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`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
`____________
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`CARDIOCOM, LLC
`Petitioner
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`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
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`
`
`
`
`Case IPR2013-00468
`Patent No. 7,516,192
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`I.
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`Introduction
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`Patent Owner’s Opposition to Petitioner’s motion to exclude suffers a fatal
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`flaw in that Patent Owner can not satisfy its burden of making a prima facie
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`showing of a nexus between its proposed secondary considerations evidence and
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`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
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`success, and that the thing (product or method) that is commercially successful is
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`the invention disclosed and claimed in the patent.” Opp. at 5 (emphasis added).
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`Here, Patent Owner and its expert Dr. David fails to show that the Health Buddy
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`practiced the claims of the ’192 patent and fails to show that it was successful.
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`The best Patent Owner can do in its Opposition is cite vague references by
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`Dr. David to “the scripting features that are claimed in the ’192 patent.” Opp. at 7.
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`But Dr. David never explains how the scripting features work or how they match
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`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.
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`Further, Patent Owner talks out of both sides of its mouth when discussing
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`its use of hearsay evidence to argue in favor of secondary considerations. Patent
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`Owner disclaims the use of out-of-court statements from Bosch personnel and the
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`named inventor by stating, “[The challenged] evidence is not offered for the truth
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`1
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`of the matter asserted.” Opp. at 12 (emphasis added). Yet, as explained below,
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`that’s exactly how Patent Owner uses them. This is improper under FRE 802, and
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`the Board should exclude such hearsay statements.
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`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.
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`Even under the most patentee-friendly case law cited by Patent Owner, the
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`legal standard for secondary considerations evidence requires the patentee to first
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`make a prima facie case that “there is commercial success, and that the thing
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`(product or method) that is commercially successful is the invention disclosed and
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`claimed in the patent.” Opp. at 5 (quoting Demaco Corp. v. F. Von Langsdorff
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`Licensing, Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988)). Moreover, more recent
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`case law not cited by Patent Owner requires that Patent Owner also show that any
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`alleged commercial success is tied to claimed features, and not to features found in
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`the prior art. Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1312-13 (Fed. Cir.
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`2006). 1
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`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
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`Patent Owner seeks to side step the legal standard for making its prima facie
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`case by improperly arguing that Petitioner requires an “element-by-element”
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`analysis of the secondary considerations evidence against the claimed invention.
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`That is not Petitioner’s position. Rather, the case law requires Patent Owner to
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`demonstrate that its products embody the claimed invention, whether it be through
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`a claim-by-claim analysis or other means of proof.
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`B. Dr. David Provides No Nexus Between the Alleged Evidence and
`the Claimed Invention.
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`The Board should exclude Dr. David’s testimony regarding alleged
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`secondary considerations because he failed to make a prima facie case of a nexus.
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`First, Dr. David failed to show that the Health Buddy or T-400 products embody
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`the claimed inventions, as required by Demaco and Ormco. Dr. David was told,
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`and simply assumed, that the Health Buddy product embodies the claims of the
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`’192 patent. Ex. 2007 ¶73 (“I understand that the Bosch Health Buddy product
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`practiced each of the challenged claims of the ’192 Patent.”). He provides no
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`further analysis. For example, Dr. David only states that the Health Buddy system
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`uses scripts, but never discusses the content or creation of its alleged script system
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`– key points of contention with regard to the ’192 patent. Similarly, Patent Owner
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`has argued that the cited prior art does not disclose a data merge program as taught
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`in the ’192 patent claims. See Resp. at 38-40. But Dr. David offers no testimony or
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`other evidence that the Health Buddy uses a script generator at all, let alone the
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`3
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`data merge program claimed in the ’192 patent. See Ex. 2007 ¶¶70-110.2
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`Second, Dr. David was told, and simply assumes, that the Health Buddy was
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`commercially successful. Ex. 2007 ¶76 (“I understand that the Health Buddy
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`product was a commercial success when it was released.”). Dr. David then simply
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`repeats various things he was told or read regarding the Health Buddy’s market
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`introduction and subsequent sales – but without discussing any particulars of sales
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`numbers, profits, or any other commercial factors. Any one of these flaws is fatal.
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`C.
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`Patent Owner’s Hearsay Should Not be Used to Prove the Truth
`of the Matter Asserted.
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`Patent Owner’s Opposition states that the hearsay statements from Bosch
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`personnel and the named inventor relied upon in Paragraphs 79, 82, 88, 91, 95-96,
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`103, 104, 106, 107, and 109 of Dr. David’s declaration (Ex. 2007) are “not offered
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`for the truth of the matter asserted.” Opp. at 12. Thus, there appears no dispute that
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`the Board should not admit these statements for the truth of the matter asserted3.
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`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.
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`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
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`Plaintiff’s Opposition, however, shows that it is using the out-of court
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`statements for the truth of the matter. For example, Patent Owner cites Paragraph
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`79 of Dr. David’s declaration as evidence that hospitals and pharmacies adopted
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`usage of the Health Buddy. Opp. at 11. Dr. David, however, relies on hearsay
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`statements from “Bosch personnel” for the truth of this proposition.
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`Patent Owner argues that such evidence is proffered for a non-hearsay use
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`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
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`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.
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`David’s statements about the VA RFP are used to show copying, not merely
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`market awareness of the VA’s requirements. Id. These are improper uses of out-of-
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`court statements that should be excluded from use as direct evidence.
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`III. Conclusion
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`For the foregoing reasons, the Board should exclude Exhibits 2010-2057 and
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`paragraphs 70-110 of Exhibit 2007.
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`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
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`Respectfully submitted,
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`Date: August 21, 2014
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`/Daniel W. McDonald/
`Daniel W. McDonald, Reg. No. 32,044
`Attorneys for Petitioner Cardiocom
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`6
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing
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`PETITIONER’S REPLY IN SUPPORT OF MOTION TO EXCLUDE
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`EVIDENCE has been served on August 21, 2014, by email on counsel of record
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`for the patent owner at the following name and address:
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`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
`
`
`
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`Respectfully submitted,
`MERCHANT & GOULD P.C.
`P.O. Box 2903
`Minneapolis, Minnesota 55402-0903
`(612) 332-5300
`
`
` / Daniel W. McDonald /
`Daniel W. McDonald (Lead Counsel)
`USPTO Reg. No.: 32,044
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`Date: August 21, 2014
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