MMR - Coordinated Cases - Plaintiff_s Reply Claim Construction Brief

8/12/2019 MMR - Coordinated Cases - Plaintiff_s Reply Claim Construction Brief

1/17

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

Case No. 2:13-cv-00631-ODW(SHx)

PLAINTIFFS REPLY CLAIM CONSTRUCTION BRIEF

Randall J. Sunshine (SBN 137363)[email protected]

Edward A. Klein (SBN 145736)[email protected]

Ryan E. Hatch (SBN 235577)[email protected]

LINER LLP1100 Glendon Avenue, 14thFloor

Los Angeles, California 90024.3503Telephone: (310) 500-3500Facsimile: (310) 500-3501

Ted S. Ward (SBN 143810)[email protected]

LAW OFFICE OF TED S. WARD1100 Glendon Avenue, 14

thFloor

Los Angeles, California 90024.3503Telephone: (310) 500-3384Facsimile: (310) 500-3501

Attorneys for PlaintiffMYMEDICALRECORDS, INC.

UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA

MYMEDICALRECORDS, INC.,

Plaintiff,

vs.WALGREEN CO.,

Defendant.

Case No. 2:13-cv-00631-ODW(SHx)(Related to 13-cv-02538-ODW-SH; 13-cv-03560-ODW-SH; and 13-cv-07285-ODW-SH)

PLAINTIFFMYMEDICALRECORDS, INC.SREPLY CLAIM CONSTRUCTIONBRIEF

Date: August 19, 2014Time: 11:00 a.m.Crtrm.: 11

The Hon. Otis D. Wright, II

Trial Date: TBD

AND RELATED COORDINATEDCASES

Case 2:13-cv-00631-ODW-SH Document 73 Filed 08/04/14 Page 1 of 17 Page ID #:2510


2/17

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

iCase No. 2:13-cv-00631-ODW(SHx)


TABLE OF CONTENTSPage

I.

INTRODUCTION ............................................................................................. 1

II.

DISPUTED CLAIM TERMS PROPOSED BY ALL DEFENDANTS ........... 2

A.

From a health care provider associated with the user ............................. 2

B. Maintained on the server independently / Maintained separately .......... 4

C. Means for scheduling one or more prescription refills concerninga drug prescription .................................................................................. 5

1.

Legal standards for means or step plus function claims........ 5

2. The claim term is not governed by 35 U.S.C. 112(f)because the claim itself recites sufficient structure ...................... 7

3.

The specification also includes sufficient acts, structure, ormaterials corresponding to the MFS Limitation ........................... 9

III. DISPUTED CLAIM TERMS PROPOSED BY SELECTEDDEFENDANTS ............................................................................................... 10

D. Health care provider .............................................................................. 10

E. Managed privately by the user .............................................................. 10

F. Prescription refill(s) .............................................................................. 11

G.

The schedule.......................................................................................... 12



3/17

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

iCase No. 2:13-cv-00631-ODW(SHx)


TABLE OF AUTHORITIES

Page(s)

Cases

Advanced Fiber Techs. Trust v. J&L Fiber Servs.,

674 F.3d 1365 (Fed. Cir. 2012) ........................................................................5,11

Aero Prods. Int'l, Inc. v. Intex Rec. Corp.,

466 F.3d 1000 (Fed. Cir. 2006) ..............................................................................6

Apple Inc. v. Motorola, Inc.,2014 U.S. App. LEXIS 7757 (Fed. Cir. Apr. 25, 2014) .............................6,7,8,9

Atmel Corp. v. Information Storage Devices,

198 F.3d 1374 (Fed. Cir. 1999) ........................................................................9,10

Creo Prods. v. Presstek, Inc.,

305 F.3d 1337 (Fed. Cir. 2002) ..............................................................................9

Degeorge v. Bernier,768 F.2d 1318 (Fed. Cir. 1985) ..............................................................................2

Finisar Corp. v. DirecTV Grp., Inc.,

523 F.3d 1323 (Fed. Cir. 2008) ..............................................................................7

Helmsderfer v. Bobrick Washroom Equip., Inc.,

527 F.3d 1379 (Fed. Cir. 2008) ............................................................................11

Hill-Rom Servs. Stryker Corp.,2014 U.S. App. LEXIS 12105 (Fed. Cir. 2014) ..............................................1,10

MBO Labs., Inc. v. Becton, Dickinson, & Co.,

474 F.3d 1323 (Fed. Cir. 2007) ..............................................................................3

Nautilus v. Biosig Instruments, Inc.,572 U.S. ___; 134 S. Ct. 2120, 189 L. Ed. 2d 37 (2014) ...................................5,6

Neurografix v. Siemens Medical Solutions USA, Inc.,No. 10CV1990, MRP (RZx), 2011 WL 3439324 (C.D. Cal. May

5, 2011) ...................................................................................................................6

Omega Eng'g, Inc. v. Raytek Corp.,

334 F.3d 1314 (Fed. Cir. 2003) ..............................................................................5



4/17

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

iiCase No. 2:13-cv-00631-ODW(SHx)


Perfect Web Technologies, Inc. v. InfoUSA. Inc.,587 F.3d 1324 (Fed. Cir. 2009) ....................................................................1,2,10

Personalized Media Commcns, LLC v. Intl Trade Commn,

161 F.3d 696 (Fed. Cir. 1998) ................................................................................8

Phillips v. AWH Corp.,415 F.3d 1303 (Fed. Cir. 2005) ................................................................1,2,3,12

Schindler Elevator Corp. v. Otis Elevator Co.,

593 F.3d 1275 (Fed. Cir. 2010) ........................................................................5,11

Sundance, Inc. v. Demonte Fabricating Ltd.,550 F.3d 1356 (Fed. Cir. 2008) ........................................................................1,10

Vanderlande Indus. Nederland BVv. Int 'l Trade Comm n.,366 F.3d1311, 1323 (Fed. Cir. 2004) ...................................................................................1

Verizon Servs. Corp. v. Vonage Holding Corp.

503 F.3d 1295, 1305 (Fed. Cir. 2007) ....................................................................3

Vivid Tech., Inc. v. Am. Sci. & Engg. Inc.,200 F.3d 795, 803 (Fed. Cir. 1999) ........................................................................1

Statutes

35 U.S.C. 112(f) ....................................................................................................7,9

35 U.S.C. 282 ............................................................................................................6

Federal Regulations

21 C.F.R. 1306.22(e) ...............................................................................................12



5/17

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

1Case No. 2:13-cv-00631-ODW(SHx)


I.

INTRODUCTION

Claim construction is not a free-for-all. Claim construction is a two-step

process. First, a Court must decide if the parties disputes over identified claim

terms require resolution. If so, a Court must follow the canons of construction and

define disputed terms. Only claim terms in controversy need to be construed, and

only to the extent necessary to resolve the controversy. Vanderlande Indus.

Nederland BVv. Int 'l Trade Comm n.,366 F.3d 1311, 1323 (Fed. Cir. 2004); Vivid

Tech., Inc. v. Am. Sci. & Eng g. Inc.,200 F.3d 795, 803 (Fed. Cir. 1999). There is

no explanation of why Defendants are requesting construction ofanyclaim terms,

which begs the question whether a construction is even needed.

Once it is determined that claim construction is justified, [w]e depart from

the plain and ordinary meaning of claim terms based on the specification in only two

instances: lexicography and disavowal. . The standards for finding lexicography

and disavowal are exacting.Hill-Rom Servs. Stryker Corp.,2014 U.S. App. LEXIS

12105 (Fed. Cir. 2014). These exacting requirements are not pled let alone met.

Even if a lexicography or disavowal analysis was appropriate, Defendants

ignore the role of one of ordinary skill in the art and instead improperly rely on

attorney argument. The ordinary and customary meaning of a claim term is the

meaning that the term would have to a person of ordinary skill in the art in question

at the time of the invention, i.e., as of the effective filing date of the patent

application. Phillips v. AWH Corp.,415 F.3d 1303, 1313 (Fed. Cir. 2005) (en

banc). Defendants do not set forth the level of ordinary skill being applied and

instead offer attorney argument. Unsworn attorney argument is not evidence.Perfect Web Technologies, Inc. v. InfoUSA. Inc.,587 F.3d 1324, 1332 (Fed. Cir.

2009); Sundance, Inc. v. Demonte Fabricating Ltd.,550 F.3d 1356, 1363 (Fed. Cir.

2008) (overturning courts failure to grant a motion in limineprecluding attorney

from offering testimony on invalidity).



6/17

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28



II.

DISPUTED CLAIM TERMS PROPOSED BY ALL DEFENDANTS

A.

From a health care provider associated with the user

Term MMRs Construction Defendants Construction

2. from a health

care providerassociated with the

user

Plain and ordinary meaning,

orwherein the files are

from a health care

provider associated with

the user

wherein the files arereceived from the users

healthcare provider

There are two disputes associated with this term, how the document is

received and what the relationship between the user and the healthcare provider is.

With respect to the concept of how the item is received, Defendants

construction violates the norms of the English language. The term from a healthcare provider associated with the user modifies the files, not the step of

receiving. A phrase is understood to modify the nearest language in proximity.

See, e.g., Degeorge v. Bernier, 768 F.2d 1318 (Fed. Cir. 1985) (finding that

[m]odifiers of a term are usually in proximity to such term, and would be

understood to modify such term) (superseded by statute on other grounds). Here,

the closest language in proximity to from a health care provider is the files

comprising the [personal health records / drug prescriptions] associated with the

user, not the step of receiving at the server. Therefore, the files are from a

healthcare provider (i.e. where they may originate from), but they do not need to be

received from the healthcare provider (i.e. where they were sent from).

Care should be taken when considering Defendants attorney argument over

what the specification does, or does not, disclose. The specification is viewed

through the eyes of one of ordinary skill in the art and attorney argument is not

evidence. SeePhillips, 415 F.3d, at 1313; and Perfect Web,587 F.3, at 1332. The

attorney argument does not give the Court a proper factual predicate upon which to

make a legal decision.

With respect to the relationship between the user and the healthcare provider,

the dispute revolves around the word associated with and how that term impacts



7/17

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28



the relationship between the health care provider and the user. Defendants re-write

the term associated with, which connotes a direct or indirect relationship (e.g.

Jane is associated with John), into a possessive relationship (e.g. Jane is Johns

wife). However, Defendants also concede that this term should be construed as its

ordinary and customary meaning. (Defendants Responsive Claim Construction

Brief, Dkt. No. 72 (Response) at 3:8-11 ([b]ecause the specification provides no

such alternate definition of from a healthcare provider associated with the user, the

ordinary and customary meaning of this term in view of the specification .).

Accordingly, no construction of the term is warranted, but even if needed,

Defendants selective interpretation runs afoul of basic claim construction maxims.

The Federal Circuit has held that a claim term should be construed

consistently with its appearance in other places in the same claim or in other claims

of the same patent. Phillips v. AWH Corp.,415 F.3d 1303, 1314 (Fed. Cir. 2005)

(en banc). The word associated appears in claims 8 through 12 of the 466 Patent

and claims 1 through 3 of the 866 Patent several times to describe the relationship

between several different elements. (See466 Patent at 16:66, 17:3, 9-10, 14, 27;

883 Patent at 15:47, 48, 50, 58, 64, 65; 16:17.) Defendants only define one

particular use of the term associated and ignore all of the other uses, which creates

an internally inconsistent claim interpretation. The same term should not have

different meanings in the same claim.

The Federal Circuit has been very clear that a claim interpretation that

excludes a preferred embodiment from the scope of the claim is rarely, if ever,

correct. Verizon Servs. Corp. v. Vonage Holding Corp.503 F.3d 1295, 1305 (Fed.Cir. 2007), citing MBO Labs., Inc. v. Becton, Dickinson, & Co., 474 F.3d 1323,

1333 (Fed. Cir. 2007) (internal citations omitted). Defendants take the position that

[t]here is no canon of claim construction holding that a particular claim must

encompass all disclosures in the specification. (Response at 3:25-27.) While all

embodiments do not need to be covered by the claim language, excluding the



8/17

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28



preferred embodiments is rarely correct. Plaintiff cited in its Opening Claim

Construction Brief, Dkt. No. 58 (Opening Brief) to a myriad of instances in which

Defendants construction would impermissibly exclude the preferred embodiments.

(SeeOpening Brief at 8, fn 5.)

B. Maintained on the server independently / Maintained separately

Terms MMRs Construction Defendants Construction

3. maintained on

the server

independently

Plain and ordinary meaning,

or stored on the server

separately

stored on a server

controlled by a party

separate from the health

care provider, wherein the

health care provider is not

permitted access to the files

on the server.

4. maintainedseparately

Plain and ordinary meaning,or stored separately

The parties do not dispute that maintained on a server means stored on a

server. The only issue in dispute is the meaning of independently, which is only

in one of the terms. (Response at 5.) Plaintiff maintains that the term is well

understood and does not require construction; thus, the plain and ordinary meaning

of independently and separately should control. Only if a construction is

necessary, does Plaintiff advance the option of defining separately. Plaintiffs

proposal is similar to the first half of Defendants proposal stored on a server

controlled by a party separatefrom the health care provider.

Claim 8 recites wherein the files are maintainedon the server independently

from any files maintained by the health care provider and wherein the files are

managedprivately by the user independently from the health care provider. 466

Patent at 17:18-22 (emphasis added). There are two different limitations that the

Defendants are requesting construction of, maintained and managed.

Defendants construction of maintained on the server independently introduces

concepts of who cannot have access to files, which conflicts with the express claim

language relating to managed.

Claim 8 of the 466 patent uses the transition term comprising and is open-



9/17

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28



ended, which means the presence of other parts or steps will not avoid infringement.

SeeCal Model Jury Instr. at 3.3. By including a negative concept wherein the

health care provider is notpermitted access to the files on the server, Defendants

are attempting to introduce the concept of disclaimer without citation to the case law

or proper evidentiary support. Disclaimer arises when a patentee makes a clear and

unambiguous disavowal of claim scope during prosecution, that disclaimer informs

the claim construction analysis by narrow[ing] the ordinary meaning of the claim

congruent with the scope of the surrender. Advanced Fiber Techs. Trust v. J&L

Fiber Servs.,674 F.3d 1365, 1372-4 (Fed. Cir. 2012), citing Omega Eng'g, Inc. v.

Raytek Corp.,334 F.3d 1314, 1324 (Fed. Cir. 2003); see also Schindler Elevator

Corp. v. Otis Elevator Co., 593 F.3d 1275, 1285 (Fed. Cir. 2010). Defendants point

to no clear and unambiguous disavowal that would require both the terms

separately and independently to have both been disavowed as required.

C. Means for scheduling one or more prescription refills concerning a

drug prescription

Term MMRs Construction Defendants Construction

7. means for scheduling

one or more prescriptionrefills concerning a drugprescription

Not subject to 112(f);

and not indefinite

Subject to 112(f) and

indefinite for failure torecite structure.

1. Legal standards for means or step plus function claims

This hearing (and related briefing) is directed to claim construction and not

invalidity. Thus, to the extent that Defendants are seeking to invalidate the claim

term as indefinite, the Defendants have not addressed the applicable legal standard

nor have they come forward with admissible factual evidence to support such an a

argument. The Supreme Court, inNautilus v. Biosig Instruments, Inc.,572 U.S.

___; 134 S. Ct. 2120, 189 L. Ed. 2d 37 (2014), clarified that indefiniteness relates to

invalidity. Defendants conveniently ignore the relevant standard. A patent is

invalid for indefiniteness if its claims, read in light of the patents specification and

prosecution history, fail to inform, with reasonable certainty, those skilled in the art



10/17

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28



about the scope of the invention. The Supreme Court clarified that the definiteness

inquiry trains on the understanding of a skilled artisan at the time of the patent

application, not that of a court viewing matterspost hoc. Nautilus,134 S. Ct., at

2129. Patents are presumed to be valid, and so, Defendants bear the burden of

proving that an ordinary artisan would not understand the disclosure. 35 U.S.C.

282; see Aero Prods. Int'l, Inc. v. Intex Rec. Corp.,466 F.3d 1000, 1015 (Fed. Cir.

2006).

Defendants rely on a single pre-Nautilusdistrict court order as alleged support

for their constructions. Neurografix v. Siemens Medical Solutions USA, Inc.,No.

10CV1990, MRP (RZx), 2011 WL 3439324, at *10-16 (C.D. Cal. May 5, 2011) .

Even when theNeurografixcourt applied the pre-Nautilusstandard, it held that

[b]ecause neither party addressed how a person of skill in the art would identify the

nerve or the background, the Court declines to find the term indefinite or construe

the term. If the parties pursue the issue, the parties must explain how skilled artisans

distinguish those parts from each other.1Id. at *26. The Court did not, nor could

it, invalidate the claim under the guise of aMarkmanhearing, but rather the Court

could only defer a ruling pending receipt of evidence from one of ordinary skill in

the art. It is wholly improper to morph the claim construction process into

dispositive motion practice.

There is no dispute that the relevant structure pertaining to claim 1 of the

883 Patent relates to computer software. The Federal Circuit recently held that to

one of ordinary skill in the art, the structure of computer software is understood

through, for example, an outline of an algorithm, a flowchart or a specific set ofinstructions or rules, and that structure may also be provided by describing the

claim limitations operation, such as its input, output, or connections. Apple Inc. v.

1To the extent the Court would like testimony on these issues at this hearing, Plaintiff reserves the

right to call its expert and the inventor, Mr. Lorsch, as witnesses to testify consistent with theirprior presentations, declarations and depositions.



11/17

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28



Motorola, Inc., 2014 U.S. App. LEXIS 7757 (Fed. Cir. Apr. 25, 2014); seeFinisar

Corp. v. DirecTV Grp., Inc.,523 F.3d 1323, 1340 (Fed. Cir. 2008) (an algorithm

may be disclosed in any understandable terms including as a mathematical formula

in prose, or as a flow chart, or in any other manner that provides sufficient

structure.)2

2. The claim term is not governed by 35 U.S.C. 112(f) because

the claim itself recites sufficient structure

Plaintiffs expert testified that the claim term is supported by sufficient

structure in reciting steps (a) and (b), which are steps in an algorithm (even

assuming that were required), and also describe the algorithms operation by

providing inputs, outputs, and objectives. (Opening Brief at 19-20; Jestice Depo.

Tr. at 240:16-241:10, attached as Supp. Hatch Decl., Ex. B). Defendants concede

that the claim term recites at least some steps in support of the function of

scheduling a prescription refill, and only argue that the limitation does not entirely

perform the recited function. (Response at 11.) In particular, they contend that the

claim merely repeats the scheduling function, and does not explain how to

perform it. (Id.)

Defendants position is inconsistent with the partiesagreedconstruction of

schedule [scheduling] one or more prescription refills, which is create [creating]

a schedule for one or more prescription refills. (SeeAmended Joint Claim

Construction and Prehearing Statement, Docket No. 61 (the JCCS), p. 2.) The

agreed construction replaces the repetitive words that Defendants find objectionable,

and also indicateshowthe scheduling is performed, i.e. by creating a schedule.

2Defendants contend that the structure in a claim limitation must be in the form of an

algorithm. (Response at 10, fn 5.) This cannot be correct, as the Court inApplemade clear bystating that the district court misapplied our precedent by requiring the claim limitations

themselves to disclose a step-by-step algorithm., which only applies to corresponding

structure in the specification, not the claims, and only when it is not disputed that claims were

drafted in means-plus-function format. Apple, 2014 U.S. App. LEXIS 7757 (Fed. Cir. 2014)(emphasis added).



12/17

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28



Defendants ignore the agreed construction, and never even provided it to their own

expert.3

Moreover, the claim need not recite a specific algorithm for scheduling or

describe in detail how the scheduling occurs. A limitation need not connote a

single, specific structure but may describe a class of structures and not be subject

to 112(f). SeeApple, 2014 U.S. App. LEXIS 7757 (Fed. Cir. 2014). For example,

inApple, the Court found that the term heuristic defines a class of structures and

therefore the claim limitations reciting this term provide sufficiently definite

structure to a person of ordinary skill in the art, even though there was no specific

heuristic algorithm in the claim. Id; SeePersonalized Media Commcns, LLC v.

Intl Trade Commn, 161 F.3d 696, 705 (Fed. Cir. 1998) ( detector conveys to

one knowledgeable in the art a variety of structures known as detectors,.)

Likewise, Plaintiffs expert testified that scheduling defines a class of

structures called schedulers, which are well known to a person of ordinary skill in

the art.4 The scheduling limitations therefore provide sufficiently definite

structure to a person of ordinary skill in the art, for performing the recited function

of scheduling, even though the claim does not specifically identify the precise

algorithm for the scheduling.Apple, 2014 U.S. App. LEXIS 7757 (Fed. Cir. 2014).

Moreover, the fact that the structure for scheduling is defined partly in terms of its

function, i.e. the function of scheduling prescription refills, does not detract

3Dwoskin Depo. Tr. at 165:2-8, attached as Supplemental Declaration of Ryan E. Hatch (Supp.

Hatch Decl.), Ex. A (Q Are you aware that the parties parties have a agreed construction of the

term, scheduling one or more prescription refills? A No, I was not aware of that. Q And you'renot aware of what that agreed construction is? A No, I'm not.)4Jestice Depo. Tr. 59:18-20, attached as Supp. Hatch Decl., Ex. B (A. The scheduler is a well

understood set of software. We've been scheduling in computers since 1960.); Jestice Decl. at 19 (A POSA would also understand that the step of (b) scheduling the one or more prescription

refills concerning the drug prescription based on the prescription and directed by the user can

be implemented by software constructs for designating that events will occur. A POSA would

know how to implement software constructs for designating that events will occur, and couldimplement this step using a calendar or other internal data structure.).



13/17

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28



from the definiteness of its structure, as many devices take their names from the

functions they perform. Id. Accordingly, the claim term and steps (a) and (b)

recite sufficient structure in support of the function of scheduling, and the claim

limitation isnotgoverned by 112(f).

3. The specification also includes sufficient acts, structure, or

materials corresponding to the MFS Limitation

If the Court should find that the claim term is governed by Section 112(f)

despite the structure in steps (a) and (b), then it should also find that the term is not

indefinite. Here, graphical user interface (GUI) elements in Figures 7-11 of the

883 Patent, together with the flowchart in Figure 1 sufficiently describe the

operation of scheduling a prescription refill to a person of ordinary skill. (See

Jestice Decl. at 5-7, attached to Opening Brief as Hatch Decl., Ex. B; Opening Brief

at 21-24.) For example, both experts agree that the my calendar menu item shown

in Figure 7 leads to a calendar used for scheduling, which provides sufficiently

definite structure. (Opening Brief at 23, fn 15.)

Defendants contend that there are many algorithms for scheduling, and the

specification does not identify any particular algorithm.5 (Response at 13-16.)

However, the requirement of specific structure in 112, P 6 does not raise the

specter of an unending disclosure of what everyone in the field knows. Atmel

Corp. v. Information Storage Devices, 198 F.3d 1374, 1382 (Fed. Cir. 1999)

(emphasis added), accord Creo Prods. v. Presstek, Inc., 305 F.3d 1337 (Fed. Cir.

2002). For example, one skilled in the art knows how to make and use a bolt, a

wheel, a gear, a transistor, or a known chemical starting material. Atmel, 198 F.3d

1374 at 1382. Likewise, Plaintiffs expert testified that one skilled in the art knows

5Defendants cite to a declaration in a separate and unrelated case, which they never disclosed as

extrinsic evidence on which they intended to rely on for claim construction. (Response at 16-17,

fn. 12; JCCS at 13-16.) Accordingly, objects to its use as evidence in these proceedings and

reserve the right to call its expert and the inventor, Mr. Lorsch as witnesses at the Hearing. See

Jestice Depo. Tr. at 128:20-23, attached Supp. Hatch Decl., Ex. B (objecting that the declarationwas not disclosed on the joint claim construction statement as extrinsic evidence.)



14/17

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28



how to use a my calendar button and scheduler. (Jestice Decl. at 5-7; Opening

Brief at 21-24.) It is unnecessary to encumber the specification with detailed

algorithms for rudimentary functions. Indeed, the specification would be of

enormous and unnecessary length if one had to literally reinvent and describe the

wheel in this manner. Atmel, 198 F.3d 1374 at 1382.

III. DISPUTED CLAIM TERMS PROPOSED BY SELECTED

DEFENDANTS

D. Health care provider

Term MMRs Construction Defendants Constructions

1. health careprovider

Plain and ordinarymeaning, or A

provider of health careservices

Quest:

A provider of health services

that does not own, operate, orcontrol the server

The plain and ordinary meaning of health care provider is a provider of

health care services, and does not connote anything regarding a server. (Opening

Brief at 6.) Quest attempts to ascribe a unique meaning to the term by alleging that

the specification always excludes ownership, but does so with attorney argument.

Unsworn attorney argument is not evidence. Perfect Web,587 F.3d, 1332. The

patent specification is written such that it can be understood by one of ordinary skill

in the art. Allowing an attorney to testify as to what one of ordinary skill in the art

would understand when the attorney is not qualified as an expert is improper.

Sundance,550 F.3d, 1363.

Even if the attorney argument is considered, [t]here are no words of manifest

exclusion or restriction. Hill-Rom Servs.,2014 U.S. App. LEXIS 12105, at *8.

Absent words that manifest the intent to limit the meaning of a term, we do not

import limitations from the specification into the claims. Id.

E.

Managed privately by the user

Term MMRs Construction Allscripts, Quest and

Empty Jar



15/17

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28



5. managedprivately by the

user

Plain and ordinary meaning,or directed or controlled

privately by the user

controlled and organized

only by the user

Defendants do not dispute that managed means directed or controlled.

The only issue is whether managed privately by the user requires that the files be

organized only by the user. (Response at 19.) Once again this is an attempt to

read disclaimer (only by the user) into an otherwise open-ended claim. See

Advanced Fiber,674 F.3d, 1372-4; Schindler Elevator Corp., 593 F.3d, 1285.

Once again, Defendants do not point to asingle placein the claims,

specification, file history, or other evidence where organized only by the user

even appears. (Id. at 19-21.) While the specification refers to the users ability to

organize files, it never equates this with managing files. In fact, these concepts

aredifferent, as evidenced by independent claims 1 and 15, which recite different

terms for organizingfiles and that files are managedprivately by the user

(the exact language at issue here). See, e.g.,Helmsderfer v. Bobrick Washroom

Equip., Inc., 527 F.3d 1379, 1381-1382 (Fed. Cir. 2008) (different claim terms are

presumed to have different meanings).

F.

Prescription refill(s)

Term MMRs Construction Allscripts and Quest

6. prescriptionrefill(s)

Plain and ordinary meaning,or an order including a

second or subsequent

supply of medication.

An order for a second or

subsequent supply of

medication that is authorized

by an existing prescription.

Defendants re-write the plain and ordinary meaning of a refill by including

authorized by an existing prescription. The rules concerning authorization for

subsequent supply of medications differ by class of drug (e.g. Schedule II, III, IV,

etc.) and other regulations. Defendants attempt to limit the 833 patent to rules

governing dispensing Schedule II controlled substances over the Internet.

(Response, Ex. K.) There is no legal of factual basis to invoke such a disclaimer.

Defendants only submitted a portion of the Federal Regulations on controlled



16/17

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28



substances. For example, 21 C.F.R. 1306.22(e) allows oral refill authorization

for Schedule III and IV controlled substances when the original refills have been

used. (Supp. Hatch Decl., Ex. C.) Thus, a refill does not need to be authorized by

the existing prescription as Defendants attempt to limit the term.

G. The schedule

Term MMRs Construction Allscripts and Quest

8. the schedule Plain and ordinary meaning,

or a designation that an

event will occur

a file, such as a calendar

entry, designating the date(s)

for the one or more

prescription refills

Allscripts and Quest alreadyagree to a construction reciting create

[creating] a schedule (Opening Brief at 24.) They do not dispute that the

schedule here refers to the very same schedule for one or more prescription

refills in the agreed construction. (Response at 24-25.) Phillips v. AWH Corp.,

415 F.3d, 1314 (a claim term should be construed consistently with its appearance

in other places in the same claim or in other claims of the same patent.)

Allscripts and Quest cite to no evidence why the plain and ordinary meaning

of the term the schedule (n.) should not be used. There is no explanation of

lexicography or disclaimer. Defendants depart from the plain and ordinary meaning

and use improper attorney argument import into the the schedule a file, a

calendar entry, dates, and prescription refills. Even then the argument is

internally inconsistent. On one hand, they argue the concept of a temporal

indicator is not limited to a date, but can also include a time, elapsed time (i.e.

the amount of time from a particular point in time), or some other temporal

indication. (Response at 24.) And then on the other, the construction limits the

claim to require date(s), to the exclusion of time or any other kind of temporal

indicator. Under Defendants own arguments, their construction cannot be correct.



17/17

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

Respectfully submitted,

Dated: August 4, 2014 LINER LLP

By: /s/ Ryan E. Hatch

Randall J. Sunshine

Edward A. KleinRyan E. Hatch

Attorney for Plaintiff

MYMEDICALRECORDS, INC.


MMR - Coordinated Cases - Plaintiff_s Reply Claim Construction Brief

Documents

Transcript of MMR - Coordinated Cases - Plaintiff_s Reply Claim Construction Brief