Cardiocom LLCv.Robert Bosch Healthcare Systems, Inc.

Patent Trial and Appeal Board

Jan 15, 2015

12767093 (P.T.A.B. Jan. 15, 2015)

Trials@uspto.gov Paper 68
571-272-7822 Entered: January 15, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

CARDIOCOM, LLC,
Petitioner,

v.

ROBERT BOSCH HEALTHCARE SYSTEMS, INC.,
Patent Owner.
____________

Case IPR2013-00449
Patent 7,840,420 B2

Before MIRIAM L. QUINN, STEPHEN C. SIU, and JUSTIN T. ARBES,
Administrative Patent Judges.

ARBES, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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I. BACKGROUND
Petitioner Cardiocom, LLC filed a Petition (Paper 1, “Pet.”) seeking
inter partes review of claims 1–5 of U.S. Patent No. 7,840,420 B2
(Ex. 1001, “the ’420 patent”) pursuant to 35 U.S.C. §§ 311–19. On January
16, 2014, we instituted an inter partes review of claims 1–5 on two grounds
of unpatentability (Paper 21, “Dec. on Inst.”). Patent Owner Robert Bosch
Healthcare Systems, Inc. filed a Corrected Patent Owner Response (Paper
36, “PO Resp.”), and Petitioner filed a Reply (Paper 43, “Reply”).
Petitioner filed a Motion to Exclude (Paper 53, “Pet. Mot. to
Exclude”) certain evidence submitted by Patent Owner. Patent Owner filed
an Opposition (Paper 57) and Petitioner filed a Reply (Paper 61). Patent
Owner filed a Motion to Exclude (Paper 55, “PO Mot. to Exclude”) certain
evidence submitted by Petitioner. Petitioner filed an Opposition (Paper 58)
and Patent Owner filed a Reply (Paper 60). Patent Owner also filed a
Motion for Observation (Paper 54, “Obs.”) on certain cross-examination
testimony of Petitioner’s declarant, and Petitioner filed a Response (Paper
59, “Obs. Resp.”).
An oral hearing was held on September 9, 2014, and a transcript of
the hearing is included in the record (Paper 67, “Tr.”).
We have jurisdiction under 35 U.S.C. § 6(c). This final written
decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
For the reasons that follow, we determine that Petitioner has shown by
a preponderance of the evidence that claims 1–5 are unpatentable.

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A. The ’420 Patent
The ’420 patent
1
describes a system for “monitoring a group of
patients having a chronic disease or ongoing health condition” by
monitoring certain parameters of the condition, such as blood glucose level
for diabetes and blood pressure for hypertension. Ex. 1001, Abstract; col. 1,
ll. 30–37. According to the ’420 patent, in prior art outpatient treatment
programs, a clinician often learned about a patient’s status through “patient
initiated events,” such as a visit to the emergency room. Id. at col. 1,
ll. 48–67. As a result, medical needs of unmotivated patients could be
overlooked. Id. In addition, prior art computer systems displayed medical
data only on an “individual patient basis,” making it difficult to determine
“which patients are having the greatest difficulty in controlling their health
condition so that the clinician may focus attention on these patients.” Id. at
col. 2, ll. 1–8. Consequently, according to the ’420 patent, a need existed in
the art to “view medical data for an entire group of patients simultaneously.”
Id. at col. 2, ll. 6–8.

1
The ’420 patent issued based on U.S. Patent Application No. 12/767,093,
filed on April 26, 2010, which is a continuation or continuation-in-part of a
series of applications descending from U.S. Patent Application No.
08/732,158, filed on October 16, 1996.
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Figure 1 of the ’420 patent is reproduced below.

Figure 1 above depicts healthcare clinic 10 in communication with patient
sites 36 and 46 via communication network 34. Id. at col. 4, ll. 34–60.
Patient site 36 includes monitoring device 42 for measuring periodically a
particular health parameter of the patient, such as the patient’s blood glucose
level, and transmitting the measurements to healthcare clinic 10. Id. at col.
5, ll. 6–18. Patient site 36 also includes patient unit 38 (e.g., a personal
computer) with message display 40 for displaying messages received from
the clinic (e.g., emails). Id. at col. 4, l. 61–col. 5, l. 5.
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Healthcare clinic 10 comprises clinic server 12 and clinician
workstation 22. Id. at col. 4, ll. 34–60. Clinic server 12 includes master
patient database 18 for storing patient data and overview application 20 for
“performing various calculations using the patient data” and “generating a
group overview chart with the patient data.” Id. at col. 4, ll. 44–49.
Overview application 20 calculates a “control value” for a patient indicating
the patient’s “control over the health condition” (e.g., the mean value of a
parameter over a given period of time). Id. at col. 6, ll. 10–22. The control
values for a group of patients then are displayed in group overview chart 26
on clinician workstation 22. Id. at col. 4, ll. 53–56.
Figure 3 of the ’420 patent depicts an exemplary group overview chart
for a group of ten diabetic patients, and is reproduced below.

As shown in Figure 3 above, group overview chart 26 has “ten data points,
each data point representing one corresponding patient and indicating the
control value calculated for the patient and the time period elapsed since the
patient’s most recent collection date,” with each data point “represented on
chart 26 by a corresponding icon 66.” Id. at col. 7, ll. 14–19; col. 8,
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ll. 24–27. According to the ’420 patent, viewing such a chart allows a
clinician to determine which patients are having difficulty with their
condition and require greater attention. Id. at col. 8, ll. 28–37.

B. Illustrative Claim
Claim 1 of the ’420 patent recites:
1. A method for monitoring a group of patients having a
health condition via a computer system, said method
comprising:
generating and displaying a chart via a display, said chart
having a plurality of data points, wherein each of said data
points represents one corresponding patient and indicates at
least one value for the one corresponding patient, each data
point including an icon, the at least one value being based upon
a corresponding set of measurements related to a health
condition;
receiving a user input, the user input selecting a data
point from the plurality of data points, the data point being
associated with a selected patient;
correlating the user-selected data point with patient data
for the selected patient associated with the user-selected data
point, the patient data including one of: an electronic mail
address associated with the selected patient and a telephone
number associated with the selected patient; and
transmitting a communication to the selected patient,
wherein said communication is transmitted to the selected
patient via one of: an electronic mail message and a telephone
message,
wherein the system allows the user to monitor the health
condition of the plurality of patients via said chart displayed by
said system and to proactively iniate said communication with
the selected patient via the system by providing said user input
to the system.

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C. Prior Art
The pending grounds of unpatentability in the instant inter partes
review are based on the following prior art:
1. U.S. Patent No. 5,331,549, issued July 19, 1994
(Ex. 1002, “Crawford”);
2. U.S. Patent No. 5,471,382, issued November 28, 1995
(Ex. 1003, “Tallman”); and
3. U.S. Patent No. 5,827,180, issued October 27, 1998,
continuation of an application filed August 24, 1995 (Ex. 1006,
“Goodman”).

D. Pending Grounds of Unpatentability
The instant inter partes review involves the following grounds of
unpatentability:
References Basis Claim(s)
Crawford and Tallman 35 U.S.C. § 103(a) 1
Crawford, Tallman, and
Goodman
35 U.S.C. § 103(a) 2–5
Dec. on Inst. 24.

II. ANALYSIS
A. Claim Interpretation
The Board interprets claims of unexpired patents using the “broadest
reasonable construction in light of the specification of the patent in which
[they] appear[].” 37 C.F.R. § 42.100(b); see Office Patent Trial Practice
Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). There is a “heavy
presumption” that a claim term carries its ordinary and customary meaning.
CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002).
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However, a “claim term will not receive its ordinary meaning if the patentee
acted as his own lexicographer and clearly set forth a definition of the
disputed claim term in either the specification or prosecution history.” Id.
“Although an inventor is indeed free to define the specific terms used to
describe his or her invention, this must be done with reasonable clarity,
deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
1994). Also, we must be careful not to read a particular embodiment
appearing in the written description into the claim if the claim language is
broader than the embodiment. See In re Van Geuns, 988 F.2d 1181, 1184
(Fed. Cir. 1993) (“[L]imitations are not to be read into the claims from the
specification.”).

1. Previously Interpreted Terms
In the Decision on Institution, we interpreted various claim terms of
the ’420 patent as follows:
Term Interpretation
“chart” information arranged in the form of
one or more tables, graphs, or
diagrams
“icon” a graphical representation of an
underlying function or data
“a group of patients
having a health
condition”
(preamble term not limiting)
See Dec. on Inst. 8–13. The parties do not dispute these interpretations in
their Patent Owner Response and Reply. We do not perceive any reason or
evidence that now compels any deviation from these interpretations.
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Accordingly, we adopt our previous analysis for purposes of this decision.
We also interpret two other terms in claim 1.

2. “Data Point”
The parties do not propose any specific interpretations for the term
“data point” in claim 1. In attempting to distinguish one of the prior art
references at issue (Crawford), however, Patent Owner argues that each
“data point” in claim 1 must be “separate” from its corresponding “icon,”
and that the “data point distribution” in the recited chart must be “dynamic”
(i.e., data points change location over time). PO Resp. 36–38. Petitioner
disagrees with both assertions. Reply 9–11. We conclude that interpretation
of “data point” is necessary to resolve the dispute.
Claim 1 recites “generating and displaying a chart via a display, said
chart having a plurality of data points, wherein each of said data points
represents one corresponding patient and indicates at least one value for the
one corresponding patient, each data point including an icon,” and
“receiving a user input, the user input selecting a data point from the
plurality of data points, the data point being associated with a selected
patient.” Thus, from the claim itself, we know that (1) the chart has a
plurality of data points; (2) each of the data points represents a
corresponding patient and indicates a value for the corresponding patient;
(3) each of the data points includes an icon; and (4) at least one of the data
points is capable of being selected via user input.
Figure 3 of the ’420 patent, shown above, depicts group overview
chart 26. The Specification describes group overview chart 26 as having
“ten data points,” where each data point “represent[s] one corresponding
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patient and indicat[es] the control value calculated for the patient and the
time period elapsed since the patient’s most recent collection date.”
Ex. 1001, col. 7, ll. 12–17; col. 8, ll. 25–27. Each data point is “represented
on chart 26 by a corresponding icon 66,” shown as a diamond shape, and
icon 66 may change appearance depending on the patient’s data (e.g.,
non-compliant patients shown as “flashing icons” and compliant patients
shown as “non-flashing icons”). Id. at col. 7, ll. 17–39; col. 8, ll. 24–25
(“Each data point on chart 26 is displayed as a corresponding icon 66.”).
A clinician uses a mouse or other pointing device to “select[] patients from
chart 26 by clicking the icon corresponding to the patient.” Id. at col. 8,
ll. 38–42.
Based on how the term “data point” is used in the claims, and the
description in the Specification, we conclude that each data point is not
simply a location in x-y space on the chart. Some type of additional display
characteristic for the data point is required. Otherwise, if the data point was
just an intangible location and did not display anything to the user, it would
not be possible for the data point to “indicat[e]” a value for the patient, and it
would not be possible for the user to “select[]” the data point because the
user would not see anything at the location to select.
Further, the display for the data point may be the icon itself. This is
consistent with claim 1’s recitation that the data point “includ[e]” an icon.
We agree with Petitioner that “including” in claim 1 means the same thing as
“comprising” and does not require that the data point be completely separate
from the icon. Reply 10; see Amgen Inc. v. Hoechst Marion Roussel, Inc.,
314 F.3d 1313, 1344–45 (Fed. Cir. 2003) (“comprising” and “including”
mean that “the named elements are essential, but other elements may be
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added and still form a construct within the scope of the claim”) (citation and
internal quotation marks omitted). For example, a claim may recite a piece
of furniture, wherein the piece of furniture “comprises” a chair. The piece of
furniture may be the chair itself, or it may be the chair and something else,
but it does not need to be separate and distinct from the chair. Likewise, the
data point may be the icon, or it may be the icon and something else, but it
does not need to be separate and distinct from the icon.
Notably, although Patent Owner argues that the “data point” and
“icon” in claim 1 must be “separate,” it does not explain how the features are
“separate” in the chart shown in Figure 3 of the ’420 patent, or how the
Specification otherwise supports such a reading of claim 1. PO Resp.
36–37. Indeed, Patent Owner’s declarant, Yadin David, Ed.D.,
acknowledged that the diamond shapes shown in Figure 3 of the ’420 patent
are both data points and icons. See Ex. 1041 at 342:20–343:6. Also,
although the data points in the exemplary embodiment shown in Figure 3 of
the ’420 patent change location over time as the patients’ data changes, we
do not see any requirement in claim 1 or the Specification that data points
must change location over time, as Patent Owner suggests. See PO Resp.
37–38. Therefore, we do not interpret claim 1 to have either requirement
proposed by Patent Owner.
2

2
At the hearing, Patent Owner cited Becton, Dickinson & Co. v. Tyco
Healthcare Group, LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010), where the
Federal Circuit held that “[w]here a claim lists elements separately, ‘the
clear implication of the claim language’ is that those elements are ‘distinct
component[s]’ of the patented invention” (citations omitted). See Ex. 2080
at 63; Tr. 56:10–57:2. Becton is inapposite, however, because in that case,
the claim at issue recited separately a hinged arm and spring means
“connected to” the hinged arm. Becton, 616 F.3d at 1254. The claim did not
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Applying the broadest reasonable interpretation of the claims in light
of the Specification, we interpret “data point” to mean a display of data at a
location on the chart.

3. “The System Allows the User . . . to Proactively Ini[ti]ate
3
Said
Communication With the Selected Patient Via the System by Providing Said
User Input to the System”
Patent Owner argues that claim 1 should be interpreted to require that
the communication be “initiated before the patient develops an urgent
medical need.” PO Resp. 41 (emphasis omitted). In support of its proposed
interpretation, Patent Owner cites three dictionary definitions of the term
“proactive,” portions of the Specification of the ’420 patent, and testimony
from the parties’ declarants. Id. Petitioner disagrees with Patent Owner’s
proposed interpretation. Reply 12.
We are not persuaded that the “proactively ini[ti]ate” language in
claim 1 requires the communication to be initiated before the patient
develops an urgent medical need. The claim itself does not recite anything
about an urgent medical need or include any language indicating that
initiation of the communication should be defined in terms of an urgent
medical need. Further, at least one of the dictionary definitions submitted by
Patent Owner is broader than the interpretation it seeks, and defines
“proactive” as “creating or controlling a situation by taking the initiative or
anticipating events; ready to take initiative, tending to make things happen.”

recite one structure “comprising” or “including” the other, as is the case here
with “data point” and “icon.”

3
We agree with Patent Owner that “iniate” in claim 1 is misspelled, and that
the term should be “initiate.” See PO Resp. 40 n.1.
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Ex. 2013 (emphasis added). Patent Owner’s proposed interpretation reflects
the latter meaning of anticipation of a specific event—development of an
urgent medical need—but not the former meaning of creating or controlling
a situation by taking the initiative. The ordinary and customary meaning of
“proactive,” therefore, is broader than what Patent Owner proposes. Finally,
the Specification of the ’420 patent does not define “proactively ini[ti]ate” or
demonstrate a disavowal of the full scope of the term “proactive.” Rather,
the only portion of the Specification disclosing proactive communication
before a patient develops an urgent medical need describes such
communication as an “advantage of the multiple patient monitoring system
of the preferred embodiment.” See Ex. 1001, col. 8, ll. 59–65.
Applying the broadest reasonable interpretation of the claims in light
of the Specification, we interpret “the system allows the user . . . to
proactively ini[ti]ate said communication with the selected patient via the
system by providing said user input to the system” to mean that the system
allows the user to control the initiation of the communication to the selected
patient by providing the user input on his or her own initiative or in
anticipation of an event.

B. Level of Ordinary Skill in the Art
The parties’ declarants apply similar definitions for the level of
ordinary skill in the art at the time of the ’420 patent (October 16, 1996,
when the parent application of the ’420 patent was filed), and neither party
contends that the minor differences between those definitions impact the
obviousness analysis. Petitioner’s declarant, Robert T. Stone, Ph.D.,
testifies that a person of ordinary skill would have had (1) “a bachelor’s
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degree in Electrical Engineering or Computer Science, or its equivalent, and
at least 2 years of experience with the design and programming of patient
monitoring systems,” and (2) “at least 1 year of experience with the design
or programming of networked systems.” Ex. 1008 ¶ 22; see Pet. 6; Ex. 1022
¶¶ 19–21. Patent Owner’s declarant, Dr. David, agrees with the first portion
of Dr. Stone’s definition, but disagrees as to the second portion, testifying
that a person of ordinary skill would not have had experience with the design
or programming of networked systems. Ex. 2010 ¶ 24.
Based on our review of the ’420 patent, the types of problems and
solutions described in the ’420 patent and cited prior art, and the testimony
of the parties’ declarants, we conclude that a person of ordinary skill in the
art would have had a bachelor’s degree in electrical engineering or computer
science (or its equivalent), and at least two years of experience with the
design and programming of patient monitoring systems. See, e.g., Ex. 1001,
col. 1, l. 23–col. 2, l. 67 (describing prior art medical monitoring systems
that collected data from remote monitoring devices, and stating that the ’420
patent describes “computer systems for managing healthcare”); Ex. 1008
¶¶ 1–5 (background of Dr. Stone); Ex. 2010 ¶¶ 1–9 (background of
Dr. David).
We do not include a requirement of one year of experience with the
design or programming of networked systems. Although the challenged
claims recite “transmitting a communication” to a patient via “electronic
mail message” or “telephone message,” the Specification describes such
communications only at a high level of generality. See, e.g., Ex. 1001,
col. 4, ll. 50–52 (“Clinic server 12 is coupled to a modem M1 for connecting
server 12 to a communication network 34, preferably a public telephone
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network or similar data transmission network.”); col. 8, ll. 53–55 (“mail
server application 16 transmits each message 78 through network 34 to the
corresponding patient”). A person of ordinary skill in the art would have
had at least two years of experience with the design and programming of
patient monitoring systems, and, therefore, would have had at least some
familiarity with the use of networked systems (e.g., to communicate with
monitored patients), but may not have had one year of specific experience
designing or programming the underlying networked systems that enable
electronic mail or telephone message communication with patients.

C. Claim 1
Petitioner argues in its Petition that claim 1 is unpatentable over
Crawford and Tallman under 35 U.S.C. § 103(a), relying on the Declaration
of Dr. Stone (Ex. 1008) in support. Pet. 19–26, 32–42. We have reviewed
the Petition, Patent Owner Response, and Reply, as well as the evidence
discussed in each of those papers, and are persuaded, by a preponderance of
the evidence, that claim 1 would have been obvious based on the
combination of Crawford and Tallman.

1. Crawford
Crawford discloses a “medical monitoring system in which a plurality
of vital signs monitors for a plurality of patients provide data on a continuing
basis to a central server.” Ex. 1002, Abstract. The system provides an
overview display (e.g., a computer touchscreen) showing, for example, a
hospital floor plan with room icons. Id. at col. 5, ll. 19–23; col. 6, ll. 34–38.
Alarms and warnings are displayed whenever a patient’s monitored vital
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signs fall outside a range pre-selected by the health care provider. Id. at
col. 5, ll. 23–37; col. 8, ll. 22–44. Figure 3 of Crawford is reproduced
below.

Figure 3 above depicts Room 221 with a critical emergency and Rooms 208
and 228 with warnings. Id. at col. 5, ll. 23–58. The rooms may be colored
red, yellow, or green, or shown as flashing, depending on the condition of
the patient (red and flashing for critical, yellow for warning, and green for
normal). Id. at col. 6, ll. 3–18. A user can touch the screen on a particular
room to call up information for the particular patient. Id. at col. 6, ll. 34–38.
The system also can display past vital sign measurements for a patient. Id.
at col. 2, ll. 34–37; col. 8, ll. 52–62; Fig. 7.

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2. Tallman
Tallman discloses a “network management system” where nurses and
other health care professionals speak to patients over the telephone using
“proprietary information tools . . . to help patients assess their health needs
and then select appropriate care.” Ex. 1003, col. 1, ll. 7–18. When a patient
calls a nurse, the nurse accesses the patient’s data stored in the system and
asks the patient questions. Id. at col. 5, ll. 48–54; Fig. 2. The system then
makes a determination as to whether the patient is eligible for services and
whether the patient requires medical intervention. Id. at col. 5, l. 52–col. 6,
l. 17. During the course of a patient call, the system displays various screens
to the nurse, which may include questions to ask the patient (e.g., Figures 22
and 74) and messages to read to the patient (e.g., Figures 24, 75, and 76),
and logs the patient’s responses as entered by the nurse. Id. at col. 22,
ll. 56–67; col. 23, ll. 44–49. If the patient requires medical intervention, the
nurse uses the system to determine what level and type of care is needed,
and to help the patient select a health care provider. Id. at col. 5, ll. 17–21;
col. 6, ll. 23–30. If the patient does not need medical intervention, the nurse
uses the system to provide home care instructions and to schedule a
follow-up call with the patient if necessary. Id. at col. 6, ll. 17–22. Tallman
describes specific procedures for performing a callback to the patient and
logging the results of the callback. Id. at col. 34, l. 38–col. 35, l. 67.

3. Analysis
a. Crawford and Tallman Are Analogous Art
Before turning to Petitioner’s substantive arguments regarding
Crawford and Tallman, we must determine whether the references are
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analogous art to the ’420 patent. “A reference qualifies as prior art for an
obviousness determination under § 103 only when it is analogous to the
claimed invention.” In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011).
“Two separate tests define the scope of analogous prior art: (1) whether the
art is from the same field of endeavor, regardless of the problem addressed
and, (2) if the reference is not within the field of the inventor’s endeavor,
whether the reference still is reasonably pertinent to the particular problem
with which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325
(Fed. Cir. 2004). “A reference is reasonably pertinent if . . . it is one which,
because of the matter with which it deals, logically would have commended
itself to an inventor’s attention in considering his problem.” Innovention
Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011)
(citation and internal quotation marks omitted).
Patent Owner does not dispute that Crawford is analogous art, but
argues that Tallman is not analogous art under either test. PO Resp. 16–20.
The field of endeavor of the ’420 patent is using a computer system to
monitor a group of medical patients. See id. at 2, 17; Reply 2; Ex. 1001,
claim 1 (“method for monitoring a group of patients having a health
condition via a computer system”); col. 1, ll. 23–26 (stating that the
disclosed invention relates to “computer systems for managing healthcare”
and “proactively monitoring a group of patients having a chronic disease or
ongoing health condition”); Dec. on Inst. 16.
Patent Owner argues that Tallman is outside this field because it
relates to providing assistance to individuals “seeking” health care services
“before they enter the health care system,” not actively “monitoring”
existing patients. PO Resp. 17–18. This argument is not persuasive.
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Although Tallman describes situations where an individual makes contact
with the system for the first time, it also describes maintaining information
about, and communicating with, existing patients. The disclosed network
management system includes patient assessment program 17 and patient
database 19. Ex. 1003, Fig. 1. An existing patient may contact a nurse
through the network management system, “[p]atient information is gathered
and eligibility is confirmed at 42 by accessing data from a patient chart at
44,” and the nurse then uses the patient’s information to determine whether
the patient requires medical intervention. Id. at col. 5, l. 52–col. 6, l. 17; col.
17, ll. 10–12 (describing “how to find a patient’s chart when it already exists
in the system”); col. 20, l. 35–col. 21, l. 22 (describing Figure 13, a “Patient
Chart window” for “viewing information on file for the patient,” and Figure
14 displaying “Health Information” for the selected patient); see also col. 18,
l. 38–col. 19, l. 13 (describing actions to be taken “[i]f the patient requesting
services has not used the system before” or “[i]f the patient has used the
system before”). Patent Owner and Dr. David also acknowledge that the
system disclosed in Tallman is used by individuals who are not yet patients
as well as existing patients. See Ex. 1041 at 423:22–424:25; Tr. 37:1–8.
Thus, Tallman is from the same field of endeavor as the ’420 patent.
Tallman also is reasonably pertinent to the particular problems
addressed by the ’420 patent, including those associated with “effectively
managing the medical priorities of [a group of] patients.” See Ex. 1001,
col. 1, l. 41–col. 2, l. 12. Patent Owner argues that the named inventor of the
’420 patent was concerned with managing the medical needs of a group of
patients who have “already” entered the health care system and been
diagnosed, whereas Tallman is concerned with managing access to health
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care providers “before” someone becomes a patient. PO Resp. 18–20.
Again, Patent Owner reads Tallman too narrowly, as it relates to assessing
and managing the medical conditions of existing patients as well as new
patients, for the reasons explained above. Tallman, therefore, is reasonably
pertinent to the problems associated with effectively managing the medical
needs of a group of patients with health conditions.
Accordingly, we are persuaded that Crawford and Tallman are
analogous art to the ’420 patent.

b. Crawford and Tallman Teach Every Limitation of Claim 1
Petitioner has presented evidence showing that Crawford and Tallman
teach every limitation of claim 1. Specifically, Petitioner asserts that
Crawford teaches a medical monitoring system for a group of patients that
generates and displays a “chart” via a “display” (i.e., the overview display
shown in Figure 3), the chart having a plurality of “data points” each
representing one patient and indicating a value for the patient (e.g., a critical
or warning situation) based on measurements for the patient, with each data
point having an “icon” (i.e., image of a room). Pet. 32–35 (citing Ex. 1002,
col. 3, ll. 38–43; col. 5, ll. 38–51; col. 8, ll. 11–16). Petitioner further
contends that Crawford teaches receiving a “user input” selecting one of the
data points (i.e., user selection by touching the screen or using the keyboard)
and correlating the user-selected data point with “patient data” (e.g., patient
name or ailment). Id. at 36–39 (citing Ex. 1002, col. 6, ll. 34–38).
Petitioner relies on Tallman as teaching correlation with a particular
type of patient data, namely the “telephone number associated with the
selected patient,” as recited in claim 1. Id. at 39–40 (citing Ex. 1003,
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Figs. 7, 12, 13, 37–39). Petitioner also relies on Tallman as teaching the
limitation of “transmitting a communication to the selected patient” via a
“telephone message,” where the communication is “proactively
ini[ti]ate[d].” Id. at 40–42 (citing Ex. 1003, Figs. 6, 24; col. 34, ll. 40–54).
Petitioner’s analysis, supported by the testimony of Dr. Stone, is persuasive.
See Ex. 1008 ¶¶ 26–50.
Patent Owner makes four arguments with respect to claim 1. First,
Patent Owner argues that Crawford’s overview display does not have a
plurality of “data points” that are separate from “icons.” PO Resp. 36–38.
As explained above, we do not agree with Patent Owner that the claim
requires separate data points and icons, and instead interpret “data point” to
mean a display of data at a location on the chart. See supra Section II.A.2.
Petitioner has shown sufficiently that Crawford’s overview display is a chart
having data points, each representing one patient and indicating a value for
the patient (e.g., a critical or warning situation) based on measurements for
the patient, with each data point having an icon (i.e., image of a room shown
in different colors and flashing states depending on the value for the patient),
as recited in claim 1. See Pet. 33–35 (citing Ex. 1002, col. 5, ll. 38–51);
Ex. 1008 ¶¶ 29–30.
Second, Patent Owner argues that Crawford’s overview display does
not have a plurality of “data points” because the floor arrangement in
Crawford has “stationary patient rooms.” PO Resp. 37–38. Patent Owner’s
argument is premised on its contention that the claim requires “dynamic”
data point distribution. Id. We do not agree that the claim should be
interpreted in that manner, for the reasons explained above. See supra
Section II.A.2.
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Third, Patent Owner argues that Tallman does not teach “transmitting
a communication to the selected patient” via “a telephone message,” as
recited in claim 1. PO Resp. 38–40. Patent Owner contends that the claim
requires an “automated telephone message” that exists prior to being
transmitted, which allegedly is different from the callback feature in Tallman
where the nurse calls a patient and reads a message over the telephone. Id.
(citing Ex. 2010 ¶¶ 151–52, 184). Claim 1, however, does not recite that the
telephone message is “automated,” and we see no reason why a human being
calling a patient over a telephone network and reading a message would not
amount to “transmitting a communication to the selected patient” via “a
telephone message.” See Ex. 1041 at 407:12–408:14 (Dr. David
acknowledging that reading the message over the telephone would constitute
transmitting a communication to a patient via a telephone message).
Moreover, even if claim 1 required a pre-existing message, Tallman teaches
such a message that is displayed to the nurse and read to the patient over the
telephone. See Pet. 40–41; Ex. 1003, col. 34, l. 38–col. 35, l. 37 (describing
callback procedures); col. 76, l. 63–col. 78, l. 32 (listing exemplary
pre-existing messages); Figs. 24, 75 (displaying a “Message to Patient”).
We are persuaded that Tallman teaches the “transmitting” step of claim 1.
4

Fourth, Patent Owner argues that the user in Tallman does not
“proactively ini[ti]ate said communication with the selected patient via the
system by providing said user input to the system,” as recited in claim 1.

4
We also note that the ’420 patent acknowledges that the “programming of a
mail merge application to generate customized [electronic mail] messages”
and the “programming of an automated call processing application to
generate customized [telephone] messages” were “well known in the art”
prior to the ’420 patent. Ex. 1001, col. 7, ll. 55–57; col. 9, ll. 15–17.
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PO Resp. 40–42. Patent Owner’s argument is premised on its proposed
interpretation of the “proactively ini[ti]ate” claim language as requiring
initiation before the patient develops an urgent medical need. Id. We do not
agree with that interpretation for the reasons stated above, and instead
interpret the limitation to mean that the system allows the user to control the
initiation of the communication to the selected patient by providing the user
input on his or her own initiative or in anticipation of an event. See supra
Section II.A.3. Tallman teaches the limitation because the nurse, on his or
her own initiative, causes the callback telephone call to be placed to the
patient. See Pet. 41–42; Reply 12. The Tallman system allows the nurse to
“[s]elect the appropriate callback item from the Worklist window” (as
shown in Figure 37), “[c]lick the Perform button to open the Perform
Callback window,” and “[d]ial the Caller Phone number shown in the
Perform Callback window” (as shown in Figure 39). Ex. 1003, col. 34,
l. 38–col. 35, l. 67.
Thus, we are persuaded that Crawford and Tallman teach every
limitation of claim 1.

c. A Person of Ordinary Skill in the Art Would Have Had Reason to
Combine the Teachings of Crawford and Tallman
Having found that Crawford and Tallman teach all of the limitations
of claim 1, we turn to whether a person of ordinary skill in the art would
have had reason to combine the teachings of the references to achieve the
claimed method. We are guided by the Supreme Court’s decision in KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007). “Section 103(a) forbids
issuance of a patent when ‘the differences between the subject matter sought
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to be patented and the prior art are such that the subject matter as a whole
would have been obvious at the time the invention was made to a person
having ordinary skill in the art to which said subject matter pertains.’” Id. at
405. “[W]hen a patent ‘simply arranges old elements with each performing
the same function it had been known to perform’ and yields no more than
one would expect from such an arrangement, the combination is obvious.”
Id. at 417 (citation omitted). A determination of obviousness, though,
requires identifying “some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” Id. at
417–18 (citation and internal quotation marks omitted).
In its Petition, Petitioner explains in detail why it would have been
obvious to a person of ordinary skill in the art to combine the teachings of
Crawford and Tallman to achieve the method of claim 1, relying on the
testimony of Dr. Stone in support. See Pet. 19–26. For example, Petitioner
argues that both references relate to monitoring a patient population and,
because Crawford only monitors continuously-connected patients, a person
of ordinary skill in the art would have been “motivated to look to medical
informatics systems providing periodic or intermittent patient-caregiver
contact, such as in Tallman, to find solutions to such shortcomings.” Id. at
19–20 (citing Ex. 1008 ¶ 49). Petitioner further contends that a “graphical
display” of the type disclosed in Crawford would have provided an
“expeditious method of facilitating . . . communications” between a patient
and health care provider, as disclosed in Tallman. Id. at 26. Dr. Stone
similarly testifies that “[i]t would have been advantageous to combine the
two systems to account for a flow of information from pre-admission
through admission and treatment,” and that it would have been obvious to
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incorporate Tallman’s correlation between the selection of a patient and the
patient’s contact information (e.g., telephone number) because such
information was “readily available.” Ex. 1008 ¶¶ 48, 50. Dr. Stone opines
as to these and other reasons why a person of ordinary skill in the art would
have had reason to combine the teachings of the references to arrive at the
claimed methods. See, e.g., id. ¶¶ 47–50. Petitioner’s analysis, supported by
the testimony of Dr. Stone, is persuasive.
Patent Owner contends that it would not have been obvious to one of
ordinary skill in the art to combine the teachings of Crawford and Tallman
because (1) each reference discloses a “complete” system; (2) the references
are in different fields, address different problems, and disclose contrary
solutions; (3) the references themselves do not suggest that they could be
combined; (4) Crawford teaches away from the use of patient contact
information and telephone communication with a selected patient, the
features for which Petitioner relies on Tallman; and (5) Dr. Stone applied an
improper methodology in his obviousness analysis. PO Resp. 20–26,
31–35.
First, Patent Owner contends that Crawford and Tallman disclose
“complete” systems and do not provide any reason themselves for modifying
the systems with the teachings of another reference. PO Resp. 24 (citing
Ex. 2010 ¶¶ 123–27). Patent Owner, however, does not identify any
authority (and we are aware of none) for the proposition that a reference
somehow must be incomplete to be combinable with another reference under
35 U.S.C. § 103(a). Petitioner has explained sufficiently why a person of
ordinary skill in the art would have understood it to be beneficial to
incorporate the patient correlation and communication features of Tallman
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into the system of Crawford, even though the systems disclosed in both
references are capable of operating on their own. See Pet. 19–26 (citing
Ex. 1008 ¶¶ 47–50).
Second, Patent Owner argues that Crawford and Tallman are in
different fields, address different problems, and disclose contrary solutions,
such that a person of ordinary skill in the art would not have been motivated
to combine their teachings. See PO Resp. 24–25, 3233 (citing Ex. 2010
¶¶ 128–35). According to Patent Owner, Crawford is in the “field of
supervisory systems that monitor vital signs of patients,” whereas Tallman is
in the “field of network management systems for assisting health plan
beneficiaries who are seeking health care services.” Id. at 24. Also,
Crawford addresses the problem of monitoring for “emergency situations”
by monitoring patient conditions in real time, whereas Tallman addresses the
problem of “managing access to health care providers” by providing tools to
handle incoming calls from patients. Id. at 25. For similar reasons, Patent
Owner asserts that Tallman “teaches away” from any combination with
Crawford because of their allegedly different fields, problems, and solutions.
Id. at 25–26.
Patent Owner overstates the differences between the references and
fails to account for their many common features. As explained above, we
are persuaded that, like the ’420 patent, both references are in the same
general field of using a computer system to monitor a group of medical
patients. See supra Section II.C.3.a. Both references describe a central
computer system for maintaining, displaying, and communicating
information about existing patients who may be located at their homes or in
a health care facility, and for taking some action with respect to a selected
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patient. See Pet. 19–20, 22; Reply 4 (citing Ex. 1022 ¶¶ 98–108); Ex. 1002,
col. 5, l. 19–col. 6, l. 38; Ex. 1003, col. 5, l. 52–col. 6, l. 17. Both references
address patients in both emergency and non-emergency situations. See
Reply 4–5; Ex. 1002, col. 6, ll. 3–26 (rooms displayed in red, yellow, or
green); Ex. 1003, col. 12, l. 28–col. 13, l. 25; col. 14, ll. 29–34. Thus, we
are not persuaded that the systems of Crawford and Tallman are so different
that a skilled artisan would not have thought to combine them. Nor do we
see any basis in the record to conclude that incorporating the patient
correlation and communication features of Tallman into the system of
Crawford, as Petitioner and Dr. Stone propose, would have been uniquely
challenging or otherwise beyond the level of skill of an ordinarily skilled
artisan. See KSR, 550 U.S. at 416, 421; Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1161–62 (Fed. Cir. 2007).
Third, Patent Owner argues that the references themselves do not
suggest that they could be combined. PO Resp. 33–34 (citing Ex. 2010
¶¶ 145–49). Patent Owner cites the following disclosure from Tallman to
show that Tallman allegedly distinguishes managing health care access for a
new patient from systems like Crawford that involve diagnosing and
monitoring existing patients:
A variety of approaches are also known in the a[rt] for
systems and processes that automate medical diagnosis. For
example, U.S. Pat. No. 5,263,123 discloses an expert system
using a form of fuzzy logic for medical diagnosis. However, it
should be recognized that diagnosis is a different problem than
managing access to medical providers who can then make a
diagnosis and institute effective treatment.
Ex. 1003, col. 1, l. 62–col. 2, l. 1; see PO Resp. 33 (citing Ex. 2010 ¶ 147).
Again, Patent Owner does not account for the fact that Tallman expressly
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teaches communicating with existing patients (as well as new patients). See
supra Section II.C.3.a. Further, as Dr. Stone points out, Tallman teaches
communicating information about the diagnosis and treatment of a patient.
Ex. 1022 ¶ 89 (citing Ex. 1003, Figs. 2, 4A, 4E, and 76 disclosing
“instructions” for a patient with a back injury).
We also note that an obviousness “analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR, 550 U.S. at 418. Therefore,
Patent Owner’s argument that Petitioner’s proffered rationales for the
combination fail because neither Crawford nor Tallman teaches explicitly
that they could be combined with other teachings is unpersuasive.
Fourth, Patent Owner argues that Crawford teaches away from the use
of patient contact information and telephone communication with a selected
patient. PO Resp. 34–35 (citing Ex. 2010 ¶¶ 150–55). Patent Owner cites
the “Dial-out” button in Crawford, which is used to communicate with
health care professionals, not an individual patient. Id. at 35. Further,
according to Patent Owner, because the patients in Crawford are located in
the same facility as the health care professional viewing the overview
display, there would be no need to correlate the selection of a patient with
the patient’s contact information or to send a communication, such as a
telephone message, to the patient. Id. As Petitioner points out, though,
Crawford is not limited to use at a health care facility, and expressly
contemplates using the system to monitor patients at their homes as well.
See Reply 5; Ex. 1002, col. 1, ll. 6–8 (“a supervisory system that monitors
the vital signs of patients at home or in a health-care facility”); col. 3,
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ll. 59–60. We agree with Petitioner and Dr. Stone that a person of ordinary
skill in the art would have found it desirable to incorporate the patient
correlation and communication features of Tallman into the system of
Crawford, particularly when the monitored patients are located remotely in
their homes.
Fifth, Patent Owner argues that Dr. Stone’s obviousness analysis is
improper because he “used the claims of the ’420 Patent as ‘a template’ to
try and fit combinations of references into the claims” and “used the
teachings of the ’420 Patent to identify the goals and motivations for
combining the prior art.” PO Resp. 21–23 (citing Ex. 2015 at 84:18–85:4,
313:1–20). According to Patent Owner, Dr. Stone’s analysis is based on
improper hindsight reasoning. Id. “Any judgment on obviousness is in a
sense necessarily a reconstruction based upon hindsight reasoning, but so
long as it takes into account only knowledge which was within the level of
ordinary skill at the time the claimed invention was made and does not
include knowledge gleaned only from applicant’s disclosure, such a
reconstruction is proper.” In re McLaughlin, 443 F.2d 1392, 1395 (CCPA
1971). Patent Owner does not show sufficiently that Dr. Stone’s analysis
relies on knowledge that was beyond the level of ordinary skill in the art at
the time of the ’420 patent. For example, Dr. Stone relies on Crawford’s
disclosure of a “chart” having “data points” including “icons,” and on
Tallman’s disclosure of “transmitting a communication” to a selected
patient, and explains why he believes a person of ordinary skill in the art
would have combined those teachings based on the disclosures of the
references themselves. See Ex. 1008 ¶¶ 47–50. We do not see, and Patent
Owner does not assert or demonstrate persuasively, how these disclosures
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(which were not gleaned from the ’420 patent Specification) would have
been beyond the level of ordinary skill in the art.
Accordingly, we are persuaded that Crawford and Tallman teach all of
the limitations of claim 1, and that a person of ordinary skill in the art would
have had reason to combine their teachings to achieve the recited method.

d. Secondary Considerations of Nonobviousness
As part of our obviousness analysis, we consider the evidence and
arguments submitted by Patent Owner regarding secondary considerations of
nonobviousness. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
In particular, Patent Owner argues that commercial success, long-felt need,
industry praise, teaching away by others, and copying demonstrate that the
challenged claims would not have been obvious to a person of ordinary skill
in the art.
5
PO Resp. 26–31. In support of its assertions, Patent Owner cites
the testimony of Dr. David. Id. (citing Ex. 2010 ¶¶ 74–106).

i. Commercial Success
Patent Owner argues that the “Health Buddy” remote health
monitoring system, released in 1999 by Health Hero (Patent Owner’s
predecessor company), was commercially successful. PO Resp. 27–28.
According to Patent Owner, the device was used in a successful pilot
program with the U.S. Department of Veterans Affairs (“VA”), and

5
The parties refer to the challenged claims collectively in their arguments
regarding secondary considerations, and we do the same. See PO Resp.
26–31; Reply 6–8.
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afterwards Health Hero “sold many tens of thousands of Health Buddy
devices.” Id.
Evidence of commercial success, however, “is only significant if there
is a nexus between the claimed invention and the commercial success.”
Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311–12 (Fed. Cir. 2006).
To establish a proper nexus between a claimed invention and the commercial
success of a product, a patent owner must offer “proof that the sales [of the
allegedly successful product] were a direct result of the unique
characteristics of the claimed invention—as opposed to other economic and
commercial factors unrelated to the quality of the patented subject matter.”
In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996). In addition, “if the
commercial success is due to an unclaimed feature of the device,” or “if the
feature that creates the commercial success was known in the prior art, the
success is not pertinent.” Ormco, 463 F.3d at 1312; see also In re Kao,
639 F.3d 1057, 1070 (Fed. Cir. 2011) (requiring a determination of “whether
the commercial success of the embodying product resulted from the merits
of the claimed invention as opposed to the prior art or other extrinsic
factors”). If a patent owner is able to show a sufficient nexus, “the burden
shifts to the challenger to prove that the commercial success is instead due to
other factors extraneous to the patented invention, such as advertising or
superior workmanship.” J.T. Eaton & Co., Inc. v. Atlantic Paste & Glue
Co., 106 F.3d 1563, 1571 (Fed. Cir. 1997).
Patent Owner has not established a sufficient nexus between the
claimed methods and the alleged commercial success of the Health Buddy.
Patent Owner argues that the success of the Health Buddy was “directly
attributable to the invention of the ’420 Patent,” and identifies the “ability to
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monitor many patients at once and highlight higher risk patients” in
particular as the reason for that success. PO Resp. 28. Dr. David testifies
that media coverage emphasized “the simplicity of the product and the fact
that it provided a simple set of questions that could be changed by a health
care provider to take into account the needs of a particular patient through
the ‘Care Composer’ feature,” as well as “the ability of health care providers
to quickly distinguish between patients that were within prescribed
guidelines and patients that were not . . . through the Health Buddy’s ‘Care
Director’ features.” Ex. 2010 ¶ 86. According to Dr. David, the latter
ability is the “group overview feature claimed by the ’420 Patent.” Id.
Patent Owner and Dr. David, however, do 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 methods
that drove sales. For example, claim 1 of the ’420 patent recites “receiving a
user input . . . selecting a data point . . . associated with a selected patient,”
“correlating the user-selected data point with patient data for the selected
patient associated with the user-selected data point, the patient data
including” an electronic mail address or telephone number of the selected
patient, and “transmitting a communication to the selected patient” via
electronic mail message or telephone message. Patent Owner does not point
to evidence in the record showing that the Health Buddy performed these
steps. Dr. David simply states that he reviewed various materials and spoke
with personnel of Patent Owner, and “understand[s]” that the Health Buddy
“practiced each of the challenged claims.” Ex. 2010 ¶¶ 71–73. Dr. David
does not provide any analysis to support that conclusion, and acknowledged
during his deposition that his conversations with Patent Owner’s personnel
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did not involve any discussion of the challenged claims. See Ex. 1041 at
244:16–246:3. Further, to the extent Dr. David identifies a general “group
overview feature” allegedly recited in the claims, he does not identify
particular claim language corresponding to that feature or explain how
general discussions of patient monitoring equate with any particular
limitation(s) of the claims. See Ex. 2010 ¶ 86 (citing Ex. 2026, which states
that “Care Director allows authorized medical staff to view . . . information
on groups of patients . . . through graphic reports and detailed data
displays”).
Any commercial success of the Health Buddy is only relevant if the
Health Buddy actually was used to practice the methods recited in the
challenged claims. See In re DBC, 545 F.3d 1373, 1384 (Fed. Cir. 2008)
(finding no nexus absent evidence that “the driving force behind [the
allegedly successful product’s sales] was the claimed combination”)
(emphasis added); Ormco, 463 F.3d at 1311–12 (requiring a “nexus between
the claimed invention and the commercial success”) (emphasis added);
Huang, 100 F.3d at 140 (requiring proof that sales were a “direct result of
the unique characteristics of the claimed invention”) (emphasis added).
Patent Owner has not provided sufficient evidence to show that was the case.
Accordingly, the alleged commercial success of the Health Buddy does not
support a conclusion of nonobviousness of the claims.

ii. Long-Felt Need
Patent Owner argues that “[t]here was and is a long-felt need in the
industry for remote patient monitoring systems such as the Health Buddy,”
and that the Health Buddy improved on existing systems in various ways.
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PO Resp. 28–29. To support a conclusion of nonobviousness, an alleged
long-felt need must have been a persistent one that was recognized by those
of ordinary skill in the art, must not have been satisfied by another before the
challenged patent, and must have been satisfied by the claimed invention.
See Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1332–33 (Fed.
Cir. 2009); Newell Cos. v. Kenney Mfg. Co., 864 F.2d 757, 768 (Fed. Cir.
1988).
Patent Owner does not explain sufficiently why there was a long-felt
need to solve a particular problem that others recognized but were unable to
meet. As Patent Owner acknowledges, other remote patient monitoring
systems existed prior to the Health Buddy. PO Resp. 28–30. Even
assuming that the Health Buddy represented an improvement over those
systems, that does not mean automatically that there was a recognized
long-felt, but unmet, need in the art. Further, the evidence cited by Patent
Owner and Dr. David pertains only to the Health Buddy itself and does not
show recognition of a particular need prior to the Health Buddy. See id.
(citing Exs. 2032, 2033, 2042); Ex. 2010 ¶¶ 89–94 (citing Exs. 2026, 2032,
2033, 2059); Perfect Web, 587 F.3d at 1332–33 (“[L]ong-felt need is
analyzed as of the date of an articulated identified problem and evidence of
efforts to solve that problem.”) (citation and internal quotation marks
omitted). Finally, Patent Owner recognizes that there still “is” a need in the
industry for “remote patient monitoring systems,” and does not show
sufficiently that the ’420 patent actually satisfied the alleged need. See
PO Resp. 28. Thus, Patent Owner’s evidence of long-felt need is not
persuasive.

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iii. Industry Praise
Patent Owner argues that the Health Buddy received “great praise,”
citing two television news segments and various written publications.
PO Resp. 29 (citing Ex. 2010 ¶¶ 95–99). Patent Owner contends that the
industry praise “highlighted the monitoring advantages conferred by the
group overview invention” of the ’420 patent. Id. As with commercial
success, however, evidence of industry praise is only relevant when it is
directed to the merits of the invention claimed. See Ormco, 463 F.3d at
1311–12. Patent Owner cites a general “group overview” feature, but does
not tie the discussion in the cited materials to any particular limitation(s) of
the challenged claims. Dr. David also cites numerous materials praising the
Health Buddy in general, rather than praise due to specific features that are
present in the claims. See Ex. 2010 ¶¶ 95–99 (describing, for example,
awards won by the Health Buddy). Thus, Patent Owner has not established
a sufficient nexus with the claimed methods, and industry praise of the
Health Buddy does not support a conclusion of nonobviousness of the
claims.

iv. Teaching Away by Others
Patent Owner argues that there were other systems available when the
Health Buddy was released that used “personal computers, or prior art
methods, such as hospital initiated phone calls or patient diaries.” PO Resp.
30 (citing Ex. 2010 ¶¶ 100–101). According to Patent Owner, the Health
Buddy was different from those systems because it had a “very simplified
four-button design” and “case manager interface” using “scripted
question[s].” Id. We are not persuaded that the mere existence of
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alternatives in the marketplace is a secondary consideration of
nonobviousness,
6
however, and Patent Owner does not explain sufficiently
why the cited alternatives would have taught away from the claimed method.
See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“[t]he prior art’s
mere disclosure of more than one alternative does not constitute a teaching
away . . . because such disclosure does not criticize, discredit, or otherwise
discourage the solution claimed”). Moreover, any difference between the
Health Buddy and other systems would be immaterial because the
challenged claims do not require a four-button design or scripted questions,
which Patent Owner cites as the allegedly distinguishing features of the
Health Buddy. Again, what matters when considering secondary
considerations of nonobviousness is what is actually claimed. Patent
Owner’s arguments are not directed to the challenged claims and are not
persuasive.

v. Copying
Patent Owner argues that, as a result of the Health Buddy’s initial
success, the VA “codified” in a request for proposal (“RFP”) various
features of the Health Buddy, including “the requirement that a case
manager be able to view many patients at once in a chart with high risk
patients highlighted by the system.” PO Resp. 30–31 (citing Ex. 2010
¶¶ 102–106). Patent Owner infers that other companies, such as Viterion,

6
Failure of others can be a secondary consideration of nonobviousness, but
Patent Owner does not argue that any other system was a failure. See
Graham, 383 U.S. at 17–18.
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Inc. and Advanced Telehealth, Inc., copied the Health Buddy because they
sold systems to the VA that complied with the RFP. Id.
Patent Owner’s arguments regarding copying are not persuasive.
“[C]opying requires evidence of efforts to replicate a specific product.”
Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010). Patent
Owner and Dr. David do not provide any analysis or explanation of how
other companies allegedly copied the Health Buddy system. Indeed,
Dr. David admitted that he never analyzed what other companies provided to
the VA. See Ex. 1041 at 177:21–25. Dr. David only states that the
personnel of Patent Owner he spoke with “recalled” competing products,
such as “the Viterion VT100 device,” that complied with the RFP. Ex. 2010
¶¶ 105–106. There is no evidence in the record, however, as to how “the
Viterion VT100 device” worked. Dr. David also does not mention any
product of the other company cited in the Patent Owner Response,
Advanced Telehealth, Inc. Thus, Patent Owner has not shown sufficiently
that anyone copied the Health Buddy system. Further, even if it was proper
to infer copying merely from compliance with the RFP, Dr. David admitted
that the RFP could be satisfied by a system that does not practice the
methods recited in the challenged claims. See Ex. 1041 at 212:21–213:3.
Patent Owner has not shown proof of copying that would support a
conclusion of nonobviousness of the challenged claims.

e. Conclusion
Based on all of the evidence of record, including evidence of
secondary considerations of nonobviousness submitted by Patent Owner, we
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determine, by a preponderance of the evidence, that claim 1 would have
been obvious based on Crawford and Tallman under 35 U.S.C. § 103(a).

D. Claims 2–5
Petitioner argues in its Petition that claims 2–5 are unpatentable over
Crawford, Tallman, and Goodman under 35 U.S.C. § 103(a), again relying
on Dr. Stone’s Declaration (Ex. 1008) in support. Pet. 31–32, 42–46.
We have reviewed the Petition, Patent Owner Response, and Reply, as well
as the evidence discussed in each of those papers, and are persuaded, by a
preponderance of the evidence, that claims 2–5 would have been obvious
based on the combination of Crawford, Tallman, and Goodman.

1. Goodman
Goodman discloses a system for monitoring the health of a patient in
which a third party host computer is in communication with a health care
provider’s computer and a patient’s computer. Ex. 1006, Abstract; col. 2,
ll. 44–51; Fig. 1. In one embodiment, the host computer receives a treatment
plan for a patient from the health care provider and generates an algorithm
based on the treatment plan. Id. at col. 2, ll. 54–57. The algorithm is
programmed into a message device in possession of the patient. Id. at col. 2,
ll. 49–58. The message device prompts the patient to measure and enter
physiological data as dictated by the treatment plan. Id. at col. 2, ll. 58–61.
Goodman further discloses that, “[i]n place of the host computer 30, one or
more employees/representatives of the third party 3 may collect information,
generate and maintain a record of information pertaining to a patient’s health
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and transmit information either directly or indirectly to the patient 2 . . . via
telephone [or] electronic mail.” Id. at col. 7, l. 66–col. 8, l. 5.

2. Analysis
Petitioner relies on Crawford and Tallman as teaching all of the
limitations of independent claim 1, relies on Goodman as teaching the
additional limitations of dependent claims 2–5, and provides reasons why a
person of ordinary skill in the art would have combined the teachings of
Crawford and Tallman with those of Goodman, supported by the testimony
of Dr. Stone. See Pet. 31–32, 42–46; Ex. 1008 ¶¶ 65–71. We first address
whether Goodman teaches the additional limitations of each claim and then
turn to whether it would have been obvious to make the asserted
combination. There is no dispute that Goodman is analogous art to the
’420 patent.

a. Crawford, Tallman, and Goodman Teach Every Limitation of
Claims 2 and 3
Claim 2 recites that “said electronic mail message includes
information related to a most recent set of measurements of the selected
patient.” Claim 3 recites the same limitation with respect to “said telephone
message.” At the outset, we note that independent claim 1 recites
transmitting a communication “via one of: an electronic mail message and a
telephone message,” and, therefore, is met if either type of message is sent.
Even assuming that the particular type of message recited in each of claims 2
and 3 is required, though, we are persuaded that the claims would have been
obvious over the combination of Crawford, Tallman, and Goodman.
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Petitioner relies on the following disclosure from Goodman as
teaching the limitations of claims 2 and 3:
In place of the host computer 30, one or more
employees/representatives of the third party 3 may collect
information, generate and maintain a record of information
pertaining to a patient’s health and transmit information either
directly or indirectly to the patient 2, health care provider 4, or
other location via telephone, facsimile transmission, electronic
mail, or other communication means.
Ex. 1006, col. 7, l. 66–col. 8, l. 5 (emphasis added); see Pet. 42–43. Similar
to its argument with respect to claim 1, Patent Owner argues that claims 2
and 3 require a pre-existing message, not human communication to the
patient. PO Resp. 54, 56. We disagree with Patent Owner’s reading of
claim 1 for the reasons explained above. See supra Section II.C.3.b.
Patent Owner also contends that Goodman does not teach a message
that includes “information related to a most recent set of measurements of
the selected patient.” PO Resp. 53–57 (citing Ex. 2010 ¶¶ 242, 252). This
argument is not persuasive, given the context of the Goodman disclosure
above. Specifically, Goodman discloses that host computer 30 receives
patient monitoring data from medical device 70, analyzes the data, and
generates reports “indicative of the patient’s well-being” and how the patient
is responding to the prescribed therapy. Ex. 1006, col. 7, ll. 22–59. The
portion of Goodman quoted above discloses that the information collection
and recording may be “[i]n place of the host computer 30.” Id. at col. 7,
l. 66–col. 8, l. 5. Thus, we agree with Petitioner that the message to the
patient would comprise the same type of information regarding the patient’s
well-being and efficacy of treatment, which would be “information related to
a most recent set of measurements of the selected patient.” See Reply 14.
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We are persuaded that Crawford, Tallman, and Goodman teach every
limitation of claims 2 and 3.

b. Crawford, Tallman, and Goodman Teach Every Limitation of
Claims 4 and 5
Claim 4 recites that “said electronic message is automatically
transmitted upon said correlating by the system of said user-selected data
point with said patient data for the selected patient associated with the
user-selected data point.” Claim 5 recites the same limitation with respect to
“said telephone message.” Again, although independent claim 1 requires
either of the two types of messages, we are persuaded that claims 4 and 5
would have been obvious even if the particular type of message recited in
the claims is required.
Petitioner relies on the same disclosure of Goodman cited above for
the limitations of claims 4 and 5, and asserts that it would have been obvious
to combine the teachings of the three references. Pet. 31–32, 43–46. Patent
Owner repeats its arguments for claims 1–3, which we do not find
persuasive.
7
See PO Resp. 57–59. We are persuaded that Crawford,
Tallman, and Goodman teach every limitation of claims 4 and 5.

7
With respect to the requirement of “automatic[]” transmission of the
message in claims 4 and 5, we again note that the ’420 patent acknowledges
that the “programming of an automated call processing application to
generate customized [telephone] messages” was “well known in the art”
prior to the ’420 patent. Ex. 1001, col. 9, ll. 15–17 (emphasis added).
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c. A Person of Ordinary Skill in the Art Would Have Had Reason to
Combine the Teachings of Crawford, Tallman, and Goodman
In its Petition, Petitioner explains in detail why it would have been
obvious to a person of ordinary skill in the art to combine the teachings of
Crawford, Tallman, and Goodman to achieve the methods of claims 2–5,
relying on the testimony of Dr. Stone in support. Specifically, Petitioner
asserts that a person of ordinary skill in the art would have recognized that
the system of Tallman, “which selects predetermined messages to be
conveyed to a patient in response to patient-communicated conditions (i.e.,
measurements) and assists in automating contact with such patients,” could
be modified to include the type of communication described by Goodman
“to further automate such correspondence with a patient, freeing health
professionals to perform other skill-based task[s] as opposed to simply
reading a predefined message.” Pet. 31–32 (citing Ex. 1008 ¶¶ 68, 71).
Petitioner’s analysis is persuasive.
Similar to its arguments regarding the combination of Crawford and
Tallman, Patent Owner contends that it would not have been obvious to one
of ordinary skill in the art to combine the teachings of Goodman with those
of Crawford and Tallman because (1) each reference discloses a “complete”
system; (2) Tallman and Goodman are in different fields, address different
problems, and disclose contrary solutions, and Tallman “teaches away” from
any combination with Goodman, because Tallman relates to individuals
seeking health care services and Goodman relates to existing patients; (3) the
references themselves do not suggest that they could be combined; and
(4) Dr. Stone applied an improper methodology in his obviousness analysis.
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PO Resp. 42–52. We disagree with these arguments for reasons similar to
those explained above. See supra Section II.C.3.c.
Regarding the combination with Goodman specifically, Patent Owner
contends that Goodman is “incompatible” with the system of Crawford
because Goodman’s use of a third party facility between a patient and his or
her health care provider would “inject[] undesired latency into presentation
of patient vital signs data and unacceptably postpone exigency detection and
the response to same.” PO Resp. 46–47 (citing Ex. 2010 ¶¶ 207–11).
Goodman is “incompatible” with the system of Tallman for similar reasons
according to Patent Owner. Id. at 47–48 (citing Ex. 2010 ¶¶ 211–14). We
do not agree. Petitioner relies on Crawford and Tallman for the underlying
functionality of receiving health data for patients, and relies on Goodman
only for its specific capability of communicating in a certain manner with
the patient. See Pet. 31–46. We do not see, and Patent Owner does not
explain, why the structure that allegedly introduces delay in Goodman–the
third party facility–necessarily would be included in a combined system,
given that Crawford and Tallman already provide the necessary structure.
See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness
is not whether the features of a secondary reference may be bodily
incorporated into the structure of the primary reference. . . . Rather, the test
is what the combined teachings of the references would have suggested to
those of ordinary skill in the art.”).
Further, Patent Owner’s contention is not that it would have been
impossible for a person of ordinary skill in the art to incorporate the
communication capability of Goodman into the combined system of
Crawford and Tallman, but rather that a person of ordinary skill in the art
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would have been dissuaded from doing so because communication would be
unacceptably slow. Patent Owner and Dr. David do not explain sufficiently
why that would be the case, or provide evidentiary support for what a skilled
artisan would have considered unacceptable at the time. See PO Resp.
46–48; Ex. 2010 ¶¶ 209, 213. Thus, Patent Owner does not rebut
persuasively Petitioner’s proffered rationale for combining the references.
Accordingly, we are persuaded that Crawford, Tallman, and Goodman
teach all of the limitations of claims 2–5, and that a person of ordinary skill
in the art would have had reason to combine their teachings to achieve the
recited methods.

d. Conclusion
With respect to secondary considerations of nonobviousness, Patent
Owner’s arguments are the same for all of the challenged claims, and the
parties do not make any separate arguments regarding claims 2–5. See
PO Resp. 26–31; Reply 6–8. The evidence and arguments submitted by
Patent Owner do not outweigh the evidence of obviousness. See supra
Section II.C.3.d. Thus, based on all of the evidence of record, we determine,
by a preponderance of the evidence, that claims 2–5 would have been
obvious based on Crawford, Tallman, and Goodman under 35 U.S.C.
§ 103(a).

E. Motions to Exclude
The party moving to exclude evidence bears the burden of proof to
establish that it is entitled to the relief requested—namely, that the material
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sought to be excluded is inadmissible under the Federal Rules of Evidence.
See 37 C.F.R. §§ 42.20(c), 42.62(a).

1. Petitioner’s Motion to Exclude
Petitioner moves to exclude Exhibits 2016–2063 and paragraphs
68–106 of Dr. David’s Declaration (Ex. 2010) under Federal Rule of
Evidence 402 on the basis that Patent Owner “failed to establish a nexus
between the alleged evidence and the claimed features.” Pet. Mot. to
Exclude 1–7. According to Petitioner, Dr. David’s analysis of secondary
considerations of nonobviousness is “fundamentally flawed” and the
evidence relied upon by Dr. David contains “gaps so fundamental as to
warrant exclusion.” Id. Petitioner also moves to exclude paragraphs 72,
75–78, 80, 82–84, 92–94, 98, and 102–105 of Dr. David’s Declaration
(Ex. 2010) under Federal Rule of Evidence 802 on the basis that they
contain “hearsay evidence from conversations with unsworn witnesses and
undisclosed documents.” Id. at 1–2, 7–10. We need not reach the merits of
Petitioner’s Motion to Exclude because, as explained above, even if the
disputed evidence is considered, Patent Owner has not shown proof of
secondary considerations that would support a conclusion of nonobviousness
of the challenged claims. Accordingly, Petitioner’s Motion to Exclude is
dismissed as moot.

2. Patent Owner’s Motion to Exclude
Patent Owner seeks to exclude paragraphs 50–79 of Dr. Stone’s Reply
Declaration (Ex. 1022) pertaining to secondary considerations of
nonobviousness. PO Mot. to Exclude 1–10. We do not rely on the disputed
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evidence in rendering our Decision. Therefore, Patent Owner’s Motion to
Exclude also is dismissed as moot.

F. Motion for Observation
Patent Owner’s observations are directed to the cross-examination
testimony of Dr. Stone (Ex. 2076), who was cross-examined after Petitioner
filed its Reply. We have considered Patent Owner’s observations and
Petitioner’s responses in rendering our decision, and have accorded the
testimony the appropriate weight as explained above. See Obs. 1–14.
Petitioner’s responses are 17 pages, and exceed the 15-page limit specified
by 37 C.F.R. § 42.24(b)(3). As such, only the first 15 pages of Petitioner’s
responses have been considered. See Obs. Resp. 1–15.

III. ORDER
Petitioner has demonstrated, by a preponderance of the evidence, that
claim 1 is unpatentable over Crawford and Tallman, and that claims 2–5 are
unpatentable over Crawford, Tallman, and Goodman, under 35 U.S.C.
§ 103(a).
In consideration of the foregoing, it is hereby:
ORDERED that claims 1–5 of the ’420 patent have been shown to be
unpatentable; and
FURTHER ORDERED that Petitioner’s Motion to Exclude and
Patent Owner’s Motion to Exclude are dismissed.
This is a final decision. Parties to the proceeding seeking judicial
review of the decision must comply with the notice and service requirements
of 37 C.F.R. § 90.2.
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PETITIONER:

Daniel W. McDonald
Andrew J. Lagatta
William D. Schultz
Thomas J. Leach
Jeffrey D. Blake
MERCHANT & GOULD, P.C.
dmcdonald@merchantgould.com
alagatta@merchantgould.com
wschultz@merchantgould.com
tleach@merchantgould.com
jblake@merchantgould.com

PATENT OWNER:

Don Daybell
Davin M. Stockwell
ORRICK, HERRINGTON & SUTCLIFFE LLP
D2DPTABDocket@orrick.com
D2SPTABDocket@orrick.com