IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In the Inter Partes Review of:
`
`
`
`U.S. Patent No. 7,870,249
`
`Filed: June 12, 2006
`
`Issued: January 11, 2011
`
`
`
`
`
`
`
`Inventors: Stephen J. Brown
`
`Assignee: Health Hero Network, Inc.
`
`Trial Number: To Be Assigned
`
`Attorney Docket No.:
`
`12771.0106USW1
`
`
`Title: NETWORKED SYSTEM FOR
`INTERACTIVE COMMUNICATION
`AND REMOTE MONITORING OF
`INDIVIDUALS
`__________________________________________________________________
`
`Panel: To Be Assigned
`
`PETITION FOR INTER PARTES REVIEW UNDER 37 C.F.R. § 42.100
`
`
`
`
`
`1
`
`Bosch Ex. 2065
`Cardiocom v. Bosch IPR2013-00468
`
`
`
`In the Inter Partes Review of:
`
`
`
`U.S. Patent No. 7,870,249
`
`Filed: June 12, 2006
`
`Issued: January 11, 2011
`
`
`
`
`
`
`
`Inventors: Stephen J. Brown
`
`Assignee: Health Hero Network, Inc.
`
`Trial Number: To Be Assigned
`
`Attorney Docket No.:
`
`12771.0106USW1
`
`
`Title: NETWORKED SYSTEM FOR
`INTERACTIVE COMMUNICATION
`AND REMOTE MONITORING OF
`INDIVIDUALS
`__________________________________________________________________
`
`Panel: To Be Assigned
`
`PETITION FOR INTER PARTES REVIEW UNDER 37 C.F.R. § 42.100
`
`
`
`
`
`1
`
`Bosch Ex. 2065
`Cardiocom v. Bosch IPR2013-00468
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ............................................................................ 1
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1) ........... 3
`
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) ....................... 3
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2) ................................. 3
`
`C. Lead and Back-Up Counsel under 37 C.F.R. § 42.8(b)(3) ............... 6
`
`D. Service Information Under 37 C.F.R. § 42.8(b)(4) .......................... 6
`
`III.
`
`PAYMENT OF FEES UNDER 37 C.F.R. § 42.103 ........................ 7
`
`IV. REQUIREMENTS FOR INTER PARTES REVIEW UNDER
`37 C.F.R. §§ 42.104 ......................................................................... 7
`
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a) ........................ 7
`
`B. Identification of Challenge Under 37 C.F.R. § 42.104(b) and
`Relief Requested.. ............................................................................ 8
`
`V.
`
`SUMMARY OF THE ’249 patent .................................................. 10
`
`A. Description of the Alleged Invention of the ’249 patent ................ 10
`
`B. Summary of the Prosecution of the ’249 patent ............................. 14
`
`C. Summary of the Prior Post-Grant Challenge .................................. 15
`
`D. Construction of key terms in the ’249 patent ................................. 16
`
`VI.
`
`THERE IS A REASONABLE LIKELIHOOD THAT AT
`LEAST ONE CLAIM OF THE ’249 PATENT IS
`UNPATENTABLE UNDER 37 C.F.R. § 42.104(b)(4) ................ 21
`
`A. Identification of the References as Prior Art .................................. 21
`
`B. Summary of Invalidity Arguments ................................................. 23
`
`VII. DETAILED EXPLANATION UNDER 37 C.F.R. §
`42.104(b) ........................................................................................ 31
`
`2
`
`
`
`A. Ground 1: Claims 1, 2, 6-8, and 12-13 are rendered obvious
`under § 103(a) over Goodman in view of Wright Jr. and
`further in view of Kaufman. ........................ ……………………..32
`
`B. Claim Chart for Ground 1 ............................................................... 38
`
`C. Ground 2: Claims 1, 2, 6-8, and 12-13 are rendered obvious
`under § 103(a) over Goodman in view of Wright Jr. and
`further in view of Wahlquist and Kaufman. .................................. 46
`
`D. Ground 3: Claims 1, 2, 6-8, and 12-13 are rendered obvious
`under § 103(a) over Goodman in view of Wright Jr. and
`further in view of Jeacock and Kaufman. ...................................... 50
`
`E. Ground 4: Claims 1, 2, 6-8, and 12-13 are rendered obvious
`under § 103(a) over Goodman in view of Wright Jr. and
`further in view of Jeacock, Wahlquist, and Kaufman. ................... 52
`
`F. Claim Chart for Grounds 2-4 .......................................................... 53
`
`G. Ground 5: Claim 11 is rendered obvious under § 103(a) over
`Goodman in view of Wright Jr. and further in view of
`Jeacock, Wahlquist, Kaufman, and Bittorf .................................... 58
`
`H. Claim Chart for Ground 5 ............................................................... 59
`
`VIII. CONCLUSION .............................................................................. 60
`
`
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`3
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`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,870,249
`Filed April 10, 2014
`
`Medtronic, Inc., (“Medtronic”), in accordance with 35 U.S.C. § 311 and 37
`
`C.F.R. § 42.100, respectfully requests inter partes review for claims 1, 2, 6-8, and
`
`11-13 (the “challenged claims”) of U.S. Patent No. 7,870,249 (“the ’249 patent”).
`
`(Ex. 1001.)
`
`I.
`
`INTRODUCTION
`
`The challenged claims of the ’249 patent cover previously-known methods
`
`for remote health care monitoring. Remote monitoring of patients has long been
`
`used by health care professionals to reduce the cost of delivering healthcare
`
`services while maintaining quality of care and customized treatment of patients. As
`
`microprocessors and communication technologies became less expensive and more
`
`powerful, remote health care monitoring technologies proliferated.
`
`The claims involve the use of a “script program.” Scripts have been
`
`commonly used since at least the 1970s to automate the execution of tasks that
`
`could otherwise be executed one-by-one by a human operator, including health
`
`monitoring tasks. Ex. 1009, Declaration by Robert T. Stone, Ph. D., regarding U.S.
`
`Patent No. 7,870,249 (“Stone Decl.”) ¶¶18-19. Transmitting scripts to remote
`
`devices to gather and communicate information was also was known prior to the
`
`effective filing date of the ’249 patent. See Stone Decl. ¶¶23, 29, 176-81, 194-95.
`
`The challenged claims further involve the use of a “data merge program.”
`
`Cardiocom (now a wholly owned subsidiary of the Petitioner) sought inter partes
`
`1
`
`4
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,870,249
`Filed April 10, 2014
`
`review of the ’249 patent previously. The Board denied the request based on a
`
`finding that the cited art failed to teach a “data merge program.” This element also
`
`was critical in the original allowance of the challenged claims of the ’249 patent.
`
`The concept, however, is not new. The present Petition cites prior art recognized in
`
`another inter partes review proceeding as disclosing such programs. Other art cited
`
`herein was not cited in the prior petition and discloses a mail merge application
`
`which similarly merges personal health data with other data. The Patent Owner
`
`admitted that mail merge applications are analogous to the claimed data merge
`
`application and were “standard,” i.e. used in prior art systems. The other claimed
`
`elements are also found in the cited, analogous prior art systems.
`
`As shown below, it would have been obvious to a person of ordinary skill in
`
`the art at the time of the alleged invention to combine script programming and
`
`other claimed elements to perform the methods of the ’249 patent. It was known
`
`that script programs addressed the desire to collect information at remote devices
`
`and transmit the information to a central server. See Stone Decl. ¶¶23, 27, 29, 176-
`
`81, 194-95. It was also known to customize such programs to address the
`
`differences among remote devices and patients. Id at ¶¶23-24, 134-38, 191-95,
`
`213-14. Data merge programs were known as an effective tool to automatically and
`
`efficiently customize programs. Id. at ¶¶24-25, 99, 117-19, 134-38, 243-46.
`
`Moreover, the art cited herein, as stated in the Field of the Invention of the ’249
`
`2
`
`5
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,870,249
`Filed April 10, 2014
`
`patent, “relates generally to communication systems for remote monitoring of
`
`individuals . . . .” ’249 Patent 1:39-43. The cited prior art is either in this field, or is
`
`reasonably pertinent to such art. These facts are sufficient in themselves to render
`
`obvious the combination of the cited art. Moreover, as discussed herein, additional
`
`reasons, including teachings within the cited art and predictable results, show that
`
`it would have been obvious to combine the cited art as claimed.
`
`In view of the evidence presented, the Board should institute inter partes
`
`review and cancel all of the challenged claims.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1)
`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)
`Medtronic, Inc., is the real party-in-interest for petitioner.
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`The ’249 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, Inc. against Cardiocom, LLC and Abbott
`
`Diabetes Care in the United States District Court for the Eastern District of Texas,
`
`Case No.: 2:13-cv-349. Cardiocom is a wholly-owned subsidiary of the Petitioner.
`
`That case and another patent infringement lawsuit involving related patents
`
`are described below:
`
`3
`
`6
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,870,249
`Filed April 10, 2014
`
`Jurisdiction
`Eastern District of Texas
`
`Case Number
`2:13-cv-349
`
`Patents 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
`Cardiocom petitioned for inter partes review of the ’249 patent on July 19,
`
`Northern District of
`California
`
`5:12-cv-03864
`
`2013. See Cardiocom, LLC v. Robert Bosch Healthcare Sys., Inc., IPR2013-00460
`
`(the “’460 proceeding”). That Petition was denied on January 16, 2014. ’460
`
`proceeding, Paper 23 (Jan. 16, 2014) (Ex. 1002). That decision is further discussed
`
`in Section V.C.
`
`The following reexamination proceedings of patents related to the ’249
`
`patent are pending with the U.S. Patent and Trademark Office:
`
`Patent No.
`6,368,273
`8,015,025
`6,968,375
`8,140,663
`
`7,941,327
`
`7,252,636
`
`Type of
`Examiner
`Proceeding
`Ex Parte
`Patel, Hetul B.
`Inter Partes Wehner, Cary
`Ellen
`Inter Partes Patel, Hetul B.
`Inter Partes Patel, Hetul B.
`Escalante,
`Ovidio
`Inter Partes Patel, Hetul B.
`
`Inter Partes
`
`Status
`Granted, Pending
`Granted, Pending
`(Merged)
`Granted, Pending
`Granted, Pending
`(Merged)
`Granted, Pending
`Granted, Pending
`(Merged)
`Granted, Pending
`
`Granted, Pending
`
`Pending
`
`Patel, Hetul B.
`Ahmad,
`Salman
`TBD
`
`Reexamination
`Control No.
`90/012,474
`95/002,276
`95/002,172
`95/002,237
`95/002,178
`95/002,221
`95/002,199
`95/002,192
`95/002,234
`90/013,104
`
`7,252,636
`
`Ex Parte
`
`90/013,105
`
`8,140,663
`
`90/013,167
`
`7,769,605
`
`Ex Parte
`Ex Parte
`
`4
`
`7
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,870,249
`Filed April 10, 2014
`
`90/013,175
`
`7,587,469
`
`Ex Parte
`
`TBD
`
`Pending
`
`
`
`
`In addition, U.S. Patent Nos. 7,921,186; 7,840,420; and 7,587,469 are the
`
`subject of inter partes review proceedings, bearing case numbers IPR2013-00431,
`
`IPR2013-00449, and IPR2013-0451, respectively. Trial was instituted in these
`
`proceedings on January 16, 2014. U.S. Patent No. 7,516,192 is the subject of two
`
`Petitions for inter partes review, bearing case numbers IPR2013-00468 (the “’468
`
`proceedings”) and IPR2013-00469. Trial was instituted in these two joined
`
`proceedings on January 28, 2014.
`
`Petitions for inter partes review were originally filed by Cardiocom.
`
`Medtronic acquired Cardiocom after Cardiocom filed the Petition for inter partes
`
`review that resulted in institution of the above proceedings. Cardiocom is now a
`
`wholly-owned subsidiary of Medtronic. Medtronic has been identified as a real
`
`party-in-interest in all of the above proceedings at the U.S. Patent Office.
`
`After the acquisition of Cardiocom, Medtronic filed a Petition for Inter
`
`Partes Review of U.S. Patent No. 7,587,469 on February 14, 2014, as case number
`
`IPR2014-00436. On March 6, 2014, Medtronic filed a Petition for inter partes
`
`review of U.S. Patent No. 7,769,605, as case number IPR2014-00488. Decisions
`
`on those Petitions are pending.
`
`5
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`8
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,870,249
`Filed April 10, 2014
`C. Lead and Back-Up Counsel under 37 C.F.R. § 42.8(b)(3)
`Pursuant to 37 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
`William D. Schultz
`(pro hac vice to be filed)
`wschultz@merchantgould.com
`Postal and Hand-Delivery Address:
`MERCHANT & GOULD, P.C.
`80 South 8th St., Suite 3200
`Minneapolis, MN 55402
`Telephone: (612) 336-4677
`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
`Back-Up Counsel
`Jeffrey Blake (Reg. No. 58,884)
`jblake@merchantgould.com
`Postal and Hand-Delivery Address:
`MERCHANT & GOULD, P.C.
`191 Peachtree Street NE, Suite 4300
`Atlanta, GA 30303
`Telephone: (404) 954-5040
`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.
`
`III. PAYMENT OF FEES UNDER 37 C.F.R. § 42.103
`Payment of $23,000.00 for the fees set forth in 37 C.F.R. § 42.15(a)(1-4)
`
`accompanies this Petition by way of credit card payment. Because eight claims are
`6
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`9
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,870,249
`Filed April 10, 2014
`
`challenged, no excess fees are required. The undersigned further authorizes
`
`payment for any additional fees due in connection with this Petition to be charged
`
`to Deposit Account No. 13-2725.
`
`IV. 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 ’249 patent is satisfied.
`
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`Petitioner hereby certifies that the ’249 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 ’249 patent on the grounds identified herein.
`
`More particularly, Petitioner certifies that: (1) Petitioner is not the owner of the
`
`’249 patent; (2) Petitioner has not filed a civil action challenging the validity of a
`
`claim of the ’249 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 ’249 patent;
`
`(4) the estoppel provisions of 35 U.S.C. § 315(e)(1) do not prohibit this inter
`
`partes review; and (5) the ’249 patent is a patent that is not described in section
`
`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).
`
`7
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`10
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,870,249
`Filed April 10, 2014
`B. Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief
`Requested
`The precise relief requested by Petitioner is that the Board institute inter
`
`partes review and cancel claims 1, 2, 6-8, and 11-13 of the ’249 patent.
`
`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, 2, 6-8, and 11-13 of U.S.
`
`Patent No. 7,870,249.
`
`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 ’249 patent is requested in view of the following
`
`references: (1) U.S. Patent No. 5,827,180 to Goodman (“Goodman”)(Ex. 1003);
`
`(2) U.S. Patent No. 5,704,029 to Wright, Jr. (“Wright Jr.”)(Ex. 1004); (3) U.S.
`
`Patent No. 6,014,630 to Jeacock, et al. (“Jeacock”)(Ex. 1005); (4) European
`
`Publication No. 0 342 859 to Kaufman, et al. (“Kaufman”)(Ex. 1006); (5) U.S.
`
`Patent No. 5,367,667 to Wahlquist et al. (“Wahlquist”)(Ex. 1007); and (6) A.
`
`Bittorf & T.L. Diepgen, Teaching Resources for Dermatology on the WWW – Quiz
`
`System and Dynamic Lecture Scripts using a HTTP-Database Demon (1996)
`
`(“Bittorf”)(Ex. 1008).
`
`The following combinations of the patents listed above as prior art to the
`
`’249 patent under pre-AIA 35 U.S.C. § 103(a), render the claims of the ’249 patent
`
`obvious, as established in Section V(A), below.
`
`8
`
`11
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,870,249
`Filed April 10, 2014
`
`Ground Claim Nos.
`
`1
`
`2
`
`
`3
`
`4
`
`1, 2, 6-8,
`and 12-13
`1, 2, 6-8,
`and 12-13
`
`1, 2, 6-8,
`and 12-13
`1, 2, 6-8,
`and 12-13
`
`Proposed Statutory Rejections
`for the ’249 patent
`Claims 1, 2, 6-8, and 12-13 are obvious under § 103(a)
`over Goodman, Wright Jr., and Kaufman
`Claims 1, 2, 6-8, and 12-13 are obvious under § 103(a)
`over Goodman, Wright Jr., Wahlquist, and Kaufman
`
`Claims 1, 2, 6-8, and 12-13 are obvious under § 103(a)
`over Goodman, Wright Jr., Jeacock, and Kaufman
`Claims 1, 2, 6-8, and 12-13 are obvious under § 103(a)
`over Goodman, Wright Jr., Jeacock, Wahlquist, and
`Kaufman
`Claim 11 is obvious under § 103(a) over Goodman,
`Wright Jr., Wahlquist, Kaufman, and Bittorf
`Claim 11 is obvious under § 103(a) over Goodman,
`Wright Jr., Jeacock, Wahlquist, Kaufman, and Bittorf
`3. How the Challenged Claims Are To Be Construed Under 37 C.F.R. §
`42.104(b)(3)
`
`5
`
`6
`
`11
`
`11
`
`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 this inter partes review
`
`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, 2, 6-8, and 11-13 of the ’249
`
`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 Sections VI and VII below.
`
`9
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`12
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`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,870,249
`Filed April 10, 2014
`5. Supporting Evidence Under 37 C.F.R. § 42.104(b)(5)
`The claim charts of Section VI, below, also contain exhibit numbers that
`
`refer to evidence. An Exhibit List identifying the exhibits is attached. Pursuant to
`
`37 C.F.R. § 42.63(a), Exhibit 1009 is the Declaration by Robert T. Stone, Ph. D.,
`
`regarding U.S. Patent No. 7,870,249 (“Stone Decl.”). The Stone Declaration attests
`
`to, among other issues, the invalidity of claims 1, 2, 6-8, and 11-13 of the ’249
`
`patent, reasons for combination of the references cited in this Petition, and other
`
`reasons supporting the proposed grounds of unpatentability.
`
`6. One of Ordinary Skill in the Art at the Time of Invention
`
`One of ordinary skill in the art at the time of the ’249 patent would have had
`
`a bachelor’s degree in Electrical Engineering or Computer Science, or its
`
`equivalent, at least two years of experience with the design and programming of
`
`patient monitoring systems, and at least one year of experience with the design or
`
`programming of networked systems. Stone Decl. ¶58.
`
`V. SUMMARY OF THE ’249 patent
`A. Description of the Alleged Invention of the ’249 patent
`The application that matured into the ’249 patent, entitled “Networked
`
`System for Interactive Communication and Remote Monitoring of Individuals,”
`
`was filed on June 12, 2006. (Ex. 1001.) The ’249 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 ’249 patent describes a method for
`
`10
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`13
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,870,249
`Filed April 10, 2014
`
`remotely monitoring an individual using a remotely programmable apparatus that
`
`acts in accordance with script programs received from a server. ’249 patent, col.
`
`4:32-39. The monitoring relates to an individual’s health or may be related to “any
`
`type of monitoring and program adherence application.” ’249 patent, col. 4:11-14.
`
`The ’249 patent describes using a server, a workstation, and an apparatus as
`
`part of the monitoring method. ’249 patent, FIG. 2. The server 18 includes a
`
`database for storing script programs designed to be executed on the apparatus. The
`
`script programs may include queries, reminder messages, or other information to
`
`benefit the patient. ’249 patent, col. 4:65-col. 5:14. Preferably, script programs
`
`conform to the standard file format used on UNIX systems, ’249 patent, col. 7:6-
`
`13, but many other scripting languages and specific script commands may be used
`
`to implement the alleged invention. ’249 patent, col. 19:33-41.
`
`The server 18 includes a monitoring application 48 that includes a script
`
`generator 50 and a script assignor 52. ’249 patent, col. 6:36-41. “The script
`
`generator 50 is designed to generate the script programs 40 from script information
`
`entered through the workstation 20.” ’249 patent, col. 6:41-43. The “script assignor
`
`52 is used to assign script programs 40 to the patients.” ’249 patent, col. 8:10-11.
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`The server 18 also “includes a data merge program 55 for merging the data stored
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`in a table 46 with generic script programs 40. The data merge program 55 is
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`designed to retrieve selected data from table 46 and to insert the data into
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`Petition for Inter Partes Review of U.S. Patent No. 7,870,249
`Filed April 10, 2014
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`statements in the generic script programs 40, thus creating custom script programs
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`that are customized to an individual.” ’249 patent, col. 13:6-12. The data merge
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`program “shows how the queries and statements may be customized to each
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`individual by merging personal data with the script programs, much like a standard
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`mail merge application.” ’249 patent, col. 12:59-62. “As each custom script
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`program 41 is generated for an individual, the script assignor 52 assigns the script
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`program 41 to the individual. This is preferably accomplished by creating a pointer
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`to the custom script program and storing the pointer with the individual's unique
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`identification code in the table 46.” ’249 patent, col. 13:63-col. 14:1.
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`The remote apparatus 26 receives the script program from the server 18 and
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`executes the script program to display queries and/or messages to an individual.
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`’249 patent, col. 5:48-62; cols. 9:60-10:4; col. 10:11-25; col. 12:47-57. User
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`responses to the various queries and messages are collected by the remote
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`apparatus 26 and transmitted to the server 18, which can use the data to generate a
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`report. ’249 patent, col. 9:27-39; col. 10:26-67; col. 8:31-33.
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`To communicate with a user, the remote apparatus 26 can include a
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`microphone 88 and a speaker 89. ’249 patent, col. 6:16-19. The user may respond
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`verbally to voice scripts. ’249 patent, col. 20:23-25. The server 18 includes a voice
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`recognition component for interpreting the user's verbal responses and taking
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`further action in response. ’249 patent, col. 20:28-32.
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`Petition for Inter Partes Review of U.S. Patent No. 7,870,249
`Filed April 10, 2014
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`Claim 1 of the ’249 patent contains nine elements, described above, and
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`states as follows (with boldface indicating identification of such element herein):
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`1. A method of remotely managing health care of a person, comprising:
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`providing a remote apparatus to said person, said remote apparatus having
`
`an audio processor and an audio interface;
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`providing a server having (i) a script generator for generating a script
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`program, (ii) a data merge program for merging personal data relating to said
`
`person with said script program, and (iii) a script assignor for generating a
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`respective pointer to associate said script program to said person;
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`collecting biometric information pertaining to said person via the remote
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`apparatus;
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`sending the biometric information pertaining to said person from the
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`remote apparatus to the server via a communication network;
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`generating said script program with the script generator at the server
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`based on input from a health care professional associated with said person;
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`customizing the script program with the data merge program at the server
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`using personal data relating to said person, wherein said script program includes
`
`(a) health information based on the collected biometric information and specific to
`
`said person, (b) a message directed to said person from said health care
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`professional associated with said person, and (c) a program identifier, wherein said
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`Petition for Inter Partes Review of U.S. Patent No. 7,870,249
`Filed April 10, 2014
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`program identifier is used by said server to identify to said server the script
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`program executed by the remote apparatus;
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`assigning said script program to said person at said server with said script
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`assignor based on input from said health care professional associated with said
`
`person;
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`sending the script program to the remote apparatus via the
`
`communication network for interaction with said person; and
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`executing the script program in the remote apparatus, wherein at least a
`
`portion of the script program is used by the audio processor to communicate with
`
`said person.
`
`The other challenged claims depend from claim 1. Claim 2 adds the
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`“synthesizing speech” element. Stone Decl. ¶11. Claim 6 adds the “generating a
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`report” element. Id. Claim 7 adds the “sending queries” element and claim 8 adds
`
`the “delivered…via a speaker” element. Id. Claim 11 adds the “web page” element.
`
`Id. Claim 12 adds the “providing and using biometric monitors coupled to the
`
`remote apparatus” element. Id. Claim 13 adds the “providing a plurality of remote
`
`apparatuses having audio processors” element. Id.
`
`B. Summary of the Prosecution of the ’249 patent
`The application that matured into the ’249 patent was filed on June 12, 2006
`
`as U.S. Patent Application No. 11/451,275 (the “’275 Application”).
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`Petition for Inter Partes Review of U.S. Patent No. 7,870,249
`Filed April 10, 2014
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`After a series of rejections, Applicant amended the claims to add, inter alia,
`
`a requirement that the provided server have a data merge program, and argued that
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`the reference cited did not teach associating a custom script to a particular person.
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`See Ex. 1010, ’275 Application, Amendment dated 8/16/2010. Specifically,
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`Applicant argued, “the presently claimed server having the data merge program,
`
`which customizes a script with personal data, and the script assignor, which
`
`associates a custom script to a particular person, would appear to clearly
`
`distinguish the presently claimed invention from the invention of Iliff, which
`
`appears directed at bringing expert knowledge to the general public.” Ex. 1010,
`
`Amendment dated 8/16/2010. The argument prompted the Examiner to issue a
`
`Notice of Allowance that was silent as to the reasons. Ex. 1011, ’275 Application
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`Notice of Allowance dated 10/13/2010.
`
`C. Summary of the Prior Post-Grant Challenge
`In the Decision Denying Institution of Inter Partes Review in the ’460
`
`proceedings, the Board determined that Cardiocom failed to demonstrate that any
`
`cited reference disclosed a data merge program as recited in the ’249 patent claims.
`
`’460 proceeding, Paper 23 pp. 12-14. Generally, the present petition relies on
`
`different combinations of art that remove any alleged deficiency in the previous
`
`request for inter partes review of the ‘249 claims. For example, in a concurrent
`
`inter partes review proceeding of related U.S. Patent No. 7,516,192, the Board
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`Petition for Inter Partes Review of U.S. Patent No. 7,870,249
`Filed April 10, 2014
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`deemed Wright Jr., to disclose a data merge program. See Ex. 1012, Cardiocom,
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`LLC v. Robert Bosch Healthcare Sys., Inc., IPR2013-00468 (the “’468
`
`proceeding”), Paper 22 at 11-12 (Jan. 28, 2014) (“[W]e construe a ‘data merge
`
`program’ to be a program that combines two or more sets of data into one.
`
`Petitioner has demonstrated sufficiently that Wright Jr. discloses a program in
`
`which a user can create a duplicate form by editing an existing form.”). The
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`present petition, unlike the prior ’249 petition, relies in part on Wright Jr.
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`D. Construction of key terms in the ’249 patent
`Claims subject to inter partes review are given their “broadest reasonable
`
`construction in light of the specification in which [they] appear[].” 37 C.F.R.
`
`§ 42.100(b). Any claim terms not discussed below should be given their broadest
`
`reasonable interpretation in light of the specification. The following terms are
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`construed as follows, for the purposes of this inter partes review only.
`
`The Board should adopt the following definitions because the definitions are
`
`objectively reasonable, and doing adopting them will avoid creating inconsistent
`
`results between this inter partes review and related reviews and reexaminations.
`
`The construction of the terms “data merge program,” “pointer,” and “script
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`assignor” proposed below are consistent with the constructions determined by the
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`Board in the decision denying the prior petition related to the ‘249 patent.. The
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`construction of the term “script program” proposed below is the same as the prior
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`Petition for Inter Partes Review of U.S. Patent No. 7,870,249
`Filed April 10, 2014
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`construction adopted by the Director of the Central Reexamination Unit in the
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`Decision on Petition dated September 6, 2013, in copending Reexamination No.
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`90/012,474. Ex. 1013, p. 12. Should a broader definition of the relevant claim
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`terms than the ones proposed herein be adopted by a court or in a related
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`proceeding, Petitioner reserves the right to contend that such construction should
`
`be deemed the broadest reasonable construction in view of such new facts or
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`circumstances.
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`1. Broadest Reasonable Construction of “Script Program”
`Challenged independent claim 1 and a number of challenged dependent
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`claims recite “a script program.” ’249 patent, col. 20:58; col. 21:67; col. 22:49; col.
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`23:12. One of ordinary skill in the art using the broadest reasonable construction of
`
`the claim term in the context of the ’249 patent, would define “script program” to
`
`be “an interpreted software program (as opposed to compiled), whose program
`
`files comprise commands, written in ASCII text, and which must be read by an
`
`interpreter in order to be executed.” Stone Decl. ¶¶60-66.
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`This definition was adopted by the Director of the Central Reexamination
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`Unit in a Decision on Petition in copending Reexamination No. 90/012,474. Ex.
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`1013, p. 12. The ’249 patent is a great-grandchild application (via a continuation-
`
`in-part and two continuation applications) of the ’273 patent involved in that
`
`reexamination. In reaching that construction, the Director was informed by many
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`Petition for Inter Partes Review of U.S. Patent No. 7,870,249
`Filed April 10, 2014
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`examples of script programs and script program execution provided in the
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`specification of the ’273 patent that are also found in the ’249 patent specification.
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`Stone Decl. at ¶¶60-63 (citing ’273 Patent at col. 5:65-6:4, col. 7:10-19, col. 7:64-
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`8:2, col. 8:10-13, Figs. 6A-6B).
`
`Petitioner notes that the definition of “script program” adopted in the ’273
`
`reexamination departs from the definition adopted by the Board in copending
`
`matters IPR2013-00431, IPR2013-00468, IPR2013-00469. However, the definition
`
`adopted in those inter partes review proceedings did not have the benefit of the
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`Director’s construction, issued after Cardiocom filed the Petitions in those matters.
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`Furthermore, the definition adopted in those inter partes review proceedings is
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`overbroad as it encompasses non-script programs as understood by one of ordinary
`
`skill in the art. See Stone Decl. ¶64-65.
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`Accordingly, Petitioner requests adoption of the Director’s construction,
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`which appropriately does not encompass non-script programs within its scope.
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`Stone Decl. ¶¶60-66. 1
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`
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`2. Broadest Reasonable Construction of “Data Merge Program”
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`One of ordinary skill in the art at the time of alleged invention, using the
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`broadest reasonable construction of the claim term and read in the context of the
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`1 To support its infringement contentions in litigation, Patent Owner implicitly relied on a construction for
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