throbber
Trials@uspto.gov
`571-272-7822
`
`Paper 72
`Filed: January 27, 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 IPR2013-004681
`Patent 7,516,192 B2
`_______________
`
`
`
`Before JUSTIN T. ARBES, BRYAN F. MOORE, and
`TRENTON A. WARD, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`1 Case IPR2013-00469 has been joined with this proceeding.
`
`

`

`IPR2013-00468
`Patent 7,516,192 B2
`
`
` A. Background
`
`I. INTRODUCTION
`
`Cardiocom, LLC (“Petitioner”)2 filed a Petition (“Pet.”) to institute an inter
`
`partes review of claims 1–19 of U.S. Patent No. 7,516,192 B2 (“the ’192 patent”).
`
`Paper 1. On January 16, 2014, the Board instituted an inter partes review of
`
`claims 1–19 (Paper 22) (“’468 Dec. on Inst.”). On the same day, the Board
`
`instituted an inter partes review of claims 20–37 based on a Petition (IPR2013-
`
`00469, Paper 1) (“’469 Pet.”) filed in IPR2013-00469. Paper 21, IPR2013-00469
`
`(“’469 Dec. on Inst.”). IPR2013-00469 was joined with IPR2013-00468. ’469
`
`Dec. on Inst. 15. All references in this decision are to IPR2013-00468 unless
`
`otherwise indicated.
`
`Subsequent to institution, Robert Bosch Healthcare Systems, Inc. (“Patent
`
`Owner”) filed a Patent Owner Response (Paper 39) (“PO Resp.”),3 and Petitioner
`
`filed a Reply (Paper 52) (“Pet. Reply”).4 Petitioner filed a Motion to Exclude
`
`Evidence (Paper 57), Patent Owner filed an Opposition to Petitioner’s Motion to
`
`Exclude (Paper 61), and Petitioner filed a Reply (Paper 65). Patent Owner filed a
`
`Motion to Exclude Evidence (Paper 59), Petitioner filed an Opposition to Patent
`
`Owner’s Motion to Exclude (Paper 62), and Patent Owner filed a Reply (Paper 64).
`
`Patent Owner also filed a Motion for Observation (Paper 58) (“Obs.”) on certain
`
`cross-examination testimony of Petitioner’s declarant, Dr. Robert Stone, and
`
`
`2 Petitioner indicates that Medtronic, Inc. also is a real party-in-interest in this
`proceeding. Paper 21; Paper 20 (IPR2013-00469).
`3 We cite to the Corrected Patent Owner’s Response, filed April 25, 2014, Paper
`39.
`4 We cite to the Corrected Petitioner’s Reply, filed July 15, 2014, Paper 52.
`
` 2
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`

`IPR2013-00468
`Patent 7,516,192 B2
`
`
`Petitioner filed a Response (Paper 63) (“Obs. Resp.”). As scheduled, an oral
`
`hearing was held on September 9, 2014, and a transcript of that hearing is part of
`
`the record. Paper 71 (“Tr.”).
`
`B. The ’192 Patent (Ex. 1001)
`
`The ’192 patent, titled “Networked System for Interactive Communication
`
`and Remote Monitoring of Individuals,” issued on April 7, 2009. The ’192 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, 1:39–43.
`
`The ’192 patent describes the need for remote monitoring of patients in
`
`out-patient or home healthcare programs. Id. at 1:45–51, 2:35–40. According to
`
`the patent, the use of personal computers, medical monitoring devices, and
`
`interactive telephone or video response systems for remote monitoring in the prior
`
`art had proved inadequate because of their expense, limited multimedia capability,
`
`or the complexity of managing non-compliant patients. Id. at 1:65–2:32.
`
`One embodiment of the ’192 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.
`
` 3
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`

`IPR2013-00468
`Patent 7,516,192 B2
`
`
`
`
`Figure 1 depicts a block diagram of the networked system of the invention.
`
`According to Figure 1, system 16 may include any number of remotely
`
`programmable apparatuses 26 (in Figure 1, two are shown) 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), which
`
`produces measurements of a physiological condition of the patient (such as blood
`
`glucose concentrations in the patient) and transmits those measurements to the
`
`patient’s remote apparatus 26 via standard cable 30. Id. at 4:45–61. In operation,
`
`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.
`
`C.
`
`Illustrative Claim
`
`Claims 1, 20, and 37 are independent claims. Claim 1 illustrates the claimed
`
`subject matter and is reproduced below:
`
`1. A monitoring system for communicating with at least
`one individual, the monitoring system comprising:
`
`
`
`
` 4
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`

`IPR2013-00468
`Patent 7,516,192 B2
`
`
`
`
`
`
`
`
`
`
`
`
`
`a computer configured to communicate with at least
`one remotely situated apparatus;
`
`a user interface in communication with the computer
`for entering, authoring, selecting, or any combination
`thereof, at least one of (i) one or more messages to be
`presented to the individual, (ii) one or more queries to
`be answered by the individual, (iii) one or more
`response choices corresponding to the one or more
`queries or (iv) any combination thereof;
`
`a data merge program configured to generate a
`customized script program by customizing a generic
`script program, wherein the customized script
`program is to be executed by the remotely situated
`apparatus and includes (i) a display command to
`present to the individual at least one of the one or
`more messages, the one or more queries, the one or
`more response choices corresponding to the one or
`more queries or any combination thereof and (ii) an
`input command to receive responses when the script
`program includes one or more queries to be presented;
`and
`
`one or more databases accessible by the data merge
`program for storing the generic script program and
`any responses received from the remotely situated
`apparatus.
`
` 5
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`

`

`IPR2013-00468
`Patent 7,516,192 B2
`
`
`D. Cited Prior Art
`
`The pending grounds of unpatentability in this inter partes review are based
`
`on the following prior art:
`
`Wright Jr.,
`
`US 5,704,029
`
`Dec. 30, 1997
`
`(Ex. 1002)
`
`
`
`
`
`Goodman,
`
`
`
`
`
`
`
`
`
`
`
`Wahlquist,
`
`
`
`
`
`
`
`
`
`(filed May 23, 1994)
`
`
`
`US 5,827,180
`
`Oct. 27, 1998
`
`(Ex. 1003)
`
`
`
`
`
`
`
`(filed Nov. 26, 1997)
`
`US 5,367,667
`
`Nov. 22, 1994
`
`(Ex. 1004)
`
`E. Instituted Grounds of Unpatentability
`
`This inter partes review involves the following asserted grounds of
`
`unpatentability:
`
`References
`
`Wright Jr.
`
`Basis
`
`§ 103
`
`Wright Jr. and Goodman § 103
`
`Claims Challenged
`
`1–3, 6, 7, 11, 12, 17–19,
`20-23, 29, 30, and 35-36
`1–37
`
`Goodman and Wahlquist § 103
`
`20–37
`
`
`
`F. Claim Interpretation
`
`The parties agree with the interpretation of various claim terms of the ’192
`
`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. 5–6. However, Petitioner does not advance a
`
`different construction for the term “script program” in this proceeding.
`
` 6
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`

`

`IPR2013-00468
`Patent 7,516,192 B2
`
`
`We adopt our previous analysis for the non-disputed claim terms, and
`
`interpret these terms as follows:
`
`Term
`
`“script program”
`
`“data merge program”
`
`“pointer”
`
`“script assignment unit”
`
`Interpretation
`
`a program that contains a set of
`instructions that is capable of
`being executed and interpreted
`
`a program that combines two or
`more sets of data into one
`
`an identifier that indicates the
`location of an item
`
`a program that associates a
`script program with an
`individual
`
`See ’468 Dec. on Inst. 5–9.
`
`II. ANALYSIS
`
`For at least the following reasons, we conclude that Petitioner has
`
`demonstrated by a preponderance of the evidence that claims 1, 6, 7, 17, 18, 20,
`
`21, 22, and 36 are unpatentable over Wright Jr., and that claims 1–37 are
`
`unpatentable over Wright Jr. and Goodman, under 35 U.S.C. § 103(a). We also
`
`conclude that Petitioner has not demonstrated by a preponderance of the evidence
`
`that claims 20–37 are unpatentable over Goodman and Wahlquist, under 35 U.S.C.
`
`§ 103(a).
`
`A. Overview of Wright Jr. (Ex. 1002)
`
`Wright Jr. discloses a system for computerized form completion and
`
`processing. Ex. 1002, Abstract. In one embodiment, an electronic form is sent
`
`from a personal computer (PC) to a device, such as a personal digital assistant
`
`(PDA). Id. at 3:28–39. The PDA runs a forms engine that presents questions to a
`
` 7
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`

`IPR2013-00468
`Patent 7,516,192 B2
`
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`user and displays messages based on the response to a particular question. Id. at
`
`3:40–51. The forms engine executes a script that, among other things, advances to
`
`the next question. Id.
`
`B. Overview of Goodman (Ex. 1003)
`
`Goodman discloses a system for monitoring the health of a patient in which
`
`a host computer is in communication with a health care provider’s computer and a
`
`patient’s computer. Ex. 1003, 1:11–13, 2:45–49. In one example, the host
`
`computer receives a treatment plan for a patient from the health care provider and
`
`generates an algorithm based on the treatment plan. Id. at 2:54–57. The algorithm
`
`is programmed into a message device, which is in the possession of the patient. Id.
`
`at 2:49–50, 57–58. The message device prompts the patient to measure and enter
`
`physiological data as dictated by the treatment plan. Id. at 2:59–61.
`
`C. Overview of Wahlquist (Ex. 1004)
`
`Wahlquist discloses a system for performing remotely, computer diagnostic
`
`tests on personal computers. Ex. 1004, 1:7–10. A computer user calls a customer
`
`service help desk to resolve a computer issue. Id. at 2:8–10, 17. A representative
`
`at the customer service help desk creates a computerized case file that includes a
`
`unique case identification number, user identification, and user’s computer
`
`identification information. Id. at 4:41–50. The representative also selects
`
`diagnostic tests based on the user’s request, the selection used to build a script file.
`
`Id. at 2:17–18, 22–23. The case file and the script file are submitted by the
`
`representative to a database manager computer and downloaded to the user’s
`
`computer. Id. at 5:37–39, 63–66. The script file then is executed on the user’s
`
`computer by a diagnostic program on the user’s computer. Id. at 2:39–40, 42–43.
`
`The script file instructs the user’s computer to execute desired test files and
`
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`IPR2013-00468
`Patent 7,516,192 B2
`
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`specifies the creation of various log files to record the results of the tests. Id. at
`
`2:45–47.
`
`D. Level of Ordinary Skill
`
`Petitioner asserts that a person of ordinary skill in the art would have had the
`
`following education and experience: Bachelor’s degree in Electrical Engineering
`
`or Computer Science, or its equivalent, 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 ¶ 23.
`
`Patent Owner’s declarant, Dr. Yadin David, disagrees with the above assertion,
`
`asserting instead that a person of ordinary skill in the art would not have had the 1
`
`year of experience with the design and programming of networked systems. Ex.
`
`2007 ¶ 23. 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 level of
`
`ordinary skill in the art presented by the references themselves. See Okajima v.
`
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). From the Goodman reference,
`
`which Patent Owner does not contest is in the field of endeavor of the invention in
`
`question, we understand that the level of ordinary skill in the art, at a minimum,
`
`pertains to the configuration of communications systems, such as electronic or
`
`wireless systems and personal computer systems for communicating with a central
`
`monitoring system, which is computer-implemented technology. See Ex. 1003,
`
`3:5059; see also id. at 6:125 (describing the features of the computer-
`
`implemented technology at issue in Goodman). With this level of ordinary skill in
`
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`IPR2013-00468
`Patent 7,516,192 B2
`
`
`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.
`
`E. Obviousness over Wright Jr.
`
`Petitioner argues in its Petitions that claims 1–3, 6, 7, 11, 12, 17–19, 20–23,
`
`29, 30, 35, and 36 are unpatentable over Wright Jr. under 35 U.S.C. § 103(a),
`
`relying on the declaration of Dr. Stone (Ex. 1008) in support. Pet. 5; ’469 Pet. 2.
`
`We have reviewed each of the ’468 and ’469 Petitions, the Patent Owner
`
`Response, and Petitioner’s Reply, as well as the evidence discussed in each of
`
`those papers, and are persuaded, by a preponderance of the evidence, that claims 1,
`
`6, 7, 17, 18, 20–22, and 36 would have been obvious based on Wright Jr. On the
`
`other hand, based on that review, we are not persuaded, by a preponderance of the
`
`evidence, that claims 2, 3, 11, 12, 19, 23, 29, 30, and 35 would have been obvious
`
`based on Wright Jr.
`
`As an initial matter, Patent Owner argues that Dr. Stone’s obviousness
`
`analysis is improper because he “used the claims of [the ’192 patent] as a template
`
`to try and fit combinations of references into the claims” and “used the teachings
`
`of [the ’192 patent] specification[] to identify the goals and motivations for
`
`combining the prior art.” PO Resp. 19–22 (citing Ex. 2009 at 412:8–12).
`
`According to Patent Owner, Dr. Stone’s analysis is based on improper hindsight
`
`reasoning. Id. “Any judgment on obviousness is in a sense necessarily a
`
`reconstruction based on hindsight reasoning, but so long as it takes into account
`
`only knowledge which was within the level of ordinary skill in the art at the time
`
`the claimed invention was made and does not include knowledge gleaned only
`
`from applicant’s disclosure, such a reconstruction is proper.” In re McLaughlin,
`
`443 F.2d 1392, 1395 (CCPA 1971). Patent Owner does not show sufficiently that
`
`Dr. Stone’s analysis relies on knowledge that was beyond the level of ordinary
`
`
`
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`IPR2013-00468
`Patent 7,516,192 B2
`
`
`skill in the art at the time of the ’192 patent. We do not see, and Patent Owner
`
`does not assert or demonstrate persuasively, how the disclosures relied upon by Dr.
`
`Stone (which were not gleaned from the ’192 patent Specification) would have
`
`been beyond the level of ordinary skill in the art.
`
`1. A Person of Ordinary Skill in the Art Would Have Had Reason to
`Modify the Teachings of Wright Jr.
`
`Petitioner asserts that Wright Jr., combined with the knowledge of one
`
`skilled in the art at the time of the invention, teaches or suggests the limitations of
`
`claims 1–3, 6, 7, 11, 12, 17–19, 20–23, 29, 30, 35, and 36. Patent Owner argues
`
`that there was no motivation to modify Wright Jr. PO Resp. 32. Patent Owner
`
`asserts that Petitioner’s expert testified that Wright Jr. was “complete for its
`
`purposes, meets the goals identified in the patent, and discloses nothing that would
`
`instruct or tell a person of ordinary skill in the art to combine Wright [Jr.] with
`
`something else.” Id. (citing Ex. 2009, 467:16–18, 468:5–17, 469:1–17)
`
`The Federal Circuit has noted that obviousness does not require that every
`
`element be present in the prior art. See Tegal Corp. v. Tokyo Electron Am., Inc.,
`
`257 F.3d 1331, 1349 (Fed. Cir. 2001) (acknowledging that the claimed invention
`
`could be obvious even if prior art did not teach one of its elements). Thus, even a
`
`single prior art reference may render an invention obvious. In such cases, the
`
`single reference may fail to teach expressly one or more claim limitations. E.g.,
`
`B.F. Goodrich Co. v. Aircraft Braking Sys. Corp., 72 F.3d 1577, 1582 (Fed. Cir.
`
`1996) (holding that the difference between the claimed invention and the sole
`
`reference would have been obvious); In re O‘Farrell, 853 F.2d 894, 902 (Fed. Cir.
`
`1988) (“[A]ppellants’ claimed invention would have been obvious in light of the
`
`Polisky reference alone . . . .”).
`
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`IPR2013-00468
`Patent 7,516,192 B2
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`Nonetheless, where there is an attempt to show obviousness over a single
`
`reference, there also must be a showing of a suggestion or motivation to modify the
`
`teachings of that reference to achieve the claimed invention. Sibia Neurosciences,
`
`Inc. v. Cadus Pharm. Corp., 225 F.3d 1349, 1356 (Fed. Cir. 2000). Determining
`
`obviousness with respect to whether a single piece of prior art could be modified to
`
`produce the claimed invention invokes an inquiry into whether a person having
`
`ordinary skill in the art would have had a reason to so modify the prior art
`
`reference. See Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1351-52 (Fed. Cir.
`
`2010). An obviousness challenge relying on such a modification to bridge the
`
`difference between the prior art and the claimed invention must be supported by
`
`articulated reasoning with rational underpinning to explain why the person of
`
`ordinary skill in the art would make the modification. See In re Kahn, 441 F.3d
`
`977, 988 (Fed. Cir. 2006) (Kahn). The Supreme Court has admonished courts that
`
`this analysis should be made explicit. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
`
`418 (2007) (citing Kahn, 441 F.3d at 988).
`
`For example, Petitioner relies on knowledge of one of ordinary skill to meet
`
`the “one or more databases” limitation. Petitioner explains that user responses are
`
`stored on the personal computer in a tab-delimited format for use with a database.
`
`Pet. 37–38 (citing Ex. 1002, 3:28–40, 5:7–15, 14:1–10). Wright Jr. also teaches
`
`that a form can be selected from a list of existing forms. Id. Patent Owner’s
`
`declarant Dr. David acknowledged one of ordinary skill would be aware of the
`
`ability to store a list of forms in a database. Ex. 1041, 557:14–19 (agreeing that
`
`“one of ordinary skill would understand that one way to store such a list of forms
`
`would be to store them in a computer database that’s accessible on the computer”).
`
`Given that the use of databases was well within the skill of one of ordinary skill,
`
`and given that the form data in Wright Jr. is stored in tab-delimited format,
`
`
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`IPR2013-00468
`Patent 7,516,192 B2
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`Petitioner has shown, by a preponderance of the evidence, supported by articulated
`
`reasoning with rational underpinning, that a person of ordinary skill in the art
`
`would have made the modification to store Wright Jr.’s forms in a database.
`
`2. Petitioner Establishes By a Preponderance of the Evidence That
`Wright Jr. Teaches Every Limitation of Claims 1, 20, and 21
`
`As detailed below, Petitioner argues that Wright Jr. teaches or suggests
`
`every limitation of claim 1.
`
`a. “a computer” (Wright Jr.’s personal computer (PC)) (Pet. 34 (citing Ex.
`
`1002, 3:2840));
`
`b. “remotely situated apparatus” (Wright Jr.’s personal digital assistant) (id.
`
`(citing Ex. 1002, 6:3345, 6267, Fig. 1));
`
`c. “user interface” (Wright Jr.’s forms creation program) (id. (citing Ex.
`
`1002, 6:3339, 7:4762)) “for entering, authoring, selecting, or any
`
`combination thereof, at least one of”:
`
`i.
`
`“one or more messages to be presented to the individual” (Wright
`
`Jr.’s forms creation program allows entry or selection of messages)
`
`(id. at 3435 (citing Ex. 1002, 10:4650, 11:4812:10));
`
`ii.
`
`“one or more queries to be answered by the individual” (Wright
`
`Jr.’s forms creation program allows entry of text for questions and
`
`answer choices) (id. at 3435 (citing Ex. 1002, 10:4611:10,
`
`11:4812:10, 12:6313:12)); and
`
`iii.
`
`“one or more response choices corresponding to the one or more
`
`queries” (Wright Jr.’s forms creation program allows entry of text
`
`for questions and corresponding answer choices) (id. (citing Ex.
`
`1002, 10:4611:10, 11:4812:10, 12:6313:12));
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`IPR2013-00468
`Patent 7,516,192 B2
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`d. “data merge program” (Wright Jr.’s field editor) (id. at 35 (citing Ex.
`
`1002, 6:3340, 9:5160)) configured to generate a customized script
`
`program by customizing a generic script program (Wright Jr.’s forms)
`
`(id. (citing Ex. 1002, 8:3238, 9:5160, 27:5662));
`
`e. “customized script program” that is executed on the remotely situated
`
`apparatus (id. (citing Ex. 1002, 8:3238, 9:5160, 27: 5662)) and
`
`includes:
`
`i.
`
`“a display command to present to the individual at least one of the
`
`one or more messages, the one or more queries, the one or more
`
`response choices corresponding to the one or more queries or any
`
`combination thereof” (Wright Jr.’s PDA includes a processor, a
`
`graphics display, and a memory, and allows display commands for
`
`presenting messages, queries, or response choices) (id. at 37 (citing
`
`Ex. 1002, 4:4961, 7:625)); and
`
`ii.
`
`“an input command to receive responses when the script program
`
`includes one or more queries to be presented” (Wright Jr.’s PDA
`
`includes a processor, a graphics display, an input device
`
`mechanism and a memory and allows input commands for
`
`accepting responses selected by a user) (id. at 37 (citing Ex. 1002,
`
`4:4961, 7:625)).
`
`Patent Owner makes four arguments with respect to claim 1. First, Patent
`
`Owner argues that Wright Jr. does not teach “a script program” because Wright Jr.
`
`teaches providing prompts and answers in structured data. PO Resp. 8. Patent
`
`Owner argues that “structured data provide[] information that the forms engine is
`
`pre-programmed to handle in a particular manner,” and are not instructions capable
`
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`IPR2013-00468
`Patent 7,516,192 B2
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`of being executed and interpreted as required by the Board’s claim construction.
`
`Id. at 89. We are not persuaded by this argument. We find that the electronic
`
`form as a whole, with its ability to display messages, is a script program. Pet.
`
`Reply 7-8. Patent Owner attempts to separate the “script” portion of the form from
`
`the “non-script” portion of the form. We decline to do so.
`
`Second, Patent Owner argues Wright Jr. does not teach a “generic script
`
`program,” as recited in claim 1. Wright Jr. allows a user to access a selection of
`
`original forms to choose one and edit its fields or add fields via the field editor to
`
`create an edited derivative form. Pet. 35; Ex. 1002, 8:3238. Petitioner argues
`
`that “the previous form has at least some form information that is generic, or
`
`generally applicable to the derivative form.” Pet. 35. Petitioner asserts that one of
`
`ordinary skill would interpret “generic” as indicating that it is not specifically
`
`addressed to a particular individual. Pet. Reply 9 (citing Ex. 1041, 540:9–24,
`
`552:24–553:10; Ex. 1001, 13:10–11, 13:41–43). Petitioner asserts that because the
`
`script program in Wright Jr. is not specifically addressed to an individual, it is a
`
`generic script program. Id. (citing Ex. 1008 ¶¶ 91-95, 113). We are persuaded
`
`that, in Wright Jr., the fact that the original form is available with a group of other
`
`forms and is not limited to a specific individual suggests it is generic.
`
`Patent Owner argues that this is insufficient because in the ’192 patent “a
`
`‘generic script program’ is a script program that is not usable in itself” and “the
`
`customized script program described in the ’192 patent will contain all of the
`
`generally applicable information from the generic script program.” PO Resp. 40.
`
`Patent Owner’s argument is not commensurate with the scope of the claims. There
`
`is no recitation in the claims that the generic script program must not itself be
`
`usable or that the customized script program must contain “all of the generally
`
`
`
`15
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`IPR2013-00468
`Patent 7,516,192 B2
`
`
`applicable information” from the generic script program. We decline to import
`
`these embodiments from the specification into the claims. We must be careful not
`
`to read embodiments appearing in the written description into the claim if the claim
`
`language is broader than the embodiment. In re Van Geuns, 988 F.2d 1181, 1184
`
`(Fed. Cir. 1993). We are persuaded that Petitioner has demonstrated sufficiently
`
`that Wright Jr. discloses a “generic script program.”
`
`Third, Patent Owner argues Wright Jr. does not teach an “input command,”
`
`as recited in claim 1. Patent Owner argues that “the cited portions of Wright [Jr.
`
`(Ex. 1002, 4:49–61, 7:6–25)] actually teach that the forms engine executes a script
`
`after the user answers each question.” PO Resp. 42. However, as noted above, we
`
`construe a “script program” to be a program that contains a set of instructions that
`
`is capable of being executed and interpreted. Wright Jr. teaches that a forms
`
`designer can create an electronic form that displays queries and provides user input
`
`responses. See Pet. 37. Patent Owner argues that the “forms engine has a pre-
`
`programmed flow that includes a decision state for determining whether the user
`
`has made changes to the answer box portion of the display.” PO Resp. 43 (citing
`
`Ex. 1002, 16:40–45, Fig. 3). Patent Owner thus argues that the “script” portion of
`
`the executable form is the only portion of the form that can be considered a “script
`
`program.” We find that the entire executable form meets the script program
`
`limitation. Additionally, Petitioner correctly asserts that Wright Jr. discloses an
`
`input command as part of its grammar rules. Pet. Reply 10 (citing Ex. 1002,
`
`24:53–25:5, 4:49–61, 7:6–25) Petitioner has demonstrated sufficiently that Wright
`
`Jr. teaches an executable form capable of executing “script” functions and that the
`
`executable form may be considered a “script program” that includes an “input
`
`command.”
`
`
`
`
`
`16
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`IPR2013-00468
`Patent 7,516,192 B2
`
`
`Fourth, Patent Owner argues Wright Jr. does not teach “one or more
`
`databases accessible by the data merge program for storing the generic script
`
`program and any responses received from the remotely situated apparatus,” as
`
`recited in claim 1. Petitioner explains that user responses disclosed in Wright Jr.
`
`are stored on the personal computer in a tab-delimited format for use with a
`
`database. Pet. 37-38 (citing Ex. 1002, 3:28–40, 5:7–15, 14:1–10).
`
`Wright Jr. also teaches that a form can be selected from a list of existing
`
`forms. Id. Patent Owner’s declarant Dr. David acknowledged one of ordinary
`
`skill would have been aware of the ability to store a list of forms in a database.
`
`Ex. 1041, 557:14–19 (agreeing that “one of ordinary skill would understand that
`
`one way to store such a list of forms would be to store them in a computer database
`
`that’s accessible on the computer”); see also id. at 559:10–23, 560:2–18. As noted
`
`above in Section II.E.1, Petitioner has shown, by a preponderance of the evidence,
`
`supported by articulated reasoning with rational underpinning, why a person of
`
`ordinary skill in the art would have made the modification to store Wright Jr.’s
`
`forms in a database.
`
`Claim 20 is a method claim containing similar limitations to claim 1.
`
`Petitioner explains how Wright Jr. meets the limitations of claim 20. ’469 Pet. 32–
`
`36. We are persuaded by these explanations for the same reasons stated above
`
`with regard to claim 1. For example, claim 20 recites “generating a customized
`
`script program in the computer.” Patent Owner argues that Wright Jr. does not
`
`disclose generating a customized script program “in the computer,” as required by
`
`claim 20. PO Resp. 59. Patent Owner states that “this limitation requires that the
`
`customization of the generic script program is done by a computer.” Id. Claim 20
`
`(emphasis added) recites “generating a customized script program in the computer”
`
`rather than generating a customized script program by the computer. Thus, we find
`
`
`
`
`17
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`

`IPR2013-00468
`Patent 7,516,192 B2
`
`
`it is sufficient that Wright Jr. teaches that a user generates a customized script
`
`program using the computer and the customized script program is stored in the
`
`computer. Petitioner has demonstrated sufficiently that Wright Jr. teaches
`
`generating a customized script program in the computer. ’469 Pet. 32; Pet. Reply
`
`15; Ex. 1022 ¶ 171.
`
`Claim 21 recites “wherein the step of generating the generic script program
`
`comprises entering, authoring, selecting, or any combination thereof, at least one of
`
`(i) the one or more messages to be presented to the individual, (ii) the one or more
`
`queries to be answered by the individual, (iii) the one or more response choices
`
`corresponding to the one or more queries or (iv) any combination thereof,” which
`
`is essentially the same as the “user interface” limitation of claim 1. Petitioner
`
`explains how Wright Jr. meets the limitations of claim 21. ’469 Pet. 36. We are
`
`persuaded by these explanations for the same reasons stated above with regard to
`
`claim 1. Therefore, Petitioner has shown, by a preponderance of the evidence, that
`
`claims 1, 20, and 21 are unpatentable over Wright Jr.
`
`3. Wright Jr. Does Not Teach Every Limitation of Claims 2, 3, and 23
`
`Claim 2 recites “a script assignment unit configured to . . . assign[] to each
`
`of the plurality of individuals at least one of the plurality of customized script
`
`programs.” Claim 23 requires “assigning to each of the plurality of individuals at
`
`least one of the one or more customized script programs.” Patent Owner argues
`
`that this requires “assigning different customized script programs to different
`
`individuals.” PO Resp. 47. This claim language does not require that every
`
`individual is assigned his own, customized script program. Rather, the claims only
`
`require that the assigned script program be customized. Thus, we find that Wright
`
`Jr.’s personality profile embodiment, where a group of individuals complete a
`
`
`
`18
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`

`IPR2013-00468
`Patent 7,516,192 B2
`
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`customized personality profile (Ex. 1002, 28:40–44), would be understood to
`
`assign at least one customized script program to that group. Pet. 19.
`
`Nonetheless, claim 2 further recites “for each of the plurality of individuals,
`
`a respective pointer to the at least one customized script program assigned to the
`
`individual.” Petitioner argues that Wright Jr. also teaches or suggests a database
`
`configured for storing a list of the individuals and a pointer to a script program
`
`assigned to an individual, recited in claim 2 and claim 23, in its discussion of a
`
`personality profile. Pet. 20, 41–42; ’469 Pet. 19-20, 39–40. Petitioner asserts that,
`
`after an individual has completed the personality profile questionnaire, one of
`
`ordinary skill would understand that the system would store in a database
`
`information associating the individual and his or her results. Pet. 41; Ex. 1008
`
`¶¶ 108-110, 144–145. Patent Owner correctly notes that Wright Jr. is not directed
`
`to a system that assigns different script programs to different individuals. PO
`
`Resp. 47–48 (citing Ex. 2007 ¶ 132; Ex. 2009, 463:4–15). Thus, although
`
`Petitioner is correct that results, an individual’s answers, from a particular form
`
`may be tracked by individual, there is no suggestion in Wright Jr. that the form
`
`itself, i.e., the customized script program, is associated with a particular individual
`
`such that a pointer to the first individual’s specific script program is unnecessary.
`
`Petitioner argues that the tab-delimited data format in Wright Jr. includes a
`
`pointer. Pet. Reply 11–12 (citing Ex. 2009, 567:14–20). Nonetheless, the tab-
`
`delimited data is related to the results or answers to the form, not the form itself.
`
`Id. Petitioner also asserts Wright Jr.’

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