DCT
6:21-cv-01286
Decapolis Systems LLC v. University Medical Center Foundation Of El Paso
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Decapolis Systems, LLC (Florida)
- Defendant: University Medical Center Foundation of El Paso (Texas)
- Plaintiff’s Counsel: Garteiser Honea, PLLC
- Case Identification: 6:21-cv-01286, W.D. Tex., 12/10/2021
- Venue Allegations: Plaintiff alleges venue is proper in the Western District of Texas because Defendant maintains a regular and established business presence in the District, including numerous physical locations.
- Core Dispute: Plaintiff alleges that Defendant’s use of a cloud-based Electronic Health Record (EHR) system infringes two patents related to methods for processing healthcare information and managing patient records.
- Technical Context: The technology at issue falls within the domain of electronic health records and automated healthcare data management, a field focused on improving the efficiency, accuracy, and security of clinical and administrative workflows.
- Key Procedural History: The complaint notes that the asserted patents are expired and seeks damages for past infringement within the statutory period. It also highlights that the patents have been cited by numerous technology and healthcare companies, including IBM, Siemens AG, and Epic Systems Corp., to support allegations of their technological significance.
Case Timeline
| Date | Event |
|---|---|
| 1999-12-18 | ’040 Patent Priority Date |
| 2001-04-25 | ’048 Patent Priority Date |
| 2008-12-09 | ’040 Patent Issued |
| 2009-02-10 | ’048 Patent Issued |
| 2021-12-10 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
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 background describes problems with maintaining patient privacy and safeguarding healthcare records, noting a need for providing notification to patients when others have accessed or modified their files (’048 Patent, col. 2:20-29). The complaint frames this in the broader context of medical errors resulting from inaccurate or unavailable information (Compl. ¶17).
- The Patented Solution: The invention proposes a computer-implemented method for managing and monitoring access to a patient's electronic healthcare record. A central computer processes requests from entities (e.g., doctors, insurers) to access or modify a patient's file. The system then generates and transmits a notification message to the patient's communication device, informing the patient of the access attempt and any changes made to their record (’048 Patent, Abstract; Fig. 16A).
- Technical Importance: The technology provides a method to enhance patient oversight and control over their personal health data, addressing privacy and security concerns associated with the digitization of medical records (Compl. ¶12, 18).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 20, among others (Compl. ¶36). Claim 20 is presented as exemplary.
- The essential elements of independent claim 20 include:
- Receiving and storing information regarding restrictions on the ability of a person or entity to access or modify a patient's healthcare record.
- Processing a request from a person or entity to access or modify the record.
- Determining, based on the stored restrictions, whether the requesting person or entity is authorized.
- Generating a message containing information about the requestor and any actual change, alteration, or modification made to the record.
- Transmitting the message to a communication device of the patient.
- The complaint also asserts numerous dependent claims, reserving the right to pursue them in litigation (Compl. ¶36).
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 describes inefficiencies and rising costs in the healthcare system stemming from fragmented patient information and slow, paper-based insurance claim processing, which can lead to delayed treatments and fraudulent claims (’040 Patent, col. 1:42-2:16).
- The Patented Solution: The invention outlines a centralized computer system that integrates clinical documentation with billing. The system receives clinical information about a patient from a healthcare provider's computer, uses that information to update the patient's electronic record in a central database, and then automatically generates an insurance claim in direct response to the record being stored or updated. This generated claim is then transmitted to the appropriate payer's computer system (’040 Patent, Abstract; Fig. 14B).
- Technical Importance: This approach aimed to automate and link the historically separate processes of clinical record-keeping and insurance billing, thereby reducing administrative errors and accelerating the reimbursement cycle (Compl. ¶15, 18).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 46 (Compl. ¶56).
- The essential elements of independent claim 1 include:
- A receiver that receives information about an individual (e.g., symptom, diagnosis, treatment) from a healthcare provider's computer.
- A remote database that stores healthcare records for multiple individuals, providers, and payers.
- A processing device that processes the received information to store it or update the individual's healthcare record.
- The processing device automatically generates an insurance claim in response to the storing or updating of the record.
- The processing device transmits the generated insurance claim to a second computer associated with the healthcare insurer or payer.
- The complaint reserves the right to assert other claims (Compl. ¶56).
III. The Accused Instrumentality
Product Identification
- The Accused Instrumentalities are Cerner Corporation's cloud-based Electronic Health Record (EHR) and practice management systems and software, which the complaint notes are used by Defendant (Compl. ¶31). One implementation is referred to as "COMPASS" (Compl. Fig. 4).
Functionality and Market Context
- The system is described as a cloud-based platform that allows Defendant to manage numerous aspects of patient care, including creating and maintaining electronic health records, scheduling, billing, and reporting (Compl. ¶31). The system includes a "Patient Portal" that gives patients "convenient access to your personal healthcare record" (Compl. Fig. 2). A provider reference document indicates clinicians use the system to look up diagnostic data, place electronic orders, and sign medical records online (Compl. Fig. 4).
- The complaint alleges Defendant "owns, directs, and/or controls the operation" of these systems and derives "substantial financial revenues and benefits" from their use (Compl. ¶35, 55).
IV. Analysis of Infringement Allegations
U.S. Patent No. 7,490,048 Infringement Allegations
| Claim Element (from Independent Claim 20) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| receiving 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, information contained in an individuals... record | The Accused Instrumentalities allegedly receive and store information regarding restrictions on an entity's ability to access or modify a patient's healthcare file. | ¶38, 41 | col. 33:17-25 |
| processing, with a processor, a request by a person or an entity to at least one of access, obtain, change, alter, and modify, the information contained in an individuals... healthcare record | The system's processor allegedly processes requests from persons or entities to access or modify information within a patient's healthcare file. | ¶41 | col. 29:26-31 |
| determining, using the information regarding the restriction or limitation, whether the person or the entity is allowed or authorized... | The system allegedly determines whether the requesting person or entity is authorized to access or modify the information based on the stored restrictions. | ¶41 | col. 32:40-47 |
| generating a message containing... information regarding the person or the entity making the request... and further wherein the message contains an actual change, alteration, or modification, made to the information | The system allegedly generates a message containing information about the requestor and the actual change or modification made to the patient's record. | ¶41 | col. 46:45-58 |
| transmitting the message to a communication device of the individual or patient via, on, or over, a communication network. | The system allegedly transmits the generated message over a communication network to a communication device belonging to the patient. | ¶41 | col. 46:59-66 |
- Identified Points of Contention:
- Scope Questions: A central question may be whether making information available for viewing on a patient portal, as depicted in the complaint (Compl. Fig. 2), satisfies the claim limitation of "transmitting the message to a communication device of the individual or patient." The interpretation may turn on whether "transmitting a message" requires an active push notification (e.g., email, text) or if it can be construed to cover passively making a notification available for a user to pull from a server.
- Technical Questions: The complaint alleges that a message is transmitted to the patient "during, concurrently with, at a same time as, and prior to a completion of" the access or modification (Compl. ¶42). What evidence does the complaint provide that the accused Cerner system performs this specific real-time or pre-emptive notification function as alleged?
U.S. Patent No. 7,464,040 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 Instrumentalities allegedly receive patient information (e.g., symptom, diagnosis, treatment) that is transmitted from computer devices associated with healthcare providers. | ¶58 | col. 14:6-14 |
| a database or a memory device... is located at a location remote from the first computer... wherein the database... stores information regarding a plurality of individuals... payers | The Accused Instrumentalities allegedly use a remote, cloud-based database that stores information regarding numerous individuals, healthcare providers, and healthcare payers. | ¶58 | col. 16:51-58 |
| a processing device, wherein the processing device processes the information... for at least one of storing the information... and updating the healthcare record... | The system's processing device allegedly processes the received information for the purpose of storing it in the database and updating the patient's healthcare record. | ¶60 | col. 28:16-22 |
| 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 processing device allegedly "automatically generates an insurance claim in response to the storing of the information regarding an individual in the database... or the updating of the healthcare record." | ¶60 | col. 6:55-59 |
| and further wherein the processing device transmits the insurance claim to the second computer... associated with the healthcare insurer or the healthcare payer... | The processing device allegedly transmits the generated insurance claim to a computer associated with the healthcare insurer or payer. | ¶60 | col. 6:60-65 |
- Identified Points of Contention:
- Technical Questions: The infringement theory hinges on the allegation that the system "automatically generates an insurance claim in response to" a clinical record update. A key factual question will be whether the accused Cerner system functions in this manner. Does updating a clinical note directly and without further human intervention trigger the creation of a formatted insurance claim, or does it merely populate data fields that a billing professional later uses in a separate, human-initiated process to create a claim?
- Scope Questions: The construction of "automatically generates" will be critical. Does this term preclude any intervening human action between the clinical update and claim creation? Likewise, how broadly can "in response to" be interpreted? Does it require immediate and direct causation, or can it cover a sequence of events in a larger workflow?
V. Key Claim Terms for Construction
- The Term: "automatically generates an insurance claim in response to the storing of the information" (’040 Patent, Claim 1)
- Context and Importance: This phrase is the central feature of the asserted claim of the ’040 Patent. The case may turn on whether the accused EHR's billing functionality operates in a way that meets this "automatic generation" requirement. Practitioners may focus on whether the system's operation is a single, integrated, and automated process or a series of discrete, human-initiated steps.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes a "comprehensive processing system" that facilitates "efficient information collection, processing and dissemination" and "claims processing" (’040 Patent, col. 2:47-56). Parties arguing for a broader view might contend that a system that streamlines and integrates these steps, even with some user checkpoints, falls within the spirit of the invention.
- Evidence for a Narrower Interpretation: The claim uses the specific word "automatically." The patent's abstract describes the process as the claim being "automatically generated... in response to the storing of the information or the updating of the healthcare record." Further, the flowchart in Figure 14B depicts "Update Patient's Records" (1408) leading directly to "Generate Claim Form" (1409) without any intervening steps shown, which may support an interpretation requiring direct, machine-driven causation without human intervention (’040 Patent, Fig. 14B).
- The Term: "transmitting the message to a communication device of the individual or patient" (’048 Patent, Claim 20)
- Context and Importance: This term defines how the patient is notified of access to their records. The infringement analysis will depend on whether the functionality of the accused patient portal constitutes "transmitting a message." Practitioners may focus on the distinction between actively "pushing" a notification versus passively "pulling" information from a portal.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes communication occurring over the Internet and World Wide Web and to various types of computers and communication devices, which could support a broad definition of "transmit" that includes making data available for retrieval over a network (’048 Patent, col. 4:51-5:4).
- Evidence for a Narrower Interpretation: The claim language recites transmitting a "message." The flowchart in Figure 16B shows steps for generating a "Notification Report" (1606, 1609) and then transmitting it (1607, 1610). This structure, describing the creation and sending of a discrete "report," may support a narrower interpretation that requires an active push of a specific communication, rather than merely updating information on a portal that a user must proactively check.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement for both patents. The allegations are based on Defendant having knowledge of the patents from the service of the complaint and continuing to operate the accused systems, as well as advertising their infringing use (Compl. ¶44-47, 63-66).
- Willful Infringement: Willfulness is alleged for both patents based on knowledge acquired from the filing of the complaint. The complaint also alleges that Defendant has a "practice of not performing a review of the patent rights of others" and has therefore been "willfully blind" to Plaintiff's patent rights (Compl. ¶43, 48, 62, 67).
VII. Analyst’s Conclusion: Key Questions for the Case
This case appears to present two central questions, one rooted in claim scope and the other in technical operation.
- A core issue for the ’040 Patent will be one of technical operation: does the accused EHR system "automatically generate an insurance claim in response to" a clinical record update as required by the claim, or does it merely facilitate a separate, human-initiated billing workflow? The resolution of this factual question will be fundamental to the infringement analysis.
- A key question for the ’048 Patent will be one of definitional scope: can the claim term "transmitting the message... to a communication device of the individual," which serves a notification function, be construed to cover making information available for viewing on a patient portal, or does it require an active, pushed notification such as an email or text message?