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 IPR2013-00468
`Patent 7,516,192
`____________
`
`CORRECTED PETITIONER’S REPLY TO PATENT OWNER’S
`RESPONSE WITH RESPECT TO U.S. PATENT NO. 7,516,192
`
`
`
`
`
`
`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 IPR2013-00468
`Patent 7,516,192
`____________
`
`CORRECTED PETITIONER’S REPLY TO PATENT OWNER’S
`RESPONSE WITH RESPECT TO U.S. PATENT NO. 7,516,192
`
`
`
`
`
`
`
`
`
`
`I.
`
`II.
`
`
`
`TABLE OF CONTENTS
`
`Introduction ...................................................................................................... 1
`
`The Cited Art Is Analogous and Would Be Combined By One Of Ordinary
`Skill In The Art. ............................................................................................... 2
`
`III. Dr. Stone Used A Proper Methodology In His Obviousness Analysis. .......... 3
`
`IV. Bosch And Dr. David Failed To Establish Any Nexus Between The Claims
`And Any Objective Indicia Of Nonobviousness. ............................................ 4
`
`V.
`
`The Claims Are Invalid Under Each Asserted Ground. .................................. 6
`
`A.
`
`B.
`
`C.
`
`Claim 1 Is Invalid Under Grounds 1 And 2. ......................................... 6
`
`Dependent Claims 2-19 Are Obvious Under Grounds 1 And 2. ........ 11
`
`Independent Claim 20 Is Invalid Under Grounds 1, 2, And 3. ........... 14
`
`D. Dependent Claims 21-36 Are Invalid Under Grounds 1, 2, And 3. .... 16
`
`E.
`
`Claim 37 Is Invalid Under Grounds 2 And 3. ..................................... 16
`
`
`
`
`
`
`
`
`
`
`
`i
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`
`CASES
`Cable Elec. Prods. v. Genmark, Inc.,
`770 F.2d 1015 (Fed. Cir. 1985) ............................................................................ 5
`
`Page(s)
`
`In re Bigio,
`381 F.3d 1320 (Fed. Cir. 2004) ............................................................................ 2
`
`In re Robertson,
`169 F.3d 743 (Fed. Cir. 1999) .............................................................................. 6
`
`KSR Int’l Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) ........................................................................................ 4, 15
`
`Ormco Corp. v. Align Technology Inc.,
`463 F.3d 1299 (Fed. Cir. 2006) ............................................................................ 4
`
`Perfect Web. Perfect Web Techs., Inc. v. InfoUSA, Inc.,
`587 F.3d 1324 (Fed. Cir. 2009) ............................................................................ 4
`
`
`
`ii
`
`
`
`
`
`I.
`
`Introduction
`
`Every claim of the ’192 patent is rendered obvious by the disclosure of
`
`Wright Jr., Goodman, and/or Wahlquist. Patent Owner (hereinafter “Bosch”)
`
`portrays the ’192 patent as narrowly focused on communicating with individuals,
`
`ignoring that it more generally teaches “gathering data from remotely located
`
`devices.” Bosch also contends Wahlquist, in contrast, is “completely divorced”
`
`from communicating with individuals, ignoring Wahlquist’s teachings of
`
`communications with individuals before, during, and after the diagnostic process.
`
`Additionally, contrary to Bosch’s assertions, one of ordinary skill would
`
`have been motivated to combine the cited art. Goodman teaches the use of
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`computerized “algorithms” to gather data based on treatment plans. Similarly,
`
`Wright teaches that it “finds use in any application in which data is collected
`
`procedurally or algorithmically.” Goodman relates to using script programs to
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`gather data from devices associated with individuals; so does Wahlquist.
`
`Bosch’s assertions of secondary considerations fall far short in many ways,
`
`including a lack of a nexus between the purported evidence and the claims.
`
`Additionally, its contentions regarding missing elements fail to fully consider the
`
`express teachings of the prior art and the common sense of one of ordinary skill. In
`
`short, the ’192 claims are combinations of familiar elements that yield predictable
`
`results. The Board should find that claims 1-37 of the ’192 patent are unpatentable.
`
`1
`
`
`
`
`
`II. The Cited Art Is Analogous and Would Be Combined By One Of
`Ordinary Skill In The Art.
`
`Bosch claims that Wahlquist is not analogous art because Wahlquist’s
`
`solution eliminates the user from the process and that “the entire diagnosis process
`
`itself is completely divorced from any participation by the user.” Resp. 29; David
`
`Decl. ¶ 284. Bosch’s expert, Dr. David, failed to defend those sweeping and wrong
`
`assertions on cross examination. David Dep. (Ex. 1041) 69:6-9; 71:2-72:7; 75:2-
`
`11; 486:21-487:2; 489:22-490:2-18 (conceding Wahlquist interacts with a user
`
`before, during, and after the diagnosis process); Stone Rep. ¶¶ 57-60;189-201, 220
`
`(Ex. 1022).
`
`Both Wahlquist and the ’192 patent’s claims involve communication,
`
`including transmitting computer programs, between computing devices. Id. at
`
`37:17-24; 42:19-43:7; Stone Rep. ¶¶ 38-47. Dr. David ignored the ‘192 patent
`
`specification when assessing the issue of analogous art. Compare id. at 69:6-12
`
`with 71:2-24. His opinions and Bosch’s arguments thus are flawed as a matter of
`
`law. See In re Bigio, 381 F.3d 1320, 1325-26 (Fed. Cir. 2004) (must consider “the
`
`invention’s subject matter in the patent application, including the embodiments,
`
`function, and structure of the claimed invention.”). Wahlquist also does not “teach
`
`away.” While an example in Wahlquist teaches not using a prompt, other examples
`
`teach exactly that functionality, and there is nothing in Wahlquist suggesting
`
`prompts would be nonfunctional. Stone Rep. ¶ 199. Wahlquist is in the same field
`
`2
`
`
`
`
`
`of endeavor and reasonably pertinent to the problem faced by the inventor.
`
`Bosch’s contentions that one would not have combined Goodman and
`
`Wahlquist or Goodman and Wright are unfounded. Stone Rep. ¶¶ 202-206. Bosch
`
`does not refute the Board’s finding that “both Goodman and Wahlquist disclose
`
`systems in which an algorithm or script file is generated at one device and sent to
`
`another device for execution.” IPR2013-00469 Dec. 10-11. Bosch ignores the
`
`evidence that the combination of Goodman and Wahlquist would have involved no
`
`“more than a combination of known systems to perform their known functions to
`
`achieve a predictable result ….” Id. at 11; Stone Rep. ¶ 204. Indeed, Dr. David did
`
`not argue the contrary. David Dep. 606:6-12.
`
`Bosch shows no flaw in the Board’s findings regarding motivations to
`
`combine Wright and Goodman. Stone Rep. ¶¶ 49-56; 125-127. Both Wright and
`
`Goodman taught known techniques of using customized programs, or algorithms,
`
`to collect information from individuals via remote devices. David Dep. 482:21-
`
`484:24 (referring to Ex. 1003 col. 2:54-66); 572:22-573:8; 575:22-576:8; 633:8-
`
`634:6. One would have understood the algorithms of Goodman could be
`
`programmed in a script program. Id. at 606:6-12. Dr. Stone explained one would
`
`see benefits from combining these teachings. Stone Dep. 541:20-542:18; 638:10-
`
`639:2.
`
`III. Dr. Stone Used A Proper Methodology In His Obviousness Analysis.
`
`3
`
`
`
`
`
`Despite Bosch’s claims to the contrary, Dr. Stone’s methodology in
`
`analyzing the obviousness of the claims of the ‘192 patent was proper under the
`
`teachings of KSR and Perfect Web. Perfect Web Techs., Inc. v. InfoUSA, Inc., 587
`
`F.3d 1324, 1328-29 (Fed. Cir. 2009) (citing KSR Int’l Co. v. Teleflex, Inc., 550
`
`U.S. 398, 420-21 (2007)); Stone Dep. 609:13-19. Bosch fails to tie the purported
`
`flaw to the entirety of Dr. Stone’s analysis, much of which is directed to issues
`
`unrelated to Bosch’s criticism of Dr. Stone’s methodology. Moreover, Dr. Stone
`
`avoided using improper hindsight, relying on the disclosures of the prior art and
`
`the knowledge and experience of one of ordinary skill to assess obviousness. Stone
`
`Rep. ¶ 36-37. Dr. Stone’s analysis and opinions are admissible and persuasive.
`
`IV. Bosch And Dr. David Failed To Establish Any Nexus Between The
`Claims And Any Objective Indicia Of Nonobviousness.
`
`Bosch’s attempt to show objective evidence of nonobviousness fails for
`
`several reasons. Stone Rep. ¶¶ 61-90. “Evidence of commercial success, or other
`
`secondary considerations, is only significant if there is a nexus between the
`
`claimed invention and the commercial success.” Ormco Corp. v. Align Technology
`
`Inc., 463 F.3d 1299, 1311-12 (Fed. Cir. 2006). Dr. David admitted that he did not
`
`even consider the claims when analyzing the market forces or the Health Buddy—
`
`indeed, there is no showing the Health Buddy practices a single claim. David Dep.
`
`245:15-246:3; 499:1-9. Dr. David conceded, for example, that none of the claims
`
`requires the purported “key differentiator” and “key feature” (the four button
`
`4
`
`
`
`
`
`patient interface) emphasized in the cited evidence. Id. at 143:7-11; 144:16-24;
`
`146:7-20; 150:22-151:2; Stone Rep. ¶ 81. In fact, a third party, IDEO, developed
`
`the unclaimed user interface Bosch cites as key to its success. Stone Rep. ¶ 74;
`
`Exs. 1026; 1029; 1031. Figure 20 was not in the original specification. Ex. 1038.
`
`Dr. David did not even inquire whether the purported success of the product
`
`was attributable to factors other than what was claimed because “it was not one of
`
`my tasks to do.” David Dep. 172:9-18. He did not analyze market share,
`
`comparative sales, or profitability. Id. at 129:9-11 (“I didn’t see a need for” market
`
`share review.); 119:9-120:7 (“I didn’t do the economic analysis”); 501:19-502:11
`
`(no comparative sales analysis); Stone Rep. ¶ 69. His opinions are thus entitled to
`
`no weight. Cable Elec. Prods. v. Genmark, Inc., 770 F.2d 1015, 1026-27 (Fed. Cir.
`
`1985) (evidence of units sold and profit insufficient; requiring market share and
`
`profitability per unit as compared to industry). Bosch presents no evidence that the
`
`Health Buddy made a dime, ever. Bosch’s conclusory assertions that the Health
`
`Buddy was “highly successful” and the patent resulted in “great commercial
`
`success” (Resp. pp. 22-23) thus lack support and ring hollow.
`
`Regarding industry praise, the articles and awards Bosch cites are irrelevant
`
`because they are not correlated to any claim and many constitute articles written by
`
`Bosch. Stone Rep. ¶¶ 83-86. Indeed, Dr. David claims long experience in this
`
`industry, yet admitted “I don’t think I saw the Health Buddy” until 2014 when he
`
`5
`
`
`
`
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`was hired by Bosch for this proceeding. David Dep. at 162:18-21; Stone Rep. ¶ 70.
`
`The purported studies do not even compare the Health Buddy to other systems.
`
`David Dep. 503:11-20. With respect to purported copying, there is no proof third
`
`parties copied the invention. Stone Rep. ¶ 90. Dr. David admitted, “I did not
`
`analyze what the other people provided.” David Dep. 177:21-25. Instead, he relied
`
`on a flawed inference that, because the VA accepted bids from competitors, they
`
`copied. Dr. David admitted those competitors did not even need to use the claimed
`
`invention to meet the VA’s requirements, destroying the premise for the copying
`
`claim. Id. 193:9-18. In short, the secondary evidence is woefully inadequate to
`
`show nonobviousness.
`
`V. The Claims Are Invalid Under Each Asserted Ground.
`
`Bosch implicitly and wrongly analyzes the §103 Ground under a § 102
`
`anticipation standard. See, e.g., Resp. 41, 50, 54, 65-67; Stone Rep. ¶¶91-242.
`
`Bosch cites In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). The cited portion
`
`of Robertson addresses § 102(e), however, and does not address obviousness or a
`
`post-KSR obviousness standard. Here, “[i]t is not necessary for the cited art to
`
`teach precisely ‘the specific subject matter of the challenged claim, for a court can
`
`take account of the inferences and creative steps that a person of ordinary skill in
`
`the art would employ.’” IPR2013-00468 Dec. 12 (citations omitted).
`
`A. Claim 1 Is Invalid Under Grounds 1 And 2.
`
`6
`
`
`
`
`
`Wright teaches a data merge program under the Board’s construction of “a
`
`program that combines two or more sets of data into one.” Bosch’s contrary
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`argument that Wright’s data merge “must be done manually” (David Decl. ¶ 118)
`
`ignores the Board’s reasoning that “[c]laim 1 does not exclude the possibility that
`
`the data to be merged is provided by a user.” IPR2013-00468 Dec. 12. Moreover,
`
`although Dr. David opined that Wright does not disclose combining two sets of
`
`data (David Decl. ¶ 120), on cross examination he admitted that Wright teaches
`
`combining one set of data (an existing form) with another set of data (provided by
`
`the user) into a new form. David Dep. 528:24-533:11. Thus, Wright’s field editor
`
`meets the Board’s construction of data merge program. Stone Rep. ¶¶ 91-95.
`
`Bosch argues “Wright does not teach executing a script to display queries
`
`and response choices as claimed in the ’192 patent.” Resp. 9. Bosch ignores that
`
`that the script file of claims 1 and 20 may “present to the individual” not just
`
`queries, but “one or more messages.” Ex. 1001 cols. 20:57-58; 22:28-29 (emphasis
`
`added). Its failure to dispute that Wright teaches presenting messages (as Wright
`
`clearly does) renders its argument irrelevant. Stone Rep. ¶¶ 49-53.
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`Display commands appear in Wright’s customized scripts throughout the
`
`specification and in the figures. For example, Wright teaches that “the forms
`
`engine executes a script program . . . that may perform data validation, sound an
`
`alarm, display a message, quit, launch another form, skip to another question, and
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`7
`
`
`
`
`
`so forth.” Ex. 1002 col. 7:14-20 (emphasis added); id. FIGS. 2B; 3; 4. Bosch thus
`
`incorrectly asserts that Wright’s script simply “handl[es] skip patterns and
`
`perform[s] error validation.” Resp. 34. Dr. David contradicted this assertion by
`
`conceding “[o]ne of the capabilities of the script program in Wright is to display
`
`messages on the PDA to a user.” David Dep. 482:8-12; Stone Rep. ¶ 51-53; 96-98.
`
`Also contrary to Bosch’s contentions, Wright provides multiple reasons to
`
`modify its disclosure including suggestions as to how one of ordinary skill would
`
`do so. Dr. Stone testified that although Wright was a complete system, its
`
`specification suggested modifications, including using other portable computing
`
`devices. Stone Dep. 541:20-542:18; see also, e.g., Ex. 1002 col. 28:37-41 (“The
`
`forms system 100 described herein finds application in many environments, and is
`
`readily adaptable for use therein. . . procedurally or algorithmically.”). One of
`
`ordinary skill would have read Wright as suggesting modifying the system for use
`
`in other fields and with different devices to collect data remotely.
`
`Bosch introduces an unduly narrow construction of generic script program
`
`for the first time. Bosch claims a generic script program is “a script program that
`
`is not usable in itself . . . .” Resp. 40. Neither party nor the Board has construed the
`
`term generic script program. The ’192 specification does not define a generic
`
`script program, and the specification does not support Bosch’s construction. See
`
`David Dep. 539:12-24. Indeed, Dr. David contradicted Bosch’s new construction
`
`8
`
`
`
`
`
`and conceded during cross-examination that a generic script program is usable, it
`
`just may not be optimum. Id. at 538:3-7. This argument thus fails.
`
`One of ordinary skill would interpret “generic” as indicating that it is not
`
`specifically addressed to a particular individual. Id. at 540:9-24; 552:24-553:10;
`
`compare Ex. 1001 col. 13:10-11 (“Each custom script program 41 contains
`
`statements that are customized to an individual.”) with col. 13:41-43 (generating “a
`
`generic script program for diabetes patients, a generic script program for asthma
`
`patients, etc.”). Thus, the script program in Wright, which is not specifically
`
`addressed to an individual, is a generic script program. Stone Rep. ¶¶ 91-95, 113.
`
`Goodman in view of Wright teaches a generic script program. A common,
`
`generic structure is evident in the table in column 9. Ex. 1003 col. 9:6-19; David
`
`Dep. 578:13-579:25; 582:11-13 (describing the table’s left column as a “generic
`
`list of parameters”) (emphasis added). There, the left column lists common
`
`treatment parameters for asthma patients that are not individualized, such as
`
`“[b]aseline peak flow.” Ex. 1003 col. 9:6-19. The middle and right columns show
`
`how each treatment parameter is customized for a specific patient. Id.; see also id.
`
`at FIGS. 10A-10B (depicting two different customized treatment plans; some of
`
`the processes are identical or nearly identical); David Dep. 586:1-5. Therefore, in
`
`combination with Wright’s script programs, the common treatment parameters in
`
`Goodman qualify as teaching a generic script program as used by the ’192 claims.
`
`9
`
`
`
`
`
`Next, Wright teaches a customized script program including an input
`
`command to receive responses. Wright explicitly lists “input” as part of the script
`
`language grammar rules provided in Table 3. Ex. 1002 cols. 24:53-25:5; see also
`
`id. at cols. 4:49-61; 7:6-25. Dr. David agreed that Wright discloses an input
`
`command to receive responses during cross examination. David Dep. 481:3-24;
`
`554:9-555:3. Wright discloses this element. Stone Rep. ¶¶ 96-98.
`
`Goodman’s disclosure also renders obvious an input command to receive
`
`responses. Goodman discloses a remote apparatus prompting a patient for data and
`
`the algorithm 115 can “accept[] as input at least one indicia of the patient’s then
`
`current health status.” Ex. 1003 col. 8:45-47; see also id. at col. 9:28-30; Stone
`
`Rep. ¶¶134-135. Dr. David admitted one of ordinary skill would understand that an
`
`algorithmic input command would be a way to receive input. David Dep. 588:2-15.
`
`Regarding a database for storing (1) a generic script program and (2) the
`
`responses received, the Board rejected Bosch’s contention that Wright did not
`
`disclose this feature. IPR2013-00468 Dec. 12. Bosch improperly implies some
`
`special, unstated meaning of “database.” Resp. 44. Dr. David agreed that a
`
`database is “an electronically stored organized collection of data” or data capable
`
`of being managed by a database manager. David Dep. 607:17-19. Wright discloses
`
`electronically storing the previous forms (generic script programs) as well as the
`
`form data (responses received). E.g., Ex. 1002 col. 14:1-10. See also David Dep.
`
`10
`
`
`
`
`
`557:14-19 (agreeing that “one of ordinary skill would understand that one way to
`
`store such a list of forms would be to store them in a computer database that’s
`
`accessible on the computer”); 559:10-23; 560:2-18. Wright, as well as Goodman,
`
`teach or render obvious the database element. Stone Rep. ¶ 99-104; 136-140.
`
`B. Dependent Claims 2-19 Are Obvious Under Grounds 1 And 2.
`Claim 2 requires “a script assignment unit configured to . . . assign[] to
`
`each of the plurality of individuals at least one of the plurality of customized
`
`script programs.” The claim does not require that every individual is assigned their
`
`own, customized script program. Rather, the claims only require that the assigned
`
`script program be customized. Thus, Wright’s personality profile embodiment,
`
`where a group of individuals complete a customized personality profile (Ex. 1002
`
`col. 28:40-44) would be understood to assign the customized program and renders
`
`this element obvious. Stone Dep. 648:14-25; Stone Rep. ¶¶ 105-107.
`
`Wright also teaches or suggests a database configured for storing a list of
`
`the individuals, found in claim 2, in its discussion of a personality profile. After an
`
`individual has completed the personality profile questionnaire, one of skill would
`
`understand that the system would store in a database information associating the
`
`individual and his or her results. Stone Rep. ¶¶ 108-110; 144-145.
`
`Wright also renders obvious a respective pointer to the at least one
`
`customized script program assigned to the individual. The tab-delimited data
`
`11
`
`
`
`
`
`format in Wright includes a pointer. David Dep. 567:14-20. Wright’s system
`
`employs file identification. Stone Rep. ¶ 46, 110; 146. One of ordinary skill in the
`
`art would recognize the use of a pointer to implement the personality profile
`
`embodiment in Wright’s disclosure using tab-delimited data. David Dep. 567:12-
`
`20; Ex. 1002 col. 28:37-44. This pointer element was obvious in view of Wright.
`
`Bosch states that “Cardiocom has not identified any teaching about the use
`
`of ‘pointers’ in Goodman.” Resp. 49. Incorrect. Goodman discloses a pointer. Ex.
`
`1003 col. 4:1-4, 18-22, 39-43. One of ordinary skill would have recognized that in
`
`order to manage millions of patients and customized algorithms assigned to each of
`
`those millions, pointers would be used. See David Dep. 594:14-24.
`
`Goodman teaches a data merge program customizing the generic script
`
`program using personal data associated with each of the plurality of individuals
`
`as in claims 8 and 26 (and with essentially the same limitation in claims 31-33). As
`
`discussed above, Goodman teaches a generic algorithm and customizing generic
`
`algorithms using data specific to a patient (personal data). David Dep. 483:9-25;
`
`484:20-24; Ex. 1003 cols. 8:37-63; 9:6-19. Wright discloses a data merge program.
`
`IPR2013-00468 Dec. 11-12. Bosch argues Goodman must teach every aspect of
`
`this element, ignoring that Goodman is combined with Wright for Ground 2. The
`
`combination of Wright and Goodman renders this element obvious. Stone Rep.
`
`¶¶154-158; 169.
`
`12
`
`
`
`
`
`Next, Wright renders obvious a look-up table as in claims 11-12 and 29-30.
`
`Wright discloses storing form data in a tab-delimited format so it can be used. Ex.
`
`1002 col. 14:1-10. Data in tab-delimited format is an array of data. David Dep.
`
`568:6-11. Wright also teaches the use of a spreadsheet, which Dr. David admitted
`
`is a matrix. David Dep. 568:22-569:3. A lookup is defined as a “[d]ata search
`
`performed within a predefined table of values (array, matrix, etc.) or within a data
`
`file.” Ex. 1043 at 318. Based on this definition, a look-up table is a table of values,
`
`such as an array or matrix. Wright’s tab-delimited format teaches or renders
`
`obvious a look-up table. Stone Rep. ¶¶ 161-162.
`
`Bosch contends that Goodman does not disclose an individual identification
`
`code or that the individual identification code is associated with the message
`
`device. Goodman discloses monitoring millions of patients and sending customized
`
`algorithms to those millions of patients by appropriate individual identification,
`
`addressing and messaging as known to those of ordinary skill. Ex. 1003 col. 4:18-
`
`22. This element is inherent, and also obvious based on Goodman’s disclosure to
`
`use an individual identification code and to have that code associated with the
`
`message device. Stone Rep. ¶ 164-165; Ex. 1003 col. 16:47-53 (messaging device
`
`associated with a specific patient and has an “identification code”).
`
`In disputing whether Wright discloses that the data merge program
`
`generates the customized script program using the generic script program as a
`
`13
`
`
`
`
`
`template in claim 18, Bosch claims that as a template “implies a more structured
`
`use of the pre-existing form than simply editing it in an unspecified manner.” Resp.
`
`55-56. This unduly limits, and is not commensurate with the scope of, the claim.
`
`Under claim 18, Wright’s modification of an existing form is using the generic
`
`script program as a template. Stone Rep. ¶¶ 114-115; Ex. 1002 8:33-38; Ex. 1044.
`
`The insert commands specifying types of personal data to be inserted in
`
`claims 19 and 35 are taught by Wright’s “New Field” command, which specifies
`
`types of data such as text or numbers, which would be personal data e.g. for the
`
`personality profile application. Ex. 1002 8:53-61; 28:41-41; Stone Rep. ¶ 117. The
`
`element is also obvious over the admitted prior art mail merge applications, which
`
`would rely on defining fields for inserted data. Ex. 1001 col. 12:58-61; David Dep.
`
`533:23-534:5. Stone Rep. ¶¶ 116-118, 154-158.
`
`Independent Claim 20 Is Invalid Under Grounds 1, 2, And 3.
`C.
`Wahlquist renders generating a generic script program with an input
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`command to receive responses obvious. When executed, the script file in
`
`Wahlquist can create log data files, record the results of tests, and instruct the
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`computer to send copies of system files. Ex. 1004 cols. 2:45-49; 6:6-36. Those
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`actions are not specific to the user or the user’s computer; instead, those attributes
`
`would be present in a generic script program from which the customized script
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`program was created. Stone Rep. ¶ 129-133, 170, 207-210. Wahlquist also teaches
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`14
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`user interaction, accomplished by an input command. Stone Decl. ¶¶211-12.
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`Regardless, because Goodman discloses a generic algorithm, see §V.A above, the
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`Goodman and Wahlquist render obvious a generic script program as claimed.
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`Bosch argues that Wright does not disclose generating a customized script
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`program in the computer. Resp. 59. Bosch states that “this limitation requires that
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`the customization of the generic script program is done by a computer.” Id.
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`(emphasis added). Claim 20 recites “in the computer” for this element; nothing in
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`that claim requires the customization to be performed by a computer. Thus, the fact
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`that a user in Wright customizes a generic script program in a computer is
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`sufficient to disclose this element. Stone Repl. ¶ 171.
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`The combination of Wahlquist and Goodman discloses storing any
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`responses received from the remotely situated apparatus in a database. Wahlquist
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`describes a “database manager application” that associates the script file with the
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`case file (Ex. 1004 col. 2:22-25) and receives the data files from the remote
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`computer. Id. at 6:41-43. A database manager interacts with a database. David
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`Dep. 589:20-23. One of ordinary skill would understand that a system which
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`“stores a record” (Ex. 1003 col. 4:52-53) of compliance data gathered from
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`individuals, including for example millions of patients as taught in Goodman,
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`would store those responses in a database so the data could be readily retrieved.
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`See KSR, 550 U.S. at 421 (“A person of ordinary skill is also a person of ordinary
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`15
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`
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`creativity, not an automaton.”). Thus, the references render this limitation obvious.
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`D. Dependent Claims 21-36 Are Invalid Under Grounds 1, 2, And 3.
`Goodman in combination with Wright also teaches or suggests entering or
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`selecting one or more messages to be presented to the individual as part of
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`generating a generic script program. Goodman’s generic script programs include
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`prompts. Ex. 1003 col. 9:6-19. Figs. 10A and 10B of Goodman depict two
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`algorithms implemented for asthma patients, depicting identical messaging steps
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`(i.e. “Display ‘No Action Required’”) as well as differing messages (i.e. “Albuterol
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`3 Puffs” vs. “Albuterol 4 Puffs”). One of ordinary skill would recognize that in
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`order for these prompts to be part of an algorithm, they must have been selected or
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`entered for the patient. Stone Rep. ¶ 174, 213.
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`Regarding claim 26, Wahlquist and Goodman teach or suggest customizing
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`a generic script program using personal data associated with the individual. As
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`discussed in §V.B above, Goodman discloses customizing an algorithm using
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`personal data. Wahlquist discloses a generic script program. Wahlquist and
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`Goodman each disclose using personal data as claimed. Stone Rep. ¶¶ 177-78, 228.
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`E. Claim 37 Is Invalid Under Grounds 2 And 3.
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`Claim 37’s elements largely parallel those discussed previously and how
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`those common elements are taught by the prior art will not be addressed again
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`here. As for any new limitations in dispute, one of ordinary skill would recognize
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`16
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`that Goodman’s disclosure renders obvious the limitation of transmitting to the
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`computer an identification code associated with the individual. Goodman
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`discloses remote devices having identification codes specific to a patient (out of
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`potentially millions of patients) and gathering data specific to a patient for
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`transmission to a central system. Much like an email includes source-identifying
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`metadata when its contents are to be associated with the source, transmitting the
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`identification code and patient responses to the central computer is the obvious
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`way to ensure the patient responses are associated with the correct patient at the
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`central computer. Stone Rep. ¶¶ 186-187; 239-242.
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`Goodman in view of Wright also disclose transmitting the customized script
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`program in response to receipt of the identification code in claim 37. The
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`messaging device in Goodman is associated with a specific patient and has an
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`identification code. Ex. 1003 col. 16:47-54. Goodman also discloses sending the
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`customized algorithm to the messaging device. Id. at col. 10:37-60. To ensure the
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`customized program is sent to the correct device of the right patient, one of
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`ordinary skill would use common sense to verify the identity of the recipient
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`device before sending the customized information (i.e. in response to receipt of the
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`identification code). Stone Rep. ¶ 188. Goodman renders this element obvious.
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`17
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`Date: July 15, 2014
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`
`
`Respectfully submitted,
`MERCHANT & GOULD P.C.
`
` /Daniel W. McDonald/
`
`Daniel W. McDonald, Reg. No. 32,044
`Attorneys for Petitioner Cardiocom, LLC
`
`
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`18
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`Certification of Service
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`Pursuant to 37 C.F.R § 42.6(e), the undersigned hereby certifies that a copy of
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`this CORRECTED PETITIONER’S REPLY TO PATENT OWNER’S
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`RESPONSE WITH RESPECT TO U.S. PATENT NO. 7,516,192 has been
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`served on July 15, 2014, by email on counsel of record for the patent owner at the
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`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
`D2DPTABDocket@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: July 15, 2014
`
`
`
`
`
`
`
`
`
`
`
`
`
` /Daniel W. McDonald/
`Daniel W. McDonald (Lead Counsel)
`USPTO Registration No. 32,044
`
`
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`19
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`
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