`
`
`
`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 REPLY IN SUPPORT OF
`MOTION TO EXCLUDE EVIDENCE
`
`
`
`
`
`Case IPR2013-00468
`Patent No. 7,516,192
`
`I.
`
`Introduction
`
`Patent Owner’s Opposition to Petitioner’s motion to exclude suffers a fatal
`
`flaw in that Patent Owner can not satisfy its burden of making a prima facie
`
`showing of a nexus between its proposed secondary considerations evidence and
`
`the claimed invention. Moreover, the Demaco case on which Patent Owner relies
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`so heavily requires that “the patentee show[s] both that there is commercial
`
`success, and that the thing (product or method) that is commercially successful is
`
`the invention disclosed and claimed in the patent.” Opp. at 5 (emphasis added).
`
`Here, Patent Owner and its expert Dr. David fails to show that the Health Buddy
`
`practiced the claims of the ’192 patent and fails to show that it was successful.
`
`The best Patent Owner can do in its Opposition is cite vague references by
`
`Dr. David to “the scripting features that are claimed in the ’192 patent.” Opp. at 7.
`
`But Dr. David never explains how the scripting features work or how they match
`
`up to the invention disclosed and claimed in the patent. Moreover, Patent Owner’s
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`argument on scripting contradicts Dr. David’s representations that the simplicity of
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`the four-button design of the Health Buddy is what allegedly made it successful.
`
`Further, Patent Owner talks out of both sides of its mouth when discussing
`
`its use of hearsay evidence to argue in favor of secondary considerations. Patent
`
`Owner disclaims the use of out-of-court statements from Bosch personnel and the
`
`named inventor by stating, “[The challenged] evidence is not offered for the truth
`
`
`
`1
`
`
`
`
`
`of the matter asserted.” Opp. at 12 (emphasis added). Yet, as explained below,
`
`that’s exactly how Patent Owner uses them. This is improper under FRE 802, and
`
`the Board should exclude such hearsay statements.
`
`II. Argument
`A. The Patent Owner Bears The Burden Of Making A Prima Facie
`Case of a Nexus to Commercial Success Under the Proper Legal
`Analysis.
`
`Even under the most patentee-friendly case law cited by Patent Owner, the
`
`legal standard for secondary considerations evidence requires the patentee to first
`
`make a prima facie case that “there is commercial success, and that the thing
`
`(product or method) that is commercially successful is the invention disclosed and
`
`claimed in the patent.” Opp. at 5 (quoting Demaco Corp. v. F. Von Langsdorff
`
`Licensing, Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988)). Moreover, more recent
`
`case law not cited by Patent Owner requires that Patent Owner also show that any
`
`alleged commercial success is tied to claimed features, and not to features found in
`
`the prior art. Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1312-13 (Fed. Cir.
`
`2006). 1
`
`
`1 Plaintiff’s explanation of the holding in Gnosis S.P.A. v. South Alabama Med.
`Sci. Found., IPR2013-00116, Paper 61 (P.T.A.B. Mar. 12, 2014), misstates the
`legal standard for proving obviousness. The Gnosis case stands only for the
`proposition that Petitioner bears the ultimate burden of proof on obviousness, not
`the burden of presenting evidence first on secondary considerations.
`2
`
`
`
`
`
`
`
`Patent Owner seeks to side step the legal standard for making its prima facie
`
`case by improperly arguing that Petitioner requires an “element-by-element”
`
`analysis of the secondary considerations evidence against the claimed invention.
`
`That is not Petitioner’s position. Rather, the case law requires Patent Owner to
`
`demonstrate that its products embody the claimed invention, whether it be through
`
`a claim-by-claim analysis or other means of proof.
`
`B. Dr. David Provides No Nexus Between the Alleged Evidence and
`the Claimed Invention.
`
`The Board should exclude Dr. David’s testimony regarding alleged
`
`secondary considerations because he failed to make a prima facie case of a nexus.
`
`First, Dr. David failed to show that the Health Buddy or T-400 products embody
`
`the claimed inventions, as required by Demaco and Ormco. Dr. David was told,
`
`and simply assumed, that the Health Buddy product embodies the claims of the
`
`’192 patent. Ex. 2007 ¶73 (“I understand that the Bosch Health Buddy product
`
`practiced each of the challenged claims of the ’192 Patent.”). He provides no
`
`further analysis. For example, Dr. David only states that the Health Buddy system
`
`uses scripts, but never discusses the content or creation of its alleged script system
`
`– key points of contention with regard to the ’192 patent. Similarly, Patent Owner
`
`has argued that the cited prior art does not disclose a data merge program as taught
`
`in the ’192 patent claims. See Resp. at 38-40. But Dr. David offers no testimony or
`
`other evidence that the Health Buddy uses a script generator at all, let alone the
`
`
`
`3
`
`
`
`
`
`data merge program claimed in the ’192 patent. See Ex. 2007 ¶¶70-110.2
`
`Second, Dr. David was told, and simply assumes, that the Health Buddy was
`
`commercially successful. Ex. 2007 ¶76 (“I understand that the Health Buddy
`
`product was a commercial success when it was released.”). Dr. David then simply
`
`repeats various things he was told or read regarding the Health Buddy’s market
`
`introduction and subsequent sales – but without discussing any particulars of sales
`
`numbers, profits, or any other commercial factors. Any one of these flaws is fatal.
`
`C.
`
`Patent Owner’s Hearsay Should Not be Used to Prove the Truth
`of the Matter Asserted.
`
`Patent Owner’s Opposition states that the hearsay statements from Bosch
`
`personnel and the named inventor relied upon in Paragraphs 79, 82, 88, 91, 95-96,
`
`103, 104, 106, 107, and 109 of Dr. David’s declaration (Ex. 2007) are “not offered
`
`for the truth of the matter asserted.” Opp. at 12. Thus, there appears no dispute that
`
`the Board should not admit these statements for the truth of the matter asserted3.
`
`
`2 Realizing that its secondary considerations evidence does not meet the prima
`facie case threshold, Patent Owner turns to red herring arguments that Petitioner
`did not first raise secondary considerations in its initial petition (Opp. at 2-5) and
`that Dr. Stone’s agreement that a market existed for remote monitoring constituted
`long-felt-need. These arguments have no bearing on whether Patent Owner’s
`purported secondary consideration evidence passes muster. Patent Owner’s
`remaining arguments lack merit.
`
`3 Patent Owner’s footnote 3 argues that certain exhibits are exceptions to hearsay
`based on publication. Opp. at 13. Petitioner does not concede that these exhibits
`are exceptions, but objects to Patent Owner’s use of the hearsay-within-hearsay
`from those exhibits, such as interview statements by the inventor.
`4
`
`
`
`
`
`
`
`Plaintiff’s Opposition, however, shows that it is using the out-of court
`
`statements for the truth of the matter. For example, Patent Owner cites Paragraph
`
`79 of Dr. David’s declaration as evidence that hospitals and pharmacies adopted
`
`usage of the Health Buddy. Opp. at 11. Dr. David, however, relies on hearsay
`
`statements from “Bosch personnel” for the truth of this proposition.
`
`Patent Owner argues that such evidence is proffered for a non-hearsay use
`
`because “it is cited in connection with secondary consideration factors” and “these
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`factors turn on public recognition of the claimed inventions…” Opp. at 12.4 That is
`
`wrong. Dr. David uses the statements about hospitals and pharmacies to show
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`commercial success, not public recognition of the Health Buddy. Id. Similarly, Dr.
`
`David’s statements about the VA RFP are used to show copying, not merely
`
`market awareness of the VA’s requirements. Id. These are improper uses of out-of-
`
`court statements that should be excluded from use as direct evidence.
`
`III. Conclusion
`
`For the foregoing reasons, the Board should exclude Exhibits 2010-2057 and
`
`paragraphs 70-110 of Exhibit 2007.
`
`
`4 Patent Owner’s reliance Hynix Semiconductor Inc. v. Rambus Inc., No. C-00-
`20905 RMW, 2009 WL 112834, at *14 (N.D. Cal. Jan. 16, 2009) is misplaced.
`The Hynix case had a specific application to “praise by others” because it does not
`matter whether the praising statements are factually true – only that some other
`party said them. See id. The Hynix rationale is inapplicable to other secondary
`consideration factors such as commercial success, where Patent Owner must show
`that the Health Buddy was actually successful.
`5
`
`
`
`
`
`
`
`Respectfully submitted,
`
`Date: August 21, 2014
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Daniel W. McDonald/
`Daniel W. McDonald, Reg. No. 32,044
`Attorneys for Petitioner Cardiocom
`
`
`
`
`
`6
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing
`
`PETITIONER’S REPLY IN SUPPORT OF MOTION TO EXCLUDE
`
`EVIDENCE has been served on August 21, 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
`
`
`
`
`
`
`
`
`
`
`
`Date: August 21, 2014
`
`
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`1
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