PTAB

IPR2014-00433

Walgreen Co v. MyMedicalRECoRdscom Inc

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Petition
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1. Case Identification

2. Patent Overview

  • Title: Method and System for Providing Online Records
  • Brief Description: The ’466 patent discloses an internet-based system for a user to collect, store, and manage personal medical records. The system functions by assigning a unique fax number to a user, receiving records via a fax/voice server, and storing them in a database account that the user can access and manage through a web interface.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 8-13 over Kohane

  • Prior Art Relied Upon: Kohane (Application # 2004/0199765).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Kohane disclosed every element of independent claim 8. Kohane teaches a remote system for maintaining an individual's confidential medical records, where a user (an "agent") is provided "access tokens" (e.g., passwords, cryptographic keys) to remotely access a server storing their records. Petitioner asserted that Kohane's system receives health records from healthcare providers, stores them on a server, provides a user interface for remote access and management, and allows the user to control permissions, thus managing files privately and independently from the provider’s legacy systems. The dependent claims were also allegedly taught, as Kohane disclosed using passwords (claim 9), receiving records from multiple providers (claim 10), and storing image, medical, and audio files (claims 11-13).

Ground 2: Obviousness of Claims 1-6 over Kohane in view of Angst

  • Prior Art Relied Upon: Kohane (Application # 2004/0199765), Angst (Application # 2004/0186746).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Kohane taught most limitations of independent claim 1 for the same reasons it anticipated claim 8. The primary additional limitation in claim 1 is a user interface "for organizing the files into separate file folders with functionality for the user to name the file folders...and individually assign password protection." While Kohane taught organizing records into directories and restricting access, Petitioner argued that to the extent Kohane did not explicitly disclose a file folder interface, Angst did. Angst teaches a system for managing health records with a graphical user interface that allows a user to create records for family members (e.g., as new tabs) and organize files into folders.
    • Motivation to Combine: A POSITA would combine Kohane’s remote medical record system with Angst’s user interface features to improve usability. Petitioner argued this combination was a predictable application of a well-known user interface design (graphical folders) to an existing type of system, as both references address the same technical problem of personal health record management.
    • Expectation of Success: Combining a known graphical folder interface with a networked database system would have been a straightforward implementation with a high expectation of success.

Ground 3: Obviousness of Claim 15 over Kohane, Angst, and Sabovich/Snowden

  • Prior Art Relied Upon: Kohane (Application # 2004/0199765), Angst (Application # 2004/0186746), and either Sabovich (Application # 2002/0138306) or Snowden (Application # 2002/0026332).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued this combination taught all limitations of independent claim 15. The combination of Kohane and Angst was asserted to teach the base system of claim 8 plus the file folder organization, as explained in Ground 2. The key additional limitations in claim 15 are "receiving at the server a request from the user...for sending one of the files to a second health care service provider" and "sending the second healthcare provider the one of the files from the server." Petitioner asserted that Sabovich and Snowden explicitly taught this functionality. Sabovich disclosed a system allowing authorized users to disseminate medical records from any computer with internet access, and Snowden disclosed a system where a consumer could designate and transmit records from the database to doctors, hospitals, and other providers.
    • Motivation to Combine: A POSITA would have been motivated to add the record dissemination feature from Sabovich or Snowden to the Kohane/Angst system to improve data portability for patients. This addressed the known problem of records becoming inaccessible when a patient switches healthcare providers.
    • Expectation of Success: Electronically transferring a file from a file management system in response to a user request was a well-known and predictable function, ensuring a high expectation of success.

  • Additional Grounds: Petitioner asserted additional challenges, including that claim 8 is obvious over a Rite-Aid press release describing an online prescription refill service, and that claims 8-13 are anticipated by Snowden. A final ground alleged all claims (1-15) are obvious over a combination of all four main references (Kohane, Angst, Snowden, and Sabovich).

4. Key Claim Construction Positions

  • access information: Petitioner argued this term should be construed as "user specific data for use by the system in authenticating the user." This was proposed to counter the Patent Owner's broader litigation position and to align with the patent’s stated purpose of providing "secure and private" access, which Petitioner argued requires that access data be tied specifically to the authorized user.
  • files comprising personal health records: Petitioner proposed this term be construed as "a collection of information comprising at least medical records that is stored on a computer system." This construction requires the "files" to be digital, countering the Patent Owner's alleged infringement theory that the term could encompass paper records. Petitioner contended that a digital-only construction is required by the patent's description of uploading files to a web server, viewing PDF and voice files, and storing files on a server independently from a provider.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-15 of the ’466 patent as unpatentable.