Athenahealth, Inc. v. AdvancedMD Software, Inc.

Filing 45

Judge George A. OToole, Jr: CLAIM CONSTRUCTION ORDER entered. (Lyness, Paul)

UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS
CIVIL ACTION NO. 11-11260-GAO
ATHENAHEALTH, INC.,
Plaintiff,
v.
ADVANCEDMD SOFTWARE, INC.,
Defendant.

CLAIM CONSTRUCTION ORDER
November 26, 2013
O’TOOLE, D.J.
This is a patent dispute involving systems used by medical professionals to manage their
practices. The plaintiff, athenahealth, Inc. (“Athena”), claims that the defendant, AdvancedMD
Software, Inc. (“AdvancedMD”), infringes U.S. Patent No. 7,617,116 (“the ’116 Patent”),
entitled “Practice Management and Billing Automation System.”
The ’116 Patent consists of twenty claims, three of which are independent claims (1, 18,
and 20). The parties dispute the proper construction of thirteen claim terms, which they have
presented in five groups. In accordance with Markman v. Westview Instruments, Inc., 517 U.S.
370 (1996), the disputed claim terms are construed as set forth herein.
I.

Legal Framework
“The words of a claim ‘are generally given their ordinary and customary meaning’ . . .

[which] is the meaning that the term would have to a person of ordinary skill in the art at the time
of . . . the effective filing date of the patent application.” Phillips v. AWH Corp., 415 F.3d 1303,
1313 (Fed. Cir. 2005) (en banc) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576,
1582 (Fed. Cir. 1996)). This general rule has two exceptions: the patent specification may reveal

a special definition given by the patentee, or it may reveal an intentional disavowal of claim
scope by the patentee. Id. at 1316; accord Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d
1362, 1365 (Fed. Cir. 2012) (citation omitted).
Courts should first look to intrinsic evidence: the claims, the specification, and the
prosecution history. Phillips, 415 F.3d at 1313-14. The claims are to be read “in view of the
specification, of which they are a part. . . . [I]t is the single best guide to the meaning of a
disputed term.” Id. at 1315 (internal quotation marks and citations omitted). However, it is
inappropriate to read limitations from the specification “into the claims absent a clear intention
by the patentee to do so.” MySpace, Inc. v. GraphOn Corp., 672 F.3d 1250, 1255 (Fed. Cir.
2012) (citing Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1326 (Fed. Cir. 2002)).
Courts may consider extrinsic evidence, including expert testimony, inventor testimony,
dictionaries, and treatises, but it is “less reliable” and “unlikely to result in a reliable
interpretation of patent claim scope unless considered in the context of the intrinsic evidence.”
Phillips, 415 F.3d at 1318-19.
“Claim terms need only be construed ‘to the extent necessary to resolve the
controversy.’” Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011), cert.
denied, 132 S. Ct. 1541 (2012) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
795, 803 (Fed. Cir. 1999)). Courts may decide not to construe a claim term or to give it its plain
and ordinary meaning, unless such a construction fails to resolve the parties’ dispute. See O2
Micro Int’l Ltd. v. Beyond Innovation Tech. Co., Ltd., 521 F.3d 1351, 1361 (Fed. Cir. 2008).

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II.

Group 1
A.

“a medical practice management server”

Athena proposes the following construction: “one or more servers that perform functions
associated with managing a medical practice.” The word “a” is generally construed as “one or
more,” unless “a patentee [] evince[s] a clear intent to limit ‘a’ or ‘an’ to ‘one.’” See 01
Communique Lab., Inc. v. LogMeIn, Inc., 687 F.3d 1292, 1297 (Fed. Cir. 2012) (citing TiVo,
Inc. v. EchoStar Commc’ns Corp., 516 F.3d 1290 (Fed. Cir. 2008); Baldwin Graphic Sys., Inc. v.
Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008)). Nothing in the ’116 Patent indicates such an
intent. The appropriate construction here of “a” is “one or more.”
AdvancedMD proposes a construction that includes the following functions performed by
the server: “(i) is in communication with a medical practice client and one or more payor servers
via communication networks, (ii) directly exchanges with a medical practice client information
about an event related to a patient and/or information representative of one or more insurance
claims, (iii) directly exchanges with one or more payor servers information representative of one
or more insurance claims.” AdvancedMD contends that these three functions are key limiting
features of the invention. Cf. Alloc Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1370 (Fed. Cir.
2003) (“[T]he #907 specification read as a whole leads to the inescapable conclusion that the
claimed invention must include play in every embodiment.”).
In every embodiment of the claimed invention, the medical practice management server
at some point in time must have communicated with one or more medical practice clients and
one or more payor servers. For instance, the three independent claims, claims 1, 18, and 20,
recite that “the medical practice management server . . . [receives] data indicative of a completed
claim submission for a claim from a medical practice client . . . [and] appli[es] one or more

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rules . . . wherein the one or more rules comprises a new rule, an updated rule, or both received
from the payor server.” Col. 20:8-10, 13-20; Col. 22:20-22, 25-32; Col. 23:7-9, 12-19
(emphasis added). Therefore, a key limiting feature of the invention is that the server is “in
communication with” a medical practice client and a payor server, as AdvancedMD proposes.
However, it is not necessarily the case that a medical practice management server must be
presently or continually in communication with a medical practice client or a payor server over a
“communication network,” as AdvancedMD has proposed.
Nothing in the specification supports AdvancedMD’s position that information must be
exchanged “directly” from server to server. What the patent describes is a method for submitting
claims in a way that detects and corrects errors that would prevent or delay their payment. What
is important is that claim information is transmitted from A (the medical practice client) to B (the
medical practice management server) to C (the payor server). The patent does not exclude the
possibility that, at either the A to B step or the B to C step, the transmission of the information
could be passed through an intermediary or agent, such as an aggregator or perhaps some kind of
shared portal. While the specification may not expressly describe transmission via an
intermediary, it is not necessary for the specification to address every conceivable embodiment.
See Toshiba Corp. v. Imation Corp., 681 F.3d 1358, 1369 (Fed. Cir. 2012) (“Our case law makes
clear that a patentee need not describe in the specification every conceivable and possible future
embodiment of his invention.”) (internal quotation marks omitted). To require that the
transmission be direct, that is, “without an intervening agency or step,” see Merriam-Webster’s
Collegiate Dictionary 353 (2009) (defining “direct” in its adverbial sense), would be to read in a
limitation that is neither expressed in the claim language nor reasonably imputed from the
specification. Additionally, AdvancedMD proposes that information which merely passes

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through a series of routers on its way from A to B or B to C but is not “acted upon” by them
would still be regarded as having been exchanged “directly.” Adopting that interpretation would
make things worse, because it would then be necessary to decide which intermediary things
disrupt “direct” exchange and which do not.
Further, subparts (ii) and (iii) of AdvancedMD’s proposed construction violate the
doctrine of claim differentiation, under which there is a “presumption that each claim in a patent
has a different scope.” AllVoice Computing PLC v. Nuance Commc’ns, Inc., 504 F.3d 1236,
1248 (Fed. Cir. 2007) (internal quotation marks omitted). “The doctrine is at its strongest ‘where
the limitation sought to be read into an independent claim already appears in a dependent
claim.’” Seachange Int’l, Inc. v. C-COR, Inc., 413 F.3d 1361, 1368 (Fed. Cir. 2005) (quoting
Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 989, 910 (Fed. Cir. 2004)). Claim 1 does not
require the medical practice management server to exchange any information representative of
one or more insurance claims with any payor server, but dependent claims 9 and 13 add the
requirement of “submitting the completed claim submission to the payor server for payment.”
Col. 21:12-13, 38-39. Further, independent claim 18 recites a step that paraphrases subpart (iii)
but is absent from claim 1: “the medical practice management server transmitting the
information to the payor server.” Col. 22:59-60. The proper construction should treat each claim
as having a different scope.
Accordingly, the claim term “a medical practice management server” is construed as one
or more servers that perform functions associated with managing a medical practice and are in
communication with one or more medical practice clients and one or more payor servers.

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B.

“a payor server”

For similar reasons, the claim term “a payor server” should not include either the word
“direct” or any functions that lie outside the scope of claim 1.
The only remaining dispute is whether Athena’s construction of this claim term to mean
“one or more servers used by a specific payor,” is inappropriately broad. AdvancedMD proposes
the narrower construction of “a server controlled by a payor,” arguing that many servers,
including the medical practice management server, are “used” in some broad sense by the payor
but are not reasonably regarded as payor servers in the sense the patent intends. The likelihood
that a jury would understand a “payor server” to include the medical practice management server
is remote. That would be a rather tortured interpretation of the phrase “used by,” and it does not
represent a sensible understanding of the language of the patent. The ordinary meaning of “used
by” provides ample clarity.
“A payor server” is construed as one or more servers used by a specific payor.
III.

Group 2
A.

“each class of rules being associated with one of a plurality of payor servers” /
“class of rules associated with the payor server”

Athena proposes the following construction: “class of rules defining the format and
content of claims that a payor server processes.” Arguing that Athena’s construction fails to
explain how each class of rules is associated with the payor server, AdvancedMD proposes the
following construction: “each class of rules includes information designating the payor server of
a payor for which the rules are appropriate.”
In construing this claim term, it is unnecessary to explain how each class of rules is
associated with a particular payor server. The specification does not limit the way in which a
class of rules must be associated with a payor server. Embodiments of the claimed invention can
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implement this association in a number of ways. The claim term merely recites that each class of
rules is “associated with” a payor server. Again the meaning is to be understood consistently
with the purpose of the claimed invention. The rules to be applied by the medical practice
management server to a given claim submission have to be the right rules for the identified
payor. “Associated with” is potentially ambiguous. A clearer way of expressing the intended
meaning is to say that the rules are “identified to” a specific payor.
Athena’s construction is unsatisfactory because it does nothing more than construe
“rules,” despite there being no real controversy between the parties as to the proper construction
of “rules.”
This claim term shall be given its ordinary meaning, except that “associated with” is
construed as identified to.
B.

“completed claim submission for a claim” / “completed claim submission”

The parties agree that this claim term needs construction because while one ordinary
meaning of the word “completed,” “having all necessary parts, elements, or steps,” is consistent
with the intended meaning, another, “br[ought] to an end and especially into a perfected state,”
may be inconsistent with the claim language and specification. Merriam-Webster’s Collegiate
Dictionary 254 (2009). For instance, the specification discloses an embodiment of a completed
claim submission wherein some of the fields are empty. Col. 15:66-16:3.
Under AdvancedMD’s proposed construction, a completed claim submission is
“electronic information representative of a claim ready to be submitted to a payor server to
request payment of charges associated with a patient visit to a medical practice.” Athena’s
proposed construction is “claim information entered by a medical care provider and transmitted
to the medical practice management server for processing.

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AdvancedMD’s proposed construction risks confusion. Although AdvancedMD noted at
the Markman hearing that “ready to be submitted to a payor server” means that the medical care
provider believes that the claim is complete, use of the term “ready” introduces a needless
ambiguity. It could mean that the claim is objectively ready to be submitted because of its own
contents or that the medical care provider thinks it is ready and therefore is prepared to submit it.
Athena’s construction, on the other hand, is more straightforward. A claim submission is
“completed” when claim information has been entered and transmitted to the medical practice
management server for processing. Despite AdvancedMD’s arguments to the contrary, this
construction is not too broad because it specifies that a completed claim submission must be
claim information, not any information that is transmitted for processing, not for determining
eligibility or any other purpose.
This claim term is construed to mean claim information entered by a medical care
provider and transmitted to the medical practice management server for processing.
C.

“the claim being associated with a payor server”

The specification discloses an embodiment wherein “the submission of an insurance
claim for a first payor could invoke the rules engine to apply particular formatting rules
associated with the first payor,” as Athena’s proposed construction contemplates. Col. 6:23-26.
But this is just one embodiment, and nothing in the specification or claim language limits the
manner in which a claim must be associated with a payor server. Further, claim 5 recites “the
method of claim 1, wherein the interacting step farther comprises determining the completed
claim submission is associated with the payor server based on information in the completed
claim submission.” Col. 20:58-61. Applying the doctrine of claim differentiation, it is

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appropriate to conclude that claim 5 imposes an additional requirement to claim 1 and that in
claim 1 a claim need not be associated with a payor server by including certain information.
This claim term needs no construction, except that “associated with” shall be construed as
identified to.
IV.

Group 3
A.

[1] “automatically interacting with the completed claim submission by the
medical practice management server to correct an error in the completed claim
submission, [2] wherein the error is resolved by the medical practice client before
processing the completed claim submission, [3] by applying one or more rules
from a class of rules associated with the payor server, wherein the one or more
rules comprises a new rule, an updated rule, or both received from the payor
server”

The parties agree that the third clause (“by applying . . .”) modifies the first clause
(“automatically interacting . . . ”) and not the second (“wherein the error . . . ”). In other words, it
is the medical practice management server that “appl[ies] one or more rules from a class of rules
. . . ” and not the medical practice client.
Athena argues that otherwise this claim term need not be construed, whereas
AdvancedMD proposes a lengthy construction that includes two steps performed by the medical
practice management server without human intervention and a separate construction of the
phrase “wherein the one or more rules comprises . . . ” to mean that “at least one applied rule
within the class of rules containing insurance rules is either a new or modified insurance rule
received via a direct transmission from the payor server.” The word “direct” is inappropriate, for
reasons previously discussed.
AdvancedMD cites case law to support construing “automatically” as “without human
intervention.” See, e.g., SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 891 (Fed. Cir.
2004); Mirror Imaging, L.L.C. v. Affiliated Computer Servs., Inc., 2004 WL 5644804, at *10

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(E.D. Mich. Feb. 26, 2004). While Athena recognizes that several courts have applied such a
construction in various contexts, it argues that neither party asked for the Court to construe the
word “automatically” in isolation nor suggested that the entire claim term be construed in a way
that human intervention is entirely precluded.
Although the word “automatically” was not presented as a distinct claim term in need of
construction, I nonetheless construe it as part of the broader claim term to mean without human
intervention. This construction is consistent with the specification, see Col. 9:63 (“the medical
practice management server 14 verifies and checks each piece of information entered without
human intervention”), and the claim language. Moreover, it accurately describes a solution to
problems that this invention sought to solve – human data entry errors and wasted resources.
Otherwise, this claim term needs no construction. Although it is lengthy, its words are
either plainly obvious or construed elsewhere. As mentioned previously, a term need not be
construed if adopting the ordinary meaning would settle the parties’ dispute.
This claim term is to be given its ordinary meaning, except that “automatically” is
construed as without human intervention.
B.

“correct an error”

Athena contends that this claim term needs no construction. AdvancedMD disagrees and
proposes the following construction: “to edit or update information in a completed claim
submission so that the completed claim submission will satisfy an appropriate insurance rule.”
AdvancedMD properly notes that the term “error” has a precise meaning in the context of
the patent, i.e., the failure of a claim submission to satisfy an insurance rule. Typographical
errors, formatting errors, and incomplete information, which the specification cites as examples
of claim errors, are errors by virtue of their failure to satisfy an insurance rule. See Col. 13:33-

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36. Furthermore, the claims recite that the medical practice management server interacts with the
completed claim submission to correct errors by applying rules. E.g., Col. 20:12-17.
Given this understanding of an “error” in a completed claim submission, it follows that
correcting such an error requires editing or updating information in the completed claim
submission so that the completed claim submission will satisfy the insurance rule or rules that
are implicated. It may be unnecessary to say, but it is clear that “editing or updating” can include
adding new information not part of a prior claim submission.
Therefore, the term “correct an error” means edit or update information in a completed
claim submission so that the completed claim submission will satisfy an implicated insurance
rule.
C.

“wherein the error is resolved”

This claim term shall be construed as wherein edited or updated information satisfying an
implicated insurance rule is transmitted by the medical practice client to the medical practice
management server.
V.

Group 4
A.

“claim edit screen”

AdvancedMD contends that the “claim edit screen” must be a window. This proposition
must be rejected because it excludes a disclosed embodiment. The specification explicitly states
that the medical practice client user interface can be text driven. Col. 4:46-47. That text driven
interfaces such as DOS are technically capable of producing windows does not help
AdvancedMD’s proposed construction because such interfaces do not typically employ
windows.

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It is clear from the ordinary meaning of “claim edit screen” that it must be displayed and
viewable via the medical practice user interface. Thus, Athena’s proposed construction, “user
interface for editing a claim,” is inappropriately broad and covers, for instance, a voice user
interface that does not display any content and wherein the user interfaces with the machine
solely by way of voice prompts. It is important to note that text driven user interfaces like DOS,
though not graphically driven, still use screens to display text.
For these reasons, “claim edit screen” is construed as visual display interface allowing a
medical care provider to edit or update a completed claim submission.
B.

“claim error explanation portion to explain one or more errors in the completed
claim submission to a medical care provider”

All three independent claims recite a “claim edit screen comprising a claim edit section . .
. and a claim error explanation portion to explain one or more errors in the completed claim
submission to a medical care provider.” Col. 20:28-32; Col. 22:40-44; Col. 24:3-7.
AdvancedMD’s proposed construction – “a portion of the claim edit screen that displays
information explaining one or more errors identified in the completed claim submission” – does
nothing to clarify the meaning of “portion,” which is a term ambiguous enough that a jury may
be confused as to its meaning. Athena’s proposed construction – “screen content that prompts a
medical care provider with an explanation of one or more errors in the completed claim
submission” – reads better into the claim language and clearly circumscribes what content
constitutes the claim error explanation portion.
For these reasons, this claim term is construed to mean screen content that prompts a
medical care provider with an explanation of one or more errors in the completed claim
submission.

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VI.

Group 5
A.

“updated completed claim submission”

Construction of this claim term must be consistent with construction of the next claim
term, or in other words, must not render the next claim term superfluous or nonsensical. See
AllVoice Computing PLC v. Nuance Commc’ns, Inc., 504 F.3d 1236, 1247 (Fed. Cir. 2007).
AdvancedMD’s proposed construction is supported by a logical reading of the claims and
specification, whereas Athena’s proposed construction would obviate the step involving “the
medical practice management server correcting the completed claim submission based on the
updated completed claim submission” because the completed claim submission would already be
corrected. Col. 20:36-38. AdvancedMD’s proposed construction also identifies the medical care
provider as the party entering the information, which is supported by the specification.
“Updated completed claim submission” is construed as information entered by a medical
care provider to edit or update a completed claim submission.
B.

“correcting the completed claim submission based on the updated completed
claim submission”

Athena’s proposed construction of this claim term is “modifying the completed claim
submission based on the updated completed claim submission.” AdvancedMD’s proposed
construction is “editing or updating the existing completed claim submission by adding or
substituting the updated completed claim submission.”
The parties dispute whether the construction should include the word “existing.”
Although the claim language already makes clear that “the completed claim submission” refers
to the existing completed claim submission, including the word “existing” will be helpful to the
jury.

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The parties also dispute whether “based on the updated completed claim submission”
needs to be construed. Athena contends that the phrase needs no construction, particularly
because there is no intrinsic evidence to support AdvancedMD’s assertion that this step must be
accomplished by “adding or substituting the updated completed claim submission.” I agree. The
claim step is not so limited.
Finally, the parties propose two different constructions of “correcting” as used in this
claim term. Athena proposes “modifying,” and AdvancedMD proposes “editing or updating.”
The proposals do not differ in substance, but in light of the construction of the claim term
“correct an error” and for the sake of consistency, I adopt AdvancedMD’s proposal.
Therefore, this claim term is construed as editing or updating the existing completed
claim submission based on the updated completed claim submission.
C.

“transmitting the information to the payor server”

Again, limiting transmissions of information only to “direct” transmissions is
inappropriate.
The step “transmitting the information to the payor server” should be read in light of the
preceding step, “formatting the completed claim submission into information having a form
acceptable to the payor server using claim formatting rules.” Col. 22:55-60. “The information”
being transmitted is not any information; it is the completed claim submission which has been
formatted to have a form acceptable to the payor server. However, this reading is unmistakably
clear from the claim language, and no construction is necessary.

/s/ George A. O’Toole, Jr.
United States District Judge

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