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 No. 7,516,192
`_____________________
`
`PATENT OWNER’S REPLY IN SUPPORT OF
`MOTION TO EXCLUDE EVIDENCE
`
`
`_____________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`CARDIOCOM, LLC
`Petitioner
`v.
`ROBERT BOSCH HEALTHCARE SYSTEMS, INC.
`Patent Owner
`_____________________
`CASE IPR2013-00468
`Patent No. 7,516,192
`_____________________
`
`PATENT OWNER’S REPLY IN SUPPORT OF
`MOTION TO EXCLUDE EVIDENCE
`
`
`
`Over the course of inter partes review, issues are supposed to be narrowed
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`and focused for trial. As the petitioner, Cardiocom bears the burden of proof (35
`
`U.S.C. § 316(e)) and was required to submit in its petition the evidence upon
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`which it intended to rely (35 U.S.C. § 312(a)(3)). Once the Board instituted
`
`review, Bosch submitted evidence and arguments showing why Cardiocom’s prior
`
`art did not invalidate the claims under review. Cardiocom was then entitled to a
`
`reply to respond to Bosch’s opposition. Cardiocom seeks to upend this orderly
`
`process by submitting for the first time in reply entirely new claim constructions,
`
`evidence, and arguments. This is improper as Bosch has no chance to respond.
`
`I.
`
`Cardiocom and Dr. Stone Withheld His Construction of “Database.”
`
`The most apparent example of Cardiocom’s sandbagging is its entirely new
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`construction for the claim term “database.” While Cardiocom was required to state
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`in its petition “[h]ow the challenged claim is to be construed” (37 C.F.R.
`
`§ 42.104(b)(3)), Cardiocom did not propose a construction of “database” and
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`merely argued that this limitation was met by the prior art. Bosch’s response
`
`proved that it was not, but neither Bosch nor its expert proposed a different
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`construction of “database.” Rather than reply to Bosch’s argument, Cardiocom
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`instead avoids it entirely by offering a new, legally improper, and significantly
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`overbroad construction of the term and then, relying entirely upon this new
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`construction, arguing the prior art met the newly construed database limitation.
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`-1 -
`
`
`
`Cardiocom’s new construction of database—which literally includes
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`“[a]nything stored on a computer in a file” (Ex. 2069, 1191:11-21)—is hopelessly
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`overbroad and inconsistent with the other claims. By presenting this construction
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`for the first time in its reply, Cardiocom seeks to deny Bosch the opportunity to
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`explain why the construction is improper. Indeed, Cardiocom specifically object to
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`Bosch having an opportunity to address this new construction. Resp., 10-11.
`
`Cardiocom’s argument that its previously-undisclosed construction is simply
`
`a response to Bosch’s arguments that the prior art does not disclose the “database”
`
`claimed in the ’192 patent is disingenuous. Resp., 9. Nothing in Bosch’s response
`
`required Cardiocom to posit a new claim construction, and the fact that it has done
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`so is a tacit admission that the prior art does not teach this limitation without an
`
`entirely new construction. Cardiocom’s effort to supplement the grounds raised in
`
`its petition based on new constructions is contrary to the Board’s rules and unfair
`
`to patent owners. Office Patent Trial Guide, 77 Fed. Reg. 48756, 48767 (Aug. 14,
`
`2012). At least ¶¶ 99-104, 121, 136, 142, and 215 of Ex. 1022 rely upon this new
`
`and improper construction of “database” and should be excluded. See Mot., 8.1
`
`II.
`
`Cardiocom Failed to Present Evidence of Secondary Considerations.
`
`Cardiocom also seeks to introduce new evidence and arguments about the
`
`1 Dr. Stone’s new opinions on “script program” should also be excluded for similar
`
`reasons. See Mot., 12-13.
`
`-2 -
`
`
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`secondary indicia of non-obviousness that should be stricken. Cardiocom and its
`
`expert, Dr. Stone, knew of the long-felt need and demand for the claimed
`
`inventions of the ’192 patent when Cardiocom filed its original petition. See Ex.
`
`2069, 835:23-836:7, 1302:24-1303:19; Ex. 1008, ¶¶ 12-13 (“pressures” addressed
`
`by invention existed “[l]ong before the ‘192 Patent”). Yet Cardiocom chose not to
`
`address such evidence in its petition, despite the Federal Circuit’s emphasis on the
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`importance of secondary considerations in the obviousness inquiry.
`
`In response to Cardiocom’s obviousness arguments, Bosch submitted
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`publicly available exhibits establishing secondary considerations of non-
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`obviousness. Cardiocom’s expert conceded that these documents were equally
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`available to Cardiocom. Ex. 2069, 784:2-9. Cardiocom is a player in the remote
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`health monitoring field, competes with Bosch, and was capable of identifying
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`secondary considerations evidence at the time of its petition. See Ex. 1020 ¶¶ 2-3.
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`Cardiocom does not offer any excuse for its decision to ignore secondary
`
`considerations evidence in its petition. Rather, Cardiocom argues it had no
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`affirmative obligation to disclose its arguments until its reply brief. Resp. 3-4.
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`Cardiocom is mistaken; such evidence of secondary considerations must always be
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`considered and Cardiocom was required to have raised it in the petition. See
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`Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1355 (Fed. Cir. 2013). Moreover,
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`Cardiocom bears the burden of production, and has offered no legitimate excuse
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`-3 -
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`
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`for failing to produce evidence regarding secondary considerations in its petition.
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`See Mot., 2. Having chosen not to address secondary indicia of non-obviousness,
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`Cardiocom cannot make rebuttal arguments on this issue in its reply. Doing so
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`denies Bosch the opportunity to respond and fails to meet Cardiocom’s burden of
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`production on the issue. Thus, Bosch respectfully requests that the Board exclude
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`Paragraphs 61-90 of Ex. 1022.
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`III.
`
`Dr. Stone’s Secondary Considerations Methodology is Unreliable.
`
`Cardiocom’s decision to withhold until its reply any evidence and argument
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`related to secondary indicia of non-obviousness is particularly prejudicial because
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`Cardiocom and its expert employ the wrong legal standard. This error of law
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`provides an independent basis to exclude Cardiocom’s untimely arguments.
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`As noted in Bosch’s motion, Cardiocom and its expert argue that each claim
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`must be mapped on an “element-by-element” basis to the secondary indicia of non-
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`obviousness. Mot., 5. This is wrong as a matter of law—while a showing of
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`nexus is required, an undefined “element-by-element” analysis is not part of this
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`showing. In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995). Moreover, by
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`withholding its view of secondary considerations until reply, Cardiocom seeks to
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`prevent Bosch from challenging its flawed methodology. See Resp., 8.
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`Fundamentally, Cardiocom still fails to provide case law supporting the
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`“element-by-element” claim chart test Dr. Stone relied upon in his new argument
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`-4 -
`
`
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`on non-obviousness. See Mot., 5. Cardiocom fails to acknowledge that Dr. David
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`provided unrebutted testimony that the Health Buddy practices the claimed
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`scripting features of the ’192 patent. See, e.g., Ex. 2007 ¶¶ 73, 94. Neither
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`Cardiocom nor Dr. Stone have articulated any reason why the Health Buddy does
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`not practice the claimed inventions. Dr. Stone’s criticism of Dr. David is therefore
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`not only unreliable because it is based on an incorrect legal standard, but it is also
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`founded on technicalities, rather than legitimate disputes.
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`IV.
`
`Dr. Stone’s Analysis of Analogous Art is Fundamentally Flawed.
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`Cardiocom lastly argues that Dr. Stone’s analysis of Wahlquist as analogous
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`art should not be excluded because he was permitted to consider the specification.
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`Resp., 12-13. Bosch does not dispute that one may consider the specification to
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`determine the proper scope of the claimed invention. Dr. Stone, however, testified
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`that, in considering the specification, he determined the field of endeavor of the
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`’192 patent to be even broader than what is actually claimed. Ex. 2069, 955:24-
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`956:12; 1140:6-23. This of course violates Federal Circuit law. In re Klein, 647
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`F.3d 1343, 1348 (Fed. Cir. 2011). Incorrect statements of law of this sort must be
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`excluded. Hebert v. Lisle Corp., 99 F.3d 1109, 1117 (Fed. Cir. 1996).
`
`Dated: August 21, 2014
`
`Respectfully submitted,
`
`By:
`
`/Don Daybell/
`Don Daybell, Reg. No. 50,877
`Attorney for Patent Owner Robert Bosch
`Healthcare Systems, Inc.
`
`-5 -
`
`
`
`CERTIFICATION OF SERVICE (37 C.F.R. § 42.6(e))
`
`The undersigned hereby certifies that the above-captioned PATENT
`
`OWNER’S REPLY IN SUPPORT OF MOTION TO EXCLUDE EVIDENCE was
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`served in its entirety on August 21, 2014, upon the following parties via electronic
`
`mail:
`
`Counsel for Petitioner
`
`Daniel W. McDonald
`Andrew J. Lagatta
`Merchant & Gould
`80 South 8th St., Suite 3200
`Minneapolis, MN 55402
`CardiocomIPR@merchantgould.com
`
`By:
`
`/Valerie Cloyd/
`Valerie Cloyd
`
`-6 -
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