CareCloud Corporationv.athenahealth, Inc.

Patent Trial and Appeal Board

Nov 18, 2015

09921654 (P.T.A.B. Nov. 18, 2015)

Trials@uspto.gov Paper 36
571-272-7822 Entered: November 18, 2015
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

CARECLOUD CORPORATION,
Petitioner,

v.

ATHENAHEALTH, INC.,
Patent Owner.
____________

Case CBM2014-00143
Patent 7,617,116 B2
____________

Before MICHAEL W. KIM, RICHARD E. RICE, and
CARL M. DeFRANCO, JR., Administrative Patent Judges.

RICE, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 328(a) and 37 C.F.R. § 42.73

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I. INTRODUCTION
A. Background
CareCloud Corporation (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
seeking institution of a covered business method patent review of claims 1–
20 of U.S. Patent No. 7,617,116 B2 (Ex. 1001, “the ’116 Patent”) pursuant
to 35 U.S.C. § 321. Petitioner submitted the Declaration of Bryan P.
Bergeron, M.D. (Ex. 1013) with the Petition. Athenahealth, Inc. (“Patent
Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.”). Upon
considering the Petition, the Preliminary Response, and the evidence of
record at that stage of the proceeding, we instituted trial as to claims 1–20 of
the ’116 Patent. Paper 7 (“Institution Decision”).
After institution, Patent Owner filed a Response (Paper 17, “PO
Resp.”), and Petitioner filed a Reply (Paper 20, “Pet. Reply”). Patent Owner
submitted the Declaration of Richard M. Goodin, P.E. (Ex. 2012) with the
Response, and Petitioner filed the Supplemental Declaration of Dr. Bergeron
(Ex. 1029) with the Reply. In addition, Petitioner submitted a transcript of
Mr. Goodin’s deposition (Ex. 1028), and Patent Owner submitted transcripts
of Dr. Bergeron’s two depositions (Exs. 2011, 2024). An Oral Hearing was
held on July 30, 2015. A transcript of the argument at the Oral Hearing has
been entered into the record as Paper 35 (“Hearing Tr.”).
We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
Decision is entered pursuant to 35 U.S.C. § 328(a).
For the reasons that follow, we conclude that Petitioner has
demonstrated by a preponderance of the evidence that claims 1–20 of the
ʼ116 Patent are unpatentable because they are directed to patent-ineligible
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subject matter under 35 U.S.C. § 101. We further conclude that Petitioner
has not demonstrated by a preponderance of the evidence that claims 1–3, 5,
8, 11–13, 15, 17, 18, and 20 are unpatentable under 35 U.S.C. § 103(a).
B. Related Proceeding
Petitioner states that it was sued for infringement of the ’116 Patent in
athenahealth, Inc. v. CareCloud Corp., No. 1:13-cv-10794 (D. Mass.).
Pet. 2.
C. The ’116 Patent
The ’116 Patent relates to the management of medical practices and,
more specifically, to a medical practice management and billing automation
system. Ex. 1001, 1:14–16. According to the Specification, errors in health
insurance claims submitted by medical practices to insurance companies
result in substantial waste and inefficiency. Id. at 1:25–67.
As a specific example, the Specification states that a medical
professional (e.g., a receptionist) can verify the insurance eligibility of a
patient by using a web portal electronically connected to the insurance
company’s web page. Id. at 1:31–36. The receptionist types information
about the patient into the web portal, transmits the information to the
insurance company’s web server, retrieves a response, and manually enters
this information into a computer of the medical practice. Id. at 1:36–40.
“Due to the large number of steps involved for this task and also due to the
heavy workload frequently placed on the professionals performing these
tasks, data entry errors often occur.” Id. at 1:40–43.
In order to reduce such errors, the “invention automatically and
repeatedly interacts with an insurance company system and/or applies rules
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to efficiently manage a medical practice and provide insurance claims with a
reduced number of errors.” Id. at 2:3–6. Figure 1 of the ’116 Patent is
reproduced below.

Figure 1 illustrates a block diagram of an embodiment of medical
practice management system 5. Id. at 2:61–62, 3:62–63. The system
depicted in Figure 1 comprises three types of computers—medical practice
client 10, medical practice management (“MPM”) server 14, and payor
server 18. Id. at 3:62–66. As depicted in Figure 1, medical practice
client 10 is in communication with MPM server 14 over path 22 and
network 26; and MPM server 14 is also in communication with payor
server 18 over communication path 30 and network 34. Id. at 3:66–4:7.
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MPM server 14 includes workflow processing engine 56 and rules
engine 60. Id. at 5:22–24. In one embodiment, the rules engine includes
rules database 66. Id. at 5:25–26; Fig. 2A. “To ensure that the rules
database 66 contains current rules, the rules database 66 is frequently
updated.” Id. at 6:27–28. “In one embodiment, individual payors transmit
rule updates/creations to the [MPM] server 14 via their payor server 18.” Id.
at 6:28–31.
As described in the Specification, a medical care provider submits a
completed claim form to the MGM server via the medical practice client,
and the rules engine then “‘scrubs’ the claim,” i.e., “examines the claim for
errors.” Id. at 13:32–33. “Claim errors can include, without limitation,
typographical errors, formatting errors (based on a format that each payor
defines for their claims), incomplete information, and the like.” Id. at
13:33–36. In one embodiment, workflow processing engine 56 “transmits a
claim edit screen to the medical practice client 10 to enable the medical care
provider to correct the claims that have errors.” Id. at 14:58–60.
D. Illustrative Claim
Claims 1, 18, and 20 are independent. Claim 1 is illustrative and is
reproduced below:
1. A computerized method for managing
a medical practice comprising:
storing by a medical practice management
server in a rules database a plurality of insurance
rules comprising one or more classes of rules, each
class of rules being associated with one of a
plurality of payor servers;
receiving by the medical practice
management server data indicative of a completed
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claim submission for a claim from a medical
practice client, the claim being associated with a
payor server; and
automatically interacting with the completed
claim submission by the medical practice
management server to correct an error in the
completed claim submission, wherein the error is
resolved by the medical practice client before
processing the completed claim submission, by
applying one or more rules from a class of rules
associated with the payor server, wherein the one
or more rules comprises a new rule, an updated
rule, or both received from the payor server, the
interacting step comprising:
the medical practice management server
automatically associating a first claim status with
the completed claim submission indicative of the
claim not satisfying one of the one or more rules;
the medical practice management server
transmitting data indicative of a claim edit screen
to the medical practice client, the claim edit screen
comprising a claim edit section for editing the
completed claim submission and a claim error
explanation portion to explain one or more errors
in the completed claim submission to a medical
care provider;
the medical practice management server
receiving data indicative of an updated completed
claim submission from the medical practice client;
the medical practice management server
correcting the completed claim submission based
on the updated completed claim submission; and
the medical practice management server
automatically associating a second claim status
with the completed claim submission indicative of
the completed claim submission satisfying all of
the one or more rules.
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Ex. 1001, 20:242.
E. The Asserted References
Petitioner relies upon the following references:

Reference Patent No. Date Exhibit
Rieker US 5,832,447 Nov. 3, 1998 Ex. 1011
Holloway US 5,253,164 Oct. 12, 1993 Ex. 1012
Barber US 4,858,121 Aug. 15, 1989 Ex. 1020
Magill US 5,367,664 Nov. 22, 1994 Ex. 1023

F. The Grounds for Trial
The grounds on which we instituted trial are as follows:

References Basis Claims Challenged
§ 101 1–20
Barber, Holloway, Rieker, and
Magill
§ 103(a) 1–3, 5, 8, 11–13, 15,
17, 18, and 20

II. ANALYSIS
A. Claim Construction
The Board gives claim terms in an unexpired patent their broadest
reasonable interpretation (“BRI”) in light of the specification of the patent in
which they appear. 37 C.F.R. § 42.300(b); see also In re Cuozzo Speed
Techs., LLC, 793 F.3d 1268, 1278, 1279 (Fed. Cir. 2015) (“We conclude
that Congress implicitly approved the [BRI] standard in enacting the AIA”
and “the standard was properly adopted by PTO regulation.”). Under the
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BRI standard, and absent any special definition, claim terms are given their
ordinary and customary meaning, as would be understood by one of ordinary
skill in the art in the context of the entire disclosure. In re Translogic Tech.,
Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a
claim term must be set forth with reasonable clarity, deliberateness, and
precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
Petitioner’s Declarant, Dr. Bergeron, provides the following definition
of a person of ordinary skill in the art (“POSA”):
[A] POSA in the 2000 time frame would have had a Bachelor’s
degree in computer science or the equivalent, or commensurate
industry experience of at least four to five years of experience
with computer programming and general knowledge of
database technologies and networking or similar fields. A
POS[A] in the 2000 time frame would also have at least two
years of experience in the healthcare, or healthcare-related,
industry.
Ex. 1013 ¶ 16. Patent Owner’s Declarant, Dr. Goodin, agrees with
Dr. Bergeron’s definition (Ex. 2012 ¶ 41). We agree with and adopt this
definition for the purposes of our Final Written Decision.
In the Institution Decision, we interpreted explicitly four claim terms,
as summarized below:

Claim Term Claim Interpretation Claims
completed claim
submission
information that a medical care
provider has finished entering for a
claim, and that is transmitted to the
MPM server for processing
1–3, 5, 6, 8–
13, and 15–
20
class of rules being
associated with one
a group of rules that is applied to
claims processed by a particular 1, 18, and 20
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Claim Term Claim Interpretation Claims
of a plurality of
payor servers
payor server of a plurality of payor
servers
automatically without human intervention 1, 15, 18, and 20
claim edit screen
. . . comprising a
claim edit section
. . . and a claim
error explanation
portion . . .
a “claim edit screen” that includes
both a “claim edit section” and a
“claim error explanation portion”
1, 18, and 20

Neither party proposes any change to the interpretations set forth above, and
our review of the evidence does not indicate that any change is necessary.
Consequently, we maintain our interpretations.
Patent Owner proposes constructions for two additional claim terms—
“rule” and “database.” PO Resp. 10. With respect to “rule,” Patent Owner
proposes the definition set forth expressly in the Specification, i.e., “a rule is
coded logic that evaluates data and then performs an action.” Id. (citing Ex.
1001, 5:59–60). Petitioner does not dispute Patent Owner’s proposed
construction of “rule,” and we agree that it is the broadest reasonable
interpretation consistent with the Specification.
For the claim term “database,” Patent Owner relies on Mr. Goodin’s
statement, based on a dictionary definition, that a “database” is a “collection
of data with a given structure for accepting, storing, and providing, on
demand, data for multiple users.” Id. (citing Ex. 2012 ¶ 44); see Ex. 2015,
21. We note Mr. Goodin’s additional testimony that a POSA “would
understand a ‘database’ is a stored collection of data” (Ex. 2012 ¶ 45), and
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that the Specification “contrasts a database, consisting of stored data, which
can be updated on demand, with a set of rules that are hard coded into a
software application” (id. ¶ 46, citing Ex. 1001, 6:27–28). Petitioner does
not propose a construction for “database” or challenge Mr. Goodin’s
testimony, discussed above.
Based on the above, we determine that the broadest reasonable
interpretation consistent with the Specification of “database” is a stored
collection of data that can be updated on demand.
B. Asserted Unpatentability under 35 U.S.C. § 101
1. Preliminary Issue
Patent Owner argues that the Board lacks jurisdiction to consider
challenges to patentability under 35 U.S.C. § 101 in covered business
method patent reviews. PO Resp. 79–80. Our reviewing court, however,
recently put that argument to rest. Versata Dev. Grp. v. SAP Am., Inc., 793
F.3d 1306, 1330 (Fed. Cir. 2015) (confirming that the Board is permitted to
consider § 101 patentability challenges in covered business method patent
reviews).
2. Legal Principles
Under 35 U.S.C. § 101:
Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new
and useful improvement thereof, may obtain a patent therefor,
subject to the conditions and requirements of this title.
The Supreme Court, however, has “long held that this provision
contains an important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable.” Alice Corp. Pty. Ltd. v.
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CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014) (quoting Assoc. for Molecular
Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). “The
‘abstract ideas’ category embodies the longstanding rule that ‘[a]n idea of
itself is not patentable.’” Alice, 134 S. Ct. at 2355 (quoting Gottschalk v.
Benson, 409 U.S. 63, 67 (1972) (quotations omitted)).
In Alice, the Supreme Court emphasized the importance of the
so-called “Mayo framework,” which provides “a framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts.” Id. (citing Mayo Collaborative Svcs. v. Prometheus Labs, Inc.,
132 S. Ct. 1289, 1296–97 (2012)). Under the Mayo framework, “[w]e must
first determine whether the claims at issue are directed to a patent-ineligible
concept.” Id. Next, “we consider the elements of each claim both
individually and ‘as an ordered combination’ to determine whether the
additional elements ‘transform the nature of the claim’ into a patent-eligible
application.” Id. (citing Mayo, 132 S. Ct. at 1297). This second step is a
“search for an ‘inventive concept’—i.e., an element or combination of
elements that is ‘sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself.’” Id.
(alteration in original) (quoting Mayo, 132 S. Ct. at 1294).
Under Mayo, to be patentable, a claim must do more than simply state
the law of nature or abstract idea and add the words “apply it.” Mayo,
132 S. Ct. at 1294; Benson, 409 U.S. at 67. Furthermore, “the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention.” Alice, 134 S. Ct. at 2358. “Thus, if a
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patent’s recitation of a computer amounts to a mere instruction to
‘implemen[t]’ an abstract idea ‘on . . . a computer,’ that addition cannot
impart patent eligibility.” Id. (internal citation omitted).
Thus, we first analyze the claims of the ʼ116 Patent to determine
whether the claims embody an abstract idea. If they do, then we proceed to
determine whether the claims are meaningfully limited to a patent-eligible
application of an abstract idea, or cover nothing more than the abstract idea
itself.
3. Claims 1–20 are Directed to an Abstract Idea
Petitioner contends that claims 1–20 “merely recite the abstract
concept of ‘scrubbing’ medical claims before submission,” i.e., pre-
processing medical claims to identify and correct errors. Pet. 16;
Pet. Reply 3 (citing Ex. 1029 ¶¶ 7–9). Petitioner additionally asserts that
this abstract concept includes the following pre-processing steps:
[T]his abstract concept includes pre-processing a medical claim
submission using an arrangement of stored data (i.e., the
storage of rules into classes associated with a payor) and
interacting with submitted data (i.e., claim submissions) based
on the stored data (i.e., rules) to detect errors and request
correction before submitting the claim to a payor.
Pet. 16.
In its Response, Patent Owner argues that Petitioner’s
lengthy description of what “scrubbing medical claims before
submission” allegedly “includes” is actually a combination of
the multiple distinct claim concepts of: (1) using rules to pre-
process a medical claim; (2) using rules stored as an
arrangement of data; (3) using rules specifically organized into
different classes for different payors; (4) detecting errors; and
(5) requesting correction before submitting the claim to a payor.
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PO Resp. 52 (citing Ex. 2012 ¶ 193). With this predicate, Patent Owner then
raises a number of issues with Petitioner’s contentions. Id. at 52–60. For
example, Patent Owner argues that “Petitioner’s claim-limitation-filled
‘abstract idea’ is lengthy, detailed, narrow, and looks nothing like the broad
fundamental concepts the courts have found to be patent-ineligible abstract
ideas.” Id. at 54.
We are not persuaded by Patent Owner’s argument that the concept of
“scrubbing medical claims before submission” must implicitly include
certain claim limitations. In our Institution Decision, we stated that
Petitioner asserts that the claims of the ’116 Patent cover the abstract
concept of “‘scrubbing’ medical claims before submission.” Institution
Decision 18 (citing Pet. 16). At that stage of the proceeding, we concluded
that “Petitioner’s articulation of the abstract concept covered by the claims
of the ’116 Patent is correct, and that there is no meaningful distinction
under § 101 between the abstract concept of intermediated settlement at
issue in Alice and the concept of ‘scrubbing medical claims before
submission’ at issue here.” Id. In reaching that conclusion, we did not
consider the broad concept of scrubbing medical claims before submission
as needing or including any limitations from the patent claims. Patent
Owner’s arguments attempting to read claim limitations into that broad
concept are not persuasive for the reasons that follow.
Patent Owner may be arguing that Petitioner’s assertion, that the
abstract concept includes certain pre-processing steps, indicates that
Petitioner meant for those pre-processing steps to be an express part of the
articulation of the abstract concept, and that when that articulation is
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considered as a whole, it is too “lengthy, detailed, narrow, and looks nothing
like the broad fundamental concepts the courts have found to be patent-
ineligible abstract ideas.” PO Resp. 54. As an initial matter, Patent Owner’s
argument is misplaced, as regardless of the length of the abstract concept
intended by Petitioner, we determined already that Petitioner’s “shorter”
version was accurate and adequately supported. Moreover, even if we were
to consider it relevant, we disagree that Petitioner intended for the abstract
concept to be so lengthy, detailed, and narrow. Instead, we discern that
Petitioner was merely clarifying that certain pre-processing steps are
predicates to implementing the abstract concept of “‘scrubbing’ medical
claims before submission,” much like the concepts of hedging and
intermediated settlement have their own predicate steps, and not that those
pre-processing steps should be included in the articulation of the abstract
concept itself.
Patent Owner also has not persuaded us that Dr. Bergeron’s testimony
in his Supplemental Declaration on the § 101 issue should be excluded.
E.g., Tr. 38. Patent Owner’s Response, including the Declaration of
Mr. Goodin, invited that testimony in reply. Compare PO Resp. 50–60 and
Ex. 2012 ¶¶ 193–229 with Ex. 1029 ¶¶ 7–21, 27. Further, we credit
Dr. Bergeron’s testimony on the § 101 issue over that of Mr. Goodin, who,
like Patent Owner, unpersuasively incorporated claim limitations into his
analysis of the concept of scrubbing medical claims before submission. See,
e.g., Ex. 2012 ¶ 193.
On this record, we are persuaded that claims 1–20 are directed to the
broad concept of scrubbing medical claims before submission, i.e., pre-
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processing medical claims to identify and correct errors. See Pet. 16; Pet.
Reply 3. In particular, the patent claims all require
automatically interacting with the completed claim submission
by the medical practice management server to correct an error
in the completed claim submission, wherein the error is
resolved by the medical practice client before processing the
completed claim submission, by applying one or more rules
from a class of rules associated with the payor server, wherein
the one or more rules comprises a new rule, an updated rule, or
both received from the payor server.
Ex. 1001, 20:12–20 (claim 1), 22:24–32 (claim 18), 23:11–19 (claim 20)
(emphases added).
Further, the concept of scrubbing medical claims before submission is
consistent with the ’116 Patent Specification, which explains: “Given the
extent of wasted time and money associated with the process [for filing and
processing health insurance claims], there exists a need to manage a medical
practice in a more efficient manner and [to] provide insurance claims with
fewer or no errors.” Id. at 1:64–67. According to the Specification, “[t]he
present invention automatically and repeatedly interacts with an insurance
company system and/or applies rules to efficiently manage a medical
practice and provide insurance claims with a reduced number of errors.” Id.
at 2:3–6. In a preferred embodiment, rules engine 60 applies rules to the
claim entry form and thereby “scrubs” the claim before submission. Id. at
13:31–59; see Ex. 1001, 13:33–34, Fig. 3F (“The rules engine 60 ‘scrubs’
the claim (step 390), or examines the claim for claim errors.”); Pet. 28 n.2.
Given these disclosures, we are unpersuaded that any specific claim
limitations need to be added to the above articulated abstract concept, as we
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discern that they merely provide support to the abstract concept of scrubbing
medical claims before submission.
Despite Patent Owner’s arguments to the contrary, we see little
difference between scrubbing medical claims before submission and the type
of fundamental economic practice considered to be an abstract idea by the
Supreme Court in Alice.1 As established by the record, scrubbing medical
claims before submission is a practice that existed long before the
’116 Patent. See, e.g., Ex. 1001, 1:31–40; Ex. 1012, 2:27–39; Ex. 1013
¶¶ 33–34; Ex. 1024,2 107–108; Ex. 1029 ¶¶ 10–12, 14, 27. That the claims
recite using a database of updated rules, multiple computers, and a claim edit
screen, for scrubbing medical claims before submission, does not render the
claims any less abstract. See Intellectual Ventures I LLC v. Capital One
Bank (US), 792 F.3d 1363, 1367 (Fed. Cir. 2015) (holding that “while the
claims recite budgeting using a ‘communication medium’ (broadly including

1 In Alice, the Supreme Court determined that the claims at issue were
“drawn to the concept of intermediated settlement,” i.e., the use of a third
party to mitigate settlement risk. 134 S. Ct. at 2356. The Supreme Court
also determined that “[l]ike the risk hedging in Bilski [Bilski v. Kappos,
561 U.S. 593 (2010)], the concept of intermediated settlement is ‘a
fundamental economic practice long prevalent in our system of commerce.’”
134 S. Ct. at 2356 (citations omitted). With respect to the first step of the
“Mayo framework,” the Supreme Court concluded in Alice that “there is no
meaningful distinction between the concept of risk hedging in Bilski and the
concept of intermediated settlement” in Alice, and that “[b]oth are squarely
within the realm of ‘abstract ideas’ as we have used that term.” Alice.,
134 S. Ct. at 2357.
2 Bringing Health Care Online: The Role of Information Technologies, U.S.
Congress, Office of Technology Assessment (Sept. 1995).
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the Internet and telephone networks), that limitation does not render the
claims any less abstract”). We conclude, therefore, that Petitioner has
demonstrated that the ʼ116 Patent claims, like the claims in Alice, are
directed to an abstract idea, namely, scrubbing medical claims before
submission.
4. Claims 1–20 Do Not Claim an Inventive Concept
As discussed above, the second step of the Supreme Court’s
Alice/Mayo framework requires that we “search for an ‘inventive concept’—
i.e., an element or combination of elements that is ‘sufficient to ensure that
the patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.” Alice, 134 S. Ct. at 2355 (alteration in original)
(quoting Mayo, 132 S. Ct. at 1294). As Patent Owner acknowledges in its
Response, “the analysis is not,” however, “an evaluation of novelty or non-
obviousness.” PO Resp. 48 (citing Alice, 134 S. Ct. at 2355).
Rather, a challenged patent claim, properly construed, must
incorporate enough meaningful limitations to ensure that it claims more than
just an abstract idea and is not just a “‘drafting effort designed to
monopolize the [abstract idea].’” Alice, 134 S. Ct. at 2357 (alteration in
original) (quoting Mayo, 132 S. Ct. at 1297). “[I]f a patent’s recitation of a
computer amounts to a mere instruction to ‘implemen[t]’ an abstract idea ‘on
. . . a computer,’ that addition cannot impart patent eligibility.” Id. at 2358
(internal citation omitted). Step two of the Alice/Mayo framework,
therefore, may be described as a search for an “inventive concept.” Id. at
2355 (citing Mayo, 132 S. Ct. at 1294).
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Petitioner asserts, inter alia, that the recitation in the claims of basic
“servers, database, and client features” adds “nothing more” to the abstract
idea of scrubbing medical claims before submission. Pet. 18–22.3 Petitioner
adds that “even storing, sending, or receiving data to or from other
computers is a well-known concept as acknowledged by the inventor.” Id. at
23 (citing Ex. 1001, 1:31–63).
Patent Owner responds as follows:
Petitioner does not properly apply the second prong
because (1) it does not identify a single allegedly abstract idea
and analyze all of the claim limitations to determine whether
they recite significantly more; (2) it fails to analyze numerous
limitations in the claims at all; (3) for claim clauses it purports
to analyze, it ignores critical limitations that result in the clause
reciting significantly more; (4) it fails to address the claim
limitations as an ordered combination and seeks to dismiss each
individually; and (5) it cites no evidence to support its assertion
that the claim limitations recite only conventional features.
PO Resp. 61.
Patent Owner argues that “[t]here are numerous limitations in the
claims, in addition to those improperly ‘included’ in Petitioner’s ‘abstract
idea[,]’ that the record nowhere establishes are routine or conventional.” Id.
at 66. Patent Owner further states: “Each [limitation] results in the claims
not reciting a generic computer implementation that preempts the abstract
concept of scrubbing a medical claim before submission and limits the
claims to a specific technical way of accomplishing this result.” Id. As

3 We note that the Petition was filed prior to the Alice decision. See
Pet. Reply 2 n.3.
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examples of such limitations, Patent Owner specifies “in a rules database,”
“one or more classes of rules, each class of rules being associated with one
of a plurality of payor servers,” and a “claim edit screen comprising a claim
edit section for editing the completed claim submission and a claim error
explanation portion to explain one or more errors.” Id. at 66–71. Further,
Patent Owner asserts that: “[t]he claims are limited to one specific technical
way of updating the rules—receiving new and/or updated rules from a payor
server”; “the MPM server (e.g., rather than the medical practice client)
perform the correction”; and “all the claims require a set of actions be
performed by an MPM server that operates in a computer system
environment that includes a medical practice client and payor server(s).” Id.
at 71–73.
Patent Owner concludes that “[w]hen considered as an ordered
combination, the claims do not preempt any abstract idea and are not
directed to a combination that is well-known or conventional.” Id. at 76. As
emphasized at the Oral Hearing, Patent Owner contends that the recited
“rules database,” “rules . . . received from the payor server,” and “claim edit
screen,” in particular, provide the required “inventive concept” under step 2
of the Alice/Mayo framework. Tr. 54:17–62:5; see, e.g., Ex. 1001, 20:4–5,
19–20, 27 (claim 1). Patent Owner adds that “[t]he Petition nowhere alleges
that any feature in any dependent claim is well known or conventional, and
submits no evidence.” Id. at 78.
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The Federal Circuit considered similar arguments in Intellectual
Ventures I LLC v. Capital One Bank (US), which presented patent eligibility
issues with respect to two patents—the ’137 patent4 and the ’382 patent.5
792 F.3d at 1366. The court first analyzed the ’137 patent, stating that
claim 5, set forth below, was representative:
A method comprising:
storing, in a database, a profile keyed to a user identity
and containing one or more user-selected categories to track
transactions associated with said user identity, wherein
individual user-selected categories include a user pre-set limit;
and
causing communication, over a communication medium
and to a receiving device, of transaction summary data in the
database for at least one of the one or more user-selected
categories, said transaction summary data containing said at
least one user-selected category’s user pre-set limit.

Id. at 1367 (citation omitted). In analyzing the second step of the
Alice/Mayo framework with respect to the ’137 patent, the court determined
“it is clear that the claims contain no inventive concept.” Id. at 1368. The
court explained that “[t]he recited elements, e.g., a database, a user profile
. . . and a communication medium, are all generic computer elements.” Id.
The recited generic computer elements did not confer patent eligibility
because “[i]nstructing one to ‘apply’ an abstract idea and reciting no more
than generic computer elements performing generic computer tasks does not
make an abstract idea patent-eligible.” Id. (emphasis added; citations

4 U.S. Patent No. 8,083,137.
5 U.S. Patent No. 7,603,382.
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omitted).
Next, the Federal Circuit analyzed the ’382 patent. The court stated
that claim 1, set forth below, was representative:
A system for providing web pages accessed from a web
site in a manner which presents the web pages tailored to an
individual user, comprising:
an interactive interface configured to provide dynamic
web site navigation data to the user, the interactive interface
comprising:
a display depicting portions of the web site visited by the
user as a function of the web site navigation data; and
a display depicting portions of the web site visited by the
user as a function of the user’s personal characteristics.
Id. at 1369 (citation omitted). With respect to the ’382 patent, the court
again determined that “there is no inventive concept that would support
patent eligibility.” Id. at 1370. Rejecting Intellectual Ventures’s argument
that “the ‘interactive interface’ is a specific application of the abstract idea
that provides an inventive concept,” the Federal Circuit stated:
[N]owhere does Intellectual Ventures assert that it invented an
interactive interface that manages web site content. Rather, the
interactive interface limitation is a generic computer element.
. . . [T]he “interactive interface” simply describes a generic web
server with attendant software, tasked with providing web
pages to and communicating with the user’s computer.
Id.
For reasons that parallel those articulated by the Federal Circuit in
Intellectual Ventures I, we determine, contrary to Patent Owner’s arguments,
that claims 1–20 of the ’116 Patent do not incorporate an inventive concept.
See Alice, 134 S. Ct. at 2355; Intellectual Ventures I, 792 F.3d at 1368–70.
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Rather, the steps and limitations in the claims, whether considered
individually or as an ordered combination, amount to a mere instruction to
implement the abstract idea on a computer. See Alice, 134 S. Ct. at 2358.
Like the claims at issue in Alice and Intellectual Ventures I, the ’116 Patent
claims all recite generic computer elements (servers, rules, database,
interactive screen, etc.) performing generic computer tasks such as storing
rules in a database, receiving data, performing automated operations, and
transmitting data. See, e.g., Ex. 1001, 20:2–42 (claim 1); see Alice,
134 S. Ct. at 2359; Intellectual Ventures I, 792 F.3d at 1368, 1370;
Ex. 1001, 4:27–57 (servers), 5:60–61 (rule), 5:66–6:8 (rules database),
14:62–65 (interactive screen); Ex. 1013 ¶¶ 54, 56, 57, 62; Ex. 1029 ¶¶ 22–
27; Ex. 2011, 158:23–159:5; Ex. 2024, 94:4–17.
Patent Owner’s argument, on page 76 of the Response, that the claims
necessarily contain an “inventive concept” because they (allegedly) are
“novel and non-obvious” misapprehends the Alice decision.6 Elsewhere in
its Response, Patent Owner correctly states: “Although branded a search for
an ‘inventive concept,’ the analysis is not an evaluation of novelty or non-
obviousness, but rather, a search for ‘an element or combination of elements
that is sufficient to ensure that the patent in practice amounts to significantly
more than a patent upon the [ineligible concept] itself.’” PO Resp. 48
(emphasis added) (quoting Alice, 134 S. Ct. at 2355). As reflected in that

6 Specifically, Patent Owner argues: “[T]the claims recite a novel and non-
obvious combination (§IV) and necessarily recite an ‘inventive concept’ that
is something more that any alleged abstract concept.” PO Resp. 76 (citing
Alice, 134 S. Ct. at 2355).
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statement, but disregarded by Patent Owner’s argument on page 76 of the
Response, a novel and nonobvious claim directed to a purely abstract idea is,
nonetheless, patent-ineligible. See Mayo, 132 S. Ct. at 1304.
Furthermore, we are not persuaded by Patent Owner’s argument at the
Oral Hearing that the determinative issue under § 101 is whether the claims
“preempt every practical application of the alleged abstract idea.” See
Tr. 55:7–9. As the Federal Circuit explained in Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015), “questions on
preemption are inherent in and resolved by the § 101 analysis.” Thus,
“[w]hile preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility.” Id.; see
OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63
(Fed. Cir. 2015) (“that the claims do not preempt all price optimization . . .
do[es] not make them any less abstract”). Accordingly, Patent Owner’s
argument based on asserted lack of complete preemption is unavailing.
Finally, we address Patent Owner’s argument that computer-
implemented “functional limitations must be considered in determining
whether the claims recite significantly more than an abstract idea,” relying
on the Federal Circuit’s decision in DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1257–58 (Fed. Cir. 2014). See PO Resp. 63. Patent
Owner’s argument overlooks the Federal Circuit’s subsequent decision in
Versata. As explained by the Federal Circuit in Versata, DDR Holdings
“found that claims reciting a solution that was necessarily rooted in
computer technology to overcome a problem specifically arising in the realm
of computer networks were eligible.” Versata, 793 F.3d at 1333. On that
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basis, the court in Versata distinguished its decision in DDR Holdings,
holding that “the claims at issue are not sufficiently similar to the claims in
. . . DDR Holdings to demonstrate that Versata’s claims are patent eligible.”
Id. at 1334. Similarly, here, given that the underlying abstract concept of the
claims is scrubbing medical claims before submission, a concept which does
not appear to be rooted in computer technology, Patent Owner has not
shown persuasively that the claims recite a solution that is necessarily rooted
in computer technology to overcome a problem specifically arising in the
realm of computer networks, or anything remotely similar. Accordingly,
Patent Owner’s reliance on DDR Holdings is misplaced.
In summary, Petitioner has demonstrated, by a preponderance of the
evidence, that claims 1–20 are not patentable because they are directed to
ineligible subject matter under 35 U.S.C. § 101.
C. Asserted Unpatentability under 35 U.S.C. § 103(a)
Petitioner asserts that claims 1–3, 5, 8, 11–13, 15, 17, 18, and 20 are
unpatentable as obvious over the combination of Barber, Holloway, Rieker,
and Magill. Pet. 52–80. In support of its position, Petitioner relies on the
Declaration of Dr. Bergeron filed with the Petition. See Ex. 1013 ¶¶ 154–
266. Petitioner also relies on the Supplemental Declaration of Dr. Bergeron
filed with the Reply. See Pet. Reply 10–15; Ex. 1029 ¶¶ 27–48.
1. Legal Principles
A claim is unpatentable for obviousness “if the differences between
the subject matter sought to be patented and the prior art are such that the
subject matter as a whole would have been obvious at the time the invention
was made to a person having ordinary skill in the art to which said subject
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matter pertains.” 35 U.S.C. § 103(a).7 A patent claim composed of several
elements, however, is not proved obvious merely by demonstrating that each
of its elements was known, independently, in the prior art. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007). In analyzing the obviousness of a
combination of prior art elements, it can be important to identify a reason
that would have prompted one of skill in the art to combine the elements in
the way the claimed invention does. Id. A precise teaching directed to the
specific subject matter of a challenged claim is not necessary to establish
obviousness. Id. Rather, “any need or problem known in the field of
endeavor at the time of invention and addressed by the patent can provide a
reason for combining the elements in the manner claimed.” Id. at 420. The
question of obviousness is resolved on the basis of underlying factual
determinations, including: (1) the scope and content of the prior art; (2) any
differences between the claimed subject matter and the prior art; (3) the level
of skill in the art; and (4) objective evidence of nonobviousness, i.e.,
secondary considerations, when in evidence. Graham v. John Deere Co.,
383 U.S. 1, 17–18 (1966).
2. Overview of Barber, Holloway, Rieker, and Magill
Barber (Ex. 1020) is directed to a medical payment system. Ex. 1020,
3:27–40; Fig. 1. Figure 1 of Barber is reproduced below.

7 Pub. L. No. 112-29, effective March 16, 2013, changed § 103. Because the
’116 Patent has an effective filing date before March 16, 2013, we have
quoted the unchanged version of § 103.
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Figure 1 of Barber is an overview of a medical payment system that
includes remote terminals A (located in a physician’s office or other medical
facility), which are connected to central processing system B, and
computerized equipment C (located, for example, at one or more insurance
companies), which also is connected to the central processing system.
Ex. 1020, 2:56–57, 3:27–40. According to Petitioner, Barber discloses that
“the central processing system receives and files claim information (e.g.,
information about the patient, physician, medical service fee, insurance
company, and other identifications)” (Pet. 53, citing Ex. 1020, 6:29–32);
“interacts with the claim information in order to validate and format the
information” (id., citing Ex. 1020, 6:32–45); and “transmits a message to the
remote terminal to provide an indication on the display means that the
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transaction is complete or, if appropriate, that there was an error in the
received data” (id. at 53–54, citing Ex. 1020, 6:45–49 and Ex. 1013 ¶ 157).
Holloway (Ex. 1012) is directed to a computer system that utilizes
rules to assign codes to medical claims. Ex. 1012, 3:17–67. In its
background section, Holloway explains that two known coding methods are
the American Medical Association’s “Current Procedural Terminology,
Fourth Edition (CPT-4),” and the “California Relative Value Studies
(CRVS).” Holloway discloses using expert-derived rules for assigning
appropriate CPT-4 codes to surgical procedures. Id. at 3:38–67. According
to Petitioner, Holloway discloses post-submission claims processing by the
entity from which payments are requested. Pet. 54 (citing Ex. 1012, 4:23–
27).
Rieker (Ex. 1011) relates to “method and apparatus for automatically
determining in real-time whether a patient at a health care facility has health
insurance coverage.” Ex. 1011, 1:6–10. Figure 2 of Rieker is reproduced
below.

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Figure 2 of Rieker is “a schematic illustration of an exemplary real-
time health insurance eligibility verification ‘network.’” Id. at 5:25–28. As
shown in Figure 2, health care providers 100 are each provided with real-
time eligibility verification system 110, which establishes real-time
telecommunications links to data gateways 116, which in turn provide
information about insurance eligibility received from insurance payors 118
via data link 120. Id. at 5:28–6:3. According to Petitioner, “[t]he data
gateways of Ri[e]ker ‘have access to and provide information about
insurance eligibility,’ which is supplied ‘by one or more health care
insurance payors.’” Pet. 56 (citing Ex. 1011, 5:65–6:1; Ex. 1013 ¶ 160).
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Magill (Ex. 1023) is directed to a method for pre-production
translation testing of electronic data interchange (EDI) document files.
Ex. 1023, 2:46–48. Magill teaches use of an edit screen that identifies an
error and permits an operator to correct it. Id. at 2:52–55; see id. at 5:62–
6:21, Fig 4.
3. Overview of the Parties’ Competing Arguments
Petitioner asserts that “[t]he system and methods of Holloway could
have been used to improve Barber.” Id. 54–55 (citing Exhibit 1013 ¶¶ 157–
159). Petitioner asserts that including the rules and methods of Holloway’s
system in Barber’s system would “maintain productivity and incorporate
medical judgment into Barber’s system,” and would provide “a more
efficient, cost-effective manner of processing medical claims”:
An improvement to the system of Barber may be to incorporate
the rules, analysis using the rules, and methods of Holloway in
order to provide a cost-effective automated data processing
system to ach[ie]ve desired results associated with medical
claims. The improvements of Holloway maintain productivity
and incorporate medical judgment into Barber’s system to
include additional decision rules that can be used in Barber’s
automated review of claims.

Also, Holloway teaches a comparable system to that of
Barber. Specifically, Holloway and Barber disclose systems for
automated processing of claims data. The improvements
provided by Holloway, discussed above, improve the system of
Barber in the same way as the alleged improvements in the ’116
Patent, by providing a more efficient, cost-effective manner of
processing medical claims.

Not only is the improvement the same, but one of
ordinary skill in the art could have applied the improvements of
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Holloway to Barber’s claims processing system by including
the rules and methods of Holloway into the claims processing
and verification procedures of Barber. One of ordinary skill in
the art could have applied the improvements taught by
Holloway to the displays taught by Barber by including the
displays of Holloway into the displays of Barber. The results of
the combination of Holloway and Barber would have been
predictable to one of ordinary skill in the art.
Id. at 55–56 (emphasis added; citations omitted).
Similarly, Petitioner asserts that “[t]he embodiments of Rieker could
have been used to improve Barber.” Id. at 56 (citing Ex. 1013 ¶¶ 160-163).
The reasons given for including elements of Rieker’s system in Barber’s
system are providing “a cost-effective automated data processing system for
achieving automated, time-conscious methods” and “a more efficient, cost-
effective manner of processing medical claims”:
An improvement to the system of Barber may be to incorporate
insurance data, rules, and automatic transfer of data of Rieker in
order to provide a cost-effective automated data processing
system for achieving automated, time-conscious methods.

Moreover, Rieker teaches a comparable system to that of
Barber. Specifically, Rieker and Barber disclose systems for
automated processing of claims data. . . .

The improvements provided by Rieker, discussed above,
improve the system of Barber in the same way as the alleged
improvements in the ’116 Patent seek to improve existing
methods, by providing a more efficient, cost-effective manner of
processing medical claims. . . .

Not only is the improvement the same, but one of
ordinary skill in the art could have applied the improvements
taught by Rieker to the claims processing system of Barber by
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including the data, rules, responses and methods of Ri[e]ker
into the claims processing and verification procedures
performed by the claims processing system of Barber.

Id. at 57–58 (emphasis added; citations omitted).
Petitioner provides a claim chart identifying portions of one or more
of Barber, Holloway, and Rieker that allegedly disclose or suggest every
limitation of the challenged claims. Pet. 52–78. For example, Petitioner
cites portions of Barber and Rieker (but not Holloway) as disclosing or
suggesting the limitation “wherein the one or more rules comprises a new
rule, an updated rule, or both received from the payor server.” Id. at 61.
To the extent not disclosed or suggested by Barber, Holloway, or
Rieker, Petitioner argues, alternatively, that Magill discloses or suggests the
limitation “a claim edit screen . . . comprising a claim edit section for editing
the completed claim submission and a claim error explanation portion to
explain one or more errors in the completed claim submission.” Id. at 78–
80. Petitioner argues that combining the teachings of Magill and Barber
would have amounted to nothing more than applying a known technique to
yield predictable results. Id. at 80.
In response, Patent Owner argues that the Petition fails to articulate a
sufficient rationale for modifying Barber to meet the claim requirements.
PO Resp. 22–23. Patent Owner asserts that “[m]erely lining up the
references’ disclosures with claim limitations without explaining how or
why a ‘combination’ of the references meets the claims as a whole is
insufficient.” Id. at 22. Patent Owner further asserts: “No effort is made to
explain how a POSA allegedly would have gone about combining the
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disparate elements of the references, or what modifications a POSA would
have made to combine them.” Id. at 23.
More specifically, Patent Owner proffers that “[t]he claim limitations
relating to the application of ‘one or more rules’ to a completed claim
submission are illustrative.” Id. at 23. These claim limitations, according to
Patent Owner, include the following five requirements:
(1) they must be stored in a rules database, (2) they must be
stored in one or more classes each associated with one of a
plurality of payors, (3) they must be applied to a completed
claim submission to correct an error; (4) they must comprise a
new rule and/or an updated rule; and (5) the new and/or updated
rule must be received from a payor server.
Id. at 23–24.
Patent Owner argues that “[n]one of the elements in any of the
references that the Petition alleges is a rule . . . meets all the claim
requirements of the ‘one or more rules’” (id. at 39), and that “Petitioner
nowhere alleges that any of these elements would have been modified in any
way in the ‘combination’ and nowhere describes any such modification” (id.
at 39–40, emphasis added). For example, Patent Owner argues, with respect
to Barber, that (i) the only portion of Barber’s system alleged in the Petition
to meet the “new and/or updated rule” requirement is Barber’s “formatting”
element (id. at 37; see, e.g., Pet. 61–62), but (ii) Petitioner does not allege
that the formatting element meets the “to correct an error” requirement (id.
at 36; see, e.g., Pet. 60–61) or demonstrate that combining the teachings of
Barber, Holloway, Rieker, and Magill would cure that deficiency (id. at 39–
40).
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In reply, Petitioner presents an annotated Figure 1 of Barber,
reproduced below, to illustrate its obviousness positions.

Pet. Reply 13.
As shown in Petitioner’s annotated figure above, Petitioner asserts
that “Holloway teaches insurance rules for detecting and correcting errors”
and “Rieker teaches updating rules in real-time.” Id. at 13. Petitioner argues
that “[i]t would have been obvious to include Holloway’s rules in Barber to
correct identified errors” and that “[i]t would have been obvious to include
Rieker’s real-time determination for each payor in Barber to enhance
Barber’s error detection function with updated information from payors.”
Id. at 14 (citing Ex. 1013 ¶¶ 156–164).
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At the Oral Hearing, Patent Owner objected to Petitioner’s “new” and
“changed” obviousness positions. Tr. 65–70. Patent Owner asserted, for
example, that Petitioner has changed its reason for combining Barber and
Holloway—from incorporating medical judgment and achieving cost-
effectiveness, as set forth in the Petition, to correcting errors identified by
Barber’s system, as set forth in the Reply. Id. at 69–70. Patent Owner also
argued that Petitioner’s new reason to combine Barber and Holloway lacks
rational underpinning, because Barber’s system identifies formatting errors,
but Holloway’s system corrects a different type of error, i.e., coding errors.
Id. at 70. Petitioner replied at the Oral Hearing that Barber’s Figure 16B
(element 836) and the associated discussion in Barber’s specification
disclose correcting “any errors,” and thus Barber’s teaching is not limited to
identifying formatting errors, as Patent Owner contends. Tr. 84–85.
4. Analysis
We agree with Patent Owner that Petitioner has not set forth a
sufficient rationale for combining the teachings of Barber, Holloway,
Rieker, and Magill to meet the claim requirements. See PO Resp. 22–23;
KSR, 550 U.S. at 418 (explaining the necessity of “determin[ing] whether
there was an apparent reason to combine the known elements in the fashion
claimed by the patent at issue”). We are persuaded that Petitioner has
merely mapped the claim requirements to elements disclosed individually in
the four references, without providing an adequate rationale to explain why
or how the disparate elements predictably would have been combined by a
POSA to meet every aspect of any particular claim limitation at issue. See
Pet. 52–78; PO Resp. 11–46. More specifically, Petitioner appears to admit
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that no single disclosure from any specific reference meets certain claim
limitations, but by placing several disparate disclosures from several
different references as corresponding to the same claim limitation in the
claim chart, appears to be asserting that in the aggregate, those disclosures
suggest the corresponding claim limitation. In doing so, however, Petitioner
has failed to show adequately how those disparate disclosures are to be
combined to meet that particular claim limitation. Normally, an obviousness
analysis under Graham v. John Deere Co., 383 U.S. at 17–18, involves an
identification of the differences between a claim limitation and a prior art
reference, followed by an analysis as to why modifying the prior art
reference to meet that claim limitation would have been within the abilities
of one of ordinary skill, usually with support from another reference. For
numerous claim limitations, Petitioner has failed to identify such differences,
and instead, by placing several disparate disclosures from several different
references as corresponding to the same claim limitation in the claim chart,
appears to be inviting the Board to make such a determination on its own.
Going further, even when it can be said that Petitioner plausibly identified
specific differences between the claimed invention and specific prior art,
Petitioner appears to be further inviting the Board to provide sua sponte
rationales for modifying that specific prior art to meet those differences,
presumably based on those same disclosures identified in the claim chart.
We decline to perform such sua sponte analyses, as the burden is on
Petitioner, and not on the Board, to show that a claim is unpatentable, and
for the Board to do otherwise would impermissibly place us in the role of
advocate and not arbiter. At best, Petitioner appears to argue generally that a
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POSA would have “included” or “incorporated” the entirety of the teachings
of Holloway and Rieker in Barber for general benefits, such as
“maintain[ing] productivity,” “incorporat[ing] medical judgment,” and
achieving “a more efficient, cost-effective manner of processing medical
claims.” See id. at 55–58; PO Resp. 18–21. Perhaps in certain
circumstances, such an argument is sufficient to satisfy an obviousness
analysis. Here, however, we are unpersuaded that it is, for merely folding
wholesale each of the separate teachings into a single system would not
render any claim obvious, because Petitioner has not shown adequately that
certain claim requirements are taught by any of the references, even given
such wholesale incorporation. See PO Resp. 35–39.
As an example, we discuss Petitioner’s contentions with respect to the
following step, required by all the challenged claims, involving application
of one or more rules to correct an error in a completed claim submission:
automatically interacting with the completed claim submission
by the medical practice management server to correct an error
in the completed claim submission, wherein the error is
resolved by the medical practice client before processing the
completed claim submission, by applying one or more rules
from a class of rules associated with the payor server, wherein
the one or more rules comprises a new rule, an updated rule, or
both received from the payor server.
Ex. 1001, 20:12–20, 22:24–32, 23:11–19. Included in this step are three
interrelated error correction limitations: (1) automatically interacting with
the completed claim submission by the medical practice management server
to correct an error, wherein the error is resolved by the medical practice
client before processing the completed claim submission, (2) by applying
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one or more rules from a class of rules associated with the payor server,
(3) wherein the one or more rules comprises a new or updated rule received
from the payor server.
In its claim chart, Petitioner maps the first and second error correction
limitations to elements disclosed individually in Barber, Holloway, and
Rieker. Petitioner maps the first and second limitations to Barber’s
verification process for verifying information on a claim header8 (Pet. 60–
61, citing Ex. 1020, 6:29–37, 50–55, 15:8–12, 26–27, Figs. 16A–16B), and
to Barber’s change process for changing an individual line item of a claim9
(Pet. 61, citing Ex. 1001, 15:33–59). Petitioner acknowledges, however, that
Barber’s verification and change processes do not teach the aspect of the
second limitation requiring rules “associated with the payor server.” Id. at
60 (omitting that claim language from the quotation on the right side of the
claim chart identifying what “Barber teaches”). In mapping the first and
second limitations to Holloway, Plaintiff acknowledges that Holloway does
not teach all requirements of either limitation. Id. at 61 (asserting on the
right side of the claim chart that “Holloway teaches” only certain aspects of
each of the two limitations). Finally, Petitioner maps the first and second

8 Barber’s claim header comprises “basic claim information including
patient, physician, medical service fee, insurance company and other
identifications.” Ex. 1001, 6:29–32. Information about the patient or the
insured, such as “the patient identification, zip code, or the like” is compared
with data stored in a patient or insured file at the central processor. Id. at
6:33–36.
9 Claim change information is verified and a revised claim payment amount
is determined. Ex. 1001, 15:33–59.
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error correction limitations to Rieker’s process for verifying insurance
eligibility. Id. (citing Ex, 1011, 8:50–9:3, 11:52–55, Figs. 7A–7G).
Petitioner acknowledges, however, that Rieker does not teach all
requirements of the first limitation. Id. (asserting that “Rieker teaches”
“automatically interacting with insurance eligibility data to correct an error,”
as opposed to “automatically interacting with the completed claim
submission by the medical practice management server to correct an error in
the completed claim submission, wherein the error is resolved by the
medical practice client before processing the completed claim submission,”
as required by the claims).
Further, we credit the testimony of Patent Owner’s expert, Mr.
Goodin, that Rieker does not teach the first error correction limitation.
Ex. 2012 ¶¶ 136– 137. In deposition, Petitioner’s expert, Dr. Bergeron,
confirmed that Rieker does not teach “correcting any error.” Ex. 2011,
134:4–9. We also credit Mr. Goodin’s testimony that Rieker does not
disclose “rules received from a payor server,” as required by the third
limitation (discussed below). Ex. 2012 ¶ 133:
Rieker does not explicitly describe using any “rule” (coded
logic) to match insurance eligibility information obtained from
the data gateway with patient-specific information stored in the
transaction request table. To the extent Rieker’s system uses
any coded logic to perform such a matching, Rieker does not
describe how such coded logic is implemented. A POSITA
would have recognized that it is likely that such coded logic is
hard coded into the source code of Rieker’s system. In any
event, Rieker does not mention any such coded logic being
“received from the payor server,” as required by all of the ’116
claims.

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We credit the testimony of Mr. Goodin over that of Dr. Bergeron on this
point because Dr. Bergeron did not apply the correct definition of “rules,”
requiring coded logic, when he prepared his original Declaration. See Ex.
2024, 101:20–102:9; Tr. 71–73; see also Ex. 2011, 126:11–127:7 (where Dr.
Bergeron acknowledges that Rieker does not disclose insurance “rules,”
contrary to his testimony in paragraph 161 of his original Declaration).
Petitioner maps the third error correction limitation to elements
disclosed individually in Barber and Rieker, but does not cite Holloway for
the third limitation. Id. at 61–62. Petitioner maps the third limitation to
Barber’s insurance company file for storing appropriate formats for medical
claims for each of a plurality of participating insurance companies.10
(Pet. 61–62 (citing Ex. 1020, Abstract, Fig. 1). Notably, Petitioner does not
map the third limitation to Barber’s verification and change processes,
discussed above in connection with the first and second limitations.
Petitioner also maps the third limitation to Rieker’s transmission, from
insurance providers to the gateway, of information about insurance
eligibility. Id. at 62 (citing Ex. 1011, 5:6–12).
Thus, Petitioner merely maps the claim requirements to elements
disclosed individually in the three references, without providing an adequate
rationale to explain why or how the disparate elements predictably would
have been combined by a POSA to meet the claim limitation at issue.

10 “The services, physician, and patient identifications are reformat[t]ed into
the appropriate format for claims of the identified insurance carrier.” Ex.
1020, 3:53–55.
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Indeed, Petitioner relies on elements of Barber to meet the first and second
error correction limitations (Barber’s verification and change processes) that
are entirely different from the element of Barber on which Petitioner relies
to meet the third error correction limitation (Barber’s formatting file).
Further, Petitioner acknowledges that not all requirements of the error
correction limitations are taught by any single reference.
Petitioner has not persuaded us, moreover, that Barber’s deficiencies
would have been remedied by combining the teachings of Barber with the
teachings of Holloway, Rieker, and Magill. See, e.g., PO Resp. 18–29, 35–
40. Patent Owner argues, and we agree, that Petitioner does not assert in the
Petition that a POSA would have modified any specific element in Barber’s
system to correct the deficiencies. See id. at 39–40. We are unpersuaded
that merely including or incorporating elements of Holloway, Rieker, and
Magill in Barber’s system, as proposed in the Petition, would have cured the
deficiencies in Barber, such as those noted above. See Pet. 54–58.
Petitioner’s new obviousness arguments, set forth in the Reply, violate
37 C.F.R. § 42.23(b) and, in any event, are insufficient to show that the
challenged claims would have been obvious over Barber, Holloway, Rieker,
and Magill. See Pet. Reply 12–15; Office Patent Trial Guide, 77 Fed. Reg.
48,756, 48,767 (Aug. 14, 2012) (“[A] reply that raises a new issue or
belatedly presents evidence will not be considered . . . .”). Petitioner did not
assert in its Petition that a POSA would have included Holloway’s rules in
Barber to correct identified errors, or that a POSA would have included
Rieker’s real-time determination for each payor in Barber to enhance
Barber’s error detection function with updated information from payors. In
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any event, Petitioner’s new argument that a POSA would have included
Holloway’s rules in Barber to correct identified errors is unpersuasive,
because it does not explain sufficiently why a POSA would have utilized
Holloway’s expert-derived CPT-4 coding rules to correct the types of errors
identified in in Barber, such as formatting errors. See Tr. 70. Further, we
are not persuaded that including Rieker’s real-time determination for each
payor in Barber to enhance Barber’s error detection function with updated
information cures any of the deficiencies in Barber, discussed above.
In summary, Petitioner has not demonstrated, by a preponderance of
the evidence, that claims 1–3, 5, 8, 11–13, 15, 17, 18, and 20 are
unpatentable as obvious over Barber, Holloway, Rieker, and Magill under
35 U.S.C. § 103(a).
III. CONCLUSION
For the reasons given above, we are persuaded that Petitioner has
shown, by a preponderance of the evidence, that each of claims 1–20 of the
’116 Patent is unpatentable under 35 U.S.C. § 101 as directed to ineligible
subject matter; but has not shown, by a preponderance of the evidence, that
claims 1–3, 5, 8, 11–13, 15, 17, 18, and 20 of the ’116 Patent are
unpatentable under 35 U.S.C. § 103(a) as obvious over Barber, Holloway,
Rieker, and Magill.
IV. ORDER
Accordingly, it is
ORDERED that claims 1–20 of the ’116 Patent are unpatentable; and
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FURTHER ORDERED that this is a Final Decision. Parties to the
proceeding seeking judicial review of the decision must comply with the
notice and service requirements of 37 C.F.R. § 90.2.

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For PETITIONER:

Ozzie Farres
Alison L. Karmelek
Jeff B. Vockrodt
HUNTON & WILLIAMS LLP
ofarres@hunton.com
akarmelek@hunton.com
jvockrodt@hunton.com

For PATENT OWNER

Richard Giunta
Randy Pritzker
Michael Rader
WOLF, GREENFIELD & SACKS, P.C.
RGiunta-PTAB@wolfgreenfield.com
RPritzker-PTAB@wolfgreenfield.com
MRader-PTAB@wolfgreenfield.com