venkatesan in this proceeding.
`
`II. GOVERNING LAWS, RULES AND PRECEDENT
`
`Section 42.10(c) states as follows:
`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 Board’s Notice of Filing Date Accorded to Petition, Paper No. 7 in this
`
`proceeding (“Filing Date Notice”), states that motions for pro hac vice admission
`
`under 37 C.F.R. § 42.10(c) must be filed in accordance with the “Order –
`
`Authorizing Motion for Pro Hac Vice Admission” entered in Case IPR2013-
`
`00639, Paper No. 7 (MPT)” (“Pro Hac Vice Order”). Filing Date Notice, Paper
`
`No. 7, at 2. In accordance with the Pro Hac Vice Order, this motion is being filed
`
`no sooner than twenty-one (21) days after service of the petition. Pro Hac Vice
`1
`
`
`
`Order, at 2. The Filing Date Notice authorizes the parties to file motions for pro
`
`hac vice admission in this proceeding. Filing Date Notice, Paper No. 7, at 2.
`
`The Pro Hac Vice Order requires that such motions (1) “[c]ontain a
`
`statement of facts showing there is good cause for the Board to recognize counsel
`
`pro hac vice during the proceeding,” and (2) “[b]e accompanied by an affidavit or
`
`declaration of the individual seeking to appear attesting to the following:
`
`i. Membership in good standing of the Bar of at least one State or
`
`District of Columbia;
`
`ii. No suspensions or disbarments from practice before any court
`
`or administrative body;
`
`iii. No application for admission to practice before any court or
`
`administrative body ever denied;
`
`iv. No sanctions or contempt citations imposed by any court or
`
`administrative body;
`
`v.
`
`The individual seeking to appear 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 the C.F.R.;
`
`vi.
`
`The individual will be subject to the USPTO Code of
`
`Professional Responsibility set forth in 37 C.F.R. §§ 10.20 et
`
`seq. and disciplinary jurisdiction under 37 C.F.R. §§ 11.19(a);
`
`2
`
`
`
`vii. All other proceedings before the Office for which the individual
`
`has applied to appear pro hac vice in the last three (3) years;
`
`and
`
`viii.
`
`Familiarity with the subject matter at issue in the proceeding.”
`
`Pro Hac Vice Order, at 3-4.
`
`III.
`
`STATEMENT OF FACTS
`
`Based on the following facts, and supported by the Affidavit of Siddhartha
`
`Venkatesan (BOSCH 2012) submitted herewith, Patent Owner Bosch requests the
`
`pro hac vice admission of Siddhartha Venkatesan in this proceeding.
`
`1.
`
`Robert Bosch Healthcare Systems, Inc.’s lead counsel, Don
`
`Daybell, is a registered practitioner (Reg. No. 50,877).
`
`2.
`
`Mr. Venkatesan is a partner at the law firm of Orrick
`
`Herrington & Sutcliffe LLP. (BOSCH 2012 ¶ 3)
`
`3.
`
`Mr. Venkatesan is an experienced litigating attorney and has
`
`been a litigating attorney for more than nine years. (Id.,¶ 3).
`
`Mr. Venkatesan has been litigating patent cases for over nine
`
`years. (Id., ¶ 4).
`
`4.
`
`Mr. Venkatesan has established familiarity with the subject
`
`matter at issue in this proceeding. (Id., ¶ 6). Mr. Venkatesan
`
`has previously litigated patent cases in the area of computerized
`
`3
`
`
`
`information systems (Id., ¶ 5). He has become familiar with
`
`U.S. Patent No. 7,587,469 (the “‘469 Patent”) and with its
`
`prosecution file history. (Id., ¶ 6). He also has an in-depth
`
`familiarity with Bosch’s related U.S. Patent Nos. 7,516,192;
`
`7,769,605; 7,840,420; 7,870,249; 7,921,186, and their file
`
`histories. (Id.).
`
`5.
`
`Mr. Venkatesan is counsel for Bosch in a co-pending district
`
`court
`
`litigation against Petitioner's predecessor
`
`in interest,
`
`Cardiocom LLC (“Cardiocom”). That litigation is captioned
`
`Robert Bosch Healthcare Systems, Inc. v. Cardiocom, LLC,
`
`Civil Action No. 3:14-cv-01575-EMC (N.D. Cal.), and involves
`
`the same patent at issue in this proceeding. (Id.). As counsel for
`
`Bosch, Mr. Venkatesan has been actively involved in all aspects
`
`of its district court litigation. (Id.).
`
`6.
`
`Mr. Venkatesan is a member in good standing of the State Bar
`
`of California. (Id., ¶ 7).
`
`7.
`
`Mr. Venkatesan has never been suspended or disbarred from
`
`practice before any court or administrative body. (Id., ¶ 8).
`
`4
`
`
`
`8.
`
`No application of Mr. Venkatesan for admission to practice
`
`before any court or administrative body has ever been denied.
`
`(Id., ¶ 9).
`
`9.
`
`No sanctions or contempt citations have ever been imposed
`
`against Mr. Venkatesan by any court or administrative body.
`
`(Id., ¶ 10).
`
`10. Mr. Venkatesan 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 the Code of Federal Regulators.
`
`(Id., ¶ 11).
`
`11. Mr. Venkatesan understands that he will be subject to the
`
`USPTO Code of Professional Responsibility set forth in
`
`37 C.F.R. §§ 10.20 et seq. and disciplinary jurisdiction under
`
`37 C.F.R. §§ 11.19(a). (Id., ¶ 12).
`
`12. Mr. Venkatesan is currently admitted to appear pro hac vice in
`
`the following related Bosch proceedings: (IPR 2013-00431,
`
`IPR2013-00449, IPR2013-00451 and IPR2013-00468). (Id., ¶
`
`13). He has applied to appear pro hac vice but has not yet been
`
`admitted in the related proceeding IPR2014-00691. He is
`
`concurrently applying to appear pro hac vice before the Office
`
`5
`
`
`
`in inter partes review nos. IPR2014-00488 and IPR2014-
`
`00607, both of which are related proceedings.
`
`IV. GOOD CAUSE EXISTS FOR THE EXPEDITED PRO HAC
`VICE ADMISSION OF MR. SIDDHARTHA VENKATESAN IN
`THIS PROCEEDING
`
`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). Robert Bosch Healthcare Systems, Inc.’s lead counsel, Don Daybell, is
`
`a registered practitioner. Based on the facts contained herein, as supported by Mr.
`
`Venkatesan’s Affidavit, good cause exists to admit Mr. Venkatesan pro hac vice in
`
`this proceeding.
`
`As supported by his Affidavit, Mr. Venkatesan is an experienced litigating
`
`attorney with over nine years of patent litigation experience. Mr. Venkatesan also
`
`has an established familiarity with the subject matter at issue in this proceeding, as
`
`he is Bosch’s counsel in co-pending district court litigation involving the same
`
`patent at issue in this proceeding, and several related patents.
`
`As counsel for Bosch, Mr. Venkatesan has been actively involved in all
`
`aspects of its district court litigation involving the patent at issue here and the
`
`related patents.
`
`In view of Mr. Venkatesan’s knowledge of the subject matter at
`
`issue in this proceeding, and in view of the interrelatedness of this proceeding and
`
`6
`
`
`
`the co-pending district court litigation, Patent Owner Bosch has a substantial need
`
`for Mr. Venkatesan’s pro hac vice admission and involvement in this proceeding.
`
`In addition, admission of Mr. Venkatesan pro hac vice will enable Bosch to avoid
`
`unnecessary expense and duplication of work between this proceeding and its
`
`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
`
`entity has already engaged counsel for parallel district court litigation). Given Mr.
`
`Venkatesan’s experience with the involved patent and parties, and Patent Owner
`
`Bosch’s desire to be represented by the counsel of its choice, the need for
`
`admission of Mr. Venkatesan substantially outweighs any potential prejudice to
`
`Petitioner Medtronic.
`
`V. CONCLUSION
`
`For the foregoing reasons, Bosch respectfully requests that Mr. Venkatesan
`
`be admitted pro hac vice in this proceeding.
`
`The Patent Trial and Appeal Board is hereby authorized to charge any fees
`
`associated with this filing to Deposit Account 15-0665 (Customer ID No. 34313).
`
`7
`
`
`
`Dated: June 18, 2014
`
`Respectfully submitted,
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`
`By: /Don Daybell/
`Don Daybell, Reg. No. 50,877
`Attorney for Patent Owner Robert Bosch
`Healthcare Systems, Inc.
`
`8
`
`
`
`APPENDIX A
`PATENT OWNER’S EXHIBIT LIST
`
`Exhibit No.
`
`Description
`
`Filed
`
`BOSCH 2001
`
`Comparison of Stone Declaration
`
`BOSCH 2002
`
`2014.01.16 (23) PTAB Decision
`Granting Petition for IPR for the ‘469
`Patent
`
`BOSCH 2003
`
`154 Cong. Rec. S9988
`
`BOSCH 2004
`
`Dr. David Declaration (IPR2013-00451)
`
`BOSCH 2005
`
`2013.10.24 - 10 Bosch PO Preliminary
`Response regarding the ‘469 Patent
`
`BOSCH 2006
`
`2014.01.16 – 22 PTAB Decision
`Granting Petition for IPR for the ‘186
`Patent
`
`BOSCH 2007
`
`2014.01.28 – 22 PTAB Order Granting
`Petition for the ‘192 (Claims 1-19)
`
`BOSCH 2008
`
`2013.10.18 – Bosch PO Preliminary
`Response regarding the ‘186 Patent
`
`BOSCH 2009
`
`Cardio Ex. 1008 – 2013.07.16
`Declaration of Robert Stone regarding
`the 469 Patent
`
`9
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`
`
`Exhibit No.
`
`Description
`
`Filed
`
`BOSCH 2010
`
`Dr. Stone Depo
`
`BOSCH 2011
`
`Affidavit of Bas de Blank
`
`BOSCH 2012
`
`Affidavit of Siddhartha Venkatesan
`
`BOSCH 2013
`
`Affidavit of Lillian Mao
`
`X
`
`X
`
`X
`
`X
`
`10
`
`
`
`CERTIFICATION OF SERVICE (37 C.F.R. § 42.6(e))
`The undersigned hereby certifies that the above-captioned “ROBERT BOSCH
`HEALTHCARE SYSTEMS, INC.’S MOTION FOR PRO HAC VICE
`ADMISSION OF SIDDHARTHA VENKATESAN,” “AFFIDAVIT OF
`SIDDHARTHA VENKATESAN” and “PATENT OWNER’S EXHIBIT LIST”
`were served in their entirety on June 18, 2014, upon the following parties via
`electronic mail:
`
`Counsel for Petitioner
`
`Daniel W. McDonald
`Andrew J. Lagatta
`Merchant & Gould
`80 South 8th St., Suite 3200
`Minneapolis, MN 55402
`CardiocomIPR@merchantgould.com
`
`By:
`
`/Karen Johnson/
`Karen Johnson
`
`11
`
`
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