Cardiocom, LLCv.Robert Bosch Healthcare Systems, Inc.

Patent Trial and Appeal Board

Jan 16, 2014

11451275 (P.T.A.B. Jan. 16, 2014)

Trials@uspto.gov Paper 23
571-272-7822 Date: January 16, 2014

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 IPR2013-00460
Patent 7,870,249 B2
____________

Before STEPHEN C. SIU, JUSTIN T. ARBES, and MIRIAM L. QUINN,
Administrative Patent Judges.

SIU, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

IPR2013-00460
Patent 7,870,249 B2

2

I. BACKGROUND

A. Background
Cardiocom, LLC (“Petitioner”) requests inter partes review of claims 1-29
of U.S. Patent No. 7,870,249 B2 (“’249 patent,” Ex. 1001) pursuant to 35 U.S.C.
§§ 311-319. Robert Bosch Healthcare Systems, Inc. (“Patent Owner”) filed a
preliminary response (“Prelim. Resp.”). Paper 12. We have jurisdiction under
35 U.S.C. § 314. The standard for instituting inter partes review is set forth in 35
U.S.C. § 314 (a) which provides:
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.

For the reasons set forth below, the Board has determined not to authorize
institution of an inter partes review.
Petitioner relies on the following prior art:
US 4,803,625 (Fu) Feb. 7, 1989 Ex. 1002
US 5,367,667 (Wahlquist) Nov. 22, 1994 Ex. 1003
US 6,014,626 (Cohen) Jan. 11, 2000 Ex. 1004
US 5,827,180 (Goodman) Oct. 27, 1998 Ex. 1005
A. Bittorf & T.L. Diepgen, Teaching Resources for Dermatology on the
WWW – Quiz System and Dynamic Lecture Scripts using a HTTP-Database
Demon, Proc. AMIA Annual Fall Symp. (1996) (“Bittorf”; Ex. 1006).

IPR2013-00460
Patent 7,870,249 B2

3

Petitioner contends that the challenged claims are unpatentable under 35
U.S.C § 103(a) based on the following specific grounds (Pet. 5):

Reference(s) Basis Claims challenged
Fu and Wahlquist § 103 1, 2, 4-10, 12-21, and
23-29
Fu, Wahlquist, and Cohen § 103 1-10, 12-21, and 23-29
Fu, Wahlquist, and Bittorf § 103 1, 2, and 4-29
Goodman and Wahlquist § 103 1, 4-8, 10, 12-14, 17-21,
and 23-29
Goodman, Wahlquist, and
Cohen
§ 103 1-10, 12-21, and 23-29
Goodman, Wahlquist, and
Bittorf
§ 103 1, 4-8, 10-14, and 17-26

B. The ’249 Patent
The ’249 patent describes a system and method for collecting data relating to
the health status of patients and communicating information to patients. Ex. 1001,
4:12. A patient is provided with a monitoring device that produces measurements
of a physiological condition of the patient, records measurements, and transmits
the measurements to a corresponding remotely programmable apparatus. Id. at
4:47-52. The remotely programmable apparatus interacts with the patient with
script programs received via a communication network from a server. Id. at 4:35-
37.
The server contains a monitoring application that includes a script generator,
a script assignor, and a report generator. Id. at 6:37-42. The script generator
generates script programs, and the script assignor assigns script programs to
patients. Id. at 6:42-43, 8:10-11. In one embodiment, a data merge program at the
IPR2013-00460
Patent 7,870,249 B2

4

server customizes queries and statements to each patient by merging personal data
with the script programs. Id. at 12:59-61, 13:6-7. The data merge program
retrieves data from a table in a database at the server and inserts the data into
statements in a generic script program to create a custom script program that
contains statements customized to an individual. Id. at 13:8-12. After the script
assignor assigns the script program to the individual or patient, the server transmits
the script program to the remote apparatus of the individual or patient through a
communication network. Id. at 13:64-65, 14:8-10.

Claim 1 of the ’249 patent is reproduced below:

1. A method of remotely managing health care of a person,
comprising:
providing a remote apparatus to said person, said remote
apparatus having an audio processor and an audio interface;
providing a server having (i) a script generator for generating a
script program, (ii) a data merge program for merging personal data
relating to said person with said script program, and (iii) a script
assignor for generating a respective pointer to associate said script
program to said person;
collecting biometric information pertaining to said person via
the remote apparatus;
sending the biometric information pertaining to said person
from the remote apparatus to the server via a communication network;
generating said script program with the script generator at the
server based on input from a health care professional associated with
said person;
customizing the script program with the data merge program at
the server using personal data relating to said person, wherein said
script program includes (a) health information based on the collected
biometric information and specific to said person, (b) a message
directed to said person from said health care professional associated
with said person, and (c) a program identifier, wherein said program
IPR2013-00460
Patent 7,870,249 B2

5

identifier is used by said server to identify to said server the script
program executed by the remote apparatus;
assigning said script program to said person at said server with
said script assignor based on input from said health care professional
associated with said person;
sending the script program to the remote apparatus via the
communication network for interaction with said person; and
executing the script program in the remote apparatus, wherein
at least a portion of the script program is used by the audio processor
to communicate with said person.

We note that the ’249 patent is presently the subject of a patent infringement
lawsuit brought by Robert Bosch Healthcare Systems against Cardiocom, LLC and
Abbott Diabetes Care, in the United States District Court for the Eastern District of
Texas, Case No. 2:13-cv-349. See Pet. 1.

C. Claim Interpretation
Consistent with the statute and the legislative history of the Leahy-Smith
America Invents Act, Pub. L. No. 112-29, 125 Stat. 284, 329 (2011) (“AIA”), the
Board interprets claim terms by applying the broadest reasonable construction in
the context of the specification in which the claims reside. 37 C.F.R. § 42.100(b);
see Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
2012.)
Under the broadest reasonable interpretation standard, claim terms are given
their ordinary and customary meaning as would be understood by one of ordinary
skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc.,
504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term
must be set forth in the specification with reasonable clarity, deliberateness, and
precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In this regard,
IPR2013-00460
Patent 7,870,249 B2

6

however, we are careful not to read a particular embodiment appearing in the
written description into the claim if the claim language is broader than the
embodiment. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
In assessing the merit of Petitioner’s arguments, we have construed the
following claim terms in light of the specification of the ’249 patent.
1. “script program”
Claims 1, 14, 23, and 27 recite a script program. Petitioner provides a
dictionary definition of the term “script” as being “a type of program that consists
of a set of instructions to an application or a utility program. A script usually
consists of instructions expressed using the application’s or utility’s rules and
syntax, combined with simple control structures such as loops and if/then
expressions.” Ex. 1009 ¶ 23 (citing MICROSOFT PRESS COMPUTER DICTIONARY
(Microsoft Press 3d. 1997), (Ex. 1010 at 422-423)). Petitioner further argues that
the term “script program” should mean “a program including at least one text
command and [that] can be interpreted and performed by a device, such as a
computer.” Pet. 11. Although Petitioner argues that a script program must include
“at least one text command,” Petitioner does not explain why a script command
must necessarily include a text command in view of the dictionary definition of
“script” that does not require a text command.
Patent Owner argues that “script program” should be interpreted to mean “a
set of instructions or commands written in a language that can be interpreted and
executed by another program.” Prelim. Resp. 10. Hence, Patent Owner argues
that a “script command” must be interpreted and executed by another program as
opposed to a device or computer. As Patent Owner points out, the ’249 patent
specification discloses a microprocessor that stores firmware in memory, the
firmware including a script interpreter used by the microprocessor to execute script
IPR2013-00460
Patent 7,870,249 B2

7

programs. Ex. 1001, 5:55-59. In other words, the ’249 patent specification
discloses that a microprocessor executes script programs (by using a script
interpreter). Patent Owner essentially argues that a “script interpreter” as disclosed
in the specification is “another program.” Patent Owner, however, does not
demonstrate persuasively that the microprocessor, which executes the script
program, is necessarily “another program,” and not a device, such as a computer.
We are not persuaded, therefore, that the ’249 patent specification requires a script
program that is not executed by a device or computer.
Based on the dictionary definition of “script” as a set of instructions to a
program, we agree that under the broadest reasonable construction of the term, a
“script program” is a program that contains a set of instructions capable of being
executed and interpreted.

2. “data merge program”
Claims 1, 14, 23, and 27 recite a data merge program. Petitioner argues that
the term “data merge program” should be construed to mean “a software module
that combines two or more sets of data into one.” Pet 11. Petitioner further cites a
dictionary definition of the term “merge” as meaning “combin[ing] two or more
sets of items into one, usually in a specified sequence.” Pet. 12 (citing the
Declaration by Robert T. Stone (Ex. 1009) ¶ 24; IEEE STANDARD DICTIONARY OF
ELECTRICAL AND ELECTRONICS TERMS, 583 (4
th
ed. 1988) (Ex. 1011)). We note
that the dictionary definition states that merging items is “usually in a specified
sequence,” which means that merged items are not required to be in a specified
sequence. Therefore, we do not construe the “data merge program” as requiring
merged items to be in a specified sequence.
IPR2013-00460
Patent 7,870,249 B2

8

Patent Owner argues that the ’249 patent specification “refers to a ‘mail
merge application,’ which is more specific than merging generally,” and that “it is
not reasonable to adopt” a construction of the term “data merge program” that
includes anything more than a “mail merge” program. Prelim. Resp. 14-15. Thus,
Patent Owner argues that the term “data merge program” should be construed to
mean “software that takes data and inserts the data into a script program or other
template.” Prelim. Resp. 16.
Although we agree with Patent Owner that the ’249 patent specification
discloses “merging personal data with the script programs, much like a standard
mail merge application” (Ex. 1001, 12:60-62), Patent Owner does not indicate that
the ’249 Patent specification also discloses that a data merge program contains
specifically enumerated features of a “standard mail merge application,” and what
such specifically enumerated features of the mail merge application might be.
Also, claim 1 recites “a data merge program for merging personal data relating to
said person with said script program,” and therefore, explicitly recites that the data
merge program is for merging data with a script program. Incorporating explicitly
recited features of the data merge program (i.e., for merging data with a script
program) from the claim into the definition of the term would render superfluous
the explicitly recited claim limitation.
Therefore, we construe the term “data merge program” broadly, but
reasonably, in light of the specification, to mean a program that combines two or
more sets of data into one, as proposed by Petitioner.

3. “pointer”
Claim 1 recites a pointer. Petitioner argues that the term “pointer” should be
construed to mean “an identifier that indicates the location of an item of data.”
IPR2013-00460
Patent 7,870,249 B2

9

Pet. 12. Patent Owner does not propose a construction for this term. In
accordance with a broad but reasonable construction of the term in light of the
Specification, we adopt the Petitioner’s construction of the term “pointer” to be an
identifier that indicates the location of an item, for the reasons stated by Petitioner.
See Pet. 12.

4. “script assignor”
Claims 1, 14, 23, and 27 recite a script assignor. Petitioner argues that the
term “script assignor” should be construed to mean “a software module that
associates a script program with an individual.” Pet. 12. Patent Owner does not
propose a construction for this term. In accordance with a broad but reasonable
construction of the term in light of the Specification, we adopt the Petitioner’s
construction of the term “script assignor” to be a program that associates a script
program with an individual, for the reasons stated by Petitioner. See Pet. 12-13.

II. ANALYSIS
A. Cited References

1. Overview of Fu

Fu discloses a personal health monitoring system including a central unit
connected to a plurality of remote or home units. Ex. 1002, 5:44-48. The home
unit prompts a patient to take prescribed medications and to perform prescribed
tests, the measurements of which are stored in a log and transmitted to the central
unit. Id. at 8:18-25. The remote or home unit includes a central processing unit
(CPU) that maintains various health related information and parameters for the
patient, such as medical test schedules for the patient and measurements of
IPR2013-00460
Patent 7,870,249 B2

10

parameters indicative of the health of the patient. Id. at 10:1-8, 35-36. The remote
or home unit also provides a question and answer session event to the patient via a
display unit. Id. at 10:54-61. During that event, the patient is asked questions
depending on a physician’s prescribed schedule, and the measured health
parameters and the responses from the patient are recorded. Id.

2. Overview of Wahlquist

Wahlquist discloses a system for remotely performing computer diagnostic
tests on personal computers. Ex. 1003, 1:7-10. A computer user calls a customer
service help desk to resolve a computer issue. Id. at 2:8-10, 17. A representative
at the customer service help desk creates a computerized case file that includes a
unique case identification number, user identification, and user’s computer
identification information. Id. at 4:41-47. The representative also selects
diagnostic tests based on the user’s request, the selection utilized to build a script
file. Id. at 2:17-18, 22-23. The case file and the script file are submitted by the
representative to a database manager computer, and then downloaded to the user’s
computer. Id. at 5:37-39, 63-66. Subsequently, the script file is executed on the
user’s computer by a diagnostic program on the user’s computer. Id. at 2:39-40,
42-43. The script file instructs the user’s computer to execute desired test files and
specifies the creation of various log files to record the results of the tests. Id. at
2:45-47.

3. Overview of Cohen

Cohen discloses a patient monitoring system that includes a central
monitoring subsystem coupled to many outpatient subsystems. Ex. 1004, 7:61-65.
The central monitoring subsystem includes a processor with a voice generator and
IPR2013-00460
Patent 7,870,249 B2

11

modem. Id. at 8:6-8, 13-14. The outpatient subsystem includes a telephone. Id. at
8:22-23.

4. Overview of Bittorf

Bittorf discloses a computer based training system for students in the field of
dermatology. Ex. 1006, 46, col. 1. In the system of Bittorf, a user may design a
quiz by selecting questions from a database that meet specified constraints.
Ex. 1006, 48, col. 1.

5. Overview of Goodman

Goodman discloses a system for monitoring the health of a patient in which
a host computer is in communication with a health care provider’s computer and a
patient’s computer. Ex. 1005, 1:11-13, 2:45-49. In one embodiment, the host
computer receives a treatment plan for a patient from the health care provider and
generates an algorithm based on the treatment plan. Ex. 1005, 2:54-57. The
algorithm is programmed into a message device, which is in the possession of the
patient. Ex. 1005, 2:49-50, 57-58. The message device prompts the patient to
measure and enter physiological data as dictated by the treatment plan. Ex. 1005,
2:59-61.

B. Obviousness Over Combinations of References Involving Fu,
Goodman, and/or Wahlquist

Petitioner asserts that claims 1-29 are obvious under 35 U.S.C. § 103(a) over
Wahlquist in combination with any of Fu, Goodman, Cohen, and/or Bittorf. Pet. 5.
IPR2013-00460
Patent 7,870,249 B2

12

Claim 27 recites “customizing [a] script program with a data merge program
located on [a] server using personal data relating to [an] individual.” Independent
claims 1, 14, and 23 recite similar features.
1

Petitioner argues that Fu discloses “the creation of patient data, test, and
medication profiles.” Pet. 32-34, 43, 49, 54. Patent Owner argues that Fu
discloses “two separate things” (i.e., patient data and test and medication profiles)
and that “Fu does not teach that . . . the two are in any way combined.” Prelim.
Resp. 45.
Fu discloses that “[p]atient data and the test and medication profiles are read
from the mass storage device . . . and stored in the random access memory of the
main CPU.” Ex. 1002, 8:50-52. However, Petitioner has not demonstrated
sufficiently that Fu also discloses a data merge program (i.e., a program that
combines two or more sets of data into one). Rather, Fu merely discloses reading
separate files of data from a mass storage device.
Petitioner also argues that Goodman discloses generating algorithms that are
based on treatment plans developed specifically for a patient. Pet. 32-34, 43, 49,
54. Patent Owner argues that “Goodman does not involve customizing a script
program with personal information . . . [and] cannot possibly teach a ‘data merge
program.’” Prelim. Resp. 52.
As Petitioner explains, Goodman discloses “logic sequences or algorithms

1
Claim 1 recites “a data merge program for merging personal data relating to said
person with said script program” and “customizing the script program with the data
merge program at the server using personal data relating to said person.” Claim 14
recites “a data merge program for customizing the script program by merging
personal data relating to said person with the script program.” Claim 23 recites “a
data merge program configured to merge personal information relating to the
individual with the script program.”
IPR2013-00460
Patent 7,870,249 B2

13

. . . [that] are developed based on a treatment plan or guidelines for a specific
patient.” Ex. 1005, 8:38-40; see Pet. 32. However, Petitioner has not
demonstrated sufficiently that Goodman also discloses a program that combines
two or more sets of data into one (i.e., a “data merge program”). Based on the
record before us, Petitioner has demonstrated that Goodman only discloses
developing a treatment plan, but has not demonstrated that Goodman discloses
combining the treatment plan, or any other set of data, with at least one other set of
data.
Petitioner also argues that Wahlquist discloses selecting tests from a menu to
build a script file. Pet. 32-34, 43-44, 49-50, 54. Wahlquist discloses a
representative creating a “computerized case file which includes . . . user
identification information.” Ex. 1003, 2:11-13. Wahlquist also discloses that the
representative “selects various diagnostic tests from a menu . . . to build a high
level . . . script file.” Ex. 1003, 2:18-23. Patent Owner argues that Petitioner’s
“premise that Wahlquist teaches merging the script file and case management file
at the user’s computer is incorrect.” Prelim. Resp. 53.
As previously described, Petitioner explains that Wahlquist discloses
creating a computerized case file and a (separate) script file. However, Petitioner
does not demonstrate sufficiently that Wahlquist also discloses a program that
combines two or more sets of data into one (i.e., a “data merge program”). Instead,
Wahlquist discloses creating two separate files or sets of data (i.e., a computerized
case file and a script file), but does not disclose combining the two separate sets of
data into one.
Petitioner’s declarant opines that Wahlquist discloses that “the created script
program and a case management file [are] sent to a user computer, thereby
associating the script program with the case management file.” Ex. 1009 ¶ 104.
IPR2013-00460
Patent 7,870,249 B2

14

Even assuming that a case management file is “associated” with a script program
in Wahlquist, Petitioner does not provide sufficient and credible evidence that
Wahlquist also discloses two sets of data (i.e., the case management file and the
script program) being combined into one. In other words, Petitioner does not
demonstrate that a set of data that is “associated with” another set of data also is
combined (or “merged”) with that data set.
Petitioner’s declarant further asserts that Wahlquist discloses a script
program that “uses information from the case management file to perform . . . tests
. . . [so that] the script program and case management file are in fact merged at the
user computer.” Ex. 1009 ¶ 105. In other words, Petitioner argues that the two
separate sets of data (i.e., the script program and the case management file) of
Wahlquist are actually “merged” (i.e., combined into one data set) because one set
of data (i.e., the script file) uses the other set of data (i.e., the case management
file) to perform tests. Even if the script file “uses” the case management file in
Wahlquist, however, Petitioner has not demonstrated persuasively that one set of
data “using” information from another set of data necessarily results in the two sets
of data being combined into one set of data.
Petitioner does not assert that any one of Cohen or Bittorf discloses a “data
merge program,” as recited in the independent claims of the ’249 patent.
Accordingly, on the record before us, and for the foregoing reasons, we are
not persuaded that Petitioner has shown a reasonable likelihood that it will prevail
in its assertion that independent claims 1, 14, 23, and 27 are unpatentable over the
combination of Wahlquist and any one of Fu and Goodman, either alone or in
combination with any one of Cohen or Bittorf. We also are not persuaded in
connection with any of these grounds of unpatentability as applied to claims 2-13,
IPR2013-00460
Patent 7,870,249 B2

15

15-22, 24-26, 28, and 29, which ultimately depend from one of claims 1, 14, 23, or
27.

III. CONCLUSION

We determine that Petitioner has not established that there is a reasonable
likelihood that Petitioner would prevail with regard to any unpatentability
contention for any one of claims 1, 2, 4-10, 12-21, and 23-29 as unpatentable over
Fu and Wahlquist; claims 1, 4-8, 10, 12-14, 17-21, and 23-29 as unpatentable over
Goodman and Wahlquist; claims 1-10, 12-21, and 23-29 as unpatentable over
Cohen, Wahlquist, and one of Fu or Goodman; claims 1, 2, and 4-29 as
unpatentable over Fu, Wahlquist, and Bittorf; and claims 1, 4-8, 10-14, and 17-26
as unpatentable over Goodman, Wahlquist, and Bittorf.

IV. ORDER
After due consideration of the record before us, it is
ORDERED that the petition is denied as to all challenged claims, and no
trial based on the petition is instituted.

IPR2013-00460
Patent 7,870,249 B2

16

PETITIONER:

Daniel W. McDonald
Andrew J. Lagatta
MERCHANT & GOULD, P.C.
dmcdonald@merchantgould.com
alagatta@merchantgould.com

PATENT OWNER:

Don Daybell
Davin M. Stockwell
ORRICK, HERRINGTON & SUTCLIFFE LLP
ddaybell@orrick.com
dstockwell@orrick.com