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 IPR2013-00468
`Patent No. 7,516,192
`
`_____________________________________
`
`CORRECTED PATENT OWNER’S RESPONSE UNDER 37 C.F.R. § 42.107
`
`

`

`TABLE OF CONTENTS
`
`Page
`
`B.
`
`C.
`
`INTRODUCTION ..........................................................................................1
`I.
`OVERVIEW OF THE ’192 PATENT ...........................................................1
`II.
`III. CLAIM CONSTRUCTION ...........................................................................5
`IV. OVERVIEW OF THE ASSERTED REFERENCES ....................................6
`A. Wright...................................................................................................7
`B.
`Goodman ..............................................................................................9
`C. Wahlquist............................................................................................13
`CARDIOCOM’S BURDEN.........................................................................15
`V.
`VI. OVERVIEW OF THE REASONS FOR FINDING THE
`CHALLENGED CLAIMS VALID..............................................................16
`A.
`Ground 1: Claims 1-3, 6-7, 11-12, 17-23, 29-30, and 35-36 Are
`Not Obvious Over Wright..................................................................17
`Ground 2: Claims 1-37 Are Not Obvious Over Wright and
`Goodman. ...........................................................................................18
`Ground 3: Claims 20-37 Are Not Obvious Over Goodman and
`Wahlquist............................................................................................18
`VII. DR. STONE APPLIED AN IMPROPER METHODOLOGY IN HIS
`OBVIOUSNESS ANALYSIS......................................................................19
`VIII. VALIDITY OF THE CLAIMS IS SUPPORTED BY SIGNIFICANT
`EVIDENCE OF OBJECTIVE INDICIA OF NON-OBVIOUSNESS. .......22
`A.
`The ’192 Patent Resulted In Great Commercial Success. .................23
`B.
`The ’192 Patent Was The Product of Long Felt But Unresolved
`Needs That Were Recognized By The Inventor. ...............................24
`The ’192 Patent’s Inventions Received Great Acclaim.....................25
`Other Telehealth Offerings Taught Away From The ’192
`Patent..................................................................................................25
`The ’192 Patent’s Inventions Were Copied By Other Telehealth
`Offerings.............................................................................................26
`
`C.
`D.
`
`E.
`
`-i-
`
`

`

`TABLE OF CONTENTS
`(continued)
`
`Page
`
`B.
`C.
`D.
`
`X.
`
`IX. A PERSON OF ORDINARY SKILL IN THE ART WOULD NOT
`HAVE COMBINED OR MODIFIED THE REFERENCES AS
`CARDIOCOM PROPOSES.........................................................................26
`A. Wahlquist Is Not Analogous Art........................................................26
`1. Wahlquist Is Not In The Same Field Of Endeavor As The
`Claimed Invention Of The ’192 Patent....................................27
`2. Wahlquist Is Not Reasonably Pertinent To The Problem
`Faced By The Inventor Of The ’186 Patent.............................29
`There Was No Motivation to Modify Wright. ...................................32
`There Was No Motivation to Combine Wright with Goodman. .......32
`There Was No Motivation to Combine Goodman with
`Wahlquist............................................................................................35
`REQUIRED CLAIM ELEMENTS ARE MISSING FROM EACH
`ASSERTED GROUND................................................................................38
`A.
`Independent Claim 1 Is Not Obvious On Grounds 1 or 2..................38
`1.
`“data merge program”..............................................................38
`2.
`“generic script program”..........................................................40
`3.
`“wherein the customized script program…includes…an
`input command to receive responses” .....................................42
`“one or more databases…for storing the generic script
`program and any responses received from the remotely
`situated apparatus”...................................................................44
`Dependent Claims 2-19 Are Not Obvious Over Grounds 1 or 2......46
`1.
`Claims 2-5 Are Not Obvious On Grounds 1 or 2. ...................46
`2.
`Claims 8-10 Are Not Obvious On Ground 2...........................49
`3.
`Claims 11-12 Are Not Obvious On Grounds 1 or 2. ...............51
`4.
`Claims 13-15 Are Not Obvious On Ground 2.........................53
`5.
`Claim 17 Is Not Obvious On Grounds 1 or 2. .........................55
`6.
`Claim 18 Is Not Obvious On Grounds 1 or 2. .........................55
`
`4.
`
`B.
`
`-ii-
`
`

`

`C.
`
`D.
`
`E.
`
`TABLE OF CONTENTS
`(continued)
`
`Page
`
`3.
`
`4.
`
`Claim 19 Is Not Obvious On Grounds 1 or 2. .........................56
`7.
`Independent Claim 20 Is Not Obvious On Grounds 1, 2, or 3...........58
`1.
`“generating a generic script program”.....................................58
`2.
`“generating a customized script program in the computer
`by customizing the generic script program”............................59
`“wherein the customized script program includes…an
`input command to receive responses” .....................................60
`“storing the generic script program and any responses
`received from the remotely situated apparatus in one or
`more databases” .......................................................................60
`Dependent Claims 21-36 Are Not Obvious On Grounds 1, 2, or
`3. .........................................................................................................61
`1.
`Claim 21 Is Not Obvious On Grounds 1, 2, or 3. ....................61
`2.
`Claims 23-25 Are Not Obvious On Grounds 1, 2, or 3...........62
`3.
`Claims 26-28 Are Not Obvious On Grounds 2 or 3. ...............62
`4.
`Claims 29-30 Are Not Obvious On Grounds 1, 2, or 3...........64
`5.
`Claims 31-33 Are Not Obvious On Grounds 2 or 3. ...............64
`6.
`Claim 35 Is Not Obvious On Grounds 2 or 3. .........................65
`Independent Claim 37 Is Not Obvious On Grounds 2 or 3................65
`1.
`“a communication interface…for transmitting to the
`computer (i) an identification code associated with the
`individual”................................................................................65
`“wherein the customized script is transmitted in response
`to receipt of the identification code”........................................67
`
`2.
`
`-iii-
`
`

`

`TABLE OF CONTENTS
`(continued)
`
`Page
`
`3.
`
`“customized script program containing at least one of (i)
`one or more messages, (ii) one or more queries, (iii) one
`or more response choices corresponding to the one or
`more queries, or any combination thereof” / “wherein the
`stored customized script program when executed causes
`the apparatus to communicate at least one of (i) one or
`more messages, (ii) one or more queries, (iii) one or more
`response choices corresponding to the one or more
`queries, or any combination thereof to the individual
`[and] to receive the responses to the one or more queries,
`if present, from the individual”................................................69
`XI. CONCLUSION.............................................................................................70
`
`-iv-
`
`

`

`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`Ecolochem, Inc. v. So. Cal. Edison Co.,
`227 F.3d 1361 (Fed. Cir. 2000) ..........................................................................23
`
`Interconnect Planning Corp. v. Feil,
`774 F.2d 1132 (Fed. Cir. 1985) ..........................................................................20
`
`In re Bigio,
`381 F.3d 1320, 1325 (Fed. Cir. 2004) ...............................................................27
`
`In re Clay,
`966 F.2d 656, 659 (Fed. Cir. 1992) ....................................................................37
`
`In re Klein,
`647 F.3d 1343 (Fed. Cir. 2011) ..............................................................26, 27, 37
`
`Leo Pharm. Prods., Ltd. v. Rea,
`726 F. 3d 1346 (Fed. Cir. 2013) .........................................................................23
`
`Liberty Mutual Ins. Co. v. Progressive Casual Ins. Co.,
`CBM2012-00003, Paper 8, at 14-15 (PTAB 2012)............................................16
`
`Kyocera Corp. v. Softview LLC,
`IPR2013-0004, Paper No. 32, at 3 (PTAB Oct. 8, 2013)...................................16
`
`MicroStrategy, Inc. v. Business Objects, S.A.,
`429 F.3d 1344 (Fed. Cir. 2005) ..........................................................................22
`
`Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc.,
`520 F.3d 1358 (Fed. Cir. 2008) ..........................................................................19
`
`In re Robertson,
`169 F.3d 743 (Fed. Cir. 1999) ......................................................................41, 66
`
`Statutes
`
`35 U.S.C. § 103............................................................................................26, 46, 61
`
`35 U.S.C. § 103(a) ...................................................................................1, 17, 18, 19
`-v-
`
`

`

`TABLE OF AUTHORITIES
`(continued)
`
`Page
`
`35 U.S.C. § 312(a)(3)...............................................................................................15
`
`35 U.S.C. § 316(e) ...................................................................................................15
`
`35 U.S.C. § 318(a) .....................................................................................................1
`
`Other Authorities
`
`37 C.F.R. § 42.1(d) ..................................................................................................15
`
`37 C.F.R. § 42.104(b) ..............................................................................................15
`
`M.P.E.P. § 2112 .................................................................................................41, 66
`
`M.P.E.P. § 2143.03 ............................................................................................46, 61
`
`-vi-
`
`

`

`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 1-37 of U.S. Patent No. 7,516,192 (“the ’192 patent”) are patentable,
`
`because Petitioner Cardiocom, LLC (“Cardiocom”) has failed to prove, by a
`
`preponderance of the evidence, that any of the challenged claims are obvious over
`
`any of the prior art instituted for trial. 35 U.S.C. § 318(a).
`
`All three grounds instituted for trial require the Board to accept that the
`
`challenged claims would be rendered obvious by one or more references under 35
`
`U.S.C. § 103(a). However, Cardiocom’s hindsight-based selection of references
`
`cannot support a credible challenge to the ’192 patent, particularly because the
`
`challenged claims are supported by substantial evidence of objective indicia of
`
`non-obviousness. Cardiocom has also failed to meet its burden to show that a
`
`person of ordinary skill in the art would have modified or combined the references
`
`as Cardiocom proposes. In addition, even if the references were combined or
`
`modified, the Board should still find all of the ’192 patent claims patentable
`
`because multiple claim elements are missing from each ground.
`
`II. OVERVIEW OF THE ’192 PATENT
`
`The ’192 patent describes a system for remotely monitoring and
`
`communicating with individuals, particularly patients with chronic health
`
`conditions. Ex. 1001, ’192 patent, 1:39-65, 2:35-39. The system includes a server,
`
`1
`
`

`

`accessible via a workstation, and multiple remotely programmable apparatus for
`
`monitoring patients. Id., 4:18-33, Fig. 1. The server transmits script programs to
`
`the remote apparatus and receives patient responses and measurements back. Id.,
`
`4:62-5:3, 9:21-39. The remote apparatus executes the received script program to
`
`interact with the patient. Id., 5:7-12, 10:16-47.
`
`The server includes a script generator that generates script programs from
`
`script information entered through a workstation, such as by a healthcare provider.
`
`Id., 6:34-41. This script information may include a set of potential queries to be
`
`answered by the patient, a desired monitoring device from which to collect
`
`measurements, and/or a set of statements to be communicated to the patient. Id.,
`
`6:46-56, 13:19-21. The script program can include display commands to display
`
`the queries and response choices, input commands to receive responses to the
`
`queries, and collect commands to collect device measurements from the
`
`monitoring device. Id., 7:1-8:7. The ’192 patent describes exemplary display and
`
`input commands, among others, in Table 1:
`
`Id., 7:22-27. For example, the display and input commands can be used for queries
`
`to the patient as shown in the following excerpt of the script program in Figure 6A:
`
`2
`
`

`

`When the remote apparatus connects to the server, the server may transmit a
`
`new script program for execution. Id., 9:39-46, 10:66-11:3. This is one of a
`
`number of advantages of the invention over the prior art because a healthcare
`
`provider can easily change the queries, prompts , and other operational details of
`
`the remote apparatus simply by transmitting a new script program, without having
`
`to manipulate the remote apparatus directly. Id., 11:15-25.
`
`In addition, the system can use unique identification codes to associate script
`
`programs with individual patients. For example, each patient to be monitored may
`
`be provided with his or her own remote apparatus, with the patient’s unique
`
`identification code stored therein. Id., 9:22-27. A healthcare provider may use a
`
`script assignment screen to select a script program and patients to whom the script
`
`program is to be assigned. Id., 8:8-25. The server includes a script assignor that
`
`creates for each selected patient a respective pointer to the selected script program
`
`and stores the pointer in a patient look-up table. Id., 8:8-25. Then, when a remote
`
`apparatus connects to the server, the remote apparatus transmits the patient’s
`
`unique identification code, and the server uses the identification code to retrieve
`
`the assigned script program. Id., 9:28-46.
`
`The script program can also be customized to an individual. For example,
`
`3
`
`

`

`“the queries and statements may be customized to each individual by merging
`
`personal data with the script programs, much like a standard mail merge
`
`application.” Id., 12:58-61. In one such embodiment, statements and queries
`
`containing insert commands are used to generate a generic script program. Id.,
`
`13:19-26, 13:32-40. The insert commands instruct a data merge program to
`
`retrieve personal data—such as name of the individual, name of the treating
`
`physician, test results, and appointment dates—and insert it into statements or
`
`queries in the generic script program. Id., 13:15-40. An example of a statement
`
`containing insert commands is shown below:
`
`<<INSERT PATIENT_NAME>>, YOUR LAB RESULTS FOR
`HEMOGLOBIN ARE <<INSERT HbA1c_RESULT>>
`
`Id., 13:19-21, Fig. 19. A data merge program can create custom script programs
`
`for multiple individuals using a selected generic script program as a template. Id.,
`
`13:54-60. Each custom script program is unique to the corresponding individual
`
`because the data merge program has inserted the specified personal data into the
`
`generic script program according to the insert commands. Id.
`
`During prosecution, the Examiner included the following statement of
`
`reasons for allowing the claims of the ’192 patent:
`
`The prior [sic] of record fail to disclose generating a customized script
`program by customizing a generic script program, wherein the
`customized script program is to be executed by the remotely situated
`
`4
`
`

`

`apparatus and includes 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 an input command to receive
`responses when the script program includes one or more queries to be
`presented.
`
`Ex. 1007, Notice of Allowability, Page 2.
`
`III. CLAIM CONSTRUCTION
`The Board construed “script program”1 to be “a program that contains a set
`
`of instructions that is capable of being executed and interpreted.” Institution
`
`Decision (“Inst. Dec.”) 7. The Board construed “data merge program” to be “a
`
`program that combines two or more sets of data into one.” Id. at 8. The Board
`
`construed “pointer” to be “an identifier that indicates the location of an item.” Id.
`
`at 8. And, the Board construed “script assignment unit” to be “a program that
`
`associates a script program with an individual.” Id. at 9. For purposes of this
`
`proceeding only, Bosch applies these constructions to demonstrate that none of the
`
`claims are rendered obvious by the prior art instituted for trial.
`
`On February 14, 2014—after the Board construed “script program” in this
`
`proceeding—Medtronic, Inc. (which has acquired Cardiocom) filed a new petition
`
`1 To distinguish between claim language of the ’192 patent from other quoted
`
`language, claim language will appear in italics throughout this Response.
`
`5
`
`

`

`seeking inter partes review of related U.S. Patent No. 7,587,469. IPR2014-00436.
`
`That new petition addressed the construction of “script program,” the same term
`
`that appears in the ’192 patent. Despite recognizing that the Board has construed
`
`“script program” based on Cardiocom’s proposed construction, the new petition
`
`advances a very different construction: “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. Petitioner specifically criticizes the Board’s current
`
`construction as being overbroad, as it allegedly “encompasses non-script
`
`programs.” Id. at 8. Petitioner, however, has not argued in this proceeding that
`
`any of the prior art invalidates the ’192 patent claims under what it now contends is
`
`the correct construction. Ex. 2009 (“Stone Dep.”) 314:21-316:5. Thus, Petitioner
`
`has not even met its prima facie burden of identifying combinations of prior art
`
`that would invalidate the claims under its own claim construction. For this reason,
`
`the Board should reject Petitioner’s arguments and confirm the validity of claims
`
`1-37, all of which include “script program” limitations.
`
`IV. OVERVIEW OF THE ASSERTED REFERENCES
`
`The three grounds for challenge adopted by the Board are based on three
`
`references: (1) U.S. Patent No. 5,704,029 to Wright, Jr., Ex. 1002 (“Wright”);
`
`(2) U.S. Patent No. 5,827,180 to Goodman, Ex. 1003 (“Goodman”); and (3) U.S.
`
`6
`
`

`

`Patent No. 5,367,667 to Wahlquist et al., Ex. 1004 (“Wahlquist”). As explained in
`
`this Response, however, each asserted reference differs from the ’192 patent in
`
`significant respects, such that there was no reason for a person of ordinary skill in
`
`the art to have modified or combined these references as Cardiocom proposes.
`
`A. Wright
`
`Wright is directed to “business forms and, more particularly, to systems for
`
`electronically creating and completing a business form.” Wright, 1:19-21. Unlike
`
`the ’192 patent, Wright does not teach monitoring and communicating with
`
`patients. Stone Dep. 436:16-19; Ex. 2007 (“David Decl.”) ¶ 50. Instead, Wright is
`
`directed to “a system which (1) inexpensively creates new and modifies existing
`
`forms, (2) automatically handles skip patterns, (3) performs error validation as the
`
`form is filled out, (4) reduces error by limiting the presentation of information to a
`
`survey taker, and (5) is mobile.” Wright, 3:1-5. Wright’s system includes “a
`
`forms creation and forms completion mode.” Id., 6:30-32. After the form is built,
`
`“form descriptors or field description records, which define each of the form’s
`
`fields,” may be transferred to a portable computer. Id., 6:40-43. A “forms engine”
`
`on the portable computer “displays one question or statement (and if appropriate, a
`
`corresponding set of possible answers or responses) at a time,” and, when the user
`
`answers each question, executes the script for that question. Id., 7:6-10, 7:14-20.
`
`After a user completes a particular form, the collected data is stored and may
`
`7
`
`

`

`optionally be sent to a host computer for further processing. Id., 7:33-37.
`
`Unlike the ’192 patent, Wright does not provide queries and response
`
`choices to the forms engine in the form of a “script program.” David Decl. ¶¶ 51-
`
`58. Instead, Wright teaches providing prompts and answers in structured data.
`
`Specifically, Wright teaches that a form consists of a series of numbered “fields,”
`
`which are defined by “field description records,” which in turn consist of
`
`“attributes.” Id., 6:40-45, 8:10-13, 8:46-47, 9:11-12, 9:56-58, 10:14-15. The
`
`attributes within a field description record include number, offset, prompt,
`
`answers, and script. Id., 9:56-58, 9:61-65, 10:14-21, Figs. 2b & 2c. The excerpt
`
`from Figure 4 below shows several exemplary attributes and the contents of each:
`
`Structured data differs from a “script program” because structured data does
`
`not instruct the forms engine to take a particular action. David Decl. ¶ 54. Instead,
`
`structured data provides information that the forms engine is pre-programmed to
`
`handle in a particular manner. Id. In contrast, the Board has construed “script
`
`program” to require “a set of instructions that is capable of being executed and
`
`8
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`

`

`interpreted.” Inst. Dec. 7 (emphasis added). An additional difference is that
`
`structured data can be accessed and used in any order, but Wright’s script must be
`
`executed one command at a time. David Decl. ¶¶ 54-55; Wright, 25:55-63.
`
`The “script” attribute described in Wright has a much more limited function
`
`that the claimed “script program.” David Decl. ¶¶ 56-58. Wright teaches that the
`
`primary function of the “script” attribute is to handle “skip patterns”—complicated
`
`sequences of jumps within a questionnaire depending on the information filled in.
`
`Wright, 2:7-17, 3:41-51, 7:14-23. In describing the operation of the forms engine,
`
`Wright makes clear that the “script” is executed, but the structured data containing
`
`the questions and answer choices is not. Specifically, Wright teaches that only
`
`after the forms engine has generated a display, collected input from the user, and
`
`saved that input, does “the forms engine 124 proceed[] to the ‘execute script’
`
`function 354.” Id., 14:66-15:61, 17:31-45; David Decl. ¶ 56. Thus, Wright does
`
`not teach executing a script to display queries and response choices as claimed in
`
`the ’192 patent.
`
`B.
`
`Goodman
`
`Goodman is directed to “a system, methods and apparatus for monitoring a
`
`person’s health, and more particularly to a comprehensive patient management
`
`system.” Goodman, 1:11-13. Goodman was considered by the Examiner during
`
`prosecution of the ’192 patent, and the Examiner concluded that the ’192 patent is
`
`9
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`

`

`patentable over Goodman. ’192 patent, Page 3.
`
`Goodman discloses multiple embodiments of a “personal health network,”
`
`including some with (1) a host computer and (2) a message device in the
`
`possession of a patient. Goodman, 2:44-51. Algorithms, developed based on a
`
`treatment plan for the patient, may be “programmed into an appropriately
`
`configured message device.” Id., 2:54-58. The message device may prompt the
`
`patient to measure and enter relevant physiological data, and results may be
`
`transmitted to a health care provider. Id., 2:58-67.
`
`Unlike the ’192 patent, Goodman does not teach customizing a generic
`
`script program to generate a customized script program. As an initial matter,
`
`Cardiocom does not contend that the algorithm of Goodman constitutes a “script
`
`program” as that term is used in the ’192 patent. Stone Dep. 474:5-8. Rather,
`
`Cardiocom argues (incorrectly) that it would have been obvious to modify the
`
`system of Goodman to use a “script program” instead of the disclosed algorithm.
`
`See Pet. 22-23. However, as further explained in the sections that follow, the
`
`algorithm of Goodman is so different from the claimed “script programs” of the
`
`’192 patent that it would not have been obvious to modify Goodman to use a
`
`“script program” that meets the limitations of the challenged claims.2
`
`2 To illustrate these further differences between Goodman and the challenged
`
`claims, and without conceding that Goodman satisfies or would render any of the
`
`10
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`

`

`Particularly, Goodman does not disclose that “generic” algorithms are
`
`customized to create customized algorithms. David Decl. ¶¶ 183-188; Stone Dep.
`
`476:16-19. When Goodman states that “[s]ince the treatment plan is developed
`
`specifically for the patient, and since the algorithm 115 based on the treatment plan
`
`accepts an indicia of the patient’s then current health status, message content is
`
`thus customized for the patient and responsive to changes in patient’s health
`
`status,” Goodman, 8:56-61, Goodman is referring to a very different kind of
`
`customization than the ’192 patent. Specifically, Goodman teaches customization
`
`by two aspects of the system that do not involve a “generic script program” or
`
`“generic” algorithm.
`
`First, Goodman teaches developing “logic sequences or algorithms…based
`
`on a treatment plan or guidelines for a specific patient.” Goodman, 8:37-41. Each
`
`treatment plan is provided by the patient’s primary provider. Id. There is no
`
`suggestion in Goodman that these algorithms are created using a generic script
`
`program as a template. David Decl. ¶ 187. Instead, a person of ordinary skill in
`
`the art would understand that each algorithm in Goodman is created independently,
`
`without any template. Id. For example, Goodman describes two exemplary
`
`treatment parameters for two different asthma patients. Goodman, 8:66-9:19.
`
`limitations obvious, this Response addresses the algorithm of Goodman as if it
`
`roughly corresponds to the claimed “script program.”
`
`11
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`

`

`After describing the algorithm for the first patient, Goodman specifically states that
`
`“[a] different algorithm is developed for patient 2b based upon the specific
`
`treatment plan supplied for this patient by the primary provider 4.” Id., 9:22-55
`
`(emphasis added). Moreover, it is clear from the algorithms themselves, shown in
`
`Figures 10A and 10B, that each is a very specific process that did not derive from a
`
`template in common with the other. David Decl. ¶ 184.
`
`Second, Goodman teaches that the algorithms may be programmed into a
`
`message device, which will process input—such as a physiological measurement—
`
`according to the algorithm and deliver the results as a message to the patient.
`
`Goodman, 8:45-51. Goodman states that the message is “customized” and/or
`
`“responsive to changes in the patient’s health status” because it varies depending
`
`on the input from the patient. Id., 8:56-61; David Decl. ¶ 188. This refers to the
`
`ability of a single algorithm to deliver different, and hence “customized,” messages
`
`depending on the patient’s input. David Decl. ¶ 188. All of this customization is
`
`achieved as the algorithm is running on the device; it does not depend on input
`
`from the patient’s primary provider. Id. ¶¶ 188, 243. In fact, Goodman teaches
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`that it is sometimes too slow to wait for the primary provider to update the
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`treatment regimen, and thus the algorithm is used when “a much quicker response
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`to changes in a patient’s condition is necessary.” Goodman, 8:25-61.
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`Thus, unlike the ’192 patent, which describes and claims customizing the
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`script program at a computer and executing the customized script program in an
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`apparatus remotely situated from the computer, ’192 patent, 13:5-10, 20:62-65,
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`22:33-35, 24:15-22, the customization Goodman is offering is based on a patient’s
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`measured results processed on the device, and not based on patient data stored at
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`the host computer. David Decl. ¶ 188. In addition, the input is not “merged” (i.e.,
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`combined) with the algorithm, it is “processed according to the algorithm.”
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`Goodman, 8:49-61 (emphasis added); David Decl. ¶ 243. Thus, the “customized”
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`messages of Goodman do not involve customizing a generic script program.
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`C. Wahlquist
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`Wahlquist is directed to “a system for performing computer diagnostic tests,
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`and more particularly, to a method for automatically performing remote diagnostic
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`tests on personal computers.” Wahlquist, 1:7-10. Unlike the ’192 patent,
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`Wahlquist relates to resolving technical malfunctions in personal computers and
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`has nothing to do with a monitoring system for communicating with individuals.
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`In brief, Wahlquist teaches a method whereby a help desk representative
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`helps a user resolve a computer problem by automatically running tests on a
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`personal computer and examining the results. See Wahlquist, 2:5-3:3. This differs
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`from the ’192 patent in several significant ways.
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`First, Wahlquist is directed to a method that is initiated only when the user
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`experiences a computer problem and “calls a help desk representative R for aid in
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`resolving the problem.” Wahlquist, 3:56-63. In contrast, the ’192 patent discloses
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`a monitoring system and specifically criticizes call-in systems like Wahlquist’s as
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`“defeating the purpose of the monitoring system.” ’192 patent, 2:23-28; see also
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`David Decl. ¶ 285.
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`Second, Wahlquist teaches gathering information from and about the
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`functions of a computer rather than information from and about an individual, such
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`as about the health of a patient. Specifically, Wahlquist teaches “diagnostic tests”
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`directed toward various computer components. Wahlquist, 4:61-65. In contrast,
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`the ’192 patent teaches and claims collecting responses from an individual. ’192
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`patent, 5:21-25, 22:43-45, 24:39-45.
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`Third, the “script file” of Wahlquist differs from the claimed “script
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`program” in many respects. Among other differences, the script file is not created
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`by customizing a generic script file. Instead, the script file is created by a help
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`desk representative who, after hearing about a user’s particular computer problem,
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`“selects various diagnostic tests from a menu to be run on the user’s computer.”
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`Wahlquist, 2:10-23. Thus, the help desk representative builds the script file from a
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`menu of diagnostic tests, not from a “generic” script file. Moreover, each script
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`file is created specifically in response to a particular user’s problem. Wahlquist
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`does not teach or suggest having a “generic” script file that could be used as a
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`template across users. David Decl. ¶¶ 305-307.
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`Fourth, because Wahlquist is directed to troubleshooting a computer instead
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`of monitoring individuals, Wahlquist does not teach a script program executed by a
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`remote apparatus to interact with an individual (e.g., a patient) as claimed. Instead,
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`Wahlquist teaches that “[t]he script file instructs the [user’s] computer to execute
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`selected test files resident on the user’s diagnostic disk. The script file also
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`specifies the creation of various log files which record the results of the tests.” Id.,
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`2:43-47. Wahlquist does not teach that the script file is used for human interaction.
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`In fact, Wahlquist teaches running the diagnostic tests “in a completely unattended
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`mode,” in which the system simulates the user’s keystrokes. Id., 8:55-9:2. Thus,
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`although both the ’192 patent and Wahlquist use the word “script,” the “script file”
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`of Wahlquist bears no similarity to the “script program” of the ’192 patent.
`
`V.
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`CARDIOCOM’S BURDEN
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`Cardiocom bears the burden to show, by a preponderance of the evidence,
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`that the challenged claims are obvious over the prior art references and
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`combinations upon which the Board has instituted review. 35 U.S.C. § 316(e); 37
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`C.F.R. § 42.1(d). An IPR is an expedited procedure, intended to facilitate rapid
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`and streamlined evaluations of issued patents. Therefore, Cardiocom was required
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`to set forth in its Petition, in detail and with precision, each and every argument
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`that it intends to rely on, as well as specific citations to the evidence in support of
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`those arguments. 35 U.S.C. § 312(a)(3); 37 C.F.R. § 42.104(b). As such, Bosch
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`responds to the arguments that Cardiocom has presented and below identifies
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`multiple deficiencies that independently require a conclusion that Cardiocom has
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`failed to meet its burden.
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`Patent Owner expects Cardiocom will seek to address its failures in its reply
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`by making new arguments or relying upon new portions of the references. For the
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`Board to consider new arguments or previously