Takeaway: For secondary considerations to be persuasive, Patent Owner must show a nexus between the secondary consideration and the challenged claims and explain in detail why it was the unique characteristics of the claimed invention that resulted in the secondary consideration.
In its Final Written Decision, the Board held that Petitioner had demonstrated by a preponderance of the evidence that all of the challenged claims 1-37 of the ’192 patent are unpatentable as obvious over Wright Jr. alone or in combination with Goodman. The ’192 patent relates to a networked system for remotely monitoring individuals and for communicating information to the individuals through the use of script programs.
The instituted grounds for this proceeding were: (1) obviousness of claims 1-3, 6, 7, 11, 12, 17-19, 20-23, 29, 30, 35, and 36 under 35 U.S.C. § 103(a) over Wright Jr.; (2) obviousness of claims 1-37 under 35 U.S.C. § 103(a) over Wright Jr. in view of Goodman; and (3) obviousness of claims 20-37 under 35 U.S.C. § 103(a) in view of Goodman and Wahlquist.
In its claim construction, the Board adopted the same interpretations it provided in its Decision on Institution. The Board then turned to the obviousness rejections. With regard to the first ground, the Board was persuaded that Petitioner had shown by a preponderance of the evidence that claims 1, 6, 7, 17, 18, 20-22, and 36 would have been obvious based on Wright Jr., but was not persuaded with regard to claims 2, 3, 11, 12, 19, 23, 29, 30, and 35. Patent Owner argued that Petitioner’s expert had used the claims as a template to try and fit combinations of references into the claims, and thus was based on improper hindsight reasoning. However, the Board determined that Patent Owner had failed to demonstrate that a person of ordinary skill in the art would not have had reason to modify the teachings of Wright Jr. With regard to claims 2 and 23, the Board agreed with Patent Owner that Wright Jr. is not directed to a system that assigns different script programs to different individuals, and thus there is no suggestion in Wright Jr. that the form itself is associated with a particular individual such that a pointer to the first individual’s specific script program is unnecessary. Similarly, the Board determined that Petitioner had failed to explain sufficiently how one of ordinary skill in the art would have been motivated to use the results of filling out the form to create another form as in claims 8 and 26.
The Board then turned to the second ground and analyzed the claims that had not been found obvious over Wright Jr. alone. Patent Owner argued that it would not have been obvious to combine Wright Jr. and Goodman, because the “actual teachings of [Wright Jr.] offer no significant advantages to the system of Goodman and because Dr. Stone testified there is nothing in [Wright Jr.] that would specifically teach or instruct a person of ordinary skill in the art to combine [Wright Jr.] with the Goodman patent, nor vice versa.” However, the Board was not persuaded, because the combination of the known system of Wright Jr. and the known system of Goodman would have entailed no more than a combination of known systems to perform their known functions to achieve a predictable result, and Patent Owner failed to demonstrate that the combination would have entailed any more than combining familiar elements to achieve a predictable result.
The Board then turned to the third ground. The Board agreed with Patent Owner that Goodman fails to teach creating an algorithm based on an established existing “generic” algorithm and that Petitioner failed to demonstrate sufficiently that Wahlquist also discloses a generic script that is customized.
The Board further considered secondary considerations submitted by Patent Owner, including alleged commercial success, long-felt need, industry praise, teaching away by others, and copying. With regard to commercial success and industry praise, Patent Owner argued the success of its “Health Buddy” remote health monitoring system, but did not establish a sufficient nexus between the “Health Buddy” system and the claimed monitoring system, method, or apparatus. Specifically, Patent Owner and its expert did not provide any analysis of how the Health Buddy allegedly embodied the challenged claims, or explain in any detail why it was the unique characteristics of the claimed monitoring system, method, or apparatus that drove sales. Patent Owner also failed to explain sufficiently why there was a long-felt need to solve a particular problem that others recognized but were unable to meet. Thus, the Board was not persuaded that any of the alleged secondary considerations overcame the obviousness grounds.
Cardiocom, LLC v. Robert Bosch Healthcare Systems, Inc., IPR2013-00468
Paper 72: Final Written Decision
Dated: January 27, 2015
Patent: 7,516,192 B2
Before: Justin T. Arbes, Bryan F. Moore, and Trenton A. Ward
Written by: Moore