Medtronic, Inc.v.Robert Bosch Healthcare Systems, Inc.

Patent Trial and Appeal Board

Jun 19, 2014

11668092 (P.T.A.B. Jun. 19, 2014)

Trials@uspto.gov Paper 17
571-272-7822 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
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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”).
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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).
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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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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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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
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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 provide a
diagnosis of a performance of
said [primary device or
household appliance]
execute said computer programs to
provide data or information of a performed
operation by the [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.
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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.

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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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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
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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).
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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
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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
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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
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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.

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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