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 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
`
`
`_____________________
`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
`
`
`
`Patent Owner Robert Bosch Healthcare Systems, Inc. (“Bosch”) respectfully
`
`requests that the Board deny Petitioner Cardiocom, LLC’s (“Cardiocom”) Motion
`
`to Compel Additional Discovery. Cardiocom fails to comply with the Board’s
`
`order requiring that it identify specific issues for deposition. See Order at 3.
`
`Cardiocom instead seeks broad and open-ended litigation-style discovery that is
`
`specifically disfavored under statute and that is unrelated to the discussions
`
`between Dr. David and the individuals, Dr. David’s opinions, or any issue in these
`
`proceedings. Indeed, in an apparent effort to raise ancillary issues, Cardiocom
`
`seeks nine hours of deposition time regarding two conversations that lasted no
`
`more than one hour each. Such discovery is not “necessary in the interest of
`
`justice.” 35 U.S.C. § 316(a)(5)(B).
`
`A.
`
`(Factor 1) Cardiocom Has Not Demonstrated That Its Discovery
`Request Will Lead To Useful Information.
`
`Cardiocom’s request for depositions must be rejected because Cardiocom
`
`has failed to demonstrate “beyond speculation that something useful will be
`
`uncovered.” Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, Case IPR2012-
`
`00001, Paper 26, at 7 (P.T.A.B. Mar. 5, 2013). “Useful” here “means favorable in
`
`substantive value to a contention of the party moving for discovery.” Id.
`
`It is apparent that Cardiocom intends to engage upon a fishing expedition in
`
`the hopes that Bosch’s witnesses might disclose something useful. Despite the
`
`Board’s order that Cardiocom “identify what specific issues would be addressed,
`
`1
`
`
`
`should the depositions be permitted” (Order at 3), Cardiocom purports only to
`
`identify “examples” of issues to be addressed. Mot. at 3. This vague, open-ended
`
`language is plainly intended to permit Cardiocom to delve into ancillary side issues
`
`that are unrelated to any question of validity or Dr. David’s opinions.1
`
`Indeed, the examples that Cardiocom identifies make clear its intention to
`
`engage in fishing. For instance, Cardiocom seeks to depose the witnesses on the
`
`“relative sales and success of the Health Buddy and any other telehealth products
`
`in 2011-12,” id., but Dr. David does not rely upon this information in his
`
`declaration, nor has Cardiocom demonstrated beyond speculation that the Bosch
`
`witnesses would even have such information. Cardiocom argues that such
`
`information might be relevant because Dr. David’s opinions concerning
`
`commercial success are allegedly inconsistent with prior statements made by
`
`1 Cardiocom cites Corning Inc. v. DSM IP Assets B.V., Case IPR2013-00043,
`
`Paper 27 (P.T.A.B. June 21, 2013), to argue that open-ended witness depositions
`
`should be permitted. Cardiocom’s reliance is misplaced. Corning rejected two of
`
`three requests for additional discovery as being open-ended speculative requests,
`
`much like Cardiocom’s requests here. Id. at 5-7. As to the third request, the Board
`
`permitted limited, non-burdensome discovery of a single lab notebook because the
`
`moving party specifically showed that the expert’s opinion turned on whether or
`
`not she used certain formulas, which could only be found in the notebook. Id. at 4.
`
`2
`
`
`
`Bosch in litigation. Mot. at 3. However, Cardiocom could simply examine Dr.
`
`David on any alleged inconsistency (there is none). In any event, Cardiocom
`
`cannot show that a general inquiry into the state of the telehealth market in 2011-
`
`12—15 years after the priority date of the Bosch patents—contradicts or is
`
`otherwise specifically relevant to Dr. David’s opinions. The same defects exist
`
`with respect to Cardiocom’s second topic on the continued development of Health
`
`Buddy in 2012, which Dr. David does not address at all.2
`
`Cardiocom’s other example topics are similarly improper. For instance, the
`
`last two examples—seeking “consideration of the scope and merits of the claimed
`
`inventions” and “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,” id. at 4—are vague requests that are akin to the requests for “additional
`
`evidence of secondary considerations” that were rejected by the Board in Garmin
`
`and Corning. In any event, these topics appear to seek a patent claim analysis that
`
`is clearly the subject of expert testimony, not fact witness testimony. Dr. David—
`
`who is an expert in analyzing and selecting telehealth devices for use in
`
`hospitals—specifically addresses these topics and Cardiocom is free to depose him.
`
`2 Cardiocom’s assertions regarding supposed representations in litigation suggest
`
`that Cardicom is seeking to obtain Bosch’s litigation positions from the witnesses.
`
`This also weighs against granting the discovery. Garmin, Paper 26 at 6 (Factor 2).
`
`3
`
`
`
`B.
`
`(Factor 3) Cardiocom Has Failed To Establish That The Requested
`Discovery Is Not Readily Available By Other Means.
`
`Cardiocom’s request should be rejected under Factor 3 because any relevant
`
`information is already obtainable from Dr. David’s declaration and his upcoming
`
`deposition. Cardiocom completely ignores the numerous exhibits that Dr. David
`
`relied upon as objective indicia of non-obviousness; these exhibits independently
`
`corroborate the statements made by the Bosch witnesses. Case IPR2013-00431,
`
`Exs. 2010-2057. By way of example, Dr. David notes that the Bosch personnel
`
`“recalled that the Health Buddy was adopted by a number of other hospitals and
`
`pharmacies.” Id., Ex. 2006, ¶ 66. Dr. David then cites several articles that verified
`
`the recollection of the Bosch witnesses. Id. (citing Exs. 2011-2014). Similarly, the
`
`Bosch personnel’s statements about the VA’s assessment of the Health Buddy are
`
`also supported by a VA case study. Id. ¶¶ 67-70 (discussing Ex. 2054).
`
`Moreover, Cardiocom will have an opportunity from May 21-23 to depose
`
`Dr. David on the discussions that he had with Bosch personnel and how those
`
`discussions—along with all the other objective indicia of non-obviousness—
`
`helped to form his opinions regarding the validity of the challenged claims.
`
`C.
`
`(Factor 4) The Discovery Request Is Not Easily Understandable.
`
`Cardiocom’s requests are vaguely worded and have uncertain scope.
`
`Moreover, Cardiocom has stated that these topics are only “examples.”
`
`Accordingly, Cardiocom’s motion should be rejected under this factor.
`
`4
`
`
`
`D.
`
`(Factor 5) Cardiocom’s Discovery Request Is Overly Burdensome.
`
`The final reason Cardiocom’s motion should be denied is because the
`
`requested discovery is overly burdensome to answer given the scope of Dr.
`
`David’s discussions with the Bosch witnesses. Those conversations consisted of a
`
`one-hour discussion with inventor Stephen Brown and a separate one-hour
`
`discussion held jointly with two Bosch personnel on the limited topics disclosed in
`
`Dr. David’s declaration and corroborated by documents attached to the declaration.
`
`Nevertheless, Cardiocom seeks deposition topics that are irrelevant and
`
`overbroad (and are apparently “examples” of other unknown topics it seeks
`
`discovery into). Cardiocom seeks to impose on Bosch the expense of preparing,
`
`producing, and defending these witnesses for open-ended questioning, not to
`
`mention the great disruption to the witnesses’ daily schedules. Such far-reaching
`
`discovery, and the concomitant burdens, is unjustified and unwarranted here. See
`
`Garmin, Paper 26 at 16 (denying discovery request where “the [requested]
`
`documents and things need not contain anything useful or even relevant”).
`
`Dated: May 6, 2014
`
`Respectfully submitted,
`
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`
`By:
`
`/Don Daybell/
`Don Daybell, Reg. No. 50,877
`Attorneys for Patent Owner Robert Bosch
`Healthcare Systems, Inc.
`
`5
`
`
`
`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
`
`ADDITIONAL DISCOVERY” was served in its entirety on May 6, 2014, upon the
`
`following parties via electronic mail:
`
`Counsel for Petitioner
`
`Daniel W. McDonald
`Andrew J. Lagatta
`Merchant & Gould
`80 South 8th St., Suite 3200
`Minneapolis, MN 55402
`CardiocomIPR@merchantgould.com
`
`By:
`
`/Sally Hartwell/
`Sally Hartwell
`
`6
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
