DCT

9:22-cv-80173

Epic Systems Corp v. Decapolis Systems LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: [Epic Systems Corporation](https://ai-lab.exparte.com/party/epic-systems-corp) v. [Decapolis Systems, LLC](https://ai-lab.exparte.com/party/decapolis-systems-llc), 9:22-cv-80173, S.D. Fla., 04/14/2022
  • Venue Allegations: Plaintiff Epic Systems Corporation alleges venue is proper in the Southern District of Florida because Defendant Decapolis Systems, LLC is subject to personal jurisdiction there and has directed its business, licensing, and enforcement activities at the district.
  • Core Dispute: Plaintiff seeks a declaratory judgment that its software products and services do not infringe, and that the claims are invalid, for two patents owned by Defendant related to computer-implemented processing of healthcare information.
  • Technical Context: The patents-in-suit relate to foundational electronic health record (EHR) and billing technologies, specifically the automated generation of insurance claims from clinical data and the notification of patients upon access to their medical records.
  • Key Procedural History: This action follows a prior lawsuit filed by Decapolis against Epic in the Western District of Texas, which Decapolis voluntarily dismissed after Epic challenged the venue. The complaint notes that Decapolis has since threatened or sued Epic’s customers over the same patents, establishing the "actual controversy" required for this declaratory judgment action.

Case Timeline

Date Event
1999-12-18 Earliest Priority Date for ’040 Patent
2001-04-25 Earliest Priority Date for ’048 Patent
2008-12-09 ’040 Patent Issued
2009-02-10 ’048 Patent Issued
2021-04-29 Decapolis files initial infringement suit against Epic in W.D. Tex.
2021-06-22 Epic files motion to dismiss the W.D. Tex. action for improper venue
2021-12-20 Decapolis voluntarily dismisses its W.D. Tex. action without prejudice
2022-04-08 Decapolis files answer and counterclaims in the present S.D. Fla. action
2022-04-14 Epic files Amended Complaint for Declaratory Judgment (this action)

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 describes inefficiencies and errors in the healthcare system arising from paper-based, slow, and non-uniform methods for collecting patient data and processing insurance claims, leading to rising costs and treatment delays (’040 Patent, col. 1:26-53; col. 2:4-15).
  • The Patented Solution: The invention proposes a centralized computer system that links patients, providers, and payers. When a healthcare provider enters clinical information (e.g., a diagnosis or treatment) into the system to update a patient's electronic record, the system uses that new information to automatically generate a corresponding insurance claim suitable for electronic submission to the payer (’040 Patent, Abstract; col. 2:41-48). The system architecture is depicted in Figure 1, connecting provider, payer, and patient communication devices to a central processing computer (’040 Patent, Fig. 1).
  • Technical Importance: The direct, automated linking of clinical documentation to the billing process addresses a core challenge in healthcare administration by seeking to reduce manual data entry, coding errors, and administrative overhead.

Key Claims at a Glance

  • The complaint seeks a declaratory judgment of non-infringement of all claims and does not identify specific claims for analysis (Compl. ¶30; Prayer for Relief ¶A). Independent claim 2 is representative of the method claims.
  • Essential elements of independent claim 2 include:
    • Storing healthcare information for individuals, providers, and payers in a database.
    • Receiving information regarding an individual (e.g., a symptom or diagnosis) from a provider's computer over a network like the Internet.
    • Storing the received information or updating the individual's healthcare record in the database.
    • Automatically generating an insurance claim by a processing device in response to the storing of the information or the updating of the healthcare record.
    • Transmitting the generated insurance claim to the payer'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 problems in maintaining the privacy of patient healthcare records and notifying patients when their electronic files are accessed or altered (’048 Patent, col. 2:20-29).
  • The Patented Solution: The invention describes a method where a central processor handles a request from a person or entity (e.g., a doctor or insurer) to access or modify a patient's electronic health record. The system then generates a notification message containing details about the requesting entity and the specific change being made, and transmits this message to the patient's personal communication device. Crucially, this notification is sent during, concurrently with, at the same time as, or prior to the completion of the record access or modification, providing real-time or pre-emptive awareness (’048 Patent, Abstract; col. 5:10-21).
  • Technical Importance: This technology addresses patient data security and transparency by creating an automated audit and notification mechanism that gives patients visibility into who is accessing their sensitive health information and when.

Key Claims at a Glance

  • The complaint does not identify specific claims for analysis (Compl. ¶38; Prayer for Relief ¶A). Independent claim 2 is representative of the method claims.
  • Essential elements of independent claim 2 include:
    • 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 about the requesting person/entity and the actual change sought or made.
    • Transmitting the message to a communication device of the individual during, concurrently with, at a same time as, or prior to a completion of the accessing, obtaining, changing, altering, or modifying of the record.

III. The Accused Instrumentality

  • Product Identification: The complaint broadly identifies "Epic and/or use of its products and services" and "Epic's software products and/or services" as the accused instrumentalities (Compl. ¶¶2, 24).
  • Functionality and Market Context: The complaint does not provide any specific technical details regarding the functionality of the accused products or services. As a declaratory judgment complaint filed by the accused infringer, it summarizes the technology of the patents-in-suit but offers no description of its own products' operations (Compl. ¶¶12, 15).

IV. Analysis of Infringement Allegations

The complaint is an action for a declaratory judgment of non-infringement and, as such, does not contain infringement allegations, narrative infringement theories, or claim charts for analysis. The complaint states that Decapolis has made allegations of infringement, culminating in a prior lawsuit and counterclaims in the present action, but the specifics of those allegations are not detailed in the provided document (Compl. ¶¶2, 24).

No probative visual evidence provided in complaint.

  • Identified Points of Contention: Based on the language of the representative independent claims, future infringement disputes may focus on the following technical questions:
    • ’040 Patent Scope Questions: A likely point of dispute will be the scope of "automatically generated...in response to the storing of the information." This raises the question of whether an accused system that involves intermediate steps, such as human review, batch processing, or a user-initiated command after clinical data entry, can meet this limitation. The required immediacy and causal link between the record update and claim generation will be a central issue.
    • ’048 Patent Technical Questions: The analysis for the ’048 Patent will likely center on the specific temporal requirements of the claims. A key question is whether an accused system's notification feature operates "during, concurrently with, at a same time as, or prior to a completion of" the record access. Evidence will be required to determine if the accused notifications are sent in real-time or pre-emptively, as the claim language suggests, or if they are sent after the access event is complete (e.g., as part of a summary log).

V. Key Claim Terms for Construction

  • Term 1 (’040 Patent): "automatically generated ... in response to the storing of the information or the updating of the healthcare record" (from claim 2)

    • Context and Importance: This phrase defines the triggering mechanism and degree of automation for the invention's core function. The viability of an infringement claim will depend on whether the accused system's claim-creation process is tightly and causally coupled with the clinical data entry event, without intervening manual steps.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification describes the invention as facilitating "improved healthcare quality, efficient information collection, processing and dissemination, efficient diagnosis and treatment, cost efficiency, cost containment" (’040 Patent, col. 2:49-52). A party might argue this broad statement of purpose supports construing the term to cover any system that streamlines claim creation from clinical data, not just those that are instantaneous.
      • Evidence for a Narrower Interpretation: The patent's abstract states the insurance claim is "automatically generated by a processing device in response to the storing of the information or the updating of the healthcare record." This direct linkage is reinforced in the flowchart of Figure 14B, which shows the "GENERATE CLAIM FORM" step (1409) occurring immediately after the "UPDATE PATIENT'S RECORDS" step (1408), suggesting a direct, programmatic trigger.

  • Term 2 (’048 Patent): "transmitting the message ... during, concurrently with, at a same time as, or prior to a completion of, an accessing, obtaining, changing, altering, or modifying, of the ... healthcare record" (from claim 2)

    • Context and Importance: This temporal limitation is the central feature distinguishing the invention from conventional, after-the-fact audit logs. Infringement will hinge on whether an accused product's notifications are sent within this specific and narrow timeframe relative to the record access event.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: A party could argue that the use of four distinct but related temporal phrases ("during," "concurrently with," "at a same time as," "or prior to") is intended to cover a range of near-real-time notifications rather than a single, technically rigid moment.
      • Evidence for a Narrower Interpretation: The patent repeatedly emphasizes this specific timing, stating the invention is for providing notification "during, concurrently with, at a same time as, or prior to a completion of same" (’048 Patent, col. 5:13-15). This repetition suggests the precise timing is a critical and deliberate limitation, intended to provide immediate, actionable awareness to the patient rather than a historical summary.

VI. Other Allegations

  • Indirect Infringement: The complaint seeks a declaration that it has not infringed "either directly or indirectly" but provides no factual allegations for analysis, as its purpose is to deny liability (Compl. ¶30).
  • Willful Infringement: The complaint does not make allegations of willfulness. However, the procedural history cited in the complaint, specifically the prior lawsuit filed by Decapolis in the Western District of Texas, establishes that Epic had pre-suit knowledge of the patents-in-suit and Decapolis's infringement contentions (Compl. ¶18). This fact may be used by Decapolis to support a potential counterclaim for willful infringement.

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

The resolution of this declaratory judgment action will likely depend on the answers to two central questions, which will be developed through Decapolis's counterclaims and subsequent discovery.

  • A core issue will be one of process automation: For the ’040 Patent, does the accused software "automatically generate" an insurance claim as a direct, programmatic "response to" the storing of clinical information, or does the system architecture involve intermediate human actions or batch processes that sever this claimed causal link?
  • A key evidentiary question will be one of temporal precision: For the ’048 Patent, does the accused product's notification system operate with the specific real-time or pre-emptive timing required by the claim phrase "during, concurrently with, at a same time as, or prior to a completion of" the record access, or is there a functional mismatch with systems that provide notifications after the access event is complete?