Epic Systems Corp v. Decapolis Systems LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Epic Systems Corporation (Wisconsin)
  • Defendant: Decapolis Systems, LLC (Florida)
  • Plaintiff’s Counsel: Quarles & Brady LLP
• Case Identification: 9:22-cv-80173, S.D. Fla., 02/02/2022
• Venue Allegations: Plaintiff Epic Systems alleges venue is proper in the Southern District of Florida because Defendant Decapolis is a Florida limited liability company with its principal address within the district.
• Core Dispute: Plaintiff seeks a declaratory judgment that its healthcare software products and services do not infringe Defendant’s patents related to automated insurance claim generation and real-time patient notification of health record modifications, and that one of the patents is invalid.
• Technical Context: The technology at issue involves integrated Electronic Health Record (EHR) systems designed to connect clinical data entry with administrative functions like billing and to enhance patient data security.
• Key Procedural History: The complaint states that this declaratory judgment action follows a prior patent infringement lawsuit filed by Decapolis against Epic in the Western District of Texas, which was voluntarily dismissed by Decapolis after Epic challenged the venue. Decapolis has subsequently threatened and initiated lawsuits against Epic’s customers for their use of Epic’s software, creating the alleged controversy underlying this action.

Case Timeline

Date	Event
1999-12-18	U.S. Patent No. 7,464,040 Priority Date
2001-04-25	U.S. Patent No. 7,490,048 Priority Date
2008-12-09	U.S. Patent No. 7,464,040 Issued
2009-02-10	U.S. Patent No. 7,490,048 Issued
2021-04-29	Decapolis files infringement complaint against Epic in W.D. Texas
2021-06-22	Epic files motion to dismiss the W.D. Texas action for improper venue
2021-12-20	Decapolis files for voluntary dismissal of the W.D. Texas action
2022-02-02	Epic files this Complaint for Declaratory Judgment in S.D. Florida

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

U.S. Patent No. 7,464,040 - "Apparatus and method for processing and/or for providing healthcare information and/or healthcare-related information"

• Patent Identification: U.S. Patent No. 7,464,040, "Apparatus and method for processing and/or for providing healthcare information and/or healthcare-related information," issued December 9, 2008.

The Invention Explained

• Problem Addressed: The patent's background section describes inefficiencies and errors in the healthcare system arising from paper-based, non-integrated processes for clinical documentation and insurance claims processing, leading to rising costs and treatment delays (ʼ040 Patent, col. 2:4-16).
• The Patented Solution: The invention proposes a comprehensive, networked healthcare system where clinical and administrative tasks are integrated. A central computer receives healthcare information (e.g., a diagnosis or treatment) from a provider's device, updates the patient's electronic record, and, in response to that update, automatically generates an insurance claim suitable for electronic submission to a payer (’040 Patent, Abstract; Fig. 1).
• Technical Importance: The described technology aims to improve efficiency and reduce data entry errors by creating a direct, automated link between a clinical event and the corresponding administrative billing action (’040 Patent, col. 2:49-53).

Key Claims at a Glance

The complaint does not identify specific claims asserted by Decapolis. A representative independent claim is method claim 46.

• Independent Claim 46:
  • Storing information regarding a plurality of individuals, healthcare providers, and healthcare insurers in a database.
  • Receiving information regarding an individual from a provider's computer, where the information contains details of a symptom, diagnosis, treatment, etc.
  • Storing the received information or updating the individual's healthcare record.
  • Automatically generating an insurance claim by a processing device in response to the storing or updating of the record.
  • The generated claim is suitable for automatic submission to the insurer.
  • Transmitting the insurance claim to the insurer's computer.

U.S. Patent No. 7,490,048 - "Apparatus and method for processing and/or for providing healthcare information and/or healthcare-related information"

• Patent Identification: U.S. Patent No. 7,490,048, "Apparatus and method for processing and/or for providing healthcare information and/or healthcare-related information," issued February 10, 2009.

The Invention Explained

• Problem Addressed: The patent background identifies a need to maintain patient privacy, safeguard records, and notify patients when others access or alter their personal healthcare information (ʼ048 Patent, col. 2:20-28).
• The Patented Solution: The invention describes a method where any request to access or modify a patient's electronic health record triggers the generation of a notification message. This message, which contains information about the person making the change and the specific change itself, is transmitted to the patient's personal communication device during, concurrently with, at the same time as, or prior to the completion of the record modification (ʼ048 Patent, Abstract).
• Technical Importance: The patented solution provides a patient-centric, near-real-time security and auditing mechanism for electronic health records, enhancing patient visibility and control over their private data (ʼ048 Patent, col. 7:30-36).

Key Claims at a Glance

The complaint does not identify specific claims asserted by Decapolis. A representative independent claim is method claim 2.

• Independent Claim 2:
  • Processing, with a processor, a request by a person or entity to access, obtain, change, alter, or modify an individual's healthcare record.
  • Generating a message containing information regarding the person/entity making the request and containing the actual change sought or made.
  • Transmitting the message to a communication device of the individual or patient.
  • The transmission occurs during, concurrently with, at a same time as, or prior to a completion of the accessing, obtaining, changing, altering, or modifying of the record or a processing of the request.

III. The Accused Instrumentality

Product Identification

• The complaint identifies the accused instrumentalities generally as "Epic and/or its products and services" and "Epic's software" (Compl. ¶2, ¶7).

Functionality and Market Context

• The complaint does not provide specific technical details about the functionality of Epic's software products. It alleges that Decapolis has threatened and sued Epic's customers based on their use of Epic's software to infringe the patents-in-suit (Compl. ¶7, ¶23). This frames the dispute around the functionality provided by Epic's software when operated by end-users in a healthcare setting.

IV. Analysis of Infringement Allegations

The complaint, an action for declaratory judgment of non-infringement, does not set forth a detailed infringement theory on behalf of the patent holder. It states that Defendant Decapolis has previously alleged infringement of the ’040 and ’048 patents (Compl. ¶2). Without access to Decapolis’s specific allegations or claim charts from the prior dismissed litigation, a detailed element-by-element analysis is not possible based on the provided documents.

• Identified Points of Contention:
  • ’040 Patent: A central issue may be the scope of the claim element "automatically generated ... in response to the storing of the information." The infringement analysis raises the question of whether the accused software generates an insurance claim as a direct, triggered consequence of a clinical data update, as the claim appears to require. Alternatively, the analysis may show that the billing functionality in the accused software is a distinct, separately initiated process that merely references previously stored clinical data, which may support a non-infringement argument.
  • ’048 Patent: The analysis will likely focus on the temporal limitation requiring transmission of a notification message "during, concurrently with, at a same time as, or prior to a completion of" a record modification. The key technical question is whether the accused software's patient notification or audit log features operate within this narrow, near-real-time window. Evidence showing that notifications are provided on a delayed, batched, or on-demand basis, rather than concurrently with the data modification event, may be central to the dispute.

No probative visual evidence provided in complaint.

V. Key Claim Terms for Construction

• The Term: "automatically generated ... in response to the storing of the information" (’040 Patent, Claim 46).

• Context and Importance: The construction of this phrase is critical as it defines the required causal and operational link between a clinical action (storing a record) and an administrative one (generating a claim). Practitioners may focus on this term because the degree of automation and the immediacy of the "response" will likely be a core technical distinction between different EHR systems.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification describes a "comprehensive healthcare processing system" that "facilitates" various processes, which could suggest that an integrated but not necessarily instantaneous process falls within the scope (’040 Patent, col. 2:42-48).
  • Evidence for a Narrower Interpretation: The abstract states the claim is generated "in response to the storing of the information or the updating of the healthcare record," which could be interpreted to require a direct, event-driven trigger where the "storing" action itself initiates the claim generation process without further manual intervention (’040 Patent, Abstract).

• The Term: "transmitting the message ... during, concurrently with, at a same time as, or prior to a completion of" the record modification (’048 Patent, Claim 2).

• Context and Importance: This temporal limitation is the central feature distinguishing the invention from conventional audit logs or periodic account summaries. The viability of an infringement claim may depend entirely on whether the accused system's notifications are sent within this tightly defined time window.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The language "prior to a completion of" could be argued to encompass a period of time before the user's session ends or before the change is fully committed and visible to other users, potentially broadening the time window.
  • Evidence for a Narrower Interpretation: The repetition of "during, concurrently with, at a same time as" emphasizes immediacy. The abstract's phrasing suggests a near-simultaneous event, which could support a narrow construction limiting the claim to systems that provide true real-time alerts synchronized with the database transaction itself (’048 Patent, Abstract).

VI. Other Allegations

• Indirect Infringement: While the DJ complaint does not make allegations of indirect infringement, it notes that Decapolis has sued Epic's customers for infringement based on their "use" of Epic's software (Compl. ¶7, ¶23). This suggests that any infringement case brought by Decapolis against Epic would likely include allegations of induced infringement, premised on Epic providing its software and instructions for use to its customers.

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

• A core issue will be one of functional causality: for the ’040 Patent, does the accused software automatically generate insurance claims as a direct, triggered response to the act of storing clinical information as claimed, or is the billing functionality a distinct process manually initiated by a user that merely references previously stored clinical data?
• A key question of temporal scope will define the ’048 Patent dispute: does the accused system’s functionality for patient alerts or record access notifications operate within the narrow, near-real-time window required by the claim language "during, concurrently with, at a same time as, or prior to" the modification event?
• Given the procedural posture, an initial question for the court will be one of jurisdiction: do Decapolis’s enforcement activities against Epic's customers create a sufficiently immediate and real controversy to sustain this declaratory judgment action?