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Robert Bosch Healthcare Systems, Inc. v. Cardiocom, LLC

United States District Court, N.D. California, San Francisco Division

July 27, 2016

ROBERT BOSCH HEALTHCARE SYSTEMS, INC., Plaintiff,
v.
CARDIOCOM, LLC, Defendant. IPR / Reexam Case No. Patent No. Claims Challenged Status

Date: January 14, 2016

ADAM R. ALPER, KIRKLAND & ELLIS LLP, TIMOTHY G. MAJORS, KIRKLAND & ELLIS LLP, DANIEL W. MCDONALD, WILLIAM D. SCHULTZ, ERIC CHAD, MERCHANT & GOULD P.C. Attorneys for Defendant

BAS DE BLANK, LILLIAN MAO, ORRICK, HERRINGTON & SUTCLIFFE LLP, Attorneys for Plaintiff ROBERT BOSCH HEALTHCARE SYSTEMS, INC.

JOINT SUPPLEMENTAL CASE MANAGEMENT STATEMENT AND [PROPOSED] ORDER

EDWARD M. CHEN UNITED STATES DISTRICT JUDGE.

Pursuant the Court’s June 29, 2015 Order (Dkt. No. 159) and April 5, 2016 Order (Dkt. No. 165), Plaintiff Robert Bosch Healthcare Systems, Inc. (“Bosch”) and Defendant Cardiocom, LLC (“Cardiocom”) hereby supplement their previous joint case management statements (Dkt. Nos. 140, 150, 152, 158, 160) with the current status of the post-grant review proceedings relevant to the Patents-in-Suit:

IPR / Reexam Case No.

Patent No.

Claims Challenged

Status

IPR2013-00468 &

IPR2013-00469

(merged)

7, 516, 192

1-37 (all claims)

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.

90/013, 269

7, 516, 192

1-10, 13-19, 37

Office Action rejecting challenged 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.

IPR2013-00449

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.

90/013, 270

7, 840, 420

1-5 (all claims)

All claims confirmed on June 5, 2015. Reexamination certificate issued on July 22, 2015.

IPR2013-00431

7, 921, 186

1-16 (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.

90/013, 263

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.

IPR2013-00451

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.

90/013, 175

7, 587, 469

1-22 (all claims)

Reexamination certificate issued on December 8, 2015, confirming claims 3 and 4, and canceling claims 1, 2, and 5-22.

90/013, 663

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.

IPR2014-00488

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.

90/013, 167

7, 769, 605

1-9 (all claims)

All claims confirmed on June 2, 2015. Reexamination certificate issued on June 22, 2015.

90/013, 484

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 Nov. 10, 2015. All claims confirmed on March 14, 2016. Reexamination certificate issued on March 30, 2016.

90/013, 527

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.

90/013, 769

7, 769, 605

1-9 (all claims)

Petition filed June 17, 2016. Awaiting USPTO decision on whether to institute reexamination.

90/013, 773

7, 769, 605

1-9 (all claims)

Petition filed June 29, 2016. Reexamination ordered for all claims on July 19, 2016.

IPR2014-00607 (merged with 2014-00691)

7, 870, 249

1, 2, 6-8, 11-13

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.

IPR2014-00691

7, 870, 249

3-5, 9, 10, 14-29

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.

90/013, 262

7, 870, 249

14-18, 20-21, 23-26

Reexamination certificate confirming claims 14-18, 20-21 and cancelling claims 23-26, issued May 22, 2015.

90/013, 493

7, 870, 249

1, 2, 6-8, 10-13

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.

90/013, 647

7, 870, 249

1-13

Reexamination ordered for claims 1-13 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.

90/013, 638

7, 870, 249

1-2, 6-8, 11-13

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.

CASE MANAGEMENT ORDER

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 ...

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IPR / Reexam Case No.	Patent No.	Claims Challenged	Status
IPR2013-00468 & IPR2013-00469 (merged)	7, 516, 192	1-37 (all claims)	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.
90/013, 269	7, 516, 192	1-10, 13-19, 37	Office Action rejecting challenged 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.
IPR2013-00449	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.
90/013, 270	7, 840, 420	1-5 (all claims)	All claims confirmed on June 5, 2015. Reexamination certificate issued on July 22, 2015.
IPR2013-00431	7, 921, 186	1-16 (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.
90/013, 263	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.
IPR2013-00451	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.
90/013, 175	7, 587, 469	1-22 (all claims)	Reexamination certificate issued on December 8, 2015, confirming claims 3 and 4, and canceling claims 1, 2, and 5-22.
90/013, 663	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.
IPR2014-00488	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.
90/013, 167	7, 769, 605	1-9 (all claims)	All claims confirmed on June 2, 2015. Reexamination certificate issued on June 22, 2015.
90/013, 484	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 Nov. 10, 2015. All claims confirmed on March 14, 2016. Reexamination certificate issued on March 30, 2016.
90/013, 527	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.
90/013, 769	7, 769, 605	1-9 (all claims)	Petition filed June 17, 2016. Awaiting USPTO decision on whether to institute reexamination.
90/013, 773	7, 769, 605	1-9 (all claims)	Petition filed June 29, 2016. Reexamination ordered for all claims on July 19, 2016.
IPR2014-00607 (merged with 2014-00691)	7, 870, 249	1, 2, 6-8, 11-13	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.
IPR2014-00691	7, 870, 249	3-5, 9, 10, 14-29	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.
90/013, 262	7, 870, 249	14-18, 20-21, 23-26	Reexamination certificate confirming claims 14-18, 20-21 and cancelling claims 23-26, issued May 22, 2015.
90/013, 493	7, 870, 249	1, 2, 6-8, 10-13	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.
90/013, 647	7, 870, 249	1-13	Reexamination ordered for claims 1-13 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.
90/013, 638	7, 870, 249	1-2, 6-8, 11-13	Reexamination request filed on Nov. 23, 2015. Request denied on Dec. 17, 2015. Reexamination terminated on February 18, 2016 and no claims were cancelled.