Preservation Wellness Technologies LLC v. athenahealth Inc
Filing
12
MEMORANDUM OPINION AND ORDER. Signed by Judge William C. Bryson on 5/9/2016. (ch, )
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
PRESERVATION WELLNESS
TECHNOLOGIES LLC,
Plaintiff,
v.
ALLSCRIPTS HEALTHCARE
SOLUTIONS, et al.,
Defendants.
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Case No. 2:15-CV-1559-WCB
LEAD CASE
MEMORANDUM OPINION AND ORDER
Before the Court are the following motions: Defendant Allscripts Healthcare Solutions,
Inc.’s Motion to Dismiss Pursuant to 35 U.S.C. § 101, Dkt. No. 22; Defendant NextGen
Healthcare Information Systems LLC’s Motion to Dismiss Under 35 U.S.C. § 101, Dkt. No. 27;
Defendant athenahealth, Inc.’s Motion for a Judgment on the Pleadings Pursuant to Federal Rule
of Civil Procedure 12(c), Dkt. No. 44; and Epic Systems Corporation’s Motion to Dismiss
Preservation Wellness Technologies, LLC’s Complaint Under 35 U.S.C. § 101, Case No. 2:15cv-1561, Dkt. No. 16. The Court heard oral argument on the motions on March 14, 2016. The
Court now GRANTS the motions and directs that the complaints against all four defendants be
DISMISSED.
BACKGROUND
The plaintiff, Preservation Wellness Technologies, LLC, (“Preservation”) is the owner of
U.S. Patent No. 7,640,271 (“the ’271 patent”). The patent is entitled “System for Maintaining
Patient Medical Records for Participating Patients.”
It is directed to a secure system for
maintaining patient medical records, providing patients with remote access to their personal
records, and providing patient health and treatment records to the patients’ medical professionals
by use of a network, such as a local network a wide area network, or a global computer network
(e.g., the Internet).
’271 patent, col. 1, ll. 13-19.
Preservation has alleged that the four
defendants before the Court infringe independent claims 1 and 16 of the ’271 patent and various
dependent claims. The defendants have filed motions to dismiss the complaints on the ground
that the claims of the ’271 patent are all directed to subject matter that is ineligible for patenting
under section 101 of the Patent Act.
1. The Claims
Claim 1 of the ’271 patent recites as follows:
1. A system for maintaining patient medical records for a plurality of participating
patients, and in which such records are remotely accessible by participating patients and
by physicians for reading and editing of the respective patient medical records, and
permitting entry of patient medical information by authorized persons, the system
employing
a wide area computer network that permits communication between computer
devices connected to said network, with the computer devices including
at least one patient access computer device and at least one physician access
computer device;
each said computer device being suitably programmed with a web browser; and
a server including a suitably programmed computer device including means for
connecting with said network,
a memory for storing said patient medical records, and
software providing data modules to each of said computer devices connected to said
server over said wide area computer network, and providing to each said patient
access computer device for the associated one of said participating patients a set
of patient-viewable patient history screens containing a patient medical record of
the associated one of said participating patients, and said server also providing to
the at least one physician access computer device for each of said participating
patients a set of physician-only access screens containing the physician medical
record of the associated participating patient, the screens of the set of physicianonly access screens being distinct from the screens of the associated set of
patient-viewable screens, the physician-only access screens including medical
information for said respective patient that is not provided on the patientviewable screens, each said set being a plurality of screens; and
wherein said server also includes a two-way firewall program that allows both the
associated participating patient and the physician to access the patient medical
record of the associated participating patient for reading and editing, but includes
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a firewall feature that allows only the physician access computer device and not
the associated participating patient access computer device to access the
physician-only access screens of the medical record of the associated
participating patient; and
wherein at least one screen of the physician-only access screens containing the
physical medical record of the associated participating patient includes at least
one space for physician entry, in said space, of notes concerning symptoms,
diagnosis, medical procedures performed, and/or medications prescribed for said
associated participating patient by the physician.
Claim 16 of the ’271 patent, which is nearly identical to claim 1, recites as follows:
16. A system for maintaining patient medical records for a plurality of participating
patients, and in which such records are remotely accessible by patients and by
physicians for reading and editing of the respective patient medical records of the
participating patients, and permitting entry of patient medical information by authorized
persons, the system employing
a wide area computer network that permits communication between computer
devices connected to said network, with the computer devices including
at least one patient access computer device and at least one physician-only access
computer device; each said computer device being suitably programmed with a
web browser; and
a server including
a suitably programmed computer device including means for connecting with said
network,
a memory for storing said patient medical records, and
software providing data modules to each of said computer devices connected to said
server over said wide area computer network, and providing to each said patient
access computer device for the associated one of said participating patients a set
of patient-viewable patient history screens containing a patient medical record of
a respective one of said patients, and said server also providing to the at least one
physician-only access computer device for each of said participating patients a
set of physician-only access screens containing the physician medical record of
the participating patient, the screens of the set of physician-only access screens
being distinct from the screens of the associated set of patient-viewable screens,
the physician-only access screens including medical information for said
respective patient that is not provided on the patient-viewable screens, each said
set being a plurality of screens; and
wherein said server also includes a two-way firewall program that allows both the
respective patient and the physician computer device to access the patientviewable screens of the medical record of the participating patient for reading
and editing, but includes a firewall feature that allows only the physician access
computer device and not the patient access computer device to access the
physician-only viewable screens of the medical record of said participating
patient; and
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wherein one screen of the set of physician-only access screens containing a physician
medical record of the participating patient include at least one space for
physician entry, in said space, of notes concerning symptoms, diagnosis, medical
procedures performed, and medications prescribed for said participating patient
by the physician.
The dependent claims mainly cover the type of information that is displayed on patientviewable screens in the system. Those claims recite a “medications” screen (claim 2); a “visits”
screen, which lists past and future medical appointments (claim 3); an “allergies” screen (claim
4); a “dietary considerations” screen (claim 5); a “family history data” screen (claim 6); a “prior
illnesses” screen (claim 7); an “immunizations” screen (claim 8); a “medical diagnosis” screen
(claim 9), including medical images in digital form (claim 10); an “advanced directives” screen
(claim 11), including the location of a patient health proxy (claim 12), and a do-not-resuscitate
order and/or an organ donation order (claim 13). In addition, the dependent claims add the
following features to claim 16: a “diagnosis dialog box” on the physician-only access screen,
including menus for selecting a “diagnosis nomenclature” of the patient by key word and by
entry of a diagnosis code (claim 17), and for selecting a “procedure nomenclature” of the patient
by key word and by entry of a procedure code (claim 18). The remaining dependent claims
include one in which the two-way firewall program permits the physician to override the firewall
to permit the patient for a limited time to view limited portions of the physician medical record
(claim 14), and others that provide space for physician notes that do not appear on the patientviewable screens (claims 15 and 19).
2. The Specification
The specification of the ’271 patent states that the problem addressed by the patent is the
need for easy, real-time access to patient information by the medical practitioner and the patient.
’271 patent, col. 1, ll. 20-66. The specification states that what is missing from the prior art is a
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patient health care records system that is easily accessed, such as from a web site or by inserting
a CD-ROM into a computer, allowing the computer to access a host server, so that a patient can
access his or her own medical history using a PIN or other password.
According to the
specification, the prior art also fails to disclose a system in which the patient or emergency room
personnel can obtain a limited, read-only version of the patient’s medical history without having
the patient’s PIN number. Finally, the specification states that prior art systems did not employ a
two-way firewall program to permit the patient to read and modify his own records, but not the
physician’s records or those of other patients, while permitting the physician to modify both his
own records and the patient’s records. Id., col. 2, ll. 1-16.
The specification describes the invention as a network-based medical records storage and
retrieval system that operates by means of a web browser installed in a computer. Id., col. 3, ll.
41-44. The system maintains patient medical records on a central computer server, which allows
remote access to the records for reading and editing by authorized persons. Id., col. 4, ll. 20-24.
A patient can access the system using a coded access means, such as a CD-ROM, which is
inserted into a computer and accesses the system server via the Internet. Software providing data
modules is provided to each user computer in the system. That software allows the patient to use
his or her computer to obtain access to editable patient history screens. Id., col. 4, ll. 27-46.
The system also provides for physician-accessed computers programmed with a web
browser and software modules containing the “physician medical record” of the physician’s
patient. Id., col. 5, ll. 14-27. The server includes a “two-way firewall program” that “allows
both the patient and the physician to access the respective medical record for reading and editing,
but allows only the physician and not the patient to access the physician medical record.” Id.,
col. 5, ll. 27-31. The two-way firewall program has a feature that allows the physician to
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override the firewall and send items such as test results and images to the patient. Id., col. 5, ll.
31-40.
As recited in the dependent claims and noted in the specification, the patient history
screens can include screens containing such information as a listing of medications, a listing of
medical visits, dietary considerations, family history, prior illnesses, immunizations, medical
diagnoses, and advance directives, such as an organ donation order. Id., col. 5, line 41, through
col. 6, line 1. The physician’s computer contains the medical history of the patient, space for
entering the physician’s notes, and dialog boxes for selecting a diagnosis nomenclature or a
medical or surgical procedure for the patient. Id., col. 6, ll. 6-22.
3. The Motions to Dismiss
Each of the four defendants has filed a motion to dismiss the complaint against it for
failure to state a claim upon which relief could be granted. 1 The motions were based on
assertions that the ’271 patent claims were not patent-eligible under 35 U.S.C. § 101.
Defendants NextGen Healthcare Information Systems, LLC (“NextGen”) and Epic Systems
Corporation (“Epic”) filed substantive briefs in support of their motions.
The other two
defendants, Allscripts Healthcare Solutions Inc., and athenahealth, Inc., joined, adopted, and
incorporated the motions and briefing filed by other defendants. Dkt. Nos. 22, 31, and 44.
The essence of the motions filed by NextGen and Epic is that the claims of the ’271
patent are not patent-eligible because they are drawn to abstract ideas and do not contain an
inventive concept. Preservation’s position, in essence, is that (1) the claims are not drawn to
abstract ideas, (2) the claims contain specific inventive concepts, and (3) in any event, the
1
Three of the defendants filed their motions under Fed. R. Civ. P. 12(b)(6). The fourth,
athenahealth, Inc., filed its motion under Fed. R. Civ. P. 12(c), since it had already filed an
answer by the time it filed its motion to dismiss.
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Court’s decision as to the merits of the defendants’ section 101 arguments should await claim
construction rather than being made based on the pleadings.
DISCUSSION
A. Applicable Legal Principles
The legal standard for determining whether a particular claim is drawn to patentable
subject matter within the meaning of 35 U.S.C. § 101 is by now familiar, if not always easy to
apply. Section 101 provides that “[w]hoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and useful improvement thereof,
may obtain a patent therefor, subject to the conditions and requirements of this title.” The
Supreme Court has interpreted section 101 to bar the issuance of patents on “laws of nature,
physical phenomena, and abstract ideas.” Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980).
Over the past several years, as a result of a series of decisions from the Supreme Court
and the Federal Circuit, the law of unpatentable subject matter has developed to the point that it
is possible to discern several governing principles applicable to cases involving “business
methods” and other methods and systems for organizing human activity. The Supreme Court’s
2014 decision in Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014), built
on the Court’s analysis in the earlier decisions of Bilski v. Kappos, 130 S. Ct. 3218 (2010), and
Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012). The
Alice decision, which is the Court’s most recent word patent eligibility, warrants particularly
close attention.
The claims at issue in Alice were drawn to a computerized system for mitigating
“settlement risk,” i.e., the risk that only one party to an agreed-upon financial exchange will fail
to satisfy its obligation. As the Court explained, the claims were “designed to facilitate the
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exchange of financial obligations between two parties by using a computer system as a thirdparty intermediary.” Alice, 134 S. Ct. at 2352. The claims involved “a method of exchanging
financial obligations between two parties using a third-party intermediary to mitigate settlement
risk. The intermediary creates and updates ‘shadow’ records to reflect the value of each party’s
actual accounts held at ‘exchange institutions,’ thereby permitting only those transactions for
which the parties have sufficient resources. At the end of each day, the intermediary issues
irrevocable instructions to the exchange institutions to carry out the permitted transactions.” Id.
at 2356.
The Alice Court began by noting that the Court’s earlier opinion in Mayo had constructed
a two-step framework for determining patent eligibility for claims challenged under section 101
as based on abstract ideas. Step one, the Court explained, is to “determine whether the claims at
issue are directed to . . . [a] patent-ineligible concept[]” such as an abstract idea. Id. at 2355.
Step two requires the court “to consider the elements of each claim both individually and ‘as an
ordered combination’ to determine whether the additional elements transform the nature of the
claim into a patent-eligible application.” Id. The Court described that step as “a search for an
inventive concept—i.e., an element or combination of elements that is ‘sufficient to ensure that
the patent in practice amounts to significantly more than a patent upon the [ineligible concept]
itself.” 134 S. Ct. at 2355 (citations omitted).
The Supreme Court held that the claims before it in Alice were drawn to the abstract idea
of intermediated settlement. Like risk hedging, which was the activity at issue in the Court’s
earlier decision in Bilski, the Court held that intermediated settlement is a fundamental economic
practice that qualifies as an “abstract idea” and thus is beyond the scope of 35 U.S.C. § 101. 134
S. Ct. at 2356. Both concepts, the Court held, “are squarely within the realm of ‘abstract ideas’
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as we have used that term.” Id. at 2357. The Court then went on to determine that none of the
claim elements, alone or in combination, contained the “inventive concept” necessary to render
the claims patent-eligible.
Quoting Mayo, the Court explained that “[s]imply appending
conventional steps, specified at a high level of generality” is not enough to supply an inventive
concept. Id.
On one important issue, the facts of Alice required the Court to go beyond Bilski. The
claims in Bilski did not require the use of computers, while the claims in Alice did.
Significantly, the Court held that introducing the use of a computer into the claims did not render
the claims in Alice patentable. To the contrary, “the mere recitation of a generic computer
cannot transform a patent-ineligible abstract idea into a patent-eligible invention.” 134 S. Ct. at
2358. The relevant question, the Court explained, “is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea of intermediated settlement on a
generic computer.” Id. at 2359. The Court concluded that they did not, because the function
performed by the computer at each step of the claims was “purely conventional.” Id., quoting
Mayo, 132 S. Ct. at 1298. As the Court explained, the claims before it did not “purport to
improve the functioning of the computer itself, [nor did] they effect an improvement in any other
technology or technical field. . . . Instead, the claims at issue amount to nothing significantly
more than an instruction to apply the abstract idea of intermediated settlement using some
unspecified, generic computer,” which the Court held was not enough to render the abstract idea
patentable. Id. at 2360 (quotation marks and citation omitted).
B. The Parties’ Arguments
Invoking the two-part Alice test, the defendants contend that the ’271 claims are
unpatentable because (1) the claims are drawn to the abstract idea of maintaining a system of
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patient records that provides differential access by physicians and patients; and (2) the claims
lack any inventive concept because the computing functionalities recited in the claims are
conventional and generic.
Preservation responds that this case should not be disposed of on a motion to dismiss
under Rule 12(b)(6) and that addressing the issue of patent eligibility should await the
construction of several terms in the patent, particularly the terms “two-way firewall program”
and “software providing data modules.” Preservation argues that, properly construed, those
terms show that the claims of the ’271 patent are not drawn to an abstract idea and that, even if
they are, they contain an inventive concept.
The question of patent eligibility is a pure question of law. Intellectual Ventures I LLC v.
Capital One Bank (USA), 792 F.3d 1363, 1366 (Fed. Cir. 2015); In re BRCA-1 & BRCA-2Based Hereditary Cancer Test Patent Litig., 774 F.3d 755, 758 (Fed. Cir. 2014). And the Federal
Circuit has made it clear that, in appropriate cases, district courts may decide the issue of patent
eligibility without first conducting claim construction. Genetic Techs. Ltd. v. Merial L.L.C.,
Nos. 2015-1202 & 2015-1203 (Fed. Cir. Apr. 8, 2016); OIP Techs., Inc. v. Amazon.com, Inc.,
788 F.3d 1359, 1362 (Fed. Cir. 2015); Content Extraction & Transmission LLC v. Wells Fargo
Bank, Nat’l Ass’n, 776 F.3d 1343, 1351 (Fed. Cir. 2014); buySAFE, Inc. v. Google, Inc., 765
F.3d 1350, 1355 (Fed. Cir. 2014). Where it is clear that claim construction would not affect the
issue of patent eligibility, there is no requirement that the court go through that exercise before
addressing the eligibility issue. See Bancorp Servs., L.L.C. v. Sun Life Assurance Co., 687 F.3d
1266, 1273 (Fed. Cir. 2012) (“[C]laim construction is not an inviolable prerequisite to a validity
determination under § 101.”).
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At the hearing on the motions to dismiss, Preservation provided the following proposed
definition for the term “software providing data modules”: “Software that provide distinct
interfaces and data sets to system users based upon access and authorization determinations
made by the two-way firewall program.” Hearing Tr. 7. In addition, Preservation provided the
following definition for the term “two-way firewall program”: “A layer of software sitting at the
middleware level (and not the user interface level) that, in a secure manner: (1) determines the
user’s level of system access; (2) determines the appropriate data and interfaces to display to the
user; and (3) allows edits made by the user to be incorporated into the data maintained by the
system.” Id.
For purposes of this motion, the Court accepts Preservation’s definitions as the proper
construction of those claim terms. Even accepting those definitions, the Court holds that the
claims are directed to ineligible subject matter. It is therefore unnecessary to await formal claim
construction in order to resolve the issue presented in this motion. See Content Extraction, 776
F.3d at 1349 (Fed. Cir. 2014) (dismissal at the pleading stage proper because district court
construed the claims in the manner most favorable to the plaintiff, and “even when construed in a
manner most favorable to [the plaintiff], none of [the plaintiff’s] claims amount to ‘significantly
more’ than the abstract idea of extracting and storing data from hard copy documents using
generic scanning and processing technology”).
Following the analytical framework set forth in Alice, the Court addresses the questions
whether the ’271 claims are drawn to an abstract idea and, if so, whether they embody an
inventive concept.
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1. Abstract Idea
The Court is persuaded that the claims of the ’271 patent are drawn to an abstract idea.
The independent claims are drawn to a system for maintaining patient records that permits tiered
access, including reading and editing, by physicians and patients. As such, the invention is very
much in the mainstream of methods and systems for organizing human activity that have been
held to constitute “abstract ideas” in the Supreme Court’s decisions in Bilski and Alice as well as
lower court decisions applying the two-part Alice test.
The independent claims (claims 1 and 16) are directed to computerized systems for
maintaining patient medical records so that the records are remotely accessible by physicians and
patients for reading and editing, with certain records accessible only to the physician. The
“concept of record access and management” is an abstract idea, even as applied in the particular
context of medical records. MyMedicalRecords, Inc. v. Walgreen Co., Nos. 2:13-cv-631 et al.,
2014 WL 7339201, at *3 (C.D. Cal. Dec. 23, 2014) (method of collecting, accessing, and
managing personal health records in a secure and private manner); see also Protegrity USA, Inc.
v. Netskope, Inc., No. 15-cv-2515, 2015 WL 6126599, at *6 (N.D. Cal. Oct. 19, 2015) (claims
directed to limiting access to information based on specified criteria are directed to an abstract
idea); Cogent Medicine, Inc. v. Elsevier Inc., 70 F. Supp. 3d 1058, 1063 (N.D. Cal. 2014)
(claims covering cataloging a database of information and culling information that may be
relevant to a certain user embody “the abstract idea of maintaining and searching a library of
information”); Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 56 F. Supp. 3d 813, 823 (E.D. Va.
2014) (“[S]toring and querying information in a database . . . is one of the most basic functions
of a database system.”). Allowing for secure and private access to data has also been found to be
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an abstract concept. Card Verification Solutions, LLC v. Citigroup, Inc., No. 13-C-6339, 2014
WL 4922524, at *4 (N.D. Ill. Sept. 29, 2014).
Preservation does not deny that maintaining medical records that are differentially
accessible to physicians and patients has been commonplace in the medical profession for many
years. 2 It is likewise clear that patients have frequently added to those records, for example, by
contributing personal information, while physicians have typically supplemented the records by
adding such items as test results and diagnostic notes. That practice is plainly an abstract idea as
that term is used in the Alice line of cases, and the introduction of computers for storing the
records, providing remote access to them, and controlling access based on eligibility does not
render the otherwise abstract idea any less abstract. See Mayo, 132 S. ct. at 1301 (merely
implementing an abstract idea “on a physical machine, namely a computer” is not a patentable
application of that principle); Alice, 134 S. Ct. at 2358 (“the mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention”);
Mortgage Grader, Inc. v. First Choice Loan Servs., NYLX, Inc., 811 F.3d 1314, 1324 (Fed. Cir.
2016) (quoting buySAFE, 765 F.3d at 1354-55) (“Alice ‘made clear that a claim directed to an
abstract idea does not move into § 101 eligibility territory by merely requiring generic computer
implementation.’”).
The idea underlying the ’271 patent is not meaningfully distinguishable from the
“abstract ideas” found in many of the patent claims that the Supreme Court and the Federal
2
The ’271 patent itself describes several previous systems for tracking patient medical
records and explains that what is lacking in those systems is computerized access to records, i.e.,
“a patient health care record system that is easily accessed, e.g., from a web site or by inserting a
CD/ROM in a computer, whereby the computer can automatically access the host server via the
Internet, and where the patient can access his or her own files by inserting a PIN or other
identifying password to access the patient’s own complete medical history.” ’271 patent, col. 2,
ll. 2-8.
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Circuit have held patent-ineligible in recent years. See Intellectual Ventures I LLC, 792 F.3d at
1367-68 & n.2 (citing and discussing numerous cases finding “methods of organizing human
activity” to be abstract); see also Mortgage Grader, 811 F.3d 1314, 1324 (Fed. Cir. 2016)
(abstract idea of “anonymous loan shopping”); Versata Dev. Grp. v. SAP Am., Inc., 793 F.3d
1306, 1333 (Fed. Cir. 2015) (abstract idea of determining a price using organizational and
product group hierarchies); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714 (Fed. Cir. 2014)
(“[T]he abstract idea at the heart of the ’545 patent was ‘that one can use [an] advertisement as
an exchange or currency.’”); Accenture Glob. Servs., GmbH v. Guideware Software, Inc., 728
F.3d 1336, 1344 (Fed. Cir. 2013) (“The abstract idea at the heart of system claim 1 of the ’284
patent is ‘generating tasks [based on] rules . . . to be completed upon the occurrence of an
event.’”).
The idea at the heart of the ’271 patent is to have a network-based system manage
medical records to allow patients and physicians different levels of access to the records. The
underlying idea is simply the performance of that function, not a technological solution that
enables that function to be performed in a particular manner. The limitations of claim 1, for
example, are almost entirely functional in nature. In essence, claim 1 recites a computer network
that has the capacity to store patient medical records; allows the patient and the physician to
access the patient’s medical records for reading and editing; but allows only the physician to
access certain portions of the records.
Preservation argues that the defendants’ description of the abstract idea underlying the
invention “ignores the elements of the invention that distinguished it over the prior art—such as
the two-way firewall program that allowed for different sets of ‘data modules’ to be displayed to
different sets of users.” Dkt. No. 26, at 8; Dkt. No. 50, at 11. But the arguable presence of
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inventive features that convert the abstract idea into a patent-eligible concrete application goes to
the second part of the Alice test, the “inventive concept” requirement, not to the first part of the
test, the “abstract idea” requirement.
The Federal Circuit made that point clear in Ultramercial, 772 F.3d 709. That case
involved a patent on a method of distributing copyrighted media products over the Internet. The
claimed method provided that a consumer would receive a copyrighted media product for free, in
exchange for viewing an advertisement, and the advertiser would pay for the copyrighted
content. The claim addressed by the court divided the method into 11 steps that recited the
process in detail, from the receipt of the copyrighted materials from the content provider, through
the sale of the product at an Internet site, through the display of the advertising to the customer
(after which the customer is offered access to the product), and finally to the receipt of payment
from the sponsor of the advertising message.
The Federal Circuit held that the claims in Ultramercial were directed to unpatentable
subject matter. Following the analytical path set out in Mayo and Alice, the Ultramercial court
first held that the recited method was directed to an abstract idea. The court explained that
“receiving copyrighted media, selecting an ad, offering the media in exchange for watching the
selected ad, allowing the consumer access to the media, and receiving payment from the sponsor
of the ad all describe an abstract idea, devoid of a concrete or tangible application.” 772 F.3d at
715. Focusing on the additional limitations in the claims, the court noted that most of them
simply described “the abstract idea of showing an advertisement before delivering free content.”
Id. As for the remaining limitations, the court ruled that “the addition of merely novel or nonroutine components to the claimed idea [does not] necessarily turn[] an abstraction into
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something concrete.” Rather, the court explained, “any novelty in implementation of the idea is
a factor to be considered only in the second step of the Alice analysis.” Id.
The dependent claims add nothing with respect to the “abstract idea” step. As noted
above, most of them simply identify subject matter that can be contained on various patientviewable screens in the system. Those include screens displaying patient medications, medical
appointments, allergies, dietary considerations, family history, prior illnesses, immunizations,
medical diagnoses, and advanced directives. The dependent claims also include one in which the
two-way firewall program permits the physician to override the firewall to permit the patient for
a limited time to view limited portions of the physician medical record, and others in which the
physician may enter notes that do not appear on the patient-viewable screens. Those slight
elaborations on the inventions set forth in claims 1 and 16 do not add enough to convert the
claimed subject matter into a concrete application, rather than an abstract idea, to wit, a system
for maintaining and providing tiered access to patient medical records of various types.
Preservation singles out dependent claim 14, which recites that the two-way firewall
program “includes a feature permitting the physician to override the firewall feature and permit
the participating patient for a limited time to view limited portions of the physician medical
record for said participating patient.” But that, too, is simply the computer-based equivalent of
an age-old practice—a physician showing a patient certain test results or diagnostic notes. Under
the standards set forth in Alice and the cases following Alice, the claims of the ’271 patent are
clearly drawn to abstract ideas.
2. Inventive Concept
The second question posed by the two-part test from Alice is whether there are any
“additional features” in the claims of the ’271 patent constituting an “inventive concept” that
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would render a claim eligible for patenting even if the claim was directed to an abstract idea.
Alice, 134 S. Ct. at 2357. Those “additional features” must be more than “well-understood,
routine, conventional activity.” Mayo, 132 S. Ct. at 1298; Ultramercial, 772 F.3d at 715.
The defendants say there is nothing in the patent that constitutes such an “inventive
concept.” Preservation argues that the inventive concept can be found in two specific limitations
of the ’271 claims: the limitations referring to the “software providing data modules” and the
“two-way firewall program.” Based on the definitions of those terms proposed by Preservation,
however, it is clear that those limitations do not contribute any “inventive concept” that would
render the claims patent-eligible.
First, the term “software providing data modules” is purely functional in character, as
Preservation’s definition makes clear. Preservation defines that term to refer to software that
provides interfaces and data to users based on their level of authorized access to the patient
medical records maintained on the system. That definition is simply a description of the abstract
idea of providing patients and physicians with tiered access to patients’ medical records, with no
indication of how the function is to be performed. Thus, the term “software providing data
modules” adds nothing to the basic function described in the patent—providing tiered access to
patient medical records based on the different authorization levels for patients and physicians.
That is not an innovative concept, but is simply a description of functions already set forth in the
claims.
Second, the term “two-way firewall program,” on which Preservation heavily relies, 3 is
also largely functional in nature.
Once again, Preservation’s definition makes that clear.
3
Preservation describes the two-way firewall program as the “real invention” of the ’271
patent. Dkt. No. 50, at 16. See also Hearing Tr. 57 (“Two-way firewall program or using
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Preservation defines the term as software that (1) determines the user’s level of access to the
system, (2) determines what data and interfaces are appropriate to display to the particular user,
and (3) allows the user to make edits to the data in the system, such as by the patient entering
personal information or the physician entering notes and diagnostic assessments. Those portions
of the definition of “two-way firewall program” add nothing by way of an inventive concept,
since they simply describe the functions set forth in the claims, without any suggestion of a novel
way of performing those functions.
Preservation argues that the “two-way firewall program” in the ’271 patent has at least
one feature that goes beyond simply describing the functions set forth in the claims and thus
provides the claims with an inventive concept. Preservation points to the portion of its definition
of “two-way firewall program” in which it asserts that the program is found “at the middleware
level” within the system, and not at the user interface. That feature, according to Preservation,
improves the overall security of the system. Hearing Tr. 58, 65-66, 76. Although that feature is
nowhere set forth in the ’271 patent, either in the claims or in the specification, Preservation
argues that it is an inherent feature of a “two-way firewall program.”
Relying on “two-way firewall program” to provide the inventive concept when the term
has no structural definition in the patent poses a significant challenge for Preservation. If the
two-way firewall program has no structural definition and is defined functionally as providing
tiered access for patients and physicians, then it adds no inventive concept to the abstract idea. If
the firewall does have a structural definition, but that definition is so well known that it need not
be described in the patent to be understood by a person of ordinary skill in the art, then that
firewall definitely adds some structure as an additional complexity, if you will, to the claim and
it is that which is inventive.”).
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structure is simply a conventional structure that functions in a well-known manner and thus is
insufficient to contribute the required “inventive concept” for purposes of section 101 analysis.
Preservation conceded at the hearing on the motions to dismiss that the two-way firewall
program is a conventional computer program that was available at the time of the patent
application; it was, according to Preservation, a known program for providing security for
computer systems by limiting access to the system and system data. Hearing Tr. 23-24, 26, 40,
42-43, 58, 65-67, 76, 78. Thus, even if Preservation is correct that a two-way firewall is
conventionally located at the middleware level in the system, the use of a two-way firewall
program does not add any inventive concept to the abstract idea of a secure patient medical
record system featuring tiered access and editing capability. See In re Smith, No. 2015-1664, at
5-6 (Fed. Cir. Mar. 10, 2016), citing Alice, 134 S. Ct. at 2357-58 (“appending purely
conventional steps to an abstract idea does not supply a sufficiently inventive concept”).
In addressing the same general issue, the Federal Circuit in Ultramercial considered
whether certain conventional operations in the context of a claim to an abstract idea could
constitute “‘an inventive concept’ to ‘transform’ the claimed abstract idea into patent-eligible
subject matter.” 772 F.3d at 715, citing Alice, 134 S. Ct. at 2351. The court noted that the claim
at issue in Ultramercial contained 11 steps, but it held that those steps constituted merely
“routine additional steps such as updating an activity log, requiring a request from the consumer
to view the ad, restrictions on public access, and use of the Internet,” which were not sufficient to
“transform an otherwise abstract idea into patent-eligible subject matter.” Id. at 716. Those
limitations were not sufficient to “transform the abstract idea that they recite into patent-eligible
subject matter because the claims simply instruct the practitioner to implement the abstract idea
with routine, conventional activity.” Id. at 715. “That some of the eleven steps were not
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previously employed in this art is not enough—standing alone—to confer patent eligibility upon
the claims at issue.” Id. at 716 (citations omitted).
The Federal Circuit followed a similar analytic path in Content Extraction &
Transmission LLC v. Wells Fargo Bank, 776 F.3d 1343 (Fed. Cir. 2014), decided a month after
Ultramercial.
That case involved patents to a method of extracting data from hard copy
documents using an automated digitizing unit such as a scanner, recognizing specific information
from the extracted data, and storing that information in a memory. The method could be used,
for example, in an automated teller machine that recognizes information on a scanned check.
The Content Extraction court held that the claims before it were drawn to the abstract
idea of data recognition and storage, functions that have long been performed by humans. Id. at
1346-47. In analyzing the “inventive concept” element, the court looked to whether the claims
involved “more than performance of ‘well-understood, routine, [and] conventional activities
previously known to the industry.’” 776 F.3d at 1347-48, quoting Alice, 134 S. Ct. at 2359. The
court held that they did not. Rather, it noted, the claims merely recited the use of existing
scanning and processing technology to recognize and store data from specific data fields, and
that there was nothing inventive about the plaintiff’s “use of a generic scanner and computer to
perform well-understood, routine and conventional activities.” 776 F.3d at 1348. The use of
those components in a particular technological environment was insufficient to save the claims.
Id. Because “the basic character of [the plaintiff’s] claims is the abstract idea of extracting and
storing data from hard copy documents using generic scanning and processing technology,” the
court held the patents invalid. Id. at 1349.
The court in Content Extraction also held that dependent claims that add insignificant
variations did not transform the abstract idea into a patentable invention. Id. at 1349 (dependent
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claims that may have a narrower scope than the representative claims were not patent-eligible,
because “all of the additional limitations in the claims . . . recite well-known, routine, and
conventional functions.”
The dependent claims at issue in that case closely parallel the
dependent claims at issue in this case; like the dependent claims in Content Extraction, the
dependent claims of the ’271 patent all recite functions that are not inventive, but simply
constitute specific applications of the invention, such as providing specific types of medical
information on the patient access screens.
Another case similar to this one is Intellectual Ventures I LLC. There, the Federal
Circuit first found that the patent claims were directed to the abstract idea of tailoring website
content based on the viewer’s location or the time of day when the user navigated to the website.
The court then ruled that the recited “interactive interface” was not a “specific application of the
abstract idea that provides an inventive concept.” Noting that the patentee did not assert that it
had invented an interactive interface that manages web content, the court held that the interface
limitation was simply “a generic computer element” and therefore did not constitute an
“inventive concept” under the second part of the Alice test. 792 F.3d at 1370-71. See also
Versata, 793 F.3d at 1334 (“conventional and well-known limitations involving a computer” are
not an “inventive concept”); Mortgage Grader, 811 F.3d at 1324-25 (“These generic computer
components do not satisfy the inventive concept requirement”); Internet Patents Corp. v. Active
Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015) (“a known idea, or one that is routine and
conventional, is not inventive in patent terms”); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
at 1363 (quoting Alice, 134 S. Ct. at 2357, 2359, and Mayo, 132 S. Ct. at 1294, 1298) (“Beyond
the abstract idea of offer-based price optimization, the claims merely recite ‘well-understood,
routine conventional activit[ies],’ either by requiring conventional computer activities or routine
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data-gathering steps, [which] fail ‘to “transform” the claimed abstract idea into a patent-eligible
application.’”).
Those decisions provide strong precedential guidance for this case, which
involves a known type of software program functioning in its conventional manner. 4
A case that helps define the limits of the doctrine of unpatentable abstract ideas is DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). The claims in that case
recited systems used to enable host websites to avoid losing visitors when those visitors click on
an advertisement on the host site. Instead of directing the visitor to the advertiser’s website, the
claimed invention provided for the host to serve a composite web page to the visitor computer
having the “look and feel” of the host web page, along with content based on product
information from the advertiser’s product catalog.
The Federal Circuit held that the patents in DDR Holdings were not invalid under section
101. In so doing, the court distinguished the case before it from earlier Federal Circuit cases
such as Ultramercial and Bancorp. First, the court noted that the claims did not embody a
fundamental economic principle or longstanding commercial practice.
Rather, the court
explained, the challenge of retaining website visitors was a novel one “particular to the Internet.”
773 F.3d at 1257. Moreover, the court held that the claimed solution does not simply use
computers to serve a conventional business purpose; instead, it “is necessarily rooted in
computer technology in order to overcome a problem specially arising in the realm of computer
4
Preservation has argued at several points that the two-way firewall program is being
used in an unconventional manner in the ’271 patent, and that it is therefore the key to the
“inventive concept” of the patent claims. From the context of Preservation’s remarks, however,
it is clear that Preservation is simply saying that a two-way firewall program had not previously
been used with a medical records access program, not that the two-way firewall program recited
in the patent operates in an unconventional manner, different from a two-way firewall program
generally. Hearing Tr. 18, 26. To the contrary, Preservation made clear that the two-way
firewall program residing on the server performs the conventional functions of such a program.
Hearing Tr. 27, 57, 65-66, 76-79.
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networks.” Id. The invention entails the storage of visually perceptible elements of numerous
websites and the construction of new, hybrid web pages that “merge the content associated with
the products of the third-party merchant with the stored ‘visually perceptible elements’ from the
identified host website.” Id.
The DDR Holdings court distinguished Ultramercial on the ground that the claims in
DDR Holdings did not “broadly and generically claim ‘use of the Internet’ to perform an abstract
business practice,” but instead specified “how interactions with the Internet are manipulated to
yield a desired result.” Id. at 1258. Moreover, the court observed that the claims at issue
included a specific way to automate the creation of a composite web page and did not preempt
“every application of the idea of increasing sales by making two web pages look the same.” Id.
at 1259. In short, DDR Holdings dealt with a patent that required doing something to a web
page, not simply doing something on a web page, a difference that the court regarded as highly
important to the issue of patent eligibility. That is not the case here. The patent in this case is
not directed to the solution of a “technological problem,” Alice, 134 S. Ct. at 2358, quoting
Diamond v. Diehr, 450 U.S. 175, 178 (1981), nor is it directed to an improvement in computer
and network functionality. Instead, it is directed to a function that is performed by the use of
generic computer components operating in their conventional manner.
What Preservation’s “inventive concept” argument comes down to is this: Preservation
asserts that its “inventive concept” is the use of a conventional computer program—a two-way
firewall—in a manner that, by Preservation’s own admission, is the way a two-way firewall is
conventionally used, to achieve a purpose that, again by Preservation’s admission, is the purpose
that the two-way firewall is intended to serve. Preservation argues that its invention resides in
the novelty of using a two-way firewall program in a system for managing medical records. But,
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as the Federal Circuit explained in Ultramercial, if the patent “merely instructs the practitioner to
implement the abstract idea with ‘routine, conventional activit[ies],” that is “insufficient to
transform the patent-ineligible abstract idea into patent-eligible subject matter.” 772 F.3d at 716,
quoting Mayo, 132 S. Ct. at 1298.
In the context of a patent that is clearly drawn to an abstract idea—securely managing
medical records and providing patients and physicians with differential access to those records—
the use of the conventional two-way firewall program for its intended purpose to serve the
function set forth in the claims does not satisfy the “inventive concept” requirement of Alice and
the Federal Circuit decisions that have followed Alice. Accordingly, the Court concludes that,
based on the governing principles laid down by the Supreme Court in Alice and by the Federal
Circuit in numerous cases following Alice, the claims of the ’271 patent are not drawn to patenteligible subject matter under 35 U.S.C. § 101. The motions to dismiss are therefore GRANTED,
and the complaints in each of the four consolidated cases are hereby DISMISSED.
IT IS SO ORDERED.
SIGNED this 9th day of May, 2016.
_____________________________
WILLIAM C. BRYSON
UNITED STATES CIRCUIT JUDGE
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