By: Daniel W. McDonald (dmcdonald@merchantgould.com)
`Merchant & Gould P.C.
`3200 IDS Center
`80 South 8th Street
`Minneapolis, MN 55402
`Tel: (612) 332-5300
`Fax: (612) 332-9081
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CARDIOCOM, LLC
`Petitioner
`
`v.
`
`ROBERT BOSCH HEALTHCARE SYSTEMS, INC.
`Patent Owner
`____________
`
`Case IPR2013-00468
`Patent 7,516,192
`____________
`
`PETITIONER’S RESPONSE TO PATENT
`OWNER’S MOTION TO EXCLUDE EVIDENCE
`
`
`
`
`
`
`Merchant & Gould P.C.
`3200 IDS Center
`80 South 8th Street
`Minneapolis, MN 55402
`Tel: (612) 332-5300
`Fax: (612) 332-9081
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CARDIOCOM, LLC
`Petitioner
`
`v.
`
`ROBERT BOSCH HEALTHCARE SYSTEMS, INC.
`Patent Owner
`____________
`
`Case IPR2013-00468
`Patent 7,516,192
`____________
`
`PETITIONER’S RESPONSE TO PATENT
`OWNER’S MOTION TO EXCLUDE EVIDENCE
`
`
`
`
`
`
`
`Case IPR2013-00468
`Patent No. 7,516,192
`
`I.
`
`Introduction
`
`Petitioner’s Reply and the supporting declaration of Dr. Stone directly
`
`responded to the arguments raised in Patent Owner’s Response. Patent Owner’s
`
`Response attempted to show secondary considerations of nonobviousness;
`
`Petitioner replied by showing that evidence was weak and lacked the requisite
`
`nexus. Patent Owner’s Response relied on its expert Declaration; Petitioner’s reply
`
`cites cross-examination of the expert, which shows his analysis was cursory and
`
`deficient. Patent Owner attempted to show that the cited art did not teach or
`
`suggest certain claim elements, Petitioner responded by showing that it did. The
`
`reply thus properly responded to Patent Owner’s arguments. 37 CFR §42.23.
`
`Patent Owner’s Motion to Exclude Evidence does not deny that the Reply is
`
`responsive. Instead, it is a shotgun motion, but appears devoted mostly to two
`
`things. One, complaints that Petitioner did not merely repeat what was presented in
`
`its Petition, but instead refuted Patent Owner’s new evidence of purported
`
`secondary considerations. Two, it attempts to cure the flaws in Patent Owner’s
`
`Response exposed by the Reply by asking the Board to consider additional
`
`evidence. Neither of these attacks has merit. Regarding the first, Petitioner’s reply
`
`is the only and necessary vehicle for Petitioner to respond to flawed evidence of
`
`secondary considerations presented in Patent Owner’s response. As to the second,
`
`Bosch should not be allowed to file a substantive sur-reply at all, let alone under
`
`
`
`1
`
`
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`the guise of a motion to exclude. See Atuahene v. South Dakota State University,
`
`2009 U.S. Dist. LEXIS 49976, *25 (D. S.D. 2009) (finding that “justice does not
`
`require an additional opportunity” for the party opposing the motion to respond to
`
`new material proffered in response to its own arguments); Liberty Mutual Ins. Co.
`
`v. Progressive Casualty Ins. Co., CBMR2012-00002, Paper 66, slip op. at 62 (A
`
`motion to exclude “is not an opportunity to file a sur-reply, and also is not a
`
`mechanism to argue that a reply contains or relies on evidence necessary to make
`
`out a prima facie case.”)
`
`Patent Owner’s remaining arguments mischaracterize Dr. Stone’s testimony
`
`and, at most, speak to its weight, not its admissibility. The motion also fails to
`
`show why the evidence is inadmissible. Rather than filing a spurious motion to
`
`exclude, Patent Owner may address such positions during oral argument. The
`
`motion should be denied.
`
`II. Dr. Stone’s Opinions Regarding Secondary Considerations of Non-
`Obviousness Are Responsive and Admissible.
`A. Dr. Stone’s opinions on secondary consideration properly refute
`the arguments raised by Patent Owner.
`
`Patent Owner argues that Dr. Stone “withheld his opinions” on secondary
`
`considerations until his reply declaration. Paper 59 at 1-2. That is not true. Dr.
`
`Stone’s initial declaration was submitted in support of Cardiocom’s petition to
`
`institute inter partes review of the ’192 patent, when Cardiocom had to
`
`
`
`2
`
`
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`demonstrate “a reasonable likelihood that [it] would prevail with respect to at least
`
`1 of the claims challenged in the petition.” 35 U.S.C. § 314 (emphasis added). The
`
`Board held that Cardiocom established such a reasonable likelihood and instituted
`
`this action. Patent Owner was the first party to submit briefing after the Board
`
`instituted this action. Patent Owner (through Dr. David) raised secondary
`
`considerations in response to Cardiocom’s obviousness arguments. Cardiocom and
`
`Dr. Stone then replied to this showing. Dr. Stone decided that Patent Owner’s
`
`evidence of secondary consideration did not change his opinion once it was
`
`presented, and was not expected to predict what Bosch might try to present on that
`
`issue when he presented his opinions initially.
`
`Secondary considerations are typically presented as part of the patent
`
`owner's response and the petitioner's reply. See, e.g., Vibrant Media, Inc. v.
`
`General Elec. Co. IPR2013-00170, paper 56 at 27 (citing to patent owner’s
`
`response and petitioner’s rebuttal arguments in reply while finding that patent
`
`owner failed to establish a nexus between the allegedly successful device and the
`
`claims of the patent); see also MPEP §2145 (“Rebuttal evidence [by the Patent
`
`Owner] may relate to any of the Graham factors including the so-called secondary
`
`considerations.”) (quoting In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984)).
`
`Indeed, Patent Owner often is the party in possession of the information necessary
`
`to determine if a nexus exists between the alleged secondary considerations (such
`
`
`
`3
`
`
`
`as its own purported commercial success) and the claimed invention. Driving that
`
`point home here, Dr. David relied on his discussions with the named inventor and
`
`two of Patent Owner’s employees for much of his secondary considerations
`
`analysis—information to which Dr. Stone had no access.
`
`Patent Owner proffered new secondary consideration evidence and
`
`arguments in its Response; Petitioner was allowed to respond to that evidence on
`
`reply. See Calderon v. Experian Info. Solutions, Inc., 290 F.R.D. 508, 515 (D.
`
`Idaho 2013) (holding that Plaintiff did not improperly raise issue for the first time
`
`in reply brief because Plaintiff was merely responding to an issue initially raised in
`
`Defendant’s opposition brief); EEOC v. Creative Networks, LLC, No. CV-05-
`
`3032, 2008 U.S. Dist. LEXIS 103381, at *6 (D. Ariz. Dec. 15, 2008) (denying
`
`motion to strike where Defendant rebutted, with new evidence, arguments first
`
`raised by Plaintiff in its opposition).
`
` Patent Owner does not cite any law supporting its proposition that Petitioner
`
`was “required” to analyze secondary considerations in his original declaration.
`
`Motion at 2. Patent Owner cites Gnosis S.P.A. v. South Alabama Med. Sci. Found.,
`
`Case IPR2013-00116, Paper 61, at 2-3 (P.T.A.B. Mar. 12, 2014), but that case
`
`refutes Patent Owner’s position. There the patent owner sought to argue last at the
`
`hearing, on secondary considerations. The patent owner’s request was properly
`
`denied. “Rather, the secondary considerations evidence is part of the body of
`
`
`
`4
`
`
`
`evidence from which Petitioners must establish that a preponderance emerges, in
`
`order to prove unpatentability of the patented claims.” Id. at 2-3. This decision is
`
`consistent with Petitioner’s reply here, as it recognizes that secondary evidence is
`
`no different than any other new evidence a Patent Owner may cite in response—
`
`showing that it is no exception to the rule that a Petitioner may present new
`
`evidence and arguments in reply to new evidence presented by the Patent Owner. It
`
`also affirms that the Patent Owner is not entitled to a sur-reply even when it is the
`
`party that first presents evidence of secondary considerations. Bosch’s effort to use
`
`the Motion to Exclude as a back-door sur-rebuttal regarding secondary
`
`considerations thus should be rejected.
`
`Gnossis also affirms that a motion to exclude is the wrong vehicle for
`
`Bosch’s challenge. “A motion to exclude is not an appropriate vehicle for
`
`challenging a reply or supporting evidence as of improper scope.” Corning,
`
`IPR2013-00052, Paper 88 at 22-23 n.13.
`
`B. Dr. Stone’s opinions are reliable.
`1.
`Patent Owner fails to identify any way Dr. Stone is
`unqualified.
`
`Patent Owner argues that Dr. Stone is unqualified to opine regarding
`
`secondary considerations, including alleged commercial success. Paper 59 at 3-4.
`
`Patent Owner’s motion should be denied because it does not identify specific
`
`
`
`5
`
`
`
`statements from Dr. Stone’s declaration that he is unqualified to make. See Office
`
`Patent Trial Practice Guide, 77 Fed. Reg. 48765, 48767 (Aug. 14, 2012).
`
`Rather, Patent Owner uses this section of its motion as a sur-reply to rehash
`
`Dr. David’s listing of purported secondary considerations (Paper 59 at 3) and argue
`
`that Dr. David is qualified to put forth his opinions on these secondary
`
`considerations (id. at 5). This motion is not the place for Patent Owner to try to
`
`bolster its expert and his opinions. Liberty Mutual, IPR2-12-00002, Paper 66 at 62
`
`(“While a motion to exclude may raise issues related to admissibility of evidence,
`
`it is not an opportunity to file a sur-reply”).
`
`Moreover, Dr. Stone has over 30 years in the field of remote patient
`
`monitoring. Patent Owner proffers secondary consideration evidence through an
`
`expert so unfamiliar with the market that he had never even heard of the Health
`
`Buddy product that was the focus of his analysis, and is in no position to criticize
`
`the more knowledgeable Dr. Stone. See Ex. 1041 at 162:18-21. Moreover, as
`
`shown above, Dr. Stone had no duty to address secondary considerations in his
`
`original declaration, so that does not indicate he lacks the requisite expertise.
`
`The cases cited by Patent Owner do not affect this conclusion. Patent Owner
`
`mistakes the XpertUniverse, Inc. v. Cisco Sys., Inc. decision as being solely about
`
`the expert’s technical background; instead, much of the decision discusses how the
`
`expert simply regurgitates facts given to him by others, or that the praise identified
`
`
`
`6
`
`
`
`by the expert was not specifically for the patented inventions. No. 09-157-RGA,
`
`2013 U.S. Dist. LEXIS 31327, 10-12 (D. Del. Mar. 7, 2013) These are not
`
`problems with an expert’s qualifications, but with his methodology.1
`
`Further, the court in Rambus, Inc. v. Hynix Semiconductor, Inc. specifically
`
`found that the expert could opine on whether the product embodies a claimed
`
`invention, whether a product is coextensive with the claimed invention, and “aid
`
`the jury in understanding the performance value provided by a claimed invention.”
`
`254 F.R.D. 597, 604-605 (N.D. Cal. 2008). That is much of the opinion Dr. Stone
`
`provided. This case only highlights that Patent Owner’s motion is fatally flawed
`
`for failing to point out with particularity which testimony is at issue.
`
`Dr. Stone used reliable methodology.
`
`2.
`Dr. Stone’s methodology was proper because he requires a nexus between
`
`the purported secondary considerations, such as commercial success, and the
`
`claimed invention. Dr. Stone’s declaration and subsequent deposition testimony
`
`explain that Dr. David never established the required nexus by, for example,
`
`comparing the Health Buddy product to the elements of the claims to determine if
`
`the allegedly commercially-successful product embodied the claimed invention.
`
`Ex. 1022 ¶ 63; Ex. 2069 at 792:18-793:9. The Patent Owner’s own case law shows
`
`
`1 Cardiocom notes that these different problems, for which XpertUniverse’s
`expert was stricken, are nearly identical to the flaws identified by Cardiocom in its
`motion to strike opinions of Dr. David. (See Paper 57.)
`7
`
`
`
`
`
`that the commercial success evidence must be directed to what is “claimed in the
`
`patent.” Motion at 5 (citation omitted).
`
`Patent Owner’s criticism of Dr. Stone’s methodology is actually a classic
`
`straw-man argument using its motion as a sur-reply vehicle to try to supplement
`
`Dr. David’s testimony on the required nexus.
`
`Further, Patent Owner objects to Dr. Stone’s testimony based on Patent
`
`Owner’s characterization of that testimony as “pure rebuttal even though
`
`Cardiocom bears the burden of production regarding secondary considerations.”
`
`Paper 59 at 6. This should be rejected as simply another variation on Patent
`
`Owner’s incorrect argument, addressed above, that Petitioner may not reply to new
`
`secondary consideration arguments raised by the Patent Owner. Dr. Stone properly
`
`relied on the evidence he cited, and the lack of evidence that the Health Buddy
`
`practices any of the claims, to show the lack of the requisite nexus.
`
`The remainder of Patent Owner’s arguments on this issue are directed to
`
`bolstering Dr. David’s shattered credibility as to the commercial success evidence.
`
`A motion to exclude should not be so used.
`
`3.
`
`Dr. Stone’s citations of Dr. David’s deposition testimony are
`appropriate.
`
`Patent Owner’s discussion of Dr. Stone’s citations of Dr. David’s testimony
`
`is perhaps the most egregious example of Patent Owner improperly using its
`
`
`
`8
`
`
`
`motion to exclude to rehabilitate its destroyed expert. Paper 59 at 6-8. Patent
`
`Owner does not identify any testimony of Dr. Stone which should be excluded.
`
`Indeed, much of the analysis it seems to attack is Dr. Stone analyzing Dr. David’s
`
`admissions, which are clearly admissible. Instead, Patent Owner spends three
`
`pages of its motion sur-replying to Dr. Stone’s declaration by providing
`
`supplemental citations to Dr. David’s declaration and deposition testimony. Patent
`
`Owner cites Rule of Evidence 106 to justify this argument, but that rule merely
`
`states that the remaining parts of a writing introduced into evidence in part may be
`
`introduced when fair. Dr. David’s complete deposition and declaration, however,
`
`are already in evidence. This sur-reply goes well beyond Rule 106 and is plainly
`
`inappropriate, and the Board should disregard these arguments.
`
`III. Dr. Stone’s Opinions Regarding Databases Are Consistent with Prior
`Opinions, Reasonable and Admissible.
`
`Patent Owner argues that Dr. Stone withheld a construction of the term
`
`“database” until his reply declaration, and that Dr. Stone’s construction is
`
`incorrect. (Paper 59 at 8-12.) Both of these arguments are misplaced. First, Patent
`
`Owner admits that Dr. Stone addressed the meaning of database “in response to
`
`Bosch’s arguments that the prior art does not disclose storing script programs and
`
`responses in a database.” Id. at 8. Dr. Stone essentially pointed out that Dr. David’s
`
`admissions on cross examination were inconsistent with Patent Owner’s arguments
`
`
`
`9
`
`
`
`that imposed improper, narrowing limitations on “database.” Indeed, Dr. Stone
`
`applies Dr. David’s statements regarding the meaning of database, along with a
`
`computer glossary definition of the plain and ordinary meaning of database in his
`
`analysis. Ex. 1022 ¶ 129 (citing David Dep. at 607:2-19 (Ex. 1041)(“Q: So you’d
`
`say it’s an electronically stored organized collection of data? A:Yes.”). In short,
`
`Dr. Stone is attacked for essentially agreeing with Dr. David that “database” is not
`
`unduly narrow and its plain meaning should apply. As Dr. Stone used the plain
`
`meaning of unconstrued terms such as “database” in his original analysis, there is
`
`nothing inconsistent. In any event, Patent Owner is in no position to complain
`
`about an issue on which the experts essentially agree. Paper 59 at 9.
`
`Second, Patent Owner again fails to provide the required specificity. Dr.
`
`Stone showed that Goodman teaches a database under virtually any construction of
`
`the term, as it expressly calls out the host computer’s “database manager” function.
`
`Stone Decl. ¶ 138. Dr. David conceded that “A database manager [as taught by
`
`Goodman] interacts with a database.” Id (citing David Dep. 589:20-23). Patent
`
`Owner’s attack is much ado about nothing.
`
`To the extent Patent Owner provides sur-rebuttal to attack Dr. Stone and
`
`support its position on the merits, that argument should be ignored. It makes no
`
`sense anyway. Patent Owner attacks the experts’ mutual construction of “database”
`
`as superfluous in view of the claim language, but cites no claim language to
`
`
`
`10
`
`
`
`support the assertion. Nothing in the claims of the ‘192 patent support this
`
`argument.
`
`IV. The Attacks Related to “Script Program” are Irrelevant; the related
`Testimony is Reasonable and Admissible.
`A. Dr. Stone properly applied the Board’s construction of “script
`program”
`
`Patent Owner objects to Dr. Stone’s opinions regarding “script program”
`
`because Dr. Stone purportedly offers conflicting constructions of that term. Paper
`
`59 at 12-13. However, that is the wrong question. The issue is what construction
`
`did he apply in his analysis. Patent Owner does not dispute that Dr. Stone’s
`
`analysis in this action uses the construction of script program provided by the
`
`Board in the institution decision. (Ex. 1022 ¶17.) Dr. David likewise adopted the
`
`Board’s definition of script program. (Ex. 2007 ¶18.) There is no reason to exclude
`
`analysis of script program that relies on the Board’s construction.
`
`
`B. Dr. Stone’s opinion as to the definition of a “script program” as
`requiring an interpreter has remained consistent.
`
`Because Dr. Stone applied the Board construction, there is no question the
`
`related testimony is admissible. Patent Owner, however, veers off into territory
`
`totally disconnected from a motion to exclude, raising “credibility questions”
`
`because Dr. Stone allegedly changed his opinion about the definition of script
`
`program. Patent Owner knows full well that such an attack, even if well supported,
`
`goes to the weight, not the admissibility, of the expert testimony. Thus, this is
`11
`
`
`
`
`
`another shameless effort by patent Owner to present rebuttal argument under the
`
`guise of an evidence motion.
`
` Moreover, the attack lacks merit. Dr. Stone consistently has stated that a
`
`script program is a program whose text commands may be interpreted and
`
`executed by a device. Ex. 1008 ¶25; Ex. 2060 ¶29. In his declaration found in
`
`Exhibit 2060, Dr. Stone emphasizes that an interpreter reading a program is
`
`different from a device simply executing a compiled program – that is fully
`
`consistent with how he has always characterized the term “script program.” Id.
`
`V. Dr. Stone’s Testimony Regarding the Field of Endeavor is Reasonable
`and Admissible.
`
`Finally, Patent Owner moves to exclude Dr. Stone’s testimony that
`
`Wahlquist is analogous art to the ’192 patent because it is in the same field of
`
`endeavor. Paper 59 at 13-15. Patent Owner incorrectly argues that Dr. Stone
`
`misapplied the legal standard for field of endeavor because Dr. Stone did not limit
`
`his analysis to only the claims of the ’192 Patent. Id. at 14. Patent Owner’s effort to
`
`limit the field of endeavor to the claimed invention and nothing more would
`
`essentially require all analogous art to be anticipatory art. That is not the law; it
`
`does not even make sense. Indeed, it is inconsistent with the Board Decision
`
`Instituting Trial. See Dec., paper 22 at 11- 13.
`
`
`
`12
`
`
`
`One may “determine the appropriate field of endeavor by reference to
`
`explanations of the invention's subject matter in the patent application, including
`
`the embodiments, function, and structure of the claimed invention.” In re Bigio,
`
`381 F.3d 1320, 1325 (Fed. Cir. 2004). Dr. Stone thus was fully justified in looking
`
`to both the claims and the specification of the ’192 patent to determine its field of
`
`endeavor. Id. at 1326 (“In other words, the PTO must show adequate support for its
`
`findings on the scope of the field of endeavor in the application's written
`
`description and claims, including the structure and function of the
`
`invention.”) (emphasis added).
`
`Patent Owner cites to In re Klein to support its proposition that an expert
`
`must limit the field of endeavor of a patent to art meeting the claim limitations. Id.
`
`Patent Owner’s reliance is misplaced. Klein discusses the alternative test for
`
`analogous art – whether a piece of art in another field of endeavor is still analogous
`
`art because it is reasonably pertinent to the particular problem with which the
`
`inventor is involved.” 647 F.3d 1343, 1348 (Fed. Cir. 2011).
`
`VI. Conclusion
`
`For the foregoing reasons, the Board should deny Patent Owner’s Motion to
`
`Exclude Evidence.
`
`
`
`
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`
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`13
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`
`
`Respectfully submitted,
`
`Date: August 14, 2014
`
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`
`/Daniel W. McDonald/
`Daniel W. McDonald, Reg. No. 32,044
`Attorneys for Petitioner Cardiocom
`
`
`
`
`
`14
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`The undersigned hereby certifies that a copy of the foregoing
`
`PETITIONER’S RESPONSE TO PATENT OWNER’S MOTION TO EXCLUDE
`
`EVIDENCE has been served on August 14, 2014, by email on counsel of record
`
`for the patent owner at the following name and address:
`
`Don Daybell (ddaybell@orrick.com)
`Davin M. Stockwell (dstockwell@orrick.com)
`Bas de Blank (basdeblank@orrick.com)
`Lillian Mao (lmao@orrick.com)
`BoschvCardiocom-IPRServiceList@orrick.com
`D2DPTABDocket@orrick.com
`ORRICK, HERRINGTON, &
`SUTCLIFFE LLP
`2050 Main St., Suite 1100
`Irvine, CA 92614
`Tel: 949-567-6700
`Fax: 949-567-6710
`
`
`
`
`Respectfully submitted,
`MERCHANT & GOULD P.C.
`P.O. Box 2903
`Minneapolis, Minnesota 55402-0903
`(612) 332-5300
`
`
` / Daniel W. McDonald /
`Daniel W. McDonald (Lead Counsel)
`USPTO Reg. No.: 32,044
`
`
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`
`
`Date: August 14, 2014
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`1
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