Search America, Inc.v.Transunion Intelligence LLC

Patent Trial and Appeal Board

Feb 3, 2015

12018342 (P.T.A.B. Feb. 3, 2015)

Trials@uspto.gov Paper 57
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 CBM2013-00038
Patent 8,185,408 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

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I. INTRODUCTION
A. Background
On August 1, 2013, Search America, Inc. (“Petitioner”) filed a
Petition (Paper 4, “Pet.”) to institute a covered business method patent
review of claims 1–18 of U.S. Patent No. 8,185,408 B2 (Ex. 1001, “the ’408
patent”) pursuant to 35 U.S.C. §§ 321–329. TransUnion Intelligence, LLC
(“Patent Owner”) filed a Preliminary Response (Paper 14) on November 11,
2013. Pursuant to 35 U.S.C. § 324, the Board instituted trial on February 7,
2014, as to claims 1–18 of the ’408 patent. Paper 15 (“Dec.”).
During the trial, Patent Owner timely filed a Patent Owner Response
(Paper 22, “PO Resp.”), and Petitioner timely filed a Reply to the Patent
Owner Response (Paper 31, “Reply”). An oral hearing was held on
November 3, 2014 (Paper 56, “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 1–18 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 1–14 of
U.S. Patent No. 7,333,937 B2 in Search America, Inc. v. TransUnion
Intelligence LLC, Case CBM2013-00037 (PTAB).
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The ’408 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. 11.

C. Grounds of Unpatentability
Petitioner relies on two distinct instances of prior public use in
asserting that claims of the ’408 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 17 is
unpatentable under 35 U.S.C. § 103, Petitioner additionally relies on a press
release, titled “REVERSE SEARCHING NOW AVAILABLE ON PC411,”
bearing a date of April 9, 1996 (Ex. 1014, “PC411”).
As evidence of the structure and functionality of the TDHS System,
Petitioner provides (1) a transcript (Ex. 1007) of a deposition of Kerby
Spruiell, the project manager in charge of the TDHS System, taken in
connection with the district-court proceeding, Pet. 17; (2) a transcript (Ex.
1008) 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. 20; and (3) a copy of a document, titled
“Current System Architecture and Functional Specifications” (Ex. 1009,
“CSA/FS”), which describes the functionality of various TDHS System
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modules, Pet. 21–22. As evidence of the Mather Method, Petitioner
provides (1) a transcript (Ex. 1015) 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. 60; and (2) a copy of a
“Report to the Community for the Year 2002,” produced by the John T.
Mather Memorial Hospital (Ex. 1016).
The grounds on which we instituted review are summarized by the
following chart. Dec. 21.
Prior Art Basis Claim(s)
Challenged
TDHS System § 102(b) 1–3, 5–8, 10–14,
16, and 18
TDHS System § 103(a) 4, 9, and 15
TDHS System and
PC411
§ 103(a) 17
Mather Method § 103(a) 1–16 and 18
Mather Method
and PC411
§ 103(a) 17

D. The ’408 Patent
The ’408 patent, titled “Health Care Financing System and 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, l. 66–col. 3, l. 1. 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 specifically identified. Id. at col. 3, ll. 48–52.
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11. A method in a computer system having a computer server
processor and a computer memory for determining eligibility of
a patient to receive health care financial assistance, the method
comprising the steps of:
receiving at the computer server processor, over a
communication network from a plurality of client machines,
health care financial assistance information, including
qualification criteria, for each of a plurality of health care
financial assistance plans,
at least a portion of the qualification criteria
providing a measure to identify whether the patient has
less than adequate means to pay for a health care expense
associated with the patient,
each of the plurality of health care financial
assistance plans offering defrayment of at least a portion
of the health care expense if the patient qualifies for the
respective health care financial assistance plan;
storing the health care financial assistance information in
a database within the memory;
receiving at the computer server processor, over a
communication network from a client machine, patient data;
receiving at the computer server processor, over a
communication network from a client machine, credit
information derived from a credit report of the patient;
comparing using the computer server processor at least a
portion of the patient data and at least a portion of the credit
information to respective portions of qualification criteria for
each of a plurality of health care financial assistance plans
stored in the database within the memory;
determining using the computer server processor if the
comparison satisfies the qualification criteria for at least one of
the plurality of health care financial assistance plans; and
transmitting from the computer server processor notification of
eligibility for every one of the plurality of health care financial
assistance plans in which the comparison satisfied the qualification
criteria.
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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. “derived”
Independent claim 1 recites “second code instructions for receiving
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 embodiment in the specification of the [’]408
patent -- is being calculated from the raw data contained in the credit
report.” PO Resp. 21. 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.,

1 As discussed below, we deny Petitioner’s motion to exclude the Gray
Declaration.
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Ballantine Books (New York 2001). Ex. 2002 ¶ 100 (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 3.
Second, Patent Owner refers to a statement in the specification of the
’408 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 [computer program product] 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. 4, ll. 2–3;
Ex. 2002 ¶ 100). 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 criteria” rather than of “credit information.” See Reply 3.
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.”

2. “database”
Independent claims 1, 6, 11, and 18 each recite that qualification
criteria and health care financial assistance information are “stored in a
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database.” Petitioner does not proffer an explicit construction of the term
“database,” but refers inferentially in its Petition to “an organized collection
of data.” Pet. 30, 38, 44. 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. 33 (citing
Ex. 2002 ¶ 143; 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. 33. Specifically, the emphasized portion of the definition suggests
that, without more, the broadest reasonable construction of “database” is “a
collection of data.”
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 38, 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
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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 38, 2;
Paper 51, 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
not without ambiguity, and either 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. Moreover, 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.

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2. Gray Declaration
Petitioner contends that the Gray Declaration “is so unreliable and
misleading that it should be excluded in its entirety.” Paper 38, 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 (1) whether the modules of the TDHS System
need to be in direct communication in order to satisfy limitations recited in
the claims; (2) whether the “comparing” limitation of claim 11 (and the
corresponding “third code instructions” limitation of claim 1) require that
credit information be extracted and combined with patient data; and (3)
whether a server was implicated in the TDHS eligibility determination. Id.
at 2–5.
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
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 49, 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
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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 38, 5–11. 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 49, 7–10.
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.
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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. 1009), which describes functionality of
various TDHS System modules. With its Reply, Petitioner supplies a copy
of a letter (Ex. 1027) from Robert W. Patterson, Open Records Coordinator
of the Texas Health and Human Services Commission. Reply 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 50, 10–11;
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
43, 3–5, 7–9. Patent Owner also moves to exclude the Patterson letter as
untimely and as “fail[ing] to substantively authenticate the CSA/FS
document.” Id. at 5–7.
We agree with Petitioner that Patent Owner waived its evidentiary
objections to CSA/FS by failing to make a timely objection. See Paper 50,
2–4. “Any objection to evidence submitted during a preliminary proceeding
must be served within ten business days of the institution of the trial.”
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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 19, 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 43, 2–3; Paper
52, 4–5.
Accordingly, we deny Patent Owner’s motion to exclude Exhibit
1009. We also deny Patent Owner’s motion to exclude Exhibit 1027 as
moot.

2. Babcock Deposition Transcript
In addressing Patent Owner’s allegation that Petitioner copied a
commercial embodiment of the ’408 patent, Petitioner supplies a transcript
of a deposition of Kathy Babcock taken in the district court proceeding
(Ex. 1025) and cites Ms. Babcock’s testimony as support for its assertion
that “[Patent Owner’s] copying allegations are false speculations.” Reply
14. Patent Owner moves to exclude the transcript of Ms. Babcock’s
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deposition as irrelevant and unduly prejudicial. Paper 43, 9. Patent Owner
specifically contends that the Babcock transcript is irrelevant and that “the
late submission of this document as evidence would unduly prejudice Patent
Owner.” Id.
The Board is capable of evaluating whether Ms. Babcock’s testimony
support’s Petitioner’s statement, and her testimony is relevant because it
bears on Patent Owner’s allegation of copying raised in its Patent Owner
Response. PO Resp. 1, 34, 41–45. 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
1025.

D. Anticipation by the TDHS System
Petitioner contends that claims 1–3, 5–8, 10–14, 16, and 18 are
anticipated by the TDHS System. Pet. 14–51. 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. 16–17 (citing Ex. 1007, 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 ’408 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. 18 (citing Ex. 1007, 38:2–9).
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Petitioner provides a drawing on page 19 of the Petition that compares the
GWS process with Fig. 2 of the ’408 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)
for which he or she was potentially eligible.” Pet. 19–20 (citing Ex. 1007,
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 along with data collected from
other third party sources,” from which eligibility was determined by entering
data from the report into GWS. Pet. 20–21 (citing Ex. 1011, 5; Ex. 1008,
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. 21–
22. 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. 3–4. Patent Owner
particularly notes that, although TDHS administered the GWS and TESS
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modules, the Data Broker module was administered by a third party. Id. at
4.
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, a determination that the claims are
unpatentable need be supported only by a demonstration that the claimed
features were in the public’s possession before the critical date. Reply 5–6
(citing Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1570 (Fed. Cir.
1997)). 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. 23–33, 35–47), the transcript of Mr.
Spruiell’s deposition (Ex. 1007), the transcript of Mr. Graves’s deposition
(Ex. 1008), and relevant portions of CSA/FS (Ex. 1009). 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, 10–14, 16, and 18. We address specific arguments below, noting that
Patent Owner concedes that the same arguments apply to each of
independent claims 1, 6, 11, and 18. PO Resp. 26, 27.

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1. “code instructions for receiving credit information
derived from a credit report”

Independent claim 1 recites “second code instructions for receiving
credit information derived from a credit report of the patient.” Petitioner
contends that the TDHS System contained code instructions for receiving
credit information derived from an applicant’s credit report, which was
provided in a Combined Report by the Data Broker module. Pet. 25–27.
Patent Owner responds that the credit information extracted from the
applicant’s credit report is not “credit information derived from a credit
report” (emphasis added). PO Resp. 20–21. In accordance with our
construction of “derived” as “received from a source,” we disagree.
Patent Owner also focuses on the requirement of “code instructions”
in contending that the limitation is not disclosed by the TDHS System: “The
GWS module did not contain any code for obtaining any credit information
from Data Broker. . . . Moreover, no credit information was ever entered
into the GWS module.” PO Resp. 26. When questioned at oral hearing,
Patent Owner clarified that its position rests on its argument that the Data
Broker module is not part of the TDHS System because it was administered
by DCS, a third party. Tr. 58:15–62:5 (particularly 60:11–16). This is
related to Patent Owner’s argument that a tight integration of modules is
necessary in the prior art to establish anticipation, an argument that we reject
for the reasons explained supra.
We conclude that the TDHS System included “code instructions for
receiving credit information derived from a credit report.”
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2. Comparison of Credit Information to Qualification Criteria
Independent claim 11 recites “comparing . . . at least a portion of the
patient data and at least a portion of the credit information to respective
portions of qualification criteria for each of a plurality of health care
financial assistance plans”; independent claims 1, 6, and 18 recite similar
“third code instructions” for performing such a comparison. Petitioner
contends the TDHS System contained code instructions for comparing at
least a portion of the applicant data (e.g., patient data, such as age, sex,
family size, etc.) and at least a portion of the applicant’s credit information
obtained from the applicant’s credit report to qualification criteria for
multiple healthcare financial-assistance plans. Pet. 27, 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 27–30, 41–45 (citing Ex. 1009,
SA-082061–62, SA-081803, SA-081823, SA-082216–17, SA-082249;
Ex. 1011, 5, 6; Ex. 1008, 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)
merely used summary credit data to verify patient data provided by an
applicant for benefits.” PO Resp. 22 (citing Ex. 2002 ¶ 103). Patent Owner
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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 presents
arguments based on its characterization of the claim language as requiring
that “at least a portion of th[e] derived credit information is extracted and
combined with the patient data[, which] is then directly compared to
qualification criteria . . . to determine eligibility.” PO Resp. 23 (emphasis
added). Notwithstanding Mr. Gray’s supporting declaration testimony
(Ex. 2002 ¶ 104) that refers to such combination, and in light of his
deposition testimony that “comparing data is not the same as combining”
(Ex. 1023, 101:24–25), we agree with Petitioner that the claims do not
require combination of the derived credit information with the patient data.
See Reply 4.
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 information was not used in the
TDHS [S]ystem to determine eligibility for Medicaid.” PO Resp. 24–25.
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. 31, 45; see Reply 8.
We conclude that Petitioner has established that the TDHS System
“compar[ed] . . . at least a portion of the patient data and at least a portion of
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the credit information to respective portions of qualification criteria for each
of a plurality of health care financial assistance plans.”

3. “code instructions which are executable on a computer server”
Independent claim 1 recites that the computer program product has
“computer-executable code instructions which are executable on a computer
server.” Patent Owner challenges Petitioner’s identification of computer-
executable code instructions stored on 5¼-inch floppy disks in the TDHS
System as insufficient “evidence that any computer-executable code
instructions could be executed on a computer server.” PO Resp. 24
(emphasis by Patent Owner); see Pet. 24.
This argument is without merit. To the extent Patent Owner’s
witness, Mr. Gray, supported Patent Owner’s contention in his declaration
testimony (Ex. 2002 ¶ 95), Mr. Gray effectively recanted that position at his
deposition. Ex. 1023, 105:3–25.

4. Summary
We conclude that Petitioner has established, by a preponderance of
the evidence, that the TDHS System anticipates claims 1–3, 5–8, 10–14, 16,
and 18.

E. Obviousness Over the TDHS System
Petitioner contends that claims 4, 9, and 15, each of which recites that
“the qualification criteria includes a debt to income ratio,” would have been
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obvious over the TDHS System. Pet. 53–56. Patent Owner correctly
observes that Mr. Spruiell testified that TESS and GWS did not calculate the
debt-to-income ratio. PO Resp. 28 (citing Ex. 1007,2 55:14–16, 88:18–20).
Patent Owner further observes that Mr. Gray, “who reviewed the entirety of
the technical documents in Exhibit 1009, testified that debt-to-income ratio
was never calculated in the TDHS [S]ystem.” PO Resp. 28 (citing Ex. 2002
¶ 129).
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. 1007,
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
trade lines does not involve any calculation.” Ex. 2002 ¶ 129. The former
statement is of minimal relevance because Petitioner has not advanced an
anticipation ground for claims 4, 9, and 15, and Patent Owner does not
explain how Mr. Gray’s observation diminishes Petitioner’s argument that it
“would have been well within the knowledge of a [person of skill in the art]
at the time of the invention to program a computer to calculate [a debt to

2 Patent Owner’s citations to Ex. 1006 in connection with this argument
appear to be typographical errors.
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income ratio] using debt data and income data” in light of Mr. Spruiell’s
testimony. Pet. 55 (citing Ex. 1006 ¶ 16). 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 shown, by a
preponderance of the evidence, that claims 4, 9, and 15 would have been
obvious over the TDHS System.

F. Obviousness Over the TDHS System and PC411
Petitioner contends that claim 17, which recites that “the step of
verifying residence information of the patient is facilitated by a reverse
telephone number lookup,” would have been obvious over the TDHS
System and PC411. Pet. 56–57. PC411 describes software that performs
reverse telephone-number lookups. Ex. 1014, 1. Petitioner reasons that one
of skill in the art would apply this teaching to the TDHS System to verify the
residence information of a patient. Pet. 56–57. Patent Owner responds that
claim 17 is “patentably distinguishable over the TDHS [S]ystem for the
same reasons [as underlying independent claim 11]” but does not otherwise
respond to Petitioner’s argument. PO Resp. 28.
We conclude that Petitioner has shown, by a preponderance of the
evidence, that claim 17 would have been obvious over the TDHS System
and PC411.

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G. Asserted Grounds Based on the Mather Method
Petitioner contends that claims 1–16 and 18 would have been obvious
over the Mather Method, Pet. 57–66, and that claim 17 would have been
obvious over the Mather Method and PC411, id. at 67–68. The John T.
Mather Hospital used the Mather Method as part of its Charity Care program
to provide all, or a 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. 1015, 10:15–19. We have reviewed Petitioner’s detailed
analysis of the Mather Method in relation to claims 1–18 at pages 59–68 of
its Petition (including the combination of the Mather Method with PC411
for claim 17) 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 that credit information is 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. 29–30.
Second, Patent Owner’s argument that the Mather Method fails to
disclose a comparison of credit information to provider qualification criteria
for a plurality of providers is also unpersuasive. See id.at 30–31, 32. The
testimony of Mr. Sunyar establishes the use of a credit report for comparison
and for comparison with multiple charity programs. Ex. 1015, 77:7–16,
89:8–21.
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Third, we are not persuaded by Patent Owner’s argument that the
Mather Method fails to disclose “code instructions which are executable on a
computer server.” See PO Resp. 31–32. Petitioner’s obviousness ground
does not contend that the Mather Method discloses such code instructions,
but rather that “[a]dding a computer to the process in the manner claimed in
the ’408 patent does nothing unexpected.” Pet. 62. Patent Owner’s
argument does not address Petitioner’s reasoning.
Fourth, Patent Owner contends that the Mather Method fails to
disclose limitations of the independent claims that require population of a
database with some or all of the qualification criteria for the first and second
health care financial assistance providers. PO Resp. 32–33. 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. 62; Reply 12.
Last, Patent Owner contends that no debt-to-income ratio was
calculated in the Mather Method as required by claims 4, 9, and 15. PO
Resp. 34. We are not persuaded by this argument for the same reasons we
express supra in our discussion of the TDHS System.
We conclude that Petitioner has shown, by a preponderance of the
evidence, that claims 1–18 would have been obvious over the Mather
Method.

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H. Secondary Considerations
Patent Owner relies heavily on secondary considerations, including
commercial success and alleged copying by Petitioner. PO Resp. 34–45.
We conclude that such considerations do not outweigh Petitioner’s evidence
of obviousness.
“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. 38–39. 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
40–41.
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Patent Owner acknowledges that, in this instance, “the patented
invention is only a component of [the] commercially successful machine or
process.” Id. at 37. 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.,
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-[18] 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.
40.
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
concludes that because “Revenue Manager . . . includes the functionality of
the patents, [it is] indicat[ed] that the patents are drivers of demand for the
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patented product.” Ex. 2003 ¶ 34 (emphasis added). We disagree that such
a conclusion inevitably follows.

III. ORDER
Accordingly, it is
ORDERED that, based on a preponderance of the evidence, claims 1–
18 of U.S. Patent No. 8,185,408 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. 1009) and the Babcock Deposition Transcript (Ex.
1025) is denied;
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.

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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