Robert Bosch Healthcare Systems, Inc. v. CardioCom, LLC et al

Filing 167

ORDER resetting Further Case Management Conference from 7/28/2016 to 10/20/2016 10:30 AM in Courtroom 5, 17th Floor, San Francisco. Case Management Statement due by 10/13/2016.. Signed by Judge Edward M. Chen on 7/27/16. (bpfS, COURT STAFF) (Filed on 7/27/2016)

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ADAM R. ALPER (S.B.N. 196834)
KIRKLAND & ELLIS LLP
555 California Street
San Francisco, California 94104
Telephone: [phone]
Facsimile: [phone]
[e-mail]
TIMOTHY G. MAJORS (S.B.N. 228275)
KIRKLAND & ELLIS LLP
333 South Hope Street
Los Angeles, California 90071
Telephone: [phone]
Facsimile: [phone]
[e-mail]

BAS DE BLANK (S.B.N. 191487)
[e-mail]
LILLIAN MAO (S.B.N. 267410)
[e-mail]
ORRICK, HERRINGTON & SUTCLIFFE LLP
100 Marsh Road
Menlo Park, California 94025
Telephone: [phone]
Facsimile: [phone]
Attorneys for Plaintiff
ROBERT BOSCH HEALTHCARE SYSTEMS,
INC.

DANIEL W. MCDONALD (Pro Hac Vice)
[e-mail]
WILLIAM D. SCHULTZ (Pro Hac Vice)
[e-mail]
ERIC CHAD (Pro Hac Vice)
[e-mail]
MERCHANT & GOULD P.C.
3200 IDS Center
80 South Eighth Street
Minneapolis, Minnesota 55402-2215
Telephone: [phone]
Facsimile: [phone]

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Attorneys for Defendant CARDIOCOM,
LLC

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN FRANCISCO DIVISION

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ROBERT BOSCH HEALTHCARE
SYSTEMS, INC.,
Plaintiff,

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v.
CARDIOCOM, LLC,
Defendant.

Case No. 3:14-cv-01575-EMC
JOINT SUPPLEMENTAL CASE
MANAGEMENT STATEMENT AND
[PROPOSED] ORDER
Date:
Time:
Dept:
Judge:

January 14, 2016
9:30 A.M.
5
Edward M. Chen

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JOINT SUPPLEMENTAL CASE MANAGEMENT
STATEMENT & [PROPOSED] ORDER
CASE NO. 3:14-CV-01575-EMC

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Pursuant the Court’s June 29, 2015 Order (Dkt. No. 159) and April 5, 2016 Order (Dkt.

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No. 165), Plaintiff Robert Bosch Healthcare Systems, Inc. (“Bosch”) and Defendant Cardiocom,

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LLC (“Cardiocom”) hereby supplement their previous joint case management statements (Dkt.

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Nos. 140, 150, 152, 158, 160) with the current status of the post-grant review proceedings

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relevant to the Patents-in-Suit:

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IPR / Reexam
Case No.
IPR2013-00468 &
IPR2013-00469
(merged)

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90/013,269

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IPR2013-00449

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90/013,270

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IPR2013-00431
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90/013,263

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IPR2013-00451

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OHSUSA:765482965.4

Patent
Claims
No.
Challenged
7,516,192 1-37 (all
claims)

Status

Final decision issued Jan. 27, 2015.
All challenged claims cancelled.
Bosch appealed and the Federal
Circuit affirmed the PTAB’s decision
in Rule 36 Judgment on June 29, 2016.
7,516,192 1-10, 13-19,
Office Action rejecting challenged
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claims mailed May 19, 2015. Bosch
filed Notice of Appeal on July 2, 2015.
Bosch filed Reply Brief and Request
for Oral Hearing on December 21,
2015. Bosch waived Oral Hearing on
July 8, 2016.
7,840,420 1-5 (all claims) Final decision issued Jan. 15, 2015.
All challenged claims cancelled.
Bosch appealed and the Federal
Circuit affirmed the PTAB’s decision
in Rule 36 Judgment on June 29, 2016.
7,840,420 1-5 (all claims) All claims confirmed on June 5, 2015.
Reexamination certificate issued on
July 22, 2015.
7,921,186 1-16 (all
Final decision issued Jan. 15, 2015.
claims)
All challenged claims cancelled.
Bosch appealed and the Federal
Circuit affirmed the PTAB’s decision
in Rule 36 Judgment on June 29, 2016.
7,921,186 1-8
Final Office Action rejecting
challenged claims mailed April 15,
2015. Bosch filed Notice of Appeal
on Sept. 15, 2015 and Appeal Brief on
Nov. 16, 2015. Examiner filed
Answer to Appeal Brief on December
1, 2015. Bosch waived Oral Hearing
on July 8, 2016.
7,587,469 1, 2, 5-10
Final decision issued Jan. 15, 2015.
All challenged claims cancelled.
Bosch filed Notice of Appeal on Mar.
18, 2015. Bosch filed motion to
terminate appeal. The Federal Circuit
granted the motion to dismiss appeal
on July 24, 2015.
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JOINT SUPPLEMENTAL CASE MANAGEMENT
STATEMENT & [PROPOSED] ORDER
CASE NO. 14-CV-01575 EMC

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IPR / Reexam
Case No.
90/013,175

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90/013,663

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IPR2014-00488

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90/013,167

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90/013,484

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OHSUSA:765482965.4

Patent
Claims
No.
Challenged
7,587,469 1-22 (all
claims)

Status

Reexamination certificate issued on
December 8, 2015, confirming claims
3 and 4, and canceling claims 1, 2, and
5-22.
7,587,469 3
Reexamination request filed on Dec.
21, 2015, pending decision by Office.
The USPTO mailed a non-final Office
Action rejecting claim 3 on May 18,
2016.
7,769,605 1-9 (all claims) IPR Instituted on all claims Sept.
2014.
Terminated on Bosch’s Motion to
Terminate for Petitioner’s Failure to
Name all Real Parties in Interest on
March 16, 2015. Request for
Rehearing denied May 22, 2015.
Medtronic filed Notice of Appeal on
July 23, 2015. Federal Circuit granted
Bosch’s motion to dismiss appeal on
Nov. 17, 2015. Medtronic filed
petition for en banc rehearing on Dec.
17, 2015. Federal Circuit sua sponte
recalled its dismissal mandate on June
30, 2016. Federal Circuit ordered
additional briefing on July 1, 2016.
Medtronic also filed suit against
Michelle K. Lee, Director of the
United States Patent and Trademark
Office in the District Court for the
Eastern District of Virginia.
Medtronic sought an order requiring
the PTO to reinstitute the terminated
IPR. The District Court for the E.D.
Virginia dismissed case. Medtronic
appealed the dismissal to the Federal
Circuit requesting initial en banc
review. Briefing suspended by the
Federal Circuit Feb. 22. 2016.
7,769,605 1-9 (all claims) All claims confirmed on June 2, 2015.
Reexamination certificate issued on
June 22, 2015.
7,769,605 1-9 (all claims) Reexamination ordered on all claims
June 9, 2015. First office action
issued on Sept. 10, 2015, rejecting all
claims. Bosch submitted response on
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JOINT SUPPLEMENTAL CASE MANAGEMENT
STATEMENT & [PROPOSED] ORDER
CASE NO. 14-CV-01575 EMC

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IPR / Reexam
Case No.

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90/013,527

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90/013,769

90/013,773

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IPR2014-00607
(merged with 201400691)

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Patent
No.

Claims
Challenged

Status

Nov. 10, 2015. All claims confirmed
on March 14, 2016. Reexamination
certificate issued on March 30, 2016.
7,769,605 1-9 (all claims) Petition filed June 12, 2015.
Reexamination denied on Aug. 12,
2015. Petition for review of
reexamination denial filed on Sept. 14,
2015. The USPTO denied review of
denial on January 15, 2016 and no
claim was cancelled.
7,769,605 1-9 (all claims) Petition filed June 17, 2016. Awaiting
USPTO decision on whether to
institute reexamination.
7,769,605 1-9 (all claims) Petition filed June 29, 2016.
Reexamination ordered for all claims
on July 19, 2016.
7,870,249 1, 2, 6-8, 11Terminated on Bosch’s Motion to
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Terminate for Petitioner’s Failure to
Name all Real Parties in Interest on
March 16, 2015. Request for
Rehearing denied May 22, 2015.
Medtronic filed Notice of Appeal on
July 23, 2015. Federal Circuit granted
Bosch’s motion to dismiss appeal on
Nov. 17, 2015. Medtronic filed
petition for en banc rehearing on Dec.
17, 2015. Federal Circuit sua sponte
recalled its dismissal mandate on June
30, 2016. Federal Circuit ordered
additional briefing on July 1, 2016.
Medtronic also filed suit against
Michelle K. Lee, Director of the
United States Patent and Trademark
Office in the District Court for the
Eastern District of Virginia.
Medtronic sought an order requiring
the PTO to reinstitute the terminated
IPR. The District Court for the E.D.
Virginia dismissed case. Medtronic
appealed the dismissal to the Federal
Circuit requesting initial en banc
review. Federal Circuit suspended
briefing on Feb. 22, 2016.

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OHSUSA:765482965.4

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JOINT SUPPLEMENTAL CASE MANAGEMENT
STATEMENT & [PROPOSED] ORDER
CASE NO. 14-CV-01575 EMC

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IPR / Reexam
Case No.
IPR2014-00691

Patent
Claims
No.
Challenged
7,870,249 3-5, 9, 10, 1429

90/013,262

7,870,249 14-18, 20-21,
23-26

90/013,493

7,870,249 1, 2, 6-8, 1013

90/013,647

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7,870,249 1-13

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OHSUSA:765482965.4

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Status
Terminated on Bosch’s Motion to
Terminate for Petitioner’s Failure to
Name all Real Parties in Interest on
March 16, 2015. Request for
Rehearing denied May 22, 2015.
Medtronic filed Notice of Appeal on
July 23, 2015. Federal Circuit granted
Bosch’s motion to dismiss appeal on
Nov. 17, 2015. Medtronic filed
petition for en banc rehearing on Dec.
17, 2015. Federal Circuit sua sponte
recalled its dismissal mandate on June
30, 2016. Federal Circuit ordered
additional briefing on July 1, 2016.
Medtronic also filed suit against
Michelle K. Lee, Director of the
United States Patent and Trademark
Office in the District Court for the
Eastern District of Virginia.
Medtronic sought an order requiring
the PTO to reinstitute the terminated
IPR. The District Court for the E.D.
Virginia dismissed case. Medtronic
appealed the dismissal to the Federal
Circuit requesting initial en banc
review. Federal Circuit suspended
briefing on Feb. 22, 2016.
Reexamination certificate confirming
claims 14-18, 20-21 and cancelling
claims 23-26, issued May 22, 2015.
Reexamination ordered for claims 1, 2,
6-8, and 10-13 on June 3, 2015. First
office action issued on Aug. 20, 2015,
rejecting challenged claims. Bosch
filed response and terminal disclaimer
on Oct. 20, 2015. Terminal disclaimer
approved on Oct. 21, 2015. Non-final
rejection mailed February 25, 2016.
Bosch filed response on May 25, 2016.
Proceeding merged with 90/013,647
on July 8, 2016.
Reexamination ordered for claims 113 on January 20, 2016. Non-final
rejection mailed April 7, 2016. Bosch
filed response on June 21, 2016.
Proceeding merged with 90/013,493
on July 8, 2016.
JOINT SUPPLEMENTAL CASE MANAGEMENT
STATEMENT & [PROPOSED] ORDER
CASE NO. 14-CV-01575 EMC

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IPR / Reexam
Case No.
90/013,638

Patent
Claims
No.
Challenged
7,870,249 1-2, 6-8, 11-13

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Status
Reexamination request filed on Nov.
23, 2015. Request denied on Dec. 17,
2015. Reexamination terminated on
February 18, 2016 and no claims were
cancelled.

Bosch may seek rehearing, en banc review, or certiorari of the Federal Circuit’s
decisions with respect to the ‘192, ‘186, and ‘420 Patents. Therefore, the parties respectfully
request that the Court take the Case Management Conference off the calendar and allow the
parties to file a supplemental status report on October 11, 2016 informing the Court whether
Bosch has appealed or sought review of the Federal Circuit’s decision.

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OHSUSA:765482965.4

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JOINT SUPPLEMENTAL CASE MANAGEMENT
STATEMENT & [PROPOSED] ORDER
CASE NO. 14-CV-01575 EMC

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Dated: July 21, 2016

Respectfully submitted,

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By: /s/ Bas de Blank
Bas de Blank, Bar No. 191487
[e-mail]
ORRICK, HERRINGTON & SUTCLIFFE LLP
1000 Marsh Road
Menlo Park, California 94025
Telephone: [phone]
Facsimile: [phone]

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Attorneys for Plaintiff
ROBERT BOSCH HEALTHCARE SYSTEMS, INC.

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Dated: July 21, 2016
By: /s/ William D. Schultz w/ permission Bas de Blank
William D. Schultz
[e-mail]
MERCHANT & GOULD P.C.
3200 ids Center
80 S. Eighth Street
Minneapolis, MN 55402-2215
Telephone: [phone]
Facsimile: [phone]

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Attorneys for Defendant
CARDIOCOM, LLC

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IT IS SO ORDERED that the Further CMC
is reset for 10/20/16 at 10:30 a.m. An
updated joint CMC Statement shall be filed
by 10/13/16.
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OHSUSA:765482965.4

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JOINT SUPPLEMENTAL CASE MANAGEMENT
STATEMENT & [PROPOSED] ORDER
CASE NO. 14-CV-01575 EMC

CASE MANAGEMENT ORDER

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The above JOINT SUPPLEMENTAL CASE MANAGEMENT STATEMENT AND
[PROPOSED] ORDER is approved as the Case Management Order for this case and all parties
shall comply with its provisions. [In addition, the Court makes the further orders stated below:]

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IT IS SO ORDERED.
Dated:

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JUDGE EDWARD M. CHEN
UNITED STATES DISTRICT JUDGE

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OHSUSA:765482965.4

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JOINT SUPPLEMENTAL CASE MANAGEMENT
STATEMENT & [PROPOSED] ORDER
CASE NO. 14-CV-01575 EMC