Allscripts Healthcare Solutions, Inc.v.MYMEDICALRECORDS.COM, INC.

Patent Trial and Appeal Board

Aug 26, 2015

13041809 (P.T.A.B. Aug. 26, 2015)

Trials@uspto.gov Paper 20
571.272.7822 Entered: August 26, 2015
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

ALLSCRIPTS HEALTHCARE SOLUTIONS, INC.,
Petitioner,
v.
MYMEDICALRECORDS, INC.,
Patent Owner.

Case CBM2015-00022
Patent 8,301,466 B2

Before FRED E. McKELVEY, JAMES T. MOORE, and
BARBARA A. PARVIS, Administrative Patent Judges.

PARVIS, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 328(a) and 37 C.F.R. § 42.73

I. INTRODUCTION
A. Background
Allscripts Healthcare Solutions, Inc. (“Petitioner”) filed a Petition
(Paper 2, “Pet.”) requesting a covered business method patent review of
claims 8–12 (“challenged claims”) of U.S. Patent No. 8,301,466 B2 (Exhibit
1001, “the ’466 Patent”). Petitioner challenged the patentability of claims
8–12 of the ’466 patent under 35 U.S.C. §§ 101, 102, and 103. Pet. 14–15.
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Petitioner also indicated that the ’466 Patent was asserted against Petitioner
in the following district court case: MyMedicalRecords, Inc. v. Jardogs,
LLC, No. 2:13-cv-03560 (C.D. Cal.) (“the District Court Case”). Pet. 2–3.
On May 5, 2015, we instituted trial for all challenged claims 8–12 of
the ’466 Patent, on the grounds that the challenged claims are unpatentable
under 35 U.S.C. §§ 101, 102, and 103. Paper 10 (“Decision to Institute” or
“Inst. Dec.”). The Scheduling Order set a due date of August 5, 2015, for
MyMedicalRecords, Inc. (“Patent Owner”) to file a Patent Owner Response
to the Petition. Paper 11. Rather than filing a Response regarding the
merits, Patent Owner filed an Updated Mandatory Notice (Paper 14) and
now contends that this proceeding should be terminated because of activity
that occurred in the District Court Case (Paper 16). That activity and the
parties’ contentions regarding the appropriate course of action in light of that
activity are summarized below.
B. The District Court Case and Related Parties’ Contentions
Prior to institution of trial, Patent Owner advised us that on December
23, 2014, the District Court determined that each of the challenged claims of
the ’466 Patent is directed towards patent-ineligible subject matter under
35 U.S.C. § 101 (Paper 9, 4 (citing Ex. 2002)) and that the District Court
Decision was on appeal to the United States Court of Appeals for the Federal
Circuit (id. at 4–5 (citing Ex. 2003)). On July 30, 2015, after institution of
trial, Patent Owner filed an Updated Mandatory Notice informing us that the
Federal Circuit issued a Mandate, based on a voluntary motion by Patent
Owner, dismissing all the appeals. Paper 14 (citing Ex. 2006).
In response to an Order to Show Cause (Paper 15), Patent Owner
contends that “[t]he appropriate action is for the Board to terminate this
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matter under 37 C.F.R. § 42.72, rather than enter a judgment.” Paper 16, 2–
3 (citing Plaut v. Spendthrift Farm, Inc., 514 U.S. 211, 219 (1995);
Fresenius USA, Inc. v. Baxter International, Inc., 721 F.3d 1330 (Fed. Cir.
2013)). Patent Owner’s basis for its contention is that “the current CBM
proceeding is moot” and “[t]here is nothing left for the Board to decide.” Id.
at 2.1
Petitioner disagrees and contends that “terminating this matter under
§ 42.72 without a final written decision would be inappropriate.” Paper 18,
2 (emphasis in original). Petitioner further contends that “[t]his CBM is not
in a preliminary stage, and the Board has already issued a decision to
institute review.” Id.
C. Discussion
In its Petition, Petitioner seeks relief beyond what was requested from
the District Court. In particular, Petitioner requests a judgment against the
challenged claims as unpatentable. Pet. 1. A final written decision in the
context of a covered business method patent review carries with it, inter
alia, the effects provided in 35 U.S.C. § 328(b) (“If . . . the time for appeal

1 Patent Owner filed a request to amend its response to not include a portion
of a footnote that indicates Petitioner’s counsel has not been responsive.
Paper 19. We remind the parties that “[g]enerally, a motion will not be
entered without prior Board authorization” and “a party should institute a
conference call to obtain such authorization.” Office Patent Trial Practice
Guide, 77 Fed. Reg. 48,756, 48,762–63 (Aug. 14, 2012). Because we do not
rely on Patent Owner’s or Petitioner’s contentions regarding Petitioner’s
responsiveness and this proceeding is in a final stage, we deny Patent
Owner’s request to make the change. Nonetheless, although Patent Owner
did not seek authorization prior to filing (Paper 19), we do not expunge
Patent Owner’s request under 37 C.F.R. § 42.7.
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4
has expired or any appeal has terminated, the Director shall issue and
publish a certificate cancelling any claim of the patent finally determined to
be unpatentable.”)
We are not persuaded by Patent Owner that nothing is left for us to
decide. The covered business method patent review that we instituted for
claims 8–12 of the ’466 Patent (Inst. Dec. 31–32) is distinct and independent
from the appeal of the District Court’s determination that each of the
challenged claims of the ’466 Patent is directed towards patent-ineligible
subject matter under 35 U.S.C. § 101. Cf. In re Etter, 756 F.2d 852, 857
(Fed. Cir. 1985) (“[R]eexamination proceedings and court actions involving
challenges to validity [are] distinct and independent.”)
Additionally, Patent Owner’s cited authority involves, for example,
“retroactively commanding the federal courts to reopen final judgments.”
Plaut, 514 US at 219. In contrast, in the present covered business method
patent review, prior to dismissal of the appeal, we instituted covered
business method patent review of all challenged claims. Inst. Dec. 32. No
proceeding needs to be reopened because trial commenced on the entry date
of the Decision to Institute and is still ongoing. Id.
Section 42.72 provides that “[t]he Board may terminate a trial without
rendering a final written decision where appropriate . . . .” 37 C.F.R.
§ 42.72 (emphasis added). The instant proceeding is not in a preliminary
stage. We already issued a decision authorizing covered business method
patent review because we determined that the information presented in the
Petition demonstrates that it is more likely than not that each of the
challenged claims is unpatentable. Inst. Dec. 31–32. Under the
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circumstances presented here, we determine that termination under § 42.72
is not appropriate.
Patent Owner has not filed a response to the petition after we
authorized the covered business method patent review and has not submitted
any factual evidence or expert opinions. We have jurisdiction under
35 U.S.C. § 6(c) and we issue a Final Written Decision pursuant to
35 U.S.C. § 328(a) and 37 C.F.R. § 42.73. For the reasons set forth below,
we determine that Petitioner has shown by a preponderance of the evidence
that claims 8–12 of the ’466 Patent are unpatentable, under 35 U.S.C. § 101.
Because we determine that all challenged claims are unpatentable, under 35
U.S.C. § 101, we need not reach the grounds of anticipation or obviousness.
D. The ’466 Patent
The ’466 Patent explains, “[l]aws such as the Health Insurance
Portability and Accountability Act (HIPAA)[2] provide a patient with the
right to access [ ] their own medical records.” Ex. 1001, 1:21–26. The ’466
Patent relates to providing a method for consumers to request their medical
records from health care providers and store their medical records for online
access. Id. at 1:15–20 (footnote added).
E. Illustrative Claim
Claim 8 is the independent claim challenged by Petitioner. Each of
claims 9–12 depends, directly or indirectly, from claim 8. Claim 8 is
illustrative and is reproduced below:

2 Pub. L. No. 104-191 (1996).
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8. A method for providing a user with the ability to
access and collect personal health records associated with the
user in a secure and private manner, the method comprising:
associating access information with the user for the user
to use to access a server storing files comprising personal health
records associated with the user in a computer readable storage
medium;
providing the user with a user interface on a computing
device to remotely access the personal health records stored on
the server;
receiving at the server the files comprising the personal
health records associated with the user from a health care
provider associated with the user;
receiving at the server a request from the user made
through the user interface of the computing device for access to
the files, wherein the access information is associated with the
request;
sending the user a file containing the personal health
records associated with user from the server to the computing
device in response to the request;
wherein the files are maintained on the server
independently from any files maintained by the health care
provider and wherein the files are managed privately by the
user independently from the health care provider.
II. ANALYSIS
A. Claim Construction
As a step in our analysis in the Decision to Institute, we determined
the meaning of the claims. The constructions are summarized in the table
below.
Claim Term Construction
“health care provider” “[A] provider of health care
services.” Inst. Dec. 6.
“maintained on the server
independently”
“[S]tored on the server separately
and not under the control or authority
of the health care provider.” Id. at 8.
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Claim Term Construction
“managed privately by the user” We determined that “managed”
includes “controlled.” We
determined that the remainder of the
phrase needs no express
construction. Id. at 9.

We discern no reason, based on the complete record now before us, to
change our determinations thereof.
B. Non-Statutory Subject Matter
Petitioner asserts that each of the challenged claims is unpatentable
under 35 U.S.C. § 101 for being directed to non-patentable subject matter.
Pet. 19. In support of this ground, Petitioner presents a Declaration by Dr.
Wallace G. Bysinger (Ex. 1008). The statute states that a new and useful
“process, machine, manufacture, or composition of matter” is eligible for
patent protection. 35 U.S.C. § 101. Each of the challenged claims is
directed to a process.
Supreme Court precedent provides three specific exceptions to the
broad categories of § 101: laws of nature, physical phenomena, and abstract
ideas. Bilski v. Kappos, 561 U. S. 593, 601 (2010). “The ‘abstract ideas’
category embodies the longstanding rule that ‘[a]n idea of itself is not
patentable.’” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355
(2014) (citing Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (quotations
omitted)).
In Alice, the Supreme Court referred to the framework set forth in
Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct.
1289 (2012), “for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
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applications of those concepts.” Alice, 134 S. Ct. at 2355. In the first step,
“we determine whether the claims at issue are directed to one of those
patent-ineligible concepts.” Id. “If so, we then ask, ‘[w]hat else is there in
the claims before us?’” Id. (quoting Mayo, 132 S. Ct. at 1297). In the
second step, we 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. Step
two of the analysis may be described 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. Id. (citing Mayo, 132 S. Ct. at 1294).
1. Abstract Idea
Petitioner asserts that claims 8–12 of the ’466 Patent are unpatentable
under 35 U.S.C. § 101, because they are directed to the abstract concept of
allowing individuals to manage and access their health records and other
medical or legal files privately. Pet. 19. We agree with Petitioner that the
claimed invention is directed to an abstract idea: privately managing files by
the user. The preamble and all claim limitations of the challenged claims
support this view of the claims, and the ’466 Patent consistently describes
the invention as allowing an individual to control access to their medical
records. See, e.g., Ex. 1001, 5:21–23. Management or control by the user or
patient rather than by the health care provider is a method of organizing a
human activity. On this record, the concept is an abstract idea, just like the
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basic hedging concept at issue in Bilski and the abstract idea of
intermediated settlement in Alice.3
2. Inventive Concept
Turning to the second step of the analysis, we consider the elements
of the challenged claims both individually and as an ordered combination to
determine whether the additional elements transform the nature of the claim
into a patent-eligible application. Alice, 134 S. Ct. at 2355. Step two of the
analysis involves determining whether an element or combination of
elements is sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the ineligible concept itself. Id. (citing
Mayo, 132 S. Ct. at 1294).
First, we consider the elements of the challenged claims separately.
Independent claim 8 includes recitations relating to sending a personal
health record from a health care provider to a server, such as a web server
(Ex. 1001, 9:36–37), and then to the user’s computing device. Id. at 17:1–
21. These recitations include associating access information with the user,
such as a password, providing a user interface, receiving a request, and
sending a file in response to the request. Id.

3 We further note that our determination is consistent with Patent Office
guidance on subject matter eligibility. See 2014 Interim Guidance on Patent
Subject Matter Eligibility, 79 Fed. Reg. 74,618, 74,622 (Dec. 16, 2014)
(“Abstract ideas . . . by way of example, includ[e] . . . certain methods of
organizing activities.”); see also July 2015 Update: Subject Matter
Eligibility, http://www.uspto.gov/sites/default/files/documents/ieg-july-
2015-update.pdf (last visited August 20, 2015) (“The phrase ‘certain
methods of organizing human activity’ is used to describe concepts relating
to interpersonal and intrapersonal activities, such as managing . . .
transactions between people.”).
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We conclude that receiving and sending data is a routine and
conventional computer function. As explained in Alice, “use of a computer
to obtain data . . . and issue automated instructions . . . are ‘well-understood,
routine, conventional actitiv[ies]’ previously known to the industry.” Alice,
134 S. Ct. 2359; see also buySAFE, Inc. v. Google, Inc., 765 F.3d 1350,
1355 (Fed. Cir. 2014) (“That a computer receives and sends the information
over a network—with no further specification—is not even arguably
inventive.”).
Restricting access by password also is routine and conventional. See
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 712–13, 717 (Fed. Cir. 2014)
(determining that representative claim 1 is patent ineligible although it
recites “a fourth step of restricting general public access.”). Similarly,
providing a user interface is an insignificant activity. See Accenture Global
Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1342–43 (Fed.
Cir. 2013) (determining that claim 1 is patent ineligible although it recites a
“claim folder,” which “manages claim information . . . by providing a
structured and easy to use interface.”).
Claim 8 includes additional recitations relating to how data is stored
and managed on the server. We determine that these limitations recite
generic functions performed by a generic server and computing device.
Storing files is a basic computer function. See Alice, 134 S. Ct. at 2359
(“Using a computer to create and maintain ‘shadow’ accounts amounts to
electronic recordkeeping—one of the most basic functions of a computer.”).
Additionally, regarding the recitation in challenged claim 8 of “wherein the
files are maintained on the server independently from any files maintained
by the health care provider” (Ex. 1001, 17:18–19 (emphasis added)), we
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note the representative claim in Alice had a similar recitation. See Alice, 134
S. Ct. at 2352.
In particular, in Alice, the representative claim included the following:
“creating a shadow credit record and a shadow debit record for each
stakeholder party to be held independently by a supervisory institution from
the exchange institutions” (emphasis added). Id. Nonetheless, in Alice, the
Supreme Court concluded that the claim reciting this independent-
maintenance limitation was ineligible for patent protection. Id. at 2360.
Given that the recitation of independent maintenance of electronic records
was found in Alice to be merely the recitation of generic computer functions,
the similar recitation here leads us to the same conclusion.
Second, we consider the challenged claims as an ordered combination.
Id. at 2359. On this record, when viewed as a whole, the challenged claims
8–12 simply recite the concept of user management performed by a generic
computer. The challenged claims, for example, do not purport to improve
the functioning of the computer itself. Nor do they improve another
technology or technical field.
Petitioner additionally relies on the Declaration of Dr. Bysinger
(Pet. 20–28), who testifies that the recited elements including “server,”
“storing files . . . in a computer readable storage medium,” and “user
interface on a computing device” were well-known conventional concepts in
2005. Ex. 1008 ¶¶ 30–32. Dr. Bysinger additionally states “the abstract
idea of privately accessing and managing patient medical records . . . [has]
existed since at least the promulgation of HIPAA.” Id. ¶ 33. We credit Dr.
Bysinger’s statements because they are consistent with the challenged
claims.
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Challenged dependent claims 9–12 add nothing that alters the above
analysis under § 101. Claims 9, 10, 11, and 12 recite additional limitations,
such as wherein the access information comprises a password, receiving files
from a second provider, wherein the files comprise image format files
including wills and powers of attorney, respectively. Based on the present
record, these comprise either generic limitations, such as using a password
for access or sending a file in a known image format, or they relate to
organizing human activities, such as user management of legal and financial
documents, in addition to health records.
Accordingly, we determine that Petitioner has shown by a
preponderance of the evidence that claims 8–12 of the ’466 Patent are
unpatentable under 35 U.S.C. § 101, because they are directed to non-
statutory subject matter.
III. CONCLUSION
We conclude that Petitioner has shown by a preponderance of the
evidence that each of claims 8–12 of the ’466 Patent is unpatentable under
35 U.S.C. § 101, as being directed to non-statutory subject matter. This is a
Final Written Decision of the Board under 35 U.S.C. § 328(a).
IV. ORDER
For the foregoing reasons, it is
ORDERED that, pursuant to 35 U.S.C. § 328, claims 8–12 of U.S.
Patent No. 8,301,466 are determined to be unpatentable; and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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PETITIONER:

J. Steven Baughman
Marc A. Cavan
ROPES & GRAY LLP
steven.baughman@ropesgray.com
marc.cavan@ropesgray.com

PATENT OWNER:

John D. Goodhue
Michael Gilchrist
MCKEE,VOORHEES & SEASE, PLC
john.goodhue@impvs.com
mike.gilchrist@ipmvs.com