Trials@uspto.gov
`571-272-7822
`
`
`Paper 17
`Entered: June 19, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`MEDTRONIC, INC.
`Petitioner
`
`v.
`
`ROBERT BOSCH HEALTHCARE SYSTEMS, INC.
`Patent Owner
`
`____________
`
`Case IPR2014-00436
`Patent 7,587,469 B2
`
`
`
`
`
`Before STEPHEN C. SIU, JUSTIN T. ARBES, and MIRIAM L. QUINN,
`Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`571-272-7822
`
`
`Paper 17
`Entered: June 19, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`MEDTRONIC, INC.
`Petitioner
`
`v.
`
`ROBERT BOSCH HEALTHCARE SYSTEMS, INC.
`Patent Owner
`
`____________
`
`Case IPR2014-00436
`Patent 7,587,469 B2
`
`
`
`
`
`Before STEPHEN C. SIU, JUSTIN T. ARBES, and MIRIAM L. QUINN,
`Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`Case IPR2014-00436
`Patent 7,587,469 B2
`
`
`Medtronic, Inc. (“Petitioner”) filed a Petition to institute an inter
`partes review of claims 1-22 of U.S. Patent No. 7,587,469 B2 (“the
`’469 patent”) pursuant to 35 U.S.C. §§ 311-319. Paper 5. Concurrently
`with its Petition, Petitioner filed a Motion for Joinder seeking to join this
`case with the ongoing inter partes review of the ’469 patent in Cardiocom
`LLC v. Robert Bosch Healthcare Systems, Inc., Case IPR2013-00451 (“the
`451 case”). Paper 4. Robert Bosch Healthcare Systems, Inc. (“Patent
`Owner”) filed a Preliminary Response (Paper 13) and an Opposition to the
`Motion for Joinder (Paper 10). We have jurisdiction under 35 U.S.C. § 314.
`I.
`BACKGROUND
`The standard for instituting an inter partes review is set forth in 35
`U.S.C. § 314(a), which provides as follows:
`THRESHOLD – The Director may not authorize an inter
`partes review
`to be
`instituted unless
`the Director
`determines that the information presented in the petition
`filed under section 311 and any response filed under
`section 313 shows that there is a reasonable likelihood
`that the petitioner would prevail with respect to at least 1
`of the claims challenged in the petition.
`
`Petitioner asserts unpatentability under 35 U.S.C. § 103 of (1) claims
`1-22 over the combination of Cohen,1 Kaufman,2 and Wahlquist,3 and (2)
`claims 1-6, 10-12, 16-18, and 22 over the combination of Cohen and
`Kaufman.
`
`
`
` 1
`
` U.S. Patent No. 6,014,626 (Ex. 1002) (“Cohen”).
`2 European Patent Application Publication No. EP0342859A2 (Ex. 1003)
`(“Kaufman”).
`3 U.S. Patent No. 5,367,667 (Ex. 1004) (“Wahlquist”).
`2
`
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`Case IPR2014-00436
`Patent 7,587,469 B2
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`
`We deny the Petition because the information presented in the Petition
`fails to demonstrate a reasonable likelihood that Petitioner would prevail
`with respect to unpatentability of claims 3, 4, and 11-22 based on all asserted
`grounds. Further, we reject the Petition as to claims 1, 2, and 5-10 based on
`our exercise of discretion under 35 U.S.C. § 325(d) because the “same or
`substantially the same prior art or arguments previously were presented to
`the Office” in the 451 case.
`
`RELATED MATTERS AND PETITIONER
`
`The ’469 patent is the subject of an ex parte reexamination (Control
`No. 90/013,175),4 and of a co-pending district court case, Robert Bosch
`Healthcare Systems v. Cardiocom, LLC and Abbott Diabetes Care, Case No.
`2:13-cv-349 (E.D. Tex.). Pet. 1; Prelim. Resp. 10. Furthermore, at the time
`the Petition was filed, patents related to the ’469 patent were subject to other
`district court proceedings, ex parte reexamination, and inter partes review.
`Pet. 1-2.
`The ’469 patent is also the subject of an inter partes review.
`Specifically, on January 16, 2014, we instituted an inter partes review in the
`451 case on two grounds of unpatentability: (1) claims 1, 2, and 5-10 as
`unpatentable over Cohen and Wahlquist under 35 U.S.C. § 103(a); and (2)
`claims 1, 2, and 5-10 as unpatentable over Cohen, Wahlquist, and two other
`
`
`
` 4
`
` Petitioner filed the request for ex parte reexamination on March 7, 2014,
`after filing the Petition in the instant proceeding on February 14, 2014. The
`parties are reminded of their obligation to update their mandatory notice
`information, including identification of any related matters, within 21 days
`of any change. See 37 C.F.R. § 42.8(a)(3).
`3
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`Case IPR2014-00436
`Patent 7,587,469 B2
`
`prior art references under 35 U.S.C. § 103(a). Cardiocom LLC v. Robert
`Bosch Healthcare Systems, Inc., Case IPR2013-00451, Paper 23 at 29.
`Petitioner has asserted that it is a real party-in-interest in the 451 case.
`Cardiocom, IPR 2013-00451, Paper 26. Petitioner, Medtronic, Inc. acquired
`Cardiocom LLC (“Cardiocom”) after that entity filed the petition in the
`451 case. Pet. 3.
`
`THE ’469 PATENT (EX. 1001)
`
`The ’469 patent, titled “Audio Instructions for Appliances,” issued on
`September 8, 2009. The ’469 patent relates to a networked system for
`remotely monitoring individuals, and for communicating information to the
`individuals through the use of script programs. Ex. 1001, col. 1, ll. 39-41.
`The patent describes the need for remote monitoring of patients in
`out-patient or home healthcare programs. Id. at col. 1, ll. 45-50; col. 2,
`ll. 33-37. According to the patent, the use of personal computers, medical
`monitoring devices, and interactive telephone or video response systems for
`remote monitoring have proved inadequate because of their expense, limited
`multimedia capability, and the complexity of managing non-compliant
`patients. Id. at col. 1, l. 65 – col. 2, l. 32.
`One embodiment of the ’469 patent, shown in Figure 1, reproduced
`below, is networked system 16 with server 18 connected to the Internet
`(communication network 24), where server 18 sends script programs to each
`remotely programmable apparatus 26. Id. at col. 4, ll. 18-35.
`
`
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`Case IPR2014-00436
`Patent 7,587,469 B2
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`
`
`Figure 1 illustrates that system 16 may include any number of
`remotely programmable apparatuses 26 (two are shown, above) for
`monitoring any number of patients. Id. at col. 4, ll. 42-44. In one preferred
`embodiment, each patient is provided with monitoring device 28 (such as a
`blood glucose meter). Id. at col. 4, ll. 45-61. That device produces
`measurements of a physiological condition of the patient (such as blood
`glucose concentrations in the blood of the patient), and transmits those
`measurements to the patient’s remote apparatus 26 via standard cable 30. Id.
`at col. 4, ll. 45-61. Remotely programmable apparatus 26 executes a script
`program received from server 18. Id. at col. 5, ll. 7-9. That script program
`includes “queries, reminder messages, informational statements, useful
`quotations, or other information of benefit to the patient.” Id. at col. 5, ll. 9-
`11.
`
`The ’469 patent further describes an embodiment where remotely
`programmable apparatus 26 includes speech recognition and speech
`synthesis functionality. Id. at col. 11, ll. 50-54. Audible queries, prompts,
`and response choices are communicated to the user through a speaker in
`
`
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`Case IPR2014-00436
`Patent 7,587,469 B2
`
`apparatus 26, and a microphone receives the responses from the user. Id. at
`col. 12, ll. 40-48.
`In further embodiments, remotely programmable apparatus 26 is an
`interactive television system. Id. at col. 16, ll. 19-26. Furthermore, the
`’469 patent describes collecting data from smart appliances, such as a
`“refrigerator, telephone, stove, clock radio, VCR, or any other electrical or
`non-electrical device including the monitoring device 28.” Id. at col. 20,
`ll. 32-40.
`
`ILLUSTRATIVE CLAIM
`
`Challenged claims 1, 11, and 17 are independent. Claim 1 is
`
`illustrative of the claims-at-issue and is reproduced below:
`1. A communications network comprising:
`a communications channel;
`a server;
`a primary device in communication with said server
`through said communications channel, wherein (A) said
`primary device comprises a component adapted to (i)
`receive one or more computer programs including one
`or more queries, instructions or messages as a first
`digital file from said server, (ii) convert the first digital
`file into synthesized audio transmissions, (iii) present
`said synthesized audio transmissions to an individual
`through a speaker and (iv) receive audible responses
`from said individual and (B) said primary device
`comprises a processor adapted to collect data relating to
`said primary device, and execute said computer
`programs to provide a diagnosis of a performance of
`said primary device; and
`a secondary device operatively connected to said primary
`device, wherein said secondary device (i) is adapted to
`be operated by said individual in response to said
`synthesized audio transmissions and (ii) comprises a
`user interface adapted to receive input responses from
`6
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`Case IPR2014-00436
`Patent 7,587,469 B2
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`
`said individual and convert said input responses to a
`second digital file through speech recognition.
`CLAIM INTERPRETATION
`
`Based on the record presented and for purposes of rendering our
`decision to institute in the 451 case, we construed two claim terms of the
`’469 patent as stated in the table below:
`Term
`Construction in IPR2013-00451
`household appliance
`electronic equipment devised for home use
`execute said computer programs to
`execute said computer
`provide data or information of a performed
`programs to provide a
`operation by the [primary device or
`diagnosis of a performance of
`household appliance]
`said [primary device or
`household appliance]
`
`Petitioner does not propose a different construction for the above-
`referenced terms, and contends that we should construe an additional term,
`“script program.” Specifically, Patent Owner urges us to adopt the
`construction for “script program” determined in another inter partes review
`proceeding, which concerns a patent related to the ’469 patent, Cardiocom
`LLC v. Robert Bosch Healthcare Systems Inc., Case IPR2013-00431.
`Prelim. Resp. 17-21. We conclude that construing the term “script
`program,” however, is not necessary for our determination of whether to
`institute a second inter partes review of the ’469 patent. Accordingly, for
`purposes of this decision, we adopt the constructions set forth in the table
`above, and no other terms are expressly construed.
`
`
`
`7
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`Case IPR2014-00436
`Patent 7,587,469 B2
`
`
`II. DISCUSSION
`We now turn to Petitioner’s asserted grounds of unpatentability and
`Patent Owner’s arguments in the preliminary response.
`
`A. PRIOR ART REFERENCES
`
`Each prior art reference asserted in the Petition is summarized below.
`1.
`Overview of Cohen (Exhibit 1002)
`
`Cohen is directed to a patient monitoring system and, in particular, to
`using a telephone to monitor the health status of outpatients. Ex. 1002,
`Abstract; col. 1, ll. 14-16. The Cohen central monitoring system generates
`questions concerning a health condition of a patient, questions which the
`patient answers using the keys of a telephone, by speaking the response, or
`in electronic form, such as by a computer-to-computer communication. Id.
`at Abstract; col. 16, ll. 7-12. One embodiment of Cohen’s system is
`depicted in Figure 5, reproduced below.
`
`
`
`
`
`8
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`Case IPR2014-00436
`Patent 7,587,469 B2
`
`
`Figure 5 illustrates that the Cohen system may be divided into three
`parts: patient system 500; interface server 530; and database server 560. Id.
`at col. 11, ll. 31-33. Patient system 500 incorporates outpatient
`subsystem 12. See id. at col. 11, ll. 33-37. Interface server 530 handles the
`process of getting answers from patients, id., and it allows health care
`providers access to database 24. Id. at col. 11, ll. 37-39. Cohen describes
`interface server 530 and database server 560 as comprising central
`monitoring subsystem 11, depicted in Figure 2A (not shown). Id. at col. 11,
`ll. 40-42.
`
`2.
`
`Overview of Wahlquist (Exhibit 1004)
`
`Wahlquist is directed to remote diagnostics on a personal computer
`system, where the user calls a help desk representative who selects specific
`diagnostic tests, resident on the user’s diagnostic disk, to be run on the user’s
`computer. Ex. 1004, Abstract. The user’s computer is instructed to run the
`selected diagnostic tests. Id. Upon completion of the tests, the user’s
`computer reconnects with the help desk computer and reports the result of
`the tests. Id. A script file also may instruct the user’s computer to send
`copies of various computer system files, such as network or configuration
`system files, to a link manager computer. Id. at col. 6, ll. 33-36. In one
`embodiment of a remote diagnostic method, Wahlquist describes that the
`link manager computer interrogates the user’s computer to determine and
`provide its corresponding computer identification code. Id. at col. 5, ll. 52-
`56.
`
`3.
`
`Overview of Kaufman (Exhibit 1003)
`
`Kaufman discloses a patient assistance system that can communicate
`
`
`
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`Case IPR2014-00436
`Patent 7,587,469 B2
`
`with a remote medical computer via modem 40 and a telephone system.
`Ex. 1003, 5, ll. 15-16. The modem can be used for transferring patient
`information to the remote computer or for receiving programmed
`instructions or information from the remote computer. Id. at 3, ll. 27-29.
`One embodiment of the Kaufman system is depicted in Figure 4, reproduced
`below.
`
`Figure 4 illustrates system 100 with the patient P using finger type
`blood pressure and pulse rate cuff 106 that detects the blood pressure and
`
`
`
`
`
`10
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`
`pulse rate of patient P. Id. at 6, ll. 13-15.
`
`B. ASSERTED OBVIOUSNESS OF CLAIMS 1, 2, AND 5-10
`
`Petitioner asserts two grounds of obviousness for independent claim 1
`and dependent claims 2 and 5-10. Pet. 6. Both grounds rely, at least in part,
`on Cohen, and one of the grounds relies, at least in part, on Wahlquist. Id.
`The arguments presented with regard to Cohen are the same arguments
`presented in connection with the Petition filed in the 451 case. In particular,
`the instant Petition presents Cohen as disclosing the same claim limitations
`with substantially the same support and arguments as presented in the
`Petition in the 451 case. For example, for claim 1, both petitions rely on
`Cohen as disclosing the preamble, the communications channel, the server,
`the primary device in communication with the server, receiving computer
`programs, converting to synthesized audio transmissions, receiving audible
`responses from individuals, and the secondary device. Compare Pet. 23-30
`with Petition in Cardiocom at IPR2013-00451, Paper 1 at 20-25. Both
`petitions also point out the same deficiency in Cohen, namely the lack of
`execution of computer programs to provide a diagnosis of a performance of
`said primary device. Compare Pet. 27 (relying solely on Kaufman as
`teaching the limitation) with Petition in Cardiocom at IPR2013-00451, Paper
`1, at 23-24 (relying solely on Wahlquist as teaching the limitation). With
`regard to Wahlquist, the instant Petition asserts the same arguments
`presented in the 451 case. Compare Pet. 25-26 (relying on Wahlquist in
`“Ground 2” as disclosing a diagnostic program running on the user’s
`computer) with Petition in Cardiocom at IPR2013-00451, Paper 1, at 23-24
`(relying on Wahlquist in “Grounds 1 and 2” as disclosing the diagnostic
`program running on the user’s computer).
`11
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`Case IPR2014-00436
`Patent 7,587,469 B2
`
`
`We, therefore, exercise our discretion and determine that the
`arguments presented in the instant Petition involve the same, or substantially
`the same, prior art (e.g., Cohen and Wahlquist) and the same, or
`substantially the same, arguments previously presented in the 451 case. 35
`U.S.C. § 325(d). We have taken into account that Petitioner here is a real
`party-in-interest in the ongoing inter partes review of the ’469 patent. See
`Cardiocom, IPR2013-00451, Paper 26. We also have considered that
`Petitioner already is involved in a trial involving the ’469 patent and
`concerning substantially similar grounds. Furthermore, as explained above,
`for the claims already involved in the 451 case trial, the overlap between the
`arguments and evidence in that trial and the grounds asserted in the Petition
`in this proceeding is substantial. Nothing in the Petition accounts for this
`substantial overlap or persuades us that we should not exercise our discretion
`under section 325(d). Accordingly, we reject the Petition as to claims 1, 2,
`and 5-10.
`
`C. ASSERTED OBVIOUSNESS OF CLAIMS 3-4 AND 11-22
`
`In the 451 case, we denied institution of trial based on the
`determination that the petitioner in that case had not shown sufficiently that
`Cohen teaches the “single housing” limitation recited in claim 3 and the
`“household appliance” limitation recited in claims 4 and 11-22. Decision,
`IPR2013-00451, Paper 23, at 18, 24-25 (Jan. 16, 2014). In the instant
`Petition, Kaufman is proffered as disclosing both the “single housing” and
`the “household appliance” limitations. See Pet. 19.
`Upon review of the evidence and arguments presented in the Petition,
`we determine that Petitioner fails to show a reasonable likelihood that it will
`prevail in showing the unpatentability of claims 3, 4, and 11-22, because the
`12
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`Case IPR2014-00436
`Patent 7,587,469 B2
`
`Petition does not show sufficient evidence of a reasonable rationale for the
`combination of Cohen and Kaufman with regard to these claims. In
`particular, we find persuasive Patent Owner’s argument that Petitioner’s
`proffered rationale for the combination of Cohen and Kaufman does not
`explain sufficiently how Cohen may be modified to include Kaufman’s
`cabinet. Prelim. Resp. 34. Petitioner’s contention is that the modification
`of Cohen to include a device that runs programs and allows for user
`interaction would have been obvious because Kaufman discloses such a
`system, “packaged in a single household appliance.” Pet. 20. This
`statement by Petitioner does not demonstrate sufficiently a reason why a
`person of ordinary skill in the art would have modified Cohen to include a
`Kaufman home-use-designed cabinet to house the Cohen servers alleged to
`be the primary and secondary devices to achieve the “household appliance”
`and “single housing” limitations. In other words, Petitioner’s proffered
`motivation to combine Kaufman and Cohen leaves unexplained why a
`person of ordinary skill in the art would select the “household appliance”
`and “single housing” of Kaufman to modify Cohen’s system. See Unigene
`Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011)
`(“Obviousness requires more than a mere showing that the prior art includes
`separate references covering each separate limitation in a claim under
`examination. Rather, obviousness requires the additional showing that a
`person of ordinary skill at the time of the invention would have selected and
`combined those prior art elements in the normal course of research and
`development to yield the claimed invention.”) (internal citations omitted).
`Furthermore, Petitioner’s reliance on the testimony of Dr. Stone also
`fails to show sufficient evidence of a rationale to combine Kaufman and
`
`
`
`13
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`Case IPR2014-00436
`Patent 7,587,469 B2
`
`Cohen. See Pet. 20 (citing Ex. 1007 ¶¶ 38, 43, 47, and 68). First, the
`Petition merely states that “[a]dditional reasons to combine the art are
`described in the attached Declaration,” but does not offer any explanation of
`the additional alleged “reasons to combine” that may be found in Dr. Stone’s
`declaration. See id.; 37 C.F.R. § 42.104(b)(4) (a petition for inter partes
`review must explain “[h]ow the construed claim is unpatentable”). Second,
`even considering the cited portions of the declaration, we are not persuaded
`that these paragraphs offer a sufficient reason to modify Cohen to achieve
`the “household appliance” or “single-housing” limitation, as taught by
`Kaufman—this is the rationale missing from the cited portions of the
`declaration. Stating that the references deal with similar features or devices,
`and alluding to the allegation that the combination ensures “proper[]
`functioning” with a patient, are unpersuasive. See Ex. 1007 ¶¶ 38, 43, 47,
`68. We find no evidence presented in the cited testimony of Dr. Stone to
`explain how a motivation to make the device function properly when
`interacting with a patient also motivates one of ordinary skill in the art to
`include the primary and secondary servers of Cohen into a home-use-
`designed cabinet, such as that taught in Kaufman.
`As for the ground pertaining to the combination of Cohen, Kaufman,
`and Wahlquist, Petitioner also fails to demonstrate a sufficient rationale for
`why a person of ordinary skill in the art would find it obvious to modify
`Cohen with Kaufman’s disclosure of the “household appliance” and “single
`housing.” See Pet 21-22 (focusing on the combination of the references with
`regard to the sending of computer programs over a network and speech
`recognition and synthesis limitations). Accordingly, we determine, for
`purposes of this decision, that the record does not show sufficient evidence
`
`
`
`14
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`Case IPR2014-00436
`Patent 7,587,469 B2
`
`that there is a reasonable likelihood Petitioner will prevail as to its
`contention that claims 3, 4, and 11-22 would have been obvious over the
`combination of Cohen and Kaufman or over the combination of Cohen,
`Kaufman, and Wahlquist.
`
`III. CONCLUSION
`For the foregoing reasons, we reject the request for institution of inter
`partes review of claims 1-2 and 5-10, and deny institution of inter partes
`review of claims 3-4 and 11-22 of the ’469 patent based on all the grounds
`asserted in the Petition. Accordingly, the pending Motion for Joinder is
`rendered moot.
`
`IV. ORDER
`After due consideration of the record before us, it is
`ORDERED that the petition is denied and no trial is instituted; and
`FURTHER ORDERED that Petitioner’s Motion for Joinder is denied.
`
`
`
`
`
`15
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`Case IPR2014-00436
`Patent 7,587,469 B2
`
`PETITIONER:
`
`Daniel W. McDonald (Lead Counsel)
`dmcdonald@merchantgould.com
`MERCHANT & GOULD, P.C.
`80 South 7th St., Suite 320
`Minneapolis, MN 55402
`
`Andrew J. Lagatta (Back Up Counsel)
`alagatta@merchantgould.com
`William D. Schultz (Back Up Counsel)
`wschultz@merchantgould.com
`Jeffrey D. Blake (Back Up Counsel)
`jblake@merchantgould.com
`
`PATENT OWNER:
`
`Don Daybell (Lead Counsel)
`Davin M. Stockwell (Back Up Counsel)
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`2050 Main St., Suite 1100
`Irvine, CA 92614
`ddaybell@orrick.com
`dstockwell@orrick.com
`ptabdocket@orrick.com
`
`
`
`
`
`
`
`16
`
`
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