`_____________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`CARDIOCOM, LLC
`Petitioner
`v.
`ROBERT BOSCH HEALTHCARE SYSTEMS, INC.
`Patent Owner
`_____________________
`CASE IPR2013-00431 (Patent No. 7,921,186)
`CASE IPR2013-00449 (Patent No. 7,840,420)
`CASE IPR2013-00468 (Patent No. 7,516,192)
`_____________________
`
`PATENT OWNER’S RESPONSE TO PETITIONER CARDIOCOM, LLC’S
`MOTION TO COMPEL ADDITIONAL DISCOVERY
`
`
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`Patent Owner Robert Bosch Healthcare Systems, Inc. (“Bosch”) respectfully
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`requests that the Board deny Petitioner Cardiocom, LLC’s (“Cardiocom”) Motion
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`to Compel Additional Discovery. Cardiocom fails to comply with the Board’s
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`order requiring that it identify specific issues for deposition. See Order at 3.
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`Cardiocom instead seeks broad and open-ended litigation-style discovery that is
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`specifically disfavored under statute and that is unrelated to the discussions
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`between Dr. David and the individuals, Dr. David’s opinions, or any issue in these
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`proceedings. Indeed, in an apparent effort to raise ancillary issues, Cardiocom
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`seeks nine hours of deposition time regarding two conversations that lasted no
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`more than one hour each. Such discovery is not “necessary in the interest of
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`justice.” 35 U.S.C. § 316(a)(5)(B).
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`A.
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`(Factor 1) Cardiocom Has Not Demonstrated That Its Discovery
`Request Will Lead To Useful Information.
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`Cardiocom’s request for depositions must be rejected because Cardiocom
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`has failed to demonstrate “beyond speculation that something useful will be
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`uncovered.” Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, Case IPR2012-
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`00001, Paper 26, at 7 (P.T.A.B. Mar. 5, 2013). “Useful” here “means favorable in
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`substantive value to a contention of the party moving for discovery.” Id.
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`It is apparent that Cardiocom intends to engage upon a fishing expedition in
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`the hopes that Bosch’s witnesses might disclose something useful. Despite the
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`Board’s order that Cardiocom “identify what specific issues would be addressed,
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`1
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`should the depositions be permitted” (Order at 3), Cardiocom purports only to
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`identify “examples” of issues to be addressed. Mot. at 3. This vague, open-ended
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`language is plainly intended to permit Cardiocom to delve into ancillary side issues
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`that are unrelated to any question of validity or Dr. David’s opinions.1
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`Indeed, the examples that Cardiocom identifies make clear its intention to
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`engage in fishing. For instance, Cardiocom seeks to depose the witnesses on the
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`“relative sales and success of the Health Buddy and any other telehealth products
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`in 2011-12,” id., but Dr. David does not rely upon this information in his
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`declaration, nor has Cardiocom demonstrated beyond speculation that the Bosch
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`witnesses would even have such information. Cardiocom argues that such
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`information might be relevant because Dr. David’s opinions concerning
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`commercial success are allegedly inconsistent with prior statements made by
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`1 Cardiocom cites Corning Inc. v. DSM IP Assets B.V., Case IPR2013-00043,
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`Paper 27 (P.T.A.B. June 21, 2013), to argue that open-ended witness depositions
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`should be permitted. Cardiocom’s reliance is misplaced. Corning rejected two of
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`three requests for additional discovery as being open-ended speculative requests,
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`much like Cardiocom’s requests here. Id. at 5-7. As to the third request, the Board
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`permitted limited, non-burdensome discovery of a single lab notebook because the
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`moving party specifically showed that the expert’s opinion turned on whether or
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`not she used certain formulas, which could only be found in the notebook. Id. at 4.
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`2
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`
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`Bosch in litigation. Mot. at 3. However, Cardiocom could simply examine Dr.
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`David on any alleged inconsistency (there is none). In any event, Cardiocom
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`cannot show that a general inquiry into the state of the telehealth market in 2011-
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`12—15 years after the priority date of the Bosch patents—contradicts or is
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`otherwise specifically relevant to Dr. David’s opinions. The same defects exist
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`with respect to Cardiocom’s second topic on the continued development of Health
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`Buddy in 2012, which Dr. David does not address at all.2
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`Cardiocom’s other example topics are similarly improper. For instance, the
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`last two examples—seeking “consideration of the scope and merits of the claimed
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`inventions” and “the specific elements of the Health Buddy that led to the
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`purported commercial success, satisfied a long-felt need, or allegedly were copied
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`by others,” id. at 4—are vague requests that are akin to the requests for “additional
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`evidence of secondary considerations” that were rejected by the Board in Garmin
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`and Corning. In any event, these topics appear to seek a patent claim analysis that
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`is clearly the subject of expert testimony, not fact witness testimony. Dr. David—
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`who is an expert in analyzing and selecting telehealth devices for use in
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`hospitals—specifically addresses these topics and Cardiocom is free to depose him.
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`2 Cardiocom’s assertions regarding supposed representations in litigation suggest
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`that Cardicom is seeking to obtain Bosch’s litigation positions from the witnesses.
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`This also weighs against granting the discovery. Garmin, Paper 26 at 6 (Factor 2).
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`3
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`B.
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`(Factor 3) Cardiocom Has Failed To Establish That The Requested
`Discovery Is Not Readily Available By Other Means.
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`Cardiocom’s request should be rejected under Factor 3 because any relevant
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`information is already obtainable from Dr. David’s declaration and his upcoming
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`deposition. Cardiocom completely ignores the numerous exhibits that Dr. David
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`relied upon as objective indicia of non-obviousness; these exhibits independently
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`corroborate the statements made by the Bosch witnesses. Case IPR2013-00431,
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`Exs. 2010-2057. By way of example, Dr. David notes that the Bosch personnel
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`“recalled that the Health Buddy was adopted by a number of other hospitals and
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`pharmacies.” Id., Ex. 2006, ¶ 66. Dr. David then cites several articles that verified
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`the recollection of the Bosch witnesses. Id. (citing Exs. 2011-2014). Similarly, the
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`Bosch personnel’s statements about the VA’s assessment of the Health Buddy are
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`also supported by a VA case study. Id. ¶¶ 67-70 (discussing Ex. 2054).
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`Moreover, Cardiocom will have an opportunity from May 21-23 to depose
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`Dr. David on the discussions that he had with Bosch personnel and how those
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`discussions—along with all the other objective indicia of non-obviousness—
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`helped to form his opinions regarding the validity of the challenged claims.
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`C.
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`(Factor 4) The Discovery Request Is Not Easily Understandable.
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`Cardiocom’s requests are vaguely worded and have uncertain scope.
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`Moreover, Cardiocom has stated that these topics are only “examples.”
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`Accordingly, Cardiocom’s motion should be rejected under this factor.
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`4
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`D.
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`(Factor 5) Cardiocom’s Discovery Request Is Overly Burdensome.
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`The final reason Cardiocom’s motion should be denied is because the
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`requested discovery is overly burdensome to answer given the scope of Dr.
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`David’s discussions with the Bosch witnesses. Those conversations consisted of a
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`one-hour discussion with inventor Stephen Brown and a separate one-hour
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`discussion held jointly with two Bosch personnel on the limited topics disclosed in
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`Dr. David’s declaration and corroborated by documents attached to the declaration.
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`Nevertheless, Cardiocom seeks deposition topics that are irrelevant and
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`overbroad (and are apparently “examples” of other unknown topics it seeks
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`discovery into). Cardiocom seeks to impose on Bosch the expense of preparing,
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`producing, and defending these witnesses for open-ended questioning, not to
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`mention the great disruption to the witnesses’ daily schedules. Such far-reaching
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`discovery, and the concomitant burdens, is unjustified and unwarranted here. See
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`Garmin, Paper 26 at 16 (denying discovery request where “the [requested]
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`documents and things need not contain anything useful or even relevant”).
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`Dated: May 6, 2014
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`Respectfully submitted,
`
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`
`By:
`
`/Don Daybell/
`Don Daybell, Reg. No. 50,877
`Attorneys for Patent Owner Robert Bosch
`Healthcare Systems, Inc.
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`5
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`CERTIFICATION OF SERVICE (37 C.F.R. §§ 42.6(e))
`
`The undersigned hereby certifies that “PATENT OWNER’S RESPONSE
`
`TO PETITIONER CARDIOCOM,
`
`LLC’S MOTION TO COMPEL
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`ADDITIONAL DISCOVERY” was served in its entirety on May 6, 2014, upon the
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`following parties via electronic mail:
`
`Counsel for Petitioner
`
`Daniel W. McDonald
`Andrew J. Lagatta
`Merchant & Gould
`80 South 8th St., Suite 3200
`Minneapolis, MN 55402
`CardiocomIPR@merchantgould.com
`
`By:
`
`/Sally Hartwell/
`Sally Hartwell
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`6
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`