Battle of the Experts: Lessons From the PTAB

March 19, 2015

mike tobin

In a recent Inter Partes Review (IPR) proceeding before the Patent Trial and Appeal Board (the Board), Cardiocom, LLC (Cardiocom) successfully invalidated all 37 challenged claims of U.S. Patent No. 7,516,192 B2 (the ‘192 patent) held by Robert Bosch Healthcare Systems, Inc. (Bosch).  Cardiocom, LLC v. Robert Bosch Healthcare Systems, Inc. (IPR2013-00468, Paper 72, January 27, 2014).  The ‘192 patent relates to a network system for remotely monitoring individuals and for communicating information to the individuals through the use of script programs.  Applications of the ‘192 patent include remotely monitoring patients and providing interactive response systems.

During the IPR, Cardiocom asserted that several claims of the ‘192 patent were obvious over Wright Jr., combined with the knowledge of one skill in the art at the time of the invention.  In support, Cardiocom relied on the declaration of expert Dr. Robert Stone to explain why one of ordinary skill in the art would have modified Wright Jr. to arrive at Bosch’s claimed invention.  (IPR2013-00468, Paper 72, at page 11).

Bosch countered that Dr. Stone impermissibly used the teachings of the ‘192 patent to identify the goals and motivations for altering or combining the prior art.  Further, Bosch asserted that Wright Jr. would not have been modified to store its forms in a database (as recited in the ‘192 patent).  To support this notion, Bosch quoted the cross-examination testimony of Dr. Stone, stating that Wright Jr. was “complete for its purposes… and discloses nothing that would instruct or tell a person of ordinary skill in the art to combine Wright [Jr.] with something else.”  Id.

The Board rejected Bosch’s argument and noted that any obviousness analysis necessarily uses some hindsight reasoning, and may nonetheless be proper so long as it takes into account only knowledge which was within the level of ordinary skill.  Id. at page 10.  Here, Dr. Stone’s analysis was found to be based on knowledge within the level of ordinary skill in the art.  Moreover, the Board indicated that Bosch “does not identify any authority (and we are aware of none) for the proposition that a reference somehow must be incomplete to be compatible with another reference under 35 U.S.C. § 103(a).”  Id. at page 24.  Additionally, the Board cited Bosch’s own expert, Dr. Yadin David, to confirm that one of ordinary skill would have been able to modify Wright Jr. in the manner asserted by Cardiocom.  Id. at page 12 and 17.  As such, the Board concluded that 9 claims of the ‘192 patent were rendered obvious by Wright Jr. alone (Cardiocom had challenged 18 claims).

Next, Cardiocom asserted that all 37 claims of the ‘192 patent were obvious over Wright Jr. in combination with Goodman, relying again on the declaration of Dr. Stone.  Specifically, Cardiocom argued that one of ordinary skill would have combined the references because the script programs of Wright Jr. provide numerous advantages to the system of Goodman.  Id. at pages 22-23.

Bosch countered that one of ordinary skill in the art would not have combined Wright Jr. with Goodman.  In this regard, Bosch again relied on the cross-examination testimony of Dr. Stone.  This time as disclosing that there was no specific teaching or instruction in either Wright Jr. or Goodman that would have instructed a person of ordinary skill to combine the references.  Id. at page 23.

Again, the Board disagreed with Bosch and found that the combination of Wright Jr. and Goodman required nothing more than combining familiar elements to achieve a predictable result.  Id. at page 24.  Accordingly, the Board held that claims 1-37 were unpatentable over Wright Jr. and Goodman.

Lastly, Bosch attempted to provide secondary considerations of nonobviousness including commercial success, long-felt need, industry praise, teaching away by others, and copying.  In this regard, Bosch heavily relied on its expert, Dr. David, and his declaration with respect to Bosch’s monitoring system, the Health Buddy.

Bosch argued that tens of thousands Health Buddy systems were sold and relied on Dr. David as stating that he “understand[s]” that the Health Buddy “practiced each of the challenged claims.”  Id. at page 35.  However, “Dr. David [did] not provide any analysis to support that conclusion.”  Id.  Specifically, Dr. David’s testimony did not identify any particular claim language corresponding to features or operations of the Health Buddy.  Id. at page 36.  As such, Bosch’s evidence of commercial success was not sufficient because the Health Buddy was not shown to be the claimed monitoring system or apparatus.  Id. at page 37.  Likewise, Bosch’s other arguments as to secondary considerations fell flat for similar reasons.

As can be seen from the foregoing, expert testimony without legal foundations is insufficient to defeat a well-constructed IPR challenge.  Here, Bosch attempted to use Cardiocom’s expert against them.  However, Bosch’s arguments were not founded in the law and therefore had no effect on the Board’s analysis.  Additionally, with regard to secondary considerations of nonobviousness, Bosch and its expert failed to create the requisite nexus between the claimed invention and the commercial success.  On the other hand, as required for a finding of obviousness, Dr. Stone was able to articulate reasoning with rational underpinning to explain why the person of ordinary skill in the art would modify the references to arrive at Bosch’s claimed invention.


Michael Tobin


Mr. Tobin is primarily focused on doing patent prosecution in the chemical arts and related areas.