Cerner Corporation, Athenahealth, Inc. v. Clinicomp International, Inc.

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
CERNER CORPORATION, ATHENAHEALTH, INC.,
Appellants
v.
CLINICOMP INTERNATIONAL, INC.,
Appellee
______________________
2020-1853
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2018-
01634, IPR2019-00926.
______________________
Decided: April 20, 2021
______________________
SHARON A. ISRAEL, Shook, Hardy & Bacon, LLP, Hou-
ston, TX, for appellant Cerner Corporation. Also repre-
sented by K YLE E. F RIESEN , ROBERT H. RECKERS .
D AVID M. H OFFMAN , Fish & Richardson P.C., Austin,
TX, for appellant athenahealth, Inc. Also represented by
CHRISTOPHER ROBERT D ILLON , A NDREW PEARSON , Boston,
MA.
AMARDEEP LAL T HAKUR, Manatt, Phelps & Phillips
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CERNER CORPORATION v. CLINICOMP INTERNATIONAL , INC. 2
LLP, Costa Mesa, CA, for appellee. Also represented by
SHAWN M C D ONALD ; BRUCE R. Z ISSER, Los Angeles, CA.
______________________
Before LOURIE, O’M ALLEY, and STOLL, Circuit Judges.
PER C URIAM.
This is not the first time issues presented on appeal do
not mirror directly those presented to the lower tribunal.
Such is the case here. Because we conclude that the claim
construction debate on which this appeal initially turns
was never presented to the Patent Trial and Appeal Board
(“Board”) and that the Board had substantial evidence to
support its assessment of the prior art disclosure at issue,
we affirm the Board’s patentability determination.
Cerner Corporation and athenahealth, Inc. (collec-
tively, “Cerner”) appeal from a final written decision of the
Board holding claims 1–25 of U.S. Patent 6,665,647 (the
“’647 patent”) patentable. Those are the determinations we
affirm.
BACKGROUND
The ’647 patent describes a healthcare management
system for healthcare enterprises. The purpose of the ’647
patent is to allow healthcare enterprises to consolidate leg-
acy software applications and new software applications to-
gether on one software platform. Many healthcare
enterprises utilize legacy systems for managing data re-
lated to a variety of uses, including patient care, account-
ing, insurance, and administrative functions. These
established systems are often outdated and too inflexible to
support healthcare enterprises in the “modern managed
care environment.” ’647 patent at col. 1 ll. 58–62. The
healthcare management system described in the ’647 pa-
tent allows healthcare enterprises to preserve existing leg-
acy applications while simultaneously phasing in new or
updated applications on the same system.
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CERNER CORPORATION v. CLINICOMP INTERNATIONAL , INC. 3
The enterprise healthcare management system in the
’647 patent allows enterprises to “remotely host[] . . . turn-
key health care applications” and “provide[s] . . . enterprise
users access to the turnkey applications via a public net-
work.” Id. at col. 2 ll. 61–65. Enterprises can upgrade ex-
isting capabilities and add functionality not available in
their current system without significant capital invest-
ments. Because the applications are hosted on a public net-
work (i.e., the internet), the healthcare enterprise only
needs computing resources sufficient to allow secure, qual-
ity access to the internet. The “turnkey” management sys-
tem adjusts to changes within the enterprise as the system
“easily and cost-effectively scales” to respond to an enter-
prise’s needs. Id. at col. 3 ll. 19–23.
The information collected by the enterprise from its ap-
plications may be stored in a searchable database. Specif-
ically, the ’647 patent discloses a clinical data repository
that stores information from applications within the suite
of applications on the system. The clinical data repository
stores “multidisciplinary information on a wide variety of
enterprise functions.” Id. at col. 6 ll. 31–40. For example,
the clinical data repository stores pharmaceutical, radiol-
ogy, laboratory, and clinical information data utilized by
other applications of the application suite.
The ’647 patent discloses that “the clinical data reposi-
tory is a database that is partitioned” and that “the data-
base portion may be configured as either a logical partition
or a physical partition.” Id. at col. 9 ll. 60–64. The
healthcare management system is also capable of support-
ing multiple enterprises, in which case “the information re-
lated to each of the separate healthcare enterprises is
stored in a separate partition of the database.” Id. at col.
10 ll. 6–10. As such, when multiple enterprises are in-
volved with using the system, the clinical data repository
may have multiple partitions, with each partition holding
healthcare management information for the respective en-
terprise.
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CERNER CORPORATION v. CLINICOMP INTERNATIONAL , INC. 4
Among other things, the ’647 patent describes the par-
titioning of data for multiple enterprises so as to allow the
storing of “[the] first healthcare data in a first portion of
the database associated with the first healthcare enter-
prise facility” and separately storing “[the] second
healthcare data in a second portion of the database associ-
ated with the second healthcare enterprise facility.” Id. at
col. 14 ll. 24–29. The system allows two (or more) inde-
pendent healthcare enterprises to share access to certain
applications while maintaining sole access to their respec-
tive unique healthcare applications. The databases are ef-
fectively “partitioned” or “portioned” in this way.
Relevant to this appeal is the “storing” clause in claim
1 of the ’647 patent. Claims 2–25 depend from claim 1.
Both parties agree that claim 1 of the ’647 patent is repre-
sentative of the claims on appeal. Claim 1, which contains
the storing clause, is reproduced below:
1. A method of operating an enterprise healthcare
management system for a first healthcare enter-
prise facility and a second healthcare enterprise fa-
cility independent of the first healthcare enterprise
facility, comprising:
establishing a first secure communication channel
via a public network between an application server
and a first end user device in the first enterprise
facility and establishing a second secure communi-
cation channel via the public network between the
application server and a second end user device in
the second enterprise facility, the application
server remotely hosting a healthcare application
and having a database;
receiving first healthcare data from the first end
user and second healthcare data from the second
end user;
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CERNER CORPORATION v. CLINICOMP INTERNATIONAL , INC. 5
processing the first healthcare data and the second
healthcare data with the healthcare application;
storing the processed first healthcare data in a first
portion of the database associated with the first
healthcare enterprise facility and storing the pro-
cessed second healthcare data in a second portion of
the database associated with the second healthcare
enterprise facility;
configuring the database to accept legacy infor-
mation derived from a legacy application operating
at each of the first and second healthcare enter-
prise facilities, wherein the functions in the
healthcare application are not duplicative of the
legacy application; and
generating a query to extract information from the
database relevant to a respective one of the first
and second healthcare enterprise facilities derived
from the healthcare data and the legacy infor-
mation for managing and tracking a performance
of the respective one of the first and second
healthcare enterprise facilities,
wherein healthcare data in the first portion of the
database is only accessible to the first end user de-
vice and healthcare data in the second portion of
the database is only accessible to the second end
user device.
’647 patent claim 1 (emphasis added).
Cerner filed a petition to institute an inter partes re-
view of claims 1–25 and 50–55 of the ’647 patent. The
Board instituted an IPR with respect to all claims. Ad-
dressing the claims in reverse order in its Final Written
Decision, the Board first found claims 50–55—which were
claims to the databases of a single healthcare facility and
did not claim partitioning or portioning the databases—un-
patentable as obvious in view of various combinations of
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CERNER CORPORATION v. CLINICOMP INTERNATIONAL , INC. 6
prior art references, including a prior art patent to Johnson
(U.S. Patent No. 6,915,265 (“Johnson patent”), issued July
5, 2005, filed Oct. 29, 1997). See J.A. 87. The Board deter-
mined, however, that Cerner failed to show by a prepon-
derance of the evidence that claims 1–5, 10–13, and 15–
25—directed to multi-facility databases partially sepa-
rated into portions—were unpatentable based on those
same references. Id. The Board also determined that
Cerner failed to show by a preponderance of the evidence
that claims 6–9 and 14 were unpatentable for similar rea-
sons.
Cerner now appeals the Board’s decision related to
claims 1–25 of the ’647 patent. We have jurisdiction over
this appeal under 28 U.S.C. § 1295(a)(4)(A) and 35 U.S.C.
§ 141(c).
D ISCUSSION
Cerner’s appeal turns on Johnson. Johnson discloses
an information system for managing healthcare infor-
mation. See Johnson patent at col. 2 ll. 25–28. Johnson
describes a system in which a central host maintains “cen-
tral databases” along with several applications. Id. at col.
10 ll. 27–37. The databases contain information used by
medical service providers for administrative purposes such
as records of treatment authorization and accounting rec-
ords with payment history and financial information. One
of the “central databases” included in Johnson is the pro-
vider service history/payment database. Id. at col. 16 ll.
15–16. This database contains information used by medi-
cal service providers for administrative purposes. Id.
Each of the records stored in the provider service his-
tory/payment database is associated with a particular ser-
vice provider using a “provider ID” that identifies each
service provider. Id. at col. 26 ll. 44–46. All of the data in
the provider service history/payment database from a
given service provider is grouped together under that pro-
vider’s provider ID. Id. Service providers have access to
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CERNER CORPORATION v. CLINICOMP INTERNATIONAL , INC. 7
their databases as well as the central databases. In this
way the provider service history/payment database is “in-
dexed” using the provider ID. Id. at col. 8 ll. 11–14.
Cerner’s appeal turns on equating the “indexing” by pro-
vider ID described in Johnson with the “portioning” of da-
tabases disclosed in the ’647 patent.
On appeal, Cerner argues that the Board’s nonobvious-
ness determination was premised on an improper construc-
tion of the term “portion.” Cerner contends that, if the term
“portion” were construed properly, Johnson’s indexing
would disclose the storing clause of claim 1. Cerner also
argues that Johnson discloses or suggests the storing
clause of claim 1, regardless of the construction of the term
“portion” and that substantial evidence does not support
the Board’s conclusion to the contrary. Finally, Cerner as-
serts that the Board’s decision is not supported by suffi-
cient reasoning to be affirmed. We address Cerner’s
arguments in turn.
I
Cerner first argues that the Board’s nonobviousness
determination regarding claims 1–25 was premised on an
incorrect construction of the term “portion,” which appears
in the storing clause in claim 1 of the ’647 patent. Cerner
contends that the Board deviated from the ordinary mean-
ing of “portion” and, by doing so, narrowed the meaning of
“portion” to exclude “data groupings created by indexing”—
the process disclosed in Johnson. Cerner maintains that
Johnson sufficiently discloses the logical or physical sepa-
ration of data into the distinct “portions” described in the
’647 patent.
The problem for Cerner is that it never asked the Board
to construe the term “portion” in the storing clause of claim
1 and the Board did not do so. Cerner and Clinicomp asked
for a number of terms to be construed and the Board thor-
oughly analyzed each of the identified claim term.
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CERNER CORPORATION v. CLINICOMP INTERNATIONAL , INC. 8
Instead, the parties and the Board proceeded on the as-
sumption that the terms “partition” as used in the specifi-
cation and the term “portion” as used in the claim were
interchangeable and that they had a common ordinary
meaning to one of skill in the art. As the Board described
it, the two words were distinct, but it was a “distinction
without a substantive difference.” J.A. 85. The Board’s
finding on this point was not persuasively debated below,
and with good reason. It is supported both by the plain
language of the ’647 patent specification and by the testi-
mony of both experts. Quite simply, the Board did not de-
cline to construe any claim term presented to it and did not
misunderstand the parties’ requests for claim construction.
The ’647 patent discloses that “the database portion [of
the clinical data repository] may be configured as either a
logical partition or a physical partition.” ’647 patent at col.
9 ll. 62–64 (emphasis added). If the words of the ’647 pa-
tent are taken in their plain meaning, the ’647 patent
makes clear that portions of the database are understood
as either: (1) logical partitions; or (2) physical partitions.
The specification describing the database portion supports
the Board’s understanding that “portions” of the database
described in the ’647 patent take form as “partitions” and
the terms (i.e., “partition” and “portion”) are interchangea-
ble in the context of the ’647 patent. ’647 patent at col. 9 ll.
60–64. The Board did not err in determining that a portion
is a logical or physical separation of data, especially when
Petitioners never asked it to conclude otherwise.1
Cerner’s real dispute is not with the Board’s under-
standing of the term portion, but with the Board’s conclu-
sion that Cerner had not directed it to any persuasive
disclosure in Johnson that the unique provider IDs in
1 In fact, Cerner accepted this characterization of the
term portion when it first argued that indexing was the
same as logical partitioning.
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CERNER CORPORATION v. CLINICOMP INTERNATIONAL , INC. 9
Johnson results in a “logical or physical separation of
data.” J.A. 84. Cerner is unhappy that the Board found
that Johnson does not disclose the “portioning/partition-
ing” described in the ’647 patent.
But the Board had substantial evidence to support its
conclusion. The Board properly credited the expert testi-
mony of Dr. Bergeron, a highly qualified expert in the field
of medical informatics, who concluded that the portioning
described in the ’647 patent is a separate function from the
indexing disclosed in Johnson. Dr. Bergeron testified that
there “is no disclosure that Johnson’s database is parti-
tioned into a portion for a first and second healthcare pro-
vider.” J.A. 82. He further explained that “Johnson’s
disclosures that the service history/payment database may
be indexed by provider ID does not teach or suggest a
multi-partition database.” Id.
Dr. Bergeron’s testimony explained that merely identi-
fying data or associating subsets of data with common val-
ues (i.e., indexing by provider ID) does not constitute
partitioning between distinct healthcare facilities. Relying
on Dr. Bergeron’s testimony, the Board concluded that it
had not been directed to anything in Johnson that supports
Cerner’s positions that the data indexed under a given
unique provider ID is itself “logical[ly] partitioned, or ‘por-
tioned,’” from other aspects of the database. J.A. 84.
The Board was persuaded that the indexing in Johnson
would do nothing to separate or protect the respective data
from outside facilities while still allowing access to the
shared applications. As the Board noted “although John-
son discloses that ‘a server can store subsets of the central
databases’ the disclosed purpose is not to create a portion
of the database, but simply to allow ‘localized sharing of
data among service providers operating within a single ad-
ministrative setting, for example, within a hospital or
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CERNER CORPORATION v. CLINICOMP INTERNATIONAL , INC. 10
clinic, without the delay and additional costs of continual
central host accesses.’”2 Id. at 83–84.
The Board carefully considered the expert testimony of
both parties when reaching this conclusion and expressly
credited Patent Owner’s expert that Johnson fails to dis-
close storing the data associated with two healthcare facil-
ities in separate portions of a database. And, the Board
explicitly noted that, “the passage in Johnson on which Dr.
Sujansky [(Petitioner’s expert)] relies discloses use by dif-
ferent people in a single ‘hospital or clinic,’” not separate
healthcare facilities. Id. at 84. Though the provider IDs
may keep track of who accesses which application on the
database for that single facility, it does not partition the
database, either logically or physically.
Having carefully considered the relevant arguments of
the parties and the relevant testimony of the parties’ ex-
perts, and in the absence of evidence that Johnson dis-
closed the portioning limitation in the storing clause of
claim 1, the Board had substantial evidence to support its
nonobviousness determination for the claims on appeal.
CONCLUSION
We have considered the parties’ remaining argu-
ments—particularly Cerner’s claim that the Board’s expla-
nation for its reasoning was lacking—and do not find them
persuasive. For the foregoing reasons, we affirm the
Board’s determination that claims 1–25 of the ’647 patent
are patentable.
AFFIRMED
2 As the Board noted, Cerner’s contention that claim
1 did not actually require “partitioning” was a belated at-
tempt to move the goalposts— one without evidentiary sup-
port.
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