Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 22
`Entered: January 28, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_______________
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`CARDIOCOM, LLC
`Petitioner
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`v.
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`ROBERT BOSCH HEALTHCARE SYSTEMS, INC.
`Patent Owner
`_______________
`
`Case IPR2013-00468
`Patent 7,516,192 B2
`_______________
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`
`
`Before JUSTIN T. ARBES, BRYAN F. MOORE, and
`TRENTON A. WARD, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
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`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`
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`I. INTRODUCTION
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` A. Background
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`Cardiocom, LLC (Petitioner) filed a Petition to institute an inter partes
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`review of claims 1-19 of U.S. Patent No. 7,516,192 B2 (“the ‟192 patent”).
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`IPR2013-00468
`Patent 7,516,192 B2
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`Paper 1. Robert Bosch Healthcare Systems, Inc. (Patent Owner) filed a
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`Preliminary Response. Paper 11. We have jurisdiction under 35 U.S.C. § 314.
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`The standard for instituting an inter partes review is set forth in 35 U.S.C.
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`§ 314(a), which provides as follows:
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`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.
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`Petitioner contends that the challenged claims are unpatentable under
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`35 U.S.C. § 103 on the following specific grounds:
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`Reference(s)
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`Wright Jr., U.S. Patent No.
`5,704,029 (Ex. 1002)
`Wright Jr. and Goodman, U.S.
`Patent No. 5,827,180 (Ex. 1003)
`Goodman and Wahlquist, U.S.
`Patent No. 5,367,667 (Ex. 1004)
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`
`
`Basis
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`§ 103
`
`§ 103
`
`Claims
`challenged
`1-3, 6, 7, 11, 12,
`and 17-19
`1-19
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`§ 103
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`1-19
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`For the reasons given below, we grant the Petition and institute an
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`inter partes review of all claims challenged.
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`B. Additional Proceedings
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`The ‟192 patent is the subject of co-pending district court litigation: Robert
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`Bosch Healthcare Systems v. Cardiocom, LLC, Civil Action No. 2:13-cv-349 (E.D.
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`Tex.). Pet. 1. Furthermore, at the time the Petition was filed, patents related to the
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`‟192 patent were the subject of other district court litigation, ex parte
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`reexamination, and inter partes review. Pet. 1-2.
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`C. The ’192 Patent (Ex. 1001)
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`The ‟192 patent, titled “Networked System for Interactive Communication
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`and Remote Monitoring of Individuals,” issued on April 7, 2009. The ‟192 patent
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`relates to “a networked system for remotely monitoring individuals and for
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`communicating information to the individuals through the use of script programs.”
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`Ex. 1001, col. 1, ll. 39-43.
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`The ‟192 patent describes the need for remote monitoring of patients in
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`out-patient or home healthcare programs. Id. at col. 1, ll. 45-50; col. 2, ll. 33-37.
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`According to the patent, the use of personal computers, medical monitoring
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`devices, and interactive telephone or video response systems for remote monitoring
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`in the prior art had proved inadequate because of their expense, limited multimedia
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`capability, or the complexity of managing non-compliant patients. Id. at col. 1, l.
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`65 – col. 2, l. 32.
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`One embodiment of the ‟192 patent, shown in Figure 1, reproduced below, is
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`networked system 16 with server 18 connected to the Internet (communication
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`network 24), where server 18 sends script programs to each remotely
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`programmable apparatus 26. Id. at col. 4, ll. 18-35.
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`Figure 1 depicts a block diagram of networked system of the invention.
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`According to Figure 1, system 16 may include any number of remotely
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`programmable apparatuses 26 (in Figure 1, two are shown) for monitoring any
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`number of patients. Id. at col. 4, ll. 42-44. In one preferred embodiment, each
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`patient is provided with monitoring device 28 (such as a blood glucose meter),
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`which produces measurements of a physiological condition of the patient (such as
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`blood glucose concentrations in the patient) and transmits those measurements to
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`the patient‟s remote apparatus 26 via standard cable 30. Id. at col. 4, ll. 45-61. In
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`operation, remotely programmable apparatus 26 executes a script program received
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`from server 18. Id. at col. 5, ll. 7-9. That script program includes “queries,
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`reminder messages, information statements, useful quotations, or other information
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`of benefit to the patient.” Id. at col. 5, ll. 9-11.
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`Claim 1, the sole independent claim challenged, illustrates the claimed
`
`subject matter and is reproduced below:
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`1. A monitoring system for communicating with at least
`one individual, the monitoring system comprising:
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`a computer configured to communicate with at least
`one remotely situated apparatus;
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`a user interface in communication with the computer
`for entering, authoring, selecting, or any combination
`thereof, at least one of (i) one or more messages to be
`presented to the individual, (ii) one or more queries to
`be answered by the individual, (iii) one or more
`response choices corresponding to the one or more
`queries or (iv) any combination thereof;
`
`a data merge program configured to generate a
`customized script program by customizing a generic
`script program, wherein the customized script
`program is to be executed by the remotely situated
`apparatus and includes (i) a display command to
`present to the individual at least one of the one or
`more messages, the one or more queries, the one or
`more response choices corresponding to the one or
`more queries or any combination thereof and (ii) an
`input command to receive responses when the script
`program includes one or more queries to be presented;
`and
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`one or more databases accessible by the data merge
`program for storing the generic script program and
`any responses received from the remotely situated
`apparatus.
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`
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`D. Claim Construction
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`Consistent with the statute and the legislative history of the Leahy-Smith
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`America Invents Act, Public Law No. 112-29, 125 Stat. 284 (September 16, 2011),
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`the Board will interpret claims of an unexpired patent using the broadest
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`reasonable construction in light of the specification of the patent. See Office
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`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012); 37
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`C.F.R. § 42.100(b).
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`1.
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`“script program”
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`Claim 1 recites a script program. Petitioner provides a dictionary definition
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`of the term as being “a type of program that consists of a set of instructions to an
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`application or a utility program. A script usually consists of instructions expressed
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`using the application‟s or utility‟s rules and syntax, combined with simple control
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`structures such as loops and if/then expressions.” Ex. 1008 ¶ 25 (citing
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`MICROSOFT PRESS COMPUTER DICTIONARY (3d ed. Microsoft Press 1997) (Ex.
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`1009, 422-23)). Petitioner further argues that the term “script program” means “a
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`program including at least one text command and [that] can be interpreted and
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`performed by a device, such as a computer.” Pet. 12 (citing Declaration by Robert
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`T. Stone (Ex. 1008) ¶ 25). Petitioner argues that a script program must include “at
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`least one text command,” but Petitioner does not explain why a script program
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`necessarily must include a text command in view of the definition of the “script,”
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`above, that does not require a text command.
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`Patent Owner argues that “script program” should mean “a set of
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`instructions or commands written in a language that can be interpreted and
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`executed by another program.” Prelim. Resp. 10. Hence, Patent Owner argues
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`that a “script command” must be interpreted and executed by another program, as
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`opposed to a device or computer. As Patent Owner notes, the ‟192 patent
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`Specification discloses a microprocessor that stores firmware in memory, in which
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`the firmware includes a script interpreter used by the microprocessor to execute
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`script programs. Ex. 1001, col. 5, ll. 55-59. In other words, the ‟192 patent
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`Specification discloses that a microprocessor executes script programs (by using a
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`script interpreter). Patent Owner argues that a “script interpreter” as disclosed in
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`Patent 7,516,192 B2
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`the Specification is “another program.” Patent Owner, however, does not
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`demonstrate persuasively that the microprocessor, which executes the script
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`program, is necessarily “another program” and not a device, such as a computer.
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`In any event, Patent Owner does not demonstrate that claim 1 requires a script
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`program that is not executed by a device or computer.
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`Based on the definition of “script program,” as a set of instructions of a
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`program and the disclosure that a script program is executed, we agree that under a
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`broad, but reasonable, construction of the term, a “script program” is a program
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`that contains a set of instructions that is capable of being executed and interpreted.
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`2.
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`“data merge program”
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`Claim 1 recites a data merge program. Petitioner argues that the term “data
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`merge program” should be construed to mean “a software module that combines
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`two or more sets of items into one.” Pet 13 (citing Ex. 1008 ¶ 26). Petitioner
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`further cites a dictionary definition of the term “merge” as meaning “combin[ing]
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`two or more sets of items into one, usually in a specified sequence.” Pet. 13 (citing
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`IEEE STANDARD DICTIONARY OF ELECTRICAL AND ELECTRONICS TERMS, 583 (The
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`Institute of Electrical and Electronics Engineering, 4th ed. 1988) (Ex. 1010)). We
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`note that the dictionary definition states that merging items is done “usually in a
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`specified sequence,” which means that merged items are not required to be in a
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`specified sequence. Therefore, we do not construe the “data merge program” as
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`requiring merged items to be in a specified sequence.
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`Patent Owner argues that the ‟192 patent Specification “refers to . . . a „mail
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`merge application,‟ which is more specific than merging generally.” Therefore, “it
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`is not reasonable to adopt a construction” of the term “data merge program” that
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`“includes „merging‟ of any „items‟ and not only „data,‟ and includes any kind of
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`„merging‟ and not only merging data into a template.” Prelim. Resp. 15. Thus,
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`Patent Owner argues that the term “data merge program” should be construed to
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`mean “software that takes data and inserts the data into a script program or other
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`template.” Prelim. Resp. 12-13.
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`Although we agree with Patent Owner that the ‟192 patent Specification
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`discloses “merging personal data with the script programs, much like a standard
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`mail merge application” (Ex. 1001, col. 12, ll. 60-62), Patent Owner does not
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`indicate that the ‟192 patent Specification also discloses that a data merge program
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`contains specifically enumerated features of a “standard mail merge application”
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`and what such specifically enumerated features of the mail merge application
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`might be. Also, claim 1 recites “a data merge program configured to generate a
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`customized script program” and, therefore, explicitly recites that the data merge
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`program is for generating a script program. Incorporating explicitly recited
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`features of the data merge program (i.e., for merging data with a script program)
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`into the definition of the term would be redundant. Finally, claim 1 explicitly
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`recites that “data” is to be merged rather than “items,” therefore, we agree that
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`Petitioner‟s construction should include the term data, rather than item.
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`Therefore, we construe the term “data merge program” broadly, but
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`reasonably, and in light of the Specification to mean a program that combines two
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`or more sets of data into one, as proposed by Petitioner.
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`3.
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`“pointer”
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`Claims 2 and 5 recite a pointer. Petitioner argues that the term “pointer”
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`should be construed to mean “an identifier that indicates the location of an item of
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`data.” Pet. 14. Patent Owner does not propose a construction for this term.
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`In accordance with a broad but reasonable construction of the term in light
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`of the Specification, we adopt the Petitioner‟s construction of the term “pointer” to
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`be “an identifier that indicates the location of an item.” Pet. 14.
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`4.
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`“script assignment unit”
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`Claims 2, 5, 8, and 10 recite a script assignor. Petitioner argues that the term
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`“script assignment unit” should be construed to mean “a software module that
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`associates a script program with an individual.” Pet. 13. Patent Owner does not
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`propose a construction for this term. In accordance with a broad but reasonable
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`construction of the term in light of the Specification, we adopt the Petitioner‟s
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`construction of the term “script assignment unit” to be a program that associates a
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`script program with an individual. Id.
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`II. ANALYSIS
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`A. Overview of Wright Jr. (Ex. 1002)
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`Wright Jr. discloses a system for computerized form completion and
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`processing. Ex. 1002, Abstract. In one embodiment, an electronic form is sent
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`form a personal computer (PC) to a device, such as a personal digital assistant
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`(PDA). Id. at col. 3, ll. 28-39. The PDA runs a forms engine that presents
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`questions to a user and displays messages based on the response to a particular
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`question. Id. at col. 3, ll. 40-51. The forms engine executes a script that, among
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`other things, advances to the next question. Id.
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`B. Overview of Goodman (Ex. 1003)
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`Goodman discloses a system for monitoring the health of a patient in which
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`a host computer is in communication with a health care provider‟s computer and a
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`patient‟s computer. Ex. 1003, col. 1, ll. 11-13, col. 2, ll. 45-49. In one example,
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`the host computer receives a treatment plan for a patient from the health care
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`provider and generates an algorithm based on the treatment plan. Id. at col. 2, ll.
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`54-57. The algorithm is programmed into a message device, which is in the
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`possession of the patient. Id. at col. 2, ll. 49-50, 57-58. The message device
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`prompts the patient to measure and enter physiological data as dictated by the
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`treatment plan. Id. at col. 2, ll. 59-61.
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`C. Overview of Wahlquist (Ex. 1004)
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`Wahlquist discloses a system for performing remotely, computer diagnostic
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`tests on personal computers. Ex. 1004, col. 1, ll. 7-10. A computer user calls a
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`customer service help desk to resolve a computer issue. Id. at col. 2, ll. 8-10, 17.
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`A representative at the customer service help desk creates a computerized case file
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`that includes a unique case identification number, user identification, and user‟s
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`computer identification information. Id. at col. 4, ll. 41-50. The representative
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`also selects diagnostic tests based on the user‟s request, the selection used to build
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`a script file. Id. at col. 2, ll. 17-18, 22-23. The case file and the script file are
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`submitted by the representative to a database manager computer and downloaded
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`to the user‟s computer. Id. at col. 5, ll. 37-39, 63-66. The script file then is
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`executed on the user‟s computer by a diagnostic program on the user‟s computer.
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`Id. at col. 2, ll. 39-40, 42-43. The script file instructs the user‟s computer to
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`execute desired test files and specifies the creation of various log files to record the
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`results of the tests. Id. at col. 2, ll. 45-47.
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`A. Obviousness over Wright Jr.1
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`1. Claims 1-3, 6, 7, 11, 12, and 17-19
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`Petitioner asserts that claims 1-3, 6, 7, 11, 12, and 17-19 are unpatentable
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`under 35 U.S.C. § 103(a) over Wright Jr. Pet. 5.
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`1 References to anticipation, on page 18 and the Table of Contents of the Petition,
`appear to be typographical errors, as the discussion on pages 18-20 and the detailed
`claim charts on pages 34-54 refer to obviousness.
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`Petitioner argues that Wright Jr. provides teachings for sending customized
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`script programs to remote computing devices for collecting and recording data.
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`Pet. 16, 21-23. Patent Owner argues that Wright Jr. “does not teach a customized
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`script program that includes a display command and an input command, because
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`. . . [Wright Jr.] only teaches scripts that execute after questions are displayed to,
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`and input is collected from, the user.” Prelim. Resp. 43.
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`Claim 1 recites “the customized script program . . . includes (i) a display
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`command to present to the individual . . . queries . . . and (ii) an input command to
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`receive responses . . . .” Patent Owner argues that Wright Jr. teaches that “its
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`„execute script‟ function is distinct from the functions that display queries and
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`receive responses.” Prelim. Resp. 43 (citing Ex. 1002, col. 17, ll. 29-45).
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`However, as noted above, for the purposes of this decision, we construe a “script
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`program” to be a program that contains a set of instructions that is capable of being
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`executed and interpreted. Wright Jr. teaches that a forms designer can create an
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`electronic form that displays queries and provides user input responses. See Pet.
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`37 (citing Ex. 1002, col. 9, l. 33 – col. 13, l. 23). Petitioner has demonstrated
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`sufficiently that Wright Jr. discloses an executable form capable of executing
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`“script” functions and that the executable form may be considered a “script
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`program.”
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`Patent Owner argues that Wright Jr. “does not teach „a data merge program
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`configured to generate a customized script program by customizing a generic script
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`program‟ because . . . [Wright Jr.] only teaches a user manually modifying a
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`duplicated form to revise or modify it.” Prelim. Resp. 32-33. However, as noted
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`above, for the purposes of this decision, we construe a “data merge program” to be
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`a program that combines two or more sets of data into one. Petitioner has
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`demonstrated sufficiently that Wright Jr. discloses a program in which a user can
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`create a duplicate form by editing an existing form. Pet. 35. Further, claim 1 does
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`not require that the data merge program automatically enter data. Claim 1 only
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`requires that the data merge program generate a customized script program by
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`customizing a generic script program. Claim 1 does not exclude the possibility
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`that the data to be merged is provided by a user. For example, claim 1 recites “a
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`data merge program configured to generate a customized script program by
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`customizing a generic script program.” Claim 1 does not indicate how the
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`customizing is to be done or that it must be done without user input of data. Thus,
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`Patent Owner‟s argument is not commensurate in scope with the claim language.
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`We are persuaded, based on the record before us, by Petitioner‟s argument that the
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`field editor of Wright Jr. would result in the generation of a customized script from
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`a generic script. See, e.g., Ex. 1002, col. 6, ll. 33-40; col. 9, ll. 51-60; col. 8, ll.
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`32-38.
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`Patent Owner argues Wright Jr. “does not teach at least the limitation „one or
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`more databases . . . for storing the generic script program.‟” Prelim. Resp. 46.
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`Petitioner explains that user responses are stored on the personal computer in a
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`tab-delimited format for use with a database. Pet. 37-38 (citing Ex. 1002, col. 3, ll.
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`28-40; col. 5, ll. 7-15; col. 14, ll. 1-10). Wright Jr. also teaches that a form can be
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`selected from a list of existing forms. Id. It is not necessary for the cited art to
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`teach precisely “the specific subject matter of the challenged claim, for a court can
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`take account of the inferences and creative steps that a person of ordinary skill in
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`the art would employ.” KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)
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`(“KSR”). On the record before us, we are persuaded that Petitioner has shown
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`sufficiently that an existing electronic form (generic script program) may be stored
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`in a database.
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`Petitioner provides explanations as to how each remaining claim limitation
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`is disclosed or suggested by Wright Jr. and articulates, based on the current record,
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`sufficient reasoning with a rational underpinning to support its obviousness
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`challenge. Pet. 18-20, 34-54; see also KSR, 550 U.S. at 418. Upon consideration
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`of Petitioner‟s analysis and supporting evidence, and taking into account Patent
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`Owner‟s preliminary response, we determine that Petitioner‟s contentions have
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`merit.
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`Accordingly, on the record before us, we are persuaded that Petitioner has
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`shown a reasonable likelihood that it will prevail in its assertion that independent
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`claim 1 is unpatentable over Wright Jr. Additionally, we are persuaded, in
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`connection with this ground, that Petitioner has shown a reasonable likelihood of
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`unpatentability as to claims 2, 3, 6, 7, 11, 12, and 17-19, which ultimately depend
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`from claim 1.
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`D. Obviousness over Wright Jr. and Goodman
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` Petitioner asserts that claims 1-19 are unpatentable under 35 U.S.C. §
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`103(a) over Wright Jr. and Goodman. Pet. 5. Petitioner relies on the teachings of
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`Goodman for certain limitations of claims 1-19. See Pet. 34-54. Petitioner asserts
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`that it would have been obvious for a person of ordinary skill in the art to combine
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`Wright Jr. and Goodman “because the script programs of Wright Jr. provide
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`numerous advantages relating to flexibility and customized collection of user
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`information.” Pet. 22 (citing Ex. 1008 ¶ 57).
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`Patent Owner argues that Wright Jr. “does not teach all of the advantages of
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`scripts that Cardiocom alleges,” and the “actual teachings of [Wright Jr.] offer no
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`significant advantages to the system of Goodman.” Prelim. Resp. 50-51.
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`Patent Owner argues that it would not have been obvious to one of ordinary
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`skill in the art to combine the teachings of Wright Jr. and Goodman because,
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`among other things, “there are significant differences between the system of
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`Goodman and the system of Wright,” and Goodman‟s system does not use script
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`programs. Prelim. Resp. 50-52.
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`Goodman discloses a system in which a computer generates an algorithm at
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`a device and programs the algorithm into another device (i.e., a message device).
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`Ex. 1003, col. 2, ll. 49-50, 54-58. Wright Jr. also discloses a system in which a
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`script file (or algorithm) is generated at a computer device and sent to and executed
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`by another device (i.e., a PDA). Ex. 1002, col. 6, ll. 33-45, 62-67; col. 7, ll. 47-62.
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`In other words, both Wright Jr. and Goodman disclose systems in which an
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`algorithm or script file is generated at one device and sent to another device for
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`execution. Patent Owner does not demonstrate persuasively that the combination
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`of the known system of Wright Jr.2 and the known system of Goodman3 would
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`have entailed any more than the combination of known systems to perform their
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`known functions to achieve the predictable result of a system in which a device
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`generates an algorithm and programs the algorithm into another device for
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`execution on the other device. “The combination of familiar elements according to
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`known methods is likely to be obvious when it does no more than yield predictable
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`results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).
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`Petitioner provides explanations as to how each claim limitation is disclosed
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`or suggested by the combination of Wright Jr. and Goodman and articulates, based
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`on the current record, sufficient reasoning with a rational underpinning to support
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`a conclusion of obviousness. Pet. 21-28, 34-54. Upon consideration of
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`2 i.e., a device (i.e., computer) that generates a script file (or algorithm) and
`programs the script file (i.e., downloads the script file) to another device (i.e., a
`user‟s computer) for execution on the other device.
`3 i.e., a device that generates an algorithm and programs the algorithm into another
`device for execution.
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`Petitioner‟s analysis and supporting evidence, and taking into account Patent
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`Owner‟s preliminary response, we determine that Petitioner‟s contentions have
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`merit.
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`Accordingly, on the record before us, and for the foregoing reasons, we are
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`persuaded that Petitioner has shown a reasonable likelihood that it will prevail in
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`its assertion that independent claim 1 is unpatentable over Wright Jr. and
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`Goodman. Additionally, we are persuaded, in connection with this ground, that
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`Petitioner has shown a reasonable likelihood of unpatentability as to claims 2-19,
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`which ultimately depend from claim 1.
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`E. Obviousness over Goodman and Wahlquist
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`Petitioner asserts that claims 1-19 are obvious under 35 U.S.C. § 103(a) over
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`Wahlquist in combination with Goodman. Pet. 6.
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`Claim 1 recites using a data merge program to generate a customized script
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`program from a generic script program.
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`Petitioner argues that Goodman discloses generating algorithms that are
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`based on treatment plans developed specifically for a patient. Pet. 31, 35, 42, 43,
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`50, 52, and 53. Patent Owner argues that “[b]ecause Goodman does not teach the
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`claimed function of „generat[ing] a customized script program by customizing a
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`generic script program,‟ Goodman cannot teach a „data merge program‟ that
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`performs that function.” Prelim. Resp., 34-35.
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`As Petitioner explains, Goodman discloses “logic sequences or algorithms
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`. . . [that] are developed based on a treatment plan or guidelines for a specific
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`patient. Ex. 1003, col. 8, ll. 38-40. However, Petitioner has not demonstrated
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`sufficiently that Goodman also discloses a program that combines two or more sets
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`of data into one (i.e., a “data merge program”). Based on the record before us,
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`Petitioner has demonstrated that Goodman only discloses developing a treatment
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`plan and does not disclose combining the treatment plan, or any other set of data,
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`with at least one other set of data.
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`Petitioner also argues that Wahlquist discloses selecting tests from a menu to
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`build a script file. Pet. 30. Wahlquist discloses a representative creating a
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`“computerized case file which includes . . . user identification information.” Ex.
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`1004, col. 2, ll. 10-14. Wahlquist also discloses that the representative “selects
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`various diagnostic tests from a menu . . . to build a high level . . . script file.” Id. at
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`col. 2, ll. 18-23. Patent Owner argues that “the tests are not part of the script file,
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`and they are only executed, not “combine[d]” as Cardiocom asserts.” Prelim.
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`Resp. 37.
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`As previously described, Petitioner explains that Wahlquist discloses
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`creating a computerized case file and a (separate) script file. However, as Patent
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`Owner points out, Petitioner does not demonstrate sufficiently that Wahlquist also
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`discloses a program that combines two or more sets of data into one (i.e., a “data
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`merge program”). Instead, Wahlquist merely discloses creating two separate files
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`or sets of data (i.e., a computerized case file and a script file) but does not disclose
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`combining the two separate sets of data into one.
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`Petitioner argues that Wahlquist discloses that “the created script program
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`and a case management file [are] sent to a user computer, thereby associating the
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`script program with the case management file.” Pet. 36; Ex. 1008 ¶ 133. Even
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`assuming that a case management file is “associated” with a script program in
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`Wahlquist, Petitioner does not demonstrate that Wahlquist also discloses that two
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`sets of data (i.e., the case management file and the script program) are combined
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`into one. In other words, Petitioner does not demonstrate that a set of data that is
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`“associated with” another set of data also is combined (or “merged”) with the other
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`set of data.
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`Petitioner argues that Wahlquist discloses that “the created script program
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`and a case management file [are] to a user computer, thereby associating the script
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`program with the case management file [and] information from the case
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`management file [is used] to perform diagnostic tests and return results to a
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`server.” Pet. 36; Ex. 1008 ¶ 133. In other words, Petitioner argues that the two
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`separate sets of data (i.e., the script program and the case management file) of
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`Wahlquist actually are “merged” (i.e., combined into one data set) because one set
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`of data (i.e., the script file) uses the other set of data (i.e., the case management
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`file) to perform tests. However, even assuming that the script file “uses” the case
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`management file in Wahlquist, Petitioner does not demonstrate persuasively that
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`one set of data “using” information from another set of data necessarily results in
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`the two sets of data being combined into one set of data.
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`Accordingly, on the record before us, and for the foregoing reasons, we are
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`not persuaded that Petitioner has shown a reasonable likelihood that it will prevail
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`in its assertion that independent claims 1 is unpatentable over the combination of
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`Wahlquist and Goodman. Additionally, we are not persuaded in connection with
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`any of these grounds of unpatentability as applied to claims 2-19, which ultimately
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`depend from claim 1.
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`III. SUMMARY
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`Petitioner has demonstrated a reasonable likelihood of prevailing in showing
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`that claims 1-19 of the ‟192 patent are unpatentable. The Board, however, has not
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`made a final determination as to the patentability of these claims.
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`The Petition is granted as to the following proposed grounds: obviousness
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`of claims 1-3, 6, 7, 11, 12, and 17-19 over Wright Jr.; and obviousness of claims
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`1-19 over Wright Jr. and Goodman.
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`The Petition is denied as to all other grounds proposed.
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`IV. ORDER
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`For the reasons given, it is
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`ORDERED that the Petition is granted as to claims 1-19;
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`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter partes
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`review of the ʼ192 patent is hereby instituted, commencing on the entry date of this
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`Order. Pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is hereby given
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`of the institution of a trial;
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`FURTHER ORDERED that the trial is limited to the grounds identified
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`above. No other grounds are authorized; and
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`FURTHER ORDERED that an initial conference call with the Board is
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`scheduled for 2:00 PM Eastern Time on February 13, 2014. The parties are
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`directed to the Office Trial Practice Guide, 77 Fed. Reg. 48,756, 48,765-66
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`(Aug. 14, 2012) for guidance in preparing for the initial conference call, and
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`should be prepared to discuss any proposed changes to the Scheduling Order
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`entered herewith and any motions the parties anticipate filing during the trial.
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`PETITIONER:
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`Daniel W. McDonald
`Andrew J. Lagatta
`MERCHANT & GOULD, P.C.
`dmcdonald@merchantgould.com
`alagatta@merchantgould.com
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`
`PATENT OWNER:
`
`Don Daybell
`Davin M. Stockwell
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`ddaybell@orrick.com
`dstockwell@orrick.com
`ptabdocket@orrick.com
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`19
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