MyMedicalRecords Inc v. Quest Diagnostics Inc

Filing 92

ORDER GRANTING DEFENDANTS' MOTION FOR SUMMARY JUDGMENT OF INVALIDITY OF U.S. PATENT NO. 8,498,883 by Judge Otis D. Wright, II, (lc). Modified on 12/22/2014. (lc).

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O 1 2 3 4 5 6 7 United States District Court Central District of California 8 9 10 11 MYMEDICALRECORDS, INC., Plaintiff, 12 13 14 v. ORDER GRANTING DEFENDANTS' MOTION FOR SUMMARY WALGREEN CO., Defendant. 15 Case No. 2:13-CV-00631 ODW (SHx) JUDGMENT OF INVALIDITY OF U.S. PATENT NO. 8,498,883 [91] 16 17 18 MYMEDICALRECORDS, INC., 19 Plaintiff, 20 21 22 23 24 25 26 27 28 v. QUEST DIAGNOSTICS INC., Defendant. Case No. 2:13-cv-02538-ODW (SHx) -* 1 2 MYMEDICALRECORDS, INC., 3 Plaintiff, 4 Case No. 2:13-cv-03560-ODW (SHx) v. 5 6 7 JARDOGS, LLC; ALLSCRIPTS HEALTHCARE SOLUTIONS, INC. Defendants. 8 9 MYMEDICALRECORDS, INC., 10 Case No. 2:13-cv-07285-ODW (SHx) Plaintiff, 11 v. 12 13 WEBMD HEALTH CORP; WEBMD 14 HEALTH SERVICES GROUP INC. 15 Defendants. 16 I. 17 18 19 20 21 22 23 24 INTRODUCTION Defendants Quest Diagnostics, Inc., WebMD Health Corp., WebMD Health Services Group Inc., and Allscripts Healthcare Solutions, Inc. (collectively, “Defendants”) move for Summary Judgment of Invalidity of claims 1-3 of U.S. Patent No. 8,498,883 (“the '883 Patent”) in these coordinated cases.1 (ECF No. 91.) Defendants argue that the Court found the “means for scheduling” term indefinite in its Claim Construction Order (ECF No. 67) and therefore the asserted claims are invalid. For the reasons discussed below, the Court GRANTS Defendants’ Motion 25 1 26 27 28 Facing several actions involving the same MMR patents, the Court consolidated the cases for invalidity purposes on November 18, 2014. (ECF No. 92.) The low number case, MyMedicalRecords, Inc. v. Walgreen Co., No. 13-cv-00631-ODW(SHx), was designated as the lead case. The lead case has since settled, but the case remains open for the purposes of filing documents related to invalidity, which pertain to all of the MMR patent cases. Citations to the docket refer to the docket in the lead case unless indicated otherwise. 2 1 for Summary Judgment.2 (ECF No. 91.) 2 II. FACTUAL BACKGROUND 3 Plaintiff MyMedicalRecords (“MMR”) is the owner of the ’883 Patent titled 4 “Method for Providing a User with a Service for Accessing and Collecting 5 6 7 8 Prescriptions.” MMR is asserting claims 1-3 of the ’883 Patent against Defendants. The asserted claims are method claims directed to providing users with a secure and private way to collect, access, and manage drug prescriptions online. Independent claim 1 recites a “means for scheduling one or more prescription refills concerning a 9 10 11 drug prescription” limitation. Claims 2 and 3 depend on claim 1 and therefore incorporate this “means for scheduling” limitation by reference. On August 19, 2014, the Court held a consolidated claim-construction hearing. 12 13 On September 3, 2014, the Court issued a Claim Construction Order, which held that 14 the “means for scheduling” limitation is indefinite under 35 U.S.C. § 112. (ECF No. 15 67 at 7-10.) Corresponding to the Post-Markman Scheduling Order (ECF No. 88), 16 Defendants filed their Motion for Summary Judgment as to Invalidity on November 17 17, 2014. (ECF No. 91.) Plaintiff timely opposed and Defendants timely replied. 18 (ECF Nos. 95, 98.) That Motion is now before the Court for decision. 19 III. LEGAL STANDARD 20 Summary judgment is appropriate when there is no genuine dispute of material 21 fact for trial and one party is entitled to judgment as a matter of law. Fed. R. Civ. P. 22 56; see also Digitech Image Techs., LLC v. Fujifilm Corp., No. 8:12-cv-1679- 23 ODW(MRWx), 2013 U.S. Dist. LEXIS 108007, at *3-4 (C.D. Cal. July 31, 2013). 24 The moving party bears the initial burden of establishing the absence of a genuine 25 dispute as to any material facts. Digitech, No. 8:12-cv-1679-ODW (MRWx), 2013 26 U.S. Dist. LEXIS 108007, at *3-4. The nonmoving party must then identify specific 27 28 2 After carefully considering the papers filed in support of and in opposition to the Motion, the Court deems the matter appropriate for decision without oral argument. Fed. R. Civ. P. 78; L.R. 7-15. 3 1 facts that show a genuine dispute for trial. Id.; Fed. R. Civ. P. 56(c). Whether a 2 patent is invalid for indefiniteness is a question of law appropriate for summary 3 judgment. See Ibormeith IP, LLC v. Mercedes-Benz USA, LLC, 732 F.3d 1376, 1379 4 (Fed. Cir. 2013). 5 6 7 8 9 IV. DISCUSSION The Court has already determined that the “means for scheduling” claim limitation, found in all asserted claims 1-3, is indefinite, as the '883 Patent itself discloses no algorithm for performing the recited function. (ECF No. 67 (“Although a person of skill in the art might be able to choose an appropriate scheduling algorithm 10 11 12 13 and program it onto a microprocessor, the '883 Patent itself discloses no algorithm at all.”)); see e.g., Triton Tech of Tx., LLC v. Nintendo of Am., Inc., 753 F.3d 1375, 1378 (Fed. Cir. 2014) (holding that a means-plus-function limitation is indefinite if the 14 stated function is performed by a general-purpose computer or microprocessor and the 15 specification fails to disclose the algorithm that the computer performs to accomplish 16 that function). A claim that includes an indefinite limitation is invalid pursuant to 35 17 U.S.C. § 112. Ibormeith IP, LLC v. Mercedes-Benz USA, LLC, 732 F.3d 1376, 1382 18 (Fed. Cir. 2013). 19 Plaintiff attempts to re-litigate the issue of indefiniteness as to the ’883 Patent in 20 its Opposition. (ECF No. 95.) The parties had the opportunity to fully brief and argue 21 indefiniteness during Claim Construction. As Defendants contend, the arguments 22 Plaintiff makes at this time should have been raised in a motion for reconsideration of 23 the Court’s Claim Construction Order as opposed to in its Opposition brief to a 24 motion for summary judgment. (Reply 9-10.) 25 26 27 28 Nevertheless, Plaintiff argues there is a factual dispute regarding the level of ordinary skill, but this argument is irrelevant and immaterial. (Reply 5.) Indefiniteness is a question of law resolvable during claim construction. Personalized Media Commc’ns., LLC v. Int’l Trade Comm’n, 161 F.3d 696, 705 (Fed. Cir. 1998) 4 1 (“[I]ndefiniteness is a legal conclusion that is drawn from the court’s performance of 2 its duty as the construer of patent claims.”). Further, while it is true that claims are to 3 be construed and indefiniteness is to be determined from the perspective of a 4 hypothetical person of ordinary skill in the art (POSITA), this Court’s Claim 5 6 7 Construction Order itself makes clear that the Court’s indefinitenss ruling was made from the perspective of a POSITA. (See ECF No. 67 at 9-10.) There are no factual disputes to be resolved as to the asserted claims 1-3 of the ’883 Patent. 8 V. 9 10 11 12 Conclusion Accordingly, the Court holds that claims 1-3 of the '883 Patent are invalid as indefinite under 35 U.S.C. § 112 and GRANTS the Defendants’ Motion for Summary Judgment. (ECF No. 91.) 13 14 IT IS SO ORDERED. 15 16 December 22, 2014 17 18 19 ____________________________________ OTIS D. WRIGHT, II UNITED STATES DISTRICT JUDGE 20 21 22 23 24 25 26 27 28 5

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