Takeaway: The Board may deny institution of inter partes review when other ongoing proceedings raise substantially similar arguments with respect to the same prior art as those supporting the petition under consideration.
In its Decision, the Board denied institution of inter partes review on any of the challenged claims (1-22) of the ’469 Patent. The Board then denied as moot Petitioner’s motion to join its challenge with a related ongoing inter partes review of the ’469 Patent, IPR2013-00451 (’451 proceeding). The ’469 Patent relates to a networked system for remotely monitoring and communicating with other individuals, including outpatients of medical facilities, through the use of script programs.
The Board first addressed Petitioner’s argument that claims 1, 2, and 5-10 were obvious over Cohen (U.S. Patent 6,014,626) and Wahlquist (U.S. Patent 5,367,667). Specifically, Petitioner had argued that Cohen disclosed a communications system that, coupled with another patent demonstrating the use of computer programs to diagnose the performance of a remote device, rendered claims 1, 2, and 5-10 obvious. The petition in the ’451 proceeding made the same allegations regarding the prior art. Likewise, both petitions had argued that Wahlquist disclosed the requisite diagnostic computer program. Moreover, the Board observed that Petitioner is a real-party-in-interest to the petitioner in the ’451 proceeding because Petitioner had acquired the party behind the ’451 petition. Because the Board concluded that there was substantial overlap between the petition in the ’451 proceeding and the challenge to claims 1, 2, and 5-10 here, it rejected the Petition as to those claims.
Next, the Board turned to Petitioner’s obviousness challenge to claims 3, 4, and 11-22. Petitioner had alleged that Kaufman (European Patent EP0342859A2) disclosed the ability to modify the remote device housing in the Cohen system to accommodate Kaufman’s diagnostic computer, thereby enabling remote monitoring of the device’s performance. Patent Owner contended that Petitioner had not presented sufficient evidence of a reasonable rationale for the combination of Cohen and Kaufman in that manner. In response, Petitioner asserted that its expert declaration contained evidence of a reasonable rationale for the combination. The expert’s declaration, however, merely alluded to the allegation that the combination would ensure “proper functioning” of the equipment. The Board reasoned that the motivation to ensure that the device functioned properly did not constitute a reasonable rationale for that particular combination of prior art elements. The Board explained that an obviousness challenge must demonstrate that a person of ordinary skill at the time of the invention would have selected and combined the particular prior art elements at issue in the normal course of research and development. Concluding that there was no reasonable likelihood that Petitioner’s expert declaration would meet that standard, the Board rejected the Petition as to the remaining claims, and denied Petitioner’s Motion for Joinder as moot.
Medtronic, Inc. v. Robert Bosch Healthcare Systems, Inc., IPR2014-00436
Paper 17: Decision Denying Institution of Inter Partes Review
Dated: June 19, 2014
Patent 7,587,469 B2
Before: Stephen C. Siu, Justin T. Arbes, and Miriam L. Quinn
Written by: Quinn
Related proceedings: Cardiocom LLC v. Robert Bosch Healthcare Systems, Inc., IPR2013-00451; Robert Bosch Healthcare Systems v. Cardiocom, LLC and Abbott Diabetes Care, Case No. 2:13-cv-349 (E.D. Tex.); Ex parte Reexamination Control No. 90/013,175