DCT

1:22-cv-01593

MDSave Shared Services Inc v. Sesame Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:22-cv-01593, D. Del., 03/07/2023
  • Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendant is a Delaware corporation and thus resides in the district.
  • Core Dispute: Plaintiffs allege that Defendant’s online healthcare marketplace infringes seven patents related to computer-implemented systems for facilitating the procurement and payment of bundled healthcare services.
  • Technical Context: The technology at issue involves online platforms that allow consumers to find, pre-negotiate, and purchase bundled medical procedures from various providers, addressing a market need for price transparency in healthcare.
  • Key Procedural History: The complaint alleges Defendant had knowledge of the asserted patents from a prior litigation between the parties in the Western District of Texas. For all seven asserted patents, the complaint notes that the patent examiner initially issued rejections under 35 U.S.C. § 101 for claiming patent-ineligible subject matter, but later withdrew these rejections and allowed the claims after Plaintiffs made certain amendments. This prosecution history suggests that claim scope and patent eligibility may become central issues in the current dispute.

Case Timeline

Date Event
2013-08-16 Priority Date for '072, '115, '160, '498, '276, and '021 Patents
2013 MDSave first launched its business
2015-09-01 Issue Date for U.S. Patent No. 9,123,072
2019-11-15 Priority Date for '423 Patent
2021-04-27 Issue Date for U.S. Patent No. 10,991,021
2021-11 Plaintiffs allegedly discovered Defendant's infringing conduct
2021-11-09 Issue Date for U.S. Patent No. 11,170,423
2022-04-26 Issue Date for U.S. Patent No. 11,315,160
2022-06-21 Issue Date for U.S. Patent No. 11,367,115
2022-10-18 Issue Date for U.S. Patent No. 11,475,498
2023-01-10 Issue Date for U.S. Patent No. 11,551,276
2023-03-07 First Amended Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 9,123,072 - "Network-Based Marketplace Service for Facilitating Purchases of Services and Products"

Issued September 1, 2015

The Invention Explained

  • Problem Addressed: The patent identifies the need for a computer-implemented "mechanism" to allow prospective patients to search for, compare, and purchase healthcare services and products, particularly in an environment of high-deductible insurance plans where price transparency is lacking (Compl. ¶55; ’072 Patent, col. 1:41-60).
  • The Patented Solution: The invention is an apparatus for facilitating these purchases. It comprises an application server that provides a network service and maintains a database of service offers, including bundled services. The system is designed to receive a user’s selection and funding information, process the purchase by requesting funds, and then generate a unique purchase record and voucher that the user can redeem with the provider (Compl. ¶¶54, 57-64; ’072 Patent, Abstract, col. 2:7-24).
  • Technical Importance: The patented system provides a technical framework for an online marketplace that bundles disparate medical services from multiple providers into a single, pre-payable product, simplifying a complex purchasing process (Compl. ¶¶4-5).

Key Claims at a Glance

  • The complaint asserts independent claims 1, 13, and 25 (Compl. ¶¶69, 274).
  • Independent Claim 1 requires:
    • An apparatus with an application server providing a network service.
    • A data storage system with a service offer database containing records for a plurality of service offers, including at least one offer for a bundled set of healthcare services.
    • Each record comprising details such as a primary healthcare service, purchase price, provider, and payment information.
    • The network service being operable to receive a purchase selection from a user, generate a purchase information record with a unique confirmation number, and transmit voucher information for rendering a voucher to the user.

U.S. Patent No. 11,170,423 - "Provisioning Medical Resources Triggered by a Lifecycle Event"

Issued November 9, 2021

The Invention Explained

  • Problem Addressed: The patent describes a need for an improved computer system that can proactively determine and offer appropriate medical services to a patient in response to a "patient lifecycle event" (Compl. ¶91; ’423 Patent, col. 2:35-46).
  • The Patented Solution: The invention is a method where a computer processor receives an electronic message containing an Electronic Health Record (EHR). The system uses the EHR to determine the patient's current "lifecycle state," compares it to a historical state, and upon detecting a lifecycle event (e.g., a new diagnosis, doctor's order), it determines and presents medically appropriate services to the patient for selection and prepayment (Compl. ¶¶93-96; ’423 Patent, col. 54:47-55:43).
  • Technical Importance: This technology automates the offering of relevant medical services based on real-time changes in a patient's health status as documented in their EHR, aiming to make follow-up care more convenient and timely (Compl. ¶90).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶¶102, 282).
  • Independent Claim 1 requires a method comprising:
    • Receiving, by a processor, an electronic message with an EHR encoding updated patient medical data.
    • Determining the current patient lifecycle state based on the EHR.
    • Determining if a patient lifecycle event occurred by comparing historical and current lifecycle states.
    • In response to an event: determining medical services to be offered that are not contraindicated.
    • Presenting the medical services in a user interface for selection.
    • Automatically presenting the selected services for prepayment.

U.S. Patent No. 11,367,115 - "Prepaid Bundled Healthcare Services with Discreet Virtual Payment Distribution"

Issued June 21, 2022

  • Technology Synopsis: The patent is directed to a technical solution for presenting and processing payments for bundled healthcare services with virtual payment distribution. The system receives a user payment, generates an electronic health record comprising a purchase data record with a unique confirmation number, and presets an initial redemption status for each service in the bundle (Compl. ¶¶117-119, 122-123).
  • Asserted Claims: Claims 1-5, 9-11, 13-15, 17, 25, and 27-28 (Compl. ¶¶148, 289).
  • Accused Features: The complaint alleges infringement by Defendant's system for selling bundled healthcare services and generating purchase records (Compl. ¶¶43, 86).

U.S. Patent No. 11,315,160 - "Prepaid Bundled Healthcare Services with Discreet Virtual Payment Distribution"

Issued April 26, 2022

  • Technology Synopsis: The patent describes an apparatus with a processor and memory configured to perform operations for prepaid bundled healthcare services. The claimed operations include receiving an electronic message with a user payment, generating an electronic health record with a purchase data record and unique confirmation number, and presetting an initial redemption status (Compl. ¶¶151-153, 157-159).
  • Asserted Claims: Claims 1-5, 9-11, 13-15, 17, 25, and 27-28 (Compl. ¶¶179, 297).
  • Accused Features: The complaint accuses Defendant's online platform for selling bundled healthcare services (Compl. ¶¶43, 86).

U.S. Patent No. 11,475,498 - "Prepaid Bundled Health, Dental, and Veterinary Services with Virtual Payment Distribution"

Issued October 18, 2022

  • Technology Synopsis: This patent is directed to an apparatus and methods for presenting and processing payments for bundled services that may include dental or veterinary services. The system receives a payment, generates a purchase data record with a unique confirmation number, and assigns the number to the record for selective redemption (Compl. ¶¶182-184, 188-189).
  • Asserted Claims: Claims 1-13, 15, 17-19, 21-23, and 25 (Compl. ¶¶211, 305).
  • Accused Features: The complaint accuses Defendant's online platform for selling bundled healthcare services (Compl. ¶¶43, 86).

U.S. Patent No. 11,551,276 - "Selectively Redeemable Bundled Healthcare Services with Discreet Payment Distribution"

Issued January 10, 2023

  • Technology Synopsis: The patent describes a technology for presenting a selection of bundled healthcare services to users. In response to a selection, the system generates an electronic health record with a unique confirmation number and presets an initial redemption status for each service, allowing for user access to the record to receive each service (Compl. ¶¶214-216, 218-221).
  • Asserted Claims: Claims 1, 2, 7-10, 19-24, 26, 29, and 30 (Compl. ¶¶240, 313).
  • Accused Features: The complaint accuses Defendant's online platform for selling bundled healthcare services (Compl. ¶¶43, 86).

U.S. Patent No. 10,991,021 - "Provisioning Medical Resources Triggered by a Lifecycle Event"

Issued April 27, 2021

  • Technology Synopsis: This patent is directed to an apparatus and methods for determining appropriate medical services in response to a patient lifecycle event. The system comprises a processor and memory configured to receive an EHR, determine a patient's lifecycle state, detect if a lifecycle event occurred, and in response, determine and present medical services for prepayment (Compl. ¶¶243-245, 249-254).
  • Asserted Claims: Claims 1-6 and 9 (Compl. ¶¶271, 321).
  • Accused Features: The complaint accuses Defendant's online platform for selling bundled healthcare services (Compl. ¶¶43, 86).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are Defendant Sesame’s products and services, including its online healthcare marketplace available at www.sesamecare.com and associated mobile applications (Compl. ¶¶41, 85).

Functionality and Market Context

The complaint alleges that Sesame’s platform functions as an online marketplace for consumers to purchase bundled healthcare services (Compl. ¶22). It is alleged to operate through a networked application server and use a database containing procedure, provider, and price data to sell these services and generate purchase records, or "vouchers" (Compl. ¶86). The complaint provides screenshots from the Sesame website showing listings for services like "MRI with contrast" and "Diagnostic ultrasound" from specific providers at set prices, which a user can select for purchase (Compl. p. 12). Plaintiffs allege that Sesame is a direct competitor that entered the market by copying Plaintiffs' proprietary provider and pricing data (Compl. ¶¶13, 43).

IV. Analysis of Infringement Allegations

U.S. Patent No. 9,123,072 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
an apparatus comprising: an application server providing a network service; Defendant's platform operates through a "networked application server" to sell healthcare services. ¶86 col. 1:64-65
a data storage system communicatively coupled to the application server via a network, the data storage system storing a service offer database... Defendant's platform uses "data storage systems" that include a database of services. ¶86 col. 2:1-4
the service offer database comprising a plurality of service offer information records respectively associated with a plurality of service offers, the plurality of service offers including at least one service offer for a bundled set of healthcare services... Defendant's platform uses a database comprising "a plurality of procedure, provider, and price data" and sells "bundled healthcare services." ¶86 col. 14:38-42
each service offer information record comprising an indication of a primary healthcare service of the associated service offer, a purchase price for the associated service offer, an indication of a corresponding healthcare service provider for the primary healthcare service... Defendant's database is alleged to contain procedure, provider, and price data. The website shows specific providers for specific services at specific prices. ¶86; p. 12 col. 16:67-17:6
the network service, upon being accessed by a user...operable to: receive an indication of a service offer being selected for purchase by the user; Defendant's website allows users to select services for purchase. The screenshot shows a "SELECT" button for a listed medical service. ¶86; p. 12 col. 2:7-10
generate a respective purchase information record for the purchase that comprises a unique confirmation number for the purchase... Defendant's platform is alleged to generate its own "purchase information records (or 'vouchers')." ¶86 col. 4:12-14
and transmit a set of voucher information to the client system generated based on the respective purchase information record for the processed purchase for rendering a voucher for the user... Defendant's platform provides vouchers to customers who purchase services. ¶86 col. 4:12-22

U.S. Patent No. 11,170,423 Infringement Allegations

The complaint alleges that Sesame infringes at least Claim 1 of the ’423 Patent but primarily relies on an attached exhibit (Exhibit 5), which was not provided for this analysis (Compl. ¶¶114, 282). The complaint does not contain sufficient narrative detail in its main body to construct a claim chart mapping specific accused functionalities to the elements of claim 1. The core infringement theory appears to be that Defendant's platform determines and offers medical services to patients based on some form of triggering event, thereby practicing the patented method (Compl. ¶¶89-90). However, the complaint does not specify what feature of the accused platform constitutes the claimed "patient lifecycle event" that triggers the method.

Identified Points of Contention

  • Scope Questions: A central question for the ’423 and ’021 Patents will be the scope of the term "patient lifecycle event." The infringement analysis will depend on whether any functionality in the accused platform can be construed as responding to a specific trigger like a "doctor's order" or "diagnosis change," as contemplated by the patent (Compl. ¶90), versus merely responding to a user's search query.
  • Technical Questions: For the '072 patent family, a key factual dispute may arise from the allegation that Sesame copied data and resold MDSave vouchers (Compl. ¶¶13, 50). This raises the question of whether Sesame’s system actually performs the claimed steps of "maintaining a service offer database" and "generating" its own purchase records, or if it acts as a pass-through that relies on records and offers generated by Plaintiffs' system.

V. Key Claim Terms for Construction

"service offer database" (’072 Patent, Claim 1)

Context and Importance

This term is critical because infringement requires the accused platform to "store" and "maintain" such a database. Defendant may argue that a database populated by allegedly copying data from a competitor's website (Compl. ¶13) is not a "service offer database" within the patent's meaning, which may imply offers originating from providers affiliated with the platform.

Intrinsic Evidence for Interpretation

  • Evidence for a Broader Interpretation: Claim 1 requires the database to "comprise" a plurality of records, which may not strictly require the platform operator to have originated the offers. The specification describes the database as being "maintained by the application server," which could be read broadly to include storing and managing data regardless of its origin (Compl. ¶59; ’072 Patent, col. 10:25-26).
  • Evidence for a Narrower Interpretation: The detailed description discusses providers registering with the system to "offer healthcare services" (Compl. ¶¶65-66, citing '072 patent specification). This context may suggest the "service offers" in the database are those actively created by providers using the patented system, not passively copied from an external source.

"patient lifecycle event" (’423 Patent, Claim 1)

Context and Importance

The entire method of claim 1 is performed "in response to determining a patient lifecycle event occurred." The viability of the infringement claim depends on identifying a corresponding trigger in the accused platform. Practitioners may focus on this term because its construction will determine whether routine user interactions (like a search) fall within the claim scope, or if a more specific, non-conventional trigger (like receipt of an EHR update) is required.

Intrinsic Evidence for Interpretation

  • Evidence for a Broader Interpretation: The specification provides a non-exhaustive list of examples, including "payment, admission, or discharge," which covers a range of administrative and clinical triggers ('423 Patent, Abstract). The term "may be, for example," suggests the list is not limiting.
  • Evidence for a Narrower Interpretation: The patent repeatedly ties the lifecycle event to receiving an "electronic message comprising an EHR" and comparing "historical" and "current" patient lifecycle states (Compl. ¶¶93-95; ’423 Patent, col. 54:47-55:43). This could support a narrower construction requiring the event to be an automated, data-driven determination based on clinical records, rather than a simple user action.

VI. Other Allegations

Willful Infringement

The complaint alleges willful infringement for all seven asserted patents. The allegations are based on both pre- and post-suit knowledge. Pre-suit knowledge is alleged based on Defendant having "studied, and copied MDSave's website, which lists the" asserted patents, and on Defendant's awareness of the patents from prior litigation between the parties in the Western District of Texas (e.g., Compl. ¶¶275-276, 279, 283-284).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A core issue will be one of operational reality vs. claim requirements: Does the accused Sesame platform, which Plaintiffs allege was built by copying their data, independently perform the claimed functions of "maintaining" its own databases and "generating" its own purchase records, or does it operate as a technical pass-through for records and offers originating from the MDSave system?
  • A central question will be one of claim scope and patent eligibility: Given the prosecution histories involving § 101 rejections, the case will likely turn on the construction of key triggering limitations. Can the term “patient lifecycle event” in the ’423 and ’021 patents be construed to cover a user-initiated search, or is it limited to a specific, automated response to an EHR update, thereby distinguishing it from an abstract business method?
  • A key evidentiary question will concern willfulness: What evidence will demonstrate that Defendant had pre-suit knowledge of the asserted patents, either from studying Plaintiffs' website or from prior litigation, and that any infringement constituted "an egregious case of misconduct beyond typical infringement"?