`571-272-7822
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`Paper 22
`Filed: January 27, 2015
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_______________
`
`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
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`
`
`
`1 Case IPR2013-00469 has been joined with this proceeding.
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`
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`IPR2013-00468
`Patent 7,516,192 B2
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` A. Background
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`I. INTRODUCTION
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`Cardiocom, LLC (“Petitioner”)2 filed a Petition (“Pet.”) to institute an inter
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`partes review of claims 1–19 of U.S. Patent No. 7,516,192 B2 (“the ’192 patent”).
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`Paper 1. On January 16, 2014, the Board instituted an inter partes review of
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`claims 1–19 (Paper 22) (“’468 Dec. on Inst.”). On the same day, the Board
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`instituted an inter partes review of claims 20–37 based on a Petition (IPR2013-
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`00469, Paper 1) (“’469 Pet.”) filed in IPR2013-00469. Paper 21, IPR2013-00469
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`(“’469 Dec. on Inst.”). IPR2013-00469 was joined with IPR2013-00468. ’469
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`Dec. on Inst. 15. All references in this decision are to IPR2013-00468 unless
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`otherwise indicated.
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`Subsequent to institution, Robert Bosch Healthcare Systems, Inc. (“Patent
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`Owner”) filed a Patent Owner Response (Paper 39) (“PO Resp.”),3 and Petitioner
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`filed a Reply (Paper 52) (“Pet. Reply”).4 Petitioner filed a Motion to Exclude
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`Evidence (Paper 57), Patent Owner filed an Opposition to Petitioner’s Motion to
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`Exclude (Paper 61), and Petitioner filed a Reply (Paper 65). Patent Owner filed a
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`Motion to Exclude Evidence (Paper 59), Petitioner filed an Opposition to Patent
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`Owner’s Motion to Exclude (Paper 62), and Patent Owner filed a Reply (Paper 64).
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`Patent Owner also filed a Motion for Observation (Paper 58) (“Obs.”) on certain
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`cross-examination testimony of Petitioner’s declarant, Dr. Robert Stone, and
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`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.
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`IPR2013-00468
`Patent 7,516,192 B2
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`Petitioner filed a Response (Paper 63) (“Obs. Resp.”). As scheduled, an oral
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`hearing was held on September 9, 2014, and a transcript of that hearing is part of
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`the record. Paper 71 (“Tr.”).
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`B. The ’192 Patent (Ex. 1001)
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`The ’192 patent, titled “Networked System for Interactive Communication
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`and Remote Monitoring of Individuals,” issued on April 7, 2009. The ’192 patent
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`relates to “a networked system for remotely monitoring individuals and for
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`communicating information to the individuals through the use of script programs.”
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`Ex. 1001, 1:39–43.
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`The ’192 patent describes the need for remote monitoring of patients in
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`out-patient or home healthcare programs. Id. at 1:45–51, 2:35–40. According to
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`the patent, the use of personal computers, medical monitoring devices, and
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`interactive telephone or video response systems for remote monitoring in the prior
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`art had proved inadequate because of their expense, limited multimedia capability,
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`or the complexity of managing non-compliant patients. Id. at 1:65–2:32.
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`One embodiment of the ’192 patent, shown in Figure 1, reproduced below, is
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`networked system 16 with server 18 connected to the Internet (communication
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`network 24), where server 18 sends script programs to each remotely
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`programmable apparatus 26. Id. at 4:18–35.
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`IPR2013-00468
`Patent 7,516,192 B2
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`Figure 1 depicts a block diagram of the networked system of the invention.
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`According to Figure 1, system 16 may include any number of remotely
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`programmable apparatuses 26 (in Figure 1, two are shown) for monitoring any
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`number of patients. Id. at 4:42–44. In one preferred embodiment, each patient is
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`provided with monitoring device 28 (such as a blood glucose meter), which
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`produces measurements of a physiological condition of the patient (such as blood
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`glucose concentrations in the patient) and transmits those measurements to the
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`patient’s remote apparatus 26 via standard cable 30. Id. at 4:45–61. In operation,
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`remotely programmable apparatus 26 executes a script program received from
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`server 18. Id. at 5:7–9. That script program includes “queries, reminder messages,
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`information statements, useful quotations, or other information of benefit to the
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`patient.” Id. at 5:9–11.
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`C.
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`Illustrative Claim
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`Claims 1, 20, and 37 are independent claims. Claim 1 illustrates the claimed
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`subject matter and is reproduced below:
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`1. A monitoring system for communicating with at least
`one individual, the monitoring system comprising:
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`IPR2013-00468
`Patent 7,516,192 B2
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`a computer configured to communicate with at least
`one remotely situated apparatus;
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`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
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`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.
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`IPR2013-00468
`Patent 7,516,192 B2
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`D. Cited Prior Art
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`The pending grounds of unpatentability in this inter partes review are based
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`on the following prior art:
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`Wright Jr.,
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`US 5,704,029
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`Dec. 30, 1997
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`(Ex. 1002)
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`
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`
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`Goodman,
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`Wahlquist,
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`(filed May 23, 1994)
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`
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`US 5,827,180
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`Oct. 27, 1998
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`(Ex. 1003)
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`
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`
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`(filed Nov. 26, 1997)
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`US 5,367,667
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`Nov. 22, 1994
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`(Ex. 1004)
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`E. Instituted Grounds of Unpatentability
`
`This inter partes review involves the following asserted grounds of
`
`unpatentability:
`
`References
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`Wright Jr.
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`Basis
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`§ 103
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`Wright Jr. and Goodman § 103
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`Claims Challenged
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`1–3, 6, 7, 11, 12, 17–19,
`20-23, 29, 30, and 35-36
`1–37
`
`Goodman and Wahlquist § 103
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`20–37
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`
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`F. Claim Interpretation
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`The parties agree with the interpretation of various claim terms of the ’192
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`patent as described in the Decision on Institution. Patent Owner explains that
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`Petitioner “filed a new petition seeking inter partes review of related U.S. Patent
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`No. 7,587,469” in which Petitioner “advances a very different construction” for the
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`term “script program.” PO Resp. 5–6. However, Petitioner does not advance a
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`different construction for the term “script program” in this proceeding.
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`IPR2013-00468
`Patent 7,516,192 B2
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`We adopt our previous analysis for the non-disputed claim terms, and
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`interpret these terms as follows:
`
`Term
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`“script program”
`
`“data merge program”
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`“pointer”
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`“script assignment unit”
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`Interpretation
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`a program that contains a set of
`instructions that is capable of
`being executed and interpreted
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`a program that combines two or
`more sets of data into one
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`an identifier that indicates the
`location of an item
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`a program that associates a
`script program with an
`individual
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`See ’468 Dec. on Inst. 5–9.
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`II. ANALYSIS
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`For at least the following reasons, we conclude that Petitioner has
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`demonstrated by a preponderance of the evidence that claims 1, 6, 7, 17, 18, 20,
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`21, 22, and 36 are unpatentable over Wright Jr., and that claims 1–37 are
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`unpatentable over Wright Jr. and Goodman, under 35 U.S.C. § 103(a). We also
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`conclude that Petitioner has not demonstrated by a preponderance of the evidence
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`that claims 20–37 are unpatentable over Goodman and Wahlquist, under 35 U.S.C.
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`§ 103(a).
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`A. Overview of Wright Jr. (Ex. 1002)
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`Wright Jr. discloses a system for computerized form completion and
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`processing. Ex. 1002, Abstract. In one embodiment, an electronic form is sent
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`from a personal computer (PC) to a device, such as a personal digital assistant
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`(PDA). Id. at 3:28–39. The PDA runs a forms engine that presents questions to a
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`user and displays messages based on the response to a particular question. Id. at
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`3:40–51. The forms engine executes a script that, among other things, advances to
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`the next question. Id.
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`B. Overview of Goodman (Ex. 1003)
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`Goodman discloses a system for monitoring the health of a patient in which
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`a host computer is in communication with a health care provider’s computer and a
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`patient’s computer. Ex. 1003, 1:11–13, 2:45–49. In one example, the host
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`computer receives a treatment plan for a patient from the health care provider and
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`generates an algorithm based on the treatment plan. Id. at 2:54–57. The algorithm
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`is programmed into a message device, which is in the possession of the patient. Id.
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`at 2:49–50, 57–58. The message device prompts the patient to measure and enter
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`physiological data as dictated by the treatment plan. Id. at 2:59–61.
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`C. Overview of Wahlquist (Ex. 1004)
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`Wahlquist discloses a system for performing remotely, computer diagnostic
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`tests on personal computers. Ex. 1004, 1:7–10. A computer user calls a customer
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`service help desk to resolve a computer issue. Id. at 2:8–10, 17. A representative
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`at the customer service help desk creates a computerized case file that includes a
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`unique case identification number, user identification, and user’s computer
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`identification information. Id. at 4:41–50. The representative also selects
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`diagnostic tests based on the user’s request, the selection used to build a script file.
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`Id. at 2:17–18, 22–23. The case file and the script file are submitted by the
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`representative to a database manager computer and downloaded to the user’s
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`computer. Id. at 5:37–39, 63–66. The script file then is executed on the user’s
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`computer by a diagnostic program on the user’s computer. Id. at 2:39–40, 42–43.
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`The script file instructs the user’s computer to execute desired test files and
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`specifies the creation of various log files to record the results of the tests. Id. at
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`2:45–47.
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`D. Level of Ordinary Skill
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`Petitioner asserts that a person of ordinary skill in the art would have had the
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`following education and experience: Bachelor’s degree in Electrical Engineering
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`or Computer Science, or its equivalent, at least 2 years of experience with the
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`design and programming of patient monitoring systems, and at least 1 year of
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`experience with the design or programming of networked systems. Ex. 1008 ¶ 23.
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`Patent Owner’s declarant, Dr. Yadin David, disagrees with the above assertion,
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`asserting instead that a person of ordinary skill in the art would not have had the 1
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`year of experience with the design and programming of networked systems. Ex.
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`2007 ¶ 23. The disagreement appears to be immaterial to the arguments presented
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`by Patent Owner, however, because Dr. David declares that this additional
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`experience would not affect his opinions. Id. Accordingly, we need not determine
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`which of the alleged education and experience proffered by the parties is correct.
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`We determine the obviousness issues guided by the evidence of the level of
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`ordinary skill in the art presented by the references themselves. See Okajima v.
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`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). From the Goodman reference,
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`which Patent Owner does not contest is in the field of endeavor of the invention in
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`question, we understand that the level of ordinary skill in the art, at a minimum,
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`pertains to the configuration of communications systems, such as electronic or
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`wireless systems and personal computer systems for communicating with a central
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`monitoring system, which is computer-implemented technology. See Ex. 1003,
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`3:5059; see also id. at 6:125 (describing the features of the computer-
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`implemented technology at issue in Goodman). With this level of ordinary skill in
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`mind, we now turn to the analysis of the differences between the asserted prior art
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`references and the subject matter recited in the claims-at-issue.
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`E. Obviousness over Wright Jr.
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`Petitioner argues in its Petitions that claims 1–3, 6, 7, 11, 12, 17–19, 20–23,
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`29, 30, 35, and 36 are unpatentable over Wright Jr. under 35 U.S.C. § 103(a),
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`relying on the declaration of Dr. Stone (Ex. 1008) in support. Pet. 5; ’469 Pet. 2.
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`We have reviewed each of the ’468 and ’469 Petitions, the Patent Owner
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`Response, and Petitioner’s Reply, as well as the evidence discussed in each of
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`those papers, and are persuaded, by a preponderance of the evidence, that claims 1,
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`6, 7, 17, 18, 20–22, and 36 would have been obvious based on Wright Jr. On the
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`other hand, based on that review, we are not persuaded, by a preponderance of the
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`evidence, that claims 2, 3, 11, 12, 19, 23, 29, 30, and 35 would have been obvious
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`based on Wright Jr.
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`As an initial matter, Patent Owner argues that Dr. Stone’s obviousness
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`analysis is improper because he “used the claims of [the ’192 patent] as a template
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`to try and fit combinations of references into the claims” and “used the teachings
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`of [the ’192 patent] specification[] to identify the goals and motivations for
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`combining the prior art.” PO Resp. 19–22 (citing Ex. 2009 at 412:8–12).
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`According to Patent Owner, Dr. Stone’s analysis is based on improper hindsight
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`reasoning. Id. “Any judgment on obviousness is in a sense necessarily a
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`reconstruction based on hindsight reasoning, but so long as it takes into account
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`only knowledge which was within the level of ordinary skill in the art at the time
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`the claimed invention was made and does not include knowledge gleaned only
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`from applicant’s disclosure, such a reconstruction is proper.” In re McLaughlin,
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`443 F.2d 1392, 1395 (CCPA 1971). Patent Owner does not show sufficiently that
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`Dr. Stone’s analysis relies on knowledge that was beyond the level of ordinary
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`skill in the art at the time of the ’192 patent. We do not see, and Patent Owner
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`does not assert or demonstrate persuasively, how the disclosures relied upon by Dr.
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`Stone (which were not gleaned from the ’192 patent Specification) would have
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`been beyond the level of ordinary skill in the art.
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`1. A Person of Ordinary Skill in the Art Would Have Had Reason to
`Modify the Teachings of Wright Jr.
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`Petitioner asserts that Wright Jr., combined with the knowledge of one
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`skilled in the art at the time of the invention, teaches or suggests the limitations of
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`claims 1–3, 6, 7, 11, 12, 17–19, 20–23, 29, 30, 35, and 36. Patent Owner argues
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`that there was no motivation to modify Wright Jr. PO Resp. 32. Patent Owner
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`asserts that Petitioner’s expert testified that Wright Jr. was “complete for its
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`purposes, meets the goals identified in the patent, and discloses nothing that would
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`instruct or tell a person of ordinary skill in the art to combine Wright [Jr.] with
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`something else.” Id. (citing Ex. 2009, 467:16–18, 468:5–17, 469:1–17)
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`The Federal Circuit has noted that obviousness does not require that every
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`element be present in the prior art. See Tegal Corp. v. Tokyo Electron Am., Inc.,
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`257 F.3d 1331, 1349 (Fed. Cir. 2001) (acknowledging that the claimed invention
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`could be obvious even if prior art did not teach one of its elements). Thus, even a
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`single prior art reference may render an invention obvious. In such cases, the
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`single reference may fail to teach expressly one or more claim limitations. E.g.,
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`B.F. Goodrich Co. v. Aircraft Braking Sys. Corp., 72 F.3d 1577, 1582 (Fed. Cir.
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`1996) (holding that the difference between the claimed invention and the sole
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`reference would have been obvious); In re O‘Farrell, 853 F.2d 894, 902 (Fed. Cir.
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`1988) (“[A]ppellants’ claimed invention would have been obvious in light of the
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`Polisky reference alone . . . .”).
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`Nonetheless, where there is an attempt to show obviousness over a single
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`reference, there also must be a showing of a suggestion or motivation to modify the
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`teachings of that reference to achieve the claimed invention. Sibia Neurosciences,
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`Inc. v. Cadus Pharm. Corp., 225 F.3d 1349, 1356 (Fed. Cir. 2000). Determining
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`obviousness with respect to whether a single piece of prior art could be modified to
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`produce the claimed invention invokes an inquiry into whether a person having
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`ordinary skill in the art would have had a reason to so modify the prior art
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`reference. See Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1351-52 (Fed. Cir.
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`2010). An obviousness challenge relying on such a modification to bridge the
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`difference between the prior art and the claimed invention must be supported by
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`articulated reasoning with rational underpinning to explain why the person of
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`ordinary skill in the art would make the modification. See In re Kahn, 441 F.3d
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`977, 988 (Fed. Cir. 2006) (Kahn). The Supreme Court has admonished courts that
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`this analysis should be made explicit. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
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`418 (2007) (citing Kahn, 441 F.3d at 988).
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`For example, Petitioner relies on knowledge of one of ordinary skill to meet
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`the “one or more databases” limitation. Petitioner explains that user responses are
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`stored on the personal computer in a tab-delimited format for use with a database.
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`Pet. 37–38 (citing Ex. 1002, 3:28–40, 5:7–15, 14:1–10). Wright Jr. also teaches
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`that a form can be selected from a list of existing forms. Id. Patent Owner’s
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`declarant Dr. David acknowledged one of ordinary skill would be aware of the
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`ability to store a list of forms in a database. Ex. 1041, 557:14–19 (agreeing that
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`“one of ordinary skill would understand that one way to store such a list of forms
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`would be to store them in a computer database that’s accessible on the computer”).
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`Given that the use of databases was well within the skill of one of ordinary skill,
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`and given that the form data in Wright Jr. is stored in tab-delimited format,
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`Petitioner has shown, by a preponderance of the evidence, supported by articulated
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`reasoning with rational underpinning, that a person of ordinary skill in the art
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`would have made the modification to store Wright Jr.’s forms in a database.
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`2. Petitioner Establishes By a Preponderance of the Evidence That
`Wright Jr. Teaches Every Limitation of Claims 1, 20, and 21
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`As detailed below, Petitioner argues that Wright Jr. teaches or suggests
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`every limitation of claim 1.
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`a. “a computer” (Wright Jr.’s personal computer (PC)) (Pet. 34 (citing Ex.
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`1002, 3:2840));
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`b. “remotely situated apparatus” (Wright Jr.’s personal digital assistant) (id.
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`(citing Ex. 1002, 6:3345, 6267, Fig. 1));
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`c. “user interface” (Wright Jr.’s forms creation program) (id. (citing Ex.
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`1002, 6:3339, 7:4762)) “for entering, authoring, selecting, or any
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`combination thereof, at least one of”:
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`i.
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`“one or more messages to be presented to the individual” (Wright
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`Jr.’s forms creation program allows entry or selection of messages)
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`(id. at 3435 (citing Ex. 1002, 10:4650, 11:4812:10));
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`ii.
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`“one or more queries to be answered by the individual” (Wright
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`Jr.’s forms creation program allows entry of text for questions and
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`answer choices) (id. at 3435 (citing Ex. 1002, 10:4611:10,
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`11:4812:10, 12:6313:12)); and
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`iii.
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`“one or more response choices corresponding to the one or more
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`queries” (Wright Jr.’s forms creation program allows entry of text
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`for questions and corresponding answer choices) (id. (citing Ex.
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`1002, 10:4611:10, 11:4812:10, 12:6313:12));
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`d. “data merge program” (Wright Jr.’s field editor) (id. at 35 (citing Ex.
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`1002, 6:3340, 9:5160)) configured to generate a customized script
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`program by customizing a generic script program (Wright Jr.’s forms)
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`(id. (citing Ex. 1002, 8:3238, 9:5160, 27:5662));
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`e. “customized script program” that is executed on the remotely situated
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`apparatus (id. (citing Ex. 1002, 8:3238, 9:5160, 27: 5662)) and
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`includes:
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`i.
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`“a display command to present to the individual at least one of the
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`one or more messages, the one or more queries, the one or more
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`response choices corresponding to the one or more queries or any
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`combination thereof” (Wright Jr.’s PDA includes a processor, a
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`graphics display, and a memory, and allows display commands for
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`presenting messages, queries, or response choices) (id. at 37 (citing
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`Ex. 1002, 4:4961, 7:625)); and
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`ii.
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`“an input command to receive responses when the script program
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`includes one or more queries to be presented” (Wright Jr.’s PDA
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`includes a processor, a graphics display, an input device
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`mechanism and a memory and allows input commands for
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`accepting responses selected by a user) (id. at 37 (citing Ex. 1002,
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`4:4961, 7:625)).
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`Patent Owner makes four arguments with respect to claim 1. First, Patent
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`Owner argues that Wright Jr. does not teach “a script program” because Wright Jr.
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`teaches providing prompts and answers in structured data. PO Resp. 8. Patent
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`Owner argues that “structured data provide[] information that the forms engine is
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`pre-programmed to handle in a particular manner,” and are not instructions capable
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`of being executed and interpreted as required by the Board’s claim construction.
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`Id. at 89. We are not persuaded by this argument. We find that the electronic
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`form as a whole, with its ability to display messages, is a script program. Pet.
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`Reply 7-8. Patent Owner attempts to separate the “script” portion of the form from
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`the “non-script” portion of the form. We decline to do so.
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`Second, Patent Owner argues Wright Jr. does not teach a “generic script
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`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
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`create an edited derivative form. Pet. 35; Ex. 1002, 8:3238. Petitioner argues
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`that “the previous form has at least some form information that is generic, or
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`generally applicable to the derivative form.” Pet. 35. Petitioner asserts that one of
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`ordinary skill would interpret “generic” as indicating that it is not specifically
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`addressed to a particular individual. Pet. Reply 9 (citing Ex. 1041, 540:9–24,
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`552:24–553:10; Ex. 1001, 13:10–11, 13:41–43). Petitioner asserts that because the
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`script program in Wright Jr. is not specifically addressed to an individual, it is a
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`generic script program. Id. (citing Ex. 1008 ¶¶ 91-95, 113). We are persuaded
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`that, in Wright Jr., the fact that the original form is available with a group of other
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`forms and is not limited to a specific individual suggests it is generic.
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`Patent Owner argues that this is insufficient because in the ’192 patent “a
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`‘generic script program’ is a script program that is not usable in itself” and “the
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`customized script program described in the ’192 patent will contain all of the
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`generally applicable information from the generic script program.” PO Resp. 40.
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`Patent Owner’s argument is not commensurate with the scope of the claims. There
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`is no recitation in the claims that the generic script program must not itself be
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`usable or that the customized script program must contain “all of the generally
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`applicable information” from the generic script program. We decline to import
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`these embodiments from the specification into the claims. We must be careful not
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`to read embodiments appearing in the written description into the claim if the claim
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`language is broader than the embodiment. In re Van Geuns, 988 F.2d 1181, 1184
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`(Fed. Cir. 1993). We are persuaded that Petitioner has demonstrated sufficiently
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`that Wright Jr. discloses a “generic script program.”
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`Third, Patent Owner argues Wright Jr. does not teach an “input command,”
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`as recited in claim 1. Patent Owner argues that “the cited portions of Wright [Jr.
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`(Ex. 1002, 4:49–61, 7:6–25)] actually teach that the forms engine executes a script
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`after the user answers each question.” PO Resp. 42. However, as noted above, we
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`construe a “script program” to be a program that contains a set of instructions that
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`is capable of being executed and interpreted. Wright Jr. teaches that a forms
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`designer can create an electronic form that displays queries and provides user input
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`responses. See Pet. 37. Patent Owner argues that the “forms engine has a pre-
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`programmed flow that includes a decision state for determining whether the user
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`has made changes to the answer box portion of the display.” PO Resp. 43 (citing
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`Ex. 1002, 16:40–45, Fig. 3). Patent Owner thus argues that the “script” portion of
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`the executable form is the only portion of the form that can be considered a “script
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`program.” We find that the entire executable form meets the script program
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`limitation. Additionally, Petitioner correctly asserts that Wright Jr. discloses an
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`input command as part of its grammar rules. Pet. Reply 10 (citing Ex. 1002,
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`24:53–25:5, 4:49–61, 7:6–25) Petitioner has demonstrated sufficiently that Wright
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`Jr. teaches an executable form capable of executing “script” functions and that the
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`executable form may be considered a “script program” that includes an “input
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`command.”
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`Fourth, Patent Owner argues Wright Jr. does not teach “one or more
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`databases accessible by the data merge program for storing the generic script
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`program and any responses received from the remotely situated apparatus,” as
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`recited in claim 1. Petitioner explains that user responses disclosed in Wright Jr.
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`are stored on the personal computer in a tab-delimited format for use with a
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`database. Pet. 37-38 (citing Ex. 1002, 3:28–40, 5:7–15, 14:1–10).
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`Wright Jr. also teaches that a form can be selected from a list of existing
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`forms. Id. Patent Owner’s declarant Dr. David acknowledged one of ordinary
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`skill would have been aware of the ability to store a list of forms in a database.
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`Ex. 1041, 557:14–19 (agreeing that “one of ordinary skill would understand that
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`one way to store such a list of forms would be to store them in a computer database
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`that’s accessible on the computer”); see also id. at 559:10–23, 560:2–18. As noted
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`above in Section II.E.1, Petitioner has shown, by a preponderance of the evidence,
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`supported by articulated reasoning with rational underpinning, why a person of
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`ordinary skill in the art would have made the modification to store Wright Jr.’s
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`forms in a database.
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`Claim 20 is a method claim containing similar limitations to claim 1.
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`Petitioner explains how Wright Jr. meets the limitations of claim 20. ’469 Pet. 32–
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`36. We are persuaded by these explanations for the same reasons stated above
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`with regard to claim 1. For example, claim 20 recites “generating a customized
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`script program in the computer.” Patent Owner argues that Wright Jr. does not
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`disclose generating a customized script program “in the computer,” as required by
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`claim 20. PO Resp. 59. Patent Owner states that “this limitation requires that the
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`customization of the generic script program is done by a computer.” Id. Claim 20
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`(emphasis added) recites “generating a customized script program in the computer”
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`rather than generating a customized script program by the computer. Thus, we find
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`it is sufficient that Wright Jr. teaches that a user generates a customized script
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`program using the computer and the customized script program is stored in the
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`computer. Petitioner has demonstrated sufficiently that Wright Jr. teaches
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`generating a customized script program in the computer. ’469 Pet. 32; Pet. Reply
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`15; Ex. 1022 ¶ 171.
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`Claim 21 recites “wherein the step of generating the generic script program
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`comprises entering, authoring, selecting, or any combination thereof, at least one of
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`(i) the one or more messages to be presented to the individual, (ii) the one or more
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`queries to be answered by the individual, (iii) the one or more response choices
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`corresponding to the one or more queries or (iv) any combination thereof,” which
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`is essentially the same as the “user interface” limitation of claim 1. Petitioner
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`explains how Wright Jr. meets the limitations of claim 21. ’469 Pet. 36. We are
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`persuaded by these explanations for the same reasons stated above with regard to
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`claim 1. Therefore, Petitioner has shown, by a preponderance of the evidence, that
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`claims 1, 20, and 21 are unpatentable over Wright Jr.
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`3. Wright Jr. Does Not Teach Every Limitation of Claims 2, 3, and 23
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`Claim 2 recites “a script assignment unit configured to . . . assign[] to each
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`of the plurality of individuals at least one of the plurality of customized script
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`programs.” Claim 23 requires “assigning to each of the plurality of individuals at
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`least one of the one or more customized script programs.” Patent Owner argues
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`that this requires “assigning different customized script programs to different
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`individuals.” PO Resp. 47. This claim language does not require that every
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`individual is assigned his own, customized script program. Rather, the claims only
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`require that the assigned script program be customized. Thus, we find that Wright
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`Jr.’s personality profile embodiment, where a group of individuals complete a
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`customized personality profile (Ex. 1002, 28:40–44), would be understood to
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`assign at least one customized script program to that group. Pet. 19.
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`Nonetheless, claim 2 further recites “for each of the plurality of individuals,
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`a respective pointer to the at least one customized script program assigned to the
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`individual.” Petitioner argues that Wright Jr. also teaches or suggests a database
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`configured for storing a list of the individuals and a pointer to a script program
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`assigned to an individual, recited in claim 2 and claim 23, in its discussion of a
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`personality profile. Pet. 20, 41–42; ’469 Pet. 19-20, 39–40. Petitioner asserts that,
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`after an individual has completed the personality profile questionnaire, one of
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`ordinary skill would understand that the system would store in a database
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`information associating the individual and his or her results. Pet. 41; Ex. 1008
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`¶¶ 108-110, 144–145. Patent Owner correctly notes that Wright Jr. is not directed
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`to a system that assigns different script programs to different individuals. PO
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`Resp. 47–48 (citing Ex. 2007 ¶ 132; Ex. 2009, 463:4–15). Thus, although
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`Petitioner is correct that results, an individual’s answers, from a particular form
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`may be tracked by individual, there is no suggestion in Wright Jr. that the form
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`itself, i.e., the customized script program, is associated with a particular individual
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`such that a pointer to the first individual’s specific script program is unnecessary.
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`Petitioner argues that the tab-delimited data format in Wright Jr. includes a
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`pointer. Pet. Reply 11–12 (citing Ex. 2009, 567:14–20). Nonetheless, the tab-
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`delimited data is related to the results or answers to the form, not the form itself.
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`Id. Petitioner also asserts Wright Jr.’