IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In the Inter Partes Review of:
`US. Patent No. 7,921,186
`
`Filed: Feb. 14, 2007
`Issued: Apr. 5, 2011
`
`Inventor: Stephen J. Brown
`
`Trial Number: To Be Assigned
`
`Attorney Docket No.:
`12771 .0106USR5
`
`Assignee: Health Hero Network, Inc.
`
`Title: Networked System For Interactive
`Communication And Remote Monitoring
`Of Individuals
`
`
`DECLARATION BY ROBERT T. STONE, PH.D. REGARDING U.S.
`PATENT NO. 7,921,186 UNDER 37 C.F.R. § 42.63(a)
`
`
`1, Robert T. Stone, Ph.D., do declare and state as follows:
`
`Background and Experience
`
`1.
`
`I received my BS.
`
`in Electrical Engineering from Virginia
`
`Polytechnic Institute and State University in 1977, my MS. in Electrical
`
`Engineering from Virginia Polytechnic Institute and State University in 1979,
`
`and my Ph.D.
`
`in Electrical Engineering from Stanford University in
`
`1981. My studies focused on electronics and signal processing.
`
`2.
`
`I have over thirty years of academic and industry experience in
`
`the field of medical electronics systems and instrumentation.
`
`I have
`
`Bosch Ex. 2067Bosch Ex. 2022
`
`Cardiocom v. Bosch IPR2013-00468Cardiocom v. Bosch IPR2013-00451
`
`Cardiocom Ex. 1007
`
`
`
`In the Inter Partes Review of:
`US. Patent No. 7,921,186
`
`Filed: Feb. 14, 2007
`Issued: Apr. 5, 2011
`
`Inventor: Stephen J. Brown
`
`Trial Number: To Be Assigned
`
`Attorney Docket No.:
`12771 .0106USR5
`
`Assignee: Health Hero Network, Inc.
`
`Title: Networked System For Interactive
`Communication And Remote Monitoring
`Of Individuals
`
`
`DECLARATION BY ROBERT T. STONE, PH.D. REGARDING U.S.
`PATENT NO. 7,921,186 UNDER 37 C.F.R. § 42.63(a)
`
`
`1, Robert T. Stone, Ph.D., do declare and state as follows:
`
`Background and Experience
`
`1.
`
`I received my BS.
`
`in Electrical Engineering from Virginia
`
`Polytechnic Institute and State University in 1977, my MS. in Electrical
`
`Engineering from Virginia Polytechnic Institute and State University in 1979,
`
`and my Ph.D.
`
`in Electrical Engineering from Stanford University in
`
`1981. My studies focused on electronics and signal processing.
`
`2.
`
`I have over thirty years of academic and industry experience in
`
`the field of medical electronics systems and instrumentation.
`
`I have
`
`Bosch Ex. 2067Bosch Ex. 2022
`
`Cardiocom v. Bosch IPR2013-00468Cardiocom v. Bosch IPR2013-00451
`
`Cardiocom Ex. 1007
`
`
`
`extensive experience with remote health monitoring equipment and design,
`
`as well as computer programs for those systems.
`
`3.
`
`While employed at Nellcor Puritan Bennett, Inc. (“Nellcor”),
`
`where I was Manager of Electronic Research from 1983 to 1989, I was the
`
`Lead Program Manager for the development of a patient monitoring system
`
`which allowed remote monitoring of in—hospital patients via a wireless
`
`network. That and virtually all of my work at Nellcor involved embedded
`
`systems level programming and application programming.
`
`4.
`
`Virtually all of my work experience since that time has included
`
`application programming. In 2007 through 2009, I developed a home-based
`
`wireless patient monitoring system that would communicate with a central
`
`server Le. a computer configured to service multiple clients or remote
`
`computers.
`
`5.
`
`6.
`
`Attached to this declaration is a copy of my curriculum vitae.
`
`I am presently the CEO and Founder of Medical Design
`
`Solutions, Inc., which is a consulting firm focusing on all aspects of medical
`
`device research and development.
`
`7.
`
`I am not employed by, nor receiving grant support from,
`
`Cardiocom, LLC, the requester in this inter partes review.
`
`I am receiving
`
`
`
`compensation for my involvement
`
`in this matter based on my standard
`
`hourly consulting fees.
`
`8.
`
`I am competent
`
`to make this declaration based upon my
`
`personal knowledge and technical expertise in the area of remote patient
`
`monitoring as well as script programming.
`
`9.
`
`In preparing this Declaration,
`
`I reviewed US. Patent No.
`
`7,921,186 (hereinafter “the ‘186 Patent” or “Brown”), the file history of the
`
`‘186 Patent, Cardiocom’s Request for Inter Partes Review of the ‘186
`
`Patent, and the cited prior art.
`
`I have also reviewed portions of the Manual
`
`of Patent Examining Procedure, including Sections 2131, 2141-2145, as well
`
`as KSR Int’l Co. v. Teleflex Inc, 550 US. 398, 416-17 (2007). That case,
`
`and the MPEP sections, explain the legal
`
`requirements of inherency,
`
`obviousness and examining procedures relevant
`
`to obviousness.
`
`The
`
`documents I have reviewed are reflected in my analysis.
`
`10.
`
`I was asked for my opinion as to the level of ordinary skill in
`
`the art, construction of claim terms at issue in the ‘186 Patent, and whether
`
`certain claimed inventions, as a Whole, were obvious in view of the specific
`
`prior art I was shown.
`
`
`
`Background of Art
`
`11.
`
`Long before the ‘186 Patent, pressures to incorporate remote
`
`management of health existed. Prior to the filing of the ‘186 Patent, the era
`
`of house calls had ended.
`
`Further,
`
`the cost of facilities, maintenance
`
`overhead, transportation costs, and medical payment methodologies in the
`
`era prior to the ‘186 Patent led to higher costs for routine monitoring of
`
`health status,
`
`increased risks
`
`for
`
`facility based care including cross
`
`contamination by infectious patients, and increasingly costly services due to
`
`the ability to treat disease states in older or more fragile patients.
`
`12.
`
`Systems
`
`and
`
`infrastructure
`
`enabling
`
`effective
`
`remote
`
`monitoring and diagnosis have, meanwhile, developed at an increasing rate.
`
`13.
`
`Telephony has been a ubiquitous service in developed and
`
`developing countries for several decades; and digital data interconnection
`
`has been available via telephone modems for several decades — since at least
`
`the 1970’s, at increasingly faster speeds.
`
`14. Means of remote monitoring for health conditions and disease
`
`status and management of same has been practiced and reported upon to
`
`demonstrate the effectiveness of such practices. Table 1, attached hereto, is
`
`a survey result of literature in the public domain of such studies. These
`
`studies utilized remote monitoring and databases to determine the efficacy
`
`-4-
`
`
`
`and cost savings of remote monitoring for the conditions listed.
`
`15.
`
`In the 1980 and early to mid-19905, all prior to the ‘186 Patent,
`
`computer based electronic devices and their utility increasingly appeared in
`
`everyday life. User interfaces were simplified,
`
`icons and symbols were
`
`incorporated for simplicity, voice synthesis, telephone auto-dialing, and e-
`
`mail universally were incorporated into our lifestyle. Home health monitors
`
`(blood pressure, blood glucose,
`
`smart scales,
`
`spirometers, etc.) were
`
`developed and adapted for early self-monitoring and reporting of chronic
`
`health conditions.
`
`16. Also in the 19903 prior to the ‘186 Patent, hypertext mark—up
`
`language (“HTML”) was adapted into shared documents in research, internet
`
`browsers, and general document preparation, which allowed linking to other
`
`references Without the tedium of direct incorporation of the reference into a
`
`document page. This is a convenience that every internet user is familiar
`
`with — i.e. click on a highlighted word, passage, or icon to be taken to some
`
`other reference for more detailed information or operation.
`
`17.
`
`Similarly,
`
`the utilization of remote programming has been
`
`universal since the incorporation of portable computing devices. With the
`
`development of both hard and floppy computer disk drives concurrently with
`
`the development of higher speed modems, the ability to distribute both
`
`-5-
`
`
`
`computer programs and data by telephone or wireless communications has
`
`flourished. Thus, software updates (program changes), and data distribution
`
`has been applied universally since the early 1990’s.
`
`18.
`
`From the earliest days of computer-based applications, the use
`
`of script programming has been incorporated. The script language first
`
`utilized was a predecessor of UNIX in the 1970’s, followed by DOS, Basic,
`
`Pascal, FORTRAN, etc. Virtually all computer—based systems had the
`
`ability and utilized script
`
`languages to distribute programs, utilizing
`
`interpreters to translate those scripts into machine language instructions.
`
`19. Databases were developed and incorporated in medical research
`
`and patient management beginning in the 1970’s, and eHealth records (i.e.
`
`patient databases) have been in use for many years. General purpose
`
`database programs have existed since prior to the 1970’s, and have been
`
`incorporated in medicine for many applications — including imaging and
`
`cancer treatment management.
`
`20.
`
`Thus, by the early 1990’s all of the technology at issue with the
`
`‘ 186 Patent was not only developed, but utilized in widely distributed forms
`
`known to virtually every engineering technologist and medical practitioner.
`
`
`
`One of Ordinary Skill in the Art
`
`21.
`
`In my opinion, one of ordinary skill in the art at the time of the
`
`‘186 Patent would have a bachelor’s degree in Electrical Engineering or
`
`Computer Science, or its equivalent, and at least 2 years of experience with
`
`the design and programming of patient monitoring systems and at least 1
`
`year of experience with the design or programming of networked systems.
`
`Claim Terms
`
`22.
`
`Based on my review of the ‘186 Patent, there are certain terms
`
`used in that patent that are used in the medical field and have particular
`
`meaning in that field.
`
`I was instructed to use what I believe to be the
`
`broadest reasonable construction of the claim terms, read in the context of
`
`the patent.
`
`23.
`
`“Communication Interface”: 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 “communication interface” as “a point of
`
`connection where two or more devices or systems may communicate.”
`
`There is no explicit definition of “communication interface” in the ‘186
`
`Patent. However, there are a number of instances where the term “interface”
`
`is used. See, e.g., ‘186 Patent, col. 6:18-33; col. 11:15-18. Each of those
`
`-7-
`
`
`
`instances is consistent with the definition of interface.
`
`24.
`
`“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.” 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.”
`
`Microsoft Press Computer Dictionary, 422-23 (Microsoft Press 1997, 3d ed.).
`
`In the context of the ‘186 Patent, a script program is illustrated as user-
`
`recognizable text that can define functions performed by a device, such as a
`
`computing system or other appliance. See ‘186 Patent, Table 1. Furthermore,
`
`as noted in the ‘186 Patent, many different scripting languages could be used.
`
`‘186 Patent, col. 7:51-54. Accordingly, the above definition is consistent
`
`with my understanding of the term as one of ordinary skill in the art.
`
`
`
`Fu/Wahlquist Combination
`
`25.
`
`Fu (US. Patent No. 4,803,625), discloses an apparatus (the
`
`monitor) and its use (i.e., a method for interacting with an individual (a
`
`patient)) regarding compliance With a therapeutic regimen (health related
`
`information). Fu, col. 4:47-55.
`
`26.
`
`Fu discloses an apparatus in communication with a monitoring
`
`device, Where the device and associated method (i) produces physiological
`
`information regarding the individual and (ii) transmits the physiological
`
`information to the apparatus. Fu, col. 6:13-30; see also FIG. 2b.
`
`27.
`
`Fu discloses a second communication interface that receives
`
`programming information from a server via a communication network and
`
`transmits the physiological information from the apparatus to the server Via a
`
`communication network.
`
`Fu, FIGS. 1, 3; col. 527-9; col. 5:19-26. The
`
`programming information generated, as disclosed in Fu, comprises a query.
`
`Fu, col. 4:47—53. The programming information also comprises a message
`
`corresponding to said individual from a health care professional associated
`
`with said individual. The central unit in Fu communicates a message from a
`
`health care professional to the patient. The remote unit receives the message.
`
`It is readily apparent to one of ordinary skill in the art that a message that
`
`includes tests and medication must come from the health care professional.
`
`-9-
`
`
`
`Fu,
`
`col.
`
`16:34-47.
`
`The programming information also comprises
`
`information specific to the individual. Fu, col. 16:34-47.
`
`28.
`
`Fu discloses a display for presenting queries, messages, and
`
`information to an individual.
`
`Fu, col. 18:22-26.
`
`Fu further discloses
`
`displaying a query or message specific to the individual via a display
`
`connected to the apparatus. Fu, col. 10:54-56; see also col. 19:33-44.
`
`29.
`
`Fu discloses an interface wherein the individual may provide
`
`responses to a query. Fu, Abstract. Fu also teaches that “[t]he main CPU 64
`
`communicates with the patient via a display unit 68, a tone generator 70, a
`
`voice synthesizer 72, and a key pad 74.” Fu, col. 5:56-5 8.
`
`30.
`
`Fu discloses transmitting the patient’s responses to queries (and
`
`other health related information) to the central unit over a communication
`
`network. Fu, Abstract; col. 527—9; col. 5:19-26. Fu discloses at least one
`
`health care professional computer 24 in signal communication (Fig. 1) with
`
`home healthcare units 60 via modems 22. The modem connection between
`
`the server and home units acts as a communication interface between the
`
`server and the remote apparatus. See also Fu, col. 5:23-24 (“Preferably,
`
`communication [between server and home units] is via a modem”).
`
`31.
`
`Fu discloses programming information and the assignment of
`
`programming information related to a health condition of the individual
`
`-10-
`
`
`
`from the health care professional associated with the individual to that
`
`individual. Fu, col. 4:47—55. Fu characterizes the system as advantageously
`
`providing the patient with fast feedback from medical personnel. Fu, col.
`
`4:63-64. One of ordinary skill in the art would understand that the medical
`
`personnel uses the terminals 30 to enter the following: the questions to be
`
`asked, the physician's test and medication designations, and the expected
`
`values for the parameters measured. Fu, col. 7:52-55; col. 8:56—65. The
`
`patient information package would be used to enter the “physician selected
`
`information,” which identifies the patient, and provide such information as
`
`name, age, sex, address, social security number, telephone number, and the
`
`like. Fu, col. 8:53-56. Further, the central unit user software (prescription
`
`entry package and patient information capture package) is used to generate
`
`and assign the "test and medication profiles
`
`based on the entered
`
`information. Fu, col. 8:56-60. Finally, the communications software of the
`
`central unit transmits the test and medication profiles to the "respective
`
`home units 60." Fu, col. 4:63-64; col. 5:36-38; col. 8:4-10.
`
`32.
`
`Fu discloses a home unit and a central unit that is located
`
`remotely from the home unit. Fu, col. 5:44-52.
`
`33.
`
`Fu discloses displaying the programming information by
`
`execution of a program on the apparatus. Fu, col. 8:18-27.
`
`-11-
`
`
`
`34.
`
`Fu discloses a custom program that is (a) designed specifically
`
`for
`
`the individual,
`
`(b) associated with the individual by a unique
`
`identification code, the patient’s social security number, and (c) configured
`
`to control the peripheral monitoring devices. Fu, col. 8:52-65.
`
`35.
`
`Fu discloses an apparatus in which the query is related to the
`
`health condition of the individual and where the individual provides the
`
`response. Fu, col. 8:30—33; col. 10:54-61; Abstract.
`
`36.
`
`Fu discloses sending programming information via a message
`
`to a patient that is related to the patient’s health condition
`
`Fu, Abstract
`
`(“[T]o prompt a patient to take prescribed medication at prescribed times, to
`
`use the sensors to measure prescribed health parameters, and to supply
`
`answers to selected questions”). Fu also discloses sending programming
`
`information via instructions to a patient that is related to the patient’s health
`
`condition. Fu, col. 10:34—43; see also Abstract. Fu also discloses a patient
`
`responding to prompts (an acknowledgment). Fu, col. 4:50-52; col. 10:54-
`
`57.
`
`37.
`
`Fu discloses that the communication network can be cable
`
`networks, wireless networks, or telephone networks. Fu, col. 16:34-37. Fu
`
`discloses that the home computer has a modem that can be connected to a
`
`phone line. Fu, Abstract; col. 6:40-44; col. 14:53-65. Fu also discloses a
`
`-12-
`
`
`
`hardwire link and radio link. Fu, col. 16:34—37. One of ordinary skill in the
`
`art at the time of the invention of the ‘186 Patent would understand that a
`
`hardwire link would include a cable network and that a radio link would
`
`include a wireless network.
`
`38.
`
`Fu discloses at least one health care professional computer 24
`
`in signal communication (Fig. 1) with home healthcare units 60 via modems
`
`22. Fu, col. 7: 49—55. The Computer 24 functions as a server based on its
`
`connectivity with the terminals 30 and home unit 60. The home healthcare
`
`units are capable of receiving data files from a remote server.
`
`39.
`
`Fu discloses that the home unit is a device sufficiently compact
`
`to comprise a handheld device. Pu, 001. 6:52—54. In particular, the home unit
`
`is designed specifically for the individual and is associated with the
`
`individual by a unique identification code,
`
`the patient’s social security
`
`number, and is configured to control the peripheral monitoring devices. Fu,
`
`col. 8:52-65.
`
`40.
`
`Fu discloses sending patient responses from the home unit to
`
`the central unit. Fu, col. 4:52—55. Moreover, Figure 2 shows a key board 76
`
`and a key pad 74 that a patient uses to provide a response to a query, where
`
`the key board 76 and key pad 74 are connected to the apparatus 64. Fu, FIG.
`
`2.
`
`-13-
`
`
`
`41.
`
`Fu also discloses physicians accessing the patient responses at
`
`the central unit for analysis. Fu, col. 19:42-44. Thus, a person having
`
`ordinary skill in the art would understand that in order for the physician to
`
`view the patient responses,
`
`there must be a user interface enabling the
`
`physician to access the results.
`
`42.
`
`Fu claims storing patient responses in a log and transmitting the
`
`responses to a central location via a communication network. Fu, col. 19:39—
`
`44. Fu also describes a computer with storage for instructions to be sent to
`
`the remote device and for data to be received from said remote device. Fu,
`
`col. 7:56-62.
`
`43.
`
`In view of the explicit teachings of Fu, one of ordinary skill in
`
`the art would readily incorporate teachings widely known in the computing
`
`field.
`
`Further, because health monitoring was becoming increasingly
`
`computer-driven, programming techniques (e.g., script programs) would be
`
`readily adopted for use in remote health monitoring. For example, it would
`
`be obvious to one of ordinary skill in the art at the time of the invention of
`
`the ‘186 Patent to extend the system of Fu to incorporate a computer
`
`program comprising a custom script program that
`
`is designed for an
`
`individual by using a unique identification code and configured to control a
`
`monitoring device. Virtually every computer system by the mid-19905 and
`
`-14-
`
`
`
`prior to the time of the invention had a script interpreter incorporated. For
`
`example, DOS and its predecessor CPM were script interpreter programs.
`
`Thus, it was advantageous and obvious to use communications systems, at
`
`that time readily available, for distribution and receipt of computer programs,
`
`data, and instructions.
`
`44. Other prior art references within the general field of remote
`
`health monitoring systems contain specific teachings that are highly relevant
`
`to particular elements of the claims of the ‘186 Patent. As such, each of the
`
`claims of the ‘186 Patent are obvious in view of combinations of Fu with
`
`those references, as outlined below.
`
`45. As shown above, the claimed health related query functionality
`
`was known and disclosed in Fu. Not only were the health-related queries
`
`known and disclosed in Fu, the queries were programmed into software,
`
`which queries were then presented to the user when the software was
`
`executed.
`
`46.
`
`The only purported novelty of the claims of the ‘186 Patent was
`
`to create a script program, customized for an individual by a health care
`
`professional associated with that individual, and to send this script program
`
`to the remote device, Where the script program controlled a remote
`
`monitoring device. As discussed in detail below, this modification of Fu
`
`-15-
`
`
`
`with the teachings of Wahlquist (US. Pat. No. 5,367,667) would have been
`
`obvious to one of ordinary skill
`
`in the art at
`
`the time of the alleged
`
`invention.
`
`47. Wahlquist discloses generally sending a diagnostic script
`
`program from a central computer to a remote computer.
`
`48. Wahlquist
`
`also explicitly provides
`
`a
`
`computer program
`
`comprising a custom script program designed specifically for said individual.
`
`Wahlquist, col. 2:17-31.
`
`49. Wahlquist
`
`also explicitly provides
`
`a
`
`computer program
`
`comprising a custom script program associated with said individual by a
`
`unique identification code. Wahlquist, col. 2:10—15.
`
`50. Wahlquist
`
`also explicitly provides
`
`a
`
`computer program
`
`comprising a custom script program configured to perform a remote
`
`diagnostic function. Wahlquist, col. 2:42-49. As discussed more below, it
`
`would have been advantageous to one of ordinary skill in the art at the time
`
`of the invention of the ‘186 Patent to use the script program of Wahlquist in
`
`combination with the system of Fu. For example, Fu distributes queries and
`
`programs
`
`explicitly by floppy disk.
`
`Such programs
`
`are typically
`
`significantly longer than script programs. However, script interpreters were
`
`readily available at the time of invention of the ‘186 Patent, allowing
`
`-16-
`
`
`
`complex programs to be distributed as script files via multiple means,
`
`including modems, floppy disks, and CD ROMS. The advantage for being
`
`able to distribute a program Via a modem in Wahlquist is significantly more
`
`timely interaction and modification of patient treatment protocols, which one
`
`of ordinary skill in the art at the time of the invention of the ‘186 Patent
`
`would have desired and sought out.
`
`51.
`
`The combination of Fu and Wahlquist
`
`teaches all of the
`
`elements of claims 1-6, 8-15 of the ‘186 Patent.
`
`52. Upon review of Wahlquist, one of ordinary skill
`
`in the art
`
`would understand that one could readily send a script program from a central
`
`computer to a remote device for carrying out the known remote health
`
`monitoring functions, including the health-related queries that are described
`
`in detail at columns 8 through 16 of Fu. Writing these queries into a script
`
`program would be a routine task for one of ordinary skill in the art. Sending
`
`the script program from a central computer to a remote home unit would also
`
`be a routine task. Furthermore, since the teachings of Wahlquist were well
`
`known in the field of computing systems, and since features of computing
`
`systems were increasingly integrated into remote health monitoring systems
`
`(such as that disclosed in Fu), the script programs of Wahlquist could readily
`
`be used to transmit the health-related queries of Fu.
`
`Furthermore,
`
`the
`
`-17-
`
`
`
`teachings of Fu and Wahlquist are such that
`
`intercombination of their
`
`features in the manner claimed would have been straightforward; one would
`
`have a reasonable expectation of success in combining the UNIX-based
`
`system of Fu, which was known to be capable of supporting execution of
`
`script programs, with the diagnostic script program features of Wahlquist.
`
`53.
`
`There are explicit teachings in Fu and Wahlquist that suggest
`
`the references’
`
`intercombination. Fu teaches the health related query
`
`functionality. Fu discloses a central computer unit that can be “preferably
`
`programmed with a multi—user, multi-tasking operating system such as the
`
`UNIX system which
`
`includes
`
`suitable
`
`programs
`
`for
`
`receiving
`
`communications from the home units 60, preparing appropriate reports, and
`
`directing appropriate instructions or data files to the respective home units
`
`60.” Fu, col. 8:4-10.
`
`54.
`
`One of ordinary skill
`
`in the art would understand that Fu’s
`
`disclosure of a UNIX operating system including “suitable programs for
`
`directing appropriate instructions or data files to the respective home units”
`
`(Fu, col. 824-10) would include the ability to utilize and generate script
`
`commands,
`
`script
`
`files as well as
`
`the sequential collection of such
`
`commands, in other words, a script program.
`
`-13-
`
`
`
`55.
`
`Script commands are ordinary text human-readable instructions
`
`which a computer can interpret and perform without the intermediate step of
`
`compilation. This was a significant advance developed in the 1970s for
`
`computer applications that enabled a user or a programmer to operate a
`
`computer
`
`system without
`
`generating machine-level
`
`programs
`
`and
`
`instructions. The use of script commands and script programs quickly
`
`became ubiquitous. For example, Fu explicitly discloses the use of modems
`
`between the central computer and the remote units. Fu, col. 6:40-46. These
`
`modems and the described telephone dialing were controlled by script
`
`commands, a fact which would be known to anyone programming such a
`
`device.
`
`56. A script program is at least one text command that has been
`
`stored as a file that can be interpreted and performed by the computer.
`
`I
`
`note that my definition of a “script program” as with other definitions or
`
`constructions of terms used in the claims, is based on what I believe to be
`
`the broadest reasonable construction of those terms in the context of the
`
`patent.
`
`I understand that
`
`is the proper standard for purposes of these
`
`proceedings, and that a different standard may be used in other proceedings
`
`such as litigation.
`
`-19-
`
`
`
`57.
`
`In the 1980s, one of the most commonly used script programs
`
`was BASIC and its derivatives. The BASIC interpreter would interpret and
`
`execute script programs line-by-line. All forms of computer applications
`
`were developed using this script interpreter technique. Further, BASIC
`
`source files (scripts) were often developed using standard text editors,
`
`transmitted to another computer by various means including floppy disks,
`
`modem, or hard-wired networks. It would have been advantageous to one of
`
`ordinary skill in the art at the time of the invention of the ‘186 Patent to use
`
`a script program because languages like BASIC were easy to understand and
`
`program and were widely known. There is no novelty in the use of script
`
`programs versus compiled programs for such development, distribution or
`
`execution.
`
`I am personally aware of the use of this technology because in
`
`the 19705 and 1980s,
`
`I personally observed it and participated in such
`
`development, distribution, and execution on numerous occasions, including
`
`medical diagnostic device programming.
`
`58.
`
`The ability to utilize script commands, script files, and script
`
`programs was the inherent utility of operating systems available at the time
`
`of the invention of Fu, such as the UNIX, MS—DOS, PC-DOS or VM
`
`operating systems.
`
`-20-
`
`
`
`59.
`
`Thus, one of ordinary skill in the art would understand that Fu’s
`
`disclosure of a UNIX operating system that includes programs for sending
`
`“appropriate instructions and data files” (Fu, col. 8:4-10) to the respective
`
`home units could, and very likely would include the generation and sending
`
`of script programs to the home units, particularly since the health-related
`
`queries disclosed in Fu are repetitive in nature. Fu, cols. 8-12.
`
`60.
`
`In my opinion, Fu’s disclosure, in and of itself, would make the
`
`use of script programs obvious for application to remote health monitoring
`
`systems.
`
`61.
`
`If Fu were not enough, then clearly Fu’s teachings combined
`
`with Wahlquist’s teaching of a remote computer system utilizing script
`
`programs for performing diagnostic tests make the combination obvious.
`
`Wahlquist specifically states that “[i]t will be appreciated that the present
`
`invention may be practiced using specialized test files or other hardware
`
`installations other than those described above” (Wahlquist, col. 10:36-39),
`
`which suggests that the use of script programs to perform remote diagnostics
`
`can be used in different types of hardware applications. Further, the script
`
`program in Wahlquist is sent from a central database manager computer via
`
`a modem to the user’s computer. Wahlquist, col. 5:62-66. One of ordinary
`
`skill in the art would have known of Wahlquist and could have readily
`
`-21_
`
`
`
`adapted its use of downloadable script programs for performing remote
`
`computer diagnostics to the system of Fu for performing remote patient
`
`health monitoring.
`
`62. Moreover, it would be obvious to combine Fu and Wahlquist
`
`and there were motivations, suggestions and reasons to do so that were
`
`disclosed in the references themselves, as well the knowledge of one of
`
`ordinary skill
`
`in the art.
`
`In particular, and as cited in MPEP § 2143,
`
`teachings
`
`in the prior art
`
`references, design needs, and background
`
`knowledge of methods lead to a predictable combination of Fu and
`
`Wahlquist in the manner claimed.
`
`63.
`
`First, as discussed above, one of ordinary skill in the art at the
`
`time of the invention would have known that the utility of a UNIX operating
`
`system was its ability to utilize script commands, script files and script
`
`programs. Armed with this knowledge, one of ordinary skill in the art would
`
`have a rationale to combine Fu with the script program of Wahlquist because
`
`script programming was a known and predictable method of programming
`
`with several operating systems,
`
`including UNIX.
`
`See KSR Int’l Co. v.
`
`Teleflex Inc, 550 US. 398, 416—17 (2007) ("The combination of familiar
`
`elements according to known methods is likely to be obvious when it does
`
`79,
`no more than yield predictable results ,
`
`(C
`
`if a technique has been used to
`
`-22-
`
`
`
`improve one device, and a person of ordinary skill in the art would recognize
`
`that it would improve similar devices in the same way, using the technique is
`
`obvious unless its actual application is beyond his or her skill”; “a court
`
`must ask whether the improvement is more than the predictable use of prior
`
`art elements according to their established functions"); MPEP § 2143,
`
`Section III
`
`(“Exemplary rationales that may support a conclusion of
`
`obviousness include: Combining prior art elements according to known
`
`methods to yield predictable results...Use of known technique to improve
`
`similar devices (methods, or products) in the same way...Applying a known
`
`technique to a known device (method, or product) ready for improvement to
`
`yield predictable results [or] Some teaching, suggestion, or motivation in the
`
`prior art that would have led one of ordinary skill to modify the prior art
`
`reference or to combine prior art reference teachings to arrive at the claimed
`
`invention”).
`
`64.
`
`Second, Wahlquist states that its script program could be used
`
`with other hardware applications, which is a reason or teaching, suggestion,
`
`or motivation to combine a script program with the system of Fu. See KSR
`
`Int’l C0., 550 US. at 421—22 (the court held that
`
`the Federal Circuit
`
`improperly restricted the analysis to teaching, suggesting, or motivation, but
`
`did not say that
`
`the test was improper); MPEP § 2143 (“Exemplary
`
`-23-
`
`
`
`rationales that may support a conclusion of obviousness include:
`
`...Some
`
`teaching, suggestion, or motivation in the prior art that would have led one
`
`of ordinary skill to modify the prior art reference or to combine prior art
`
`reference teachings to arrive at the claimed invention”).
`
`65.
`
`Third, Fu was filed in 1986, Wahlquist was filed in 1992, and
`
`the ‘186 Patent purports to claim priority to a provisional patent application
`
`filed on March 28, 1997. During that interim 11 year timeframe,
`
`two
`
`important
`
`industry trends emerged in all computer and software—related
`
`applications:
`
`1) modem speeds increased up to 100—fold (compared to the
`
`speeds cited by Fu), enabling transmission of programs and data at much
`
`higher rates without penalizing the use of voice telephony; 2) as a result, the
`
`distribution means of software and data increasingly migrated from floppy-
`
`disks and CD-ROMS to direct distribution over the telephone or other
`
`communication networks. Thus, one of ordinary skill in the art would have
`
`found it obvious to use the teachings of Wahlquist to predictably modify Fu
`
`in order to transmit instructions and data containing known health-related
`
`queries in the form of a script program. KSR Int'l Ca, 550 US. at 417
`
`("When a work is available in one field of endeavor, design incentives and
`
`other market forces can prompt variations of it, either in the same field or a
`
`different one."); MPEP § 2143 (“Exemplary rationales that may support a
`
`-24-
`
`
`
`conclusion of obviousness include:... Known work in one field of endeavor
`
`may prompt variations of it for use in either the same field or a different one
`
`based on design incentives or other market forces if the variations are
`
`predictable to one of ordinary skill in the art”). This is particularly true
`
`since Fu explicitly states that the UNIX—based operating system on the
`
`central computer contained programs for sending instructions and data files
`
`to the home units. Fu, col. 8:4-10.
`
`66.
`
`One of ordinary skill in the a
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
