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
`_____________________
`
`PATENT OWNER’S MOTION FOR OBSERVATION REGARDING
`CROSS-EXAMINATION OF REPLY WITNESS DR. ROBERT STONE
`
`
`_____________________
`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
`_____________________
`
`PATENT OWNER’S MOTION FOR OBSERVATION REGARDING
`CROSS-EXAMINATION OF REPLY WITNESS DR. ROBERT STONE
`
`
`
`Pursuant to the Board’s January 16, 2014 Scheduling Order (Paper 24)
`
`authorizing a motion for observation regarding cross-examination of reply witness,
`
`Patent Owner Robert Bosch Healthcare Systems, Inc. (“Bosch”) provides the
`
`following observations on the July 15-17, 2014 cross-examination of Petitioner
`
`Cardiocom, LLC’s (“Cardiocom”) reply declarant, Dr. Robert Stone:
`
`Claim Limitations
`
`1.
`
`In Ex. 2024, at 920:8-921:14, Dr. Stone testifies:
`
`[Q.] Okay. So the high-level instruction or script file [in Wahlquist] is
`-- that would be a file of instructions to the computer; correct?
`A. Computer or could include instructions to the user to be displayed
`by the script file.
`Q. Displayed by the computer?
`A. Yes.
`Q. So either it’s an instruction for the computer to perform an
`operation or an instruction for the computer to display information to
`the user?
`A. That’s correct.
`Q. Okay. And similarly, if you look at the second portion you cited,
`Column 2, line 43 through 45.
`A. Yes.
`Q. That refers to the diagnostic program running on the user’s
`computer?
`A. It does.
`Q. The diagnostic program on the computer initiates execution of the
`
`-1 -
`
`
`
`script file?
`A. Yes.
`Q. The script file instructs the computer to execute the selected test?
`A. Yes.
`Q. So these are -- it’s referring to instructions to the user’s computer;
`correct?
`A. That’s correct.
`Q. Okay. So the portion that you refer to in Wahlquist, Column 2,
`lines 17 through 24 and Column 2, lines 43 through 45, are
`instructions given to the user’s computer to perform certain
`operations?
`A. That’s correct.
`
`This is relevant to ¶ 84 of Ex. 1022, where Dr. Stone argues that Wahlquist
`
`discloses receiving a computer program with instructions as required for the
`
`“primary device” in claim 1. This is relevant because Dr. Stone admits that the
`
`portions in Wahlquist that he relies upon disclose only instructions provided to a
`
`user’s computer—not instructions provided to the patient through synthesized
`
`audio transmissions as required for claim 1. See Ex. 1001, U.S. Patent No.
`
`7,587,469 (“ the ’469 patent”), 21:13-19 (“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”).
`
`2.
`
`In Ex. 2024, at 925:9-21, Dr. Stone testifies:
`
`-2 -
`
`
`
`[Q.] You are not saying that you have expressly set forth any opinion
`that quotes the language from the Claim 1 of the ’469 patent converts
`said first digital file into synthesized audio transmissions and
`identifies that as being part of either Cohen or Wahlquist?
`[A.] What I stated was I did not express an opinion with respect to
`what you just asked in the -- in the question.
`
`This is relevant to Dr. Stone’s obviousness opinions with respect to Cohen and
`
`Wahlquist (Ex. 1022 ¶¶ 50-103). This is relevant because Dr. Stone also admits
`
`that he does not set forth an opinion in his reply declaration that the combination of
`
`Cohen and Wahlquist discloses “convert[ing] the first digital file into synthesized
`
`audio transmissions” as required in claim 1. The ’469 patent, 21:13-19.
`
`Dr. Stone’s Incorrect Understanding of Analogous Art
`
`3.
`
`In Exhibit 2024, at 1142:9-24, Dr. Stone testified:
`
`Q. Okay. And you understand that only analogous art can be
`considered as part of an obviousness combination?
`A. No. I don’t understand that.
`Q. Okay. So --
`A. I understand that a reasonably pertinent art can be considered as
`part of an obviousness consideration. That’s my understanding.
`Q. Okay. So in forming your opinions, you had an understanding that
`art that was not necessarily analogous could still be considered as part
`of an obviousness combination?
`[A.] What I stated that I can use a reasonably pertinent reference that
`is not analogous is my understanding.
`
`-3 -
`
`
`
`This is relevant to Dr. Stone’s legal analysis of obviousness at ¶ 24 of Ex. 1022, his
`
`reply declaration. This is relevant because Dr. Stone applies a confused and
`
`incorrect legal standard with respect to the requirement that obviousness
`
`combinations must use analogous art. See In re Klein, 647 F.3d 1343, 1348 (Fed.
`
`Cir. 2011); In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).
`
`4.
`
`In Exhibit 2069, Dr. Stone testified:
`
`Q. So you’re not -- sitting here today, you’re not saying that
`Wahlquist is, quote/unquote, analogous art?
`[A.] I’m not prepared to give a -- the answer is I’m not saying that
`right now, yes. You’re correct. I am not saying that at the moment.
`
`Id., 1145:24-1146:5.
`
`Q. Wahlquist is directed to diagnosis and fixing computer problems?
`A. Certainly with regard to remote diagnosis of computer problems.
`Q. Wahlquist is not meant to monitor individuals?
`A. An individual human, no; an individual computer, yes.
`
`Id., 864:13-20.
`
`Q. Okay. And you agree that Wahlquist is not meant for monitoring
`individual humans?
`A. I tend to agree with that, yes.
`
`Id., 866:2-4. This is relevant to Dr. Stone’s usage of Wahlquist in obviousness
`
`combinations, on pages 10 and 30 of Ex. 1008, and his incorrect legal standard set
`
`forth in Ex. 2024, at 1142:9-24. This is relevant because Dr. Stone’s incorrect
`
`-4 -
`
`
`
`legal standard explains his usage of Wahlquist in obviousness combinations
`
`despite his testimony that Wahlquist is not analogous art.
`
`5.
`
`In Exhibit 2024, at 870:17-871:9 and 955:15-956:12, Dr. Stone
`
`testified that in considering the field of endeavor of a patent, he does not limit his
`
`analysis to the claimed invention:
`
`Q. And we have been talking about how you determine -- how you
`reached your opinion that Wahlquist was in the same field of
`endeavor as the ’469 patent, and that’s by comparing Wahlquist to the
`embodiments disclosed in the specification of the ’469 patent;
`correct?
`[A.] The embodiments and the stated application in the disclosure;
`that’s correct.
`[Q.] Yeah. But not limited to the invention claimed in the ’469 patent?
`A. No.
`Q. Okay. And then with respect to your opinion that Wahlquist is
`reasonably pertinent to the problems that the ’469 patent addresses,
`that was also based on your comparison of Wahlquist with the
`embodiments in the ’469 patent?
`A. That’s correct.
`
`Ex. 2024, 870:17-871:9.
`
`Q. Okay. And you have a broader understanding of the field of the
`invention of the ’186 patent than Dr. David and Bosch have?
`A. I do based on the disclosure of the ’186 patent.
`Q. And when you say “based on the disclosure of the ’186 patent,”
`
`-5 -
`
`
`
`you’re referring to the specification of figures of the ’186 patent?
`A. That’s correct.
`Q. You’re not limiting your understanding of the field of the ’186
`patent to the claims -- the scope of the claims of the ’186 patent, for
`example?
`[A.] I am not limiting it to those claims.
`[Q.] Your understanding of the field of invention of the ’186 patent is
`broader than what’s claimed in the claims of the ’186 patent?
`A. That is correct.
`Q. And you applied that understanding of the field of invention when
`you opined that Wahlquist is analogous prior art?
`A. I did.
`Id., 955:15-956:12;1 see also 959:25-960:4. This is relevant to Dr. Stone’s
`
`argument at pages 10 and 30 of Ex. 1008 that Wahlquist is a proper reference to
`
`use for obviousness. This is relevant because Dr. Stone failed to limit his analysis
`
`to the claimed invention. In re Klein, 647 F.3d at 1348 (“A reference qualifies as
`
`prior art for an obviousness determination under § 103 only when it is analogous to
`
`the claimed invention.”)
`
`Secondary Considerations of Non-Obviousness
`
`6.
`
`At Ex. 2024, at 879:2-8 and 884:14-885:16, Dr. Stone testified:
`
`1 While this testimony is related to the ’186 patent, Dr. Stone testified that he
`applies the same legal principles in forming his opinions with respect to the four
`patents at issue, including the ’469 patent. Ex. 2024, 1140:6-10.
`
`-6 -
`
`
`
`Q. So a person of ordinary skill in the art would have understood that
`there is a demand for products that would meet Claims 1, 2 and 5
`through 10 of the ’469 patent at the time of the invention of the ’469
`patent?
`[A.] A product, yes.
`
`Id., 879:2-8.
`
`Q. Okay. So a person of ordinary skill in the art would have
`understood that there was a need for a product that combines the
`teachings of Cohen and Wahlquist in the manner that you set forth in
`your declaration?
`[A.] Not only a need, but that it was obvious to do so, yes.
`[Q.] A person of ordinary skill in the art at the time of the ’469 patent
`would have understood that that need had existed for quite some time?
`[A.] Answer is yes.
`[Q.] And a person of ordinary skill in the art at the time of the ’469
`patent would understand that filling that need through an invention
`that would meet all the elements of Claims 1, 2 and 5 through 10 of
`the ’469 patent could help hospitals and medical providers who are
`under pressure to control their costs and who look to technology to do
`so?
`[A.] If they could come up with something that was truly an invention,
`that is true. That’s correct.
`
`Id., 884:14-885:16; see also id. 889:16-890:5. This is relevant to Dr. Stone’s
`
`overall opinions on obviousness (Ex. 1022 ¶¶ 50-103). This is relevant because
`
`Dr. Stone agrees that there was a long-felt need for the claimed inventions of the
`
`-7 -
`
`
`
`’469 patent, constituting evidence of secondary indicia of non-obviousness.
`
`7.
`
`At Ex. 2024, at 885:25-886:6, Dr. Stone testifies:
`
`[Q.] You’ve not identified in your new declaration anyone who
`developed a product that implemented Claims 1, 2 and 5 through 10
`of the ’469 patent either before or, for that matter, after the ’469
`patent issued?
`A. I have not set forth that in my declaration; that’s correct.
`
`See also id. 854:20-856:6. This is relevant to Dr. Stone’s discussion of
`
`motivations to combine the prior art (Ex. 1022 ¶¶ 63-73) because, despite this
`
`recognized long-felt need for the claimed invention, Dr. Stone admits he could find
`
`no single reference or system combining the same elements in the manner set forth
`
`in the ’469 patent prior to the invention of the patent.
`
`Dated: July 31, 2014
`
`Respectfully submitted,
`
`By:
`
`/Don Daybell/
`Don Daybell, Reg. No. 50,877
`Attorney for Patent Owner Robert Bosch
`Healthcare Systems, Inc.
`
`-8 -
`
`
`
`EXHIBIT LIST
`
`Exhibit No.
`
`Description
`
`Filed
`
`BOSCH 2001
`
`Affidavit of Bas De Blank
`
`BOSCH 2002
`
`Affidavit of Lillian Mao
`
`BOSCH 2003
`
`The New Shorter Oxford English
`Dictionary, 1993, pp. 606, 1271
`
`BOSCH 2004
`
`Harper Collins Dictionary of “Computer
`Terms,” 1991, p. 191
`
`BOSCH 2005
`
`Webster’s New World, “Computer
`Dictionary,” Tenth Edition, 2003, p. 298
`
`BOSCH 2006
`
`Affidavit of Bas De Blank
`
`BOSCH 2007
`
`Affidavit of Lillian Mao
`
`BOSCH 2008
`
`Affidavit of Siddhartha Venkatesan
`
`BOSCH 2009
`
`Dr. David’s Declaration
`
`BOSCH 2010
`
`Yadin B. David CV
`
`BOSCH 2011
`
`Deposition Transcript of Dr. Stone Taken on
`March , 7, 12 & 13, 2014
`
`BOSCH 2012
`
`Defendant’s Preliminary Claim
`Constructions and Disclosure of Extrinsic
`Evidence Pursuant to Local Patent Rule 4-2
`
`-9 -
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`
`
`Exhibit No.
`
`Description
`
`Filed
`
`BOSCH 2013
`
`BOSCH 2014
`
`BOSCH 2015
`
`BOSCH 2016
`
`Served on March 14, 2014
`
`Declaration by Matthew Might, PH.D
`Regarding Claim Constructions of Asserted
`Patents, filed on March 14, 2014
`
`Declaration by Robert T. Stone, PH.D
`Regarding U.S. Patent No. 7,587,469 Under
`37 C.F.R. § 42.63 (a), dated February 13,
`2014
`
`Declaration by Robert T. Stone, PH.D
`Regarding U.S. Patent No. 7,870,249 Under
`37 C.F.R. § 42.63 (a), dated April 9, 2014
`
`Declaration of Robert T. Stone, Ph.D in
`Support of Petition for Inter Partes Review
`of U.S. Patent No. 7,870,249, dated April
`24, 2014
`
`BOSCH 2017
`
`Deposition Errata Sheets of Dr. Stone
`
`BOSCH 2018
`
`Supplemental Declaration Responding to
`Patent Owner Contentions By Robert T.
`Stone, Ph.D. Regarding U.S. Patent No.
`7,587,469 Under 37 C.F.R. § 42.63(a)
`
`BOSCH 2019
`
`Medtronic’s Petition for Inter Partes Review
`Under 37 C.F.R. § 42.100, filed on April 10,
`2014
`
`BOSCH 2020
`
`Medtronic’s Petition for Inter Partes Review
`Under 37 C.F.R. § 42.100, filed on April 25,
`
`-10 -
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`
`
`Exhibit No.
`
`Description
`
`Filed
`
`2014
`
`BOSCH 2021
`
`BOSCH 2022
`
`Declaration by Robert T. Stone, Ph.D
`Regarding U.S. Patent No. 7,516,192 Under
`37 C.F.R. § 42.63(a), dated July 19, 2013
`
`Declaration by Robert T. Stone, Ph.D
`Regarding U.S. Patent No. 7,921,186 Under
`37 C.F.R. § 42.63(a), dated July 11, 2013
`
`BOSCH 2023
`
`Signature Pages to Dr. David’s Depositions
`
`BOSCH 2024
`
`Deposition Transcript of Dr. Stone Taken on
`July 15, 16 & 17, 2014
`
`BOSCH 2025
`
`BOSCH 2026
`
`Patent Owner’s Objections to Evidence
`Submitted by Cardiocom, LLC With
`Respect to U.S. Patent No. 7,587,469, filed
`July 9, 2014
`
`Patent Owner’s Objections to Evidence
`Submitted by Cardiocom, LLC With
`Respect to U.S. Patent No. 7,587,469, filed
`June 17, 2014
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`-11 -
`
`
`
`CERTIFICATION OF SERVICE (37 C.F.R. §§ 42.6(e))
`
`The undersigned hereby certifies that the above-captioned PATENT
`
`OWNER’S MOTION FOR OBSERVATION REGARDING CROSS-
`
`EXAMINATION OF REPLY WITNESS DR. ROBERT STONE and Exhibits
`
`2012-2022 and 2024-2026 were served in its entirety on July 31, 2014, upon the
`
`following parties via electronic mail:
`
`Counsel for Petitioner
`
`Daniel W. McDonald
`Andrew J. Lagatta
`Merchant & Gould
`80 South 8th St., Suite 3200
`Minneapolis, MN 55402
`CardiocomIPR@merchantgould.com
`
`By:
`
`/Karen Johnson/
`Karen Johnson
`
`-12 -
`
`
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