Decapolis Systems LLC v. Chisholm Trail Pediatrics

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Decapolis Systems, LLC (Florida)
  • Defendant: Chisholm Trail Pediatrics, Inc. P.A. (Texas)
  • Plaintiff’s Counsel: Garteiser Honea, PLLC
• Case Identification: 6:21-cv-01273, W.D. Tex., 12/07/2021
• Venue Allegations: Plaintiff alleges venue is proper in the Western District of Texas because Defendant maintains its headquarters and physical business locations within the district.
• Core Dispute: Plaintiff alleges that Defendant’s use of the eClinicalWorks electronic health record and practice management platform infringes two patents related to processing and managing healthcare information.
• Technical Context: The technology at issue involves centralized computer systems for managing electronic patient records, controlling access to sensitive health information, and integrating clinical data entry with administrative tasks such as insurance billing.
• Key Procedural History: The complaint notes that the asserted patents have expired but are enforceable for purposes of seeking damages for past infringement. It also highlights that the patents have been cited by numerous technology and healthcare companies, which Plaintiff presents as evidence of their technological significance.

Case Timeline

Date	Event
1999-12-18	Priority Date for U.S. Patent No. 7,464,040
2001-04-25	Priority Date for U.S. Patent No. 7,490,048
2008-12-09	Issue Date for U.S. Patent No. 7,464,040
2009-02-10	Issue Date for U.S. Patent No. 7,490,048
2021-05-12	Date Plaintiff visited webpage for accused instrumentality
2021-12-02	Date Plaintiff visited Defendant's website
2021-12-07	Complaint Filing Date

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"

The Invention Explained

• Problem Addressed: The patent's background section describes problems in the healthcare system at the time of invention, including reliance on patient-supplied information that may be inaccurate or incomplete, the lack of uniform distribution of patient records among different providers, and the risk of medical errors resulting from outdated information (Compl. ¶16; ’040 Patent, col. 1:43-65).
• The Patented Solution: The invention proposes a computer-implemented method to streamline clinical and administrative workflows. After a provider enters a patient's clinical information (e.g., diagnosis, treatment) into a central computer system to update the patient's record, the system is configured to automatically generate an insurance claim in direct response to that update. The system then transmits the claim to the appropriate insurer's computer system (’040 Patent, Abstract; Fig. 14B).
• Technical Importance: The patented solution addresses the need to reduce errors and inefficiencies in medical billing by tightly coupling the administrative act of claim generation with the clinical act of record-keeping. (Compl. ¶18).

Key Claims at a Glance

• The complaint asserts independent claims 1 and 46 (Compl. ¶56). Claim 1 includes the following essential elements for an apparatus:
  • A receiver for receiving information regarding an individual (e.g., symptom, diagnosis, treatment) from a healthcare provider's computer over a network like the Internet.
  • A remote database for storing healthcare records for a plurality of individuals, providers, and payers.
  • A processing device that processes the received information to store it in the database and/or update the individual's healthcare record.
  • The processing device automatically generates an insurance claim "in response to the storing of the information... or the updating of the healthcare record."
  • The generated insurance claim is suitable for automatic submission to the associated healthcare insurer or payer.
  • The processing device transmits the insurance claim to a computer associated with the insurer or payer.

U.S. Patent No. 7,490,048 - "Apparatus and Method for Processing and/or for Providing Healthcare Information and/or Healthcare-Related Information"

The Invention Explained

• Problem Addressed: The patent identifies the need to maintain the privacy of patient healthcare records while still allowing access for legitimate purposes by providers, payers, and other third parties. A key challenge is providing patients with notice and control over who is accessing or modifying their sensitive information (’048 Patent, col. 2:20-29).
• The Patented Solution: The invention describes a method for managing access to electronic health records. When a person or entity requests to access or modify a patient's record, the system processes the request against stored restrictions. It then generates and transmits a notification message to the patient's communication device. The patent specifies this notification can occur "during, concurrently with, at a same time as, or prior to a completion of" the access or modification event, thereby giving the patient timely awareness (’048 Patent, Abstract).
• Technical Importance: The technology provides a patient-centric notification framework for EHR systems, addressing privacy concerns that were critical to the adoption of electronic medical records and compliance with regulations like HIPAA. (Compl. ¶12).

Key Claims at a Glance

• The complaint asserts independent claims 1 and 20, among others, and highlights Claim 20 as exemplary (Compl. ¶36). Claim 20 includes the following essential elements for a computer-implemented method:
  • Receiving and storing information regarding a restriction or limitation on the ability to access or modify a patient's healthcare record.
  • Processing a request from a person or entity to access, obtain, change, alter, or modify information in the patient's healthcare record.
  • Determining, based on the stored restriction, whether the requesting person or entity is authorized.
  • Generating a message containing information about the person or entity making the request.
  • Transmitting the message to a communication device belonging to the individual or patient over a communication network.
• The complaint also reserves the right to assert numerous dependent claims (Compl. ¶36).

III. The Accused Instrumentality

Product Identification

• The accused instrumentalities are the "plurality of electronic healthcare systems, platforms and services" provided by Defendant, including "eClinicalWork's cloud-based electronic health records ('EHR') and practice management system and software" (Compl. ¶31).

Functionality and Market Context

• The complaint alleges the accused eClinicalWorks platform is a "cloud-based EHR and Revenue Cycle Management solution" that allows providers to manage patient care, including scheduling, documentation, labs, prescribing, and billing (Compl. ¶31; Figure 3, p. 10).
• Relevant functionalities identified in the complaint include "electronic record access, mobile access, patient portals, messaging services, data and document management capabilities," and the ability to "electronically manage practices and billing" (Compl. ¶31, p. 9).
• The complaint provides a screenshot from Defendant's website identifying it as an eClinicalWorks customer, which it presents as evidence of Defendant's use of the accused system (Figure 2, p. 10).

IV. Analysis of Infringement Allegations

’040 Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
a receiver, wherein the receiver receives information regarding an individual... transmitted from a first computer... associated with a healthcare provider...	The accused system receives information regarding an individual transmitted from a computer associated with a healthcare provider (Compl. ¶58).	¶58	col. 2:65-3:15
a database or a memory device... remote from the first computer... wherein the database... stores information regarding a plurality of individuals, a plurality of healthcare providers, and a plurality of healthcare insurers or healthcare payers...	The accused system uses a remote cloud database that stores information for a plurality of individuals, providers, and payers (Compl. ¶59).	¶59	col. 3:45-51
a processing device, wherein the processing device processes the information... for at least one of storing the information... and updating the healthcare record...	The accused system includes a processing device that processes information for storing it in the database and updating the healthcare record (Compl. ¶60).	¶60	col. 4:10-23
and further wherein the processing device automatically generates an insurance claim in response to the storing of the information... or the updating of the healthcare record...	The accused system's processing device "automatically generates an insurance claim in response to the storing of the information... or the updating of the healthcare record" (Compl. ¶60).	¶60	col. 4:24-34
and further wherein the processing device transmits the insurance claim to the second computer or to the second communication device...	The accused system's processing device transmits the generated insurance claim to a computer associated with the healthcare insurer or payer (Compl. ¶60).	¶60	col. 4:35-43

• Identified Points of Contention:
  • Technical Questions: A central question will be whether the accused system "automatically generates" an insurance claim as a direct consequence of a clinical record update. The analysis may explore whether the billing functionality is a distinct, user-initiated process that uses the clinical record as an input, versus a process that is triggered without human intervention upon the finalization of a clinical record entry.
  • Scope Questions: The construction of the term "in response to" may be critical. The court may need to determine if this requires an immediate, direct causal link between the record update and claim generation, or if it can encompass a broader, multi-step workflow where the update is a necessary precondition for a later billing action.

’048 Infringement Allegations

Claim Element (from Independent Claim 20)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
receiving... and storing the information regarding a restriction or limitation regarding an ability of a person or an entity to at least one of access, obtain, change, alter, and modify...	The accused system receives and stores information regarding restrictions on the ability of a person or entity to access, obtain, or modify information in a patient's record (Compl. ¶38, ¶41).	¶38, ¶41	col. 3:45-4:1
processing, with a processor, a request by a person or an entity to at least one of access, obtain, change, alter, and modify...	The accused system processes requests to access and modify patient healthcare files, which is a core function of an EHR system that offers "in-place editing" (Compl. ¶41; Figure 3, p. 10).	¶41	col. 2:56-61
determining, using the information regarding the restriction or limitation, whether the person or the entity is allowed or authorized...	The accused system determines whether the requesting entity is allowed or authorized to access or modify the information (Compl. ¶41).	¶41	col. 4:1-12
generating a message containing at least one of information regarding the person or the entity making the request, and identification information...	The accused system generates a message containing information and identification regarding the entity making the request (Compl. ¶41).	¶41	col. 4:13-24
transmitting the message to a communication device of the individual or patient via, on, or over, a communication network.	The accused system, which includes "messaging services," transmits the generated message to the patient's communication device over a network (Compl. ¶31, p. 9; ¶41).	¶41	col. 4:25-29

• Identified Points of Contention:
  • Technical Questions: The complaint alleges the accused system provides "messaging services" (Compl. ¶31, p. 9), but it does not specify whether these services perform the claimed function of notifying a patient about an access or modification event. A key factual question will be whether the accused system actually generates and transmits such a notification.
  • Scope Questions: Dependent claims asserted in the complaint require that the notification be transmitted "prior to a completion of" the access or processing (Compl. ¶42). This raises the question of whether the accused system's messaging functions, such as an internal patient portal message, meet this temporal requirement, or if they are delivered only after the event is complete.

V. Key Claim Terms for Construction

• Term: "automatically generates an insurance claim in response to the storing of the information... or the updating of the healthcare record" (’040 Patent, Claim 1)
• Context and Importance: This phrase is the core of the asserted invention in the ’040 Patent, linking a clinical action (updating a record) to an administrative one (generating a claim). The degree of automation and the nature of the causal link ("in response to") required by the claim will be central to the infringement analysis.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party could argue that the term does not exclude all human involvement, but rather describes a system where the record update is the necessary trigger that places the item into a billing workflow, even if a user must later approve or finalize the claim. The specification broadly describes facilitating "claims processing" (’040 Patent, col. 2:55-57).
  • Evidence for a Narrower Interpretation: The patent’s abstract states the claim "is automatically generated... in response to the storing." The flowchart in Figure 14B depicts the "UPDATE PATIENT'S RECORDS" step (1408) leading directly to "GENERATE CLAIM FORM" (1409) without any intervening manual step, which may support a construction requiring a direct, machine-initiated process with no intermediate human action.
• Term: "transmitting the message to a communication device of the individual or patient" (’048 Patent, Claim 20)
• Context and Importance: The definition of this term is critical for determining what type of notification satisfies the claim. Practitioners may focus on this term because the nature of modern "messaging services" (e.g., secure patient portals) raises questions about whether a message is "transmitted to" a device or merely made available for the user to "pull" from a server.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification provides a non-exhaustive list of communication methods, including "e-mail messages, telephone messages, beeper or pager messages, physical mail delivery, electronic data transmission" (’048 Patent, col. 6:16-20). This broad list could be used to argue that any method that makes the information available to the patient, including a portal message, is covered.
  • Evidence for a Narrower Interpretation: The purpose of the notification, particularly in dependent claims requiring it to be sent "prior to a completion of" the access event (as alleged in Compl. ¶42), suggests a "push" notification (like an SMS or email) that actively alerts the patient, rather than a passive message posted to a portal that the patient must log in to retrieve.

VI. Other Allegations

• Indirect Infringement: The complaint makes general allegations of induced infringement for both patents but does not plead specific facts, such as citing user manuals or advertisements that instruct users on performing the allegedly infringing steps (Compl. ¶44-47, ¶63-66). The complaint states it will rely on direct and circumstantial evidence to prove intent (Compl. ¶46, ¶65).
• Willful Infringement: Willfulness allegations are based on Defendant’s alleged knowledge of the patents as of the filing and service of the complaint (Compl. ¶43, ¶62). The complaint also asserts Defendant has been "willfully blind" by having a practice of not reviewing the patent rights of others prior to launching services (Compl. ¶48, ¶67).

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

• A core issue will be one of technical operation and scope: Does the accused system "automatically" generate an insurance claim as a direct, machine-initiated consequence of a clinical record update, as required by the ’040 Patent, or is the billing function a separate, user-driven module that operates subsequent to, and distinct from, the clinical documentation process?
• A key evidentiary question will be one of functional performance: Does the accused EHR platform's "messaging service" perform the specific function of notifying a patient about an access or modification event in the timely manner required by the ’048 Patent's claims, or is there a fundamental mismatch in the system's actual technical operation?
• A central question of claim construction will determine the breadth of the asserted claims. The court's interpretation of terms like "automatically generates" and "transmitting the message" will define the boundary between the patented inventions and conventional EHR systems, which will be dispositive for the infringement analysis.