Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 23
`Entered: January 16, 2013
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`CARDIOCOM, LLC
`Petitioner
`
`v.
`
`ROBERT BOSCH HEALTHCARE SYSTEMS, INC.
`Patent Owner
`
`____________
`
`Case IPR2013-00451
`Patent 7,587,469 B2
`
`
`
`
`
`Before STEPHEN C. SIU, JUSTIN T. ARBES, and MIRIAM L. QUINN,
`Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`571-272-7822
`
`
`
`Paper 23
`Entered: January 16, 2013
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`CARDIOCOM, LLC
`Petitioner
`
`v.
`
`ROBERT BOSCH HEALTHCARE SYSTEMS, INC.
`Patent Owner
`
`____________
`
`Case IPR2013-00451
`Patent 7,587,469 B2
`
`
`
`
`
`Before STEPHEN C. SIU, JUSTIN T. ARBES, and MIRIAM L. QUINN,
`Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`Case IPR2013-00451
`Patent 7,587,469 B2
`
`
`Cardiocom, LLC (“Petitioner”) filed a Petition to institute an inter
`
`partes review of claims 1-22 of Patent 7,587,469 B2 (“the ’469 patent”)
`
`pursuant to 35 U.S.C. §§ 311-319. Paper 1. Robert Bosch Healthcare
`
`Systems, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 10.
`
`We have jurisdiction under 35 U.S.C. § 314.
`
`I.
`
`BACKGROUND
`
`The standard for instituting an inter partes review is set forth in 35
`
`U.S.C. § 314(a), which provides as follows:
`
`THRESHOLD – The Director may not authorize an inter
`partes review
`to be
`instituted unless
`the Director
`determines that the information presented in the petition
`filed under section 311 and any response filed under
`section 313 shows that there is a reasonable likelihood
`that the petitioner would prevail with respect to at least 1
`of the claims challenged in the petition.
`
`Petitioner asserts that claims 1-22 (“the challenged claims”) are
`
`unpatentable under 35 U.S.C. § 103 over (1) the combination of Cohen1 and
`
`Wahlquist,2 and (2) the combination of Cohen, Wahlquist, Neumann,3 and
`
`Jacobs.4
`
`We determine that, based on the record before us, there is a reasonable
`
`likelihood that Petitioner will prevail in establishing the unpatentability of
`
`claims 1, 2, and 5-10. Accordingly, we grant the Petition for inter partes
`
`
`
`
` 1
`
` U.S. Patent No. 6,014,626 (Ex. 1002) (“Cohen”).
`2 U.S. Patent No. 5,367,667 (Ex. 1003) (“Wahlquist”).
`3 European Patent Application Publication No. EP 0505627A2 (Ex. 1004)
`(“Neumann”).
`4 U.S. Patent No. 5,956,683 (Ex. 1005) (“Jacobs”).
`
`
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`2
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`Patent 7,587,469 B2
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`review of the ’469 patent as to claims 1, 2, and 5-10 on the authorized
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`grounds discussed hereunder.
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`A. RELATED MATTERS
`
`Petitioner asserts that the ’469 patent is the subject of co-pending
`
`district court litigation, Robert Bosch Healthcare Systems v. Cardiocom,
`
`LLC, Case No. 2:13-cv-349 (E.D. Tex.). Pet. 1. Furthermore, at the time the
`
`Petition was filed, patents related to the ’469 patent were subject to other
`
`district court litigation, ex parte reexamination, and inter partes review. Pet.
`
`1-2.
`
`B.
`
`THE ’469 PATENT (EX. 1001)
`
`The ’469 patent, titled “Audio Instructions for Appliances,” issued on
`
`September 8, 2009. The ’469 patent relates to a networked system for
`
`remotely monitoring individuals and for communicating information to the
`
`individuals through the use of script programs. Ex. 1001, col. 1, ll. 39-41.
`
`The patent describes the need for remote monitoring of patients in
`
`out-patient or home healthcare programs. Id. at col. 1, ll. 45-50; col. 2,
`
`ll. 33-37. According to the patent, the use of personal computers, medical
`
`monitoring devices, and interactive telephone or video response systems for
`
`remote monitoring have proved inadequate because of their expense, limited
`
`multimedia capability, and the complexity of managing non-compliant
`
`patients. Id. at col. 1, l. 65 – col. 2, l. 32.
`
`One embodiment of the ’469 patent, shown in Figure 1, reproduced
`
`below, is networked system 16 with server 18 connected to the Internet
`
`(communication network 24), where server 18 sends script programs to each
`
`remotely programmable apparatus 26. Id. at col. 4, ll. 18-35.
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`Figure 1 illustrates that system 16 may include any number of
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`remotely programmable apparatuses 26 (two are shown, above) for
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`monitoring any number of patients. Id. at col. 4, ll. 42-44. In one preferred
`
`embodiment, each patient is provided with monitoring device 28 (such as a
`
`blood glucose meter). Id. at col. 4, ll. 45-61. That device produces
`
`measurements of a physiological condition of the patient (such as blood
`
`glucose concentrations in the blood of the patient) and transmits those
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`measurements to the patient’s remote apparatus 26 via standard cable 30. Id.
`
`at col. 4, ll. 45-61. Remotely programmable apparatus 26 executes a script
`
`program received from server 18. Id. at col. 5, ll. 7-9. That script program
`
`includes “queries, reminder messages, information statements, useful
`
`quotations, or other information of benefit to the patient.” Id. at col. 5, ll. 9-
`
`11.
`
`The ’469 patent further describes an embodiment where remotely
`
`programmable apparatus 26 includes speech recognition and speech
`
`synthesis functionality. Id. at col. 11, ll. 50-54. Audible queries, prompts,
`
`and response choices are communicated to the user through a speaker in
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`apparatus 26, and a microphone receives the responses from the user. Id. at
`
`col. 12, ll. 40-48.
`
`In further embodiments, remotely programmable apparatus 26 is an
`
`interactive television system. Id. at col. 16, ll. 19-26. Furthermore, the ’469
`
`patent describes collecting data from smart appliances, such as a
`
`“refrigerator, telephone, stove, clock radio, VCR, or any other electrical or
`
`non-electrical device including the monitoring device 28.” Id. at col. 20,
`
`ll. 32-40.
`
`C.
`
`EXEMPLARY CLAIMS
`
`
`
`Challenged claims 1, 11, and 17 are independent. Claim 1 is
`
`exemplary of the claims at issue and is reproduced below:
`
`1. A communications network comprising:
`a communications channel;
`a server;
`a primary device in communication with said server
`through said communications channel, wherein (A) said
`primary device comprises a component adapted to (i)
`receive one or more computer programs including one
`or more queries, instructions or messages as a first
`digital file from said server, (ii) convert the first digital
`file into synthesized audio transmissions, (iii) present
`said synthesized audio transmissions to an individual
`through a speaker and (iv) receive audible responses
`from said individual and (B) said primary device
`comprises a processor adapted to collect data relating to
`said primary device, and execute said computer
`programs to provide a diagnosis of a performance of
`said primary device; and
`a secondary device operatively connected to said primary
`device, wherein said secondary device (i) is adapted to
`be operated by said individual in response to said
`synthesized audio transmissions and (ii) comprises a
`user interface adapted to receive input responses from
`
`
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`said individual and convert said input responses to a
`second digital file through speech recognition.
`
`D. CLAIM INTERPRETATION
`
`Consistent with the statute, case law, and legislative history of the
`
`America Invents Act (AIA), the Board interprets claims using the “broadest
`
`reasonable construction in light of the specification of the patent in which
`
`[they] appear[].” 37 C.F.R. § 42.100(b); see also Office Patent Trial
`
`Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). We presume
`
`that claim terms have their ordinary and customary meaning. See In re
`
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (“The ordinary
`
`and customary meaning is the meaning that the term would have to a person
`
`of ordinary skill in the art in question.”) (citation and internal quotation
`
`marks omitted).
`
`The Petition provides a construction for the term “household
`
`appliance.” Pet. 9. Patent Owner provides its position on claim construction
`
`for the following two terms: (1) “household appliance”; and (2) “execute
`
`said computer programs to provide a diagnosis of a performance of said
`
`[primary device or household appliance].” Prelim. Resp. 15-21. We now
`
`turn to the analysis of each of these claim terms.
`
`1.
`
`“household appliance”
`
`Petitioner argues that “household appliance” should be construed to
`
`mean “any electronic or non-electronic device for the home, including alarm
`
`clocks, kitchen appliances, entertainment devices and other ‘smart
`
`appliances’ such as refrigerators, telephones, stoves, clock radios, VCRs, ‘or
`
`any other electrical or non-electrical devices including the monitoring
`
`device.’” Pet. 9 (citations omitted) (emphasis added). Patent Owner
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`proffers the following construction: “electrical or non-electrical equipment
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`that performs a task and is located inside the home.” Prelim. Resp. 15
`
`(emphasis added). The dispute centers on whether the “appliance” must be
`
`located inside the home. In support of the contention that it must, Patent
`
`Owner relies on a dictionary definition provided in Exhibit 2003, where a
`
`household appliance is defined as “a piece of equipment used in the house.”
`
`Id. at 16 (citing Ex. 2003, 1271). Dr. Robert T. Stone, Petitioner’s declarant,
`
`relies on a slightly different definition in rendering his opinions. Ex. 1008 ¶
`
`24. As stated in his Declaration, a person of ordinary skill in the art would
`
`define “household appliance” as “electronic or non-electronic equipment for
`
`the home.” Id. In short, Patent Owner argues that the word “household”
`
`imposes a limitation that the “appliance” is located in the home, whereas
`
`Petitioner contends the appliance merely can be for the home. See Pet. 9;
`
`Prelim. Resp. 16-17.
`
`We do not agree with Patent Owner’s limited construction. The
`
`disputed term is recited in independent claims 11 and 17, and dependent
`
`claim 4, among others. None of these claims recites a location for the
`
`“appliance,” and the word “household” is used in the plain and ordinary
`
`sense. The specification does not define the term “household appliance” and
`
`describes an embodiment of an “appliance component” as an “alarm clock, a
`
`kitchen appliance, or an entertainment device.” Ex. 1001, col. 3, ll. 5-7.
`
`Furthermore, in describing the use of a “smart appliance,” the specification
`
`describes a “refrigerator, telephone, stove, clock radio, VCR, or any other
`
`electrical or non-electrical device.” Id. at col. 20, ll. 35-38. Whether such
`
`an appliance must actually be in the home, is not mentioned anywhere in the
`
`specification. Indeed, the specification does not use the word “household”
`
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`to describe any of the disclosed appliances. Therefore, neither the context of
`
`the disputed claim language nor the specification compels the “household
`
`appliance” to be located in a home.
`
`Furthermore, the dictionary definition provided by Patent Owner,
`
`while instructive, does not compel such a limitation. Although an
`
`“appliance” may be devised to perform some function typically associated
`
`with home use, such as a stove, a given example, not all such uses are
`
`confined to the home. For example, VCRs, refrigerators, and microwaves
`
`are often used in an office environment even though they may be referred to
`
`as “household appliances.”
`
`Finally, we do not agree with the contention that a “household
`
`appliance” can be either electronic or non-electronic equipment. Some of
`
`the claims recite that the “household appliance” includes a processor and
`
`user interface and is in communication with a server. See claims 11 and 17.
`
`It does not follow from these limitations that the recited appliance without
`
`such restrictive language could be non-electronic equipment. Therefore,
`
`even though a statement in the specification provides for an appliance as a
`
`“non-electronic device,” a plain reading of the claims, which all require a
`
`processor (an electronic device), is at odds with that statement.
`
`Based on the foregoing and for purposes of this decision, we conclude
`
`that applying the broadest reasonable interpretation consistent with the
`
`specification, a “household appliance” is “electronic equipment devised for
`
`home use.”
`
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`2.
`
`“execute said computer programs to provide a diagnosis of a
`performance of said [primary device or household appliance]”
`
`Patent Owner argues that while Petitioner does not propose a specific
`
`construction for the disputed phrase, how Petitioner applies the prior art in
`
`the Petition indicates that Petitioner is interpreting the phrase inconsistently
`
`with the specification. Prelim. Resp. 17-21. The interpretation Patent
`
`Owner proposes centers around whether the “diagnosis of a performance”
`
`relates to the human diagnostic function of the remote monitoring device
`
`disclosed in the ’469 patent. Prelim. Resp. 17-18. The interpretation Patent
`
`Owner imputes to Petitioner encompasses whether the “diagnosis” relates to
`
`the function of a computing device, e.g., running a diagnostic on a primary
`
`device or household appliance. Prelim. Resp. 17 (citing Petition at 23, 35,
`
`and 43), 18. Patent Owner, therefore, proposes a construction for the phrase
`
`as follows: “execute one or more sets of instructions to receive responses
`
`and data collected by the primary device or household appliance.” Prelim.
`
`Resp. 17-18.
`
`In claim construction, first we look at the claim language, then to the
`
`specification. We find noteworthy that the claim language uses common
`
`terms in requiring that the processor “collect data relating to said primary
`
`device, and execute said computer programs to provide a diagnosis of a
`
`performance of said primary device.” Claim 1; see also claims 11 and 17
`
`(reciting the same language except for the substitution of “household
`
`appliance” for the term “primary device”). According to this language, the
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`data collected relates to the “primary device” (claim 1). And the provided
`
`“diagnosis” is “of a performance of said primary device.” It follows from
`
`the plain language that because the collected data relates to the primary
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`device, the result of executing the computer program may be a “diagnosis”
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`relating to the operation of the primary device.
`
`Furthermore, neither the term “diagnosis” nor the phrase “diagnosis of
`
`a performance” is defined in the specification. Although it may be
`
`understood from the described embodiments that one application of the
`
`“computer program” encompasses remote patient monitoring, the
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`specification does not limit the disputed phrase to the user applications
`
`advocated by Patent Owner in its proposed interpretation. For example, the
`
`specification describes applications outside the healthcare industry such as
`
`for “remote education over the Internet, facilitating educational
`
`communication with children or adult trainees who lack access to
`
`sophisticated and expensive computer equipment, . . . [or for use] by law
`
`enforcement officers to perform on-line surveillance of individuals on
`
`probation or parole.” Ex. 1001, col. 20, ll. 18-25. As another example, the
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`specification provides that the system may be used to “collect data from
`
`smart appliances, such as identification check systems.” Id. at col. 20, ll. 33-
`
`35. Therefore, the specification does not support Patent Owner’s contention
`
`that providing a “diagnosis” limits the scope of the claim to monitoring a
`
`patient or an individual using the claimed device. See Prelim. Resp. 20-21.
`
`Finally, we are not persuaded by Patent Owner’s argument that the
`
`disputed claim language refers to “computer programs that permit the
`
`performance of the user-interactive functions, . . . namely receiving user
`
`responses and collected user data.” Prelim. Resp. 21. First, the claim
`
`language does not limit the data to “user” data; indeed, the recited
`
`“processor” collects “data relating to said primary device” (or “household
`
`appliance”). Second, no claim language provides for receiving user
`
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`responses by either the recited “computer programs” or the “processor”
`
`executing those programs. The disputed phrase is, therefore, broader than
`
`Patent Owner argues, and the evidence presented on the record before us
`
`does not persuade us to conclude otherwise.
`
`We now turn to determining the proper scope of “diagnosis of a
`
`performance of said primary device.” To assist us in that determination, we
`
`look to evidence of the plain and ordinary meaning of “diagnosis.” One
`
`such evidence is the dictionary definition as follows: “investigation or
`
`analysis of the cause or nature of a condition, situation, or problem.”5 This
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`definition is consistent with the specification’s description of the operation
`
`of a microprocessor that executes a script program. For example, the
`
`microprocessor collects device measurements 44 from the monitoring device
`
`28 and the measurements are stored in memory. Ex. 1001, col. 11, ll. 1-3.
`
`Subsequently, the microprocessor waits until it is time to connect to the
`
`server 18 and compares the connection time specified in the script program
`
`to the current time output by the clock of apparatus 26. Id. at col. 11, ll. 11-
`
`14. If the communication with the server fails for any reason, the
`
`microprocessor attempts to re-establish a communication link until a
`
`successful connection is obtained, at which time the microprocessor
`
`transmits the device measurements, query responses, script identification
`
`code, and patient identification code to the server. Id. at col. 11, ll. 15-23.
`
`Therefore, according to the above-described embodiment of the ’469 patent,
`
`
`
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` 5
`
` Definition diagnosis (3), WEBSTER’S THIRD NEW INTERNATIONAL
`DICTIONARY, UNABRIDGED (1993), available at
`http://lionreference.chadwyck.com (Dictionaries/Webster’s Dictionary).
`
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`the microprocessor is responsible for transmitting, at a minimum, a
`
`measurement taken at the monitoring device, such as glucose concentration
`
`measurements from a blood glucose meter. Consistent with the embodiment
`
`discussed above regarding collecting data from smart appliances, such as
`
`identification check systems, the transmission may include the result of an
`
`identification check.
`
`From the foregoing description of the microprocessor and the plain
`
`and ordinary meaning of the term, we conclude that the recited “diagnosis”
`
`refers to the data or information regarding the performed operation, such as a
`
`measurement or identification check. Accordingly, we determine that the
`
`broadest reasonable interpretation, consistent with the specification, of the
`
`phrase “execute said computer programs to provide a diagnosis of a
`
`performance of said [primary device or household appliance]” is “execute
`
`said computer programs to provide data or information of a performed
`
`operation by the [primary device or household appliance].”
`
`3.
`
`Other Terms
`
`For purposes of this decision, all other terms in the challenged claims
`
`are given their ordinary and customary meaning.
`
`II. DISCUSSION
`
`We now turn to Petitioner’s asserted grounds of unpatentability and
`
`Patent Owner’s arguments in its preliminary response.
`
`A. ASSERTED GROUND BASED ON COHEN AND WAHLQUIST
`
`Petitioner provides claim charts that identify the disclosures in Cohen
`
`and Wahlquist alleged to render unpatentable the subject matter claimed in
`
`claims 1-22. Pet. 20-47. Petitioner further relies on a declaration of
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`Dr. Robert Stone (Ex. 1008) to support the analysis advocated in the
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`Petition. We have considered the arguments and evidence presented, which
`
`we determine, does not persuade us that Cohen teaches the “single housing
`
`unit” recited in claim 3 and the “household appliance” recited in claims 4
`
`and 11-22. A detailed analysis of our determination follows after a brief
`
`overview of Cohen and Wahlquist.
`
`1.
`
`Overview of Cohen (Exhibit 1002)
`
`Cohen is directed to a patient monitoring system, and in particular, to
`
`using a telephone to monitor the health status of outpatients. Ex. 1002,
`
`Abstract; col. 1, ll. 14-16. The Cohen central monitoring system generates
`
`questions concerning a health condition of a patient, questions which the
`
`patient answers using the keys of a telephone, by speaking the response, or
`
`in electronic form, such as by a computer-to-computer communication. Id.
`
`at Abstract; col. 16, ll. 7-12. One embodiment of Cohen’s system is
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`depicted in Figure 2A, reproduced below.
`
`Figure 2A depicts central monitoring subsystem 11 coupled to
`
`outpatient subsystem 12 via telecommunications system 13 (for example, a
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`public telephone network or the Internet). Id. at col. 7, ll. 53-56; col. 9,
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`ll. 2-19. The central monitoring subsystem 11 includes computer processor
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`21 with automatic speech recognition (“ASR”) module 23A that decodes the
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`voice commands in the patient’s response received through outpatient
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`subsystem 12. Id. at col. 9, ll. 8-32.
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`Cohen further describes database 24 that provides the ability for the
`
`provider to configure personalized “walkthroughs.” Id. at col. 8, ll. 44-48.
`
`A “walkthrough” is a session with a patient who answers questions about a
`
`health issue, such as the patient taking medication for depression. Id. at
`
`col. 10, ll. 13-40. A walkthrough flowchart defines what questions will be
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`asked of a patient. Id. at col. 10, ll. 40-42. Voice generator 22 translates the
`
`computer questions in the walkthrough into voice that the patient can hear.
`
`Id. at col. 11, ll. 56-59; col. 12, ll. 49-52. After voice/dual tone
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`multifrequency (DTMF) module 22A and/or ASR module 23A translate the
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`patient’s answer into a form recognizable by computer processor 21, the
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`answer received from the patient can be stored in the patient’s record in the
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`database. Id. at col. 17, ll. 32-34.
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`Another embodiment of Cohen is depicted in Figure 5, reproduced
`
`below.
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`Figure 5 illustrates that the Cohen system may be divided into three
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`parts: patient system 500, interface server 530, and database server 560. Id.
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`at col. 11, ll. 31-33. Patient system 500 incorporates outpatient subsystem
`
`12 described above with reference to Figure 2A. See id. at col. 11, ll. 33-37.
`
`Interface server 530 handles the process of getting answers from patients,
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`id., and it allows health care providers access to database 24. Id. at col. 11,
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`ll. 37-39. Cohen describes interface server 530 and database server 560 as
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`comprising central monitoring subsystem 11 described above with reference
`
`to Figure 2A. Id. at col. 11, ll. 40-42.
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`2.
`
`Overview of Wahlquist (Exhibit 1003)
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`Wahlquist is directed to remote diagnostics on a personal computer
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`system, where the user calls a help desk representative who selects specific
`
`diagnostic tests, resident on the user’s diagnostic disk, to be run on the user’s
`
`computer. Ex. 1003, Abstract. The user’s computer is instructed to run the
`
`selected diagnostic tests. Id. Upon completion of the tests, the user’s
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`computer reconnects with the help desk computer and reports the result of
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`the tests. Id. A script file also may instruct the user’s computer to send
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`copies of various computer system files, such as network or configuration
`
`system files, to a link manager computer. Id. at col. 6, ll. 33-36. In one
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`embodiment of a remote diagnostic method, Wahlquist describes that the
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`link manager computer interrogates the user’s computer to determine and
`
`provide its corresponding computer identification code. Id. at col. 5, ll. 52-
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`56.
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`3.
`
`Analysis Concerning the Ground of Obviousness of the
`Independent Claims Over Cohen and Wahlquist
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`The Petition maps the three parts of the Cohen system to the elements
`
`recited in independent claims 1, 11, and 17 as follows: Cohen’s database
`
`server 560 (or database 24) as corresponding to the recited “server” (see,
`
`e.g., Pet. 21); Cohen’s interface server 530 as corresponding to the “primary
`
`device” (see, e.g., Pet. 21); Cohen’s outpatient subsystem 12 (operator
`
`interface 12) corresponding to the recited “secondary device” (see, e.g.,
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`Pet. 24); and Cohen’s interface server 530 and a computer with a modem or
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`telephone as corresponding to the recited “household appliance” (see, e.g.,
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`Pet. 27, 31-32).
`
`a.
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`Arguments Regarding Cohen
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`Before delving into the specific arguments regarding the limitations
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`allegedly taught by Cohen, we address Patent Owner’s argument that Cohen
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`teaches away from the claimed invention.
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`Patent Owner argues that the Board should not consider Cohen
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`relevant prior art, because it teaches away from the solution provided by the
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`’469 patent and is cumulative of art criticized in the Background of the
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`16
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`Case IPR2013-00451
`Patent 7,587,469 B2
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`Invention. Prelim. Resp. 31. We are not persuaded by Patent Owner’s
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`arguments. The passages in Cohen relied on by Patent Owner do not
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`discourage a person of ordinary skill in the art from pursuing its teachings to
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`achieve the claimed subject matter. Cohen allows a patient to use
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`communications equipment that the patient already has in his or her home.
`
`See, e.g., Ex. 1002, col. 2, ll. 47-54. Cohen also describes that the systems
`
`of the prior art were programmed for use by only one patient or were
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`programmed for use for one set of measurements only. Id. at col. 2, ll. 40-
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`46. Cohen allegedly improves on the prior art by allowing use of equipment
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`found in the home, i.e., a telephone or a computer. Id. at col. 3, ll. 18-23.
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`These passages are not persuasive evidence that a person of ordinary skill in
`
`the art would have been deterred from achieving the “primary device” and
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`“secondary device” with the claimed functionalities merely because Cohen’s
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`solutions to programming for a single patient involved example
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`embodiments of a telephone and a computer.
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`Neither do we find that Cohen’s teachings of a personal computer or a
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`telephone are unlikely to produce the objective of the claimed subject
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`matter. See, e.g., Syntex (U.S.A) LLC v. Apotex, Inc., 407 F.3d 1371, 1380
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`(Fed. Cir. 2005) (“Under the proper legal standard, a reference will teach
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`away when it suggests that the developments flowing from its disclosures
`
`are unlikely to produce the objective of the applicant’s invention.” (citing In
`
`re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994))). For example, Patent Owner
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`has argued that the challenged claims are directed to devices (or appliances)
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`located in the home of a patient, Prelim. Resp. 15-17, while at the same time
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`challenging Cohen’s teaching of using a personal computer or a telephone in
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`the home as teaching away from the challenged claims, id. at 31. Such a
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`17
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`Case IPR2013-00451
`Patent 7,587,469 B2
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`challenge belies the specification of the ’469 patent, which describes an
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`embodiment in which remote apparatus 26 is a personal computer that
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`presents the script program for user interaction. See Ex. 1001, col. 15, l. 66
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`– col. 16, l. 5. The specification also describes a telephone as one example
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`of a “smart appliance.” See Ex. 1001, col. 20, ll. 35-38. Consequently, on
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`the record before us, we find unpersuasive Patent Owner’s arguments that
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`Cohen is inapplicable as prior art to the ’469 patent.
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`We now turn to Patent Owner’s arguments that Petitioner’s evidence
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`fails to show that Cohen teaches the identified claimed limitations. First,
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`Patent Owner argues that Cohen’s interface server 530 does not teach the
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`recited “household appliance” because the interface server 530 is not
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`operated by an individual in a patient’s home. Prelim. Resp. 37. Although
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`Patent Owner’s arguments rely on its claim construction of “household
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`appliance”—devices located in a patient’s home—that the Board did not
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`adopt, we agree with Patent Owner that Cohen’s interface server 530 does
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`not teach the “household appliance.” A “household appliance” must be
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`designed for home use according to our construction. Petitioner has not
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`proffered sufficient and credible evidence showing that Cohen’s interface
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`server 530 is in any way designed for home use. Indeed, Patent Owner has
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`shown evidence to the contrary—that Cohen discloses the central monitoring
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`subsystem (and, therefore, interface server 530) is for use by health care
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`providers, such as in a hospital or doctor’s office. Prelim. Resp. 37 (citing
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`Ex. 1002, col. 3, ll. 33-36). Accordingly, we determine that the Petition fails
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`to show sufficient evidence that Cohen teaches the “household appliance,”
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`as recited in independent claims 11 and 17.
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`Second, regarding claim 1—which recites a “secondary device . . .
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`18
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`Case IPR2013-00451
`Patent 7,587,469 B2
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`adapted to be operated by said individual in response to said synthesized
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`audio transmissions”—we are not persuaded by Patent Owner’s arguments
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`that Cohen’s central monitoring subsystem and interface server would be
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`outside the scope of the claim language because they are not located in the
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`home. See Prelim. Resp. 37-38. The “secondary device” does not need to
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`be “designed for home use.” Further, the language that the device is
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`“operated by an individual” does not require that the device be proximate to
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`either the individual or to the “primary device” in the home. Based on the
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`record presented, we view the plain language of the claim regarding the
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`“secondary device” operated by an individual as met by controlling the
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`functioning of the device based on received audible responses (from a
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`computer or telephone) or based on the received tones of the touch-tone
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`keypad on the telephone, see Pet. 24-5. That is, the “secondary device” does
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`not need to be directly acted upon by the individual, and therefore, is not
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`required to be proximate to the individual, in the home or otherwise.
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`Finally, Patent Owner challenges Petitioner’s assertion that Cohen
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`teaches the “speech recognition” functionality ascribed to the “secondary
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`device.” The Petition asserts that the patients using the Cohen system could
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`interface via computers, which are “known to include speech recognition
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`software and functionality.” See Pet. 25; Prelim. Resp. 36-37. The
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`Declaration in support of the Petition provides further evidence that it would
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`be trivial to a person of ordinary skill in the art to include in a household
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`computer the functionality of synthesis and speech recognition and that the
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`modification “would result in less data being sent and less active time
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`required on the network.” Ex. 1008 ¶ 47. Patent Owner does not address
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`Petitioner’s argument that Cohen’s computers were known to include the
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`19
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`Case IPR2013-00451
`Patent 7,587,469 B2
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`“speech recognition functionality.” See Prelim. Resp. 35-38. Patent Owner,
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`instead, notes that Cohen describes the speech recognition functionality as
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`part of the interface server, not the patient subsystem, and that, therefore, the
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`patient subsystem does not meet the “secondary device” limitation. Prelim.
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`Resp. 37. This argument by Patent Owner does not rebut adequately
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`Petitioner’s evidence that “speech recognition” functionality was known to
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`be included in the computers disclosed in Cohen. Patent Owner’s argument,
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`therefore, is not persuasive.
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`
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`b.
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`Arguments Regarding Wahlquist
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`Petitioner relies on Wahlquist as disclosing the limitation concerning
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`the “diagnosis of a performance of said primary device.” Pet. 23-24. In
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`particular, Petitioner asserts that the link manager in Wahlquist requests an
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`identification code of the user’s computer, which determines the code and
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`provides it to the link manager. Id. (citing Ex. 1003, col. 5, ll. 52-54).
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`Petitioner also relies on Wahlquist’s disclosure of script files downloaded
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`from a help desk for running diagnostic tests. Pet. 23.
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`Patent Owner challenges Petitioner’s assertions by arguing that (1)
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`Wahlquist is non-analogous prior art and should be ignore
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