Search America, Inc.v.TransUnion Intelligence LLC

Patent Trial and Appeal Board

Feb 3, 2015

09951962 (P.T.A.B. Feb. 3, 2015)

Trials@uspto.gov Paper 67
571-272-7822 Date Entered: February 3, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SEARCH AMERICA, INC.,
Petitioner,

v.

TRANSUNION INTELLIGENCE, LLC,
Patent Owner.
____________

Case CBM2013-00037
Patent 7,333,937 B2
____________

Before THOMAS L. GIANNETTI, CARL M. DeFRANCO, and
PATRICK M. BOUCHER, Administrative Patent Judges.

BOUCHER, Administrative Patent Judge.

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

CBM2013-00037
Patent 7,333,937 B2

2
I. INTRODUCTION
A. Background
On August 1, 2013, Search America, Inc. (“Petitioner”) filed a
Petition (Paper 5, “Pet.”) to institute a covered business method patent
review of claims 1–14 of U.S. Patent No. 7,333,937 B2 (Ex. 1001, “the ’937
patent”) pursuant to 35 U.S.C. §§ 321–329. TransUnion Intelligence, LLC
(“Patent Owner”) filed a Preliminary Response (Paper 17) on November 11,
2013. Pursuant to 35 U.S.C. § 324, the Board instituted trial on February 7,
2014, as to claims 1–14 of the ’937 patent. Paper 18 (“Dec.”).
During the trial, Patent Owner timely filed a Patent Owner Response
(Paper 25, “PO Resp.”), and Petitioner timely filed a Reply to the Patent
Owner Response (Paper 36, “Reply”). An oral hearing was held on
November 3, 2014 (Paper 66, “Tr.”).
We have jurisdiction under 35 U.S.C. § 6(c). This Decision is a Final
Written Decision under 35 U.S.C. § 328(a) as to the patentability of the
challenged claims. Based on the record before us, Petitioner has
demonstrated by a preponderance of the evidence that claims 1–14 are
unpatentable.

B. Related Proceedings
In addition to this proceeding, Petitioner filed a petition for covered
business method patent review of, and we instituted trial on, claims 1–18 of
U.S. Patent No. 8,185,408 B2 (“the ’408 patent”) in Search America, Inc. v.
TransUnion Intelligence LLC, Case CBM2013-00038 (PTAB).
CBM2013-00037
Patent 7,333,937 B2

3
The ’937 patent has been asserted by Patent Owner against Petitioner
in TransUnion Intelligence, LLC, v. Search America, Inc., Case No. 0:11-cv-
01075-PJS-FLN (D. Minn.) (“the district court proceeding”). Pet. 14.

C. Grounds of Unpatentability
Petitioner relies on two distinct instances of prior public use in
asserting that claims of the ’937 patent are unpatentable under 35 U.S.C.
§§ 102 and 103: (1) a computer-implemented eligibility system operated by
the Texas Department of Human Services (“the TDHS System”); and (2) a
manual method performed by the John T. Mather Memorial Hospital,
located in Port Jefferson, New York, in implementing a charity-care
eligibility process (“the Mather Method”). In asserting that claim 9 is
unpatentable under 35 U.S.C. § 103, Petitioner additionally relies on a
Canadian newspaper article titled “TECHNOLOGY QUARTERLY:
COMPUTERS[:] Internet Speeds credit checks[;] System tailored for
doctors, dentists,” published March 18, 1997, under the byline of Terrence
Belford (Ex. 1013, “Belford”).
As evidence of the structure and functionality of the TDHS System,
Petitioner provides (1) a transcript (Ex. 1006) of a deposition of Kerby
Spruiell, the project manager in charge of the TDHS System, taken in
connection with the district-court proceeding, Pet. 25; (2) a transcript (Ex.
1007) of a deposition of Bobby Keith Graves, a corporate representative of
Dallas Computer Services, Inc. (“DCS”), taken in connection with the
district-court proceeding, Pet. 29; and (3) a copy of a document, titled
CBM2013-00037
Patent 7,333,937 B2

4
“Current System Architecture and Functional Specifications” (Ex. 1008,
“CSA/FS”), which describes the functionality of various TDHS System
modules, Pet. 30–31. As evidence of the Mather Method, Petitioner
provides (1) a transcript (Ex. 1014) of a deposition of James Sunyar, a
corporate representative of the John T. Mather Memorial Hospital, taken in
connection with the district-court proceeding, Pet. 61–62; and (2) a copy of a
“Report to the Community for the Year 2002,” produced by the John T.
Mather Memorial Hospital (Ex. 1015).
The grounds on which we instituted review are summarized by the
following chart. Dec. 23.
Prior Art Basis Claim(s)
Challenged
TDHS System § 102(b) 1–3, 5–8, 10–14
TDHS System § 103(a) 1–8, 10–14
TDHS System and
Belford
§ 103(a) 9
Mather Method § 103(a) 1–14
§ 112, ¶ 1
(written description)
1–14

D. The ’937 Patent
The ’937 patent, titled “Health Care Financing Method,” is directed to
“a health care financing system in which health care grant information can
be analyzed to determine whether a patient qualifies for a health care grant.”
Ex. 1001, col. 2, ll. 61–63. A database stores patient data that may include
“any suitable data useful or necessary for applying for or qualifying for
health care grants,” with credit data, insurance data, and/or income data
CBM
Paten

spec
iden
ratio
Figu
discl
block
iden
comp
diffe
when
2013-000
t 7,333,93
ifically ide
tified by th
.” Id. at co
Figure 2
re 2 is a fl
osed by th
70 and p
tified at bl
are the qu
rent health
the patie
Claim 1,
37
7 B2
ntified. Id
e health c
l. 3, ll. 64
of the ’93
ow diagram
e patent. A
atient data
ock 78. Id
alification
care gran
nt data sati
the only i
. at col. 3
are grant in
–65.
7 patent is
that illus
fter healt
are receiv
. at col. 4,
criteria w
t systems,
sfy the qu
ndependen
5
, ll. 42–47
formation
reproduce
trates a he
h care gra
ed at bloc
ll. 21–29.
ith the pat
with a not
alification
t claim in
. Qualifica
can inclu
d below:
alth care f
nt informa
k 74, quali
The meth
ient data a
ification c
criteria. I
the ’937 p
tion criter
de a “debt

inancing m
tion is col
fication cr
od cycles
t block 82
reated at b
d. at col. 4
atent, is il
ia
to income
ethod as
lected at
iteria are
to
for
lock 90
, ll. 29–36
lustrative:

.

CBM2013-00037
Patent 7,333,937 B2

6
1. A computer implemented method for determining eligibility
of a patient to receive health care financial assistance,
comprising the steps of:
collecting health care financial assistance information,
wherein the health care financial assistance information is
associated with at least a first potential health care financial
assistance plan and a second potential health care financial
assistance plan,
wherein the patient is not enrolled in either of the
first or second potential health care financial assistance
plans at the time of the determination of the eligibility,
wherein the first potential health care financial assistance
plan is provided by a first health care financial assistance
plan provider,
wherein the second potential health care financial
assistance plan is provided by a second health care
financial assistance plan provider,
wherein first provider qualification criteria is
established by the first health care financial assistance
plan provider,
wherein the health care financial assistance
information associated with the first potential health care
financial assistance plan includes the first provider
qualification criteria,
wherein second provider qualification criteria is
established by the second health care financial assistance
plan provider, and
wherein the health care financial assistance
information associated with the second potential health
care financial assistance plan includes the second
provider qualification criteria;
populating at least one database with at least a portion of
the first provider qualification criteria and at least a portion of
the second provider qualification criteria;
inputting patient data associated with the patient, wherein
the patient data is used for applying for health care financial
CBM2013-00037
Patent 7,333,937 B2

7
assistance;
inputting credit information derived from a credit report
of the patient,
extracting at least a portion of the credit information and
combining the extracted credit information with at least a
portion of the patient data to form patient data with
corresponding credit information;
identifying at least a portion of the first provider
qualification criteria in the database and at least a portion of the
second provider qualification criteria in the database;
comparing at least a portion of the patient data with
corresponding credit information to at least the following: i) the
identified first provider qualification criteria; and ii) the
identified second provider qualification criteria;
determining if the comparison satisfies at least one of the
identified first provider qualification criteria or the identified
second provider qualification criteria;
creating a notification if the comparison determines that
at least a portion of the patient data with corresponding credit
information satisfies the identified first provider qualification
criteria, such that the patient’s eligibility to receive financial
assistance under the first potential health care financial
assistance plan is made known by the notification; and
creating a notification if the comparison determines that
at least a portion of the patient data with corresponding credit
information satisfies the identified second provider
qualification criteria, such that the patient’s eligibility to receive
financial assistance under the second potential health care
financial assistance plan is made known by the notification;
wherein the potential health care financial assistance, indicated
in the notification, defrays at least a portion of an associated expense
incurred by the patient.

CBM2013-00037
Patent 7,333,937 B2

8
II. ANALYSIS
A. Claim Construction
The Board interprets claims in an unexpired patent using the broadest
reasonable construction in light of the specification of the patent in which
they appear. 37 C.F.R. § 42.300(b); see also Office Patent Trial Practice
Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012).

1. Claim Terms Previously Construed
In the Decision to Institute, we construed claim terms as reproduced in
the table below. Dec. 10–11. Neither party contests these constructions, and
we see no reason to modify them based on the record developed during the
trial. Therefore, we adopt the below listed constructions for this Final
Written Decision.
Claim Term Construction in the Decision to Institute
“computer implemented
method”
At least one of the recited steps must be
performed by a computer
“inputting patient data
associated with the patient”
Encompasses input by a human being into
the input fields of a graphical user
interface, but not limited to such input

2. “derived”
Independent claim 1 recites “inputting credit information derived from
a credit report of the patient” (emphasis added). Patent Owner contends that
“[i]n view of the specification and the plain meaning of the claim language,
the broadest reasonable interpretation of ‘derived’ as used here is that some
type of value -- such as a debt-to-income ratio as disclosed in an
CBM2013-00037
Patent 7,333,937 B2

9
embodiment in the specification of the [’]937 patent -- is being calculated
from the raw data contained in the credit report.” PO Resp. 20. We
disagree.
First, Patent Owner contends that the plain meaning of “derived” to
one of ordinary skill in the art at the time of filing the application was
“obtained by reasoning” or “calculated.” Id. In support of this contention,
Patent Owner cites the Declaration of Stephen Gray,1 which refers to one of
the definitions provided by Random House Webster’s Dictionary, 4th ed.,
Ballantine Books (New York 2001). Ex. 2002 ¶ 104 (citing Ex. 2002E).
But as Petitioner points out, Mr. Gray refers to the last definition in the
dictionary entry, although the first definition provided for the word “derive”
is “to receive or get from a source.” Reply 4.
Second, Patent Owner refers to a statement in the specification of the
’937 patent that “the debt to income ratio can be computed,” reasoning that
“one of ordinary skill would understand that the credit information input into
the method of claim 1 could not have been mere data taken from a credit
report but rather would have been the result of some calculation or
computation.” PO Resp. 21 (citing Ex. 1001, col. 3, ll. 65–66; Ex. 2002 ¶
104). We disagree with Patent Owner’s reasoning, because the statement in
the specification merely provides an example of a calculation. Furthermore,
as Petitioner observes, Patent Owner’s position is untenable because the
context of the identified statement refers to calculation of “qualification

1 As discussed below, we deny Petitioner’s motion to exclude the Gray
Declaration.
CBM2013-00037
Patent 7,333,937 B2

10
criteria” rather than of “credit information.” See Reply 5. The claim’s text
distinguishes between “qualification criteria” and “credit information.” In
addition, and as Petitioner also observes, the prosecution history supports
that credit information need not be calculated to be input. See id.
We construe “derived” as “received from a source.”

3. “database”
Independent claim 1 recites “populating at least one database” with
qualification criteria. Petitioner does not proffer an explicit construction of
the term “database,” but refers inferentially in its Petition to “an organized
collection of data.” Pet. 36. Petitioner specifically contends that, under the
broadest reasonable construction, a “database” need not be a “computer
database.” Reply 12. Patent Owner points to a dictionary definition of
“database” as “a collection of data, especially in electronic form that can be
accessed and manipulated by computer software.” PO Resp. 34 (citing
Ex. 2002 ¶ 136; Ex. 2002E) (emphasis by Patent Owner).
Patent Owner’s contention that “a person of ordinary skill in the
art . . . would read the reference to ‘database’ in claim 1 as meaning a
computer database” is belied by the dictionary definition that it cites. PO
Resp. 34. Specifically, the emphasized portion of the definition suggests
that, without more, the broadest reasonable construction of “database” is “a
collection of data.” Patent Owner’s reference to the preamble recitation of a
“computer implemented method” (id.) as requiring the more narrow example
of an electronic database that can be accessed and manipulated by software
CBM2013-00037
Patent 7,333,937 B2

11
is unavailing; our construction of “computer implemented method” does not
require that all steps in the method be performed by a computer.
Accordingly, we construe “database” as “an organized collection of
data.”

B. Petitioner’s Motion to Exclude
Patent Owner supports its response with Declarations by Phillip
Dolamore (Ex. 2001), Stephen Gray (Ex. 2002), and Raymond S. Sims
(Ex. 2003). Petitioner moves to exclude: (1) ¶ 10 of the Dolamore
Declaration as lacking personal knowledge, Paper 46, 2; (2) the entirety of
the Gray Declaration as unreliable, id. at 2–4; and (3) the entirety of the
Sims Declaration as irrelevant and unreliable, id. at 4–11. Although
Petitioner moves to exclude the entirety of the Sims Declaration, Petitioner
provides specific focus on ¶¶ 4, 12, 13, 28–35, 37, 45, and 46. Id. at 11–15.

1. Paragraph 10 of the Dolamore Declaration
Patent Owner does not contest Petitioner’s assertion that “Mr.
Dolamore is not being offered as an expert in these proceedings,” in which
case the prohibition of Fed. R. Evid. 602 against testimony to a matter
outside the personal knowledge of the witness applies. See Paper 46, 2;
Paper 62, 1.
The second sentence of paragraph 10 of the Dolamore Declaration
asserts that “[t]hrough Bruce Nelson, Search America was able to fairly
rapidly copy [ADS Response Corp.]’s healthcare product.” This assertion is
CBM2013-00037
Patent 7,333,937 B2

12
not without ambiguity, and may be read as asserting that Search America
did, in fact, “fairly rapidly copy” the referenced product or may be read as
asserting only that such fairly rapid copying was within the ability of Search
America “through Bruce Nelson.” Under either interpretation, we agree
with Petitioner that Patent Owner has provided insufficient evidence to
prove personal knowledge of the assertion. An opinion whether Search
America possessed the ability to fairly rapidly copy the referenced product
“through Bruce Nelson” is outside the scope of admissible testimony for a
lay witness under Fed. R. Evid. 701.
Accordingly, we exclude the second sentence of paragraph 10 of the
Dolamore Declaration.

2. Gray Declaration
Petitioner contends that the Gray Declaration “is so unreliable and
misleading that it should be excluded in its entirety.” Paper 46, 2. Petitioner
points to certain statements in Mr. Gray’s testimony that have a level of
inconsistency with statements made when he was cross-examined,
particularly with respect to whether the modules of the TDHS System need
to be in direct communication in order to satisfy limitations recited in the
claims. Id. at 2–4.
Although we agree that the apparent inconsistencies affect the weight
to be afforded to Mr. Gray’s testimony, the totality of his expert opinion—
including statements made in his Declaration and weaknesses explored by
Petitioner in his cross-examination—is helpful in deciding the issues
CBM2013-00037
Patent 7,333,937 B2

13
presented to us. And as Patent Owner correctly observes, the policy
considerations of Daubert’s gatekeeping framework are less compelling in
bench proceedings such as covered business method patent reviews than in
jury trials. Paper 59, 2–6 (citing Daubert v. Merrell Dow Pharm., Inc., 509
U.S. 579, 595 (1973); Volk v. United States, 57 F. Supp. 2d 888, 896, n.5
(N.D. Cal. 1999); In re Bay Area Material Handling, Inc., 1996 WL 729300,
*6 (N.D. Cal. Dec. 4, 1995)). We agree with Patent Owner that Petitioner
has not provided an adequate analysis that applies the five Daubert factors to
support its motion.
Accordingly, we deny Petitioner’s motion to exclude the Gray
Declaration.

3. Sims Declaration
Petitioner contends that the Sims Declaration is irrelevant, unreliable,
misleading, leads to confusion of the issues, and ultimately wastes time.
Paper 46, 4–11. Petitioner specifically contends that Mr. Sims’s analysis of
the nexus requirement for showing commercial success of Patent Owner’s
product is deficient because he applied an unreliable methodology, and that
Mr. Sims improperly relies on hearsay and otherwise unverified and
unreliable data. Id.
We agree with Patent Owner that such considerations, which amount
to disagreement by Petitioner with the economic techniques used by Mr.
Sims in his analysis, go to the weight that should be accorded his testimony
and not to the admissibility of that testimony. See Paper 59, 6–9.
CBM2013-00037
Patent 7,333,937 B2

14
Petitioner’s cross-examination of Mr. Sims (Ex. 1021) afforded Petitioner
sufficient opportunity to explore weaknesses that Petitioner believes exist in
Mr. Sims’s testimony. We have reviewed the specific issues raised by
Petitioner with respect to ¶¶ 4, 12, 13, 28–35, 37, 45, and 46 of the Sims
Declaration and conclude that the concerns raised by Petitioner relate to the
weight that should be afforded to the testimony and not to its admissibility.
Accordingly, we deny Petitioner’s motion to exclude the Sims
Declaration.

C. Patent Owner’s Motion to Exclude
1. CSA/FS
As noted supra, Petitioner supports its Petition with evidence in the
form of the CSA/FS document (Ex. 1008), which describes functionality of
various TDHS System modules. With its Reply, Petitioner supplies a copy
of a letter (Ex. 1030) from Robert W. Patterson, Open Records Coordinator
of the Texas Health and Human Services Commission. Reply 14–15 n.1.
Petitioner characterizes the Patterson letter as confirming enclosure of a
compact disk with the CSA/FS document in response to a request under the
Texas Open Records Act. Tr. 11:16–20. Petitioner contends that CSA/FS is
admissible as a public record under Fed. R. Evid. 902(5). Paper 61, 8–9; Tr.
11:25–12:2.
Patent Owner moves to exclude CSA/FS as incomplete,
unauthenticated, and hearsay under Fed. R. Evid. 106, 802, and 901. Paper
51, 3–5, 7–9. Patent Owner also moves to exclude the Patterson letter as
CBM2013-00037
Patent 7,333,937 B2

15
untimely and as “fail[ing] to substantively authenticate the CSA/FS
document.” Id. at 6–7.
We agree with Petitioner that Patent Owner waived its evidentiary
objections to CSA/FS by failing to make a timely objection. See Paper 61,
2–4. “Any objection to evidence submitted during a preliminary proceeding
must be served within ten business days of the institution of the trial.”
37 C.F.R. § 42.64(b)(1). Indeed, our Order memorializing the initial
conference call specifically noted that “Patent Owner was referred to
37 C.F.R. § 42.64 regarding procedures for objecting to evidence and
motions to exclude” and confirmed that “[t]he Board will require the moving
party to show that the procedures have been followed in considering any
motion to exclude evidence.” Paper 22, 3. When questioned at the oral
hearing, Patent Owner confirmed the understanding that the Board “would
be looking to [it] to challenge that document with an objection,” and that it
did not serve a formal objection under the rule on objections. Tr. 32:21–
33:5. Consequently, Patent Owner’s contention that it satisfied the
procedural requirements through its arguments on admissibility of CSA/FS
set forth in its Preliminary Response is unavailing. See Paper 51, 3; Paper
63, 4–5.
Accordingly, we deny Patent Owner’s motion to exclude Exhibit
1008. We also deny Patent Owner’s motion to exclude Exhibit 1030 as
moot.

CBM2013-00037
Patent 7,333,937 B2

16
2. Harris System Documents
In responding to Patent Owner’s Motion to Amend (Paper 26),
Petitioner cites two documents, Exhibits 1025 and 1026, that describe what
it refers to as “the Harris System.” Paper 37, 14–15. Patent Owner moves
to exclude these two documents as irrelevant, unduly prejudicial,
unauthenticated, and hearsay. Paper 51, 9.
Our evaluation infra of Patent Owner’s Motion to Amend does not
reach consideration of the Harris System. Consequently, we also do not
reach Patent Owner’s motion to exclude Exhibits 1025 and 1026.

3. Babcock Deposition Transcript
In addressing Patent Owner’s allegation that Petitioner copied a
commercial embodiment of the’937 patent, Petitioner supplies a transcript of
a deposition of Kathy Babcock taken in the district-court proceeding (Ex.
1029) and contends that Ms. Babcock “admitted that [a trade-secrets
litigation initiated by Patent Owner] was just speculation.” Reply 14. Patent
Owner moves to exclude the transcript of Ms. Babcock’s deposition as
irrelevant and unduly prejudicial. Paper 51, 13–14. Patent Owner
specifically contends that Petitioner mischaracterizes the testimony of Ms.
Babcock and asserts that “the late submission of this document as evidence
would unduly prejudice Patent Owner.” Id.
Even if Petitioner’s characterization of Ms. Babcock’s testimony is
inaccurate—an argument well within the Board’s capacity to evaluate—we
disagree that her testimony is irrelevant. Ms. Babcock’s testimony bears on
CBM2013-00037
Patent 7,333,937 B2

17
Patent Owner’s allegation of copying raised in its Patent Owner Response.
PO Resp. 1, 35, 43–46. Patent Owner also offers no reasoning to support its
contention that her testimony is prejudicial.
Accordingly, we deny Patent Owner’s motion to exclude Exhibit
1029.

D. Anticipation by the TDHS System
Petitioner contends that claims 1–3, 5–8, and 10–14 are anticipated by
the TDHS System. Pet. 23–55. As described by Petitioner, and supported
by the Declaration of Mr. Spruiell, the TDHS System has its origins in a
Texas program for determining eligibility for state programs such as Food
Stamps and Medicaid. Pet. 25 (citing Ex. 1006, 13:12–15:14). Petitioner’s
analysis focuses on three modules of the TDHS System as particularly
relevant to the patentability of the claims of the ’937 patent.
First, a module called the “Generic Worksheet” (“GWS”) automated
multiple eligibility points and “compare[d] applicant data to eligibility rules
at each step for multiple programs, determine[d] eligibility, and provide[d]
notification of eligibility to the user.” Pet. 27 (citing Ex. 1006, 38:2–9).
Petitioner provides a drawing on page 28 of the Petition that compares the
GWS process with Figure 2 of the ’937 patent.
Second, the TDHS System later implemented the Texas Eligibility
Screening System (“TESS”). This module “compared personal and financial
data with qualification criteria, determined potential eligibility, and
produced a notification referring the applicant to the assistance program(s)
CBM2013-00037
Patent 7,333,937 B2

18
for which he or she was potentially eligible.” Pet. 28–29 (citing Ex. 1006,
48:18–50:11).
Third, the TDHS System implemented credit-data functionality with
the Data Broker module, which Petitioner represents was provided under
contract with DCS. That module provided a report that “contained credit
data taken from an applicant’s credit report combined on a single form with
personal data from the applicant and data collected from other sources,”
from which eligibility was determined by entering data from the report into
GWS. Pet. 29–30 (citing Ex. 1010, 5; Ex. 1007, 54:17–55:7, 72:13–73:1).
In addition to these three modules, Petitioner notes the interaction of
other modules with the TDHS System, namely the NOA, LTCMED,
SAVERR FS, SAVERR TANF, and SAVERR Inter/Med modules. Pet. 30–
31. Petitioner and Patent Owner differ in their characterization of the degree
of integration of the various modules, with Patent Owner arguing that the
modules “were only loosely associated by virtue of their selective access to a
single database that stores applicant records.” PO Resp. 4. Patent Owner
particularly notes that, although TDHS administered the GWS and TESS
modules, the Data Broker module was administered by a third party. Id.
Whether the modules were integrated tightly as Petitioner contends or
only loosely associated as Patent Owner contends is not central to our
analysis. As Petitioner observes, only method claims are at issue, and a
determination that the claims are unpatentable need be supported only by a
demonstration that each step of the method claims was performed in the
prior art with interconnections as dictated by the claims. Reply 2–3 (citing
CBM2013-00037
Patent 7,333,937 B2

19
Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1378
(Fed. Cir. 2001)). Patent Owner has not argued persuasively for a claim
construction that requires an assessment of how tightly software modules
were integrated or that the claims demand that software be contained in a
single program.
We have reviewed the evidence presented by Petitioner, including the
claim charts in the Petition (Pet. 32–55), the transcript of Mr. Spruiell’s
deposition (Ex. 1006), the transcript of Mr. Graves’s deposition (Ex. 1007),
and relevant portions of CSA/FS (Ex. 1008). Notwithstanding Patent
Owner’s arguments, we are persuaded that Petitioner has shown by a
preponderance of the evidence that the TDHS System anticipates claims 1–
3, 5–8, and 10–14. We address specific arguments below.

1. “inputting credit information derived from a credit report”
Independent claim 1 recites “inputting credit information derived from
a credit report of the patient.” Petitioner contends that the Data Broker
module obtained a computerized report on each applicant at the request of an
eligibility worker, extracted certain credit information, and combined the
extracted credit information with data about the applicant to provide a
combined report to the eligibility worker for viewing in the TDHS System.
Pet. 38. Patent Owner contends that the credit information extracted from
the computerized report is not “credit information derived from a credit
report” (emphasis added). PO Resp. 20–21. We disagree.
CBM2013-00037
Patent 7,333,937 B2

20
In accordance with our construction of “derived” as “received from a
source,” we conclude that the Data Broker module inputs “credit information
derived from a credit report.”

2. Comparison of Credit Information with Qualification Criteria
Independent claim 1 recites “comparing at least a portion of the
patient data with corresponding credit information to at least the following:
i) the identified first provider qualification criteria; and ii) the identified
second provider qualification criteria.” Petitioner contends that the
combined report provided by the Data Broker module, which contained a
combination of applicant data and credit information obtained from the
applicant’s credit report, was entered into the GWS or TESS module and
automatically compared with qualification criteria for healthcare financial
assistance plans such as TANF and Medicaid to determine whether the
applicant qualified. Pet. 41. Petitioner supports this characterization of the
functionality of the TDHS System with several observations that indicate
that the GWS module used credit-report information in determining
eligibility. Id. at 41–44 (citing Ex. 1008, SA-082215, SA-081823, SA-
082216–17, SA-082249; Ex. 1010, 6; Ex. 1007, 65:23–66:1, 42:8–25). We
have reviewed the portions of the record cited by Petitioner and conclude
that, by a preponderance of the evidence, Petitioner has established that the
GWS module used credit-report information in determining eligibility.
Patent Owner disputes this characterization, contending that “[u]nlike
the claimed invention, the TDHS [S]ystem (namely the GWS module)
CBM2013-00037
Patent 7,333,937 B2

21
merely used credit data to verify patient data provided by an applicant for
benefits.” PO Resp. 21 (citing Ex. 2002 ¶ 106). Patent Owner contends
that, in the TDHS System, “patient data alone is compared to the
qualification criteria,” i.e. without the “corresponding credit information”
recited in the claim. Tr. 46:1–2 (emphasis added). Patent Owner supports
its contention with testimony of Stephen Gray. See Ex. 2002 ¶¶ 105–107.
We have reviewed Mr. Gray’s testimony but do not find it persuasive. As
Petitioner notes (Reply 6), Patent Owner does not address the supporting
statements relied on by Petitioner, which belie Patent Owner’s contention
that “the data broker [i.e., the combined report] is compared to patient data,
but it’s never compared to qualification criteria.” See Tr. 46:12–13.
Patent Owner additionally contends that the limitation is not disclosed
by the TDHS System because the “GWS module . . . determined eligibility
for . . . TANF and Medicaid [but] credit data was not used in the TDHS
[S]ystem to determine eligibility for Medicaid.” PO Resp. 25. But
Petitioner’s claim chart identifies additional assistance plans that Patent
Owner does not address, “including TDH County Indigent Health Care
Program, Mental Health and Mental Retardation Services, TDH Primary
Health Care, and TDHS Long Term Care.” Pet. 33–34. In addition,
Petitioner notes that the TDHS System was applied to “food stamps,
Temporary Assistance for Needy Families, TANF, Medicaid, Children’s
Health Insurance Program, CHIP, and Medication for the Elderly and People
with Disabilities, MEPD.” Reply 8 (citing Ex. 1006, 68:1–4).
CBM2013-00037
Patent 7,333,937 B2

22
We conclude that Petitioner has established that the TDHS System
“compar[ed] at least a portion of the patient data with corresponding credit
information to at least the following: i) the identified first provider
qualification criteria; and ii) the identified second provider qualification
criteria.”

3. Lack of Enrollment
Independent claim 1 recites “wherein the patient is not enrolled in
either of the first or second potential health care financial assistance plans at
the time of the determination of the eligibility.” Petitioner contends that the
TDHS System was used to determine eligibility for applicants not already
enrolled in an assistance program, noting a “Business Rule” in CSA/FS that
“Applicant is not currently receiving benefits applied for.” Pet. 35 (citing
Ex. 1008, SA-081797). Patent Owner responds that “[t]his limitation means
that the system determines eligibility without the benefit or leveraging of
any prior determination,” and draws a distinction between the applicant
“currently receiving benefits applied for” and enrollment in either the first or
second health care financial assistance plans. PO Resp. 23–24.
We are persuaded that Petitioner, by a preponderance of the evidence,
has demonstrated that the TDHS System used credit data for unenrolled
patients. Petitioner identifies testimony by Mr. Graves that “Data Broker
provide[d] [Texas Works Advisors] with financial and other background
information on applicants and current recipients of food stamps, TANF and
Medicaid.” Reply 7–8 (emphosis omitted) (citing Ex. 1007, 60:2–61:6).
CBM2013-00037
Patent 7,333,937 B2

23
This testimony belies Patent Owner’s position that “the only involvement of
credit data obtained from Data Broker in the TDHS System was in instances
where the applicant was already enrolled in one or more programs for which
eligibility was being tested.” See PO Resp. 24.
Furthermore, Petitioner notes the circumstance where prior patients
would qualify, lose all eligibility, and then reapply as an example where
applicants were “not enrolled” in an assistance program. Reply 7. Patent
Owner draws a distinction between the certification process in the TDHS
System for new patients and a recertification process for previously enrolled
patients, noting that only the recertification process includes interaction with
the Data Broker module. Tr. 42:3–7. We are not persuaded by Patent
Owner’s characterization of the recertification process, which asserts that
“[a]t scheduled intervals, the client was notified that the certification period
was expiring and the client needed to fill out another eligibility application.”
PO Resp. 15 (emphasis added). Upon satisfaction of certain criteria, Patent
Owner asserts, “the GWS module determined whether the client would
continue to receive benefits.” Id. at 16 (emphasis by Patent Owner).
As Petitioner points out, the drawing from CSA/FS upon which Patent
Owner relies (reproduced at page 15 of the Patent Owner Response) does
not refer to a certification that “was expiring” but to a certification period
that “has expired.” See Reply 7. It is not apparent that when the client is
“recertified” that benefits “continue” as Patent Owner asserts; rather, use of
the term “recertification,” particularly in context with benefits that “ha[ve]
expired,” more reasonably suggests that benefits are started anew.
CBM2013-00037
Patent 7,333,937 B2

24
Accordingly, we conclude that Petitioner has established that the
TDHS System discloses that “the patient is not enrolled in either of the first
or second potential health care financial assistance plans at the time of the
determination of the eligibility.”

4. Debt-to-Income Ratio
Claim 13 recites that “a debt to income ratio is calculated based on the
credit information” and that “the patient data with corresponding credit
information comprises the debt to income ratio.” Patent Owner correctly
observes that Mr. Spruiell testified that TESS and GWS did not calculate the
debt-to-income ratio. Prelim. Resp. 15–16 (citing Ex. 1006, 55:14–16,
88:18–20). Patent Owner further observes that Mr. Gray, “who reviewed the
entirety of the technical documents in Exhibit 1008, testified that debt-to-
income ratio was never calculated in the TDHS [S]ystem.” PO Resp. 29
(citing Ex. 2002 ¶ 124).
We credit the testimony of both Mr. Spruiell and Mr. Gray, but
ultimately do not find them inconsistent. In particular, Mr. Spruiell made
clear that calculation of the debt-to-income ratio “was something that a
caseworker would do . . . . So that income-to-debt ratio would be something
that you looked at prior to beginning the Generic Worksheet.” Ex. 1006,
89:3–16. Mr. Gray’s testimony does not refute unambiguously this
assertion. Rather, Mr. Gray expresses an opinion that “[a]n applicant’s debt
was not included in any aspect of the GWS module” and that “an eligibility
worker viewing a Combined Report for a TANF applicant containing credit
CBM2013-00037
Patent 7,333,937 B2

25
trade lines does not involve any calculation.” Ex. 2002 ¶ 124. The former
statement provides an assessment of the operation of the GWS module, but
our construction of “computer implemented method” does not require that
all recited steps be performed by a computer. The latter statement may be
consistent with use of the TDHS System without calculation of the debt-to-
income ratio, but does not controvert directly Mr. Spruiell’s testimony that
caseworkers performed such a calculation in some instances.
Accordingly, we conclude that Petitioner has established that the
TDHS System discloses the limitations of claim 13.

5. Summary
We conclude that Petitioner has established, by a preponderance of
the evidence, that the TDHS System anticipates claims 1–3, 5–8, and 10–14.

E. Obviousness Over the TDHS System
In addition to contending that claims 1–3, 5–8, and 10–14 are
anticipated by the TDHS System, Petitioner contends that those claims also
would have been obvious over the TDHS System “[t]o the extent any of the
features performed manually in the TDHS System are asserted to be
performed through the use of a computer.” Pet. 55–56. Because our
construction of “computer implemented method” does not foreclose the
possibility of some steps being performed manually, we conclude that
Petitioner also has established, by a preponderance of the evidence, that
CBM2013-00037
Patent 7,333,937 B2

26
claims 1–3, 5–8, and 10–14 would have been obvious over the TDHS
System.
Petitioner additionally contends that claim 4, which recites that “said
database is accessed over the Internet,” is obvious over the TDHS System.
Pet. 56–58. Petitioner’s evidence that the TDHS System accessed the
database over a state intranet is uncontroverted. See id. at 56 (citing Ex.
1007, 87:11–25). We are persuaded by Petitioner’s reasoning that
“[a]ccessing a database of qualification criteria via the Internet, instead of
the disclosed intranet, would have been obvious for a [person of ordinary
skill in the art] at the time of the invention” because “to do so [would] allow
access by a broader group of users than may have access with a more limited
intranet network.” Id. at 57 (citing Ex. 1005 ¶ 17). Accordingly, we
conclude that Petitioner has shown, by a preponderance of the evidence, that
claim 4 would have been obvious over the TDHS System.

F. Obviousness Over the TDHS System and Belford
Petitioner contends that claim 9, which recites “further comprising the
step of obtaining financing for any portion of the health care costs for said
patient in excess of said assistance amount,” would have been obvious over
the TDHS System and Belford. Pet. 57–59. Belford describes a “system on
the Internet to provide loan approval within minutes as you sit in your
doctor’s or dentist’s office.” Ex. 1013, 1. Petitioner contends that it would
have been obvious to use the financing method disclosed by Belford in
CBM2013-00037
Patent 7,333,937 B2

27
circumstances where a patient still owes some amount, even after receiving
financial assistance. Pet. 58.
Patent Owner responds the “Belford has nothing to do with providing
financial assistance for medical care of financially needy people” and that
“Petitioner provides no reasoning why a person of ordinary skill in the art
would be motivated to combine the teaching of a reference that discusses
providing loans to people that have the ability to pay (credit worthiness)
with needy people that cannot pay (charity).” PO Resp. 28. Patent Owner
characterizes the relevant disclosures too narrowly. Belford is reasonably
pertinent to the problem identified by Petitioner, namely the need for a
patient to pay some amount even after receiving financial assistance. See In
re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). Identification of the problem
and how it is solved by Belford provides sufficient articulated reasoning
with rational underpinnings to support the legal conclusion of obviousness.
See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)).
We conclude that Petitioner has shown, by a preponderance of the
evidence, that claim 9 would have been obvious over the TDHS System and
Belford.

G. Asserted Grounds Based on the Mather Method
Petitioner contends that claims 1–14 would have been obvious over
the Mather Method. Pet. 59–70. The John T. Mather Hospital used the
Mather Method as part of its Charity Care program to provide all, or a
CBM2013-00037
Patent 7,333,937 B2

28
portion of, health care free to patients, “depending on person’s needs, above
taking the poverty level guidelines that they would be eligible for Medicaid
or some type of public assistance and multiplying it by 300 percent.”
Ex. 1014, 10:15–19. We have reviewed Petitioner’s detailed analysis of the
Mather Method in relation to claims 1–14 at pages 59–70 of its Petition and
find it persuasive. Patent Owner responds with several arguments that
generally parallel its arguments for the TDHS System.
First, Patent Owner’s argument that the Mather Method fails to
disclose “inputting information derived from a credit report” is unpersuasive
for the same reasons we express in our analysis of the TDHS System, i.e.,
because Patent Owner’s argument relies on a construction of “derived” that
we have not adopted. See PO Resp. 30–31.
Second, Patent Owner’s argument that the Mather Method fails to
disclose “comparing at least a portion of the patient data with corresponding
credit information to at least the following: i) the identified first provider
qualification criteria; and ii) the identified second provider qualification
criteria” is also unpersuasive. See id. at 31–32, 33. The testimony of Mr.
Sunyar establishes the use of a credit report for comparison with multiple
charity programs. Ex. 1014, 77:7–16, 89:8–21.
Third, we are not persuaded by Patent Owner’s argument that the
Mather Method fails to disclose “wherein the patient is not enrolled in either
of the first or second potential health care financial assistance plans at the
time of the determination of the eligibility.” See PO Resp. 32–33. Patent
Owner’s argument improperly relies on a construction that we have not
CBM2013-00037
Patent 7,333,937 B2

29
adopted, namely that “this limitation provides the context that the system
determines eligibility without the benefit of leveraging any prior
determination.” Id. at 33.
Fourth, Patent Owner contends that the Mather Method fails to
disclose “populating at least one database” with qualification criteria. Id. at
33–34. This argument is unavailing because it is inconsistent with the
construction of “database” that we have adopted. As Petitioner points out,
the eligibility criteria set by Mather Hospital were collected in a rate table,
which is a “database” as we have construed the term. See Pet. 63–64; Reply
12.
Last, Patent Owner contends that no debt-to-income ratio was
calculated in the Mather Method as required by claim 13. PO Resp. 35. But
as Petitioner observes, the Mather Method did compare debt information
from a credit report, and an explicit calculation would have been obvious.
Reply 12; see Ex. 1005 ¶ 19.
We conclude that Petitioner has shown, by a preponderance of the
evidence, that claims 1–14 would have been obvious over the Mather
Method.

H. Secondary Considerations
Patent Owner relies heavily on secondary considerations, including
commercial success and alleged copying by Petitioner. PO Resp. 35–46.
We conclude that such considerations do not outweigh Petitioner’s evidence
of obviousness.
CBM2013-00037
Patent 7,333,937 B2

30
“Evidence of commercial success, or other secondary considerations,
is only significant if there is a nexus between the claimed invention and the
commercial success.” Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299,
1311–12 (Fed. Cir. 2006). To establish a proper nexus, Patent Owner must
offer “proof that the sales were a direct result of the unique characteristics of
the claimed invention—as opposed to other economic and commercial
factors unrelated to the quality of the patented subject matter.” In re Huang,
100 F.3d 135, 140 (Fed. Cir. 1996) (citation omitted).
Patent Owner’s arguments regarding commercial success focus on
two products, its own “Revenue Manager” and Petitioner’s “Payment
Advisor Suite,” which Patent Owner characterizes as the only two software
programs that compete in the “healthcare revenue cycle management
market.” PO Resp. 37–38. In contending that there is a nexus between the
claimed invention and commercial success of its Revenue Manager product,
Patent Owner provides declaration testimony by Raymond Sims (Ex. 2003)
and an analysis of “external factors”—pricing, marketing, and promotional
activities—that it excludes as responsible for that commercial success. Id. at
41–42.
Patent Owner acknowledges that, in this instance, “the patented
invention is only a component of [the] commercially successful machine or
process.” Id. at 38. Patent Owner cites the requirement in such instances to
demonstrate “a sufficient relationship between that which is patented and
that which is sold,” but identifies insufficient persuasive evidence of such a
relationship. Id. (citing Demaco Corp. v. F. Von Langsdorff Licensing Ltd.,
CBM2013-00037
Patent 7,333,937 B2

31
851 F.2d 1387, 1392 (Fed. Cir. 1988)). Although Patent Owner provides
evidence of the commercial success of the Revenue Manager product, its
analysis treats the Revenue Manager product as a whole. Patent Owner fails
to identify in any precise way which specific aspects of the Revenue
Manager product correspond to the claimed invention and how the overall
commercial success of the product is correlated with those aspects. Patent
Owner’s generic argument that “claims 1-14 are integral to Revenue
Manager because they cover the methods that Revenue Manager uses for
charity care determination” lacks the precision demanded by the nexus
requirement to avoid improper attribution of commercial success. PO Resp.
41.
We have reviewed the testimony of Mr. Sims and find it similarly
deficient. Notably, Patent Owner repeatedly cites ¶ 34 of Mr. Sims’s
testimony, which refers to the need for a “holistic solution” addressing
features beyond those corresponding to the claimed invention and which
overbroadly concludes that because “Revenue Manager . . . includes the
functionality of the patents, [it is] indicat[ed] that the patents are drivers of
demand for the patented product.” Ex. 2003 ¶ 34 (emphasis added). We
disagree that such a conclusion inevitably follows.

I. Written Description
Petitioner contends that claims 1–14 are unpatentable under 35 U.S.C.
§ 112, first paragraph, because they are not supported by sufficient written
description of “extracting at least a portion of the credit information and
CBM2013-00037
Patent 7,333,937 B2

32
combining the extracted credit information with at least a portion of the
patient data to form patient data with corresponding credit information,” as
recited in independent claim 1 (“the extracting and combining step”). Pet.
77. Patent Owner identifies use of the debt-to-income ratio as providing
written-description support for the extracting and combining step. PO Resp.
55. Specifically, Patent Owner argues that a debt-to-income ratio calculated
from a credit report would need to be combined with other patient data “in
such a way that the system could keep track of which debt-to-income value
belonged with each patient.” Id. (citing Ex. 1001, col. 3, ll. 65–67).
Although “the [written] description requirement does not demand any
particular form of disclosure or that the specification recite the claimed
invention in haec verba,” Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d
1336, 1352 (Fed. Cir. 2010) (citation omitted), Patent Owner’s argument is
an edifice of inferences supported only by the most minimal foundation of
written description. Even considering the construction of that structure
generously, the argument fails because the basic foundation is misconstrued.
The only specification support for a debt-to-income ratio identified by Patent
Owner is provided in the context of qualification criteria, not patient data
and credit information as required by the extracting and combining step.
Accordingly, we conclude that Petitioner has established, by a
preponderance of the evidence, that claims 1–14 are unpatentable because
they are not supported by sufficient written description.

CBM2013-00037
Patent 7,333,937 B2

33
J. Motion to Amend
Contingent upon a Board determination that original claim 1 of the
’937 patent is unpatentable, Patent Owner moves to amend the claims by
substituting proposed claims 15–17 for original claims 1, 13, and 14. Paper
26, 2. In relevant part, Patent Owner proposes to amend the original
extracting and combining step as follows:
extracting at least a portion of the deriving credit information
from at least a portion of the credit data and combining the
extracted derived credit information with at least a portion of
the patient data to form patient data with corresponding credit
information

(“the deriving and combining step”). Id. at 4. Patent Owner asserts that
“[t]he amendments proposed . . . merely seek to clarify the claim language to
more clearly point out how the claims of the [’]937 [p]atent are patentably
distinct over the grounds instituted in this proceeding.” Id. at 2. Patent
Owner confirmed at the oral hearing that its “intent with this motion is not to
substantially alter the scope of the claims from the original claims, rather, to
clarify them primarily with respect to the written description ground that was
instituted.” Tr. 62:20–23. In particular, “the amendments in question do not
add a feature or features to the substitute claims.” Paper 26, 10.
As discussed supra, the original combining and extracting step is not
supported by adequate written description. Patent Owner identifies precisely
the same support for the proposed deriving and combining step, i.e., col. 3,
ll. 65–67 of the ’937 patent. For reasons similar to those we address in our
discussion of the original combining and extracting step, the proposed
CBM2013-00037
Patent 7,333,937 B2

34
deriving and combining step also is not supported by adequate written
description.
First, the proposed amendments draw a distinction between “credit
data” and “credit information.” Patent Owner asserts that “credit data” are
“taken from a credit report” and that “credit information” is a “derived value
such as debt to income ratio.” Paper 26, 7 (citing Ex. 2002 ¶ 166). But as
we noted during the oral hearing, the specification of the ’937 makes no
clear distinction between the terms, using “credit data” only outside the
claims and using “credit information” only within the claims. See
Tr. 55:22–56:3. When asked to identify a basis for the distinction, Patent
Owner referred to the testimony of Mr. Gray. Id. at 56:4–7. But that
testimony merely asserts that the claims “clarify” the distinction between
“credit data” and “credit information” without providing any underlying
reasoning or identifying any disclosure from the specification of the ’937
patent to support the distinction. See Ex. 2002 ¶ 166.
Second, “deriving credit information from at least a portion of the
credit data” is not meaningfully different from “extracting at least a portion
of the credit information” under our construction of “derived” and an
equivalence of “credit data” and “credit information.”
In light of these considerations, Patent Owner’s identification of the
statement in the ’937 patent that “the debt to income ratio can be computed
as an adjustable, programmable, benchmark for automatic approval or
denials for financial aid” is equally insufficient as written-description
CBM2013-00037
Patent 7,333,937 B2

35
support for the proposed deriving and combining step as it is for the original
extracting and combining step.
Accordingly, we deny Patent Owner’s Motion to Amend.2

III. ORDER
Accordingly, it is
ORDERED that, based on a preponderance of the evidence, claims 1–
14 of U.S. Patent No. 7,333,937 B2 are held to be unpatentable;
FURTHER ORDERED that Petitioner’s Motion to Exclude Paragraph
10 of the Dolamore Declaration (Ex. 2001) is granted-in-part by excluding
the second sentence of Paragraph 10;
FURTHER ORDERED that Petitioner’s Motion to Exclude the Gray
Declaration (Ex. 2002) and the Sims Declaration (Ex. 2003) is denied;
FURTHER ORDERED that Patent Owner’s Motion to Exclude the
CSA/FS document (Ex. 1008) and the Babcock Deposition Transcript
(Ex. 1029) is denied;
FURTHER ORDERED that Patent Owner’s Motion to Amend (Paper
26) is denied; and

2 Petitioner contends that the proposed claims are unpatentable under
35 U.S.C. § 101, even though Petitioner never challenged the original claims
under § 101. Because we deny Patent Owner’s Motion to Amend on other
grounds, we do not decide whether the claims are directed to patent-eligible
subject matter under § 101, and we do not reach the issue whether Patent
Owner is required to make a § 101 showing for proposed amendments to
claims that were not subject to a § 101 challenge.
CBM2013-00037
Patent 7,333,937 B2

36
FURTHER ORDERED that, because this is a final written decision,
parties to this proceeding seeking judicial review of our decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

PETITONER:
Kenneth J. Sheehan
ksheehan@bakerlaw.com

Shawnna M. Yashar
syashar@bakerlaw.com

PATENT OWNER:
William J. Lenz
wlenz@ngelaw.com

Robert E. Browne
rbrowne@ngelaw.com

Lawrence James
ljames@ngelaw.com

Gregory Leighton
gleighton@ngelaw.com

Thomas Campbell
tcampbell@ngelaw.com