`
`_____________________
`
`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
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`under 37 C.F.R. § 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 IPR2013-00639,
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`Paper No. 7 (MPT) (“Pro Hac Vice Order”). Filing Date Notice, Paper No. 7, at 2.
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`In accordance with the Pro Hac Vice Order, this motion is being filed no sooner
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`than twenty-one (21) days after service of the petition. Pro Hac Vice Order, at 2.
`1
`
`
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`The Filing Date Notice authorizes the parties to file motions for pro hac vice
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`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
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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. 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;
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`iii. No application for admission to practice before any court or
`
`administrative body ever denied;
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`iv. No sanctions or contempt citations imposed by any court or
`
`administrative body;
`
`v.
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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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`vi.
`
`The individual will be subject to the USPTO Code of
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`Professional Responsibility set forth in 37 C.F.R. §§ 10.20 et
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`seq. and disciplinary jurisdiction under 37 C.F.R. §§ 11.19(a);
`
`2
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`
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`vii. 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.
`
`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.
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`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.
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`Mao has been litigating patent cases for over 4 (four) years.
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`(Id., ¶ 4).
`
`4.
`
`Ms. Mao has established familiarity with the subject matter at
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`issue in this proceeding. (Id., ¶ 6). Ms. Mao has litigated
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`patent cases in the area of computerized information systems
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`3
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`
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`since 2010 (Id., ¶ 5). She has become familiar with U.S. Patent
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`No. 7,587,469 (the “’469 Patent”) and with its prosecution file
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`history. (Id., ¶ 6). She also has an in-depth familiarity with
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`Bosch’s related U.S. Patent Nos. 7,516,192; 7,769,605;
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`7,840,420; 7,870,249; 7,921,186, and their file histories. (Id.).
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`5.
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`Ms. Mao is counsel for Bosch in a co-pending district court
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`litigation against Petitioner's predecessor in interest, Cardiocom
`
`LLC (“Cardiocom”). That litigation is captioned Robert Bosch
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`Healthcare Systems, Inc. v. Cardiocom, LLC, Civil Action No.
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`3:14-cv-01575-EMC (N.D. Cal.), and involves the same patent
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`at issue in this proceeding. (Id.). As counsel for Bosch, Ms.
`
`Mao has been actively involved in all aspects of its district
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`court litigation. (Id.).
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`6.
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`In addition, Ms. Mao is counsel for Bosch in another district
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`court litigation against Cardiocom, captioned Robert Bosch
`
`Healthcare Systems, Inc. v. Cardiocom, LLC, Case No. 5:12-
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`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
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`related to the patent at issue, and U.S. Patent Nos. 7,941,327
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`4
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`
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`and 8,015,025, which involve similar computerized information
`
`systems technology as the ‘469 Patent. (Id., ¶ 7).
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`7.
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`Ms. Mao is a member in good standing of the State Bar of
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`California. (Id., ¶ 8).
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`8.
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`Ms. Mao has never been suspended or disbarred from practice
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`before any court or administrative body. (Id., ¶ 9).
`
`9.
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`No application of Ms. Mao for admission to practice before any
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`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
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`Practice Guide and the Board’s Rules of Practice for Trials set
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`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
`
`
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`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
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`concurrently applying to appear pro hac vice before the Office
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`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
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`established familiarity with the subject matter at issue in this proceeding, as she is
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`Bosch’s counsel in co-pending district court litigation involving the same patent at
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`issue in this proceeding, and several related patents.
`
`6
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`
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`As counsel for Bosch, Ms. Mao has been actively involved in all aspects of
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`its district court litigation involving the patent at issue here and the related patents.
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`In view of Ms. Mao’s knowledge of the subject matter at issue in this proceeding,
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`and in view of the interrelatedness of this proceeding and the co-pending district
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`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
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`of work between this proceeding and its district court litigation. See 77 Fed. Reg.
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`157 (Aug. 14, 2012), at 48661 (Office’s comment on final rule discussing concerns
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`about efficiency and costs where an entity has already engaged counsel for parallel
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`district court litigation). Given Ms. Mao’s experience with the involved patent and
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`parties, and Patent Owner Bosch’s desire to be represented by the counsel of its
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`choice, the need for admission of Ms. Mao substantially outweighs any potential
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`prejudice to Petitioner Medtronic.
`
`V. CONCLUSION
`
`For the foregoing reasons, Bosch respectfully requests that Ms. Mao be
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`admitted pro hac vice in this proceeding.
`
`7
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`
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`The Patent Trial and Appeal Board is hereby authorized to charge any fees
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`associated with this filing to Deposit Account 15-0665 (Customer ID No. 34313).
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`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
`
`