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 FOR OBSERVATION REGARDING CROSS-
`EXAMINATION OF REPLY WITNESS DR. ROBERT STONE
`
`
`
`
`
`
`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 FOR OBSERVATION REGARDING CROSS-
`EXAMINATION OF REPLY WITNESS DR. ROBERT STONE
`
`
`
`
`
`
`
`Case IPR2013-00468
`Patent 7,516,192
`
`
`
`Pursuant to the Board’s January 16, 2014 Scheduling Order (Paper 22),
`
`Petitioner Cardiocom, LLC (“Cardiocom”) provides the following response to
`
`Patent Owner’s Motion For Observation Regarding Cross-Examination of Reply
`
`Witness Robert T. Stone (Paper 58).
`
`As the Board stated in this action, the purpose of observations is to “draw
`
`the Board’s attention to relevant cross-examination testimony of a reply witness,
`
`since no further substantive paper is permitted after the reply.” Paper 22 at 4.
`
`Patent Owner, however, improperly uses the observations as a vehicle to
`
`supplement the arguments in its Patent Owner Response. Cardiocom objects to this
`
`misuse of the observations. See PTAB Trial Practice Guide, 77 Fed. Reg. 48756,
`
`48768 (“An observation (or response) is not an opportunity to raise new issues, re-
`
`argue issues, or pursue objections.”).
`
`Further, as discussed in the individual responses below, Patent Owner’s
`
`observations either are redundant in view of Dr. Stone’s Reply Declaration, or
`
`reach unwarranted inferences from the cited testimony of Dr. Stone in view of
`
`other testimony of Dr. Stone cited herein that has either been omitted or ignored by
`
`Patent Owner.
`
`Opinion as to Claims 11, 12, 29 and 30
`
`1.
`
`Response to Observation 1 – Patent Owner’s observation is flat wrong
`
`in claiming that Dr. David’s reply declaration does not provide any opinions that
`
`1
`
`
`
`Case IPR2013-00468
`Patent 7,516,192
`
`Wright teaches the additional limitations of dependent claims 11, 12, 29 and 30 of
`
`the ’192 patent. Dr. Stone’s reply declaration (Ex. 1022) specifically states in
`
`paragraphs 161-162 that Wright in combination with Goodman teaches all of the
`
`limitations of claim 11, including that Wright teaches the additional limitation of
`
`“the personal data related to the individual is stored in a look-up table.” Similarly,
`
`paragraph 163 of Dr. Stone’s reply declaration states that the limitations of claim
`
`12 are taught by Wright and Goodman. With respect to claims 29-30, Patent
`
`Owner acknowledges that those claims teach the same additional limitations as
`
`claims 11-12, respectively. Paper 58 at 1. Paragraphs 180-181 of Dr. Stone’s
`
`reply declaration contain his opinion that the limitations of claims 29-30 are taught
`
`by Goodman and Wright and incorporates by reference his earlier analysis of how
`
`the claim limitations are taught, including his analysis of the limitations of claims
`
`11-12 in paragraphs 161-163 of his declaration. Patent Owner is aware of all of
`
`these paragraphs in Dr. Stone’s reply declaration, even if he did not specifically
`
`cite them during his deposition.
`
`Missing Claim Limitations
`
`2.
`
`Response to Observation 2 – Patent Owner’s observation fails to cite
`
`to the entirety of Dr. Stone’s testimony on the “input command” required by
`
`claims 1 and 20 of the ‘192 patent. Dr. Stone testified that one of ordinary skill in
`
`the art would understand Wright to teach the use of an input command in script
`
`2
`
`
`
`Case IPR2013-00468
`Patent 7,516,192
`
`programs, even if the information in Table 3 of Wright is not specifically about
`
`input commands. In Ex. 2069, at 1441:13-1443:6, Dr. Stone testified:
`
`Q. In paragraph 97, there’s a sentence that starts with the page
`-- right on page 45 that starts furthermore. It runs over on page
`46. Do you see that?
`
`A. I see that.
`
`Q. What’s your understanding of what that sentence means?
`
`MR. de BLANK: Objection to the extent it’s soliciting
`opinions beyond that set forth in the report.
`
`A: Wright teaches that scripts are responsible for walking the
`user through the entire form and providing interactive feedback.
`When you’re walking through the -- the user through a form,
`you’re walking him up to the point where you’re waiting for
`input from the user, and you are also displaying things to the
`user as he walks through the form. He’s not -- not necessarily
`especially with a smaller device that whole form might not
`appear on a single page, so it’s being fed information displayed
`to him, and he is providing inputs back as a result of how the
`script is giving commands and being interactive.
`
`BY MR. BLAKE: Q. What would one of ordinary skill in the
`art do to implement a system such that it would be about to
`receive interactive feedback?
`
`MR. de BLANK: Objection to the extent it’s outside the scope
`of the report and outside the scope of the cross-examination.
`
`A: Every software engineer would look to the commands for
`the particular script language and see which ones cause a
`message to be displayed and which ones would allow an input
`from the various types of devices, whether it’s a touch screen,
`whether it’s a mouse, whether it’s keyboard or whether it’s
`buttons, soft keys at the side of a display.
`
`3
`
`
`
`Case IPR2013-00468
`Patent 7,516,192
`
`
`
`BY MR. BLAKE: Q. Would one of ordinary skill in the art
`know how to implement the input command of Claim 1 of the
`’192 patent as of the time of the alleged invention in that
`patent?
`
`MR. de BLANK: Same objections.
`
`A: Certainly.
`
`See also Ex. 2069 at 1439:16-1440:25; Ex. 1022 at ¶¶ 96-98.
`
`3.
`
`Response to Observation 3 – Patent Owner’s observation
`
`mischaracterizes Dr. Stone’s deposition testimony about the “script generator for
`
`generating the generic script programs” recited in claim 17 of the ’192 patent. Dr.
`
`Stone testified that Wright discloses a computerized forms creation component that
`
`renders obvious the claimed script generator of claim 17. In Ex. 2069, at 1457:14-
`
`1458:21, Dr. Stone testified:
`
`
`BY MR. BLAKE: Q. In paragraph 113 there’s a reference to a
`forms creation program. Do you see that?
`
`A: That’s correct.
`
`Q. What do you understand that to mean?
`
`MR. de BLANK: Sorry. Objection. Outside the -- seeking an
`opinion outside the scope of the report.
`
`A: Wright’s forms creation program was a program that was
`written in script according to Wright in his disclosure, and it
`was utilized to create customized forms which incorporated
`script programs within those customized forms.
`
`4
`
`
`
`Case IPR2013-00468
`Patent 7,516,192
`
`
`
`BY MR. BLAKE: Q. Do you recall being asked questions by
`Bosch’s counsel with respect to this forms creation program as
`disclosed in paragraph 113?
`
`A. Yes.
`
`Q. Do you recall being asked questions about Dr. David’s
`position on the fact that a script generator computerized
`component by Bosch’s counsel?
`
`A. Yes.
`
`Q. The forms creation program that you were questioned upon
`by Bosch’s counsel, how is that implemented?
`
`A. It’s a computerized component --
`
`MR. de BLANK: Objection to the extent it’s seeking a new
`opinion beyond that set forth in the report.
`
`A: It’s a computer software component that was written in
`script program according to Wright. Sorry. Written in script
`language according to Wright.
`
`Dr. Stone also testified that a human is responsible for selecting the information
`
`that goes into both Wright’s computerized forms creation component and the script
`
`generator of claim 17. Ex. 2069 at 1456:22-1457:13. Thus, Patent Owner’s
`
`observation that a human selects the information to go into Wright’s computerized
`
`forms creation component does not differentiate it from the limitations of claim 17.
`
`This is consistent with the analysis in Dr. Stone’s reply declaration that claim 17 is
`
`obvious in view of Wright. Ex. 1022 at ¶ 113.
`
`5
`
`
`
`Case IPR2013-00468
`Patent 7,516,192
`
`
`4.
`
`Response to Observation 4 – Patent Owner’s observation fails to cite
`
`all of Dr. Stone’s testimony about the claimed “insert commands” of claim 19 of
`
`the ’192 patent. Dr. Stone specifically testified that the “New Field” command of
`
`Wright discloses an insert command in a generic script program to one of ordinary
`
`skill in the art. In Ex. 2069, at 1238:25-1239:12 and 1239:22-1240:19, Dr. Stone
`
`testified:
`
`BY MR. de BLANK: Q. Okay. So your argument is that
`Wright would render obvious the limitations of Claim 19 of the
`’192 patent, not that they expressly or -- expressly or inherently
`teaches it?
`
`A. I want to take a quick look at Wright.
`
`
`***
`
`
`A: Right. And as I previously pointed to the new field, is
`inserting a new field into a previously existing form as
`described in Wright’s forms creation operations. So I’m going
`to stand by my original opinion that that’s the equivalent.
`
`Id. at 1238:25-1239:12.
`
`BY MR. de BLANK: Q. You understand that to mean the
`insert -- you understand that to mean that the insert commands
`have to be part of the generic script program; correct?
`
`
`***
`
`
`A: I do.
`
`BY MR. de BLANK: Q. Okay. So the new field command
`that you’re referring to is not part of the generic script program
`as described in Wright; correct?
`
`6
`
`
`
`Case IPR2013-00468
`Patent 7,516,192
`
`
`
`
`***
`
`
`A: Well, it’s a command – a generic -- sorry. The generic
`script program comprises one or more insert commands
`specifying the type of personal data to be inserted by the data
`merge program. The very existence of a message asking the
`user to respond and specifying what kind of response to give as
`described in some of the forms is specifying the type of data to
`be inserted into the data merge program, and we start off with a
`generic script program that includes that. I may not have called
`it out exactly there, but it’s obvious that it is there.
`
`Id. at 12:39:22-1240:19; see also Ex. 1022 at ¶ 117.
`
`Dr. Stone’s Understanding of Analogous Art
`
`5.
`
`Response to Observation 5 – Patent Owner’s observation makes
`
`improper inferences and fails to cite other testimony from Dr. Stone that shows he
`
`had the proper understanding regarding what art may be combined for purposes of
`
`determining obviousness. In the cited testimony, Dr. Stone refers to considering
`
`“reasonably pertinent” art in addition to “analogous art.” Dr. Stone is clearly
`
`referring to the fact that art that is either in the same field of endeavor or
`
`reasonably pertinent to the problem addressed by the inventor may be analogous
`
`art that is combined for obviousness purposes. See In Re Bigio, 381 F.3d 1320,
`
`1325 (Fed. Cir. 2004). Moreover, in Exhibit 2069, at 1373:2-21, Dr. Stone
`
`testified:
`
`Q. Looking at paragraph 24 of your new ’469 declaration, the
`third sentence reads, I understand that for a reference to be used
`
`7
`
`
`
`Case IPR2013-00468
`Patent 7,516,192
`
`
`to show a claim is obvious, the reference must be analogous art
`to the claimed invention.
`
`A. I do.
`
`
`Q. What’s your understanding as to whether or not that’s a
`requirement of the obviousness analysis?
`
`MR. de BLANK: Objection form and to the extent it seeks a
`new opinion not set forth in the report and to the extent it’s
`outside the scope with respect to ’469 patent.
`
`A: It says specifically I understand that for a reference to be
`used to show that a claim is obvious, the reference must be
`analogous art to the claimed invention, so that’s my
`understanding what it means.
`
`Q. Do you agree with it?
`
`A. Yes.
`
`The same legal methodology applied to Dr. Stone’s analysis of the obviousness of
`
`the claims of the ’192 patent. See Ex. 1022 at ¶ 28. Dr. Stone also testified as to
`
`his understanding of how a person of ordinary skill in the art can determine if prior
`
`art is analogous (id. at 1374:4-1378:4) and that he applied his understanding of
`
`analogous art when analyzing the obviousness of the claims of the ’192 patent (id.
`
`at 1378:24-1379:2). This testimony is relevant because it shows that Dr. Stone
`
`applied the correct legal standard on analogous art. See Bigio, 381 F.3d at 1325;
`
`see also Exhibit 1022 at ¶ 28 and ¶¶ 189-201.
`
`8
`
`
`
`Case IPR2013-00468
`Patent 7,516,192
`
`
`6.
`
`Response to Observation 6 – Patent Owner’s observation
`
`misconstrues Dr. Stone’s testimony and fails to cite all of the relevant testimony
`
`from Dr. Stone on the fact that he did consider Wahlquist to be analogous art to the
`
`claimed invention of the ’192 patent. Dr. Stone’s testimony is fairly read that
`
`Wahlquist is analogous art either because it is in the same field of endeavor or
`
`because it is reasonably pertinent to the problem addressed by the inventor.
`
`Further, in Exhibit 2069, Dr. Stone testified:
`
`Q. Okay. The Wahlquist patent is not in the field of remotely
`monitoring an individual; correct?
`
`
`***
`
`
`A: Wahlquist is with the field of remote monitoring. It does
`not distinguish an individual versus a computer. One skilled in
`the art would understand that the principles and the techniques
`for remote monitoring could be very similar between those two
`concepts.
`
`Id. at 963:15-23; see also id. at 1145:6-23. This is relevant because it is consistent
`
`with Dr. Stone’s statement in his reply declaration that Wahlquist is analogous art
`
`under the proper legal standard. See Exhibit 1022 at ¶ 28 and ¶¶ 189-201.
`
`7.
`
`Response to Observation 7 – Patent Owner’s observation bases its
`
`criticism of Dr. Stone on an erroneous legal premise and fails to cite all of the
`
`relevant testimony from Dr. Stone about his determination of the field of endeavor
`
`of the claimed invention in a patent. The In re Klein case cited by Patent Owner
`
`9
`
`
`
`Case IPR2013-00468
`Patent 7,516,192
`
`does not preclude consideration of the entire disclosure of the patent when
`
`determining the field of the invention. 647 F.3d 1343 (Fed. Cir. 2011). Indeed,
`
`consideration of the specification is required. See In Re Bigio, 381 F.3d at 1325
`
`(one skilled in the art 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.”).
`
`Moreover, in Exhibit 2069, Dr. Stone testified:
`
`BY MR. BLAKE: Q. And do you have an understanding when
`it says field of endeavor of the claimed invention as to how one
`of ordinary skill in the art should determine the field of
`endeavor?
`
`MR. de BLANK: Same objection. Leading.
`
`A: Well, this is saying of the claimed invention, so you would
`have to look at the claims of the invention to help you
`understand the field of endeavor in that particular portion of it.
`But there’s a -- even if it’s not in the same field of endeavor as
`the claimed invention, if it’s -- if the – it’s pertinent to the
`problem that's faced by the inventor.
`
`Id. at 1375:8-20 see also id. at 962:23-963:3 (explaining Dr. Stone’s analysis in
`
`defining the field of endeavor with respect to the ‘186 patent) and 1140:6-23 (Dr.
`
`Stone “applied the same legal principles [] with respect to the ‘192 patent” as it did
`
`for the ‘186 patent). This is relevant because it demonstrates that Dr. Stone
`
`followed the proper legal standard in determining the field of endeavor of the
`
`10
`
`
`
`Case IPR2013-00468
`Patent 7,516,192
`
`claimed invention of the ’192 patent. It was proper for him to review the claims,
`
`specification and figures of the ’192 patent in determining the field of endeavor.
`
`The Term “Database”
`
`8.
`
`Response to Observation 8 – Patent Owner’s observation fails to cite
`
`relevant testimony from Dr. Stone explaining that the definition of database in his
`
`reply declaration is a reply to an argument raised by Patent Owner’s expert Dr.
`
`David in support of Patent Owner’s Response. Dr. David’s declaration argues that
`
`Goodman does not teach the database recited in the claims of the ’192 patent. See,
`
`e.g., Exhibit 2007 at ¶¶ 125-131. In Exhibit 2069, Dr. Stone testified that the
`
`analysis of database in his reply declaration was in response to this position taken
`
`by Dr. David:
`
`Q. Your original declaration does not provide that construction
`for the term “database”?
`
`A. That’s correct because we had no -- we found it incredulous
`to try to say that that data was not stored in a database because
`it was being stored in the computer, so now we’re having to
`show what a database truly is. It’s a response. It was not in the
`original -- again, we’re back to my original assertion of who
`one skilled in the art would be. If one has experience with
`computer networks, one would understand what a database is,
`and one would not have alleged that there was no database. I
`could recount multiple databases that have to be on virtually
`every computer. One skilled in the art would know that and
`would not have to say, Oh, there’s no database there. To me
`it’s a foolish statement.
`
`Id. at 1112:2-18.
`
`11
`
`
`
`Case IPR2013-00468
`Patent 7,516,192
`
`
`Q. And in response to Dr. David’s argument, you set forth for
`the first time a definition of database as an electronically stored
`collection of data?
`
`A. I do.
`
`
`Id. at 1188:9-12. Further, Dr. Stone testified that his definition of database came
`
`from a dictionary that would have been available to anyone of ordinary skill in the
`
`art at the time of the invention. Id. at 1112:25-1113:19; 1114:5-13. Dr. Stone’s
`
`definition of database thus was not untimely, but rather was directly responsive to
`
`new arguments raised by Dr. David and Bosch in their response, and Patent Owner
`
`already had its chance to comment on whether the prior art teaches the claimed
`
`database. See Calderon v. Experian Info. Solutions, Inc., 290 F.R.D. 508, 515 (D.
`
`ID 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).
`
`9.
`
`Response to Observation 9 – Patent Owner’s observation on the
`
`testimony in Exhibit 2069, at 1191:11-21, takes Dr. Stone’s testimony about the
`
`definition of database out of context. A proper reading of Dr. Stone’s testimony
`
`shows that he is agreeing only to the last part of the question asked of him – that
`
`12
`
`
`
`Case IPR2013-00468
`Patent 7,516,192
`
`“[a]nything stored on a computer in a file is in a database.” Id. In context, he did
`
`not agree that that the use of the term “database” in the claims is “superfluous” or
`
`“redundant,” as Patent Owner argues. In fact, Patent Owner cites no particular
`
`claim language which is even at issue in this question, because there is none. Dr.
`
`Stone’s testimony from two pages earlier in his deposition, which was not cited by
`
`Patent Owner, puts Dr. Stone’s position in proper context:
`
`Q. This is a -- the opinion is set forth in paragraph 101 that
`every major operating system both now and at the time of the
`alleged invention uses a database to store files is not one that
`you included in your original declaration?
`
`A. No. Just as I do not indicate that the letters A, B and C are a
`database incorporating the alphabet. One who uses computers
`and files knows that the file system is a database that has all of
`the characteristics of the files accessible, searchable or at least
`pertinent characteristics of the files accessible and searchable,
`and that’s just an example of a computer that stores files and
`it’s operating system is a database, so we’ve gone ahead and
`stated it. If I need to supply evidence for that beyond what one
`skilled in the art would understand, I’d be happy to do so. But
`we're just being explicit there.
`
`Id. at 1189:7-24. Again, Dr. Stone testified that his definition of database is the
`
`plain meaning of the term consistent with a standard dictionary definition that
`
`would have been available to anyone of skill in the art at the time of the invention.
`
`Id. at 1112:25-1113:19; 1114:5-13.
`
`10. Response to Observation 10 – Patent Owner’s observation does not
`
`cite the complete testimony of Dr. Stone with respect to the distinctions between
`
`13
`
`
`
`Case IPR2013-00468
`Patent 7,516,192
`
`the look-up table and databases claimed in claims 11-12 of the ’192 patent. In
`
`Exhibit 2069, at 1195:5-24, Dr. Stone testified:
`
`BY MR. de BLANK: Q. Okay. So your understanding of
`Claim 12 would require that a lookup table is part but not the
`entire database?
`
`
`***
`
`
`A: I have stated -- sorry. I have stated that a lookup table is
`consistent with the definition of what a database is and that a
`database can be part of another base. So there is no
`inconsistency in those two.
`
`BY MR. de BLANK: Q. I’m trying to understand what your
`understanding of Claim 12 is. And your understanding of
`Claim 12 would be that the lookup table is part of -- would
`require the lookup table to be part of one or more databases but
`not constitute the entirety of the databases. Is it the part of
`distinction that you’re drawing or something else?
`
`
`
`A: That’s the distinction I’m drawing, yes.
`
`Dr. Stone stated in this testimony that the look-up table claimed in claim 11 of the
`
`***
`
`’192 patent would itself be a database, but the look-up table could also be part of
`
`one or more other databases because a database can be part of another database.
`
`See also id. at 1194:7-1195:4. Thus, the limitations of claim 12 are distinct from
`
`the limitations of claim 11, and they are not redundant under Dr. Stone’s
`
`understanding.
`
`
`
`14
`
`
`
`Case IPR2013-00468
`Patent 7,516,192
`
`The Term “Script Program”
`
`11. Response to Observation 11 – Patent Owner’s observation on the
`
`construction of the term “script program” is irrelevant because Dr. Stone testified
`
`that he adopted the Board’s construction of “script program” in analyzing the
`
`obviousness of the ’192 patent’s claims in his reply declaration, and that adopting
`
`the Board’s construction did not change the opinion on obviousness set forth in his
`
`original declaration:
`
`Q. And let’s see. In paragraph 17, you state that the Board
`construed the term “script program” as, quote, a program that
`contains a set of instructions capable of being executed and
`interpreted; correct?
`
`A. I see that.
`
`Q. Okay. And that’s -- you apply the Board’s -- sorry. You
`apply the Board’s construction in rendering your opinions with
`respect to the ’186 patent?
`
`A. That is correct.
`
`Q. And the term “script program” appears in the claims of the
`’192 and the claims of the ’469 patent also?
`
`
`***
`
`
`A: I would have to be sure and correlate the numbers, but I
`believe you’re correct.
`
`BY MR. de BLANK: Q. Okay. And you’re not applying
`different constructions to the term “script program” to different
`patents?
`
`
`15
`
`
`
`Case IPR2013-00468
`Patent 7,516,192
`
`
`A. I am not.
`
`Exhibit 2069 at 1005:16-1006:11.
`
`Q. All right. Now, looking at your July 11, 2013, construction
`script program, there’s no reference to requiring the program to
`be read by an interpreter in order to be executed?
`
`
`***
`
`
`A: My reply declaration adopted the Board’s construction of
`the term rather than trying to stay by my previous construction.
`It does not change the opinions. It does not change the effect of
`the analysis.
`
`Q. My question, though, to you was, looking at your July 11th,
`2013, declaration, there’s no reference to requiring the program
`to be read by an interpreter in order to be executed; correct?
`
`A. There’s no reference in there. I’m back to the point one
`skilled in the art understands how script programming works.
`
`Id. at 1028:2-22. Moreover, Dr. Stone did not agree that the Board’s construction
`
`of “script program” was overbroad in light of constructions proposed in completely
`
`separate inter partes review proceedings:
`
`Q. Okay. Well, is it a reasonable interpretation of the opinions
`set forth in paragraphs 64 and 65 that you believe the Board’s
`construction of the term “script program” used in the ’186 and
`’192 and ’469 IPR petitions is overbroad?
`
`
`
`A: I don’t believe the Board’s -- sorry. The Board’s
`construction does not confuse one skilled in the art with regard
`to what a script program is.
`
`
`***
`
`16
`
`
`
`Case IPR2013-00468
`Patent 7,516,192
`
`
`Q. Okay. My question to you is much more specific, and it’s
`simply is it a reasonable interpretation of the opinions set forth
`in paragraphs 64 and 65 that you believe the Board’s
`construction of the term “script program” used in the ’186, ’192
`and ’469 IPR petitions is overbroad?
`
`
`***
`
`
`A: I am not going to state that the Board’s position was
`overbroad because I understand what it means.
`
`Id. at 1042:12-1043:6; see also id. at 1041:14-1042:11. Further, Dr. Stone testified
`
`that his analysis of the obviousness of the claims of the ’192 patent would not
`
`change if the construction of “script program” from the other inter partes review
`
`proceedings were adopted. Id. at 1047:25-1048:17. Thus, Dr. Stone’s opinions are
`
`properly based on the Board’s construction of script programming and remain the
`
`same if his alternative construction is used.
`
`Secondary Considerations of Non-Obviousness
`
`12. Response to Observation 12 – Patent Owner’s observation imposes an
`
`improper burden on Dr. Stone to address Patent Owner’s evidence of purported
`
`secondary considerations before he was aware of it. To the contrary, it is proper
`
`for Dr. Stone to respond to that evidence for the first time in response to Patent
`
`Owner’s presentation of the secondary considerations evidence. 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
`
`17
`
`
`
`Case IPR2013-00468
`Patent 7,516,192
`
`patent owner failed to establish a nexus between the allegedly successful device
`
`and the claims of the patent). Moreover, Patent Owner fails to cite all of the
`
`relevant testimony from Dr. Stone on his secondary considerations analysis. Dr.
`
`Stone testified that he was aware he should take secondary considerations into
`
`account as part of his obviousness analysis, and that he did so. In Exhibit 2069, at
`
`1344:22-1345:23, Dr. Stone testified:
`
`BY MR. BLAKE: Q. Do you have an understanding of
`whether or not your analysis of the obviousness of patent
`claims should take into account secondary consideration?
`
`A. Yes. I should take into account some secondary
`considerations, I believe. But obviousness, those could relate to
`it if there’s not overwhelming evidence I would say on the other
`side that it’s obvious.
`
`Q. If -- --
`
`A. I'm sorry. Go ahead.
`
`Q. Your reply declaration, the new declaration on the ’420
`patent, does it contain analysis of secondary considerations?
`
`A. I attempted to do so, but I could find no nexus to the
`elements of the claims.
`
`Q. And you made these attempts in response to contentions by
`Dr. David?
`
`A. That’s exactly where I made the analysis, and it was in
`response to Dr. David.
`
`
`18
`
`
`
`Case IPR2013-00468
`Patent 7,516,192
`
`
`Q. What role did your analysis of secondary considerations
`play in your determination of whether or not the claims of the
`patents were obvious?
`
`A. I attempted to determine whether or not there was a nexus to
`the claims based on the information that had been provided and
`information that I sought elsewhere and could find no such
`nexus.
`
`Dr. Stone further testified that information relevant to his secondary considerations
`
`analysis was not publicly-available to him at the time of his initial declaration, and
`
`he could only reply after Dr. David provided his analysis of secondary
`
`considerations:
`
`Q. Were any of the exhibits cited by Dr. David confidential or
`proprietary or unavailable to you before you began your work?
`
`A. Well, I certainly did not interview the people at Bosch with
`regard to it, and frankly I don’t know which of the claims of the
`-- the elements of the various claims that the device actually
`practiced, so it would be very difficult to perform that analysis
`until it’s provided by the patent owner, and since I’m doing
`this, then here it is.
`
`
`Id. at 783:16-784:1; see also id. at 1348:24-1350:10. Dr. Stone further testified
`
`that he reviewed Dr. David’s arguments on secondary considerations, and they did
`
`not change his conclusions on the obviousness of the patent claims. Id. at 1346:19-
`
`1347:14.
`
`13. Response to Observation 13 – Patent Owner incorrectly asserts that
`
`Dr. Stone agreed there was a long-felt need for the claimed inventions of the ’192
`
`19
`
`
`
`Case IPR2013-00468
`Patent 7,516,192
`
`patent. The testimony cited by Patent Owner states only that Dr. Stone believes a
`
`need for remote patient monitoring has existed from the 1970s until today. Ex.
`
`2069 at 835:23-836:7. That testimony does not state that there was a need for the
`
`specific claimed inventions of the ’192 patent or that the claimed inventions
`
`fulfilled the need for remote patient monitoring. Indeed, Dr. Stone explained in his
`
`reply declaration that other remote patient monitoring systems were on the market
`
`before and after the ’192 patent was filed. Ex. 1022 at ¶ 68.
`
`14. Response to Observation 14 – As with Observation No. 13, Patent
`
`Owner incorrectly implies in Observation No. 14 that Dr. Stone agreed there was a
`
`long-felt need that was fulfilled by the claimed inventions of the ’192 patent. The
`
`testimony cited by Patent Owner essentially asked if Dr. Stone found the exact
`
`invention claimed in a single reference—in effect, an anticipation argument. Ex.
`
`2069 at 837:3-20. Dr. Stone testified that he has not raised anticipation but sees
`
`evidence of the claimed invention in the prior art references; that is the very basis
`
`of his conclusion that the claimed inventions are obvious. It is disingenuous, and
`
`contrary to the law, for Patent Owner to argue that Dr. Stone’s testimony that he
`
`does not raise anticipation somehow means that the claimed invention per se met
`
`an unsolved need.
`
`15. Response to Observation 15 – Patent Owner’s observation on praise
`
`by others fails to cite relevant testimony in which Dr. Stone states his opinion that
`
`20
`
`
`
`Case IPR2013-00468
`Patent 7,516,192
`
`there has to be some nexus between the alleged praise and the claimed inventions
`
`of the ’192 patent for Dr. Stone to consider the praise as a secondary consideration.
`
`In Exhibit 2069, Dr. Stone testified:
`
`Q. You discount that evidence, however, saying that none of
`the examples of praise cited by Dr. David, for example, appear
`to be directed to the claimed inventions of the ’420, ’186 and
`’192 patents?
`
`A. I do.
`
`Q. That's your opinion.
`What do you think would be required in the praise for it to meet
`your standard, if that question makes sense? If not, then can I
`try to rephrase it.
`
`
`***
`
`
`A: They would have to address something that was new
`besides that it’s simple and easy to use, okay? Something that
`was novel that related to the claims of the patent.
`
`Id. at 839:6-20.
`
`Q. I think I did misspeak. I apologize. Thank you.
`In your opinion, would the praise have to refer to the patent in
`order for it to be evidence of secondary indicia of
`nonobviousness?
`
`A. I believe that it would have to at least relate to the novelty
`of the patent to be worthy of praise that indicates that it’s really
`a novel invention.
`
`Id. at 839:25-8408.
`
`Q. In your -- in forming your opinion on whether or not the
`awards and recognition cited by Dr. David constitutes praise by
`
`21
`
`
`
`Case IPR2013-00468
`Patent 7,516,192
`
`
`others, one of the indicia -- secondary indicia of
`nonobviousness, did you require that the praise reference
`specific language out of the asserted claims?
`
`MR. BLAKE: Objection to form.
`
`A: Not specific language, but there has to be a nexus to the
`claims.
`
`Id. at 840:22-841:5.
`
`16. Response to Observation 16 – Patent Owner’s observation about Dr.
`
`Stone’s testimony on the ghost-writing of articles about medical products misses
`
`the point. In Exhibit 2069, 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
