Trials@uspto.gov
`571-272-7822
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`Paper 43
`Date: May 12, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`CARDIOCOM, LLC
`Petitioner
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`v.
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`ROBERT BOSCH HEALTHCARE SYSTEMS, INC.
`Patent Owner
`____________
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`Case IPR2013-00431 (Patent 7,921,186 B2)
`Case IPR2013-00449 (Patent 7,840,420 B2)
`Case IPR2013-00468 (Patent 7,516,192 B2)1
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`
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`Before STEPHEN C. SIU, JUSTIN T. ARBES, and MIRIAM L. QUINN,
`Administrative Patent Judges.
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`SIU, Administrative Patent Judge.
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`DECISION
`On Motion for Additional Discovery
`37 C.F.R. § 42.51(b)(2)
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`1 This Decision addresses an issue pertaining to all three cases, and IPR2013-
`00469, which has been joined with IPR2013-00468. We exercise our discretion to
`issue one Decision to be filed in each case. Unless otherwise stated, the Parties are
`not authorized to use this style heading for any subsequent papers.
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`

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`IPR2013-00431, IPR2013-00449, IPR2013-00468
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`Petitioner has filed a motion for additional discovery. IPR2013-00431,
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`Paper 38; IPR2013-00449, Paper 37; IPR2013-00468, Paper 40. Patent Owner has
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`opposed. IPR2013-00431, Paper 40; IPR2013-00449, Paper 39; IPR2013-00468,
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`Paper 42.
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`As previously discussed during a conference call held on April 22, 2014
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`with respective counsel for Petitioner and Patent Owner, Patent Owner had filed a
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`declaration from Yadin David, Ed.D., in which Dr. David concluded that a product
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`(i.e., the “Health Buddy”) demonstrated commercial success based on statements
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`made by various “Bosch personnel.” See, e.g., IPR2013-00431, Ex. 2006, ¶ 66;
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`IPR2013-00449, Ex. 2010, ¶ 77; IPR2013-00468, Ex. 2007, ¶ 79. Petitioner
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`requested that Patent Owner identify the “Bosch personnel” and make the “Bosch
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`personnel” available for deposition because, according to Petitioner, Dr. David
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`“form[ed] the factual basis for his opinions related to purported objective indicia of
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`nonobviousness” based on his interviews with the “Bosch personnel.” IPR2013-
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`00431, Paper 38 at 1; IPR2013-00449, Paper 37 at 1; IPR2013-00468, Paper 40 at
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`1.
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`We previously determined that a motion for additional discovery under 37
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`C.F.R. § 42.51(b)(2) was warranted under the circumstances, and that the motion
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`should include an explanation by Petitioner why it believes depositions are
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`“necessary in the interest of justice” and an identification of “what specific issues
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`would be addressed” during the requested depositions. IPR2013-00431, Paper 35
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`at 3; IPR2013-00449, Paper 34 at 3; IPR2013-00468, Paper 37 at 3. We also
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`instructed the parties that discovery will not be granted if the requests are unduly
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`broad and burdensome. Id. We deny Petitioner’s request for additional discovery
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`for the reasons stated below.
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`Petitioner provides five (5) “examples of specific issues to be addressed”
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`during the requested depositions with “Bosch personnel”:
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`2
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`IPR2013-00431, IPR2013-00449, IPR2013-00468
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`The relative sales and success of the Health Buddy and any
`other telehealth products in 2011-12, when Bosch asserted that the
`market was still new and Bosch was still attempting to develop a
`successful telehealth business, and the earlier time frames of
`purported success referenced in Dr. David’s declaration.
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`Why the Health Buddy was still the subject of an effort to
`become successful in 2012, including what features of the product or
`marketing and business characteristics associated with the product and
`market were the same or different in 2011-2012 vs. prior years.
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`The credibility and self-interest of the Bosch personnel and Mr.
`Brown regarding the statements they made to Dr. David.
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`The sources and veracity of the information underlying the
`statements, including consideration of the scope and merits of the
`claimed inventions in the three patents at issue, and what sources of
`information were relied upon by the witnesses for the statements.
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`An identification of the specific elements of the Health Buddy
`that led to the purported commercial success, satisfied a long-felt
`need, or allegedly were copied by others, and whether those elements
`correspond to the merits of the claimed inventions.
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`IPR2013-00431, Paper 38 at 3-4; IPR2013-00449, Paper 37 at 3-4; IPR2013-
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`00468, Paper 38 at 3-4. Petitioner’s request is overly broad and burdensome
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`because, instead of providing a list of specific, narrow topics to be discussed
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`during the requested depositions, Petitioner provides a non-limiting list of broad
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`topics (i.e., “examples”) to potentially discuss and does not specifically exclude
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`any specific topic for discussion. Indeed, it is not clear what topic, if any, is not
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`available for discussion during the proposed deposition(s).
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`In addition, given the general nature of Petitioner’s proposed “examples” of
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`issues to be potentially discussed at the requested depositions, Petitioner does not
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`demonstrate sufficiently a likelihood that such a general line of questioning would
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`be useful in providing relevant information.
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`In consideration of the foregoing, it is
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`ORDERED that Petitioner’s motion for additional discovery is denied.
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`3
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`

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`IPR2013-00431, IPR2013-00449, IPR2013-00468
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`PETITIONER:
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`Daniel W. McDonald
`Andrew J. Lagatta
`William D. Schultz
`Jeffrey D. Blake
`MERCHANT & GOULD, P.C.
`dmcdonald@merchantgould.com
`alagatta@merchantgould.com
`wschultz@merchantgould.com
`jblake@merchantgould.com
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`PATENT OWNER:
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`Don Daybell
`Davin M. Stockwell
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`ddaybell@orrick.com
`dstockwell@orrick.com
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`4
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