Allscripts Healthcare Solutions, Inc.v.Uniloc USA, Inc.

Patent Trial and Appeal Board

Feb 17, 2016

08504801 (P.T.A.B. Feb. 17, 2016)

Trials@uspto.gov Paper 13
Tel: 571-272-7822 Entered: February 17, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
ALLSCRIPTS HEALTHCARE SOLUTIONS, INC., CERNER
CORPORATION, CERNER HEALTH SERVICES, INC.,
EPIC HOSTING, LLC, and EPIC SYSTEMS CORPORATION,
Petitioner,
v.
UNILOC LUXEMBOURG S.A.,
Patent Owner.
_____________

Case IPR2015-01615
Patent 5,682,526
______________

Before KALYAN K. DESHPANDE, JACQUELINE WRIGHT BONILLA,
and MIRIAM L. QUINN, Administrative Patent Judges.

BONILLA, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

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I. INTRODUCTION
Allscripts Healthcare Solutions, Inc., Cerner Corporation, Cerner
Health Services, Inc., Epic Hosting, LLC, and Epic Systems Corporation
(collectively “Petitioner”) filed an Amended Petition requesting an inter
partes review of claims 1–7, 10–19, and 25 of U.S. Patent No. 5,682,526
(Ex. 1001, “the ’526 patent”). Paper 10 (“Petition” or “Pet.”). Uniloc
Luxembourg S.A. (“Patent Owner”) filed a Preliminary Response to the
Petition. Paper 12 (“Prelim. Resp.”). Under 35 U.S.C. § 314(a), an inter
partes review may not be instituted unless it is determined that there is “a
reasonable likelihood that the petitioner would prevail with respect to at least
1 of the claims challenged in the petition.”
We determine that Petitioner has not established a reasonable
likelihood that it would prevail in showing the unpatentability of any claim
challenged in the Petition. Accordingly, we decline to institute an inter
partes review.
A. Related Proceedings
The parties identify multiple suits filed by Patent Owner against
Petitioner and other defendants in relation to the ’526 patent in the U.S.
District Court for the Eastern District of Texas. The parties indicate that
those cases have been consolidated into a single case, Uniloc USA, Inc. v. E-
MDS, Inc., Civil Action No. 6:14-cv-625 (consolidated) (E.D. Tex). Pet. 1;
Paper 9.
B. Proposed Grounds of Unpatentability
Petitioner advances ten grounds of unpatentability under 35 U.S.C.
§ 102(b) or § 103(a) in relation to claims 1–7, 10–19, and 25 of the
’526 patent (Pet. 11–12):
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Reference(s) Statutory
Basis
Challenged
Claims
Norden-Paul (Ex. 1009)1 § 102(b) 1–3, 10, and 25
Norden-Paul (Ex. 1009) and Potter (Ex. 1015)2 § 103(a) 1–3
Norden-Paul (Ex. 1009) and Brimm (Ex. 1016)3 § 103(a) 10 and 25
Musen (Ex. 1010)4 § 102(b) 4–7
Musen (Ex. 1010) and Norden-Paul (Ex. 1009) § 103(a) 4–7
COSTAR (Ex. 1011) 5 § 102(b) 11–13
COSTAR (Ex. 1011) and Norden-Paul (Ex.
1009)
§ 103(a) 11–13
Nolan (Ex. 1012) 6 § 102(b) 14
Nolan (Ex. 1012) and Norden-Paul (Ex. 1009) § 103(a) 14
Norden-Paul (Ex. 1009) and Salas (Ex. 1013) 7 § 103(a) 15–19

1 Norden-Paul et al., U.S. Patent No. 4,878,175, filed Nov. 3, 1987, issued
Oct. 31, 1989 (“Norden-Paul”).
2 Potter et al., U.S. Patent No. 4,733,354, filed Nov. 23, 1984, issued Mar.
22, 1988 (“Potter”).
3 Brimm et al., U.S. Patent No. 5,072,383, filed Aug. 24, 1990, issued Dec.
10, 1991 (“Brimm”).
4 Musen, Automated Generation of Model-Based Knowledge-Acquisition
Tools, Pitman Publishing (1989) (“Musen”).
5 How to Use the Medical Data Module; A User’s Manual for the COSTAR
System (March 1981) (“COSTAR”).
6 Nolan et al., U.S. Patent No. 5,253,362, filed Jan. 29, 1990, issued Oct. 12,
1993 (“Nolan”).
7 Salas et al., U.S. Patent No. 5,317,686, filed Mar. 10, 1993, issued May
31, 1994 (“Salas”).
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In addition, Petitioner supports its challenges in the Petition with a
Declaration by Dr. Bryan Bergeron (“Bergeron Decl.”) (Ex. 1017).
C. The ’526 Patent
The ’526 patent is directed to computer systems and methods for
organizing, recording, and displaying patient medical information. Ex.
1001, 1:8–11, 1:66–2:2. The methods involve the use of a patient
information hierarchy and “patient data flowsheets, which define views in
which the patient data stored according to the hierarchy may be entered and
viewed.” Id. at 2:1–9.
Users may “add, modify, and rearrange global or local patient
information parameters that make up the hierarchy.” Id. at 2:9–11.
Parameters correspond to pieces of patient data. Id. at 5:2–4. One example
is a “cough parameter” that indicates “whether a particular patient at a
particular time exhibits no cough, a non-productive cough, or a productive
cough.” Id. at 5:4–7. Another option is a “normal” value, i.e., a result value
for a parameter for “a well patient.” Id. at 5:24–36, 11:34–52, Fig. 4.
“Global” patient information parameters “share a single set of result values
for each patient,” as compared to “local” parameters that “each have their
own set of result values for each patient.” Id. at 3:29–39.
Users may “customize flowsheets used for entering and displaying
result values of parameters,” and “expand and contract overview
encapsulating parameters to display or hide the encapsulated parameters
encapsulated therein.” Id. at 2:11–17. In addition, users also may “link a
result value of one parameter to other parameters, causing the linked-to
parameters to be displayed when the result value is entered.” Id. at 2:17–20.
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D. Claims
Claims 1, 4, 10, 11, 14, and 15 of the challenge claims are
independent. Claims 1, 4, 11, and 14 are representative, and are reproduced
below.
1. A method in a computer system for designing, under the
control of a user, a patient information hierarchy, the hierarchy
containing a plurality of parameters including a linked-from
parameter having a linked-from possible result value that is
linked to one or more linked-to parameters, the method
comprising the steps of:
(a) receiving an instruction from the user to create a new
parameter within the patient information hierarchy;
(b) in response to step (a), creating a new parameter within
the patient information hierarchy;
(c) receiving an instruction from the user to specify a
plurality of indicated possible result values for the new
parameter;
(d) in response to step (c), specifying the indicated possible
result values as possible result values of the new
parameter;
(e) receiving an instruction from the user to link an indicated
linked-from possible result value among the possible result
values of the new parameter to one or more indicated
linked-to parameters contained within the patient
information hierarchy; and
(f) in response to step (e), within the patient information
hierarchy, linking the indicated linked-from possible result
value to the indicated linked-to parameters, such that the
new parameter is a linked-from parameter, and such that,
when the new parameter is displayed for a particular
patient, if the new parameter has the linked-from possible
result value, the linked-to parameters are displayed in
conjunction with the new parameter.

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4. A method in a computer system for designing, under the
control of a user, a patient information hierarchy, the patient
information hierarchy containing a plurality of parameters that
may be displayed in conjunction with a particular patient, the
parameters including both result parameters that may have a
result value for each patient and encapsulating parameters that
each identify and encapsulate one or more other parameters to
represent them together at a higher conceptual level, the method
comprising the steps of:
(a) receiving an instruction to create a first result parameter
that may have a result value for each patient, the
instruction specifying a parameter name and a data type;
(b) in response to step (a), creating within the patient
information hierarchy a first result parameter having the
parameter name and data type specified in the instruction
received in step (a);
(c) receiving an instruction to create a second result parameter
that may have a result value for each patient, the
instruction specifying a parameter name and a data type;
(d) in response to step (c), creating within the patient
information hierarchy a second result parameter having the
parameter name and data type specified in the instruction
received in step (c);
(e) receiving an instruction to create a first encapsulating
parameter and for encapsulating one or more other
parameters to represent them together at a higher
conceptual level, the instruction specifying a parameter
name and a list of encapsulated parameters, the specified
list of encapsulated parameters including the first result
parameter and excluding the second result parameter;
(f) in response to step (e), creating within the patient
information hierarchy a first encapsulating parameter
having the parameter name and the list of encapsulated
parameters specified in the instruction received in step (e);
(g) receiving an instruction to display the patient information
hierarchy for a particular patient in a user-selected
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flowsheet, the user-selected flowsheet including the second
result parameter and the first encapsulatory parameter; and
(h) in response to step (g), displaying a list of parameters
including the first encapsulating parameter and the second
result parameter and excluding the first result parameter.
11. A method in a computer system for designing and
maintaining the contents of a plurality of named parameters
identified by parameter identifiers that may contain result
values for a particular patient, the parameters being arranged in
a patient information hierarchy, the method comprising the
steps of:
(a) receiving instructions from a user to create a parameter
having a first name at a first location in the patient
information hierarchy and a second location in the patient
information hierarchy, the instructions further specifying
that the parameter having the first name is a global
parameter;
(b) in response to step (a), creating parameters at the first and
second locations in the patient information hierarchy that
are both identified by a first parameter identifier;
(c) receiving instructions from a user to create a parameter
having a second name at a third location in the patient
information hierarchy and a fourth location in the patient
information hierarchy, the instructions further specifying
that the parameter having the second name is a local
parameter;
(d) in response to step (c), creating a parameter at the third
location in the patient information hierarchy that is
identified by a second parameter identifier and creating a
parameter at the fourth location in the patient information
hierarchy that is identified by a third parameter identifier,
wherein the second and third parameter identifiers are
distinct.
14. A method in a computer system for designing and
maintaining the contents of a patient information hierarchy
comprised of a plurality of parameters that may contain result
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values for a particular patient, the patient information hierarchy
having associated with it a flowsheet for displaying and
modifying the result values of a subset of the parameters of the
patient information hierarchy for a particular patient, the subset
of the parameters that may be displayed and modified using the
flowsheet including a parameter of a patient note type, having a
result value comprising an author name field, a time field, and a
note text field, the method comprising the steps of:
(a) receiving an instruction from the user to display parameter
result values for a selected patient using the flowsheet;
(b) in response to step (a), displaying parameter result values
for the selected patient using the flowsheet such that the
result value of the parameter of the patient note type is
displayed in an abbreviated form in conjunction with the
other parameters in the subset, such that at least a portion
of the author name field is displayed;
(c) receiving an indication that the user has selected the result
value of the parameter of the patient note type is displayed
in an abbreviated form; and
(d) in response to step (c), displaying the entire contents of the
result value of the parameter of the patient note type, such
that the complete contents of the author name, time and
note text fields are displayed.
Id. at 12:40–13:2, 13:27–14:7, 15:11–38, 16:30–58.
II. ANALYSIS
A. Claim construction
Petitioner provides proposed constructions of certain terms in the
challenged claims, as previously construed by the U.S. District Court for the
Central District of California in a case also involving the ’526 patent at issue
here. Pet. 9–10 (referring to Uniloc v. Compulink Business Systems, Inc.,
Nos. 2:11-cv-10122; 2:13-cv-03246; 2:13-cv-03244 (C.D. Cal.) (Ex. 1020)).
Patent Owner does not dispute those constructions, but contends that
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Petitioner incorrectly sets forth the standard for claim construction in this
case as the broadest reasonable interpretation in light of the patent
specification (“BRI”). Prelim. Resp. 7–9; see also 37 C.F.R. § 42.100(b)
(stating that in an inter partes review, claim terms in an unexpired patent are
given their broadest reasonable interpretation in light of the patent
specification). According to Patent Owner, because the ’526 patent expired
on July 20, 2015, we should apply the Phillips standard of claim
construction. Id. (referring to Phillips v. AWH Corp., 415 F.3d 1303, 1314
(Fed. Cir. 2005) (en banc)).8
Because the ’526 patent has expired, we agree that the Phillips claim
construction standard applies here. See Toyota Motor Corp. v. Cellport Sys.,

8 When addressing claim construction, Patent Owner asserts:
A notable difference between these two standards is that the
BRI standard confines its analysis to the content of the patent
specification (intrinsic evidence only), while the Phillips
standard considers both intrinsic evidence (the claims,
specification and prosecution history) and extrinsic evidence
(dictionary definitions and expert testimony).
Prelim. Resp. 8 (citing a “Law360.com” article in support).
The above assertion does not describe accurately the BRI analysis. As
part of BRI, we certainly consider the specification and the claim terms
themselves. In this context, however, claim terms are given their ordinary
and customary meaning, as would be understood by one of ordinary skill in
the art in the context of the entire disclosure. In re Translogic Tech., Inc.,
504 F.3d 1249, 1257 (Fed. Cir. 2007). Thus, if cited to us with sufficient
specificity, we consider all relevant intrinsic evidence (including prosecution
history) and extrinsic evidence (such as dictionary definitions and expert
testimony) before us when engaging in a BRI analysis. Such evidence can
help us determine the broadest reasonable interpretation in light of the patent
specification. See Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298
(Fed. Cir. 2015); Straight Path IP Grp., Inc. v. Sipnet EU S.R.O., 806 F.3d
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Inc., Case IPR2015-00633, slip op. at 8–10 (PTAB Aug. 14, 2015) (Paper
11); cf. In re Rambus Inc., 694 F.3d 42, 46 (Fed. Cir. 2012) (“While claims
are generally given their broadest possible scope during prosecution, the
Board’s review of the claims of an expired patent is similar to that of a
district court’s review.”) (internal citation omitted).
With that in mind, and based on a review of the information before us,
we adopt the constructions presented by Petitioner, as provided by the
district court and uncontested by either party in this case. Pet. 9–10; Prelim.
Resp. 8–10. In addition, we also construe “normal result values” as recited
in dependent claim 25. The specification of the ’526 patent indicates that a
“normal” result value corresponds to “a result value for the parameter [for]
that a well patient.” Ex. 1001, 5:24–36, 11:33–52. Thus, we construe
“normal result values” to refer to medical information values that one would
obtain from a “normal” or “well” patient. We determine that express
construction of other terms is not necessary to our analysis on whether to
institute. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
(Fed. Cir. 1999) (only claim terms in controversy need to be construed, and
only to the extent necessary to resolve the controversy).

1356, 1362 (Fed. Cir. 2015) (“The plain meaning of the claim language is
therefore not overridden by the specification. And the plain meaning is
positively confirmed by the prosecution history, which we have indicated is
to be consulted even in determining a claim’s broadest reasonable
interpretation.”); TriVascular, Inc. v. Samuels, No. 2015-1631, slip op. 6–7
(Fed. Cir. Feb. 5, 2016).
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B. Asserted anticipation of claims 1–3, 10, and 25 by Norden-Paul
(Exh. 1009)
Petitioner contends that Norden-Paul anticipates claims 1–3, 10, and
25 of the ’526 patent. Pet. 12–17, 41–47. Petitioner contends that during
prosecution of the ’526 patent, Patent Owner “did not contest the presence of
any element of claims 1–3 in Norden-Paul except element (f) of claim 1,
which requires ‘linking the indicated linked-from possible result value to the
indicated linked-to parameters.’” Id. at 12–13 (citing Ex. 1004, 7–8).
Petitioner then argues that Norden-Paul teaches the recited “linking”
functionality, referring to Figure 8 in the reference. Pet. 13–14 (citing Ex.
1009, Fig. 8, 13:57–14:6; Ex. 1017 ¶¶ 33, 34).
Even assuming that Figure 8 and the cited passages in Norden-Paul
describe a “linking” of a value to parameters in some fashion, Petitioner
does not address adequately other recited aspects in claims 1–3, such as
elements (a)–(d) in claim 1 or limitations recited in claims 2 and 3, in its
analysis portion of the Petition. Petitioner’s assertions about what the
Examiner or Patent Owner may have stated during prosecution of the
challenged patent is not sufficient to indicate that Norden-Paul describes all
other relevant limitations at issue here. Thus, we necessarily turn to claim
charts provided by Petitioner toward the end of its Petition.
Petitioner’s claim charts provide citations and block quotes from
certain references in relation to some limitations in challenged claims. For a
number of limitations, however, Petitioner incorporates by reference
citations and quotes as set out in relation to earlier limitations in the charts.
For example, in relation to four limitations of claim 1 and nearly all
limitations recited in claims 2 and 3, Petitioner’s chart states “See claim 1
element (a),” or (d), (a)–(d), or (e). Pet. 42–45.
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Although in theory such claim charts, especially in conjunction with
analysis elsewhere in the Petition, could indicate sufficiently where each
element of a claim is disclosed in a reference, the Petition here does not. As
noted above, the analysis section of the Petition fails to explain adequately
where and how Norden-Paul discloses the majority of limitations in
challenged claims 1–3. The claim charts fail to sufficiently fill in the blanks.
For example, in relation to elements (c) and (d) of claim 1, Petitioner
cites Figure 8 and quotes a portion of Norden-Paul that describes a nurse
entering “an item of information” into a form using a computer mouse and
selecting an item from a list of entries displayed in a pop-up window, or by
typing information directly into a pop-up window. Pet. 42–43 (citing Ex.
1009, 9:1–14, Fig. 8). Petitioner asks us to infer, but does not explain
adequately how, the cited disclosures describe receiving an instruction from
a user to specify, or specifying, “a plurality of indicated possible result
values for the new parameter,” as required in elements (c) and (d) of claim 1.
Ex. 1001, 12:51–56 (emphasis added). Specifically, Petitioner does not
explain sufficiently how entering or selecting “an item” in a form or pop-up
window (in Norden-Paul) corresponds to specifying a “plurality” of result
values, as required in claim 1.
In relation to elements (e) and (f) in claim 1, Petitioner’s claim chart
points us to “claim 1 elements (a)–(d),” without explaining or sufficiently
indicating how disclosures cited or quoted therein describe “receiving an
instruction from the user to link an indicated linked-from possible result
value . . . to one or more indicated linked-to parameters,” as recited in
element (e), for example. Id. at 12:57–61. Likewise, Petitioner’s analysis
section does not provide an adequate explanation as to where and how
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Norden-Paul describes all aspects of elements (e) and (f). Providing general
and conclusory statements regarding “linking,” citing Figure 8, and referring
to “parameters” and a discussion of Figure 8 in Norden-Paul, is insufficient
to demonstrate a reasonable likelihood of prevailing. Pet. 12–14 (citing Ex.
1009, Fig. 8, 13:57–14:6).
Petitioner also contends that Norden-Paul anticipates independent
claim 10 and its dependent claim 25. Pet. 15–17, 45–47. Petitioner’s
contentions here suffer similar failings to those noted above. In its analysis
section, Petitioner only refers to a general statement made by Patent Owner
during prosecution, discusses “default values” generally (a term not recited
in claims 10 or 25), and asserts in a conclusory manner that “storing of result
values” (presumably referring to “storing” in element (e) in claim 10) is
inherently disclosed by Norden-Paul. Id. at 15–16. Thus, again, Petitioner
necessarily relies on its claim charts, which fail to adequately fill in the gaps
in the analysis section for the same reasons discussed above. Id. at 45–47.
For instance, Petitioner does not explain sufficiently how Norden-Paul
describes the different elements of claim 10 involving “a selected flowsheet
group.” Petitioner does not indicate how to construe the term “selected
flowsheet group,” nor identify sufficiently where Norden-Paul describes
such a group. Petitioner refers to a number of different figures in Norden-
Paul, and, in relation to element (a) of claim 10, quotes a passage discussing
“a Vital Signs Form of the Flowsheet Section” in reference to “the use of the
Vital Signs Parameter Table” presented in Figure 8. Id. This one reference
to a “Flowsheet Section” in Norden-Paul is insufficient to explain where
Norden-Paul describes “a selected flowsheet group of a selected flowsheet,”
as recited in the claim. In addition, regarding certain elements of claim 10,
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the claim chart refers to “claim elements 1 (g) and (h),” which do not exist in
claim 1 or elsewhere in the claim chart. Id. at 46.
Overall, the citations and quotes in the claim charts do not explain
adequately how Norden-Paul describes each aspect of every claim element
individually, much less a combination of all of elements (a)–(e) in a single
method, as recited in claim 10.
In addition, in relation to dependent claim 25, Petitioner appears to
equate “normal result values” recited in that claim with any “default” values.
Id. at 16–17, 47. As noted above, we construe the claim term “normal result
values” to refer to medical information values that one would obtain from a
“normal” or “well” patient generally. In its discussion of “default” values,
Petitioner does not explain adequately where Norden-Paul describes
associating a “plurality of the parameters specified by the selected flowsheet
group of the selected flowsheet” with “normal result values for these
parameters,” as required in claim 25. Id. at 16–17, 47; Ex. 1001, 20:5–8.
Upon consideration of the Petition and cited information therein, we
are not persuaded that Petitioner adequately points to where Norden-Paul
describes, expressly or inherently, all elements of claims 1–3, 10, and 25.
Pet. 12–17, 41–47.
C. Asserted obviousness of claims 1–3 over Norden-Paul and Potter
(Ex. 1015) and claims 10 and 25 over Norden-Paul and Brimm
(Ex. 1016)
Petitioner further argues that “linking,” as recited in claim 1, is also
taught in Potter. Pet. 17–19. Thus, according to Petitioner, even if Norden-
Paul does not anticipate claims 1–3, those claims are obvious over Norden-
Paul in view of Potter. Id. As noted above, however, even if we assume that
Norden-Paul and/or Potter discloses the “linking” of a value to a parameter,
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Petitioner does not explain adequately where and how either or both
references disclose or suggest the majority of limitations in challenged
claims 1–3. In its discussion of Potter (id.), Petitioner does not overcome
the deficiencies discussed above in relation to Norden-Paul (id. at 12–15,
41–45), which are equally relevant to Petitioner’s obviousness assertion
here.
Petitioner’s contentions regarding the obviousness of claims 10 and
25 over Norden-Paul and Brimm suffer similar deficiencies. Pet. 19–20.
Petitioner does not explain adequately how Norden-Paul and/or Brimm
disclose or suggest each aspect of every claim element individually, much
less a combination of all recited elements in a single method, as required in
claims 10 and 25. Petitioner’s discussion of what Brimm discloses does not
explain sufficiently how disclosures in either reference correspond to the
different limitations recited in claims 10 and 25 (id.), nor overcome the
deficiencies noted above in relation to Petitioner’s arguments regarding
Norden-Paul (id. at 15–17, 45–47).
D. Asserted anticipation of claims 4–7 by Musen (Exh. 1010)
Petitioner contends that Musen anticipates claims 4–7 of the ’526
patent. Pet. 20–25, 47–52. Petitioner argues that Musen discloses creating
and displaying “encapsulating parameters,” as recited in the preamble and
elements (e)–(h) in claim 4, and elements recited in claims 5–7. Id. at 20–
22. Petitioner further contends that Musen teaches “a user-defined patient
hierarchy using prior art systems OPAL, PROTÉGÉ, and ONCOCIN,” and
that a user can add a plurality of parameters, including “data items that have
result values and that may be displayed in a flowsheet.” Id. at 22.
According to Petitioner, a hierarchy in Musen “includes encapsulating
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parameters that identify the result parameters and represent them in a higher
conceptual level,” and the “conceptual levels are shown both in the forms
used to create the hierarchy and the flowsheets that are output from the
hierarchy.” Id. at 22–23.
Independent claim 4 recites a number of different steps, i.e., elements
(a)–(h), involving, for example, “a first result parameter,” “a second result
parameter,” “a first encapsulating parameter,” “(g) receiving an instruction
to display the patient information hierarchy for a particular patient in a user-
selected flowsheet [that includes] the second result parameter and the first
encapsulatory parameter,” and “(h) . . . displaying a list of parameters
including the first encapsulating parameter and the second result parameter
and excluding the first result parameter.” Ex. 1001, 13:27–14:7.
The analysis portion of the Petition does not explain sufficiently how
Musen describes the majority of the limitations recited in challenged claim
4. Pet. 21–23. In fact, except in relation to “encapsulating parameters”
generally, it is not clear which specific limitations Petitioner means to
address, versus others not addressed. Thus, we again necessarily turn to
Petitioner’s claim charts. Id. at 47–51.
In the claim charts, Petitioner does not indicate sufficiently how
Musen describes each aspect of every claim element individually, much less
as a combination in a single method, as required in claim 4. As an initial
matter, the copy of Musen provided by Petitioner as Exhibit 1010 is very
difficult to read. Moreover, in relation to element (h) in claim 4, for
instance, Petitioner quotes a passage from pages 172–173 of Musen (and
cites page 274 of Appendix A). Id. at 50–51. Petitioner does not explain
sufficiently how the quoted and citied portions of Musen describe
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“displaying a list of parameters including the first encapsulating parameter
and the second result parameter and excluding the first result parameter”
(emphasis added). Petitioner does not explain how the cited portions of
Musen describe a system that displays some parameters while excluding a
“first result parameter” (“having the parameter name and data type specified
in the instruction”), as created in steps (a) and (b) of claim 4.
In addition, from what we can read in Exhibit 1010, Musen appears to
be a 280-page document describing a number of different systems, which
include, as Petitioner notes, the three systems of OPAL, PROTÉGÉ, and
ONCOCIN. Ex. 1010, ix–xi (indicating that pp. 8–115 discuss ONCOCIN,
pp. 116–130, 137 discuss OPAL, pp. 131–185 discuss PROTÉGÉ, pp. 186–
270 discuss “generic” and other “forms”), 273 (Appendix A “PROTÉGÉ
Database Relations), 277 (“Editor Database Relations”). In its claim chart,
Petitioner points to widely spanning page ranges in Musen, such as pages 5,
13–15, 172–175, 177, 274, with inadequate discussion as to how those cited
passages relate to each other based on the different systems described. Pet.
47–51 (citing Ex. 1010, 14–15, 177, 13–15, 174–175, 5, 172–173, 274). As
a general matter, we cannot tell from the Petition how Musen describes each
and every recited aspect of the preamble and elements (a)–(h) of claim 4, or
whether all such aspects are described as part of a single method as required
in claim 4.
In its discussion of dependent claims 5–7, the Petition does not
overcome the problems mentioned above in relation to independent claim 4.
Pet. 23–25, 51–52. Furthermore, we agree with Patent Owner that the
Petition suffers additional deficiencies in relation to claims 5 and 6 in
particular, for the reasons noted in the Preliminary Response. Prelim. Resp.
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11–21. Although we give “weight” to evidence cited by Petitioner, we agree
with Patent Owner that Petitioner does not indicate adequately how the
portions of Musen cited by Petitioner describe receiving an instruction from
a user to “expand” (claim 5) or “collapse” (claim 6) a “first encapsulating
parameter.” Id.; Pet. 23–24 (citing Ex. 1010, 5–6, 93), 51 (citing Ex. 1010,
13–14, in relation to claim 5, id. at 5–6, 93, in relation to claim 6).
At most, regarding claim 6, Petitioner points us to “an icon”
depicted in two figures in Musen (Ex. 1010, 6, 93), and asserts that “when
clicked, condenses the data types by collapsing the encapsulated parameters,
resulting in a display of only the encapsulating parameters.” Pet. 24.
Neither Petitioner, nor the paragraphs of Dr. Bergeron’s Declaration cited by
Petitioner in support, explain adequately where Musen itself describes what
that icon means. Pet. 23–24 (citing Ex. 1017 ¶¶ 69–70), 51; see also Ex.
1017 ¶¶ 64, 71 (citing Ex. 1010, 6, 93). We cannot tell from looking at the
icon alone what it conveys to an ordinary artisan, much less that it conveys
the steps of receiving an instruction from a user to “expand” or “collapse” a
“first encapsulating parameter,” as recited in claims 5 and 6. Conclusory
statements by Petitioner and its declarant in this regard, which only cite the
icon itself in support, are insufficient in the absence of more information.
Id.
Upon consideration of the Petition and cited information therein, we
are not persuaded that Petitioner adequately points to where Musen
describes, expressly or inherently, all elements of claims 4–7. Pet. 20–25,
47–52.
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E. Asserted obviousness of claims 4–7 over Musen and Norden-Paul
Petitioner further argues that claims 4–7 would have been obvious
over Musen in view of Norden-Paul. Pet. 26–27. In this regard, Petitioner
asserts that Norden-Paul discloses certain subject matter, without indicating
with sufficient specificity how certain disclosures in that reference
correspond to the different limitations of claims 4–7. Id. In short, in this
ground, we cannot tell from Petitioner’s arguments what exact aspects of the
claims are disclosed in one or both references and/or why one might have
combined different recited elements from the two references into a single
method. Moreover, Petitioner does not overcome the deficiencies discussed
above in relation to Musen, which are equally relevant to Petitioner’s
obviousness assertion here.
F. Asserted anticipation of claims 11–13 by COSTAR (Exh. 1011) or
obviousness of claims 11–13 over COSTAR and Norden-Paul
Petitioner contends that COSTAR describes all elements recited in
claims 11–13 of the ’526 patent. Pet. 27–34, 52–57. Independent claim 11,
from which claims 12 and 13 depend, recites a method comprising elements
(a)–(d), which involve creating different parameters, i.e., global or local
parameters, in different locations and having different names. Ex. 1001,
15:11–38.
Petitioner discusses COSTAR in the context of “global” and “local”
parameters generally, as those terms are recited in elements (a) and (c) of
claim 11. Pet. 27–30. In relation to elements (c) and (d) otherwise,
however, Petitioner argues that those two elements “simply require the same
steps that occurred in elements (a) and (b) to be reiterated with a third and
fourth location and a second identifier,” and assert that operation of the
COSTAR system “would necessarily dictate” that such steps “would be
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performed more than once.” Id. at 30–31; see also id. at 54 (relying on
“claim element (a)” in relation to elements (c) and (d)). In other words,
Petitioner relies on an inherency position in relation to elements (c) and (d).
Id. In support, Petitioner argues that “[a]s explained by Dr. Bergeron, if
there were not more than two parameters to be identified, there would be
such little patient information that the hierarchy described by COSTAR
would have no purpose.” Id. at 31 (citing Ex. 1017 ¶¶ 83, 84, 88).
As an initial matter, Petitioner’s assertion that the COSTAR system
would otherwise “have no purpose” if it identifies only two parameters is
inadequate to demonstrate inherency. Petitioner’s arguments do not explain
sufficiently how recited limitations (c) and (d) are “necessarily present” in a
method described in COSTAR. Schering Corp. v. Geneva Pharms., 339
F.3d 1373, 1377 (Fed. Cir. 2003) (stating that “a prior art reference may
anticipate without disclosing a feature of the claimed invention if that
missing characteristic is necessarily present, or inherent, in the single
anticipating reference”).
Moreover, elements (c) and (d) of claim 11 require more than simply
performing elements (a) and (b) “more than once.” Pet. 30–31. For
example, element (c) requires “a local parameter element” at “a third
location,” and element (d) recites “creating a parameter at the third location
in the patient information hierarchy that is identified by a second parameter
identifier and creating a parameter at the fourth location in the patient
information hierarchy that is identified by a third parameter identifier,
wherein the second and third parameter identifiers are distinct.” Id. at
15:32–38. Petitioner does not explain adequately where COSTAR describes
all aspects of those elements. Id. at 30–31, 54.
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Petitioner’s assertions regarding anticipation of dependent claims 12
and 13, each of which recite a number of additional elements, suffer from
similar deficiencies. Id. at 31–34. Likewise, Petitioner’s assertion of
obviousness of claims 11–13 over COSTAR in view of Norden-Paul does
not overcome the deficiencies discussed above in relation to COSTAR,
which are equally relevant to Petitioner’s obviousness assertion here. Id. at
34–35.
Upon consideration of the Petition and cited information therein, we
are not persuaded that Petitioner adequately indicates how COSTAR
describes, expressly or inherently, all elements of claims 11–13. Pet. 27–35,
52–57. We also are not persuaded that Petitioner adequately indicates how
COSTAR, either alone or in combination with Norden-Paul, teaches or
suggests, expressly or inherently, all elements of those claims. Id.
G. Asserted anticipation of claim 14 by Nolan (Exh. 1014) or
obviousness of claim 14 over Nolan and Norden-Paul
Petitioner contends that Nolan describes all elements recited in claim
14 of the ’526 patent. Pet. 35–36, 57–58. Independent claim 14 recites a
method comprising elements (a)–(d), which involve displaying parameter
result values “in an abbreviated form in conjunction with the other
parameters in the subset, such that at least a portion of the author name field
is displayed” (element (b)), as well as “displaying the entire contents of the
result value of the parameter . . . , such that the complete contents of the
author name, time and note text fields are displayed” (element (d)). Ex.
1001, 16:30–58.
The Petition, both in its analysis section and relevant claim chart, fails
to explain adequately how Nolan describes a method that involves, for
example, displaying parameter values in “an abbreviated form” where “at
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least a portion of the author name field is displayed,” and then “displaying
the entire contents” where “the complete contents of the author name, time
and note text fields are displayed.” Id.; Pet. 35–36, 57–58. The Petition
does not discuss or mention abbreviations, for example, except in the claim
chart where it reproduces elements of claim 14. Pet. 35–36, 57–58. In
addition, Petitioner’s general reference to “claim 14 preamble and claim
elements (a)–(c)” in the claim chart does not explain with sufficient
specificity where Nolan discloses element (d) of claim 14. Id. at 58.
Likewise, Petitioner’s assertion of obviousness of claim 14 over
Nolan in view of Norden-Paul does not overcome the deficiencies discussed
above in relation to Nolan, which are equally relevant to Petitioner’s
obviousness assertion here. Id. at 37–38.
Upon consideration of the Petition and cited information therein, we
are not persuaded that Petitioner adequately indicates how Nolan describes,
expressly or inherently, all elements of claim 14. Pet. 34–38, 57–58. We
also are not persuaded that Petitioner adequately indicates how Nolan, either
alone or in combination with Norden-Paul, teaches or suggests, expressly or
inherently, all elements of that claim. Id.
H. Asserted obviousness of claims 15–19 over Norden-Paul and Salas
(Ex. 1013)
Petitioner argues claims 15–19 of the ’526 patent would have been
obvious over Norden-Paul in view of Salas. Pet. 38–41. Independent claim
15, from which claims 16–19 depend, recites a method comprising elements
(a)–(e), involving displaying parameters and “the parameter placeholder
specified by the selected flowsheet group of the selected flowsheet for the
specified patient” (element (b)), replacing the specified parameter
placeholder with a selected parameter of the patient information hierarchy
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(elements (c) and (d)), and displaying specified parameters, “including the
selected parameter and excluding the parameter placeholder” (element (e)).
Ex. 1001, 16:59–17:22.
Petitioner argues that, during prosecution of the ’526 patent, Patent
Owner did not contest an Examiner’s rejection of claims 15–19 based on
Norden-Paul, “except to argue that ‘[t]he disclosed macro parameters differ
from the placeholders recited in these claims . . . in that they are not replaced
with a parameter selected by the user.” Pet. 39–40 (quoting Ex. 1004, 10).
According to Petitioner, “[t]o the extent that Norden-Paul does not teach the
function of replacing or renaming a placeholder with a parameter,” Salas
provides that teaching. Id. at 40–41. Petitioner does not provide a claim
chart in relation to claims 15–19. Id. at 41–58.
Even if we assume Salas teaches “the function of replacing or
renaming a placeholder with a parameter” as Petitioner argues, the Petition
does not address adequately all recited aspects in claims 15–19. Id. at 38–
41. Petitioner’s assertions here about what the Patent Owner stated during
prosecution of the challenged patent is insufficient to indicate that Norden-
Paul and/or Salas discloses or suggests all relevant limitations at issue. The
Petition does not explain sufficiently how its discussion of disclosures in
Norden-Paul and Salas corresponds to the multiple elements of claim 15, or
limitations recited in dependent claims 16–19, either individually or
collectively in each method, as recited in those claims.
Upon consideration of the Petition and cited information therein, we
are not persuaded that Petitioner adequately indicates how Norden-Paul,
either alone or in combination with Salas, discloses or suggests all
limitations of claims 15–19. Pet. 38–41.
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III. CONCLUSION
For the foregoing reasons, we are not persuaded that the Petition
establishes a reasonable likelihood that Petitioner would prevail in showing
that claims 1–7, 10–19, and 25 of the ’526 patent are unpatentable under 35
U.S.C. § 102(b) or § 103(a).

IV. ORDER
Accordingly, it is
ORDERED that the Petition is denied and no inter partes review is
instituted.

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For PETITIONER:
A. Taylor Corbitt
Brian D. Siff
SCHIFF HARDIN LLP
tcorbitt@schiffhardin.com
bsiff@schiffhardin.com

For PATENT OWNER:

Sean D. Burdick
UNILOC USA, INC.
sean.burdick@unilocusa.com

Brett Mangrum
ETHERIDGE LAW GROUP
brett@etheridgelaw.com