UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`In the Inter Partes Review of:
`
`Trial Number: To Be Assigned
`
`U.S. Patent No. 7,516,192
`
`
`
`(Claims 1-19)
`
`Filed: July 14, 2006
`
`Issued: April 7, 2009
`
`Attorney Docket No.:
`
`12771.0106USR2
`
`Inventor: Stephen J. Brown
`
`
`
`Assignee: Health Hero Network, Inc.
`
`Panel: To Be Assigned
`
`Title: NETWORKED SYSTEM FOR
`INTERACTIVE
`COMMUNICATION AND
`REMOTE MONITORING OF
`INDIVIDUALS
`__________________________________________________________________
`
`
`
`PETITION FOR INTER PARTES REVIEW UNDER 37 C.F.R. § 42.100
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`In the Inter Partes Review of:
`
`Trial Number: To Be Assigned
`
`U.S. Patent No. 7,516,192
`
`
`
`(Claims 1-19)
`
`Filed: July 14, 2006
`
`Issued: April 7, 2009
`
`Attorney Docket No.:
`
`12771.0106USR2
`
`Inventor: Stephen J. Brown
`
`
`
`Assignee: Health Hero Network, Inc.
`
`Panel: To Be Assigned
`
`Title: NETWORKED SYSTEM FOR
`INTERACTIVE
`COMMUNICATION AND
`REMOTE MONITORING OF
`INDIVIDUALS
`__________________________________________________________________
`
`
`
`PETITION FOR INTER PARTES REVIEW UNDER 37 C.F.R. § 42.100
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1) ............... 1
`
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) ....................... 1
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2) ................................. 1
`
`C. Lead and Back-Up Counsel under 37 C.F.R. § 42.8(b)(3) ............... 3
`
`D. Service Information Under 37 C.F.R. § 42.8(b)(4) .......................... 3
`
`II.
`
`PAYMENT OF FEES UNDER 37 C.F.R. § 42.103 ............................. 3
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37
`
`C.F.R. §§ 42.104 ................................................................................... 4
`
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a) ........................ 4
`
`B.
`
`Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief
`
`Requested ......................................................................................... 5
`
`IV. SUMMARY OF THE ‘192 PATENT ................................................... 7
`
`A. Description of the Alleged Invention of the ‘192 Patent .................. 7
`
`B. Summary of the Prosecution of the ‘192 Patent ............................. 10
`
`C. Construction of key terms in the ‘192 Patent ................................. 12
`
`
`
`ii
`
`
`
`V.
`
`THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST
`
`ONE CLAIM OF THE ‘192 PATENT IS UNPATENTABLE
`
`UNDER 37 C.F.R. § 42.104(b)(4) ...................................................... 14
`
`A. Identification of the References as Prior Art .................................. 14
`
`B. Summary of Invalidity Arguments ................................................. 16
`
`VI. DETAILED EXPLANATION UNDER 37 C.F.R. §§ 42.104(b) ....... 18
`
`A. Ground 1 – Each of claims 1-3, 6-7, 11-12, and 17-19 of the ‘192
`
`Patent is Anticipated by Wright Jr. ................................................ 18
`
`B. Ground 2 – Claims 1-19 of the ‘192 Patent are Obvious over
`
`Goodman in Light of Wright Jr. ..................................................... 21
`
`C. Ground 3 – Claims 1-19 of the ‘192 Patent are Obvious over
`
`Goodman in Light of Wahlquist .................................................... 29
`
`D. Claim Chart for Grounds 1-3 .......................................................... 34
`
`VII. CONCLUSION ................................................................................... 55
`
`
`
`
`
`
`
`iii
`
`
`
`Petition for Inter Partes Review of Claims 1-19 of U.S. Patent No. 7,516,192
`Filed on July 24, 2013
`
`
`
`On behalf of Cardiocom, LLC (“Cardiocom”) and in accordance with 35
`
`U.S.C. § 311 and 37 C.F.R. § 42.100, inter partes review is respectfully requested
`
`for claims 1-19 of U.S. Patent No. 7,516,192 (“the ‘192 Patent”).
`
`I. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1)
`As set forth below and pursuant to 37 C.F.R. § 42.8(a)(1), the following
`
`mandatory notices are provided as part of this Petition.
`
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`Cardiocom, LLC is the real party-in-interest for petitioner.
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`The ‘192 Patent is presently the subject of a patent infringement lawsuit
`
`brought by the successor-in-interest to purported assignee Health Hero Network,
`
`Inc., Robert Bosch Healthcare Systems against Cardiocom, LLC and Abbott
`
`Diabetes Care in the United States District Court for the Eastern District of Texas,
`
`Case No. 2:13-cv-00349.
`
`Inclusive, there are two patent infringement lawsuits involving related
`
`patents:
`
`Jurisdiction
`Eastern District of Texas
`
`Case Number
`2:13-cv-00349
`
`Northern District of
`California
`
`CV12-03864
`
`
`
`1
`
`Patent in suit
`7,516,192; 7,587,469;
`7,769,605; 7,840,420;
`7,870,249; 7,921,186
`6,368,273; 6,968,375;
`7,252,636; 7,941,327;
`8,015,025; 8,140,663
`
`
`
`Petition for Inter Partes Review of Claims 1-19 of U.S. Patent No. 7,516,192
`Filed on July 24, 2013
`
`
`
`The following concurrent and pending reexamination proceedings of patents
`
`related to the ‘192 Patent are pending with the U.S. Patent and Trademark Office:
`
`Reexamination
`Control No.
`90/012,474
`95/002,276
`95/002,172
`
`Patent No.
`
`6,368,273
`
`8,015,025
`
`95/002,237
`
`6,968,375
`
`95/002,178
`
`8,140,663
`
`95/002,221
`
`8,140,663
`
`95/002,199
`
`7,941,327
`
`95/002,192
`
`7,252,636
`
`95/002,234
`
`7,252,636
`
`Examiner
`
`Status
`
`Pending (Merged)
`
`Pending
`
`Type of
`Proceeding
`Ex Parte
`Patel, Hetul B. Pending
`Inter Partes Wehner, Cary
`Ellen
`Inter Partes Desai, Rachna
`Singh.
`Inter Partes Patel, Hetul B. Pending
`Pending (Expected
`to Merge with
`95/002,178
`Proceeding)
`
`Inter Partes Patel, Hetul B.
`
`Pending
`
`Inter Partes Escalante,
`Ovidio
`Inter Partes Patel, Hetul B. Pending
`Pending (Expected
`to Merge with
`95/002,192
`Proceeding)
`
`Inter Partes Patel, Hetul B.
`
`In addition, U.S. Patents Nos. 7,921,186; 7,769,605; 7,567,469; 7,840,420;
`
`and 7,870,249 are the subject of Petitions for Inter Partes Review, bearing control
`
`numbers IPR2013-00431, IPR2013-00439, IPR2013-00451, IPR2013-0449, and
`
`IPR2013-00460, respectively.
`
`2
`
`
`
`Petition for Inter Partes Review of Claims 1-19 of U.S. Patent No. 7,516,192
`Filed on July 24, 2013
`
`
`
`Furthermore, the ‘192 patent is the subject of a Petition for Inter Partes
`
`Review on remaining claims 20-37, filed the same day as the present petition, and
`
`asserting common art with the present Petition.
`
`C. Lead and Back-Up Counsel under 37 C.F.R. § 42.8(b)(3)
`Pursuant to 27 C.F.R. §§ 42.8(b)(3) and 42.10(a), Petitioner provides the
`
`following designation of counsel.
`
`Lead Counsel
`Daniel W. McDonald (Reg. No. 32,044)
`dmcdonald@merchantgould.com
`Postal and Hand-Delivery Address:
`MERCHANT & GOULD, P.C.
`80 South 8th St., Suite 3200
`Minneapolis, MN 55402
`Telephone: (612) 336-4637
`Fax: (612) 332-9081
`
`Back-Up Counsel
`Andrew J. Lagatta (Reg. No. 62,529)
`alagatta@merchantgould.com
`Postal and Hand-Delivery Address:
`MERCHANT & GOULD, P.C.
`80 South 8th St., Suite 3200
`Minneapolis, MN 55402
`Telephone: (612) 371-5383
`Fax: (612) 332-9081
`
`
`Pursuant to 37 C.F.R. § 42.10(b), a Power of Attorney accompanies this
`
`Petition.
`
`D. Service Information Under 37 C.F.R. § 42.8(b)(4)
`Service information for lead and back-up counsel is provided in the
`
`designation of lead and back-up counsel, above.
`
`II. PAYMENT OF FEES UNDER 37 C.F.R. § 42.103
`Payment of $24,600 for the fees set forth in 37 C.F.R. § 42.15(a)(1-4) for
`
`this Petition for Inter Partes Review accompanies this request by way of credit
`
`3
`
`
`
`Petition for Inter Partes Review of Claims 1-19 of U.S. Patent No. 7,516,192
`Filed on July 24, 2013
`
`
`
`card payment. Nineteen claims are challenged, so excess claim fees in the amount
`
`of $1600.00 (under 37 C.F.R. § 42.15(a)(4)) are included. The undersigned further
`
`authorizes payment for any additional fees that might be due in connection with
`
`this Petition to be charged to Deposit Account No. 13-2725.
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§§ 42.104
`
`As set forth below and pursuant to 37 C.F.R. §§ 42.104, each requirement
`
`for inter partes review of the ‘192 Patent is satisfied.
`
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`Petitioner hereby certifies that the ‘192 Patent is available for inter partes
`
`review and that the Petitioner is not barred or estopped from requesting inter partes
`
`review challenging the claims of the ‘192 Patent on the ground identified herein.
`
`More particularly, Petitioner certifies that: (1) Petitioner is not the owner of the
`
`‘192 Patent; (2) Petitioner has not filed a civil action challenging the validity of a
`
`claim of the ‘192 Patent; (3) this Petition is filed less than one year after the date
`
`on which the Petitioner, the Petitioner’s real party-in-interest, or a privy of the
`
`Petitioner was served with a complaint alleging infringement of the ‘192 Patent;
`
`(4) the estoppel provisions of 35 U.S.C. § 315(e)(1) do not prohibit this inter
`
`partes review; and (5) the ‘192 Patent is a patent that is not described in section
`
`4
`
`
`
`Petition for Inter Partes Review of Claims 1-19 of U.S. Patent No. 7,516,192
`Filed on July 24, 2013
`
`
`3(n)(1) of the Leahy-Smith America Invents Act and so is available for this inter
`
`partes review, per 37 C.F.R. § 42.102(a)(2).
`
`B. Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief
`Requested
`
`The precise relief requested by Petitioner is that the Patent Trial and Appeal
`
`Board find claims 1-19 of the ‘192 Patent unpatentable.
`
`1. Claims for Which Inter Partes review is Requested Under 37 C.F.R.
`§ 42.104(b)(1)
`Petitioner requests inter partes review of claims 1-19 of U.S. Patent No.
`
`7,516,192.
`
`2. The Specific Art and Statutory Ground(s) on Which the Challenge is
`Based Under 37 C.F.R. § 42.104(b)(2)
`Inter partes review of the ‘192 Patent is requested in view of the following
`
`references: (1) U.S. Patent No. 5,704,029 to Gerald V. Wright, Jr. (“Wright Jr.”)
`
`(Ex. 1002); (2) U.S. Patent No. 5,827,180 to David F. Goodman (“Goodman”) (Ex.
`
`1003); and (3) U.S. Patent No. 5,367,667 to Wahlquist et al. (“Wahlquist”) (Ex.
`
`1004).
`
`The combination of the patents listed above is prior art to the ‘192 Patent
`
`under pre-AIA 35 U.S.C. § 103(a), as established in Section V(A), below.
`
`Claim Nos.
`
`1-3, 6-7, 11-
`12, 17-19
`
`Proposed Statutory Rejections
`for the ‘192 Patent
`Claims 1-3, 6-7, 11-12, 17-19 are rendered obvious under § 103(a)
`over Wright Jr.
`
`5
`
`
`
`Petition for Inter Partes Review of Claims 1-19 of U.S. Patent No. 7,516,192
`Filed on July 24, 2013
`
`
`
`1-19
`
`1-19
`
`Claims 1-19 are obvious under § 103(a) over Goodman in view of
`Wright Jr.
`Claims 1-19 are obvious under § 103(a) over Goodman in view of
`Wahlquist
`
`3. How the Challenged Claims Are To Be Construed Under 37 C.F.R. §
`42.104(b)(3)
`A claim subject to inter partes review receives the “broadest reasonable
`
`construction in light of the specification of the patent in which it appears.” 42
`
`C.F.R. § 42.100(b). Petitioner submits, for the purposes of the IPR only, the
`
`constructions given in Section IV, below.
`
`4. How the Construed Claims are Unpatentable Under 37 C.F.R. §
`42.104(b)(4)
`
`An explanation of how construed claims 1-19 of the ‘192 Patent are
`
`unpatentable under the statutory grounds identified above, including the
`
`identification of where each element of the claim is found in the prior art patents or
`
`printed publications, is provided in Section VI, below, in the form of claim charts.
`
`5. Supporting Evidence Under 37 C.F.R. § 42.104(b)(5)
`The exhibit numbers of the supporting evidence relied upon to support the
`
`challenge and the relevance of the evidence to the challenge raised, including
`
`identification of specific portions of the evidence that support the challenge, are
`
`provided in Section VI, below, in the form of claim charts. An Appendix of
`
`Exhibits identifying the exhibits is also attached. Pursuant to 37 C.F.R. § 42.63(a),
`
`6
`
`
`
`Petition for Inter Partes Review of Claims 1-19 of U.S. Patent No. 7,516,192
`Filed on July 24, 2013
`
`
`
`Exhibit 1008 is a Declaration by Robert T. Stone, Ph.D. (“Stone Decl.”), regarding
`
`U.S. Patent No. 7,516,192 under 37 C.F.R. § 42.63(a), attesting to, among other
`
`issues, the invalidity of claims 1-371 of the ‘192 Patent, reasons for
`
`intercombination of the references cited in this Petition, and supporting bases for
`
`the proposed grounds of unpatentability.
`
`IV. SUMMARY OF THE ‘192 PATENT
`A. Description of the Alleged Invention of the ‘192 Patent
`The ‘192 Patent, entitled “Networked System for Interactive Communication
`
`and Remote Monitoring of Individuals,” was filed on July 14, 2006. The ‘192
`
`Patent claims priority through a series of applications to U.S. Provisional Patent
`
`Application Nos. 60/041,751 and 60/041,746, both filed on March 28, 1997.
`
`The ‘192 Patent describes a system for remote monitoring. Ex. 1001, ‘192
`
`Patent, col. 4:6-10. The monitoring may be of an individual, for example, to
`
`collect data relating to the individual’s health status, or can be “for any type of
`
`remote monitoring and program adherence application.” ‘192 Patent, col. 4:11-14.
`
`Such applications include displaying messages and/or queries and gathering data
`
`from remotely located devices. ‘192 Patent, col. 4:31-44; col. 12:46-57; col. 20:8-
`
`34.
`
`
`1 A separate petition is being filed regarding claims 20-37 of the ‘192 patent, supported by the same Stone
`Declaration.
`
`7
`
`
`
`Petition for Inter Partes Review of Claims 1-19 of U.S. Patent No. 7,516,192
`Filed on July 24, 2013
`
`
`
`Communication with a monitored patient occurs on a networked system 16
`
`that includes a server 18, a workstation 20, and a communication network 24,
`
`preferably the internet. ‘192 Patent, Fig. 1; col. 4:19-23. The networked system
`
`16 also includes at least one remote apparatus 26 that is in communication with the
`
`server 18 through the communication network 24. ‘192 Patent, col. 4:31-44.
`
`
`
`The server 18 includes a monitoring application 48 that is a controlling
`
`software application executed by the server 18 to perform various functions. ‘192
`
`Patent, col. 6:34-37. For example, the monitoring application 48 includes a script
`
`generator 50 and a script assignor 52. ‘192 Patent, col. 6:37-38. The script
`
`generator 50 generates the script programs 40 from script information entered
`
`through the workstation 20. ‘192 Patent, col. 6:39-41. The script assignor 52 is
`
`used to assign script programs 40 to the patients, e.g., by creating a pointer to the
`
`script program and storing the pointer with a unique identification code for the
`
`8
`
`
`
`Petition for Inter Partes Review of Claims 1-19 of U.S. Patent No. 7,516,192
`Filed on July 24, 2013
`
`
`
`patient. ‘192 Patent, col. 8:8-11; col. 13:62-67. The server 18 further includes a
`
`data merge program 55, similar to a standard mail merge application, for merging
`
`personal data with a generic script program to create a customized script program
`
`for an individual. ‘192 Patent, cols. 12:58-13:14.
`
`Thus, in the context of the claims of the ‘192 Patent, a “script generator,”
`
`“script assignment unit,” and “data merge program” are software modules that
`
`perform various functions, such as “generating,” “assigning,” and “merging.” ‘192
`
`Patent, Fig. 16; col. 6:37-41; col. 8:8-11; col. 13:6-11; Stone Decl. ¶¶25-27.
`
`
`
`In general, the specification illustrates a script program as user-recognizable
`
`text that can define functions performed by a device, such as a computing system.
`
`‘192 Patent, Table 1; FIGS. 6A-6B. For example, script programs “are executed
`
`by each apparatus 26, to communicate queries and messages to a patient, receive
`
`responses 42 to the queries, collect monitoring device measurements 44, and to
`
`transmit responses 42 and measurements 44 to the server 18.” ‘192 Patent, cols.
`9
`
`
`
`Petition for Inter Partes Review of Claims 1-19 of U.S. Patent No. 7,516,192
`Filed on July 24, 2013
`
`
`
`4:64-5:1; col. 5:46-60; cols. 9:59-10:3; col. 10:10-25; col. 12:46-57. Script
`
`programs may conform to the standard file format used on UNIX systems (‘192
`
`Patent, col. 7:1-10), but many other scripting languages and specific script
`
`commands may be used to implement the alleged invention. ‘192 Patent, col.
`
`7:53-55; col. 19:33-41.
`
`In some cases, the script generator 50 generates “generic” script programs
`
`applicable to patients with different health conditions, e.g., a generic script
`
`program for diabetes patients, a generic script program for asthma patients, etc.
`
`‘192 Patent, cols. 8:64-9:2; col. 13:40-43.
`
`A generic script program may be assigned to a particular individual and a
`
`“customized” script program may be generated by using the generic script program
`
`as a template. ‘192 Patent, col. 13:45-55; Fig. 7. For example, queries and
`
`statements may be customized to the individual by merging personal data with the
`
`generic script program, e.g., statements may be customized with the individual’s
`
`name, physician name, test results, appointment dates, or other desired data, etc.
`
`‘192 Patent, cols. 12:58-13:14; Figs. 17-18.
`
`B. Summary of the Prosecution of the ‘192 Patent
`
`The patent application that issued as the ‘192 Patent was filed on July 14,
`
`2006, as U.S. Patent Application Serial No. 11/487,104 (“the ‘104 Application”).
`
`10
`
`
`
`Petition for Inter Partes Review of Claims 1-19 of U.S. Patent No. 7,516,192
`Filed on July 24, 2013
`
`
`
`In a first Office Action, claims 1-37 were rejected based on obviousness-
`
`type double patenting over claims 1-50 of U.S. Patent No. 5,997,476; claims 1-67
`
`of U.S. Patent No. 6,968,375; claims 1-10 of U.S. Patent No. 6,368,273; claims 1-
`
`44 of U.S. Patent No. 7,320,030; and claims 1-36 of U.S. Patent No. 7,310,668.
`
`Ex. 1005, Office Action dated July 18, 2008, p. 3.
`
`The Applicant subsequently filed a Terminal Disclaimer, dated October 9,
`
`2008, disclaiming the terminal part of the statutory term of any patent granted on
`
`the ‘104 Application that would extend beyond the expiration date of the full
`
`statutory term, as shortened by any terminal disclaimer, of prior United States
`
`Patent Nos. 5,997,476; 6,968,375; 6,368,273; 7,320,030; and 7,310,668. Ex. 1006,
`
`Terminal Disclaimer dated October 9, 2008, pp. 1-2.
`
`A Notice of Allowance issued January 28, 2009, allowing all original
`
`claims, i.e., claims 1-37. The Examiner identified the following Statement of
`
`Reasons for Allowance:
`
`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
`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 Allowance dated January 28, 2009, p. 2.
`
`11
`
`
`
`Petition for Inter Partes Review of Claims 1-19 of U.S. Patent No. 7,516,192
`Filed on July 24, 2013
`
`
`C. Construction of key terms in the ‘192 Patent
`
`Claims subject to inter partes review are given their “broadest reasonable
`
`construction in light of the specification in which it appears.” 37 C.F.R.
`
`§ 42.100(b). A claim term which lacks a definition in the specification is also
`
`given a broad interpretation. In re ICON Health & Fitness, Inc., 496 F.3d 1374,
`
`1379 (Fed. Cir. 2007). Any claim terms not discussed below should be given their
`
`broadest reasonable interpretation in light of the specification. The following terms
`
`are construed as following, for the purposes of this inter partes review only.
`
`1. Broadest Reasonable Construction of “Script program”
`
`One of ordinary skill in the art, using the broadest reasonable construction of
`
`the claim term and read in the context of the patent, would define “script program”
`
`as “a program including at least one text command and can be interpreted and
`
`performed by a device, such as a computer.” Stone Decl. ¶25. In computer
`
`programming a script program, or script, is defined as “a type of program that
`
`consists of a set of instructions to an application or a utility program. A script
`
`usually consists of instructions expressed using the application’s or utility’s rules
`
`and syntax, combined with simple control structures such as loops and if/then
`
`expressions.” Ex. 1009, Microsoft Press Computer Dictionary, 422-23 (Microsoft
`
`Press 1997, 3d ed.); Stone Decl. ¶25. In the context of the ‘192 Patent, a script
`
`program is illustrated as user-recognizable text that can define functions performed
`
`12
`
`
`
`Petition for Inter Partes Review of Claims 1-19 of U.S. Patent No. 7,516,192
`Filed on July 24, 2013
`
`
`
`by a device, such as a computing system. ‘192 Patent, Table 1; Figs. 6A-6B; Stone
`
`Decl. ¶25. Furthermore, as noted in the ‘192 Patent, many different scripting
`
`languages could be used to implement the purported invention. ‘192 Patent, col.
`
`7:53-55; col. 19:33-41.
`
` 2. Broadest Reasonable Construction of “Data merge program”
`
` One of ordinary skill in the art, using the broadest reasonable construction
`
`of the claim term and read in the context of the patent, would define “data merge
`
`program” as “a software module that combines two or more sets of items into one.”
`
`Stone Decl. ¶26. In computer science, a “merge” corresponds to “combin[ing] two
`
`or more sets of items into one, usually in a specified sequence.” Id; Ex. 1010, IEEE
`
`Standard Dictionary of Electrical and Electronics Terms, 583 (The Institute of
`
`Electrical and Electronics Engineering 1988, 4th ed.). Intrinsic support for that
`
`definition includes Brown’s disclosure that a data merge program is for “merging
`
`the data stored in table 46 with generic programs 40.” ‘192 Patent, col. 13:7-9;
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`Stone Decl. ¶26.
`
`3. Broadest Reasonable Construction of “Script assignment unit”
`
`One of ordinary skill in the art, using the broadest reasonable construction of
`
`the claim term and read in the context of the patent, would define a “script
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`assignment unit” as “a software module that associates a script program with an
`
`individual.” Stone Decl. ¶27. Intrinsic support for this definition includes
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`13
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`Petition for Inter Partes Review of Claims 1-19 of U.S. Patent No. 7,516,192
`Filed on July 24, 2013
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`
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`Brown’s disclosure that a “script assignor” assigns a script program to a patient,
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`e.g., by creating a pointer to the script program and storing or associating the
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`pointer with a unique identification code for the patient. Id; ‘192 Patent, col.
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`13:62-67.
`
`4. Broadest Reasonable Construction of “Pointer”
`
` One of ordinary skill in the art, using the broadest reasonable construction
`
`of the claim term and read in the context of the patent, would define “pointer” as
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`“an identifier that indicates the location of an item of data.” Stone Decl. ¶28. The
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`specification does not expressly define a “pointer,” but uses the term with respect
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`to storing and retrieving a script program. See, e.g., ‘192 Patent, col. 9:40-47; col.
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`13:62-67. In computer science, a pointer is an “identifier that indicates the location
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`of an item of data.” IEEE Standard Dictionary of Electrical and Electronics Terms,
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`703.
`
`V. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE ‘192 PATENT IS UNPATENTABLE UNDER 37
`C.F.R. § 42.104(b)(4)
`A. Identification of the References as Prior Art
`U.S. Patent No. 5,704,029 to Gerald V. Wright, Jr. (“Wright Jr.”) (Ex. 1002)
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`was filed on May 23, 1994, and issued on December 30, 1997. The filing date of
`
`Wright Jr. predates by almost three years the earliest claimed effective filing date
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`14
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`
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`Petition for Inter Partes Review of Claims 1-19 of U.S. Patent No. 7,516,192
`Filed on July 24, 2013
`
`
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`of the ‘192 patent, i.e., March 28, 1997. Wright Jr. thereby qualifies as prior art
`
`under pre-AIA 35 U.S.C. § 102(e).
`
`U.S. Patent No. 5,827,180 to David F. Goodman (“Goodman”) (Ex. 1003)
`
`was filed November 26, 1997, and claims priority as a continuation of U.S.
`
`Application Ser. No. 08/518,783, filed August 24, 1995, which is a continuation-
`
`in-part of U.S. Patent Application Ser. No. 08/334,936, filed November 7, 1994.
`
`The priority filing date of Goodman, which is at least as early as August 24, 1995,
`
`predates by more than one and one-half years the earliest claimed effective filing
`
`date of the ‘192 Patent, i.e., March 28, 1997. Goodman thereby qualifies as prior
`
`art under pre-AIA 35 U.S.C. § 102(e).
`
`U.S. Patent No. 5,367,667 to Wahlquist et al. (“Wahlquist”) (Ex. 1004) was
`
`filed on September 25, 1992, and issued on November 22, 1994. The issuance of
`
`Wahlquist predates by almost two and one-half years the earliest claimed effective
`
`filing date of the ‘192 Patent. Wahlquist thereby qualifies as prior art under pre-
`
`AIA 35 U.S.C. § 102(b).
`
` Wright Jr. and Wahlquist were not of record during prosecution of the ‘192
`
`Patent. Goodman was cited by the Applicant in an Information Disclosure
`
`Statement filed on August 8, 2006. Goodman, however, was not relied upon by
`
`the Examiner in any rejection of the claims.
`
`15
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`
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`Petition for Inter Partes Review of Claims 1-19 of U.S. Patent No. 7,516,192
`Filed on July 24, 2013
`
`
`B. Summary of Invalidity Arguments
`Telehealth systems were developed in the 1990s that allowed for remote
`
`patient interaction, information gathering, and treatment. Stone Decl. ¶16-17, 21.
`
`Concurrently, customizing script programs and sending those programs to
`
`individuals were also developed in the 1980s and 1990s. Stone Decl. ¶ ¶19-20.
`
`The ‘192 Patent represents one of many attempts to merge remote patient
`
`interaction with customized script programs. Stone Decl. ¶22. It was not the first
`
`such attempt, and the status of the art at the time of the purported invention renders
`
`the claims of the ‘192 Patent obvious. Id.
`
`As outlined in the claim charts below, Goodman discloses a remote
`
`monitoring system that enables communication between patients and health care
`
`professionals. Stone Decl. ¶¶55-56. More specifically, Goodman provides
`
`algorithms adapted for specific patients that are encoded and executed to
`
`implement personalized health monitoring and communication between remote
`
`computing devices over a network. Stone Decl. ¶¶56, 61, 64.
`
`In general, Wright Jr. and Wahlquist provide teachings for sending
`
`customized script programs to remote computing devices. Stone Decl. ¶¶29, 31-
`
`32, 36, 129-130, 140. Wright Jr. relates to systems using portable computers for
`
`remote data collecting and recording, including collecting personal data for
`
`automated development of a personality profile. Stone Decl. ¶¶32, 41, 43-44, 48-
`
`16
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`
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`Petition for Inter Partes Review of Claims 1-19 of U.S. Patent No. 7,516,192
`Filed on July 24, 2013
`
`
`
`49. Wright Jr. discloses executable forms including display commands that present
`
`remote users with queries to respond to. Stone Decl. ¶¶37-38. Wahlquist teaches
`
`sending customized script programs to run diagnostics on remote devices, and
`
`Wahlquist further states that its teaching is applicable to other remote hardware
`
`situations. Wahlquist, col. 10:40-47; Stone Decl. ¶¶129, 141.
`
`In sum, the use of script programs for remote patient monitoring, as recited
`
`by the claims of the ‘192 Patent, does not represent a significant advance over the
`
`state of the art, as described in Goodman. In fact, the recitation of transmitting
`
`customized script programs via a network to control a remote apparatus provided
`
`in the ‘192 Patent was well known at the time of the purported invention, as is
`
`evident by the teachings of Wright Jr. Moreover, assigning a customized script
`
`program to an individual was also well known, as provided by Wahlquist. As
`
`such, the claims of the ‘192 Patent represent an obvious combination of the health
`
`monitoring system of Goodman with the customized script programs of Wright
`
`Jr.’s remote data collection system or Wahlquist’s remote device diagnostic
`
`system. See generally, Stone Decl. ¶¶78-81, 83-87, 90, 95-106, 124, 135-142,144,
`
`146, 151, 156-169.
`
`17
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`
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`Petition for Inter Partes Review of Claims 1-19 of U.S. Patent No. 7,516,192
`Filed on July 24, 2013
`
`
`VI. DETAILED EXPLANATION UNDER 37 C.F.R. §§ 42.104(b)
`A. Ground 1 – Each of claims 1-3, 6-7, 11-12, and 17-19 of the ‘192 Patent
`is Anticipated by Wright Jr.
`
`Under the broadest reasonable constructions, above, Wright Jr. explicitly or
`
`inherently discloses all elements of each of claims 1-3, 6-7, 11-12, and 17-19 of the
`
`‘192 Patent. See Stone Decl. ¶¶29-54.
`
`In general, Wright Jr. discloses a system comprising a personal computer
`
`(PC) connected over a network to one or more remote devices. Stone Decl. ¶¶29,
`
`32, 41; Wright Jr., Fig. 1; col. 3:28-40; col. 9:4-6. Wright Jr. provides for creating
`
`an executable form driven by field scripts to collect data from a remote user. Stone
`
`Decl. ¶ ¶29, 36-39; Wright Jr., col. 9:11-26; col. 13:39-53. If an existing form
`
`needs to be revised or customized, a forms designer customizes it using a field
`
`editor. Stone Decl. ¶¶34-35; Wright Jr., col. 6: 33-40; col. 9:51-60.
`
`Claim 1 and dependent claims 2-3, 6, and 17-19, recite a “script program.”
`
`Wright Jr. teaches creating an executable form driven by field scripts, which
`
`include text commands (Wright Jr., Table 3), for collecting data, e.g., survey data,
`
`from a user. Wright Jr., col. 3:28-40; col. 9:11-26; col. 13:39-53; Stone Decl.
`
`¶¶36-38. Accordingly, Wright Jr. teaches a program including at least one text
`
`command that can be interpreted and performed by a device, such as a computer.
`
`Wright Jr. further teaches that a customized form (i.e., customized script program)
`
`may be generated by editing fields of an existing form (i.e., a generic script
`18
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`Petition for Inter Partes Review of Claims 1-19 of U.S. Patent No. 7,516,192
`Filed on July 24, 2013
`
`
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`program). Stone Decl. ¶¶30, 34-35; Wright Jr., col. 6:33-40; col. 8:32-38; col.
`
`9:51-60; col. 27:56-62.
`
`Claims 1, 18 and 19 recite a “data merge program.” Wright Jr. teaches a
`
`field editor that obtains data based on user selections and inserts the data into fields
`
`of an existing form to generate a customized form. Stone Decl. ¶¶34-35, 51;
`
`Wright Jr., col. 6:33-40; col. 9:51-60; col. 27:56-62. Accordingly, Wright Jr.
`
`teaches a software module that combines two or more sets of data into one.
`
`Claim 2 recites a “script assignment unit” configured to assign at least one
`
`customized script program to a user. Wright Jr. teaches that a new form (i.e.,
`
`customized script program) is identified with a new form number and that the new
`
`form is filled out by the user of a remote device. Stone Decl. ¶¶34, 36-38, 42-43;
`
`Wright Jr., col. 3:28-40; col. 8:32-38. Wright Jr. teaches use of one or more
`
`databases configured for storing the forms, and use of such stored forms to create
`
`new forms. Stone Decl. ¶42, 46; Wright Jr., col. 8:32-38. Wright Jr. also
`
`contemplates using the system to automate a personality profile based on a line of
`
`questioning. Stone Decl. ¶¶43-44; Wright Jr., col. 28:40-44. One of ordinary skill
`
`in the art would understand that in order to automate a user’s personality profile, it
`
`would be necessary to associate a customized form with the user to collect data
`
`regarding the line of questioning. Stone Decl. ¶43-44.
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`19
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`Petition for Inter Partes Review of Claims 1-19 of U.S. Patent No. 7,516,192
`Filed on July 24, 2013
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`
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`Claim 2 recites storing “a list of the individuals.” Wright Jr. discloses
`
`communication with a plurality of users (Wright Jr., col. 3:28-40; col. 9:4-9) and
`
`also contemplates automating a personality profile based on a line of questioning.
`
`Wright Jr., col. 28:40-44. One of ordinary skill in the art would understand that in
`
`order to automate personality profiles for a plurality of users, it would be necessary
`
`to store a list of the users for whom personality profiles were automated. Stone
`
`Decl. ¶44.
`
`Claim 2 recites storing a “respective pointer to the at least one customized
`
`script program assigned to the individual.” Wright Jr. provides that when a device
`
`sends a form data array containing the user responses to the computer, the first
`
`item in the form data array is a form identification for identifying the form that the
`
`data is associated with. Wright Jr., col. 3:34-40. Accordingly, Wright Jr. teaches
`
`an identifier (i.e., a form identification) that indicates the location of an item of
`
`data (i.e., a form). One of ordinary skill in the art would understand that in order to
`
`automate personality profiles for a plurality of users, it would be nece
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