Teladoc Health, Inc.

Patent Trials and Appeals Board

Nov 3, 2021

IPR2021-00933 (P.T.A.B. Nov. 3, 2021)

Trials@uspto.gov Paper 12
571.272.7822 Entered: November 3, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

AMERICAN WELL CORPORATION,
Petitioner,
v.
TELADOC HEALTH, INC.,
Patent Owner.

IPR2021-00933
Patent 7,761,185 B2

Before LYNNE H. BROWNE, JOHN P. PINKERTON, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.

PINKERTON, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314

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I. INTRODUCTION
A. Background and Summary
American Well Corporation (“Petitioner”) filed a Petition (Paper 2,
“Pet.”) requesting inter partes review of claims 1–13 of U.S. Patent No.
7,761,185 B2 (Ex. 1001, “the ’185 patent”). Teladoc Health, Inc. (“Patent
Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.”).
We are authorized to institute an inter partes review where a petition
demonstrates a reasonable likelihood that the petitioner would prevail with
respect to at least one challenged patent claim. 35 U.S.C. § 314(a). We are
never compelled, however, to institute a review. Harmonic Inc. v. Avid
Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016). We may exercise our
discretion to deny review, for example, where a petition fails to identify
“with particularity” the challenges or evidence supporting them. Id. at 1363;
35 U.S.C. § 312(a)(3). “Even when a petitioner demonstrates a reasonable
likelihood” of prevailing with respect to at least one patent claim, institution
of review “remains discretionary.” Adaptics Limited v. Perfect Co.,
IPR2018-01596, Paper 20 at 17 (PTAB Mar. 6, 2019) (informative).
For the reasons explained below, we do not institute an inter partes
review.1

1 Because we determine not to institute an inter partes review based on the
merits of the four grounds asserted by Petitioner, we do not address the
parties’ arguments regarding discretionary denial. See Pet. 63–70; Prelim.
Resp. 53–66.
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B. Real Parties-in-Interest
Petitioner identifies itself as the real party-in-interest. Pet. 70. Patent
Owner identifies Teladoc Health, Inc. and InTouch Technologies, Inc. as the
real parties-in-interest. Paper 4, 1.
C. Related Matters
The parties inform us that the ’185 patent is the subject of Teladoc
Health, Inc. v. Am. Well Corp., No. 1:20-cv-01377-MN (D. Del.). Pet. 70;
Paper 4, 1.
D. Summary of the ’185 Patent
The ’185 patent, titled “Remote Presence Display Through Remotely
Controlled Robot,” issued July 20, 2010, from Application No. 11/542,912,
filed October 3, 2006. Ex. 1001, codes (21), (22), (45), (54).
The ’185 patent describes a system and method for providing patient
consultation by a physician that includes a remote station coupled to a
mobile robot. Id. at 1:7–8, 1:45–46. The robot and remote station contain
monitors, cameras, speakers, and microphones that allow for two-way video
conferencing between a physician at the remote station and a patient in the
vicinity of the robot. Id. at 2:13–16.
The system also includes a patient monitor that displays patient
information. Id. at 1:49–51. The patient monitor can be seen by the patient
and by the physician through the robot camera. Id. at 2:18–19. Figure 1 of
the ’185 patent, as annotated by Patent Owner, illustrates the robot system
and is reproduced below.
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See Prelim. Resp. 4 (citing Ex. 1001, Fig. 1). As shown in annotated Figure
1, the ’185 patent system includes mobile robot 12 (located at the far left)
and remote station 16 (located at the far right), which are coupled via
network 18, such as a broadband network. Id. at 2:23–31. Remote station
16 includes monitor 24, camera 26, microphone 28, and speaker 30. Id. at
2:36–39. Remote station 16 also includes input device 32 that allows the
healthcare practitioner to control the movement of robot 12. Id. at 2:54–56,
4:30–36. Robot 12 includes camera 38, monitor 40, microphone 42, and
speaker(s) 44. Id. at 2:49–51. Robot camera 38 is coupled to remote
monitor 24 (at the remote station), so that a user at remote station 16 can
view a patient. Id. at 2:56–58. Likewise, robot monitor 40 is coupled to
remote camera 26 so that the patient may view the user. Id. at 2:58–59.
Patient monitor 50 is typically located within a patient’s room at a
healthcare facility. Id. at 3:4–5. Patient monitor 50 is depicted in annotated
Figure 1 as a standard computer display screen, and is described as “any
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type of device that can display graphics, video images and text.” Id.
at 3:5–9. Remote control station 16 and patient monitor 50 are coupled
through network 18 to server 52 that contains electronic medical records of
the patient. Id. at 3:10–15. Medical records can be retrieved from server 52
and displayed by patient monitor 50. Id. at 3:16–19.
The system of the ’185 patent allows a physician to review patient
information with the patient, as shown in Figure 2, which is reproduced
below. Id. at 3:28–29.

Ex. 1001, Fig. 2. Figure 2 depicts a patient lying down with his head raised
slightly (in the foreground) and an image of the physician (located at remote
station 16) displayed on robot monitor 40 (in the background), with patient
monitor 50 on the right side of Figure 2. Id. at 3:28–31, Fig. 2. Robot 12
“displays an image of the physician [on monitor 40] so that the physician’s
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presence is projected into [the] patient’s room,” and patient monitor 50
“displays medical information that can be reviewed by the patient.” Id.
at 3:29–32. Robot camera 38 “allows the physician to see the patient and to
view the medical information displayed by the patient monitor.” Id.
at 3:33–35.
E. Illustrative Claims
Petitioner challenges claims 1–13. Claims 1 and 7 are independent
and are reproduced below (with subparagraph notations inserted as in the
Petition):
1. [1.P] A medical system for a patient, comprising:
[1.1] a patient monitor that displays patient information;
[1.2] a mobile robot that has a robot monitor, and a robot
camera that captures an image, said robot camera being capable
of viewing the patient and said patient monitor; and
[1.3] a remote station that is coupled to said mobile
robot, said remote station includes a remote station monitor that
displays the image captured by said robot camera and a remote
station camera that captures an image that is displayed by said
robot monitor.
7. [1.P] A method for interacting with a patient, comprising:
[7.1] moving a mobile robot that has a camera to view a
patient and a patient monitor;
[7.2] displaying patient information on the patient
monitor; and
[7.3] conducting a two-way video conference between
the patient and a medical personnel at a remote station that
controls movement of the robot.
Ex. 1001, 4:4–13, 4:27–33.
F. Asserted Grounds
Petitioner contends that the challenged claims would have been
unpatentable based on the following grounds:
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Claim(s) Challenged 35 U.S.C. §2 References/Basis
1–5 102 Wang4383
1, 3–6 102 Wang1284
1–5, 7–135 103(a) Wang438, David6
1–13 103(a) Wang421, David, Reeder7
Pet. 2–3. In support of its proposed grounds, Petitioner relies on the
Declaration of Gregory S. Fischer, Ph.D. See Ex. 1003. Patent Owner relies
on the Declaration of Michael Rosen, Ph.D. See Ex. 2001.
II. ANALYSIS
A. Applicable Law
“In an [inter partes review], the petitioner has the burden from the
onset to show with particularity why the patent it challenges is
unpatentable.” Harmonic, 815 F.3d at 1363 (citing 35 U.S.C. § 312(a)(3)).

2 The relevant sections of the Leahy-Smith America Invents Act (“AIA”),
Pub. L. No. 112–29, took effect on March 16, 2013. The application that
issued as the ’185 patent was filed prior to March 16, 2013. See Ex. 1001,
code (22). Thus, we apply the pre-AIA version of these statutes. See
35 U.S.C. § 100(i).
3 US 2005/0204438 A1, published September 15, 2005 (Ex. 1005).
Petitioner contends that Wang438 qualifies as prior art to the ’185 patent
under § 102(b). Pet. 3.
4 US 2007/0291128 A1, published December 20, 2007 (Ex. 1006).
Petitioner contends that Wang128 qualifies as prior art to the ’185 patent
under § 102(e). Pet. 3.
5 See infra at 24, n.11.
6 US Patent 5,544,649, issued August 13, 1996 (Ex. 1009). Petitioner
contends that David qualifies as prior art to the ’185 patent under § 102(b).
Pet. 3.
7 US 2002/0044059 A1, published April 18, 2002 (Ex. 1008). Petitioner
contends that Reeder qualifies as prior art to the ’185 patent under § 102(b).
Pet. 3.
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Under 35 U.S.C. § 312(a)(3), a petition for inter partes review “may
be considered only if . . . the petition identifies, in writing and with
particularity, each claim challenged, the grounds on which the challenge to
each claim is based, and the evidence that supports the grounds for the
challenge to each claim” (emphases added). Additional Board regulations
further address the showing required in a petition. In particular, 37 C.F.R.
§ 42.104(b)(4) requires that “[t]he petition must specify where each element
of the claim is found in the prior art . . . relied upon,” and 37 C.F.R.
§ 42.104(b)(5) adds that a petition must “identify[ ] specific portions of the
evidence that support the challenge.” “The Board may exclude or give no
weight to the evidence where a party has failed to state its relevance or to
identify specific portions of the evidence that support the challenge.”
37 C.F.R. § 42.104(b)(5). Similarly, 37 C.F.R. § 42.22(a)(2) requires that a
petition “must include . . . [a] full statement of the reasons for the relief
requested, including a detailed explanation of the significance of the
evidence” (emphasis added).
The Board has denied petitions that lack particularity or present
deficient or conclusory analysis. See Adaptics, Paper 20 at 17–18. Our
reviewing court describes this particularity requirement as “of the utmost
importance.” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d
1359, 1369 (Fed. Cir. 2016) (quoting Section 312(a)(3)).
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The requirement for particularity “takes on heightened importance
when considered in conjunction with” the “‘all-or-nothing’ approach” that
applies to decisions on institution. Adaptics, Paper 20 at 17. Under that
approach, we must execute “a binary choice” to institute on all grounds
asserted in a petition or none. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348,
1354, 1359–60 (2018); 35 U.S.C. § 314(a); Patent Trial and Appeal Board
Consolidated Trial Practice Guide, 64 (Nov. 2019)8 (“The Board will not
institute on fewer than all claims or all challenges in a petition.”).
Petitioner’s asserted grounds of unpatentability are based on
anticipation under 35 U.S.C. § 102 and obviousness under 35 U.S.C.
§ 103(a). Pet. 2.
A claim is anticipated, and therefore unpatentable under 35 U.S.C.
§ 102, if all its limitations are disclosed either explicitly or inherently in a
single prior art reference. In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir.
1997). That single prior art reference must disclose all the limitations of the
claim “arranged or combined in the same way as in the claim.” Net
MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
A claim is unpatentable under 35 U.S.C. § 103(a) if “the differences
between the subject matter sought 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.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations, including: (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art;

8 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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(3) the level of skill in the art; and (4) when in evidence, objective evidence
of obviousness or nonobviousness, that is, secondary considerations.9 See
Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
Additionally, the obviousness inquiry typically requires an analysis of
“whether there was an apparent reason to combine the known elements in
the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness”)); see In re Warsaw Orthopedic, Inc., 832 F.3d 1327, 1333
(Fed. Cir. 2016). Petitioner has the burden to demonstrate both “that a
skilled artisan would have been motivated to combine the teachings of the
prior art references to achieve the claimed invention, and that the skilled
artisan would have had a reasonable expectation of success in doing so.”
Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359,
1367–68 (Fed. Cir. 2016).
B. Level of Ordinary Skill in the Art
The level of skill in the art is “a prism or lens” through which we view
the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d
1350, 1355 (Fed. Cir. 2001). Petitioner contends that a person having
ordinary skill in the art at the time of the filing date
would have had at least a Bachelor’s of Science Degree (or
equivalent) in an academic area emphasizing electrical
engineering, computer engineering, computer science,
biomedical engineering, or a related technical field, and at least
2–3 years of experience in the field of robotics, telepresence

9 On this record, the parties do not address objective indicia of
nonobviousness, which accordingly do not form part of our analysis.
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systems, or both (e.g., familiarity with wireless communication
technology, biomedical robotic systems, etc.).
Pet. 8 (citing Ex. 1003 ¶¶ 23–24).
Patent Owner agrees with Petitioner’s definition of a person of
ordinary skill in the art. Prelim. Resp. 11 (citing Ex. 2001 ¶ 36).
Based on our review of the limited record, we determine that
Petitioner’s definition is consistent with the technology and skill reflected in
the prior art of record and the specification of the ’185 patent. Thus, for
purposes of this decision, we apply Petitioner’s definition of the level of
ordinary skill in the art.
C. Claim Construction
“In an inter partes review proceeding, a claim of a patent . . . shall be
construed using the same claim construction standard that would be used to
construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R.
§ 42.100(b) (2019). Under this standard, we construe the claim “in
accordance with the ordinary and customary meaning of such claim as
understood by one of ordinary skill in the art and the prosecution history
pertaining to the patent.” Id.; see also Phillips v. AWH Corp., 415 F.3d
1303, 1312–13 (Fed. Cir. 2005) (en banc).
Petitioner does not propose a specific construction for any claim term
in this proceeding. Pet. 3. Instead, Petitioner asserts that “[a]ll [claim] terms
should be given their ordinary and customary meaning,” and “Petitioner also
reserves the right to identify terms for construction as may become
necessary in the related District Court case.” Id. Patent Owner agrees with
Petitioner that no formal claim constructions are necessary at this point.
Prelim. Resp. 11.
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We determine that we need not expressly construe any claim terms to
resolve the parties’ disputes on the current record. See, e.g., Nidec Motor
Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed.
Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and
only to the extent necessary to resolve the controversy.’” (quoting Vivid
Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
D. Ground 1: Claims 1–5 as Anticipated by Wang438
Petitioner contends that claims 1–5 are anticipated by Wang438. Pet.
21–36.
1. Summary of Wang438 (Ex. 1005)
Wang438 is titled “Graphical Interface for a Remote Presence
System” and is directed to “[a] robot system that includes a remote station
and a robot.” Ex. 1005, code (54), ¶ 10, Fig. 1. Figure 1 of Wang438, as
annotated by Patent Owner, is reproduced below.
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Prelim. Resp. 12. Annotated Figure 1 of Wang438 depicts robot 12 (at the
far left) wirelessly coupled to remote station 16 (at the far right) through
network 18 (between robot 12 and remote station 16). Ex. 1005 ¶¶ 18–19.
Remote station 16 includes computer 22 having monitor 24, camera 26,
microphone 28, speaker 30, and input device 32, such as a joy stick or
mouse, which permits a user at remote station 16 to move robot 12. Id.
Robot 12 includes movement platform 34 attached to robot housing 36. Id.
at ¶ 19. Attached to robot housing 36 are camera 38, monitor 40,
microphone(s) 42, speaker(s) 44, and antenna 46, which is wirelessly
coupled to antenna 48 of base station 14. Id.
Robot 12 is also coupled to medical monitoring device 50. Id. at
¶ 21. Medical monitoring device 50 “can take medical data from a patient,”
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and may be “a stethoscope, a pulse oximeter and/or an EKG10 monitor.” Id.
Medical monitoring device 50 contains wireless transmitter 52 that transmits
the patient data to robot 12, and robot 12 “can then transmit the data to the
remote station 16.” Id.
2. Claim 1
In its Preliminary Response, Patent Owner argues that Wang438 does
not anticipate claim 1 because it does not disclose “a patient monitor that
displays patient information,” as recited in limitation 1.1. Prelim. Resp.
22–26. Patent Owner also argues Wang438 does not anticipate claim 1
because it does not disclose “a robot camera capable of viewing the patient
and the patient monitor,” as recited in limitation 1.2. Id. at 26–27. Because
we agree with Patent Owner that Wang438 does not disclose limitation 1.1,
we focus our discussion below on that limitation.
a) Petitioner’s Arguments
Petitioner argues that Wang438 discloses “a patient monitor (medical
monitoring device 50 . . .) that displays patient information (e.g., an EKG
waveform; the patient’s name; the patient’s heart rate as a numeric value;
and/or the patient’s SpO2 oxygen saturation as a numeric percentage).” Pet.
22 (citing Ex. 1005 ¶ 21; Ex. 1019 (Ex. Q, 1–3, identifying third party
diagnostic equipment as claimed patient monitor); Ex. 1017 (GE
CARESCAPE V100 Brochure); Ex. 1018 (GE CARESCAPE V100
Operators Manual). Petitioner notes that paragraph 21 of Wang438 states
that “medical monitoring device 50 can take medical data from a patient.

10 “EKG” is an acronym for the German procedure “elektrokardiogramm.”
In English, this procedure is known as an “electrocardiogram,” which has
the acronym “ECG.” See https://en.wikipedia.org/wiki/Electrocardiography.
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[By way of] example, the medical monitoring device 50 may be a
stethoscope, a pulse oximeter and/or an EKG monitor.” Id. at 22–23 (citing
Ex. 1005 ¶ 21). Petitioner then states that an exemplary prior art pulse
oximeter is the Nellcor N-200 that “displays patient information (oxygen
saturation and pulse rate).” Id. at 23–24 (citing Ex. 1011, 16; Ex. 1003
¶¶ 58–59). Petitioner also asserts that an EKG monitor displays at least the
patient’s EKG as a waveform and other information such as the patient’s
name and heart rate. Id. at 24 (citing Ex. 1003 ¶¶ 60–68; Ex. 1012 (GE-
MAC 1200); Ex. 1013 (Phillips-PageWriter)). According to Petitioner, the
GE-MAC-1200 and Phillips-PageWriter are prior art monitors that display
this patient information. Id. at 24–28 (citing Ex. 1012, 9, 27, 36, 55; Ex.
1013, 14, 45–47).
b) Patent Owner’s Arguments
Patent Owner argues that, contrary to Petitioner’s arguments,
“nowhere does Wang438 disclose that the medical monitoring device 50
displays any patient information, much less the specific information of ‘an
EKG waveform; the patient’s name; the patient’s heart rate as a numeric
value; and/or the patient’s SpO2 oxygen saturation as a numeric
percentage.’” Prelim. Resp. 22–23 (citing Ex. 2001 ¶ 59). Patent Owner
also argues that Petitioner’s reliance on secondary references external to
Wang438 cannot support an anticipation challenge based on Wang438,
especially where they are not incorporated by reference into Wang438 and
Petitioner does not assert that the medical equipment described in the
secondary references is inherent to Wang438’s monitoring device. Id. at
24–25 (citing Ex. 2001 ¶ 60). Patent Owner further argues that by citing
these secondary references, Petitioner is attempting to effectively turn
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ground 1 into an obviousness ground and gain the benefit of these
disclosures without fulfilling the obligation of demonstrating a motivation to
combine. Id. at 25.
c) Analysis
We agree with Patent Owner that Petitioner has not sufficiently shown
that Wang438 discloses limitation 1.1. Initially, we agree with Patent
Owner that Wang438 does not disclose that monitoring device 50 displays
any patient information. Id. at 23–24 (citing Ex. 2001 ¶ 59). Although
Petitioner relies on paragraph 21 of Wang438, we agree with Patent Owner
that paragraph 21 makes clear that the purpose of medical monitoring device
50, which may be a stethoscope, pulse oximeter, or EKG monitor, is to “take
medical data from a patient.” Id. at 23 (citing Ex. 1005 ¶ 21). In other
words, as Patent Owner states, “monitoring device 50 is a device that
monitors data, not a ‘monitor’ that displays the data.” Id. (citing Ex. 1005
¶ 21; Ex. 2001 ¶ 59) (emphasis omitted). Paragraph 21 does not disclose
that monitoring device 50 displays any patient information. Instead, as
Patent Owner argues, paragraph 21 of Wang438 discloses that monitoring
device 50 may contain wireless transmitter 52 (as shown in Figure 1) that
transmits the patient data to robot 12, which can then transmit the data to
remote station 16. Id. at 23–24 (citing Ex. 1005 ¶ 21).
We also agree with Patent Owner that Petitioner’s secondary
references external to Wang438 cannot support an anticipation challenge
based on Wang438. In that regard, Petitioner cites to five secondary
references: Nellcor N-200 pulse oximeter operator’s manual (Ex. 1011, 16);
GE-MAC 1200 ECG monitor operator’s manual (Ex. 1012, 9, 27); Phillips-
PageWriter ECG monitor instructions for use (Ex. 1013, 14, 45–47); GE
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CARESCAPE V100 vital signs monitor brochure (Ex. 1017, 5); and, GE
CARESCAPE V100 vital signs monitor operator’s manual (Ex. 1018, 13).
See Pet. 23–28. None of these references were identified in the grounds set
forth in the Petition. See Pet. 2–3. For the reasons stated below, we
determine we cannot consider these secondary references because doing so
would violate the requirement of Section 312(a)(3) for an inter partes review
petition to identify “with particularity . . . the grounds on which the
challenge to each claim is based, and the evidence that supports the grounds
for the challenge to each claim.” See 35 U.S.C. § 312(a)(3).
We also determine we cannot consider these secondary references
because ground 1 challenges claim 1 for anticipation under 35 U.S.C. § 102
based on Wang438, which requires Petitioner to show that the single
reference Wang438 discloses, either expressly or inherently, the limitations
of claim 1. See Schreiber, 128 F.3d at 1477. Permitting Petitioner to argue
Wang438 together with the secondary references would, as Patent Owner
argues, convert the basis for ground 1 from anticipation to obviousness
under 35 U.S.C. § 103(a). See Prelim. Resp. 25. Thus, we also determine
we cannot consider Petitioner’s secondary references because doing so
would be contrary to the requirement for the petition to identify “with
particularity . . . the grounds on which the challenge to each claim is based”
(35 U.S.C. § 312(a)(3)) and the Board’s rule requiring a petition for inter
partes review to identify the statutory grounds on which the challenge to the
claim is based (37 C.F.R. § 42.104(b)).
We further agree with Patent Owner’s argument that the secondary
references are not incorporated by reference into Wang438 and Petitioner
does not assert that the medical equipment described in the secondary
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references is inherent to Wang438’s monitoring device.11 Prelim. Resp.
24–25 (citing Ex. 2001 ¶ 60). In addition, we note Petitioner has not
demonstrated that the secondary references qualify as prior art printed
publications under § 102(b), which would be required for Petitioner to rely
on these references because under 35 U.S.C. § 311(b), a petitioner in an inter
partes review may only challenge the claims of a patent based on “prior art
consisting of patents or printed publications.”
d) Summary
For the reasons discussed above, we determine that the information
presented in the Petition does not demonstrate a reasonable likelihood that
claim 1 is unpatentable for anticipation under 35 U.S.C. § 102 over
Wang438.
3. Claims 2–5
Each of claims 2–5 depends directly from claim 1. See Ex. 1001,
6:14–24. Patent Owner argues, and we agree, that because claims 2–5
depend from claim 1, each of these claims is also not anticipated by
Wang438 for at least the reasons claim 1 is not anticipated. Prelim. Resp.
28–30. Thus, for the reasons discussed above regarding claim 1, we also
determine that Petitioner has not demonstrated a reasonable likelihood that

11 Although an additional reference may be used to show that a characteristic
not expressly discussed in the anticipating reference is an inherent
characteristic, we see no indication that Petitioner is relying on an inherency
theory. See Cont’l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268
(Fed. Cir. 1991) (“Such evidence must make clear that the missing
descriptive matter is necessarily present in the thing described in the
reference, and that it would be so recognized by persons of ordinary skill.”)
Rather, Petitioner merely relies on these references to show “exemplary”
devices. See Pet. 23–28.
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claims 2–5 are unpatentable for anticipation under 35 U.S.C. § 102 over
Wang438.
E. Ground 2: Claims 1 and 3–6 as Anticipated by Wang128
Petitioner contends that Wang128 anticipates claims 1 and 3–6 of the
’185 patent. Pet. 36–43.
1. Summary of Wang128 (Ex. 1006)
Wang128, titled “Mobile Teleconferencing System That Projects An
Image Provided By A Mobile Robot,” relates generally to “[a] remote
controlled robot system that includes a mobile robot and a remote control
station.” Ex. 1006, code (54), ¶ 8. Figure 1 of Wang128 is reproduced
below.
Ex. 1006, Fig. 1. Figure 1 of Wang128 depicts telepresence system 10
comprising robot 12 (located at the far left) and remote control station 16
(located at the far right), which are coupled via network 18. Ex. 1006
¶ 17, Fig. 1. Robot 12 includes movable platform 36 that is attached to robot
housing 38. Id. at ¶ 19. Also attached to robot housing 38 are cameras 40
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and 42, monitor 44, microphone(s) 46 and speaker(s) 48. Id. Camera 40
may provide a wide angle view, and camera 42 may contain a zoom lens to
provide a narrow angle view. Id. at ¶ 20. Robot 12 may include one or
more I/O inputs 70, such as USB ports, and electronic device 72, such as a
laptop computer or an electronic camera, can be connected to one or more of
ports 70. Id. at ¶ 25. An image can be transmitted from electronic device 72
to remote station 16 through mobile robot 12, and the image provided by
electronic device 72 can be projected by projector 60. Id.
Remote control station 16 includes computer 22 that has monitor 24,
camera 26, microphone 28, and speaker 30. Id. at ¶ 18. Computer 22 also
includes input device 32, such as a joystick and/or a mouse, and keyboard
34. Id. Projector 60 is connected to remote control station 16. Id. at ¶ 22.
Remote control station 16 is typically located in a place that is remote from
robot 12. Id. ¶ 18.
System 10 allows a user at remote control station 16 to move robot 12
through operation of input device 32. Id. at ¶ 19. Robot cameras 40 and 42
are coupled to remote monitor 24, so that a user at remote station 16 can
view a patient. Id. Robot monitor 44 is coupled to remote camera 26, so
that the patient can view the user. Id. Microphones 28 and 46, and speakers
30 and 48, allow for audible communication between the patient and the
user. Id.
2. Claim 1
Patent Owner argues that Wang128 fails to disclose limitation 1.1, “a
patient monitor that displays patient information,” and limitation 1.2, “a
robot camera capable of viewing the patient and the patient monitor.”
Prelim. Resp. 30–33. Because we agree with Patent Owner that Wang128
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does not disclose limitation 1.1, we focus our discussion below on that
limitation.
a) Petitioner’s Arguments
Petitioner contends that Wang128 discloses limitation 1.1. Pet. 37–38
(citing Ex. 1003 ¶¶ 83–87). In particular, Petitioner argues that “Wang128
discloses a patient monitor (electronic device 72) that displays patient
information (e.g., video and/or graphical images used during a
teleconference with a patient and/or a healthcare practitioner with the
patient).” Id. at 37 (citing Ex. 1006 ¶¶ 25, 28; see also Ex. 1019 (Complaint,
Ex. Q at 1–2 (identifying a “Horus Scope,” which is a type of digital camera,
as the claimed patient monitor))). Petitioner asserts Wang128 explains an
image, that “may be video and/or graphical in nature,” can be transmitted
from electronic device 72 to remote station 16 through robot 12. Id. at 38
(citing Ex. 1006 ¶ 25; see also ¶ 28 (confirming that the “screen of the
computer 72 (see Fig. 1) can be projected by projector 60”), claims 4–6;
Ex. 1003 ¶¶ 84–86))). Petitioner also asserts that “[t]he image transmitted
from electronic device 72 to remote station 16 for display by projector 60 is
also displayed on the screen of electronic device 72 (e.g., on the screen of
the laptop or the screen of the digital camera).” Id. (citing Ex. 1003 ¶¶ 84–
86).
b) Patent Owner’s Arguments
Patent Owner contends that claim 1 is not anticipated by Wang128
because Wang128 fails to disclose “a patient monitor that displays patient
information,” as recited in limitation 1.1. Prelim. Resp. 30–31. Patent
Owner argues that, contrary to the assertion in the Petition, “nowhere does
Wang128 disclose that the electronic device 72 displays any patient
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information, much less the specific information of ‘video and/or graphical
images used during a teleconference with a patient.’” Id. at 31 (citing
Pet. 37; Ex. 2001 ¶ 76). Patent Owner states that although Wang128
discloses that an image can be transmitted from electronic device 72 to
remote station 16 through robot 12, where the image “may be video and/or
graphical in nature,” “Wang128 is silent regarding such an image being
patient information.” Id. at 31–32 (citing Ex. 1006 ¶ 25; Ex. 2001 ¶ 76).
c) Analysis
We agree with Patent Owner that Petitioner has not sufficiently shown
that Wang128 discloses limitation 1.1. In particular, we agree with Patent
Owner that, contrary to Petitioner’s argument, Wang128 does not disclose
that “electronic device 72 displays any patient information, much less the
specific information of ‘video and/or graphical images used during a
teleconference with a patient and/or a healthcare practitioner.’” Prelim.
Resp. 31 (citing Ex. 2001 ¶ 76). Petitioner cites paragraphs 25 and 28 of
Wang128 to support its argument that electronic device 72 displays patient
information (e.g., video and/or graphical images used during a
teleconference with a patient and/or a healthcare practitioner with the
patient). Pet. 37 (citing Ex. 1006 ¶¶ 25, 28). However, neither of these
paragraphs discloses that electronic device 72 displays patient information or
video and/or graphical images used during a teleconference. Instead, as
Patent Owner argues, and we agree, Wang128 discloses that an image can be
transmitted from device 72 to remote station 16 through robot 12, where the
image “may be video and/or graphical in nature.” Prelim. Resp. 31 (citing
Ex. 1006 ¶ 25, Fig. 1). Patent Owner also argues, and we agree, that
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“Wang128 is silent regarding such an image being patient information.” Id.
at 32 (citing Ex. 1006 ¶ 25; Ex. 2001 ¶ 76).
Moreover, we are not persuaded by Petitioner’s assertion that “[t]he
image transmitted from electronic device 72 to remote station 16 for display
by projector 60 is also displayed on the screen of electronic device 72 (e.g.,
on the screen of the laptop or the screen of the digital camera).” Pet. 38
(citing Ex. 1003 ¶¶ 84–86) (emphasis added). Petitioner’s assertion is
conclusory and unsupported by any citation to Wang128.
Petitioner relies on Dr. Fischer’s testimony to bridge the gap in
Wang128’s teachings. Dr. Fischer states that a person of ordinary skill in
the art “would have understood that the image transmitted from electronic
device 72 to remote station 16 for display by projector 60 is also displayed
on the screen of electronic device 72” because Wang128 discloses remote
station computer 22 may use Microsoft OS, WINDOWS XP or LINUX
operating systems, which a person of ordinary skill would have understood
could also be run on computer 72 and which “would allow one to easily
share a screen of the computer 72 on projector 60 and/or a remote station
monitor.” See Ex. 1003 ¶ 86.
Like ground 1, ground 2 is also based on anticipation. Like ground 1,
Petitioner relies on extrinsic evidence to teach the missing limitation in
Wang128, namely, Dr. Fischer’s testimony.12 However, Dr. Fischer does

12 As with ground 1, we see no indication that Petitioner is relying on an
inherency theory in ground 2. See Cont’l Can Co., 948 F.2d at 1268 (“To
serve as an anticipation when the reference is silent about the asserted
inherent characteristic, such gap in the reference may be filled with recourse
to extrinsic evidence. Such evidence must make clear that the missing
descriptive matter is necessarily present in the thing described in the
reference.”).
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not provide sufficient support or explanation for his conclusions. Moreover,
Dr. Fischer’s testimony about the capabilities of these operating systems
cannot be considered because neither of these operating systems nor any
prior art printed publication concerning either of them is identified in the
Petition as the basis for the challenge in ground 2. See 35 U.S.C. § 312(a)(3)
(petition must identify “with particularity . . . the grounds on which the
challenge to each claim is based, and the evidence that supports the grounds
for the challenge to each claim.”); see also 37 C.F.R. § 42.104(b); 35 U.S.C.
§ 311(b) (petitioner in an inter partes review may only challenge the claims
of a patent based on “prior art consisting of patents or printed
publications.”).
Thus, we conclude Petitioner does not demonstrate a reasonable
likelihood of prevailing on its challenge to claim 1 as anticipated by
Wang128.
3. Claims 3–6
Each of claims 3–6 depends directly from claim 1. See Ex. 1001,
6:17–26. Patent Owner argues, and we agree, that because claims 3–6
depend from claim 1, each of these claims is also not anticipated by
Wang128 for at least the reasons claim 1 is not anticipated. Prelim. Resp.
33–35. Thus, for the reasons discussed above regarding claim 1, we also
determine Petitioner does not demonstrate a reasonable likelihood of
prevailing on its challenge to claims 3–6 as anticipated by Wang128.
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F. Ground 3: Claims 1–5 and 7–13 as Obvious Over Wang438
and David
Petitioner contends that claims 1–5 and 7–1313 would have been
obvious over Wang438 and David. Pet. 43–49.
1. Summary of David (Ex. 1009)
David is titled “Ambulatory Patient Health Monitoring Techniques
Utilizing Interactive Visual Communication.” Ex. 1009, code (54), 2:8–11.
David describes “[a]n ambulatory (in the home) patient health monitoring
system” wherein patient 16 is monitored by health care worker or
practitioner 112 at central station 20, while the patient is at remote location
10. Id., code (57), 8:59–67, 9:1–3. Cameras are provided at remote site 10
and at central station 20 so patient 16 and health practitioner 112 can have a
videoconference. Id., code (57), 14:34–40. Figure 6 of David is reproduced
below.

13 We note Petitioner does not identify claim 13 in its grounds chart or
heading for ground 3. See 2, 43. However, because Petitioner argues claim
13 in the Petition, we consider ground 3 as including claim 13. See id. at 49.
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Figure 6 is an “illustration of one possible arrangement of the medical
condition measuring, sensing and telecommunications equipment in a
patient’s home environment.” Ex. 1009, 7:11–13. In this example, David’s
patient monitoring system includes “Criticare monitor unit 100 to which
patient 16 is hooked up” and which “measures the pulse rate, blood pressure,
oximetry, and temperature of the patient and displays the information on the
screen of the monitor unit 100.” Id., 14:4–9.
As shown in Figure 6, patient 16 is seated in chair 105 (with the back
of the chair facing the reader) and video camera 22 is mounted in cabinet
104 a short distance away from patient 16 so that the field of view of camera
22 includes the entire patient’s body, as well as the screen of monitor 100.
Id. at 14:14–22. Video camera 22 then films patient 16 or the screen of the
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patient monitoring equipment and transmits the audio-visual signal via
modulator 46 through cable TV line 48 from home 10 to cable television
station 60. Id. at 14:22–26. Suitable servomotors (not shown) are provided
within cabinet 104 such that the camera focus and orientation can be
controlled by the monitoring health practitioner at the central station. Id. at
14:26–30. Camera 22 may also include start up controls which can be
remotely operated by the health practitioner to enable the health practitioner
to initiate patient monitoring via camera 22. Id. at 14:30–33.
In David’s system, the audio-visual signal captured by camera 22 is
transmitted over communications network 12 to central station 20. Id.,
8:64–67, 9:1–3. Similarly, patient 16 receives an audio-visual signal from
health practitioner 112 at central station 20 via communications network 12.
Id. at 9:6–10. If the medical data is being transmitted simultaneously via
telephone line 114 or digitally through cable line 48, then health practitioner
112 can have the information displayed at the central station, in which case
the display of monitor 100 is redundant. Id. at 14:46–51. However, the
display of monitor 100 serves as a “useful backup if the digital transmission
is interrupted or fails.” Id. at 14:51–52.
2. Claims 1–5
Petitioner asserts that Wang438 discloses each element of claim 1.
Pet. 43. However, for the reasons discussed above regarding ground 1, we
determine that Wang438 does not disclose limitation 1.1, “a patient monitor
that displays patient information.” See supra § II.D.2(c).
Petitioner contends that Wang438 in view of David also discloses
each element of claim 1. Pet. 43 (citing Ex. 1003 ¶¶ 98–106). Petitioner
argues that “[l]ike Wang438’s robot 12, David’s patient monitoring system
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includes servomotors that allow the camera focus and orientation to be
remotely controlled by the healthcare practitioner from central station 20.”
Id. at 45 (citing Ex. 1009, 14:26–30). Petitioner further argues David’s
camera 22 is oriented in the direction of patient 16 and “the field of view”
includes the patient’s body, as well as the screen of monitor 100. Id. (citing
Ex. 1009, 14:18–30). Petitioner asserts that although claim 1 does not
require the mobile robot to view the patient and the patient monitor (but only
the capability to do so), Wang438 discloses moving robot 12 to view the
patient. Id. at 45 (citing Ex. 1005 ¶ 19; Ex. 1003 ¶ 102). Petitioner then
asserts it would have been obvious in view of David to move Wang438’s
robot 12 to view the patient monitor (medical monitoring device 50) as well.
Id. at 45–46 (citing Ex. 1003 ¶¶ 102–106).
According to Petitioner, a person of ordinary skill would have been
motivated to move Wang438’s robot 12 to view the patient monitor for the
reason disclosed in David—i.e., to “serve as a useful backup[] if the digital
transmission” of patient information from Wang438’s medical monitoring
device 50 to Wang438’s remote control station 16 “is interrupted or fails.”
Id. at 45 (citing Ex. 1009, 14:51–52; see also 14:40–45). Petitioner also
asserts a person of ordinary skill would have been motivated to move
robot 12 to view patient monitors that were incapable of communicating
with Wang438’s robot 12 (e.g., patient monitors that lacked a wired or
wireless output and patient monitors that lacked digital communication
protocols for communicating with Wang438’s robot 12). Id. at 45–46 (citing
Ex. 1003 ¶ 104). Otherwise, Petitioner states that the “user at Wang438’s
remote control station 16 would not be able to obtain patient information
from the patient monitor.” Id. at 46. Petitioner further asserts that the
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proposed combination would have been merely “the application of a known
technique (viewing a patient and patient monitor during a tele-conference)
with a known system (Wang438’s robotic system) in a common field of
endeavor (telepresence systems for remotely monitoring patients).” Id.
(citing Ex. 1003 ¶ 106). Accordingly, Petitioner argues that in the
“Wang438-David combination, Wang438’s robot 12 and medical
monitoring device 50 each continue to work as they always have.” Id.
In response, Patent Owner argues that a person of ordinary skill would
not have been motivated to combine Wang438 and David. Prelim. Resp.
35–38. In particular, Patent Owner argues that David criticizes robotic
systems such as Wang438 for several reasons and, therefore, a person of
ordinary skill would not have been motivated to combine aspects of David
with Wang438 “in view of David’s warning not to do so.” Id. 36 (citing
Ex. 1009, 3:61–4:12; Ex. 2001 ¶ 90). Patent Owner also argues that a
person of ordinary skill would not have been motivated to use Wang438’s
robot 12 to view monitoring device 50 to serve as a useful backup because if
the transmission from device 50 to Wang438’s remote station 16 was
interrupted or failed, then the transmission of images from robot camera 38
to remote station 16 would also fail because both transmissions “travel
through almost entirely the same path.” Id. at 36–37 (citing Ex. 1005
¶¶ 18–19, 21–22, Fig. 1; Ex. 2001 ¶ 91).
Patent Owner further argues a person of ordinary skill would not have
been motivated to move Wang438’s robot 12 to view monitoring device 50
that was incapable of communicating with Wang438’s robot because in the
proposed combination, “monitoring device 50 is capable of communicating
with Wang438’s robot” and, therefore, “the offered motivation merely cures
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a problem with Wang438 that doesn’t actually exist in the proposed
combination.” Id. at 37–38 (citing Ex. 2001 ¶ 92). Lastly, Patent Owner
argues a person of ordinary skill would not have been motivated to move
Wang438’s robot 12 to view monitoring device 50 for the simple reasons
that a person of ordinary skill would have understood that “the medical
monitoring device 50 does not display any patient information, as discussed
above, and therefore there would be no reason to point the camera at it.” Id.
at 38.
Patent Owner also asserts that Petitioner’s proposed combination of
Wang438 and David “retains the Wang438 system completely intact but
relies on David to supply a motivation ‘to move Wang438’s robot 12 to view
the [medical monitoring device 50] as well.’” Id. at 38–39. However,
Patent Owner further asserts that the proposed combination of Wang438 and
David still does not disclose or teach either “a patient monitor that displays
patient information” or “a robot camera capable of viewing the patient and
the patient monitor,” as required by limitations 1.1 and 1.2 of claim 1.
Even assuming Petitioner has shown a person of ordinary skill in the
art would have been motivated by David to move Wang438’s robot 12 to
view medical monitoring device 50, Patent Owner argues, and we agree, that
Petitioner’s combination of Wang438 and David “retains the Wang438
system completely intact” and relies on David to supply a motivation “to
move Wang438’s robot 12 to view the [medical monitoring device 50] as
well.” Prelim. Resp. 38–39 (citing Pet. 45–46). However, as Patent Owner
also argues, the proposed combination of Wang438 and David still does not
disclose “a patient monitor that displays patient information” because, as we
determine above in regard to limitation 1.1 in ground 1, Wang438 does not
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disclose that medical monitoring device 50 displays any patient information.
Id. at 39 (citing Ex. 1005 ¶21; Ex. 2001 ¶ 95; see supra § II.D.2(c)). Thus,
as Patent Owner further argues, because the proposed combination in ground
3 for claim 1 “does not provide any further teaching of a patient monitor that
displays patient information,” the proposed combination also does not
disclose a patient monitor that displays patient information. Id. (citing Pet.
45–56; Ex. 2001 ¶ 96).
Accordingly, we conclude Petitioner does not demonstrate a
reasonable likelihood of prevailing on its challenge to claim 1 as obvious
over the combination of Wang438 and David. Each of claims 2–5 depends
directly from claim 1. Ex. 1001, 6:14–24. Thus, for the reasons discussed
above regarding claim 1, we also determine Petitioner does not demonstrate
a reasonable likelihood of prevailing on its challenge to claims 2–5 as
obvious over the combination of Wang438 and David.
3. Claims 7–12
Similar to limitation 1.1, limitation 7.2 of independent claim 7 recites
“displaying patient information on the patient monitor.” Ex. 1001, 6:30. In
regard to limitation 7.2, Petitioner merely states, “See Ground 1, element
[1.1].” Pet. 47. However, Petitioner’s statement is unavailing. For the
reasons discussed above regarding limitation 1.1 in ground 1, we determine
Wang438 does not disclose “a patient monitor that displays patient
information,” and therefore, we also determine Wang438 does not disclose
or teach the substantially similar limitation 7.2, which recites “displaying
patient information on the patient monitor.” See supra § II.D.2(c).
Accordingly, we conclude Petitioner does not demonstrate a
reasonable likelihood of prevailing on its challenge to claim 7 as obvious
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over the combination of Wang438 and David. Each of claims 8–12 depends
directly from claim 7. Ex. 1001, 6:34–45. Thus, for the reasons discussed
above regarding claim 7, we also determine Petitioner does not demonstrate
a reasonable likelihood of prevailing on its challenge to claims 8–12 as
obvious over the combination of Wang438 and David.
G. Ground 4: Claims 1–13 as Obvious Over Wang438, David,
and Reeder
Petitioner contends that the combination of Wang438, David, and
Reeder render claims 1–13 obvious. Pet. 49–63.
1. Summary of Reeder (Ex. 1008)
Reeder is titled “Patient Point of Care Computer System” and
describes computer system 10 that includes computer 12 for use by the
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caregiver at a patient point of care in a hospital or other medical facility.
Ex. 1008, code (54), ¶¶ 2, 85. Figure 1 of Reeder is reproduced below.

Figure 1 is a block diagram illustrating components of Reeder’s
patient point of care computer system 10. Id. at ¶ 27. “Computer system 10
is designed to provide improved access to data at the point of care,” and
“organizes numerous monitors, treatment devices, and therapy devices and
facilitates record keeping by providing a real time electronic chart for the
patient.” Id. at ¶ 84. Computer system 10 includes computer 12 that is
coupled to display 16, which includes first and second displays 18 and 20,
input device 22 (such as a pen or stylus based input, keyboard, mouse,
joystick or other suitable input device), data monitors 26, treatment devices
28, therapy devices 30, among many other devices. Id. at ¶ 85. Computer
12 processes signals from monitors 26, treatment devices 28, and therapy
devices 30 on a real time basis, which information is used to provide an
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electronic chart of patient conditions on display screens 18 and 20. Id. at
¶ 87. Monitors 26, treatment devices 28, and therapy devices 30 include
heart rate monitors, temperature sensors, blood pressure monitors (invasive
and noninvasive), EKG monitors, blood oxygen sensors, capnographs,
ventilators, IV pumps, scales, chest drainage monitors, and the like. Id.
Reeder discloses different embodiments of computer system 10,
including the embodiment illustrated in Figure 2, which is reproduced
below.

Figure 2 illustrates display screen 18 affixed to support 52 and display
screen 20 located in removable module 50, which may be detached from
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support 52. Id. at ¶ 93. Input device 62 is coupled to support 52, and
connector 32 connects to a port on module 50 to receive signals from
monitors 26, treatment devices 28, and therapy devices 30. Id. at ¶ 94.
2. Claims 1–6
In regard to claim 1, Petitioner asserts that Wang438 discloses
limitation 1.1—“a patient monitor that displays patient information”— and
Reeder does also. Pet. 50 (stating, “See Ground 1, element [1.1]”; citing
Ex. 1003 ¶¶ 118–122; Ex. 1008 ¶¶ 85, 101, Figs. 11–18). Patent Owner
does not specifically contest Petitioner’s argument regarding Reeder. See
generally Prelim. Resp. 44–52. We agree with Petitioner that Reeder
teaches limitation 1.1 because Reeder discloses that first and second display
screens 18 and 20 are used to display patient information in the form of an
electronic chart or flow sheet. Ex. 1008 ¶¶ 4, 87, 92, 120.
Regarding limitation 1.2, which recites “a mobile robot that has . . . a
robot camera that captures an image, said robot camera being capable of
viewing the patient and said patient monitor,” Petitioner states that in ground
4, “Reeder’s computer system 10 is the claimed patient monitor.” Pet. 58.
Petitioner argues it would have been obvious to combine Wang438’s robot
system with Reeder’s patient monitor (computer system 10) and that “[i]n
the resulting system (‘the Wang438-Reeder system’), Reeder’s computer
system 10 is Wang438’s medical monitoring device 50.” Id. at 53 (citing
Ex. 1003 ¶¶ 123–133). Petitioner also argues that a person of ordinary skill
in the art would have been motivated to combine Wang438 and Reeder for
several reasons. Id. at 53–58.
In response, Patent Owner states that “[n]otably, this proposed
combination does not rely on David, or provide any motivation to combine
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David with Wang438 or Reeder.” Prelim. Resp. 45 (citing Pet. 53–58;
Ex. 2001 ¶ 118). Patent Owner further asserts, “[h]owever, the proposed
combination of Wang438 and Reeder does not disclose ‘a robot camera
capable of viewing the patient and the patient monitor,’ as is required by
claim 1 of the ’185 [p]atent.” Id. (citing Ex. 2001 ¶ 119). Patent Owner
argues that the proposed combination does not explain how Reeder’s
computer system would be substituted for Wang438’s monitoring device 50,
and how as a result Wang438’s robot camera would be capable of viewing
the patient and the substituted computer system. Id. (citing Ex. 2001
¶¶ 119–120). Patent Owner also argues that a person of ordinary skill in the
art would not have been motivated to combine Wang438 and Reeder for the
reasons provided in the Petition. Id. at 47–52.
We agree with Patent Owner that Petitioner’s proposed Wang438-
Reeder system does not teach or suggest “a robot camera being capable of
viewing the patient and said patient monitor.” As Patent Owner states, in
Wang438, medical monitoring device 50 is a small wrist-mounted data
probe, while in Figure 15 of Reeder, cited in Ground 4, “the computer
system 10 is a large ensemble system of supports, displays, input devices,
treatment devices, therapy devices, etc.” Id. at 45–46 (citing Ex. 1005 ¶ 21,
Fig. 1; Ex. 1008 ¶¶ 84–85, 87, Figs. 1–2; Ex. 2001 ¶ 120; Pet. 50). Patent
Owner also states, and we agree, it is “unclear how such an ensemble system
could simply take the place of a small wrist-mounted data probe,” and
Petitioner does not propose how the computer system of Reeder would be
accommodated in Wang438 in place of the wrist-mounted monitoring
device. Id. at 46 (citing Ex. 2001, ¶ 120; Pet. 53–58). As Patent Owner
further argues, “Petitioner makes no attempt to explain[] how the computer
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system of Reeder could be reconciled with the mobile robot of Wang438 in,
for example, a hospital room with limited space.” Id. (citing Ex. 1005 ¶ 19,
Fig. 1; Ex. 1008 ¶¶ 84–85, 87; Figs. 1–2; Pet. 53–58; Ex. 2001 ¶ 121).
According to Patent Owner, for example, due to the large sizes of both
Wang438’s robot and Reeder’s ensemble computer system, each would need
to be either placed a good distance from the other, or in an awkward spatial
relationship with the other, and in either case, the arrangement would not
result in Wang438’s robot camera being capable of viewing both the patient
and the display of the Reeder computer system ensemble. Id. (citing Ex.
2001 ¶ 121–122). Thus, we determine Petitioner makes an inadequate
showing that the proposed Wang438-Reeder system teaches or suggests
limitation 1.2. See 35 U.S.C. § 312(a)(3); 37 C.F.R. §§ 42.22(a)(2),
42.104(b)(4), 42.104(b)(5).
We also agree with Patent Owner that a person of ordinary skill in the
art would not have been motivated to substitute Reeder’s computer system
for Wang438’s medical monitoring device 50. See Prelim. Resp. 47–52.
For example, Patent Owner first argues that Wang438’s monitoring device
50 is a small wrist-mounted data probe or sensor, “whereas Reeder’s
computer system is a large ensemble system including supports, displays,
input devices, treatment devices, therapy devices, etc.” Id. 47–48 (citing
Ex. 1005 ¶ 21, Fig. 1; Ex. 1008 ¶¶ 84–85, 87; Figs. 1–2; Ex. 2001 ¶ 125).
Accordingly, Patent Owner argues, and we agree, “the proposed
combination is a substitution of dissimilar items, without any proposal to
accommodate the dissimilarity, and the results would be unknown and
unpredictable.” Id. at 48 (citing Ex. 2001 ¶ 125). Second, although
Petitioner argues that a person of ordinary skill in the art would have been
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motivated to use Reeder’s computer system 10 as Wang438’s monitoring
device 50 to obtain the benefits of Reeder’s system, Patent Owner argues,
and we agree, Wang438’s monitoring device does not perform, and has no
need to perform, the functions cited by Petitioner, such as
“‘organiz[ing] numerous monitors, treatment devices, and
therapy devices and facilitates record keeping by providing a real
time electronic chart for the patient;’” “‘improv[ing]
communications between various caregivers who are members
of a care team for the particular patient;’” “‘automat[ing]
processes for ordering tests and communicating between various
caregivers working with a patient;’” being “‘used as a tool to
educate the patient;’” being “‘used to assist compliance with a
doctor’s instructions after release;’” or being “‘used as a TV set
when the caregiver is not in the room’” of Reeder.
Id. at 48–49 (citing Ex. 1005 ¶ 21, Fig. 1; Ex. 1008 ¶¶ 84–85, 87, Figs. 1–2;
Pet. 54; Ex. 2001 ¶ 127).
Third, Patent Owner argues that Petitioner’s assertion that “mobile
robots, like Wang438’s robot 12, were used with conventional paper charts”
and that a person of ordinary skill would have been motivated to use
Reeder’s computer system 10 wherein there is little delay in inputting
information to the patient’s chart, to reduce the delays that occur with
convention paper charts, is unsupported. Id. at 49–50 (citing Pet. 55). As
Patent Owner states, Petitioner supports the idea that Wang438’s robot is
used with paper charts “by citing to a different reference (i.e., Wang421) that
is not among the references that form the basis for this ground” and to the
declaration of Petitioner’s expert, “which does not actually provide any
further explanation or support.” Id. at 50 (citing Pet. 55; Ex. 1003 ¶ 127;
Ex. 2001 ¶ 131). Thus, we agree with Patent Owner’s argument that “there
is no evidence that the robot of Wang438 is used with paper charts or even
electronic charts,” and thus a person of ordinary skill would not have been
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motivated “to incorporate a large ensemble computer system to address a
need that is not shown to exist.” Id. (citing Ex. 2001 ¶131).
For these reasons, we conclude Petitioner does not demonstrate a
reasonable likelihood of prevailing on its challenge of claim 1 as
unpatentable under 35 U.S.C. § 103(a) over Wang438, David, and Reeder.
Because the challenges to dependent claims 2–6 share the same deficiency,
we also conclude Petitioner does not demonstrate a reasonable likelihood of
prevailing on its challenge of those claims as unpatentable under 35 U.S.C.
§ 103(a) over Wang438, David, and Reeder.
3. Claims 7–13
In regard to limitation 7.1, which recites “moving a mobile robot that
has a camera to view a patient and a patient monitor,” Petitioner states, “See
Ground 3, element [7.1]. In Ground 4, however, Reeder’s computer system
10 is the claimed patient monitor.” Pet. 60–61.
In response, Patent Owner argues that the combination of Wang438,
David, and Reeder fails to disclose or teach limitation 7.1 for the same
reasons discussed regarding limitation 1.1 in ground 4 that “Wang438,
David, and Reeder do not teach ‘a robot camera capable of viewing the
patient and the patient monitor.’” Prelim. Resp. 52–53 (citing Ex. 2001
¶ 138). Patent Owner also argues that a person of ordinary skill in the art
would not have been motivated to combine Wang438, David, and Reeder for
the same reasons discussed for claim 1 of ground 4. Id. at 53.
For the same reasons discussed above regarding limitation 1.1 in
ground 4, we determine Petitioner makes an inadequate showing that the
proposed combination of Wang438, David, and Reeder teaches or suggests
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40
limitation 7.1 in ground 4. See § II.G.2; see also 35 U.S.C. § 312(a)(3); 37
C.F.R. §§ 42.22(a)(2), 42.104(b)(4), 42.104(b)(5).
Accordingly, we conclude Petitioner does not demonstrate a
reasonable likelihood of prevailing on its challenge to claim 7 as obvious
over the combination of Wang438, David, and Reeder. Each of claims 8–13
depends directly from claim 7. Ex. 1001, 6:34–47. Thus, for the reasons
discussed above regarding claim 7, we also determine Petitioner does not
demonstrate a reasonable likelihood of prevailing on its challenge to claims
8–13 as obvious over the combination of Wang438, David, and Reeder.
III. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that no inter partes review is instituted.

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41
FOR PETITIONER:
John Phillips
Dan Smith
Ryan O’Connor
FISH & RICHARDSON P.C.
phillips@fr.com
dsmith@fr.com
oconnor@fr.com

FOR PATENT OWNER:

Michael Solomita
Stepen Guzzi
NORTON ROSE FULBRIGHT US LLP
michael.solomita@nortonrosefulbright.com
stephen.guzzi@nortonrosefulbright.com