By: Daniel W. McDonald (dmcdonald@merchantgould.com)
`Merchant & Gould P.C.
`3200 IDS Center
`80 South 8th Street
`Minneapolis, MN 55402
`Tel: (612) 332-5300
`Fax: (612) 332-9081
`
`
`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 IPR2013-00431 (Patent 7,921,186)
`Case IPR2013-00449 (Patent 7,840,420)
`Case IPR2013-00468 (Patent 7,516,192)
`____________
`
`PETITIONER CARDIOCOM, LLC’S MOTION TO COMPEL
`ADDITIONAL DISCOVERY FROM PATENT OWNER
`ROBERT BOSCH HEALTHCARE SYSTEMS, INC.
`
`
`
`
`
`
`
`
`Merchant & Gould P.C.
`3200 IDS Center
`80 South 8th Street
`Minneapolis, MN 55402
`Tel: (612) 332-5300
`Fax: (612) 332-9081
`
`
`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 IPR2013-00431 (Patent 7,921,186)
`Case IPR2013-00449 (Patent 7,840,420)
`Case IPR2013-00468 (Patent 7,516,192)
`____________
`
`PETITIONER CARDIOCOM, LLC’S MOTION TO COMPEL
`ADDITIONAL DISCOVERY FROM PATENT OWNER
`ROBERT BOSCH HEALTHCARE SYSTEMS, INC.
`
`
`
`
`
`
`
`
`
`Pursuant to 35 U.S.C. § 316(a)(5) and 37 C.F.R. § 42.51(b)(2), Petitioner
`
`Cardiocom moves for “Additional Discovery” from Patent Owner Bosch in the
`
`form of (1) an identification of two “Bosch personnel” relied upon by Bosch’s
`
`expert Dr. Yadin David in declarations arguing for the patentability of Bosch’s
`
`claims and (2) depositions of the Bosch personnel and inventor Stephen Brown.
`
`Dr. David interviewed the Bosch personnel and Mr. Brown to form the
`
`factual basis for his opinions related to purported objective indicia of
`
`nonobviousness. (See, e.g., David Declaration (“David Dec.”), IPR2013-00431 at
`
`¶¶ 18(g) and 61.) For example, Dr. David relies on the Bosch personnel to
`
`conclude the Health Buddy product was commercially successful and well-
`
`received “when it was released” in 1999 and thereafter. (See, e.g., David Dec.,
`
`IPR2013-00431 at ¶¶63-67; see also id. at ¶¶ 71 and 73 concerning commercial
`
`success, Section Heading VIII.B at p. 31 concerning long-felt need, and ¶¶ 92-93
`
`concerning copying. Further, the same statements can be found in Dr. David’s
`
`declarations in IPR2013-00449 and IPR2013-00468.)
`
`Dr. David essentially repeated the words of these individuals and used their
`
`conclusory statements as objective indicia in his declarations. In the interests of
`
`justice, Cardiocom thus should be allowed to identify and depose the individuals to
`
`show their statements are not supported by the underlying facts and lack the
`
`required nexus to the challenged claims.
`
`1
`
`
`
`Additional Discovery is warranted where the moving party can meet its
`
`burden of showing “that such additional discovery is in the interests of justice.” 37
`
`CFR 42.51(b)(2)(i). The Board’s holding in Garmin v. Cuozzo provides the five
`
`factors to assess whether a request for Additional Discovery meets the interests of
`
`justice standard. IPR2012-00001, Paper No. 26 at 6-7 (PTAB Mar. 5, 2013). The
`
`Board has held that Additional Discovery is “per se useful” where a party proffers
`
`expert testimony relying upon the information about which discovery is sought to
`
`support the invalidity of challenged claims. Corning Inc. v. DSM IP Assets B.V.,
`
`IPR2013-00043, Paper 27 at 4 (PTAB June 21, 2013).
`
`1. Cardiocom’s Request Will Lead to Useful Information Discrediting
`the Statements Relied Upon by Dr. David.
`The Additional Discovery sought by Cardiocom will provide useful
`
`information that has substantive value to Cardiocom’s reply to Dr. David’s
`
`opinions on objective indicia of nonobviousness. Bosch, as Patent Owner, “must
`
`demonstrate that there is a nexus between the merits of the claimed invention and
`
`the evidence of secondary considerations.” Zodiac Pool Sys., Inc. v. Aqua Prod.,
`
`Inc., IPR2013-00159, Paper 26 at 4 (PTAB Oct. 18, 2013). Dr. David makes
`
`conclusory statements essentially repeating what these individuals told him,
`
`providing little or no factual support for the conclusions or the required nexus.
`
`Especially where Dr. David is repeating the statements of others, Cardiocom
`
`should be allowed access to the underlying source of those statements.
`
`2
`
`
`
`The depositions will lead to useful information because the statements of the
`
`Bosch personnel are facially inconsistent with other statements made on behalf of
`
`Bosch related to its lack of success in the telehealth industry. For example, in
`
`seeking to avoid a stay of litigation involving closely related patents, Bosch relied
`
`on a declaration by a Bosch Vice President stating that contracts entered in 2011
`
`“are crucial to the development of a successful telehealth business.” Robert Bosch
`
`Healthcare Sys., Inc. v. Cardiocom, LLC, Case No. 5:12-cv-03864-EJD, Dkt. #25
`
`at ¶ 3 (N.D. Cal. Oct. 19, 2012) (attached hereto as Exhibit 1020). Bosch also
`
`asserted that the “telehealth field is a relatively new and growing field” in 2012.
`
`Id., Dkt. #23 at p. 6 (attached hereto as Exhibit 1021). Bosch’s statements are
`
`inconsistent with Dr. David’s statements that claim success with these same
`
`telehealth products as early as 1999, 12-13 years earlier. Cardiocom should be
`
`allowed to show the statements cited by Dr. David cannot be reconciled with, and
`
`lack credibility in view of, these other statements.
`
`Examples of the specific issues to be addressed in the depositions include:
`
` The relative sales and success of the Health Buddy and any other telehealth
`products in 2011-12, when Bosch asserted that the market was still new and
`Bosch was still attempting to develop a successful telehealth business, and
`the earlier time frames of purported success referenced in Dr. David’s
`declaration.
`
` Why the Health Buddy was still the subject of an effort to become successful
`in 2012, including what features of the product or marketing and business
`characteristics associated with the product and market were the same or
`different in 2011-2012 vs. prior years.
`
`3
`
`
`
`
` The credibility and self-interest of the Bosch personnel and Mr. Brown
`regarding the statements they made to Dr. David.
`
` The sources and veracity of the information underlying the statements,
`including consideration of the scope and merits of the claimed inventions in
`the three patents at issue, and what sources of information were relied upon
`by the witnesses for the statements.
`
` An identification of the specific elements of the Health Buddy that led to the
`purported commercial success, satisfied a long-felt need, or allegedly were
`copied by others, and whether those elements correspond to the merits of the
`claimed inventions.
`2.
`Cardiocom Does Not Seek Bosch’s Litigation Positions.
`
`Cardiocom does not seek discovery on Bosch’s litigation positions. Bosch
`
`did not argue otherwise during the parties’ call with the Board.
`
`3.
`
`The Additional Discovery Is Not Reasonably Available Through
`Other Means.
`
`The discovery sought by Cardiocom can only be obtained by identifying and
`
`
`
`deposing the Bosch personnel and Mr. Brown. Cardiocom has no way to test the
`
`conclusory second-hand recitation of these unnamed individuals other than through
`
`their deposition testimony.
`
`Dr. David does not claim to have expertise about marketing and sales of the
`
`Health Buddy or the purported copying of the Health Buddy. Dr. David thus
`
`cannot be effectively cross-examined about these facts as they were received from
`
`Bosch personnel and Mr. Brown. A deposition is necessary under these
`
`circumstances. See Asus Computer Int’l v. Round Rock Research, LLC, No. 12-cv-
`
`4
`
`
`
`02099-JST-NC, 2014 U.S. Dist. LEXIS 50728, at *38-*39 (N.D. Cal. Apr. 11,
`
`2014) (granting a deposition of a party employee who provided information needed
`
`by an expert to give his opinion).
`
`4.
`
`Cardiocom’s Request Is Easily Understandable.
`
`Cardiocom’s request is easily understandable: (1) an identification of the
`
`two Bosch personnel relied upon by Dr. David and (2) depositions of the Bosch
`
`personnel and Mr. Brown on the above-identified subject matter.
`
`5.
`
`Cardiocom’s Request Is Not Overly Burdensome To Answer.
`
`There is no undue burden. Bosch’s counsel stated during the parties’ call
`
`with the Board that the names of the Bosch personnel could be provided within one
`
`day. Further, Cardiocom will minimize any burden to the Bosch personnel and
`
`Mr. Brown by limiting their depositions to three hours each. Cardiocom has
`
`already requested potential dates from Bosch to ensure the witnesses have adequate
`
`notice. Cardiocom will conduct the depositions in reasonable locations and at
`
`times convenient to the witnesses, although the depositions must be done soon in
`
`view of Cardiocom’s June 10, 2014 due date for its reply.
`
`Date: April 29, 2014
`
`
`
`
`
`Respectfully submitted,
`
`MERCHANT & GOULD P.C.
`
`
`
`
`/Daniel W. McDonald/
`Daniel W. McDonald, Reg. No. 32,044
`Attorneys for Petitioner Cardiocom, LLC
`
`5
`
`
`
`Certification of Service
`
`Pursuant to 37 C.F.R § 42.6, the undersigned hereby certifies that a copy of
`
`this PETITIONER CARDIOCOM, LLC’S MOTION TO COMPEL
`
`ADDITIONAL DISCOVERY FROM PATENT OWNER ROBERT BOSCH
`
`HEALTHCARE SYSTEMS, INC. and PETITIONER’S EXHIBIT LIST has been
`
`served on April 29, 2014, by email on counsel of record for the patent owner at the
`
`following name and address:
`
`Don Daybell (ddaybell@orrick.com)
`Davin M. Stockwell (dstockwell@orrick.com)
`Bas de Blank (basdeblank@orrick.com)
`Lillian Mao (lmao@orrick.com)
`BoschvCardiocom-IPRServiceList@orrick.com
`ORRICK, HERRINGTON, &
`SUTCLIFFE LLP
`2050 Main St., Suite 1100
`Irvine, CA 92614
`Tel: 949-567-6700
`Fax: 949-567-6710
`
`
`
`Respectfully submitted,
`
`
`Date: April 29, 2014
`
`
`
`
`
`
`
`/Daniel W. McDonald/
`Daniel W. McDonald (Lead Counsel)
`USPTO Registration No. 32,044
`
`
`
`
`
`
`
`6
`
`
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