DCT
1:20-cv-00262
Solomon Systems Inc v. District Of Columbia
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Solomon Systems, Inc. (Maryland)
- Defendant: The District of Columbia (District of Columbia); The Chesapeake Regional Information Service for our Patients, DC (District of Columbia)
- Plaintiff’s Counsel: Morris, Manning & Martin, LLP
- Case Identification: 1:20-cv-00262, D.D.C., 01/31/2020
- Venue Allegations: Venue is alleged to be proper as a substantial part of the events occurred in the district and Defendants maintain offices and a regular and established place of business in the district.
- Core Dispute: Plaintiff alleges that Defendants’ Health Information Exchange system infringes three patents related to systems and methods for providing patient identification and medical information, and for scheduling alerts.
- Technical Context: The technology concerns systems for providing first responders and medical professionals with rapid access to a patient's electronic health records via a portable device, and for providing alerts regarding the patient's ongoing care.
- Key Procedural History: Plaintiff alleges it put the D.C. Government on notice of infringement of the ’330 Patent via a letter on March 15, 2019, followed by another letter on April 15, 2019, and a claim chart on May 31, 2019. This alleged pre-suit notice forms the basis for the willfulness allegations concerning the ’330 Patent.
Case Timeline
| Date | Event |
|---|---|
| 2011-10-11 | Priority Date for ’330, ’451, and ’131 Patents |
| 2016 | CRISP awarded grant to develop accused HIE services |
| 2019-01-22 | U.S. Patent No. 10,186,330 Issues |
| 2019-03-15 | Plaintiff sends first notice letter regarding ’330 Patent |
| 2019-04-15 | Plaintiff sends follow-up letter regarding ’330 Patent |
| 2019-04-23 | U.S. Patent No. 10,269,451 Issues |
| 2019-05-31 | Plaintiff sends claim chart for ’330 Patent to Defendant |
| 2019-09-17 | U.S. Patent No. 10,418,131 Issues |
| 2020-01-31 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,186,330, System for Providing Identification and Information, and for Scheduling Alerts, Issued January 22, 2019
The Invention Explained
- Problem Addressed: The patent describes the problem of first responders and hospital personnel lacking access to a patient's medical history, particularly when the patient is unable to communicate effectively in an emergency situation (ʼ330 Patent, col. 1:28-44).
- The Patented Solution: The invention proposes a removable device (e.g., a bracelet) containing a readable code with the patient's medical information. This device also includes a "programmable reporter element" to store and provide alerts for specific events (e.g., appointments, medication reminders), which is programmed by a separate, "second system" (’330 Patent, col. 2:3-18; col. 4:15-24). The system is designed to operate in a non-hospital setting and is not linked to a medical sensor, distinguishing it from continuous patient monitoring systems (ʼ330 Patent, col. 2:31-33).
- Technical Importance: The technology aims to bridge the information gap during initial emergency response and hospital intake by providing a portable, patient-centric data source that also integrates alerts for continued care (’330 Patent, col. 1:45-56).
Key Claims at a Glance
- The complaint asserts infringement of independent claim 1 and dependent claims 2-8, 10, and 16 (Compl. ¶97).
- Independent Claim 1 requires:
- A removable, portable device comprising a first system.
- A readable code containing medical biographical information.
- A programmable reporter element to electronically store at least one particular event.
- A signal producing element functionally related to the reporter element.
- The reporter element is programmed to provide a signal to the signal producing element to inform a user of the event.
- The programming is performed by a "second system."
- The device is "not linked to a medical sensor."
U.S. Patent No. 10,269,451, System for Providing Identification and Information, and for Scheduling Alerts, Issued April 23, 2019
The Invention Explained
- Problem Addressed: The patent addresses the same problem as the ’330 Patent: the difficulty medical practitioners face in obtaining timely and accurate patient information, which can delay or compromise care (ʼ451 Patent, col. 1:28-44).
- The Patented Solution: This patent claims a method for providing care. The method involves collecting and storing a patient's medical history in a database, adding that information to a portable device's readable code, and displaying it for a practitioner. Crucially, the method also includes programming a "reporter element" on the device to store and signal alerts about a "particular event," which is also stored on a "second system," and then developing a plan for medical care based on that event information (’451 Patent, col. 11:45-col. 12:12).
- Technical Importance: This patent shifts focus from the device itself to the overall workflow of collecting, presenting, and acting upon patient data that is stored and managed across a primary portable device and a secondary back-end system (ʼ451 Patent, col. 4:56-62).
Key Claims at a Glance
- The complaint asserts infringement of independent claim 1 and dependent claims 2-4 and 8-12 (Compl. ¶119).
- Independent Claim 1 requires the steps of:
- Collecting and storing medical biographical information in a database.
- Adding the information to a readable code on a portable device that is not linked to a medical sensor.
- Displaying the information.
- Programming a reporter element on a "first system" (the device) to store an event.
- Programming the reporter element to provide a signal to inform a user about the event.
- The event is also electronically stored by a "second system."
- Developing a plan for medical care based on the event.
Multi-Patent Capsule: U.S. Patent No. 10,418,131, System for Providing Identification and Information, and for Scheduling Alerts, Issued September 17, 2019
- Technology Synopsis: The ’131 Patent claims a method similar to the ’451 Patent. It focuses on a method for assisting a practitioner by collecting and storing medical history in a first database, programming a reporter element (part of a first system) to store a first event, and then programming it to signal a second event that is stored by a second system (’131 Patent, col. 11:45-col. 12:1). This creates a distributed system where a portable device stores and signals events that are managed and stored by a separate, back-end system.
- Asserted Claims: The complaint asserts infringement of independent claim 1 and dependent claims 2 and 6 (Compl. ¶141).
- Accused Features: The complaint alleges that the DC Health Information Exchange (HIE) system, which collects patient data and makes it available to practitioners on portable devices like tablets, performs the claimed method steps (Compl. ¶¶79-88).
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is the District of Columbia Health Information Exchange (“HIE”), administered by the Department of Health Care Finance (“DHCF”) and CRISP DC (Compl. ¶33).
Functionality and Market Context
- The HIE is alleged to be a system that aggregates patient health information from multiple sources and makes it available to healthcare providers to improve care (Compl. ¶33). The services allegedly include an "Encounter Notification Service (ENS)" that sends real-time alerts to providers and a "Patient Care Snapshot and Query Portal" for accessing patient information like recent visits, procedures, and medications (Compl. ¶36).
- The complaint alleges that medical providers use portable devices, such as tablets, to access this HIE information (Compl. ¶39). A screenshot from an animation shows a provider accessing a patient's name, age, and date of birth on a tablet (Compl. ¶40, p. 9).
- The complaint alleges the HIE is a key tool for connecting health system partners and managing population health for residents of the District of Columbia (Compl. ¶¶33, 38).
IV. Analysis of Infringement Allegations
’330 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A removable device, wherein the device is portable and comprises a first system comprising: a readable code that contains medical biographical information of a subject... | The HIE system allows a provider to use a portable tablet to access a readable code containing medical biographical information, such as the patient's name, age, and date of birth. A visual shows this information displayed on a tablet (p. 9). | ¶¶39-40, 46 | col. 2:3-8 |
| a programmable reporter element that is programmed to electronically store at least one particular event relating to the subject; and | A graphical user interface on the tablet is alleged to be a programmable reporter element that stores particular events, such as a patient's medical conditions or recent hospitalizations. A visual shows a tablet displaying a "MEDICAL CONDITIONS" screen (p. 10). | ¶42 | col. 2:9-11 |
| a signal producing element functionally relates to the programmable reporter element, | The tablet is alleged to have a signal producing element functionally related to the GUI. | ¶43 | col. 2:12-13 |
| wherein the programmable reporter element is further programmed to provide a signal to the functionally related signal producing element to inform a user of the device... | The GUI is alleged to be programmed to provide a signal to inform the user about events, such as hospitalizations or prescription history. A visual shows a "PRESCRIPTION HISTORY" screen with a notification bubble (p. 12). | ¶44 | col. 10:10-15 |
| wherein said programming is performed by a second system, | The HIE system is alleged to be the "second system" that programs the programmable element (the tablet GUI). | ¶45 | col. 10:16-18 |
| and wherein the device is not linked to a medical sensor. | The complaint alleges that the tablet used to access the HIE is not linked to a medical sensor. | ¶46 | col. 10:18-19 |
- Identified Points of Contention:
- Scope Questions: A central question may be whether a general-purpose tablet running software that accesses a remote HIE database constitutes the claimed "removable device" comprising a "first system" with an integrated "programmable reporter element" and "signal producing element." The defense may argue the patent describes a more specialized, self-contained device (like a smart medical ID bracelet), not a standard tablet acting as a terminal.
- Technical Questions: The complaint alleges a "signal producing element" and that the "reporter element" is programmed to "provide a signal." It will be a factual question whether displaying information from a database on a tablet screen, as shown in the complaint's visuals (e.g., Compl. p. 12), meets the specific functional requirements of a "signal" as contemplated by the patent, which also describes alerts and reminders.
’451 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| collecting medical biographical information of the subject; | The HIE system provides a method that involves collecting biographical information, such as a patient's name, age, and date of birth. | ¶57 | col. 4:58-61 |
| storing the collected medical biographical information in a database... | The collected information, including medical history such as conditions or hospitalizations, is alleged to be stored in a database. | ¶58 | col. 5:1-4 |
| adding the medical biographical information in a readable code of a portable device, wherein the device is not linked to a medical sensor; | The method allegedly involves sending information about medical conditions or hospitalizations to a portable tablet, which is not linked to a medical sensor. | ¶59 | col. 4:16-19 |
| displaying the information; | The medical information is displayed on the tablet for the practitioner. | ¶60 | col. 6:3-5 |
| programming a reporter element to electronically store at least one particular event... wherein a signal producing element is functionally related to the programmable reporter element... belong to a first system; | The method allegedly involves programming a GUI on the tablet (the "first system") to store an event, such as a medical condition or hospitalization. | ¶61 | col. 7:35-38 |
| programming the reporter element to provide a signal... to inform a user of the device of at least one particular event... wherein said at least one particular event... is electronically stored by a second system... | The method allegedly includes programming the GUI to inform the user of events (e.g., prescriptions), with the event also being stored on the HIE (the "second system"). | ¶62 | col. 4:15-17 |
| developing a plan of medical care for the subject based on the at least one particular event... | A practitioner develops a plan for medical care based on the event information (e.g., hospitalization, prescription) obtained from the system. A visual shows a doctor discussing a plan with a patient (p. 28). | ¶63 | col. 6:10-12 |
- Identified Points of Contention:
- Scope Questions: The dispute may turn on the meaning of "programming a reporter element." The complaint alleges the HIE system "programs" the tablet's GUI. The defense could argue this is merely data transmission and display, not "programming" in the sense of installing or modifying an executable element on the device as described in the patent.
- Technical Questions: The claim requires developing a "plan for medical care... based on the at least one particular event." The complaint supports this with a screenshot from an animation where a doctor says, "Let's discuss a plan" (Compl. ¶63, p. 28). Whether the HIE system itself is used for or induces this specific step, as opposed to just providing background data for a routine medical consultation, will likely be a point of factual dispute.
V. Key Claim Terms for Construction
The Term: "programmable reporter element" (present in claims of all asserted patents)
- Context and Importance: This term is the core of the claimed invention beyond a simple data storage device. The infringement theory hinges on equating a "graphical user interface on the tablet" (Compl. ¶42, ¶61) with this element. The construction will determine whether a standard software GUI displaying data from a remote server falls within the scope of what appears to be a specific, programmable component of a device.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification is silent on the specific hardware or software structure of the element, stating it is "programmed to electronically store at least one particular event" (’330 Patent, col. 2:9-11). This functional definition may support an argument that any component performing this function, including a GUI, is covered.
- Evidence for a Narrower Interpretation: Figure 4 of the patents depicts the "programmable reporter 401" as a distinct component of the "removable device 130," separate from the "readable code 132" (’330 Patent, Fig. 4). This suggests a specific, discrete hardware or firmware element, not a general-purpose GUI on a standard tablet. The specification also describes it as being part of a "removable device" like a bracelet or pendant, not a multi-purpose computer (’330 Patent, col. 5:11-13).
The Term: "second system" (present in claims of all asserted patents)
- Context and Importance: The claims require that the "programmable reporter element" (on the "first system"/device) is programmed by a "second system." The complaint alleges the HIE is the "second system" (Compl. ¶45). The case's viability depends on establishing this distributed architecture where the HIE is distinct from, and programs, the practitioner's tablet.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not strictly define the "second system," only that it "electronically stores at least one particular event" and performs the programming (’330 Patent, col. 10:16-18). This could be read to cover a remote server like the HIE.
- Evidence for a Narrower Interpretation: The specification discusses the "first system 100" as an overarching system that "collects a subject's medical biographical information" and "embeds" it onto the device (’330 Patent, col. 4:58-col. 5:10). The relationship between this overall "first system" and the claimed "second system" that does the programming is not explicitly defined, which may create ambiguity that the defense could exploit to argue the accused HIE architecture does not match the claimed architecture.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement, stating that Defendants "actively inducing and/or contributing" to infringement by their customers and users by "providing and using the HIE" (Compl. ¶¶105, 127, 149). It is alleged that Defendants "sell, offer to sell, and encourage the use of the HIE" with the intent that their actions result in direct infringement by others (Compl. ¶¶105, 128, 149).
- Willful Infringement: Willfulness is alleged based on both pre-suit and post-suit knowledge. For the ’330 Patent, the complaint alleges specific pre-suit knowledge based on notice letters and a claim chart sent to the D.C. Government starting on March 15, 2019 (Compl. ¶¶156-158). For the ’451 and ’131 patents, willfulness is based on knowledge gained "since at least the service of this Complaint" (Compl. ¶¶162-163).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the patent's "removable device" comprising a "first system" with a "programmable reporter element" be construed to read on a general-purpose tablet that is merely accessing and displaying data from the accused HIE? The patents' focus on specialized objects like bracelets may suggest a narrower scope than what is alleged.
- A second central question will concern the locus of functionality: do the accused HIE and tablet operate as the distinct "second system" and "first system" described in the claims? The dispute will likely focus on whether the HIE "programs" the tablet's GUI, as claimed, or if the tablet's software is simply rendering data sent from the HIE, presenting a potential mismatch in the claimed and accused system architectures.
- A key evidentiary question will be one of functional operation: does displaying a patient's prescription history or medical conditions on a tablet screen constitute the "signal" from a "signal producing element" as required by the claims, or does the patent envision a more active alert or notification function that is absent in the accused system?