throbber
Trials@uspto.gov
`571-272-7822
`
`
`Paper 65
`Entered: 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 IPR2013-00451
`Patent 7,587,469 B2
`____________
`
`
`
`
`
`Before MIRIAM L. QUINN, STEPHEN C. SIU, and JUSTIN T. ARBES,
`Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`

`
`IPR2013-00451
`Patent 7,587,469 B2
`
`
`I.
`
`BACKGROUND
`
`Cardiocom, LLC (“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 1 (“Pet”). We
`
`instituted trial (Paper 23, “Dec. on Inst.”) as to claims 1, 2, and 510 as
`
`follows:
`
`a) Obviousness of claims 1, 2, and 510 over Cohen1
`
`and Wahlquist;2 and
`
`b) Obviousness of claims 1, 2, and 5-10 over Cohen,
`
`Wahlquist, Neumann,3 and Jacobs.4
`
`Robert Bosch Healthcare Systems, Inc. (“Patent Owner”) filed a
`
`Patent Owner Response (Paper 40 (“PO Resp.”)) addressing the above-
`
`referenced obviousness grounds. Patent Owner relies on a Declaration of
`
`Dr. Yadin David to support the rebuttal to Petitioner’s challenges of
`
`unpatentability. See Ex. 2009. Petitioner filed a Reply to Patent Owner’s
`
`Response. Paper 43 (“Pet. Reply”). As scheduled, an oral hearing was held
`
`on September 9, 2014, and a transcript of that hearing is part of the record.
`
`Paper 64 (“Tr.”).
`
`We have 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.
`
`
`
` 1
`
` U.S. Patent No. 6,014,626 (Ex. 1002) (“Cohen”).
`2 U.S. Patent No. 5,367,667 (Ex. 1003) (“Wahlquist”).
`3 European Patent Application Publication No. EP 0505627A2 (Ex. 1004)
`(“Neumann”).
`4 U.S. Patent No. 5,956,683 (Ex. 1005) (“Jacobs”).
`
`
`
`2
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`

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`IPR2013-00451
`Patent 7,587,469 B2
`
`
`For the reasons that follow, we determine that Petitioner has
`
`demonstrated by a preponderance of the evidence that claims 1, 2, and 510
`
`of the ’469 patent are unpatentable.
`
`A. 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, 1:3941.
`
`The patent describes the need for remote monitoring of patients in
`
`out-patient or home healthcare programs. Id. at 1:4550, 2:33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 1:652:32.
`
`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 4:1835.
`
`
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`3
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`IPR2013-00451
`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 4:4244. In one preferred
`
`embodiment, each patient is provided with monitoring device 28 (such as a
`
`blood glucose meter). Id. at 4:45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 4:4561.
`
`Remotely programmable apparatus 26 executes a script program received
`
`from server 18. Id. at 5:79. That script program includes “queries,
`
`reminder messages, information statements, useful quotations, or other
`
`information of benefit to the patient.” Id. at 5: 911.
`
`The ’469 patent further describes an embodiment where remotely
`
`programmable apparatus 26 includes speech recognition and speech
`
`synthesis functionality. Id. at 11:5054. Audible queries, prompts, and
`
`response choices are communicated to the user through a speaker in
`
`apparatus 26, and a microphone receives the responses from the user. Id. at
`
`12:4048.
`
`
`
`4
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`IPR2013-00451
`Patent 7,587,469 B2
`
`
`In further embodiments, remotely programmable apparatus 26 is an
`
`interactive television system. Id. at 16:19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 20:3638.
`
`B. ILLUSTRATIVE CLAIM
`
`
`
`Of the claims-at-issue in trial, claim 1 is independent 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
`said individual and convert said input responses to a
`second digital file through speech recognition.
`
`
`
`
`
`5
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`

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`IPR2013-00451
`Patent 7,587,469 B2
`
`II. ANALYSIS
`
`A. CLAIM INTERPRETATION
`
`The Board interprets claims using the “broadest reasonable
`
`construction in light of the specification of the patent in which [they]
`
`appear[].” 37 C.F.R. § 42.100(b). We presume that claim terms have their
`
`ordinary and customary meaning. See In re Translogic Tech., Inc., 504 F.3d
`
`1249, 1257 (Fed. Cir. 2007) (“The ordinary and customary meaning is the
`
`meaning that the term would have to a person of ordinary skill in the art in
`
`question.”) (citation and internal quotation marks omitted).
`
`In our Decision on Institution, we construed the following claim term:
`
`Term
`
`Interpretation
`
`“execute said computer programs to
`provide a diagnosis of a performance
`of said primary device”
`
`execute said computer programs to
`provide data or information of a
`performed operation by the primary
`device
`
`See Dec. on Inst. 912. We do not perceive any reason or evidence that now
`
`compels deviation from the above interpretation.
`
`With regard to “script program,” recited only in claim 10, we discuss
`
`here the construction by the panel in Cardiocom LLC v. Robert Bosch
`
`Healthcare Sys, Inc., Case IPR2013-00431 (PTAB) [hereinafter
`
`“431 Case”], which has reached a final written decision concurrently with
`
`the instant proceeding. See 431 Case, slip op. at 67 (PTAB Jan. 16, 2015)
`
`(Paper 22). As stated in the 431 Case, the specification of the ’469 patent
`
`discloses a microprocessor that stores firmware in memory, where the
`
`firmware includes a script interpreter used by the microprocessor to execute
`
`script programs. See Ex. 1001, 5:5357. Furthermore, according to the
`
`
`
`6
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`

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`IPR2013-00451
`Patent 7,587,469 B2
`
`Microsoft Dictionary, a “script” is “a program consisting of a set of
`
`instruction to an application of utility program.” Ex. 1009, 422. This is
`
`consistent with the ordinary and customary meaning of the term in light of
`
`the specification of the ’469 patent. Accordingly, and for the same reasons
`
`stated in our Decision on Institution in Case IPR2013-00431, we construe
`
`“script program” to mean “a program that contains a set of instructions
`
`capable of being executed and interpreted.” See id.
`
`B. RELEVANT LEGAL PRINCIPLES
`
`To prevail in its challenges to the patentability of claims, the
`
`Petitioner must establish facts supporting its challenges by a preponderance
`
`of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). A claim is
`
`unpatentable under 35 U.S.C. § 103(a) if the differences between the
`
`claimed subject matter and the prior art are such that the subject matter, as a
`
`whole, would have been obvious at the time the invention was made to a
`
`person having ordinary skill in the art to which said subject matter pertains.
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`
`obviousness is resolved on the basis of underlying factual determinations
`
`including: (1) the scope and content of the prior art; (2) any differences
`
`between the claimed subject matter and the prior art; (3) the level of skill in
`
`the art; and (4) where in evidence, so-called secondary considerations
`
`including commercial success, long-felt but unsolved needs, failure of
`
`others, and unexpected results. Graham v. John Deere Co., 383 U.S. 1,
`
`1718 (1966) (“the Graham factors”). The level of ordinary skill in the art
`
`usually is evidenced by the references themselves. See Okajima v.
`
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d
`
`1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
`
`
`
`7
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`

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`IPR2013-00451
`Patent 7,587,469 B2
`
`
`For an obviousness analysis, prior art references must be “considered
`
`together with the knowledge of one of ordinary skill in the pertinent art.”
`
`In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (quoting In re Samour,
`
`571 F.2d 559, 562 (CCPA 1978)). Moreover, “it is proper to take into
`
`account not only specific teachings of the reference but also the inferences
`
`which one skilled in the art would reasonably be expected to draw
`
`therefrom.” In re Preda, 401 F.2d 825, 826 (CCPA 1968). That is because
`
`an obviousness analysis “need not seek out precise teachings directed to the
`
`specific subject matter of the challenged claim, for a court can take account
`
`of the inferences and creative steps that a person of ordinary skill in the art
`
`would employ.” KSR, 550 U.S. at 418.
`
`C. LEVEL OF ORDINARY SKILL IN THE ART
`
`Petitioner asserts that the level of ordinary skill in the art has the
`
`following education and experience: Bachelor’s degree in Electrical
`
`Engineering or Computer Science, or its equivalent, and at least 2 years of
`
`experience with the design and programming of patient monitoring systems
`
`and at least 1 year of experience with the design or programming of
`
`networked systems. Ex. 1008 ¶ 22. Patent Owner’s declarant, Dr. David,
`
`disagrees with the above assertion in that a person of ordinary skill in the art
`
`would not have the 1 year of experience with the design and programming of
`
`networked systems. Ex. 2009 ¶ 26. The disagreement appears to be
`
`immaterial to the arguments presented by Patent Owner, however, because
`
`Dr. David declares that this additional experience would not affect his
`
`opinions. Id. Accordingly, we need not determine which of the alleged
`
`education and experience proffered by the parties is correct.
`
`We determine the obviousness issues guided by the evidence of the
`
`
`
`8
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`IPR2013-00451
`Patent 7,587,469 B2
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`level of ordinary skill in the art presented by the references themselves. See
`
`Okajima, 261 F.3d at 1355. From the Cohen reference, which Patent Owner
`
`agrees is in the field of endeavor of the invention in question (Tr.
`
`29:2130:2), we understand that the level of ordinary skill in the art, at a
`
`minimum, requires some amount of experience with the configuration of
`
`telecommunications hardware systems, such as telephone and personal
`
`computer systems, for communicating with a central monitoring system,
`
`which is computer-implemented technology. See Ex. 1002, 3:1724; see
`
`also 3:4357 (describing the features of the computer-implemented
`
`technology at-issue in Cohen: computer processor and software,
`
`telecommunication lines, voice signal interpretation, database and report
`
`generation, voice generation, speech recognition, speech and digit
`
`recognizer, printer, and local area network (LAN)). With this level of
`
`ordinary skill in mind, we now turn to the analysis of the differences
`
`between the asserted prior art references and the subject matter recited in the
`
`claims-at-issue.
`
`D. ASSERTED GROUND BASED ON COHEN AND WAHLQUIST
`
`Petitioner presents claim charts that identify the disclosures in Cohen
`
`and Wahlquist alleged to render unpatentable the subject matter claimed in
`
`claims 1, 2, and 510. Pet. 2031. Petitioner further relies on a declaration
`
`of Dr. Robert Stone (Ex. 1008) to support the analysis advocated in the
`
`Petition. A summary of Cohen and Wahlquist is in order.
`
`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,
`
`
`
`9
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`

`
`IPR2013-00451
`Patent 7,587,469 B2
`
`Abstract, col. 1:14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, 16:712. One embodiment of Cohen’s system is depicted in
`
`Figure 2A, reproduced below.
`
`
`
`Figure 2A depicts central monitoring subsystem 11 coupled to
`
`outpatient subsystem 12 via telecommunications system 13 (for example, a
`
`public telephone network or the Internet). Id. at 7:5356, 9:219. The
`
`central monitoring subsystem 11 includes computer processor 21 with
`
`automatic speech recognition (“ASR”) module 23A that decodes the voice
`
`commands in the patient’s response received through outpatient subsystem
`
`12. Id. at 9:832.
`
`Cohen further describes database 24 that provides the ability for the
`
`provider to configure personalized “walkthroughs.” Id. at 8:4448. A
`
`“walkthrough” is a session with a patient who answers questions about a
`
`
`
`10
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`

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`IPR2013-00451
`Patent 7,587,469 B2
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`health issue, such as the patient taking medication for depression. Id. at
`
`10:1340. A walkthrough flowchart defines what questions will be asked of
`
`a patient. Id. at 10:4042. Voice generator 22 translates the computer
`
`questions in the walkthrough into voice that the patient can hear. Id. at
`
`11:5659, 12:4952. After voice/dual tone multifrequency (DTMF) module
`
`22A and/or ASR module 23A translate the patient’s answer into a form
`
`recognizable by computer processor 21, the answer received from the patient
`
`can be stored in the patient’s record in the database. Id. at 17:3234.
`
`Another embodiment of Cohen is depicted in Figure 5, reproduced
`
`below.
`
`
`
`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 11:3133. Patient system 500 incorporates outpatient subsystem 12
`
`described above with reference to Figure 2A. See id. at 11:3337. Interface
`
`server 530 handles the process of getting answers from patients, id., and it
`
`
`
`11
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`

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`IPR2013-00451
`Patent 7,587,469 B2
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`allows health care providers access to database 24. Id. at 11:3739. Cohen
`
`describes interface server 530 and database server 560 as comprising central
`
`monitoring subsystem 11 described above with reference to Figure 2A. Id.
`
`at 11:4042.
`
`2.
`
`Overview of Wahlquist (Exhibit 1003)
`
`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. 1003, 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. 6:33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 5:5256.
`
`3.
`
`Analysis of Evidence Presented Regarding Claim 1
`
`We have reviewed Petitioner’s arguments and evidence presented in
`
`the Petition. Petitioner has presented evidence showing that Cohen discloses
`
`the following recited structures:
`
`a. “communications channel” (Cohen’s phone lines 13 and LAN)
`
`(Pet. 20 (citing Ex. 1002, 3:1823));
`
`b. “server” (Cohen’s database server 560) (Pet. 2021 (citing Ex.
`
`1002, 11:4349, Fig. 5));
`
`12
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`IPR2013-00451
`Patent 7,587,469 B2
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`c. “primary device” (Cohen’s interface server 530) (Pet. 21 (citing
`
`Ex. 1002, 14:3538)), where the “primary device” includes a
`
`“component” (Cohen’s computer processor 21)5 adapted to:
`
`i.
`
` “receive . . . computer programs . . . as a first digital file”
`
`(Cohen’s retrieval of records from database 24 to select
`
`questions for the patient) (Pet. 22 (citing Ex. 1002,
`
`16:3538));
`
`ii.
`
`“convert the first digital file into synthesized audio
`
`transmissions” (Cohen’s voice generator 22 translates the
`
`computer questions into voice) (Pet. 22 (citing Ex. 1002,
`
`11:5659));
`
`iii.
`
`“present said synthesized audio transmissions to an
`
`individual through a speaker” (Cohen’s voice signals from
`
`voice generator 22 are sent to outpatient subsystem 12 for
`
`delivery through speaker) (Pet. 23 (citing Ex. 1002,
`
`11:5659, 4:1618)); and
`
`iv.
`
`“receive audible responses from said individual” (Cohen’s
`
`interface module 21A digitizes voice response from patient)
`
`(Pet. 23 (citing Ex. 1002, 9:1724); and
`
`d. “secondary device” (Cohen’s outpatient subsystem 12, which
`
`Cohen describes as either a telephone or computer with a modem)
`
`(Pet. 24 (citing Ex. 1002, 9:1724, 4:1626)), where this
`
`secondary device:
`
`
`
` Pet. 2122 (citing Ex. 1002, 9:816, 11:921, Figs. 2, 2A, 5, 5A)).
`
`13
`
` 5
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`IPR2013-00451
`Patent 7,587,469 B2
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`
`i.
`
`“is adapted to be operated by said individual in response to
`
`said synthesized audio transmissions” (Cohen’s computer
`
`processor asks the patient to identify himself or herself and
`
`the patient presses keys on the keypad in response) (Pet.
`
`2425 (citing Ex. 1002, 4:5964));
`
`ii.
`
`“comprises a user interface adapted to receive input
`
`responses from said individual” (Cohen’s telephone or user
`
`computer for interfacing with the user) (Pet. 25 (citing Ex.
`
`1002, 4:1626)); and
`
`iii.
`
`“convert[s] said input responses to a second digital file
`
`through speech recognition” (Cohen’s user computer would
`
`be known to include speech recognition software and
`
`functionality) (Pet. 25 (citing Ex. 1002, 4:1626, Fig. 5A).
`
`Petitioner further relies on Wahlquist as teaching or suggesting that
`
`the “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.” Pet. 23 (citing Ex.
`
`1003, 5:5256, 2:3843, 4:6567, 6:3336)). According to Petitioner,
`
`Wahlquist teaches that user computer 70 includes a processor that collects
`
`data relating to the user computer because user computer 70 interrogates
`
`itself to determine its identification code in response to a link manager’s
`
`requests. Id. Furthermore, Petitioner asserts that Wahlquist teaches
`
`execution of computer programs to provide a diagnosis as claimed because
`
`Wahlquist’s user computer 70 downloads script files from the link manager,
`
`and the diagnostic program running in user computer 70 executes the
`
`downloaded script files. Id. Wahlquist’s script file instructs user computer
`
`
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`14
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`70 to send copies of system files to the link manager computer. Id. at 24
`
`(citing Ex. 1003, 6:3336).
`
`Patent Owner contends that the asserted prior art does not render
`
`claim 1 unpatentable because: (1) Wahlquist is not “analogous art”; (2) a
`
`person of ordinary skill in the art would not have been motivated to combine
`
`the asserted references; and (3) Petitioner has not shown that the asserted
`
`references or the combinations teach all of the recited elements. PO Resp.
`
`20. We do not agree with Patent Owner’s contentions for the reasons that
`
`follow.
`
`a. Whether Wahlquist is analogous art
`
`Patent Owner argues that Wahlquist is neither from the same field of
`
`endeavor nor reasonably pertinent to the problems addressed by the
`
`’469 patent. PO Resp. 21. A reference is analogous art to the claimed
`
`invention if: (1) the reference is from the same field of endeavor as the
`
`claimed invention (even if it addresses a different problem); or (2) the
`
`reference is reasonably pertinent to the problem faced by the inventor (even
`
`if it is not in the same field of endeavor as the claimed invention). In re
`
`Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). “A reference is reasonably
`
`pertinent if . . . it is one which, because of the matter with which it deals,
`
`logically would have commended itself to an inventor’s attention in
`
`considering his problem.” Innovention Toys, LLC v. MGA Entm’t, Inc., 637
`
`F.3d 1314, 1321 (Fed. Cir. 2011).
`
`With regard to being reasonably pertinent, Patent Owner contends that
`
`the objective of the script programs in the ’469 patent is to facilitate the
`
`monitoring of and communications with individuals. PO Resp. 26.
`
`Wahlquist’s objective, on the other hand, is to eliminate communications
`
`
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`15
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`IPR2013-00451
`Patent 7,587,469 B2
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`with users. Id. According to Patent Owner, Wahlquist teaches that the user
`
`is the problem, and, thus, the solution is to eliminate the user from the
`
`process of diagnosing the user’s computer. Id. at 2627.
`
`The arguments presented by Patent Owner characterize very narrowly
`
`the teachings of Wahlquist and the ’469 patent regarding the pertinent
`
`problems. First, the ’469 patent describes that the inventors faced the
`
`problem of the difficulty in identifying each patient uniquely using the
`
`known systems, and that the systems were incapable of collecting medical
`
`data from monitoring devices. Ex. 1001, 2:2832. Furthermore, there was a
`
`problem of intrusive monitoring in the patient’s life, which could result in
`
`resistance to monitoring over time. Id. at 2:2628. Thus, the ’469 patent
`
`addresses the intrusiveness of a communication and unique identification of
`
`users in a system where a central facility collects data from the devices.
`
`Therefore, although making communication with users easier may
`
`have been one of the problems addressed by the ’469 patent, we do not
`
`ignore the further problems of reducing intrusiveness, unique identification,
`
`and collection of data from the devices. Consequently, we find Patent
`
`Owner’s argument unpersuasive because those arguments characterize the
`
`’469 patent as addressing only “increas[ing] communications with users and
`
`mak[ing] those communications easier.” See PO Resp. 27.
`
`Considering Wahlquist, we agree with Patent Owner that Wahlquist
`
`teaches some automation of the diagnosis process of a user computer. See
`
`id. We do not agree with Patent Owner, however, in its characterization of
`
`Wahlquist as eliminating user participation. See id. (asserting that “[t]he
`
`entire diagnosis process itself is completely divorced from any participation
`
`by the user, much less any communications to the user”). Patent Owner
`
`
`
`16
`
`

`
`IPR2013-00451
`Patent 7,587,469 B2
`
`does not demonstrate persuasively that Wahlquist seeks to eliminate all
`
`communications with users, rather than merely to simplify such
`
`communications. Id. at 26. Rather, Wahlquist discloses a system and
`
`method in which “a user calls the customer service help desk” and “is then
`
`asked to identify the general nature of the problem.” Ex. 1003, 2:7–16. The
`
`representative then “instructs the user” as to what actions to take. Id. at 2:6–
`
`7, 15–16, 26. One of ordinary skill in the art would have understood that a
`
`user calling a help desk and identifying a problem to the representative, as
`
`well as the representative instructing the user, would have constituted
`
`“communication” between the user and the representative. The system of
`
`Wahlquist depends on “communications with a user” because without such
`
`“communication,” the representative would not be apprised of the user’s
`
`issues and would be unable to instruct the user as to the proper action to
`
`take.
`
`Instead, Petitioner argues, and we agree, that Wahlquist teaches
`
`various embodiments, including one in which a help desk representative
`
`communicates with individuals during the diagnostic process. Pet. Reply 2
`
`(citing Ex. 1041, 261:2262:7 (during the testing, in Wahlquist, the user can
`
`be prompted to reply); see also Ex. 1003, 9:6110:5 (describing interactivity
`
`or user intervention during the diagnostic tests).
`
`Further, we find that Wahlquist is pertinent to reducing complex
`
`information presented to a computer user and reducing the time consuming
`
`process of communications with users to diagnose the computer. See Ex.
`
`1003, 1:2468. Wahlquist also deals with providing a level of service to
`
`users during a computer diagnosis. Id. Wahlquist addresses these issues by
`
`providing script files tailored to a specific user’s computer and running those
`
`
`
`17
`
`

`
`IPR2013-00451
`Patent 7,587,469 B2
`
`script files with minimal complexity for the user. That is, Wahlquist
`
`discloses that when a user “calls the help desk” for the creation of “a
`
`computerized case file,” the file is associated with “a unique case
`
`identification number [and] the user’s identification.” Ex. 1003, 4:36, 42,
`
`45–46. Based on this information, the selection of “specific diagnostic tests”
`
`is performed. Id. at 4:58–60. These tests are performed using script files
`
`that guide the user’s computer through the collection of data and the
`
`diagnosis process. Id. at 2:3260. It follows from Wahlquist’s description
`
`of this process that the use of the script programs reduces the time spent and
`
`complexity of the interaction between a user and a help desk technician, and
`
`is reasonably pertinent to making easier the interaction between a patient and
`
`the monitoring devices known at the time of invention of the ’469 patent.
`
`See also Pet. Reply 2 (arguing that Wahlquist’s system saves time for help
`
`desk representatives, just as the ’469 patent’s communication systems save
`
`time for health care professionals). Furthermore, Wahlquist’s script files
`
`collect the diagnostic information, which is pertinent to the problem of
`
`collecting data from those known monitoring devices. Finally, we also find
`
`that Wahlquist’s reduction of complexity and user involvement in the
`
`diagnostic process is pertinent to the problems, addressed by the ’469 patent
`
`inventor, of intrusiveness into a patient’s life and making less complex the
`
`interface of the user with the monitoring devices.
`
`Accordingly, we determine that Wahlquist is reasonably pertinent to
`
`the problems faced by the inventor of the ’469 patent, and, therefore, we do
`
`not agree with Patent Owner that Wahlquist is not analogous art.
`
`With regard to the field of endeavor, Patent Owner contends that the
`
`language of the ’469 claims identifies the proper field of endeavor. PO
`
`
`
`18
`
`

`
`IPR2013-00451
`Patent 7,587,469 B2
`
`Resp. 22. Thus, according to Patent Owner, the field of endeavor is “remote
`
`monitoring of individuals and the communication of information to the
`
`individuals.” PO Resp. 2224 (citing Ex. 2009 ¶¶ 7073). Wahlquist,
`
`therefore, is not analogous art, according to Patent Owner, because
`
`Wahlquist is directed to gathering information about computer functions, not
`
`individuals. Id. at 2425. We need not reach this determination of whether
`
`Wahlquist is outside the proper field of endeavor, however, because we have
`
`determined, as stated above, that Wahlquist is analogous art.
`
`b.
`
`Combinability of Cohen and Wahlquist
`
`Patent Owner contends that it would not have been obvious to one of
`
`ordinary skill in the art to have combined the teachings of Cohen and
`
`Wahlquist. PO Resp. 2939. The arguments allegedly supporting this
`
`contention are that: (1) the art provides no instruction, suggestion, or
`
`teaching to combine Cohen with other references; (2) Cohen and Wahlquist
`
`are in different fields and address different problems; and (3) Cohen teaches
`
`away from the combination with Wahlquist. Id. We are not persuaded by
`
`these arguments for the following reasons.
`
`First, an obviousness “analysis need not seek out precise teachings
`
`directed to the specific subject matter of the challenged claim, for a court
`
`can take account of the inferences and creative steps that a person of
`
`ordinary skill in the art would employ.” KSR, 550 U.S. at 418. It is,
`
`therefore, unpersuasive for Patent Owner to argue that Petitioner’s proffered
`
`rationales for the combination fail because neither Cohen nor Wahlquist
`
`teaches explicitly that they could be combined with other teachings. See PO
`
`
`
`19
`
`

`
`IPR2013-00451
`Patent 7,587,469 B2
`
`Resp. 31, 3738 (arguing the lack of evidence that Cohen is “incomplete”
`
`and that nothing in Wahlquist would teach the combination).6 Further,
`
`Patent Owner narrowly focuses on Wahlquist being directed solely to
`
`eliminating slow and unsatisfactory communications with users. PO Resp.
`
`31. As stated above in the analogous art analysis, Wahlquist is directed to
`
`more than just eliminating communications with users. The alleged
`
`“elimination” is not supported by a thorough reading of Wahlquist. We find,
`
`instead, that Wahlquist teaches prompting users with keystrokes during the
`
`diagnosis of their computer, a process that, from the standpoint of the user,
`
`is greatly simplified compared to the prior art systems described by
`
`Wahlquist, and consistent with the problems described in Cohen and the
`
`’469 patent of simplifying user interactions with user devices.
`
`Second, we do not agree with Patent Owner that Cohen and Wahlquist
`
`address different problems and solutions such that one of ordinary skill in
`
`the art would not have been motivated to combine their teachings. See PO
`
`Resp. 3238. Patent Owner’s arguments focus on the characterization of
`
`Wahlquist as eliminating communications with users. See, e.g., id. at 3334
`
`(arguing that Wahlquist eliminates user communications while Cohen
`
`increases communications with the user). We have rejected this
`
`characterization, above, as unsupported and contrary to the teachings in
`
`Wahlquist.
`
`Further, we are not persuaded by the argument that because
`
`
`
` 6
`
` Patent Owner does not identify any authority (and we are aware of none)
`for the proposition that a reference somehow must be incomplete to be
`combinable with another reference under 35 U.S.C. § 103(a).
`
`
`
`20
`
`

`
`IPR2013-00451
`Patent 7,587,469 B2
`
`Wahlquist’s diagnosis occurs after a problem occurs, a person of ordinary
`
`skill in the art would have had no reason to combine the disclosed diagnosis
`
`system with Cohen’s system of regular patient monitoring. See PO
`
`Resp. 35. That argument is not commensurate with the scope of the claims
`
`and is contrary to the teachings of Cohen. Patent Owner does not point to
`
`any claim language directed to “regular” versus event-driven
`
`communications. Nor do we see such features implicated,

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