`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CAREFUSION CORPORATION,
`Petitioner,
`
`v.
`
`BAXTER INTERNATIONAL, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01460 (Patent 5,764,034)
` Case IPR2016-01463 (Patent 6,231,560 B1)
`____________
`
`Record of Oral Hearing
`Held: October 17, 2017
`____________
`
`
`
`
`Before ROBERT J. WEINSCHENK, TIMOTHY J. GOODSON, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2016-01460 (Patent 5,764,034)
`Case IPR2016-01463 (Patent 6,231,560 B1)
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`ADAM R. STEINERT, ESQ.
`Fredrikson & Byron, P.A.
`200 South Sixth Street
`Suite 4000
`Minneapolis, Minnesota 55402-1425
`
`ON BEHALF OF PATENT OWNER:
`DENIS J. SULLIVAN, ESQ.
`THOMAS HOEHNER, ESQ.
`JOHN GUTKOSKI, ESQ.
`Barclay Damon LLP
`Barclay Damon Tower
`125 East Jefferson Street
`Syracuse, New York 13202
`
`
`
`
`The above-entitled matter came on for hearing on Tuesday,
`October 17, 2017, commencing at 1:00 p.m., at the U.S. Patent and
`Trademark Office, 600 Dulany Street, Alexandria, Virginia.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` 2
`
`
`
`Case IPR2016-01460 (Patent 5,764,034)
`Case IPR2016-01463 (Patent 6,231,560 B1)
`
`
`
`P R O C E E D I N G S
`- - - - -
`JUDGE WIEKER: Please be seated. This is the oral hearing
`for Case Numbers IPR2016-01460 and IPR2016-01463, CareFusion
`Corporation vs. Baxter International, concerning U.S. Patent Numbers
`5,764,034 and 6,231,560, respectively.
`I am Judge Wieker, and with me are Judge Weinschenk and
`Judge Goodson, who's appearing remotely. Counsel for parties, please
`introduce yourselves for the record, starting with Petitioner.
`MR. STEINERT: Adam Steinert, Fredrikson & Byron, on
`behalf of Petitioner. With me is Karina Marciana from CareFusion's
`parent, Becton Dickinson.
`JUDGE WIEKER: Thank you.
`Patent Owner?
`MR. SULLIVAN: Good morning. Denis Sullivan with the
`law firm of Barclay Damon in Syracuse, New York, representing the
`Patent Owner, Baxter International. I will be presenting on the '034
`patent today. With me at counsel's table is Thomas Hoehner, also with
`Barclay Damon in Syracuse, New York. He will be presenting for the
`'560 patent. Here in the room as well is my partner John Gutkoski from
`our Boston office, along with Joseph Reagen, chief IP counsel for
`Baxter, and Austin Foley, senior patent counsel.
`JUDGE WIEKER: Thank you, all, and welcome to the Board.
`Today we will hear argument in two separate proceedings before the
`Board. Per our October 2nd order, the hearings in these two cases will
`
`
`
`
` 3
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case IPR2016-01460 (Patent 5,764,034)
`Case IPR2016-01463 (Patent 6,231,560 B1)
`
`be conducted serially, with each party accorded an hour and a half to
`address both proceedings.
`We will begin first with the 1460 IPR. Petitioner will argue
`first and may reserve rebuttal time. Next, Patent Owner will respond
`but may not reserve rebuttal time. Petitioner will then respond with any
`reserved rebuttal time. We will then follow the same procedure in the
`1463 IPR.
`I'd like to remind the parties that Petitioner bears the burden of
`proving any proposition of unpatentability by a preponderance of the
`evidence. Also, this is a reminder that the hearing is open to the public,
`and a full transcript will be part of the record when it's available.
`Finally, please bear in mind that Judge Goodson is attending
`remotely. Please identify clearly and specifically each demonstrative
`exhibit, for example, by slide number or screen number, to ensure
`clarity of the record and to ensure Judge Goodson can follow your
`presentation remotely.
`With that, we will begin with the hearing for IPR2016-01460.
`Mr. Steinert, how much time would you like to reserve for your
`argument in the 1463 IPR?
`MR. STEINERT: I would like to reserve a total of 45 minutes
`for the 1463 IPR.
`JUDGE WIEKER: Okay.
`MR. STEINERT: If this IPR occupies less than the 45
`minutes, I'm happy to put that extra time onto 1463.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`
`
` 4
`
`
`
`Case IPR2016-01460 (Patent 5,764,034)
`Case IPR2016-01463 (Patent 6,231,560 B1)
`
`
`JUDGE WIEKER: Okay. And would you like to reserve any
`of the 1460 time for rebuttal?
`MR. STEINERT: Yes, ten minutes. So no more than 35
`minutes for my opening, Your Honors.
`JUDGE WIEKER: Okay. All right, you may proceed when
`you are ready.
`MR. STEINERT: Thank you, Your Honors.
`United States Patent Number 5,764,034 relates to a battery
`monitor for an infusion pump. Referring to Demonstrative Slide
`Number 2, which has the text of Claim 1 of the '034 patent, the claim
`requires an infusion pump with a pump mechanism; a battery; a circuit
`which monitors the voltage and current; a circuit responsive to that
`monitoring circuit that determines the remaining time of charge in the
`battery; an alarm when the remaining time of charge falls below a
`predetermined level; and an alert when the remaining time of charge
`falls below a different predetermined level that's higher than that first
`predetermined level; and display means for displaying the remaining
`time of charge in the battery. That's it.
`The crux of this IPR is that that really didn't add anything to
`the existing technology for monitoring batteries, not only in general, but
`also in an infusion pump. During prosecution -- and I think the parties
`are in full agreement on this -- the entire reason that the claims were
`allowed was because of the idea of triggering alerts and alarms based on
`the remaining time of charge in the battery, rather than the voltage of
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`
`
` 5
`
`
`
`Case IPR2016-01460 (Patent 5,764,034)
`Case IPR2016-01463 (Patent 6,231,560 B1)
`
`the battery itself, but that wasn't an invention when this patent
`application was filed.
`Turning to Slide 3 in CareFusion's demonstratives, the level of
`ordinary skill in the art, the primary debate between the parties on the
`level of ordinary skill in the art is whether a person of ordinary skill at
`the time would have to have had specific experience working on battery
`circuits. CareFusion maintains that by 1996, batteries were ubiquitous.
`They were well known. The issues with different kinds of batteries
`were well known. A person graduating with a degree in electrical
`engineering or physics would be well versed in the level of battery
`technology needed to understand what's going on in this patent, to
`understand the claims, and to have done the kind of design work needed
`to implement what's being claimed. Regardless, this is probably a
`tempest in a teapot, because as explained in our reply brief,
`CareFusion's expert, Dr. Xu, more than meets the level of ordinary skill
`in the art even proposed by Baxter.
`The parties disagreed on the claim construction of a circuit
`responsive to the monitoring circuit, which determines the remaining
`time of charge in the battery, as addressed on CareFusion Slide 4.
`CareFusion continues to believe that the proper construction is that that
`circuit being responsive to the monitoring circuit must determine the
`remaining time of charge in the battery from both current and voltage.
`We understand that the Board has not adopted that. We understand that
`Baxter disagrees with that. In either case, we believe that the prior art
`renders the challenged claims invalid, especially given that the Board's
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 6
`
`
`
`Case IPR2016-01460 (Patent 5,764,034)
`Case IPR2016-01463 (Patent 6,231,560 B1)
`
`construction and Baxter's are broader than what CareFusion had
`proposed.
`The remaining claim construction issues Baxter has said are
`not germane. We disagree. They are means-plus-function terms, and
`we believe that, as means-plus-function terms, they must be construed.
`Regardless, I don't think we have a genuine debate on any of these, and
`CareFusion is fine with the Board's constructions for display means,
`means for sampling, and means for alternatively sampling, which are
`addressed on Slides 5 through 7.
`Turning to CareFusion Slide Number 8, the Layman patent,
`the primary reference relied on in the petition, describes an infusion
`pump with a power management system. The infusion pump has an
`internal battery, and the power management system of the infusion
`pump automatically calculates battery charge status and use and
`provides a runtime display of the calculated amount of time that the
`battery can operate based on what's going on in the infusion pump.
`That's reproduced from the abstract of the Layman patent on
`CareFusion Slide Number 8.
`Right here, we have virtually the entirety of Claim 1, just from
`the abstract --
`JUDGE WIEKER: So can I stop you there for a brief
`question, Mr. Steinert?
`MR. STEINERT: Certainly.
`JUDGE WIEKER: In the reply you discuss -- Petitioner
`discusses the claims as being obvious over Layman alone. Is that
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 7
`
`
`
`Case IPR2016-01460 (Patent 5,764,034)
`Case IPR2016-01463 (Patent 6,231,560 B1)
`
`Petitioner's contention, that the claims are rendered obvious over
`Layman alone or Layman in combination with the teachings of
`Gargano?
`MR. STEINERT: Your Honor, thank you for asking that
`question, because I know that Baxter made a big point of this in their
`subsequent motion to strike portions of the reply brief. Allow me to be
`clear.
`
`CareFusion has not asked the Board, not in the petition, not in
`the reply, to institute based on Layman alone. We could have, and I
`think our petition was very clear on this. We believe that there would
`have been sufficient disclosure in Layman alone to institute and to find
`the patent obvious based on Layman alone, and the primary reason --
`and we can discuss this further, I have more slides on this -- is that
`Layman has a graphical display of the time of charge remaining,
`calculated based on coulomb counting of the current in 15-minute
`increments, tick marks. And as the battery ticks down, each of those
`tick marks could be considered an alert or an alarm indicating how
`much battery life is remaining.
`JUDGE WIEKER: But, for example, in the petition, just to be
`clear, you don't map those tick marks to the claimed alarms and alerts,
`correct?
`MR. STEINERT: Oh, we do, Your Honor.
`JUDGE WIEKER: You do?
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
`
`
`
`
` 8
`
`
`
`Case IPR2016-01460 (Patent 5,764,034)
`Case IPR2016-01463 (Patent 6,231,560 B1)
`
`
`MR. STEINERT: We do. If you look at our claim charts,
`pages 29 through 33 of the petition, those tick marks are expressly cited
`in connection with those elements. That was --
`JUDGE WEINSCHENK: Which page is that?
`MR. STEINERT: I believe that was pages 29 through 33 of
`the petition.
`JUDGE WIEKER: So I understand that you cite the portions
`of Layman that describe the graph shown in Figure 3, but is there an
`analysis mapping which of those ticks, for example, correspond to a
`battery alarm and which correspond to a battery alert in any, you know,
`substantive, analytical way, rather than just reproducing a portion of --
`MR. STEINERT: No, Your Honor, we did not do that, and
`here's why, because we didn't feel that we needed to, because the -- the
`claim that we asked the Board to institute is Layman in combination
`with Gargano.
`JUDGE WIEKER: Okay. So, like, for example, on the
`petition at page 18, where you identify the grounds, Ground 1 is
`Layman and Gargano, and that is what you are proceeding on.
`MR. STEINERT: Yes, absolutely.
`JUDGE WIEKER: Okay.
`MR. STEINERT: As I was saying, we could have filed a
`petition based on Layman alone, but given the Board's limited
`resources, given the page limits of an IPR petition, we felt that it was in
`everyone's best interest for us to present our best case.
`JUDGE WIEKER: Right.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 9
`
`
`
`Case IPR2016-01460 (Patent 5,764,034)
`Case IPR2016-01463 (Patent 6,231,560 B1)
`
`
`MR. STEINERT: And our best case relies on Layman with
`the express disclosure in Gargano to have alerts and alarms issued based
`on a number of minutes remaining in the battery.
`Now, the reason those tick marks are important and the
`calculation leading to those tick marks are important is in its opposition,
`Baxter argued that a person of ordinary skill in the art, reading Gargano,
`wouldn't know how Gargano calculated the remaining time of charge.
`They wouldn't know exactly how Gargano said there are five minutes
`remaining, issue the five-minute warning, or -- sorry, there are 30
`minutes remaining, issue the 30-minute warning; there are 15 minutes
`remaining, issue the 15-minute warning; and there are five minutes
`remaining, issue the five-minute alarm. "Warning" and "alarm" are how
`Gargano talks about them as opposed to "alert" and "alarm."
`Our point in the reply is that doesn't matter. It doesn't matter
`whether or not, from Gargano, you can figure out how Gargano was
`calculating the time of the charge remaining, how Gargano was saying,
`okay, I have 30 minutes remaining warning time, because that's
`disclosed in Layman, and Layman is using it to move those tick marks,
`to have the empty battery icon and the full battery icon illuminated.
`A person of ordinary skill in the art would have looked at
`those and said there's no difference in terms of what's going on here,
`whether I am turning on a tick mark or whether I am making the pump
`beep or a warning light flashes. It doesn't matter. A person of ordinary
`skill in the art would immediately understand how you put those pieces
`together. This is -- I mean, we're not at the level of Legos, Your Honor.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 10
`
`
`
`Case IPR2016-01460 (Patent 5,764,034)
`Case IPR2016-01463 (Patent 6,231,560 B1)
`
`This is -- you don't have to put much creativity into matching up those
`disclosures, and that was our point in the reply and our point in the
`petition. I know that Baxter wishes we hadn't said that in the petition,
`but we did.
`JUDGE GOODSON: So do I understand your point to be that
`you're not relying on Gargano for the calculation of these various
`parameters? You're just relying on it -- on that Gargano reference to
`show an alternative way of displaying the information?
`MR. STEINERT: It's not that Gargano is necessarily an
`alternative -- actually, Your Honor, I think -- I think that is fair to say,
`that Gargano does present an alternative way of displaying the
`information. It's a -- it's a choice. It's a choice of what you do to tell the
`user there are five minutes remaining, there are 15 minutes remaining,
`there are 30 minutes remaining. It could be a tick mark. It could be a
`beep. It could be a flashing light. But these are all well known ways to
`communicate the same information to the user.
`That's what the user is -- cares about. The user wants to know,
`I might only have 30 minutes before I need to plug this pump in; I might
`only have 15 minutes; I might only have five minutes. That's the point.
`And this is not unique to infusion pumps. We all know how battery
`gauges work. We all know how low battery warnings work.
`This was an issue for camcorders in the prior art time period.
`This was an issue for laptop computers in the prior art time period. As
`the file history acknowledged, this was an issue for electrically powered
`vehicles in the prior art time period. It's a battery gauge. It's a
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 11
`
`
`
`Case IPR2016-01460 (Patent 5,764,034)
`Case IPR2016-01463 (Patent 6,231,560 B1)
`
`low-battery warning. It is not something that is unique to infusion
`pumps, but here we have it in the infusion pump prior art.
`If you move on to our Demonstrative Slide 9, we have further
`illustrations of the disclosure in Layman about how the remaining time
`of charge is calculated. As the cited passages show, the processor
`calculates the runtime of the battery and displays the runtime. It does
`that by closely monitoring the voltage, the current, and the temperature,
`using well known circuits to those skilled in the art, and it does it by
`monitoring the analog signals coming out of those circuits. Slide 9 cites
`Exhibit 1004, which is the Layman patent, at column 2, lines 58 through
`65; column 3, lines 25 through 30; column 4, lines 53 through 59; and
`column 11, lines 3 through 5.
`If you look at Figure 2 of the Layman patent, which is
`reproduced in Slide 10, you can see at a very high level how this would
`work. You have a voltage sensor. You have a current sensor. They are
`fed into a processor. A person of ordinary skill in the art would have
`understood that voltage signals, if not inherently, in the vast majority of
`times would have been analog, as would current signals, and that the
`way you get an analog signal into a digital processor is through
`sampling and an analog-to-digital converter.
`That is expressly discussed, with regard to the voltage sensor,
`as shown on Slide 11, which reproduces Columns -- Column 7 from
`lines 6 through 27. The voltage sensor was sampled at a rate of five
`seconds. Layman doesn't say how often the current sensor was
`sampled, but if it's not inherent that the current sensor was being
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 12
`
`
`
`Case IPR2016-01460 (Patent 5,764,034)
`Case IPR2016-01463 (Patent 6,231,560 B1)
`
`sampled, it is certainly obvious that the current signal was being fed into
`the processor in the same manner as the voltage signal, sampling
`through an analog-to-digital converter.
`Layman goes on in Column 7 to explain that the actual current
`leaving the battery can be directly measured by an electrical circuit well
`known to those skilled in the art. The battery current, sensor 50, is such
`a circuit and provides a signal to the processor representative of the
`current drawn from battery 26. This level of current draw may then be
`used to determine runtime.
`Layman didn't even think that that was particularly novel.
`These are circuits well known to those skilled in the art by Layman's
`disclosure in the prior art. These are common voltage and current
`monitoring circuits. Converting current into runtime through cooling
`counting, this is known mathematical principles. This is not new stuff
`when this patent was filed.
`Moving on to Slide 12, we have reproduced that bar graph
`from Layman that we have already talked about a little. Figure 3 shows
`the battery display from Layman with the time of charge remaining
`displayed in 15-minute increments, up to a total possible of four hours,
`and then an empty and a full icon. And as we discussed in the petition,
`those could be considered alerts and alarms individually. We're not
`relying on that. That is not -- we didn't ask to institute on that alone
`because, as we've discussed, Gargano also teaches presenting alerts and
`alarms based on the remaining time of charge, but it is in Layman in and
`of itself.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 13
`
`
`
`Case IPR2016-01460 (Patent 5,764,034)
`Case IPR2016-01463 (Patent 6,231,560 B1)
`
`
`JUDGE WEINSCHENK: So if Layman already includes
`something that could be considered an alarm or an alert, why would we
`be motivated -- why would one of skill in the art be motivated to
`incorporate an alarm or alert from Gargano if there's one already in
`Layman?
`MR. STEINERT: It's a different way of presenting the
`information. It's a different way of issuing the alarm or alert. The --
`one -- we anticipated when we were looking at this that someone
`might -- first of all, someone might say, well, we disagree with your
`definition of "alert" and "alarm." We don't think the tick marks are an
`alert and alarm. Well, whether you agree with that or not, the warnings
`and alarms in Gargano are unquestionably alerts and alarms. He says
`"warning" instead of "alert," but that's just a word choice.
`Regardless, why would someone add more indications to the
`user? It's just a question of urgency. If you thought that a user might
`not be paying sufficient attention to the battery gauge, you might -- you
`could enhance that warning by making it beep, by making it flash.
`These are all minor, minor additions to the battery monitoring of the
`pump. The hard part, to the extent there is a hard part, is monitoring the
`voltage and calculating the time of charge. Layman does that. Then it's
`just a question of how you convey that information to the user.
`Did that answer your question, Your Honor?
`JUDGE WEINSCHENK: Yeah. The reason you just gave
`me, this idea of, you know, maybe the alert or the alarm of Gargano has
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`
`
` 14
`
`
`
`Case IPR2016-01460 (Patent 5,764,034)
`Case IPR2016-01463 (Patent 6,231,560 B1)
`
`a more -- conveys a more urgent alert than Layman, is that somewhere
`in your petition or is that something that is in your papers somewhere?
`MR. STEINERT: What we had said was any of the alerts and
`alarms, as presented in either Gargano or Layman, could be based on
`either voltage or the calculated time of charge remaining. That was the
`way we conveyed that, because the point is these are all
`interchangeable.
`JUDGE WIEKER: One follow-up question on that.
`MR. STEINERT: Sure.
`JUDGE WIEKER: Where is that supported? I understand the
`petition cites to the declaration of Dr. Xu, but that cited portion doesn't
`appear to give much underlying basis for that opinion. On -- on what
`basis are you stating that it would have been obvious to -- to modify the
`alarms or alerts to be based on either time or charge?
`MR. STEINERT: At some point, Your Honors, we hit the
`level of it is so simple that it's hard to find someone who has said it in
`writing. I think that that understanding comes not only from his lengthy
`experience with infusion pumps and with electromechanical circuits but
`from the totality of the disclosures of Layman and Gargano.
`What comes out of these references, when you read them as a
`whole, is we want to tell the user there's a low battery. Here's what's
`left in the battery. Here are the different ways we can tell the user. And
`it's -- you can mix and match them. There is nothing magical about
`which of the ways to present the information that the user chooses. The
`point is these are a handful of nonsurprising, predictable ways to
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 15
`
`
`
`Case IPR2016-01460 (Patent 5,764,034)
`Case IPR2016-01463 (Patent 6,231,560 B1)
`
`combine the various display elements, the various sound elements from
`known infusion pumps.
`Moving on to -- further down on Column 7 of Layman,
`Layman expressly teaches presenting different warnings and alarms at
`different voltage levels. Layman provides three examples, a 12.1 volt,
`an 11.45 volt, and a 12.25 volt. Those values could be any values. And
`while those particular alerts and alarms are based on voltage, as
`discussed, the display of remaining time of charge is based on the
`calculation from current. It could have been done either way.
`The point is to convey to the user information about how
`much time of charge is remaining, and the reason -- and I think this is,
`again, clear from the totality of Layman -- to provide both a voltage and
`a current calculation is bootstrapping. You want to make sure that the
`pump doesn't run out, that the user isn't surprised that the pump battery
`is depleted, and that's what this does, and that's what Gargano does.
`We've talked a little bit about the disclosure of Gargano, but
`that's reproduced more starting on Slide 13. Like Layman, Gargano has
`a processor-driven syringe pump with a central display and software
`that provides warnings and alarms, including battery status. Gargano
`also provides a continuous indication of the remaining battery life on
`the display; again, the exact kind of solution that Layman was trying to
`present in a different way.
`For example, instead of the tick marks from Layman, Gargano
`has a battery icon displaying the remaining life in hours and minutes, a
`different way to convey the same information to the user. And those
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 16
`
`
`
`Case IPR2016-01460 (Patent 5,764,034)
`Case IPR2016-01463 (Patent 6,231,560 B1)
`
`quoted passages are the abstract, Columns 2 -- Column 2, lines 17
`through 23, and Column 7, lines 32 through 37, from Gargano.
`The figures of Gargano illustrate some of those alerts and
`alarms. For example, as shown on Slide 14, Figure 62 of Gargano
`shows a five-minute alarm, which Gargano describes as a recoverable
`alarm, and a battery-depleted alarm, which Gargano describes as a
`nonrecoverable alarm. That figure is also described in the text of
`Gargano at Column 20, lines 9 through 15. Those are some alarms from
`Gargano. Gargano also has what he calls "warnings," what the '034
`patent calls "alerts."
`For example, in Figure 60 of Gargano, what Gargano
`describes as first-degree warnings, there is a 30-minute warning for
`remaining battery, and that's reproduced on Slide 15. It's Gargano
`Figure 60. Gargano has more warnings. Gargano has what it calls
`second-degree warnings, which appear in Figure 61, and that includes a
`15-minute warning, which is reproduced on our Slide Number 16.
`Again, we have multiple levels of low-battery warning. They are based
`on the time of charge remaining. Then we get -- once we have gone
`through the warnings, we get down to that last more urgent notification,
`and Gargano calls that an alarm, just like the '034 patent.
`Now, as we've already discussed, Dr. Xu testified, as
`reproduced on slide 17, that a person of ordinary skill in the art would
`have looked to -- designing battery circuits for an infusion pump would
`have looked to other products using similar battery technologies to
`figure out different ways to do things. That's what engineers do. They
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 17
`
`
`
`Case IPR2016-01460 (Patent 5,764,034)
`Case IPR2016-01463 (Patent 6,231,560 B1)
`
`certainly would have looked to other infusion pump products, and
`people don't design infusion pumps in a vacuum. But here, you don't
`have to go very far from the well to look at two battery systems for
`infusion pumps. How do they monitor for the low battery? How do we
`deliver the best low-battery warning? Well, we take what works from
`both of them. That is borne out by the actual experience in the infusion
`pump industry.
`Now, I know that Baxter says that it doesn't matter, that the
`actual history of the infusion pump history is to consolidate companies,
`but it does. The reason that one infusion pump company buys another is
`because they want that technology. The reason you consolidate is
`because you have one team of engineers who's really good at
`something, and you have another team of engineers who's really good at
`something else, and you can bring them together, and you can make a
`better product. That is exactly what's going on at the relevant time.
`At the exact time that the '034 patent application was being
`filed, two of CareFusion's predecessors were in the process of merging.
`That's a prime example of the kind of cross-pollination between
`infusion pump technologies that was actually happening in the industry.
`JUDGE WEINSCHENK: Why is this relevant to our
`consideration? If this merger happened after the filing date of the '034
`patent, then why should we look at this kind of evidence and determine
`a rationale to combine references that existed before the priority date of
`the '034 patent?
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`
`
` 18
`
`
`
`Case IPR2016-01460 (Patent 5,764,034)
`Case IPR2016-01463 (Patent 6,231,560 B1)
`
`
`MR. STEINERT: Certainly, Your Honor, a couple answers
`there. Number one, although the merger may have been finalized after
`the filing date, mergers don't happen overnight. This is a -- this was
`something that was in process at the same time, and more importantly --
`JUDGE WEINSCHENK: Is there evidence of that in the
`
`record?
`
`MR. STEINERT: I believe so. I believe that the cited -- that
`the cited SEC exhibits bear that out, but the point, Your Honor, is that
`whether two companies merged a year before the filing date or a year
`after the filing date, it's evidence of the overall culture of a person of
`ordinary skill in the art at the time of the invention. It is
`contemporaneous. It is evidence of the mind-set of the people who
`were working in this field at that time.
`JUDGE WIEKER: But isn't that evidence just at a much
`higher level than is relevant to the question before us now? What you
`seem to be talking about is, you know, engineers or companies at this
`time would have looked to combine broad features of infusion pumps,
`and that may be true, but how does that bear on the specific question of
`whether it would have been obvious to combine these specific
`time-based alarms and alerts from Gargano into Layman's system?
`MR. STEINERT: What it bears on is the fact that people of
`ordinary skill in the art were looking at what else was out there.
`JUDGE WIEKER: Right.
`MR. STEINERT: And they were looking at the available
`prior art, that they were looking for things that would be useful to
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 19
`
`
`
`Case IPR2016-01460 (Patent 5,764,034)
`Case IPR2016-01463 (Patent 6,231,560 B1)
`
`combine into and improve their own technologies with. That's where
`this merger is relevant.
`JUDGE WEINSCHENK: I'm having a little bit of a difficult
`time because, I mean, lots of industries have companies that merge and
`merge products all the time. If we were to look at a rationale to
`combine that broadly, we could extend this to every patent; say, well,
`every industry has companies that merge, and, therefore, we could
`combine patents with all different kinds of products. I mean, I feel like
`this is quite broad, what you're trying to argue here.
`MR. STEINERT: And here I'm not trying to argue that this
`was a motivation to combine an infusion pump with even a different
`kind of medical device. We're looking at two infusion pumps.
`JUDGE WIEKER: Right. I mean, I think the -- you know,
`there's sufficient basis in the record to determine that these two
`references are analogous, but the question I think that we're struggling
`with is where is the rationale to combine these specific features, not just
`broad functionality of infusion pumps, but the specific features at issue
`here, where is the evidence to combine that?
`MR. STEINERT: Well, and I do think that this merger bears
`on that because some of the technology that was combined as a result of
`this merger is the battery monitoring technology, and that's discussed in
`Paragraph 6 of Dr. Xu's declaration.
`Moving on to Slide 19, one of the issues Baxter has raised is
`the idea that it would not have been obvious to transition between
`paying attention to the charge remaining on a battery and the time of
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 20
`
`
`
`Case IPR2016-01460 (Patent 5,764,034)
`Case IPR2016-01463 (Patent 6,231,560 B1)
`
`charge remaining in the battery, but that position is contradicted by both
`the declaration and the deposition testimony of Baxter's own expert.
`In his declaration, Mr. Heim a
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
