Cardiocom, LLC v. Robert Bosch
`Healthcare Systems, Inc.
`
`IPR2013-00468
`IPR2013-00469
`Patent No. 7,516,192
`Counsel for Petitioner
`Merchant & Gould
`September 9, 2014
`
`CARDIOCOM EXH 1045
`CARDIOCOM v. BOSCH IPR2013-00468
`
`1
`
`
`Healthcare Systems, Inc.
`
`IPR2013-00468
`IPR2013-00469
`Patent No. 7,516,192
`Counsel for Petitioner
`Merchant & Gould
`September 9, 2014
`
`CARDIOCOM EXH 1045
`CARDIOCOM v. BOSCH IPR2013-00468
`
`1
`
`
`
`Overview
`
`• The ‘192 patent
`• The decisions granting IPRs & cited
`grounds
`• How cited art satisfies claim elements
`• Analogous art and combining references
`• Secondary considerations and motion to
`exclude
`
`2
`
`
`
`7,516,192 (merged)
`
`• Claim 1 (monitoring system)
`– User interface –messages, queries, or
`response choices
`– Data merge program—customize generic
`script program
`• Display command
`• Input command
`– Database(s) –store generic program &
`responses
`
`3
`
`
`
`Merchant & Gould
`
`.-\11 lnLL‘HL‘L‘lLlul I’I‘upcrl} law I7Il‘m
`
`7,516,192
`
`7,516,192
`
`SCRIPT PROGRAM
`
`REMOTE APPARATUS
`
`CUSTOM
`
`4
`
`
`
`Decisions to Institute IPR
`Ground #1: Wright Jr. § 103
`– Executable form may be considered a
`“customized script program”
`– “Data merge program:” does not require that
`data be entered automatically
`• Wright field editor would result in generation of a
`customized script from generic script
`– “Database:” Wright teaches form can be
`selected from a list of existing forms
`
`5
`
`
`
`Merchant (SI Gould
`
`Wright Jr.
`(Ex. 1002)
`Wright Jr.
`
`.-\11 llllL‘llCL‘lLlLll l’mpcrl} lam lllrm
`
`(EX. 1002)
`
`back to PC
`
`PC program
`creates field data
`
`mp,:;:::::;°:m
`
`Form Is sen1 from
`PC to FDA
`
`Form is fillad oul
`""“ P“ “m”
`engine
`(Fig-5)
`
`Form data sent
`
`2'10
`
`#‘Dl't I ran
`
`.-
`9”: came
`——
`
`
`
`I}!
`
`" “ Microphone
`
`{H
`
`6
`
`
`
`Wright Jr.
`
`• “Wright Jr. teaches that a forms designer can
`create an electronic form that displays
`queries and provides user input responses.”
`Board Dec. p. 11
`• “[T]he executable form may be considered a
`‘script program.’” Id.
`• Teaches data merge program, databases for
`storing generic programs, other elements. Id.
`at 12-13.
`
`7
`
`
`
`Decision Ground #2:
`Wright Jr. and Goodman § 103
`
`8
`
`
`
`Claims 20-37:
`Goodman and Wahlquist
`• Goodman and Wahlquist disclose similar
`systems. Dec. p. 10-11.
`• No relevant disparity between technology
`involved in Wahlquist and subject matter of
`‘192 patent: analogous art
`
`9
`
`
`
`Merchant (SI Gould
`
`.-\11 llllL‘llCL‘lLlLll l’mpcrl} lam lllrm
`
`Wahlquist
`
`Wahlquist
`
`COMPUTER
`
`HELP DESK
`COMPUTER
`
`DATABASE
`HANAGER
`
`MULTl-LINE
`MODEM
`
`USER
`COMPUTER
`
`TARGET
`
`10
`
`
`
`The Cited Art Discloses the
`Disputed Claim Elements
`
`11
`
`
`
`Elements
`
`1. Data merge program: customizes generic
`script program, input commands
`2. Databases: store generic script program,
`responses
`
`12
`
`
`
`Data merge program
`
`Data merge program
`
`13
`
`Merchant & Geuld
`
`.-\11 Intellectual Pmpcrl)‘ Law
`
`by the reincrtelyr sinisted apparatus and includes (i) s
`
`s dsts merge prcgrsnl ccnfigured tc generate s custcniised
`script prcgrsin by cu stanising, s generic script prcgrsni,
`wherein the custcrnisecl script prcgrsni is In be executed
`
`
`
`Decisions: Construed terms
`
`• “script program:” program that contains a
`set of instructions that is capable of being
`executed and interpreted
`• “data merge program:” a program that
`combines two or more sets of data into
`one
`– Does not require that data is automatically
`entered
`
`14
`
`
`
`Data merge program
`
`• Bosch argues: Wright Jr. does not combine two
`sets of data into one. Resp. p. 39.
`• Bosch expert conceded Wright combines two sets
`of data (Ex. 1041 at 533:5-10, emphasis added):
`Q. So in that instance you've got the original set 1 of
`the Joe's Diner comment card questions, and you've
`now created a new comment card that adds to that
`two new questions from a second set of data, right?
`A. Right.
`
`15
`
`
`
`Wright Jr. Data merge
`
`• Wright col. 8
`– Duplicate form
`– Create new field
`– Edit existing field
`– Remove field
`
`16
`
`
`
`Data merge program
`
`• Bosch argues: data merge must happen
`automatically
`• Board already rejected this construction;
`nothing in claims or specification says data
`merge is automatic
`• ‘192 acknowledges mail merge is
`“standard” way to merge data (12:60-61)
`
`17
`
`
`
`Generic script program
`
`• Wright teaches using a pre-existing form
`as starting point for individualized forms
`
`Ex. 1002 at 8:32‐38
`
`18
`
`
`
`Generic script program
`
`• New Bosch argument: a generic script
`program “is not usable in itself.” Resp. p.
`40.
`• Bosch improperly imports limitation
`• Bosch expert conceded generic script
`program is usable.
`• Wright does not require that existing form
`be “usable”
`
`19
`
`
`
`Data merge element: Input command
`
`• Wherein the customized script program
`includes . . . “an input command to receive
`responses when the script program
`includes one or more queries to be
`presented.”
`
`20
`
`
`
`Merchant (SI Gould
`
`:\11]I11CI1CCILH1|l’rulwcrl} l a\V lHrin
`
`Wright Jr. Input Command
`
`Wright Jr. Input Command
`
`ENDIF
`
`Pleas enier the number of
`people in your party.
`
`;
`1
`
`In?!
`
`Pmmpf For
`
`.
`
`Ansqu'ihx
`
`Field Deecripflon Record
`
`Farm
`field
`2p.
`fled
`
`Satof
`
`100
`2
`Numeric
`a
`2
`"Number of Peopie In your party:
`I'Plemule enter a number'
`IF Answered(2). THEN
`NEXT
`ELSE
`BEEP
`MESSAGE "Please enter a number'
`
`21
`
`
`
`Input command: Goodman
`
`Q. Not necessarily, but that would be
`one way that one of ordinary skill would
`recognize as a way to get inputs is to
`have an input command, correct?
`THE WITNESS: Correct.
`
`(Ex. 1041 588: 2-15)
`
`“steps . . . Are then
`programmed . . . Referring
`to Fig. 10a, patient 2a is
`prompted in step 122 to
`measure and enter her
`peak flow at 9 A.M.”
`Ex. 1003 9:24‐29
`
`22
`
`
`
`database
`
`23
`
`Merchant & Gould
`
`:\11ll11L‘llCL‘llell Properly law lllrm
`
`1115+
`
`eae er mere databases aeeeaaible by the data merge pre-
`gratn fer staring. the generic aeript Fragrant and any
`teapenaea received free] the remetely situated appara-
`
`
`
`Database(s) for storing generic script
`programs
`• Wright discloses retrieval of forms from form list
`(Ex.. 1002 8:33-34)
`
`Q. And one of ordinary skill would understand that
`one way to store such a list of forms would be to
`store them in a computer database that's
`accessible on the computer, right?
`THE WITNESS: Yes. (David Dep. (Ex. 1041) at
`557)
`
`24
`
`
`
`Database: store responses
`
`• Wahlquist discloses
`– Using a “database manager” to associate
`script files and case files Ex. 1004 at 2:22-25
`• Goodman discloses
`– storing “ a record” of compliance data
`gathered from individuals for evaluation and
`report generation. Ex. 1003, 4:52-53, 63-67
`
`25
`
`
`
`Claim 37: identification code
`
`• “Transmitting to the computer (i) an
`identification code associated with the
`individual”
`• Wahlquist discloses
`– Case file created associating “user identification
`information” and computer system identification
`Ex. 1004 2:5-16
`– User computer “interrogate[d] . . .for its computer
`identification code” to match to case file. 5:52-60
`
`26
`
`
`
`Combining reference and
`Analogous art
`
`27
`
`
`
`Analogous Art
`
`• IPR Decision: Wahlquist is analogous
`– No dispute Goodman and Wright Jr. are
`analogous
`• Bosch’s “distinction attempts to characterize
`narrowly the field of endeavor . . .to exclude
`personal computers. That distinction is not
`supported by either the claims or
`specification of the ‘192 patent.” Dec. at p.
`12 (citing Ex. 1001 Abstract, 15:58-61).
`• “There is no relevant disparity”
`
`28
`
`
`
`Field of Endeavor
`
`• The Board must “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.”
`– In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir.
`2004).
`
`29
`
`
`
`‘192 Patent
`
`• “ . . . numerous applications for gathering data
`from remotely located devices.”
`– Ex. 1001 20:8-34.
`• “ for example, . . . collect data from smart
`appliances”
`– Ex. 1001 20:8-34.
`• “The system may also be used by law
`enforcement officers to perform on-line
`surveillance of individuals on probation or parole.”
`– Stone Dec. ¶39; Ex. 1001, 19:62-20:3.
`
`30
`
`
`
`Wahlquist is analogous to ‘192
`• Text of ‘192 cited
`by Board refers to
`personal computer
`that receives a
`computer program
`(Ex. 1001 15:58-
`61). See also
`Abstract, claim
`1(also cited in
`Paper 21 at 12)
`
`31
`
`
`
`Wahlquist teaches communication with
`individuals
`• Bosch assertion: “the
`entire diagnosis
`process itself [in
`Wahlquist] is
`completely divorced
`from any participation
`by the user.” Resp. p.
`29; David ¶ 284.
`
`Ex. 1004 9:62‐66
`Q. Wahlquist actually teaches a
`user participation in the diagnosis
`process as at least one option,
`right?
`THE WITNESS: As one option.
`Ex. 1041 (David) at 490:13‐18
`
`32
`
`
`
`Art would be combined
`Wright Goodman Wahlquist
`• Central server collects
`information from remote
`devices
`• Communications
`customized for users
`• Transmit queries,
`messages, display
`prompts, receive
`responses
`• Use with various input
`devices
`
`33
`
`
`
`Art would be combined
`
`• Facilitate assisting large numbers of users
`efficiently through use of network of central and
`remote devices
`• Efficiently seek input from remote user and receive
`that information through remote devices
`• Wright & Wahlquist: customize & obtain remote
`information with script programs – many benefits,
`well known, obvious modification of Goodman
`
`34
`
`
`
`Merchant & Gegld
`
`:\11]nlcllccluzl| Pmpcrl)‘ Law
`
`Dependent claims
`
`Dependent claims
`
`35
`
`
`
`Construed terms
`
`• “pointer:” an identifier that indicates the
`location of an item.
`• “script assignment unit:” a program that
`associates a script program with an
`individual
`
`36
`
`
`
`Claim 2
`
`• Claim 2: script assignment unit: assign
`customized program to individuals; store
`list of individuals in database(s)
`• Wright: personality profile application of
`customized forms renders element
`obvious Ex. 1002 at 28:40-44
`
`37
`
`
`
`Claim 2 (continued)
`
`• Pointer to program assigned to individual
`• Wright: tab-delimited data format includes
`a pointer. Ex. 1041 David at 567:14-20
`• Goodman: manage “millions of patients”
`with “appropriate individual identification,
`addressing and messaging . . . known to
`those of skill . . . .” Ex. 1003 at 4:20-22
`
`38
`
`
`
`Claim 8, 26, 31-33: data merge program
`uses personal data to customize
`• Goodman: base program on condition
`(asthma, diabetes, etc.) and treatment
`parameters (thresholds, check times, etc.)
`Ex. 1003 at cols. 8-10
`• Wright: data merge program; personality
`profile embodiment
`
`39
`
`
`
`Claims 11-12. 29, 30: look-up table
`
`• Wright discloses:
`– tab-delimited format with array of data. David
`Dep. p. 568
`– Spreadsheet David Dep. 568, Wright Ex. 1002
`at 14:5-10
`
`40
`
`
`
`Claim 18: customizes using the generic
`script program as a template
`• Ordinary meaning of “template”
`• Wright: start from existing form, allow
`selective modification of existing form to
`create new form. Ex. 1002 at 8:32-38
`
`41
`
`
`
`Claims 19 and 35: insert commands specify
`types of personal data to be inserted
`
`• Wright: “New Field” command specifies
`types of data. Ex. 1002 at 8:52-62
`
`42
`
`
`
`Merchant & Gegld
`
`:\11]nlcllccluzl| Pmpcrl)‘ Law
`
`Motion to Exclude
`
`Motion to Exclude
`
`43
`
`
`
`Secondary Considerations:
`Nexus Required
`• Patentee must show that the claimed
`commercial success is tied to claimed
`features, and not to features found in the
`prior art. Ormco, 463 F.3d at 1312.
`• Failure to show the nexus should result in
`exclusion of the evidence. See Merck &
`Co. v. Teva Pharms. USA, Inc., 395 F.3d
`1364, 1376-77 (Fed. Cir. 2005).
`
`44
`
`
`
`Secondary Considerations: No Nexus
`to Claims
`• Dr. David never compared Health Buddy
`to invention in ‘192
`– No description or discussion of Health Buddy
`features
`– No linkage of Health Buddy to ’192 claims
`• Generic script program: Would not be in Health
`Buddy
`• Data merge program: no showing it is used
`
`45
`
`
`
`No other cause for “success”
`even considered
`• Q. Why didn't you ask them whether or not the
`success of the product might have been attributable to
`something other than what's claimed in the four
`patents?
`• MR. VENKATESAN: Objection; form.
`• THE WITNESS: Simply because it was not one of
`my tasks to do.
`• BY MR. MCDONALD:
`• Q. Who assigned you your tasks?
`• A. Orrick assigned me the task.
`• David Dep. 172:9-18.
`
`46
`
`
`
`No success
`
`• No evidence invention was ever profitable
`• No market share proof, no comparative
`market information
`• Must show market share and profitability
`compared to the industry. Cable Elec.
`Prods. v. Genmark, Inc., 770 F.2d 1015,
`1026-27 (Fed. Cir. 1985).
`
`47
`
`
`
`Hearsay Should not be Considered For
`the Truth of the Matter Asserted
`• Regarding Dr. David’s repetition of
`hearsay statements, Bosch claims “that
`evidence is not offered for the truth of the
`matter asserted.” Opp. at 12.
`• Bosch citations to hearsay evidence
`should be disregarded.
`
`48
`
`
`
`Bosch Use of Hearsay
`• “The Health Buddy pilot was “wildly
`successful.” Resp. at 23 (citing David Dec.
`¶¶ 81-86).
`• Cited paragraphs do not say “wildly
`successful” and rely solely on hearsay for
`information related to success.
`• No other information on number of
`systems sold, let alone sales tied to claims
`
`49
`
`
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