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 LILLIAN MAO
`
`
`
`_____________________
`
`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 LILLIAN MAO
`
`
`
`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
`
`Lillian Mao 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 Order, at 2.
`1
`
`
`
`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 Lillian
`
`Mao (BOSCH 2013) submitted herewith, Patent Owner Bosch
`
`requests the pro hac vice admission of Lillian Mao in this proceeding.
`
`1.
`
`Robert Bosch Healthcare Systems, Inc.’s lead counsel, Don
`
`Daybell, is a registered practitioner (Reg. No. 50,877).
`
`2.
`
`Ms. Mao is an associate at the law firm of Orrick Herrington &
`
`Sutcliffe LLP. (BOSCH 2013 ¶ 3)
`
`3.
`
`Ms. Mao is an experienced litigating attorney and has been a
`
`litigating attorney for more than 4 (four) years. (Id.,¶ 3). Ms.
`
`Mao has been litigating patent cases for over 4 (four) years.
`
`(Id., ¶ 4).
`
`4.
`
`Ms. Mao has established familiarity with the subject matter at
`
`issue in this proceeding. (Id., ¶ 6). Ms. Mao has litigated
`
`patent cases in the area of computerized information systems
`
`3
`
`
`
`since 2010 (Id., ¶ 5). She has become familiar with U.S. Patent
`
`No. 7,587,469 (the “’469 Patent”) and with its prosecution file
`
`history. (Id., ¶ 6). She 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.
`
`Ms. Mao 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, Ms.
`
`Mao has been actively involved in all aspects of its district
`
`court litigation. (Id.).
`
`6.
`
`In addition, Ms. Mao is counsel for Bosch in another district
`
`court litigation against Cardiocom, captioned Robert Bosch
`
`Healthcare Systems, Inc. v. Cardiocom, LLC, Case No. 5:12-
`
`CV-3864-EJD (N.D. Cal.). That litigation involves U.S. Patent
`
`Nos. 6,368,273; 6,968,375; 7,252,636; and 8,140,663 which are
`
`related to the patent at issue, and U.S. Patent Nos. 7,941,327
`
`4
`
`
`
`and 8,015,025, which involve similar computerized information
`
`systems technology as the ‘469 Patent. (Id., ¶ 7).
`
`7.
`
`Ms. Mao is a member in good standing of the State Bar of
`
`California. (Id., ¶ 8).
`
`8.
`
`Ms. Mao has never been suspended or disbarred from practice
`
`before any court or administrative body. (Id., ¶ 9).
`
`9.
`
`No application of Ms. Mao for admission to practice before any
`
`court or administrative body has ever been denied. (Id., ¶ 10).
`
`10. No sanctions or contempt citations have ever been imposed
`
`against Ms. Mao by any court or administrative body. (Id.,
`
`¶ 11).
`
`11. Ms. Mao 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., ¶ 12).
`
`12. Ms. Mao understands that she 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., ¶ 13).
`
`13. Ms. Mao is currently admitted to appear pro hac vice in the
`
`following related Bosch proceedings: (IPR 2013-00431,
`
`5
`
`
`
`IPR2013-00449, IPR2013-00451 and IPR2013-00468). (Id., ¶
`
`14). She has applied to appear pro hac vice but has not yet
`
`been admitted in the related proceeding IPR2014-00691. She is
`
`concurrently applying to appear pro hac vice before the Office
`
`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 MS. LILLIAN MAO 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 Ms.
`
`Mao’s Affidavit, good cause exists to admit Ms. Mao pro hac vice in this
`
`proceeding.
`
`As supported by her Affidavit, Ms. Mao is an experienced litigating attorney
`
`with over 4 (four) years of patent litigation experience. Ms. Mao also has an
`
`established familiarity with the subject matter at issue in this proceeding, as she is
`
`Bosch’s counsel in co-pending district court litigation involving the same patent at
`
`issue in this proceeding, and several related patents.
`
`6
`
`
`
`As counsel for Bosch, Ms. Mao 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 Ms. Mao’s knowledge of the subject matter at issue in this proceeding,
`
`and in view of the interrelatedness of this proceeding and the co-pending district
`
`court litigation, Patent Owner Bosch has a substantial need for Ms. Mao’s pro hac
`
`vice admission and involvement in this proceeding. In addition, admission of Ms.
`
`Mao 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 Ms. Mao’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 Ms. Mao substantially outweighs any potential
`
`prejudice to Petitioner Medtronic.
`
`V. CONCLUSION
`
`For the foregoing reasons, Bosch respectfully requests that Ms. Mao be
`
`admitted pro hac vice in this proceeding.
`
`7
`
`
`
`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).
`
`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 LILLIAN MAO,” “AFFIDAVIT OF LILLIAN MAO” and
`“PATENT OWNER’S EXHIBIT LIST” were served in their entirety on June 18,
`2014, upon the following parties via electronic service:
`
`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
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
