MyMedicalRecords Inc v. Quest Diagnostics Inc

Filing 94

ORDER GRANTING DEFENDANTS MOTION FOR JUDGMENT ON THE PLEADINGS OF INVALIDITY OF U.S. PATENT NO. 8,301,466 81 by Judge Otis D. Wright, II: The Court finds that the asserted claims of the 466Patent are patent ineligible, and Defendants Motion for Judg ment on the Pleadings is GRANTED without leave to amend. Defendants are directed to submit a proposed judgment by January 8. 2015. All hearing dates in the above captioned cases are VACATED and all pending motions in the above captioned cases are MOOT. (lc). Modified on 12/23/2014. (lc).

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O 1 2 3 4 5 6 United States District Court Central District of California 7 8 9 10 MYMEDICALRECORDS, INC., 11 Plaintiff, 12 v. 13 14 WALGREEN CO., Case 2:13-cv-00631-ODW (SHx) ORDER GRANTING DEFENDANTS’ MOTION FOR JUDGMENT ON THE Defendant. 15 PLEADINGS OF INVALIDITY OF U.S. PATENT NO. 8,301,466 16 [90] 17 18 MYMEDICALRECORDS, INC., 19 Plaintiff, 20 v. 21 22 Case 2:13-cv-02538-ODW (SHx)* QUEST DIAGNOSTICS, INC., Defendant. 23 24 25 26 MY MEDICALRECORDS, INC., 27 Plaintiff, 28 Case No. 2:13-cv-07285-ODW (SHx) 1 v. 2 WEBMD HEALTH CORP; WEBMD 3 HEALTH SERVICES GROUP INC., 4 Defendants. 5 6 MYMEDICALRECORDS, INC., 7 Plaintiff, 8 v. 9 10 Case No. 2:13-cv-03560-ODW(SHx) JARDOGS, LLC; ALLSCRIPTS HEALTHCARE SOLUTIONS, INC., 11 Defendants. 12 I. INTRODUCTION 13 14 Defendants Quest Diagnostics Incorporated, Allscripts Healthcare Solutions, 15 Inc., Empty Jar, LLC f/k/a/ Jardogs, LLC, WebMD Health Corp., and WebMD Health 16 Services Group, Inc. (collectively, “Defendants”) move for Judgment on the Pleadings 17 of Invalidity of U.S. Patent No. 8,301,466 (the “’466 Patent”) in these coordinated 18 cases.1 (ECF No. 90.) Defendants argue that the ’466 Patent claims an abstract idea 19 and therefore is invalid under 35 U.S.C. § 101. For the reasons discussed below, the 20 Court finds that claims 8-12 of the ’466 Patent are invalid under 35 U.S.C. § 101 as 21 being directed towards patent-ineligible subject matter and GRANTS the Defendants 22 Motion.2 23 24 25 26 27 28 1 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 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. 2 1 II. FACTUAL BACKGROUND 2 Plaintiff, MyMedicalRecords (“MMR”), has alleged that Defendants infringe 3 claims 8-12 of the ’466 Patent. The ’466 Patent claims a method of collecting, 4 accessing, and managing personal health records in a secure and private manner. 5 Specifically, the ’466 Patent discloses a method for providing users with a way to 6 collect, access, and privately manage their medical records using conventional 7 computer components and the Internet. (’466 Patent, at Abstract.) The ’466 Patent 8 specification describes several purported shortcomings in the prior art: (1) the need to 9 provide secure and private communications between healthcare providers and patients 10 in a manner convenient for both parties; and (2) the need for an individual to access 11 their healthcare records and store and maintain those records in one secured, 12 password-protected account of organized files. (’466 Patent at 5:1-10.) 13 To address these alleged problems, claims 8-12 of the ’466 Patent recite a 14 method for providing a user with the ability to collect, access, and manage personal 15 health records in a secure and private manner. These claims further recite the use of 16 computer functionality to implement the claimed method, including components such 17 as “server,” “storage medium,” “user interface,” “computing device,” and “image file 18 format files.” MMR does not claim to have invented these computer components. 19 Instead, the alleged invention of the ’466 Patent relates to the idea of providing access 20 to and storage and maintenance of healthcare records in secured, organized files. 21 (’466 Patent at 5:1-10.) 22 On August 19, 2014, the Court held a consolidated claim-construction hearing 23 and on September 3, 2014, the Court issued a Claim Construction Order. (ECF No. 24 67.) 25 Defendants filed their Motion for Judgment on the Pleadings on November 17, 2014. 26 (ECF No. 90.) Plaintiff timely opposed and Defendants timely replied. (ECF Nos. 27 96, 99.) That Motion is now before the Court for decision. 28 /// Corresponding to the Post-Markman Scheduling Order (ECF No. 88), 3 1 2 III. LEGAL STANDARD A. Rule 12(c) 3 A motion for judgment on the pleadings brought pursuant to Fed. R. Civ. P. 4 12(c) provides a means of disposing of cases when all material allegations of fact are 5 admitted in the pleadings and only questions of law remain. See McGann v. Ernst & 6 Young, 102 F.3d 390, 392 (9th Cir. 1996). Such a motion may be brought “after the 7 pleadings are closed–but early enough not to delay trial.” Fed. R. Civ. P. 12(c). 8 “Analysis under Rule 12(c) is substantially identical to analysis under Rule 12(b)(6) 9 because, under both rules, a court must determine whether the facts alleged in the 10 complaint, taken as true, entitle the plaintiff to a legal remedy.” Chavez v. United 11 States, 683 F.3d 1102, 1108 (9th Cir. 2012). Accordingly, while the complaint “does 12 not need detailed factual allegations, a plaintiff’s obligation to provide the ‘grounds’ 13 of his ‘entitlement to relief’ requires more than labels and conclusions, and a 14 formulaic recitation of the elements of a cause of action will not do.” Bell Atlantic 15 Corp. v. Twombly, 550 U.S. 544, 555 (2007). “[F]actual allegations must be enough 16 to raise a right to relief above the speculative level.” Id. 17 Unless a court converts a Rule 12(b)(6) or 12(c) motion into a motion for 18 summary judgment, a court generally cannot consider material outside of the 19 complaint (e.g., facts presented in briefs, affidavits, or discovery materials). In re 20 American Cont’l Corp./Lincoln Sav. & Loan Sec. Litig., 102 F.3d 1524, 1537 (9th Cir. 21 1996), rev’d on other grounds sub nom Lexecon, Inc. v. Milberg Weiss Bershad Hynes 22 & Lerach, 523 U.S. 26 (1998). A court may, however, consider exhibits submitted 23 with or alleged in the complaint and matters that may be judicially noticed pursuant to 24 Federal Rule of Evidence 201. In re Silicon Graphics Inc. Sec. Litig., 183 F.3d 970, 25 986 (9th Cir. 1999); see also Lee v. City of Los Angeles, 250 F.3d 668, 689 (9th Cir. 26 2001). 27 B. 28 35 U.S.C. § 101 Under 35 U.S.C. § 101, patent claims must be directed to one of four patent- 4 1 eligible subject matter categories: processes, machines, manufactures, or compositions 2 of matter. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 3 1294 (2012). Inventions that fit within one or more of the statutory categories are 4 nonetheless patent-ineligible if they are coextensive with laws of nature, natural 5 phenomenon, or abstract ideas. Id. The Supreme Court recently clarified that courts 6 should analyze patent-eligibility using the two-part framework set forth in Mayo. See 7 Alice Corp. Pty, Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014). The first step 8 of the Mayo test is to determine whether claims are drawn to a patent-ineligible 9 concept, such as an abstract idea. Alice, 134 S. Ct. at 2355 (citing Mayo, 132 S. Ct. 10 1289). If the answer is “yes,” then the second step of the Mayo test is to determine 11 whether the claim elements nonetheless “transform the nature of the claim[s]” into a 12 patent-eligible application. Id. Claims directed to abstract ideas are patent-ineligible 13 unless the claims include substantive limitations that would add “significantly more” 14 to the underlying principles. Id. “[M]ere recitation of a generic computer cannot 15 transform a patent-ineligible abstract idea into a patent-eligible application.” Alice, 16 134 S. Ct. at 2358. “[I]f a patent’s recitation of a computer amounts to a mere 17 instruction to ‘implemen[t]’ an abstract idea ‘on . . . a computer,’ . . . that addition 18 cannot impart patent eligibility.” Id. (quoting Mayo, 132 S. Ct. at 1301); see also 19 Gottschalk v. Benson, 409 U.S. 63, 65–67 (1972). Whether the asserted claims of the 20 ’466 Patent are directed to patent-eligible subject matter under 35 U.S.C. § 101 is a 21 question of law that is appropriate for the Court to decide. CyberSource Corp. v. 22 Retail Decisions, Inc., 654 F.3d 1366, 1369 (Fed. Cir. 2011). 23 IV. DISCUSSION 24 25 26 27 28 A. The First Step of the Mayo Test In the first step of the Mayo test, the Court must identify whether a claim is directed to an abstract idea. To do this the Court must identify what the claimed invention is trying to achieve and ask whether that purpose is abstract. See Cal. Inst. 5 1 Of Tech. v. Hughes Commc’ns., Inc., No. 2:13-cv-07245-MRP(JEM), 2014 WL 2 5661290, at *13 (C.D. Cal. Nov. 3, 2014) (herein, “Caltech”). The ’466 Patent’s 3 asserted claims are directed to the concept of collecting, accessing, and managing 4 personal health records in a secure and private manner. (’466 Patent at Abstract; ECF 5 No. 86 at 2.) Plaintiff acknowledges this concept in its Complaint: “MMR’s patents 6 are generally directed to methods for providing a user with the ability to access and 7 collect personal health records associated with the user in a secure and private 8 manner[.]” (Compl. at 3, ECF No. 1.) 9 Having determined the purpose, the next step is determining whether the 10 purpose of the ’466 Patent is abstract. For example, age-old ideas are likely abstract 11 like natural laws and fundamental mathematical relationships. Caltech, at *13 (citing 12 Mayo, 132 S. Ct. at 1296-97). The concept of secure record access and management, 13 in the context of personal health records or not, is an age-old idea. Because a patent 14 on this concept, without more, would threaten to preempt the entire field of secure 15 filing systems, the Court finds the claims of the ’466 Patent abstract. See id. 16 Other courts have similarly found the concept of record access and management 17 to be an abstract idea. See Cogent Medicine, Inc. v. Elsevier Inc., No. C-13-4479- 18 RMW, 2014 U.S. Dist. LEXIS 139856, at *11 (N.D. Cal. Sept. 30, 2014) (holding that 19 maintaining and searching a library of medical information is an abstract idea); Wolf v. 20 Capstone Photography, Inc., No. 2:13-cv-09573, 2014 U.S. Dist. LEXIS 156527, at 21 *2-3 (finding that a process for providing event photographs for inspection, selection, 22 and distribution was an abstract idea). Similarly, allowing for secure and private 23 access to data has also been found to be an abstract concept. See Card Verification 24 Solutions, LLC v. Citigroup, Inc., No. 13-C-6339, 2014 U.S. Dist. LEXIS 137577, at 25 *9 (N.D. Ill. Sept. 29, 2014) (finding that claims involving a method of “passing 26 confidential information through a trusted, third-party intermediary to ensure that . . . 27 necessary confidential information remains secure” were directed to a patent- 28 ineligible abstract idea) (denying motion to dismiss without prejudice on other 6 1 grounds). Thus, the Asserted Claims of the ’466 Patent are directed to a patent- 2 ineligible abstract idea. 3 B. The Second Step of the Mayo Test 4 Finding the ’466 Patent claim’s purpose abstract in step one, the Court must 5 now determine whether there is an inventive concept that appropriately limits the 6 claim such that it does not preempt a significant amount of inventive activity. 7 Caltech, at *13. The second step should provide “additional features that provide 8 practical assurance that the process is more than a drafting effort designed to 9 monopolize [the ineligible concept] itself.” Mayo, 132 S. Ct. at 1297. 10 Claim 8 does not contain inventive concepts that make it patent-eligible. Claim 11 8 recites a method for providing a user with the ability to access and collect personal 12 health records in a secure and private manner by: (1) associating access information 13 with the user to access a server storing files; (2) providing a user interface; (3) 14 receiving files at the server from a health care provider; (4) receiving requests through 15 the user interface; (5) sending files; and (6) independently maintaining files on the 16 server. All six of these concepts are routine, conventional functions of a computer and 17 server and therefore broadly and generically claim the use of a computer and Internet 18 to perform the abstract purpose of the asserted claims. See Alice Corp., 134 S.Ct. at 19 2359; see also Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 2014 U.S. Dist. LEXIS 20 152447, *8 (E.D. Va. Oct. 24, 2014) (citing Alice Corp., 134 S.Ct. at 2359) 21 (“[S]toring and querying information in a database . . . is one of the most basic 22 functions of a database system.”); Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of 23 Canada, 771 F. Supp. 2d 1054, 1065 (E.D. Mo. 2011) (“Storing, retrieving, and 24 providing data . . . are inconsequential data gathering and insignificant post-solution 25 activity.”), aff’d, 687 F.3d 1266 (Fed. Cir. 2012). These steps add insignificant 26 activity to limit the abstract idea of the ’466 Patent and therefore fail the second step 27 of Mayo. See buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) 28 (finding that “transaction service provider computer” and “computer network” added 7 1 no inventive concept); see also Cogent, 2014 U.S. Dist. LEXIS 139856, at *12-13 2 (finding that data sets, data folders, and providing information over the Internet based 3 on user requests were “insufficient to confer patent eligibility” because “using a 4 computer to identify and supply new medical literature merely automate[d] what was 5 previously done manually[.]”). 6 The additional limitations found in dependent claims 9-12 are similar to those 7 in claim 8 and do not add “significantly more” to the underlying abstract idea— 8 collecting, accessing, and managing personal health records in a secure and private 9 manner —so as to impart patent eligibility. See buySAFE, 765 F.3d at 1355. 10 Accordingly, the asserted claims of the ’466 Patent are invalid under 35 U.S.C. § 101 11 in light of both steps of the Mayo inquiry. 12 Lastly, the Federal Circuit’s recent opinion in DDR Holdings, LLC v. 13 Hotels.com, LP, No. 2013-1505, 2014 WL 6845152 (Dec. 5, 2014) (herein “DDR”) is 14 inapposite to this case.3 The patents-in-suit in DDR were directed to systems and 15 methods of generating a composite web page that combines certain visual elements of 16 a “host” website with content of a third-party merchant. In particular, U.S. Patent No. 17 7,818,399 (“the ’399 Patent”) addresses the problem of retaining website visitors that 18 would be transported away from a host’s website after selecting a hyperlink. DDR, at 19 *10. As an example, asserted claim 19 recites a system that “1) stores ‘visually 20 perceptible elements’ corresponding to numerous host websites in a database, with 21 each of the host websites displaying at least one link associated with a product or 22 service of a third-party merchant, 2) on activation of this link by a website visitor, 23 automatically identifies the host, and 3) instructs an Internet web server of an ‘out- 24 source provider’ to construct and serve to the visitor a new, hybrid web page that 25 merges content associated with the products of the third-party merchant with the 26 stored ‘visually perceptible elements’ from the identified host website.” Id. 27 3 28 On December 11, 2014, Plaintiff filed a Notice of Supplemental Authority In Support of Plaintiffs Response to Motion for Judgment on the Pleadings of Invalidity of the ’466 Patent citing DDR. (ECF No. 101.) Defendants timely responded. (ECF No. 102.) 8 1 Having found the ’399 Patent claims directed to a patent-ineligible idea, the 2 Federal Circuit went on to conclude the claims satisfy step two of the Mayo test, and 3 therefore were valid under § 101. Id. at *10-12. The Federal Circuit came to this 4 conclusion by distinguishing their recent opinions on patent-ineligible abstract ideas. 5 Id. at *10 (“[T]hese claims stand apart because they do not merely recite the 6 performance of some business practice known from the pre-Internet world along with 7 the requirement to perform it on the Internet. Instead, the claimed solution is 8 necessarily rooted in computer technology in order to overcome a problem 9 specifically arising in the realm of computer networks.”) Specifically, the Federal 10 Circuit emphasized that the patent’s recited result overrides the “routine and 11 conventional sequence of events” because the computer network does not operate in 12 its normal, expected manner of sending the website visitor to the third-party website 13 that is connected with the hyperlinked advertisement. Id. Instead, when the website 14 visitor clicks on the hyperlink the claimed system generates and directs the visitor to a 15 hybrid webpage that presents third-party product information with the same visual 16 elements as the host website. Id. Further, the Federal Circuit found that the ’399 17 Patent did not preempt every application of the idea of increasing sales by making 18 web pages look the same because the claims recite additional specific features that 19 amount to an inventive concept for resolving a particular Internet-centric problem. Id. 20 at *12. 21 Unlike the claims in DDR the ’466 Patent claims are directed to nothing more 22 than the performance of a long-known abstract idea “from the pre-Internet world”— 23 collecting, accessing, and managing health records in a secure and private manner— 24 on the Internet or using a conventional computer. (ECF No. 102 at 1-2.) The ’466 25 Patent claims are not “rooted in computer technology in order to overcome a problem 26 specifically arising in the realm of computer networks.” DDR at *10. 27 ’466 Patent recites an invention that is merely the routine and conventional use of the 28 Internet and computer with no additional specific features. 9 Rather, the 1 V. CONCLUSION 2 For the reasons above, the Court finds that the asserted claims of the ’466 3 Patent are patent ineligible, and Defendants’ Motion for Judgment on the Pleadings is 4 GRANTED without leave to amend. Defendants are directed to submit a proposed 5 judgment by January 8. 2015. All hearing dates in the above captioned cases are 6 VACATED and all pending motions in the above captioned cases are MOOT. 7 8 IT IS SO ORDERED. 9 10 December 23, 2014 11 12 13 14 ____________________________________ OTIS D. WRIGHT, II UNITED STATES DISTRICT JUDGE 15 16 17 18 19 20 21 22 23 24 25 26 27 28 10

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