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 No. 7,587,469
`_____________________
`
`CORRECTED PATENT OWNER’S RESPONSE UNDER 37 C.F.R. § 42.120
`
`

`

`TABLE OF CONTENTS
`
`Page
`
`C.
`
`D.
`
`INTRODUCTION ..........................................................................................1
`I.
`CLAIM CONSTRUCTION ...........................................................................2
`II.
`III. OVERVIEW OF THE ’469 PATENT ...........................................................3
`IV. OVERVIEW OF THE ASSERTED REFERENCES ....................................6
`A.
`Cohen Is Directed to Simplified Telephone- or Computer-Based
`Monitoring Systems. ............................................................................7
`B. Wahlquist Is Directed to a System for Performing Computer
`Diagnostic Tests, Not Remote Monitoring of Individuals...................8
`Neumann Discloses a Patient Monitoring Subsystem Without
`Scripted Interaction or Voice Recognition.........................................11
`Jacobs Pertains to Speech Signal Processing and Teaches Away
`From Localizing Speech Recognition Functionality Within a
`User Device. .......................................................................................13
`CARDIOCOM’S BURDEN.........................................................................15
`V.
`VI. DR. STONE APPLIED AN IMPROPER METHODOLOGY IN HIS
`OBVIOUSNESS ANALYSIS......................................................................17
`VII. CLAIMS 1, 2 AND 5-10 ARE NOT OBVIOUS OVER EITHER OF
`THE GROUNDS THAT CARDIOCOM ALLEGES..................................20
`VIII. WAHLQUIST IS NOT “ANALOGOUS ART” TO THE ʼ469
`PATENT AND SHOULD NOT BE CONSIDERED. .................................21
`A. Wahlquist Is Not from the Same Field of Endeavor As the ʼ469
`Patent..................................................................................................21
`B. Wahlquist Is Not Reasonably Pertinent to the Problems That the
`ʼ469 Patent Addresses. ....................................................................... 25
`IX. CARDIOCOM HAS NOT MET ITS BURDEN OF PROVING A
`PERSON OF ORDINARY SKILL IN THE ART WOULD HAVE
`COMBINED COHEN AND WAHLQUIST IN THE MANNER
`ASSERTED. .................................................................................................29
`
`-i-
`
`

`

`TABLE OF CONTENTS
`(continued)
`
`Page
`
`X.
`
`B.
`
`B.
`
`CARDIOCOM HAS NOT MET ITS BURDEN OF PROVING A
`PERSON OF ORDINARY SKILL IN THE ART WOULD HAVE
`COMBINED COHEN, WAHLQUIST, NEUMANN, AND JACOBS
`IN THE MANNER ASSERTED..................................................................39
`A.
`A Person of Ordinary Skill In The Art Would Not Have
`Combined Cohen and Jacobs. ............................................................39
`A Person of Ordinary Skill In The Art Would Not Have
`Combinded Jacobs and Neumann. .....................................................41
`XI. CARDIOCOM FAILS TO PROVE THAT COHEN AND
`WAHLQUIST TEACH ALL ELEMENTS OF CLAIMS 1, 2, AND 5-
`10. .................................................................................................................44
`A.
`Cardiocom Fails To Show That The Combination Of Cohen
`And Wahlquist Teaches “a primary device in communication
`with said server . . . 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 first digital file from said server.” .................................44
`Cardiocom Fails to Show That The Combination Of Cohen And
`Wahlquist Teaches “a secondary device” That Is “adapted to
`receive input responses from [an] individual and convert said
`input responses to a . . . digital file through speech recognition.”.....49
`XII. CARDIOCOM FURTHER FAILS TO SHOW THAT COHEN,
`WAHLQUIST, NEUMANN, AND JACOBS DISCLOSE ALL
`ELEMENTS OF CLAIMS 1, 2, AND 5-10.................................................51
`Cardiocom Fails to Show That The Combination Of Cohen,
`A.
`Wahlquist, Neumann, And Jacobs Teaches “a primary device in
`communication with said server . . . 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.”.......52
`
`-ii-
`
`

`

`TABLE OF CONTENTS
`(continued)
`
`Page
`
`B.
`
`Cardiocom Fails to Show That The Combination Of Cohen,
`Wahlquist, Neumann, And Jacobs Teaches “a secondary
`device” That “comprises a user interface adapted to receive
`input responses from [an] individual and convert said input
`responses to a . . . digital file through speech recognition.” ..............52
`XIII. CONCLUSION.............................................................................................55
`
`-iii-
`
`

`

`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`Interconnect Planning Corp. v. Feil,
`774 F.2d 1132 (Fed. Cir. 1985) ....................................................................17, 18
`
`In re Bigio,
`381 F.3d 1320 (Fed. Cir. 2004) ....................................................................21, 22
`
`In re Klein,
`647 F.3d 1343 (Fed. Cir. 2011) ..........................................................................21
`
`In re Ratti,
`270 F.2d 810, 813 (CCPA 1959)........................................................................50
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007)............................................................................................32
`
`Liberty Mutual Ins. Co. v. Progressive Casual Ins. Co.,
`CBM2012-00003, Paper 8, pp. 14-15 (PTAB 2012)..........................................17
`
`MicroStrategy, Inc. v. Business Objects, S.A.,
`429 F.3d 1344 (Fed. Cir. 2005) ..........................................................................19
`
`Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc.,
`520 F.3d 1358 (Fed. Cir. 2008) ..........................................................................17
`
`Unigene Labs., Inc. v. Apotex, Inc.,
`655 F.3d 1352 (Fed. Cir. 2011) ..........................................................................29
`
`Statutes
`
`35 U.S.C. § 103............................................................................................20, 21, 29
`
`35 U.S.C. § 103(a) ...........................................................................................1, 6, 20
`
`35 U.S.C. § 316(e) ...............................................................................................1, 15
`
`Other Authorities
`
`37 C.F.R. § 42.1(d) ..................................................................................................15
`
`-i-
`
`

`

`TABLE OF AUTHORITIES
`(continued)
`
`Page(s)
`
`Cases
`
`MPEP § 2143.01(VI) ...............................................................................................50
`
`-ii-
`
`

`

`I.
`
`INTRODUCTION
`
`Patent Owner Robert Bosch Healthcare Systems, Inc. (“Bosch” or “Patent
`
`Owner”) respectfully requests that the Board issue a final written decision finding
`
`that claims 1, 2 and 5-10 (the “challenged claims”) of U.S. Patent No. 7,587,469
`
`(the “’469 patent”) are patentable, because Petitioner Cardiocom, LLC
`
`(“Cardiocom”) has failed to prove, by a preponderance of the evidence, that the
`
`challenged claims are unpatentable over any of the prior art instituted for trial. 35
`
`U.S.C. § 316(e).
`
`Both of the grounds instituted for trial require the Board to accept that a
`
`combination of references would render each of the challenged claims obvious
`
`under 35 U.S.C. § 103(a). However, Cardiocom’s proposed grounds fail for at
`
`least three reasons. First, Cardiocom’s combinations improperly rely on prior art
`
`that is not analogous to the claimed inventions of the ʼ469 patent. Second, even if
`
`Cardiocom’s cited references were treated as analogous prior art, a person of
`
`ordinary skill in the art would not have combined the references in the manner
`
`asserted by Cardiocom. Third, even if the Board were to accept Cardiocom’s
`
`combinations of prior art, it should still find all of the challenged claims patentable
`
`because Cardiocom fails to show that the asserted combinations teach all elements
`
`of the challenged claims. Cardiocom has therefore failed to meet its burden to
`
`show that each element was known in the prior art.
`
`1
`
`

`

`II. CLAIM CONSTRUCTION
`
`For purposes of this proceeding only, Bosch applies the constructions
`
`adopted by the Board in its decision to institute trial because, even under those
`
`constructions, Cardiocom’s cited prior art fails to render obvious any of the
`
`challenged claims. See Inst. Dec. 6-12 (construing “execute said computer
`
`programs to provide a diagnosis of a performance of said [primary device or
`
`household appliance]” as “execute said computing programs to provide data or
`
`information of a performed operation by [primary device or household
`
`appliances].”).
`
`“Script program” appears in claim 10 of the ’469 patent. While the Board
`
`did not construe the term in the context of this patent, the Board construed the term
`
`in the pending inter partes proceedings for related U.S. Patent Nos. 7,516,192
`
`[IPR2013-00468] and 7,921,186 [IPR2013-00431] to mean “a program that
`
`contains a set of instructions that is capable of being executed and interpreted”. On
`
`February 14, 2014 – after the Board construed “script program” – Petitioner
`
`Medtronic, Inc. (which acquired Petitioner Cardicom LLC) filed a new petition
`
`seeking inter partes review of the ’469 patent. IPR2014-00436. Despite
`
`recognizing that the Board’s previous construction of “script program” “was based
`
`on a construction submitted by prior Petitioner, Cardiocom LLC,” the new petition
`
`advances a very different construction. “Petitioner asserts the term ‘script
`
`2
`
`

`

`program’ should be construed as: ‘an interpreted software program (as opposed to
`
`compiled), whose program files comprise commands, written in ASCII text, and
`
`which must be read by an interpreter in order to be executed.” IPR2014-00436,
`
`Paper No. 5, at 7-8 (PTAB 2014). Petitioner specifically criticized the Board’s
`
`current construction of “script program” as being overbroad as it allegedly
`
`“encompasses non-script programs.” Id. at 8. Petitioner, however, has not argued
`
`that in this proceeding that any of the prior art invalidates claim 10 under what it
`
`now contends is the correct claim construction of script program. Thus,
`
`Cardiocom has not even met its prima facie burden of identifying combinations of
`
`prior art that would invalidate claim 10, which contains the “script program”
`
`limitation.
`
`III. OVERVIEW OF THE ’469 PATENT
`
`As disclosed in its Field of Invention, the ’469 patent relates to
`
`“communication systems for remote monitoring of individuals, and in particular to
`
`a networked system for remotely monitoring individuals and for communicating
`
`information to the individuals through the use of script programs.” ʼ469 patent,
`
`Ex. 1001, 1:37-41. The embodiments of the invention are accordingly focused on
`
`systems that facilitate the remote monitoring of and communication with
`
`individuals.
`
`3
`
`

`

`In particular, the ʼ469 patent describes a need “for a simple and inexpensive
`
`system for remotely monitoring patients and for easily communicating information
`
`to the patients.” Id., 2:34-36; David Decl. ¶ 36. The ʼ469 patent further discloses
`
`that there was a need “to encourage patient’s compliance with a prescribed
`
`treatment plan.” ʼ469 patent, 2:36-38; David Decl. ¶ 36.
`
`In a first embodiment, “the individuals are patients and the system is used to
`
`collect data relating to the health status of the patients.” Id., 4:7-10. The system
`
`further includes “multiple remotely programmable apparatus . . . for monitoring
`
`multiple patients.” Id., 4:31-33; see id. Fig. 1. Each of these remotely
`
`programmable apparatuses “is designed to interact with a patient in accordance
`
`with script programs received from the server.” Id., 4:33-35. In one embodiment,
`
`“each patient to be monitored is also provided with a monitoring device” that is
`
`“designed to produce measurements of a physiological condition of the patient,
`
`record the measurements, and transmit the measurements to the patient’s remotely
`
`programmable apparatus.” Id., 4:45-50.
`
`The server “includes a database . . . for storing script programs.” Id., 4:63-
`
`64. “The script information is generally entered in the server . . . by a healthcare
`
`provider, such as the patients’ physician or case manager,” after which a “script
`
`generator . . . generates a script program from the information entered.” Id., 9:13-
`
`15, 22-23. A healthcare provider may enter information including: “a set of
`
`4
`
`

`

`queries to be answered by a patient,” “a desired monitoring device . . . from which
`
`to collect measurements,” and/or “a set of statements” to be communicated to the
`
`patient. Id., 6:50-56, 13:44.
`
`Script programs are “executed” by each remotely programmable apparatus
`
`and serve to “communicate queries and messages to a patient, receive
`
`responses . . . to the queries, collect monitoring device measurements . . . and to
`
`transmit responses . . . and measurements . . . to the server.” Id., 4:64-5:1. Before
`
`it can receive a script program, “the apparatus is initially programmed with the
`
`patient’s unique identification code.” Id., 10:17-19. Following the initial
`
`programming, the apparatus then receives from the server “the script program
`
`assigned to the patient associated with the apparatus.” Id., 10:23-25.
`
`The ʼ469 patent also discloses embodiments in which the remotely
`
`programmable apparatus can include “speech recognition and speech synthesis
`
`functionality.” Id., 11:53-54. In this embodiment, queries, response choices, and
`
`prompts “are audibly communicated to the patient through the speaker.” Id.,
`
`12:41-43. “[R]esponses to the queries and prompts are received through the
`
`microphone . . . .” Id., 12:46-48. Speech recognition commands are executed by a
`
`“microcontroller” that “recognize[s] responses spoken into [a] microphone.” Id.,
`
`12:56-57. Recognized responses are “stored in the memory [of the apparatus] . . .
`
`and subsequently transmitted to the server.” Id., 12:65-66.
`
`5
`
`

`

`The ʼ469 patent notes that the described embodiments are “not limited to
`
`querying applications” and that the system can also “be used simply to
`
`communicate messages to the individuals.” Id., 13:5-7. In alternate embodiments,
`
`the remote apparatus can be a computer that “presents the script program for user
`
`interaction,” id., 15:66-16:5; an interactive television system that “allows the user
`
`to view . . . entertainment and advertisement content, such as television
`
`programming, and interact with (i.e. respond to) the script programs”, id., 16:33-
`
`36; or a “smart appliance” that allows the user to respond “to the voice scripts
`
`through activation of buttons,” id., 20:32-49.
`
`IV. OVERVIEW OF THE ASSERTED REFERENCES
`
`Cardiocom does not allege that the ʼ469 patent is anticipated or rendered
`
`obvious by any single reference. Rather, Cardiocom only proposes that the
`
`challenged claims of the patent are invalidated by combinations of references
`
`under 35 U.S.C. § 103(a). In particular, the two grounds for challenge adopted by
`
`the Board are based on a combination of up to four references: (1) U.S. Patent
`
`No. 6,014,626 to Cohen (“Cohen,” Ex.1002); (2) U.S. Patent No. 5,367,667 to
`
`Wahlquist et al. (“Wahlquist,” Ex. 1003); (3) European Patent Publication No.
`
`0 505 627 A2 (“Neumann,” Ex. 1004); and (4) U.S. Patent No. 5,956,683 to Jacobs
`
`et al. (“Jacobs,” Ex. 1005).
`
`6
`
`

`

`A. Cohen Is Directed to Simplified Telephone- or Computer-Based
`Monitoring Systems.
`
`Cohen is directed to “a monitoring system that does not require that the
`
`patient be provided with any electronic equipment, thus allowing the patient to use
`
`communications equipment that the patient already has in his or her own home.”
`
`Cohen, 2:50-54, 3:17-23; David Decl. ¶ 45; Ex. 2011 (“Stone Dep.”) 271:2-22
`
`(acknowledging that a person of ordinary skill in the art would have understood
`
`that the Cohen patent was addressing the need for monitoring systems that do not
`
`require the patient to be provided with any electronic equipment). Cohen
`
`emphasizes the need for a system for monitoring patients “that does not require
`
`special training or complex equipment that is likely to be expensive.” Cohen,
`
`2:47-54; see also id., 1:13-16 (“field of invention” is directed to a “method and
`
`system for monitoring the health status of patients, and in particular, a method and
`
`system utilizing a standard telephone to monitor the health status of outpatients”)
`
`(emphasis added); David Decl. ¶ 45.
`
`In the representative embodiment, the Cohen invention comprises “two
`
`subsystems, namely, a central monitoring subsystem 11 and an outpatient
`
`subsystem 12.” Cohen, 7:46-49; David Decl. ¶ 46. The central monitoring
`
`subsystem is “located so as to be readily accessible to one or more health care
`
`providers” whereas “the outpatient subsystem 12 is located so as to be readily
`
`accessible to an outpatient.” Cohen, 7:50-53; David Decl. ¶ 46. Given the goal of
`
`7
`
`

`

`Cohen to provide a monitoring system that does not require that the patient be
`
`provided with any electronic equipment, the outpatient subsystem in the
`
`representative embodiment is “a telephone capable of generating DTMF signals
`
`using the keys of the telephone’s keypad.” Cohen, 8:22-24; David Decl. ¶ 49. In
`
`an alternate embodiment, the central monitoring subsystem 11 comprises “a
`
`computer processor 21 which includes (or is coupled to) and interface module 21A,
`
`a Voice/DTMF module 22A and an ASR [automatic speech recognition] module
`
`23A.” Cohen, 8:65-9:1; David Decl. ¶ 50. The ASR module is at the central
`
`subsystem and performs speech recognition. Cohen, 9:33-40; David Decl. ¶ 50. In
`
`an another alternate embodiment, the outpatient subsystem 12 can include a
`
`computer coupled to the telecommunications system 13 by a modem, Cohen, 15:8-
`
`12, mostly because such an embodiment would be “particularly useful for patients
`
`having a hearing problem.” Cohen, 15:12-13; David Decl. ¶ 49.
`
`B. Wahlquist Is Directed to a System for Performing Computer
`Diagnostic Tests, Not Remote Monitoring of Individuals.
`
`Wahlquist is directed to “a system for performing computer diagnostic tests,
`
`and more particularly, to a method for automatically performing remote diagnostic
`
`tests on personal computers.” Wahlquist, 1:7-10. Thus, Wahlquist relates to
`
`resolving technical malfunctions in person computers and has nothing to do with
`
`monitoring individuals. David Decl. ¶ 52; see Stone Dep., 279:20-280:11
`
`8
`
`

`

`(conceding Wahlquist is not directed to remote patient monitoring); id. 274:23-34
`
`(admitting Wahlquist is directed toward the “diagnosis of computers”).
`
`Wahlquist’s objective is to eliminate communications with users, which
`
`Wahlquist characterizes as “slow and unsatisfactory.” Wahlquist, 1:46-57; David
`
`Decl. ¶ 53. Thus, the help desk representative communicates with the computer
`
`user only at the pre-diagnosis stage, to gather basic information (Wahlquist, 2:10-
`
`15) and at the end, after the computer diagnosis is complete, to make
`
`recommendations. Wahlquist, 3:7-9; David Decl. ¶ 53. The entire diagnosis itself
`
`is completely divorced from any participation by the user, much less any
`
`communications to the user. David Decl., ¶ 53.
`
`To diagnose a user’s computer problem, the representative creates a case file
`
`and then “selects various diagnostic tests from a menu to be run on the user’s
`
`computer.” Wahlquist, 2:10-19; David Decl. ¶ 54. This information is placed into
`
`a separate file, which Wahlquist refers to as a “script file.”1 Wahlquist, 2:22-23
`
`1 The “script files” discussed in Wahlquist are specific to the computer diagnostic
`
`context of Wahlquist, as they “instruct[] the computer to execute selected test files
`
`resident on the user’s diagnostic disk.” Wahlquist, 2:44-45 (emphasis added).
`
`Aside from using the word “script” itself, these “script files” in Wahlquist are
`
`fundamentally different from the “script programs” of claim 10 of the ʼ469 patent,
`
`which are used specifically to present “queries, instructions or messages” to “an
`
`9
`
`

`

`(“The test selection information is used to build a high level script instruction or
`
`script file.”). “The help desk representative then instructs the user, upon
`
`completion of the telephone call, to insert a diagnostic disk, supplied to the user
`
`upon purchase of the computer, into the computer and initiate a program which
`
`places the user computer’s program in an auto answer mode.” Wahlquist, 2:22-30;
`
`David Decl., ¶ 54. At this point, the user is eliminated from the communications
`
`process, until after all diagnosis of the computer is complete. David Decl., ¶ 54.
`
`The case and script files are then automatically downloaded to the user’s
`
`computer. Wahlquist, 2:36-40; David Decl. ¶ 55. “The script file instructs the
`
`computer to execute selected test files resident on the user’s diagnostic disk [and]
`
`specifies the creation of various log files which record the results of the test.”
`
`Wahlquist, 2:42-47; David Decl. ¶ 55. The log files are transmitted back to the
`
`help desk representative, who will “examine the results of the diagnostic tests to
`
`determine the nature of the user computer’s problem” and/or “call[] the user and
`
`discuss[] the test results and make[] specific recommendations to address the user’s
`
`individual.” ʼ469 patent, claims 1 and 10 (emphasis added); see David Decl. ¶¶ 56,
`
`100; Stone Dep. 487:21-488:14 (acknowledging that the script files in Wahlquist
`
`are used for computer diagnostics, are executed by a computer
`
`to gather
`
`information from the computer, and are not gathering information from a human
`
`individual).
`
`10
`
`

`

`problem.” Wahlquist, 2:50-3:9; David Decl. ¶ 55. Thus, Wahlquist is entirely
`
`directed to resolving computer problems and not to the remote monitoring of
`
`individuals. David Decl., ¶ 55.
`
`C. Neumann Discloses a Patient Monitoring Subsystem Without
`Scripted Interaction or Voice Recognition.
`
`Neumann is yet another reference that Cardiocom seeks to use as part of its
`
`combinations in order to find missing claim elements of the ʼ469 patent. The
`
`Neumann reference is directed to “a patient monitoring system” that includes
`
`“means for sensing physiological data from the patient; means for generating a
`
`video image of the patient and also includes an audio sensing and reproduction
`
`channel.” Neumann, Abstract; David Decl. ¶ 57. Neumann does not pertain to
`
`computer diagnostics (the field of Wahlquist) nor to speech signal processing (the
`
`field of Jacobs, as discussed below in subsection D). David Decl. ¶ 57.
`
`Neumann was concerned with providing an “improved patient monitoring
`
`system which results in smaller, less complex and less expensive beside units and
`
`lower overall system cost.” Neumann, 2:4-7; David Decl. ¶ 102; Stone Dep.
`
`304:17-305:6 (acknowledging that a person of ordinary skill in the art would
`
`understand that it was Neumann’s goal to lower overall system costs). Neumann
`
`recognized that, at the time, remote monitoring attempts focused on providing “a
`
`measure of remote monitoring by transmitting analog waveforms of physiological
`
`data from the bedside unit to equipment at a central station such as a nurse’s
`
`11
`
`

`

`station.” Neumann, 1:33-38; David Decl. ¶ 102. Subsequent remote monitoring
`
`efforts “included analog waveforms plus digital representations for display.”
`
`Neumann, 1:38-40; David Decl. ¶ 102. A limitation of these systems, however,
`
`was that these systems were “basically one-way systems reporting physiological
`
`data from the patient” with no communication with the patient. Neumann, 1:44-
`
`47; David Decl. ¶ 102. Given this limitation, an object of the invention in
`
`Neumann was to provide “an improved patient monitoring system in which
`
`physiological data and video images are integrated in communication and display.”
`
`Neumann, 1:54-57; David Decl. ¶ 102. A further object was to provide
`
`“continuous routine visual surveillance and audio communication with a patient.”
`
`Neumann, 2:8-10 (emphasis added); David Decl. ¶ 102.
`
`In light of these goals, Neumann discloses a bedside station where a patient
`
`is “constantly monitored through sensors.” Neumann, 6:12-13; David Decl. ¶ 58.
`
`This data may be viewed at the bedside station and may also be communicated to a
`
`remote central station over a network. Neumann, 6:12-21; David Decl. ¶ 58. The
`
`physiological data can be communicated “integrally with a video image of the
`
`patient derived from video system 30 and/or audio communications with the
`
`patient obtained through audio system 32.” Neumann, 6:18-21; David Decl. ¶ 58.
`
`Neumann does not disclose the use of computer programs or script programs
`
`to monitor the patient. See Neumann, 6:12-21 (only disclosing that a
`
`12
`
`

`

`“physiological patient . . . 28 is constantly monitored through sensors” and that
`
`this data may be “communicated to a remote central station . . . with a video image
`
`of the patient derived from [a] video system . . . 30 and/or audio communications
`
`with the patient obtained through [an] audio system”; see also id., 2:57-3:31
`
`(disclosing a preferred embodiment where “the [central] stations include a two-
`
`way audio system for interactive audio communication with the patient . . .”);
`
`David Decl. ¶ 60.
`
`In addition, Neumann fails to disclose the use of any speech recognition
`
`functionality in the bedside station. See id., 5:52-55 (merely disclosing “an audio
`
`unit 32” that permits “two-way audio communication with [the] patient.”); Stone
`
`Dep. 304:12-16 (agreeing that Neumann does not disclose speech recognition
`
`functionalities); David Decl. ¶ 61.
`
`D.
`
`Jacobs Pertains to Speech Signal Processing and Teaches Away From
`Localizing Speech Recognition Functionality Within a User Device.
`
`Unlike the ʼ469 patent, which relates to the remote monitoring of
`
`individuals, the Jacobs reference relates narrowly to speech signal processing.
`
`Jacobs, 1:9; see Stone Dep. 292:14-20 (agreeing that the field of the Jacobs patent
`
`is speech signal processing); David Decl. ¶ 62. Jacobs does not relate to computer
`
`diagnostics (the field of Wahlquist) or patient monitoring (the field of Cohen and
`
`Neumann). David Decl. ¶ 62.
`
`13
`
`

`

`Instead, the invention in Jacobs is directed to a specific implementation of
`
`voice recognition. David Decl. ¶ 63. Jacobs teaches that “[s]ystems that employ
`
`techniques to recover a linguistic message from an acoustic speech signal are
`
`called voice recognizers (VR).” Jacobs, 1:20-22; David Decl. ¶ 63. Voice
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`recognizers are composed of (1) an acoustic processor, which extracts speech
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`features, and (2) a word decoder, which decodes the features. Jacobs, 1:22-29;
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`David Decl. ¶ 63. Jacobs discloses an implementation where the “acoustic
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`processor” component is separated from the “word decoder[]” component. Jacobs,
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`4:4-10; David Decl. ¶ 63. The exemplary embodiment in Jacobs requires that the
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`“acoustic processor . . . resides in [the] personal communication device” such as a
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`cell phone whereas the “word decoder . . . resides in the central communication
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`center” or “cell base station.” Jacobs, 4:64-5:5; David Decl. ¶ 63.
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`Jacobs specifically teaches away from the localization of voice recognition
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`within the communication device, stating that “[i]f, instead of distributed VR
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`[voice recognition], VR is implemented solely in [the] portable cellular phone it
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`would be highly infeasible even for medium size vocabulary, connected [sic] word
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`recognition due to high computation cost.” Jacobs, 5:5-8; David Decl. ¶ 64; Stone
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`Dep. 294:1-296:3 (agreeing that a person of ordinary skill the art would understand
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`that it would be undesirable to put both components of voice recognition in the
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`personal communication device). On the other hand, if the voice recognition
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`“resides merely at the base station, the accuracy can be decreased dramatically due
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`to the degradation of speech signals associated with speech codec and channel
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`effects.” Jacobs, 5:9-12; David Decl. ¶ 64.
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`Jacobs thus teaches that a distributed voice recognition system has three
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`advantages: (1) “the reduction in cost of the cellular telephone due to the word
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`decoder hardware that is no longer resident in the telephone,” (2) the “reduction of
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`the drain on the battery . . . of portable telephone 40 that would result from locally
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`performing the computationally intensive word decoder operation,” and (3) “the
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`expected improvement in recognition accuracy in addition to the flexibility and
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`extendibility of the distributed system.” Jacobs, 5:12-21; David Decl. ¶ 65.
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`V. CARDIOCOM’S BURDEN
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`To prevail in its challenge of claims 1,2 and 5-10 of the ʼ469 patent,
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`Cardiocom bears the burden to show, by a preponderance of the evidence, that the
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`challenged claims are obvious over Cohen in view of Wahlquist, Neumann, and
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`Jacobs. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). Cardiocom’s petition is deficient
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`in many respects. As set forth more fully below, Cardiocom does not meet its
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`burden of proving that the art it relies upon is analogous, that it would be combined
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`in the manner Cardiocom describes, or that this combination would meet each
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`element of the challenged claims. In many instances, the evidence Cardiocom
`
`cites to fails to support its arguments. In other instances, Cardiocom fails to even
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`present argument on points that it is required to establish in order to prevail. Such
`
`deficiencies compel a finding that Cardiocom has not met even its initial burden of
`
`showing a reasonable likelihood of success on its challenges, much less its burden
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`of actually proving by a preponderance of the evidence that the challenged claims
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`are obvious.
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`Patent Owner expects that Cardiocom will seek to address its failures in its
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`reply by making new arguments or relying upon new portions of the references.
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`Considering new arguments or previously uncited passages would be unfair to
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`Bosch, which can only respond to the arguments Cardiocom and its expert has
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`actually made. Considering new material would deprive Bosch of its right and
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`opportunity to meaningfully respond. As the Board has previously held, all
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`ambiguities in a Petitioner’s petition are to be resolved against the Petitioner:
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`[W]e address only the basis, rationale, and reasoning put forth by the
`Petitioner and resolve all vagueness and ambiguity in Petitioner’s
`arguments against
`the Petitioner. If there is any other way [the
`secondary references] can be combined with [the primary reference]
`and yield a better combination, it is the responsibility of the Petitioner
`to clearly articulate it. It would be unfair to expect the Patent Owner
`to conjure up arguments against
`its own patent and just as
`inappropriate for the Board to take the side of the Petitioner to salvage
`an inadequately expressed ground proposing an alternative rationale.
`We recommend that all petitioners clearly express and explain their
`positions, especially on precisely how the teachings of multiple
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`references are used in combination to meet a claim feature. We also
`recommend that all petitioners clearly state what the differences are
`between the subject matter claimed in a claim alleged as obvious over
`prior art, and the prior art.
`Liberty Mutual Ins. Co. v. Progressive Casual Ins. Co., CBM2012-00003, Paper 8,
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`pp. 14-15 (PTAB 2012) (emphasis added). Thus, where Cardiocom fails to present
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`specific arguments, and to identify the specific evidentiary support for such
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`arguments in its Petition, those arguments must be rejected. Id.
`
`VI. DR. STONE APPLIED AN IMPROPER METHODOLOGY IN HIS
`OBVIOUSNESS ANALYSIS.
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`An obviousness analysis that use the applicant’s own teachings and claims
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`as a blueprint for combining prior art is improper. Ortho-McNeil Pharm., Inc. v.
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`Mylan Labs., Inc., 520 F.3d 1358, 1364 (Fed. Cir. 2008) (finding that hindsight
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`“reasoning is always inappropriate for an obviousness test.”); Interconnect
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`Planning Corp. v. Feil, 774 F.2d 1132, 1138 (Fed. Cir. 1985) (“The invention must
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`be viewed not with the blueprint drawn by the inventor, but in the state of the art
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`that existed at the time”). As the Federal Circuit held in Interconnect Planning:
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`[T]he [district] court, guided by the defendants, treated each reference
`as teaching one or more of the specific components for use in the
`[claimed invention], although the [claimed invention] did not then
`exist. Thus the court reconstructed the [claimed invention], using the
`blueprint of the [invention’s] claims. As is well established, this