`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
`
`
`
`
`
`
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`Case IPR2013-00468
`Patent 7,516,192
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`
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`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
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`1
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`Patent 7,516,192
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`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
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`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
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`programs, even if the information in Table 3 of Wright is not specifically about
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`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.
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`
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`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.
`
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`
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`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.
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`5
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`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?
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`***
`
`
`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
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`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.
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`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
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`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
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`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
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`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
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`“[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
`
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`the look-up table and databases claimed in claims 11-12 of the ’192 patent. In
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`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.
`
`
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`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?
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`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.
`
`
`***
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`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.
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`Id. at 1042:12-1043:6; see also id. at 1041:14-1042:11. Further, Dr. Stone testified
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`that his analysis of the obviousness of the claims of the ’192 patent would not
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`change if the construction of “script program” from the other inter partes review
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`proceedings were adopted. Id. at 1047:25-1048:17. Thus, Dr. Stone’s opinions are
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`properly based on the Board’s construction of script programming and remain the
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`same if his alternative construction is used.
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`Secondary Considerations of Non-Obviousness
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`12. Response to Observation 12 – Patent Owner’s observation imposes an
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`improper burden on Dr. Stone to address Patent Owner’s evidence of purported
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`secondary considerations before he was aware of it. To the contrary, it is proper
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`for Dr. Stone to respond to that evidence for the first time in response to Patent
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`Owner’s presentation of the secondary considerations evidence. See, e.g., Vibrant
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`Media, Inc. v. General Elec. Co. IPR2013-00170, paper 56 at 27 (citing to patent
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`owner’s response and petitioner’s rebuttal arguments in reply while finding that
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`patent owner failed to establish a nexus between the allegedly successful device
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`and the claims of the patent). Moreover, Patent Owner fails to cite all of the
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`relevant testimony from Dr. Stone on his secondary considerations analysis. Dr.
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`Stone testified that he was aware he should take secondary considerations into
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`account as part of his obviousness analysis, and that he did so. In Exhibit 2069, at
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`1344:22-1345:23, Dr. Stone testified:
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`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.
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`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.
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`Dr. Stone further testified that information relevant to his secondary considerations
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`analysis was not publicly-available to him at the time of his initial declaration, and
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`he could only reply after Dr. David provided his analysis of secondary
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`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
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`that he reviewed Dr. David’s arguments on secondary considerations, and they did
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`not change his conclusions on the obviousness of the patent claims. Id. at 1346:19-
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`1347:14.
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`13. Response to Observation 13 – Patent Owner incorrectly asserts that
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`Dr. Stone agreed there was a long-felt need for the claimed inventions of the ’192
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`patent. The testimony cited by Patent Owner states only that Dr. Stone believes a
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`need for remote patient monitoring has existed from the 1970s until today. Ex.
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`2069 at 835:23-836:7. That testimony does not state that there was a need for the
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`specific claimed inventions of the ’192 patent or that the claimed inventions
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`fulfilled the need for remote patient monitoring. Indeed, Dr. Stone explained in his
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`reply declaration that other remote patient monitoring systems were on the market
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`before and after the ’192 patent was filed. Ex. 1022 at ¶ 68.
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`14. Response to Observation 14 – As with Observation No. 13, Patent
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`Owner incorrectly implies in Observation No. 14 that Dr. Stone agreed there was a
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`long-felt need that was fulfilled by the claimed inventions of the ’192 patent. The
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`testimony cited by Patent Owner essentially asked if Dr. Stone found the exact
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`invention claimed in a single reference—in effect, an anticipation argument. Ex.
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`2069 at 837:3-20. Dr. Stone testified that he has not raised anticipation but sees
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`evidence of the claimed invention in the prior art references; that is the very basis
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`of his conclusion that the claimed inventions are obvious. It is disingenuous, and
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`contrary to the law, for Patent Owner to argue that Dr. Stone’s testimony that he
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`does not raise anticipation somehow means that the claimed invention per se met
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`an unsolved need.
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`15. Response to Observation 15 – Patent Owner’s observation on praise
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`by others fails to cite relevant testimony in which Dr. Stone states his opinion that
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`there has to be some nexus between the alleged praise and the claimed inventions
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`of the ’192 patent for Dr. Stone to consider the praise as a secondary consideration.
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`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.
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`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.
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`Q. In your -- in forming your opinion on whether or not the
`awards and recognition cited by Dr. David constitutes praise by
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`others, one of the indicia -- secondary indicia of
`nonobviousness, did you require that the praise reference
`specific language out of the asserted claims?
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`MR. BLAKE: Objection to form.
`
`A: Not specific language, but there has to be a nexus to the
`claims.
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`Id. at 840:22-841:5.
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`16. Response to Observation 16 – Patent Owner’s observation about Dr.
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`Stone’s testimony on the ghost-writing of articles about medical products misses
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`the point. In Exhibit 2069, a