Trials@uspto.gov
`571-272-7822
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`Paper 67
`Date: January 15, 2015
`
`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 IPR2013-00431
`Patent 7,921,186 B2
`____________
`
`
`Before STEPHEN C. SIU, JUSTIN T. ARBES, and MIRIAM L. QUINN,
`Administrative Patent Judges.
`
`SIU, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`I. BACKGROUND
`
`Cardiocom, LLC (“Petitioner”)1 filed a Petition (Paper 2) (“Pet.”)
`
`seeking inter partes review of claims 1–16 of U.S. Patent No. 7,921,186 B2
`
`(Ex. 1001, “the ’186 patent”) pursuant to 35 U.S.C. §§ 311–319. On
`
`1 Petitioner indicates that Medtronic, Inc. also is a real party-in-interest in
`this proceeding. Paper 21.
`
`

`

`IPR2013-00431
`Patent 7,921,186 B2
`
`
`January 16, 2014, the Board instituted an inter partes review of claims 1–16
`
`
`
`(Paper 22) (“Dec. on Inst.”).
`
`Subsequent to institution, Robert Bosch Healthcare Systems, Inc.
`
`(“Patent Owner”) filed a Patent Owner Response (Paper 37) (“PO Resp.”),2
`
`and Petitioner filed a Reply (Paper 44) (“Pet. Reply”). Patent Owner filed a
`
`Motion to Exclude Evidence (Paper 54), Petitioner filed an Opposition to
`
`Patent Owner’s Motion to Exclude (Paper 58), and Patent Owner filed a
`
`Reply (Paper 59). Petitioner filed a Motion to Exclude Evidence (Paper 52),
`
`Patent Owner filed an Opposition to Petitioner’s Motion to Exclude (Paper
`
`56), and Petitioner filed a Reply (Paper 60). Patent Owner also filed a
`
`Motion for Observation (Paper 53) (“Obs.”) on certain cross-examination
`
`testimony of Petitioner’s declarant, Dr. Robert Stone, and Petitioner filed a
`
`Response (Paper 57) (“Obs. Resp.”).
`
`The Board has jurisdiction under 35 U.S.C. § 6(c). This final written
`
`decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`
`For the reasons that follow, we determine that Petitioner has shown by
`
`a preponderance of the evidence that claims 1–16 of the ’186 patent are
`
`unpatentable.
`
`
`
`A.
`
`The ’186 Patent (Ex. 1001)
`
`The ’186 patent describes methods for collecting data relating to the
`
`health status of patients and communicating information to patients.
`
`Ex. 1001, 4:8–17.
`
`
`
`
`2 We cite to the Corrected Patent Owner’s Response, filed April 25, 2014,
`Paper 37.
`
`2
`
`
`

`

`IPR2013-00431
`Patent 7,921,186 B2
`
`
`
`Illustrative Claim
`
`B.
`
`
`
`Claim 1 of the ’186 patent is reproduced below:
`
`An apparatus for interactively communicating with
`1.
`an individual regarding health related information, the
`apparatus comprising:
`a first communication interface to communicate with a
`monitoring device, wherein said monitoring device is configured to
`(i) produce physiological information regarding said individual, and
`(ii) transmit said physiological information to said apparatus;
`a second communication interface to (i) receive programming
`information from a server via a communication network, and
`(ii) transmit said physiological information from said apparatus to said
`server via said communication network, wherein said programming
`information comprises at least one of (a) a query, (b) a message
`corresponding to said individual from a health care professional
`associated with said individual, (c) a computer program customized
`using personal data relating to said individual, and (d) information
`specific to said individual;
`a display for presenting one or more of said query, said
`message, and said information to said individual; and
`a user interface for said individual to provide responses to said
`query, said message, or said information presented on said display;
`wherein (i) said responses are transmitted to said server through
`said communication network, (ii) said server assigns said
`programming information to said individual based upon input from
`said health care professional associated with said individual, and
`(iii) said programming information is related to a health condition of
`the individual, (iv) said apparatus is remotely situated from said
`server, (v) said programming information is presented to said
`individual by executing said computer program on said apparatus and
`(vi) said computer program comprises a custom script program (a)
`designed specifically for said individual, (b) associated with said
`individual by a unique identification code, and (c) configured to
`control said monitoring device.
`
`
`
`
`3
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`

`

`IPR2013-00431
`Patent 7,921,186 B2
`
`
`
`Cited Prior Art
`
`C.
`
`
`
`The pending grounds of unpatentability in this inter partes review are
`
`based on the following prior art:
`
`
`
`
`
`Wahlquist
`Goodman
`Lyons
`
`
`
`US 5,367,667
`US 5,827,180
`US 5,623,656
`
`Nov. 22, 1994
`Oct. 27, 1998
`Apr. 22, 1997
`
`(Ex. 1003)
`(Ex. 1005)
`(Ex. 1006)
`
`D.
`
`Instituted Grounds of Unpatentability
`
`This inter partes review involves the following asserted grounds of
`
`unpatentability:
`
`References
`
`Goodman and Wahlquist
`Goodman, Wahlquist, and
`Lyons
`
`
`
`Basis
`
`§103
`§103
`
`Claims Challenged
`
`1–6 and 8–15
`7 and 16
`
`E.
`
`Claim Interpretation
`
`The parties appear to agree with the interpretation of various claim
`
`terms of the ’186 patent as described in the Decision on Institution. Patent
`
`Owner explains that Petitioner “filed a new petition seeking inter partes
`
`review of related U.S. Patent No. 7,587,469” in which Petitioner “advances
`
`a very different construction” for the term “script program.” PO Resp. 2.
`
`However, Petitioner does not advance a different construction for the term
`
`“script program” in this proceeding.
`
`We adopt our previous analysis for the non-disputed claim terms, and
`
`interpret certain claim terms as follows:
`
`4
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`

`

`IPR2013-00431
`Patent 7,921,186 B2
`
`
`Term
`
`“communication interface”
`
`“script program”
`
`
`
`Interpretation
`
`
`
`any component through which
`two or more devices or systems
`may communicate
`
`a program that contains a set of
`instructions capable of being
`executed and interpreted
`
`“monitoring device”
`
`a device that monitors
`
`See Dec. on Inst. 5–8.
`
`
`
`II. ANALYSIS
`
`A. Grounds Based at Least in Part on Goodman and Wahlquist
`
`
`For at least the foregoing reasons, we conclude that Petitioner has
`
`demonstrated that claims 1–6 and 8–15 are unpatentable over Goodman and
`
`Wahlquist, and that claims 7 and 16 are unpatentable over Goodman,
`
`Wahlquist, and Lyons, under 35 U.S.C. § 103(a).
`
`
`
`
`
`1. Server
`
`Claim 1, for example, recites a “server.” Wahlquist discloses a help
`
`desk representative selecting diagnostic tests based on a user’s request. Ex.
`
`1003, 2:8–10, 11; 2:17–18, 22–23. Goodman discloses a host computer in
`
`communication with a health care provider’s computer and a patient’s
`
`computer. Ex. 1005, 1:11–13, 2:45–49. Fig. 1 of Goodman is reproduced
`
`below.
`
`
`
`
`
`5
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`

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`IPR2013-00431
`Patent 7,921,186 B2
`
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`
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`
`
`
`
`Fig. 1 of Goodman illustrates a personal health network in which a
`
`host computer is in communication with a patient computer and a health care
`
`provider computer.
`
`Petitioner argues that Goodman discloses “server 30” (i.e., “host
`
`computer 30”). Pet. 42 (citing Ex. 1005, 5:5–8, 13–24); see also Ex. 1005,
`
`Fig. 1. Patent Owner argues that Goodman fails to disclose or suggest a
`
`“server” because Petitioner’s declarant “conceded that Goodman’s
`
`‘communications port’ was not a server.” PO Resp. 39. However, Patent
`
`Owner does not refute sufficiently Petitioner’s contention that Goodman
`
`discloses or suggests host computer 30 or “server 30.” Nor does Patent
`
`Owner point out any differences believed to exist between host computer 30
`
`disclosed by Goodman and the claimed “server.”
`
`
`
`6
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`

`

`IPR2013-00431
`Patent 7,921,186 B2
`
`
`
`2. First communication interface
`
`
`
`Claim 1, for example, recites a “first communication interface.”
`
`Petitioner argues that “Goodman discloses a first communication interface
`
`71 to communicate with a monitoring device 70.” Pet. 41. Patent Owner
`
`relies on testimony of Dr. Yadin David3 and argues that Goodman fails to
`
`disclose or suggest a “first communication interface” because “element
`
`71 . . . is an ‘information input,’ . . . not a system component” and “fails to
`
`satisfy the Board’s construction for communication interface, which requires
`
`a ‘component.’” PO Resp. 40 (citing Ex. 2006 ¶ 146). However, neither
`
`Patent Owner nor Patent Owner’s declarant (Dr. Yadin David) demonstrates
`
`sufficiently how “element 71” of Goodman differs from a “component”
`
`through which devices communicate information, particular in view of the
`
`disclosure of Goodman that data is accepted at data processor 10 from
`
`device 70 via “information input 71” and that such signals are
`
`communicated “through the use of a custom interface” (or a
`
`“communication interface”). See, e.g., Ex. 1005, 7:22–23, 34–35.
`
`Patent Owner acknowledges that Goodman discloses a “custom
`
`interface” but argues that the custom interface of Goodman “is incorporated
`
`into the monitoring device 70.” PO Resp. 40 (citing Ex. 1005, 7:34–38,
`
`42–44). Thus, Patent Owner argues that the “custom interface” of Goodman
`
`is not the same or suggestive of a “first communication interface,” as recited
`
`in claim 1, for example, because the “custom interface” of Goodman
`
`supposedly is “incorporated into the monitoring device 70.” Claim 1, for
`
`example, recites a first communication interface “to communicate with a
`
`monitoring device.” Goodman discloses that “the data processor 10 is
`
`
`3 Declaration of Dr. Yadin David, Ed.D., dated April 1, 2014 (Ex. 2006).
`7
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`

`IPR2013-00431
`Patent 7,921,186 B2
`
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`adapted to accept information input . . . from a medical device 70” and that
`
`
`
`“a custom interface . . . translate[s] a signal of the medical device . . . into a .
`
`. . form acceptable to processor 10.” Ex. 1005, 7:22–23, 34–37. In other
`
`words, Goodman discloses an interface (i.e., a “first communication
`
`interface”) that receives signals from a device (i.e., communicates with a
`
`monitoring device), as recited in claim 1.
`
`
`
`3. User interface
`
`Claim 1, for example, recites a “user interface for said individual to
`
`provide responses to said query, said message, or said information”; that
`
`“programming information comprises at least one of” the query, the
`
`message, and the information specific to said individual; and a second
`
`communication interface for receiving the “programming information from a
`
`server via a communication network.” Petitioner argues that Goodman
`
`discloses these features. Pet. 42 (citing Ex. 1005, 4:46–52). Goodman
`
`discloses, for example, that a patient receives a “medication alarm” in which
`
`“the name of the medication and dose may be displayed,” and the “patient
`
`turns off the alert by activating a switch 22.” Ex. 1005, 4:46–52. Petitioner
`
`argues also that Goodman discloses “adding one or more switches 24” so
`
`that “patients can respond to query-type messages.” Pet. Reply 8 (citing Ex.
`
`1005, 5:29–34).
`
`Patent Owner argues that “activating the switch 22 [or, presumably,
`
`switch 24] is not a response to any query, message or information received
`
`over the second communication interface” and that “the alarm is not
`
`communicated over the second communication interface, as required by
`
`claim 1.” PO Resp. 41.
`
`8
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`

`

`IPR2013-00431
`Patent 7,921,186 B2
`
`
`
`As Petitioner explains, however, Goodman discloses that patients
`
`
`
`respond “to query-type messages,” which Patent Owner does not
`
`demonstrate to differ from an individual providing responses to a query, as
`
`recited in claim 1, for example. Goodman also discloses that the
`
`“medication alarm” (i.e., “query”) is provided to the patient based on “[a]
`
`patient’s entire medication regimen, including dosing intervals [that] can be
`
`downloaded from the host computer 30 to the data processor 10 via
`
`communication line 31.” Ex. 1005, 4:39–43. Hence, Goodman discloses
`
`that information (e.g., query, medication regimen and dosing intervals, or the
`
`name of medication and dose) specific to the individual (e.g. the patient), at
`
`least, is received from a server (i.e., host computer 30), presented to the
`
`patient, and the patient responds to the information via a “user interface”
`
`(i.e., a switch). We do not observe, and Patent Owner does not point out,
`
`any substantial differences between the patient in Goodman responding to a
`
`medication alert, for example, by activating a switch in response to query-
`
`type messages and the claim feature of an individual providing a response to
`
`a query, message, or information.
`
`
`
`4. Said responses are transmitted to said server
`
`Claim 1, for example, recites “said responses are transmitted to said
`
`server.” Claim 9 recites a similar feature. Petitioner argues that Goodman
`
`discloses this feature. Pet. 42 (citing Ex. 1005, 4:46–52). Goodman
`
`discloses that a patient receives a “medication alarm” in which “the name of
`
`the medication and dose may be displayed,” and the “patient turns off the
`
`alert by activating a switch 22.” Ex. 1005, 4:46–52. Petitioner also argues
`
`that Goodman discloses “activation of the switch is stored as compliance
`
`9
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`

`

`IPR2013-00431
`Patent 7,921,186 B2
`
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`data and communicated to the host computer.” Pet. Reply 9 (citing Ex.
`
`
`
`1005, 4:49–53, 63–65). Hence, Goodman discloses that responses (i.e.,
`
`“compliance data”) are transmitted to the server (or host computer).
`
`Patent Owner argues that Goodman fails to disclose or suggest
`
`“responses or other messages generated by the individual and sent to the
`
`host computer 30” or that “alarm de-activations are transmitted to the server
`
`through said communication network.” PO Resp. 41–42. As discussed
`
`above, claim 1 recites that “said responses are transmitted to said server.”
`
`Also as discussed above, Goodman discloses a patient’s response (e.g.,
`
`“compliance data”) being transmitted to the server (e.g., “uploaded to the
`
`host computer,” Ex. 1005, 4:64–65) and that the compliance data result from
`
`the patient’s response (i.e., activating a switch). Patent Owner does not
`
`explain sufficiently a difference between transmitting a patient’s response
`
`(or compliance data) to a host computer of Goodman and the claim
`
`limitation of said responses being transmitted to the server.
`
`Regarding claim 9, Patent Owner also argues that Petitioner
`
`“improperly relies on a combination with the pager embodiment of
`
`Goodman,” and that the pager embodiment “cannot be combined with the
`
`embodiment of Fig. 5 [of Goodman], which contains the ‘generating
`
`physiological information’ step of parent claim 9.” PO Resp. 57. Goodman
`
`discloses a “personal health network” (PHN) that contains a “patient node
`
`2,” which may contain a “data processor 10” and a “message device 20.”
`
`Ex. 1005, 3:13–14, 51–52, 60–61; Fig. 1. Goodman also discloses that the
`
`“patient node 2” may further contain “a medical device 70.” Ex. 1005,
`
`7:22–24; Fig. 5 (the so-called “embodiment of Fig. 5,” as referred to by
`
`Patent Owner). In the “pager embodiment” (as referred to by Patent
`
`10
`
`
`

`

`IPR2013-00431
`Patent 7,921,186 B2
`
`
`Owner), a “wireless carrier 60 functions as the data processor 10 and the
`
`
`
`paging device 61 performs the message functions of the message device 20.”
`
`Ex. 1005, 6:13–15. In other words, Goodman explicitly discloses combining
`
`the so-called “pager embodiment” with the so-called “embodiment of Fig. 5”
`
`in which the “wireless carrier 60” and “paging device 61” (of the so-called
`
`“pager embodiment”) function as “the data processor 10” and “the message
`
`device 20,” respectively, of the so-called “embodiment of Fig. 5.”
`
`Given that Goodman explicitly discloses one embodiment that
`
`includes a combination of the alleged components of both the so-called
`
`“pager embodiment” and the so-called “embodiment of Fig. 5,” we are not
`
`persuaded by Patent Owner’s argument that the two alleged embodiments
`
`“cannot be combined.”
`
`
`
`5. Said server assigns said programming information to said
`individual
`
`Claim 1, for example, recites “said server assigns said programming
`
`information to said individual.” Claim 9 recites a similar feature. Petitioner
`
`argues that Goodman discloses this feature. Pet. 43 (citing Ex. 1005, 5:13–
`
`24). Goodman discloses “the PHN 1” or “host computer 30” (i.e., a server)
`
`receiving a patient’s “medication regimen and other information from each
`
`primary health care provider” and “information from other health care
`
`facilities” and downloading the information “to the data processor . . . and
`
`the message device.” Ex. 1005, 5:13–24. Petitioner also argues that one of
`
`ordinary skill in the art would have understood that a “customized message
`
`appearing on the remote apparatus [of Goodman] is enough to show that the
`
`server assigned the programming information,” citing the testimony of Dr.
`
`11
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`

`IPR2013-00431
`Patent 7,921,186 B2
`
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`David. Pet. Reply 10 (citing Ex. 1041, 112:14–19; 483:16–25; 485:20–
`
`
`
`486:2).
`
`Patent Owner argues that Goodman “says nothing about how those
`
`messages are assigned to the individual” and that the information received
`
`by the host computer of Goodman is “already specific to the patient.” PO
`
`Resp. 43; see also PO Resp. 55. However, Patent Owner’s argument is
`
`undermined by Patent Owner’s declarant’s (Dr. Yadin David) testimony that
`
`one of ordinary skill in the art would have understood that the host computer
`
`necessarily assigns programming information to an individual when a
`
`remote apparatus provides a customized message to the individual.
`
`
`
`Q. How did -- how did that information indicate
`that to you?
`A. When the apparatus is coming up with a
`message that is customized to the patient and
`says, “Mrs. Jones, did you take your blood
`pressure today,” and she’s responding by
`pushing a button, yes.
`Q. So when you see that happening at the remote
`Health Buddy device, does that necessarily
`mean that a server assigns said programming
`information to said individual, as described
`there in part 2 of the wherein clause?
`A. Yes.
`
`Ex. 1041, 112:7–19.
`
`Goodman discloses, for example, a “medication alarm” and “the name
`
`of the medication and dose” of a patient displayed on a remote device and
`
`based on a “patient’s entire medication regimen, including dosing intervals”
`
`that is “downloaded from the host computer 30” to the remote device. Ex.
`
`1005, 4:39–45. In other words, Goodman discloses a remote device
`
`12
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`IPR2013-00431
`Patent 7,921,186 B2
`
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`displaying a message to a patient, the message being customized to the
`
`
`
`patient (i.e., displaying medication and dosages specific to the patient).
`
`Hence, as Petitioner demonstrates, and as Patent Owner’s declarant avers,
`
`one of ordinary skill in the art would have understood that the host computer
`
`of Goodman (i.e., a “server”) necessarily would have assigned programming
`
`information to the individual (or patient).
`
`
`
`
`
`6. Said programming information is presented to said individual
`
`Claim 1, for example, recites “said programming information is
`
`presented to said individual by executing said computer program on said
`
`apparatus.” Claim 9 recites a similar feature. Petitioner argues that
`
`Goodman discloses this feature. Pet. 43 (citing Ex. 1005, 6:28–35); Pet.
`
`Reply 10–11 (citing Ex. 1005, 2:54–61, 8:38–46, 8:65–9:28; Figs. 10a–10b).
`
`Patent Owner argues that Petitioner fails to demonstrate “that any computer
`
`program is received over the second communication interface from a server,
`
`as required by claim 1” or that “the computer program which presents
`
`messages to the individual is received from a server.” PO Resp. 44–45. We
`
`are not persuaded by Patent Owner’s arguments.
`
`Goodman discloses a server (or host computer) that develops
`
`“algorithms” based on the treatment plan that the server receives and
`
`programs the algorithms into a (remote) message device associated with a
`
`specific patient and that “[t]he patient is prompted by the message device to
`
`measure and enter relevant physiological data.” See e.g., Ex. 1005, 2:56–61.
`
`In other words, Goodman discloses that “algorithms” (or a computer
`
`program) are received from a server (i.e., host computer programs the
`
`algorithms into a message device) and executed on the message device (i.e.,
`
`13
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`IPR2013-00431
`Patent 7,921,186 B2
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`
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`executing a computer program on the apparatus) with the resultant display of
`
`programming information (e.g., message for prompting to measure data) to
`
`an individual (e.g., a patient) at the remote device (i.e., apparatus).
`
`With respect to claim 9, Patent Owner also argues that Petitioner
`
`relies on “the ‘pager’ embodiment [that] cannot be combined with the
`
`embodiment of Fig. 5, which allegedly contains the required ‘generating
`
`physiological information’ step of parent claim 9.” PO Resp. 58. We are
`
`not persuaded by Patent Owner’s arguments for at least the reasons
`
`previously discussed.
`
`
`
`7. Said computer program comprises a custom script program
`
`Claim 1, for example, recites “said computer program comprises a
`
`custom script program.” Claim 9 recites a similar feature. Petitioner argues
`
`that Goodman and Wahlquist disclose this feature. Pet. 43 (citing Ex. 1005,
`
`8:38–46; Ex. 1003, 2:10–15, 17–31, 42–49); Pet. Reply 11–12.
`
`Patent Owner argues that Wahlquist fails to disclose or suggest a
`
`script program because, according to Patent Owner, Wahlquist fails to
`
`disclose that its “script file” “is ‘executed and interpreted’ as required by the
`
`Board’s construction.” PO Resp. 47 (citing Ex. 2006 ¶¶ 163–164, 168).
`
`However, a “script file” is construed broadly but reasonably to include a
`
`program that contains a set of instructions capable of being executed and
`
`interpreted. Dec. on Inst. 7. Wahlquist discloses that the “various
`
`diagnostic tests” are “to be run on the user’s computer.” Ex. 1003, 2:18–19.
`
`Patent Owner does not explain adequately how a program that is “to be run”
`
`on a computer is incapable of being “executed,” for example, on the
`
`computer. We are persuaded by Petitioner’s arguments, supported by the
`
`14
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`IPR2013-00431
`Patent 7,921,186 B2
`
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`testimony of Dr. Stone (Ex. 1007), that one of ordinary skill in the art would
`
`
`
`have understood that a program that is capable of being “run” on a computer
`
`would be executed and interpreted on the computer, as Wahlquist explicitly
`
`discloses.
`
`Likewise, Goodman discloses that the “algorithm” processes input
`
`and delivers results from the processing to the patient as a message. See
`
`e.g., Ex. 1005, 8:49–51. One of ordinary skill in the art would have
`
`understood the “algorithm” of Goodman to be capable of being executed and
`
`interpreted because Goodman explicitly discloses the processing of data with
`
`the “algorithm.” One of ordinary skill in the art would have understood that
`
`if the “algorithm” of Goodman was incapable of being executed and
`
`interpreted, the “algorithm” would be unable to process data (not being able
`
`to execute in the first place). This is in contrast to Goodman’s explicit
`
`disclosure of processing data with the algorithm.
`
`Also, Patent Owner argues that Wahlquist fails to disclose “custom
`
`script files” because the scripts of Wahlquist “are not even directed at human
`
`patients, so the diagnostic tests contain no personal data.” PO Resp. 47–48.
`
`In particular, Patent Owner acknowledges that Wahlquist discloses that
`
`“personal data . . . is placed in a ‘case file’” but argues that the “case file” of
`
`Wahlquist “is separate from the ‘script file’ mentioned in Wahlquist.” Id. at
`
`48 (citing Ex. 1003, 2:10–15). In other words, Patent Owner argues that
`
`Wahlquist fails to disclose or suggest a custom “script file” that contains
`
`“personal data.” We note that claim 1 does not require that the custom script
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`program contains “personal data.” Rather, claim 1 recites “said computer
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`program comprises a custom script program” and that the computer program
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`is “customized using personal data relating to said individual.”
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`Also, Patent Owner does not appear to contest that Goodman
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`discloses or suggests a computer program that contains “data relating to said
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`individual.” We note that Goodman discloses “algorithms . . . are developed
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`based on a treatment plan or guidelines for a specific patient” and a
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`“customized patient management program” that contains data relating to a
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`patient (or an individual). Ex. 1005, 8:38–41; 9:1–3, 21–22. Patent Owner
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`does not explain sufficiently how Goodman differs from the claim recitation
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`of “said computer program comprises a custom script program” or that the
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`computer program is “customized using personal data relating to said
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`individual.”
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`8. Individual’s response to the query (claim 2)
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`Claim 2 recites that the query is related to the health condition of the
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`individual and the response comprises an answer to the query provided by
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`the individual. Petitioner argues that Goodman discloses this feature. Pet.
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`44 (citing Ex. 1005, 6:1–13). Patent Owner argues that Goodman discloses
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`“an acknowledgement of delivery of a message” but does not disclose or
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`suggest “an answer to a query.” PO Resp. 49. As Petitioner explains,
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`Goodman discloses “messaging capabilities” where a “[w]ireless carrier
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`60 . . . receives instructions . . . to deliver . . . messages to specific
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`patients . . . at predetermined times” by telephoning “the patient’s pager 61”
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`where the wireless carrier 60 “functions as the data processor 10” and the
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`“paging device 61 performs the messaging functions of the message device
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`20.” Ex. 1005, 5:67; 6:1–4, 13–15.
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`Goodman further discloses that “data processor 10” (with “message
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`device 20,” which functions with paging device 61 ) incorporates “two-way
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`message capability” in which “patients can respond to query-type
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`messages.” Id. at 5:29–56. One of ordinary skill in the art would have
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`understood that wireless carrier 60 of Goodman performs the functions of
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`data processor 10 because, at least, Goodman explicitly discloses that the
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`wireless carrier 60 “functions as the data processor 10.” Id. at 6:13–15. We
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`agree with Petitioner that Goodman discloses both a query and that an
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`individual’s response contains an answer to the query because Goodman
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`explicitly discloses that patients (or individuals) can respond (i.e., provide a
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`response) to query-type messages (i.e., the response to the “query-type
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`message” contains an “answer”). Patent Owner does not provide an
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`adequate showing of a difference between Goodman’s disclosure and the
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`claim limitations of claim 2.
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`Patent Owner also argues that Goodman discloses a “‘pager’ alternate
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`embodiment [the so-called ‘pager embodiment’]” that involves a response to
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`a query but that “the ‘medical device’ alternate embodiment of Goodman
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`[i.e., the so-called “embodiment of Fig. 5]” fails to disclose or suggest this
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`limitation. PO Resp. 49–50. Patent Owner also argues that Petitioner
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`“provides no explanation of how these two different embodiments [of
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`Goodman] could or would have been combined.” Id. at 50. In other words,
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`Patent Owner argues that the so-called “pager embodiment” cannot be
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`combined with the “embodiment of Fig. 5.” We are not persuaded by Patent
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`Owner’s arguments for at least the reasons previously discussed.
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`
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`9. Patient’s response comprises an acknowledgement (claims 3–4,
`11–12)
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`Claim 3 recites that the response comprises an acknowledgement
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`provided by the individual. Claims 4, 11, and 12 recite similar features.
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`Petitioner argues that Goodman discloses these features. Pet. 44 (citing Ex.
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`
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`1005, 15:8–12). Patent Owner argues that Petitioner “improperly relies on a
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`combination with the ‘pager’ alternate embodiment of Goodman” and that
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`“this embodiment cannot be combined with the embodiment of Fig. 5, which
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`allegedly contains the required monitoring device of parent claim 1.” PO
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`Resp. 50–51. We are not persuaded by Patent Owner’s arguments for at
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`least the reasons previously discussed.
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`
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`10. Communication network (claim 5)
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`Claim 5 recites that the communication network comprises a wired
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`network, cable network, wireless network, cellular network, telephone
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`network, satellite network, or television network. Petitioner argues that
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`Goodman discloses this feature. Pet. 44 (citing Ex. 1005, Fig. 4a, 6:1–7).
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`Patent Owner argues that Petitioner “relies on the ‘pager’ alternate
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`embodiment” and that “this embodiment cannot be combined with the
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`embodiment of Fig. 5.” PO Resp. 51. We are not persuaded by Patent
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`Owner’s arguments for at least the reasons previously discussed.
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`
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`11. Programming information provided by healthcare professional
`(claims 6, 14)
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`Claim 6 recites that programming information is from the server and
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`provided by the health care professional via a computer in communication
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`with the server. Claim 14 recites a similar feature. Petitioner argues that
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`Goodman discloses this feature. Pet. 49 (citing Ex. 1005, Figs. 3, 6, 4:63–
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`67, 5:1–4). Patent Owner argues that “the communications port 50 cannot
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`be ‘said server’ as required by claim 6.” PO Resp. 52. As previously
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`discussed, Petitioner asserts that “host computer 30” is the claimed “server.”
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`Therefore, we are not persuaded by Patent Owner’s arguments with respect
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`to “communications port 50.”
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`Patent Owner also argues that Petitioner “improperly relies on a
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`combination with the ‘pager’ alternate embodiment of Goodman” that
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`“cannot be combined with the ‘medical device’ alternate embodiment of Fig.
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`5 [i.e., the so-called “embodiment of Fig. 5”].” PO Resp. 52–53. We are
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`not persuaded by Patent Owner’s arguments for at least the reasons
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`previously discussed.
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`
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`12. Apparatus comprises a handheld device (claim 8)
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`Claim 8 recites that the apparatus comprises a handheld device.
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`Petitioner argues that Goodman discloses this feature. Pet. 45 (citing Ex.
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`1005, 4:23–25). Patent Owner argues that Goodman fails to disclose or
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`suggest that “the entire ‘apparatus’ [as opposed to the message device
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`alone] . . . is portable, let alone handheld.” PO Resp. 53.
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`We credit Petitioner’s declarant’s (Dr. Robert Stone) testimony that
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`“Goodman discloses a portable device sufficiently compact to comprise a
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`handheld device.” Ex. 1007 ¶ 108 (citing Ex. 1005, 4:23–25). Goodman
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`discloses that the “message device . . . is a portable device, of suitable shape
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`and size to be carried in the pocket, purse or briefcase of a patient.” Ex.
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`1005, 4:23–25. Hence, Goodman explicitly discloses that the device is
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`intended to be carried in the pocket, purse, or briefcase, and that the message
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`device is portable. We are persuaded that it would have been obvious to one
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`of ordinary skill in the art that the components associated with the message
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`device (e.g., communication interfaces) would also be portable. If other
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`components were not portable, then the device would not be able to be
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`“carried in the pocket, purse or briefcase of a patient.” Rather, if only the
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`
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`message device was portable and other components necessary for operation
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`were not portable, then the device would either be non-functional (as
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`missing other components necessary for operation) or the patient would be
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`unable to carry the device in a pocket, purse, or briefcase (as the apparatus
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`would not be portable). This would be contrary to the explicit disclosure of
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`Goodman.
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`In any event, a known, non-portable, device or apparatus is not
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`patentable merely by making the known, non-portable device portable in the
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`absence of an unexpected result. In re Lindberg, 194 F.2d 732, 872
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`(C.C.P.A. 1952) (“it is not regarded as inventive to merely make a