IN THE UNITED STATES PATENT TRIAL AND APPEAL BOARD
`In re Covered Business Method Review
`of:
`
`U.S. Class: 707/607
`
`Group Art Unit: 2156
`
`Confirmation No. 8474
`
`Petition filed: February 20, 2015
`
`FILED ELECTRONICALLY
`PER 37 C.F.R. § 42.6(b)(1)
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`U.S. Patent No. 8,473,452
`
`Issued: June 25, 2013
`
`Inventor: N. Stephen OBER et al.
`
`Application No. 09/665,752
`
`Filed: September 20, 2000
`
`For: SYSTEM AND METHOD FOR
`ANALYZING DE-IDENTIFIED
`HEALTH CARE DATA
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S.P.T.O.
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`PETITION FOR POST-GRANT BUSINESS METHOD PATENT REVIEW
`UNDER 35 U.S.C. § 321 AND § 18 OF THE LEAHY-SMITH AMERICA
`INVENTS ACT FOR U.S. PATENT NO. 8,473,452
`
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`143763.00604/22369707v.1
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`

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`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`INTRODUCTION ........................................................................................ 1
`
`II. MANDATORY NOTICES .......................................................................... 1
`
`III. OVERVIEW OF THE ’452 PATENT ........................................................ 2
`
`IV. GROUNDS FOR STANDING ..................................................................... 7
`
`A. At Least One Challenged Claim is Unpatentable ................................ 7
`
`B.
`
`C.
`
`D.
`
`The ’452 Patent is Directed to a Covered Business Method................ 7
`
`The Challenged Claims Are Not Directed to a “Technological
`Invention.” .......................................................................................... 14
`
`Petitioner Has Been Sued for Infringement of the ’452 Patent
`and is Not Estopped. ........................................................................... 17
`
`V.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED FOR
`EACH CLAIM CHALLENGED .............................................................. 18
`
`VI. CLAIM CONSTRUCTION ....................................................................... 18
`
`A.
`
`B.
`
`C.
`
`Person of Ordinary Skill in the Art of the ’452 Patent ....................... 18
`
`Broadest Reasonable Interpretation ................................................... 19
`
`Support for Petitioner’s Broadest Reasonable Interpretations ........... 19
`
`VII. CLAIMS 1, 2, 4, 7-9, 11, 12 and 15 OF THE ’452 PATENT ARE
`UNPATENTABLE ..................................................................................... 21
`
`A.
`
`[Ground 1] Claims 1, 2, 4, 7-9, 11, 12 and 15 are Invalid Under
`35 U.S.C. § 101 as Being Directed to a Patent-Ineligible
`Abstract Idea. ...................................................................................... 21
`
`i.
`
`ii.
`
`The’452 Patent Claims are Directed to an Abstract Idea ........ 22
`
`The Claims of the ’452 Patent Add No Meaningful
`Limitations to the Abstract Idea Claimed ................................ 23
`
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`143763.00604/22369707v.1
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`

`

`Petition for Post Grant Review
`of U.S. Patent No. 8,473,452
`The ’452 Patent Claims Fail to Pass the Machine or
`Transformation Test of Patent Eligibility ................................ 25
`
`iii.
`
`B.
`
`C.
`
`[Ground 2] Claims 1, 2, 4, 7-9, 11, 12 and 15 are Obvious
`Under 35 U.S.C. § 103 Over Pommerening in View of
`Denning82. ......................................................................................... 27
`
`[Ground 3] Claims 1, 2, 4, 7-9, 11, 12, and 15 are Obvious
`Under 35 U.S.C. § 103 Over Johansson in View of Denning82. ...... 45
`
`VIII. CONCLUSION ........................................................................................... 61
`
`
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`
`
`Table of Authorities
`
`Page(s)
`
`CASES
`Accenture Global Svcs. GmbH v. Guidewire Software, Inc.,
`No. 2011-1486, slip op. (Fed. Cir. Sep. 5, 2013) ......................................... 22, 23
`
`Alice Corp. Pty. Ltd. v. CLS Bank Int’l,
`573 U.S. __, 134 S.Ct. 2347 (June 19, 2014) ................................................. 6, 15
`
`Apple Inc. v. Sightsound Techs., LLC,
`CBM2013-00019, slip op. (PTAB Oct. 8, 2013) .................................................. 8
`
`Bancorp Servs. L.L.C. v. Sun Life Assurance Co. of Canada,
`687 F.3d 1266 (Fed. Cir. 2012) .............................................................. 21, 22, 25
`
`Bilski v. Kappos,
`130 S.Ct. 3218 (2010) ................................................................................... 21, 25
`
`Buysafe, Inc. v. Google Inc.,
`1:11-cv-01282-LPS, Memorandum Opinion at 4 (D.Del. July 29, 2013) .......... 25
`
`CLS Bank Int’l v. Alice Corp. Pty,
`717 F.3d 1269 (Fed. Cir. May 10, 2013) .......................................... 21, 22, 23, 24
`
`CyberSource Corp. v. Retail Decisions, Inc.,
`654 F.3d 1366 (Fed. Cir. 2011) .................................................................... 25, 26
`
`Dealertrack v. Huber,
`674 F.3d 1315 (Fed. Cir. 2012) .......................................................................... 15
`
`Diamond v. Diehr,
`450 U.S. 175 (1981) ............................................................................................ 23
`
`IMS Health Inc. v. Symphony Health Solutions Corp. et al.,
`C.A. No. 13-2071-GMS (D. Del. Dec. 23, 2013) ........................................... 1, 17
`
`Int’l Sec. Exch., LLC v. Chicago Bd. Options Exch.,
`Case CBM2013-00050, slip op. 9 (PTAB Mar. 4, 2014) ..................................... 8
`
`
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`

`

`Petition for Post Grant Review
`of U.S. Patent No. 8,473,452
`
`Mayo v. Prometheus,
`132 S.Ct. 1289 (2012) ......................................................................................... 21
`
`Par Pharmaceutical, Inc., Roxane Laboratories, Inc. and Amneal
`Pharmaceuticals, LLC v. Jazz Pharmaceuticals, Inc.,
`Case No. CBM2014-00149, slip op. at *11 (PTAB Jan. 13, 2015) ................... 12
`
`Salesforce.com, Inc. v. Virtualagility, Inc.,
`CBM2013-00024, slip op. (PTAB November 19, 2013) ..................................... 8
`
`SAP Am., Inc. v. Versata Dev. Grp., Inc.,
`No. CBM2012-00001, slip op. (P.T.A.B. Jan. 9, 2013) ........................... 7, 15, 22
`
`SiRF Tech., Inc. v. ITC,
`601 F.3d 1319 (Fed. Cir. 2010) .......................................................................... 25
`
`STATUTES
`
`35 U.S.C. § 101 .................................................................................................passim
`
`35 U.S.C. § 103 .................................................................................................passim
`
`35 U.S.C. § 321 .................................................................................................... 1, 18
`
`35 U.S.C. § 324(a) ..................................................................................................... 7
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.300 ............................................................................................... 1, 19
`
`37 C.F.R. § 42.300(b) .............................................................................................. 19
`
`37 C.F.R. § 42.301 ............................................................................................... 7, 13
`
`37 C.F.R. § 42.302 ................................................................................................... 17
`
`77 Fed. Reg. 157 ............................................................................................ 7, 14, 15
`
`U.S. Patent No. 8,473,452 .................................................................................passim
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`
`Petition Exhibit 1001:
`
`U.S. Patent No. 8,473,452 (“the ’452 Patent”)
`
`LIST OF EXHIBITS
`
`
`
`Petition Exhibit 1002:
`
`Declaration of Paul Clark
`
`
`
`Petition Exhibit 1003:
`
`Cryptography and Data Security by Dorothy
`
`Elizabeth Robling Denning, Addison-Wesley
`
`Publishing Company, Inc. (1982) (“Denning82”)
`
`
`
`Petition Exhibit 1004:
`
`“Pseudonyms for Cancer Registries” by
`
`K. Pommerening, M. Miller, I. Schmidtmann, and J.
`
`Michaelis, Pseudonyms for Cancer Registries,
`
`Methods of Information in Medicine (1996)
`
`(“Pommerening”)
`
`
`
`Petition Exhibit 1005:
`
`Jan Johansson, U.S. Patent No. 5,606,610 (February
`
`25, 1997) (“Johansson”)
`
`
`
`Petition Exhibit 1006:
`
`Claim Construction Order
`
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`I.
`
`INTRODUCTION
`
`Pursuant to 35 U.S.C. § 321, Section 18 of the Leahy-Smith America
`
`Invents Act (“AIA)” and 37 C.F.R. § 42.300 et seq., the undersigned Petitioner
`
`respectfully requests a covered business method review of claims 1-2, 4, 7-9, 11,
`
`12 and 15 (“Challenged Claims”) of U.S. Patent No. 8,473,452 (“the ’452 patent,”
`
`Ex. 1001), which issued on June 25, 2013 to N. Stephen Ober et al. and is currently
`
`assigned to IMS Health Incorporated (“IMS” or “Patent Owner”). Petitioner
`
`demonstrates through this Petition that the Challenged Claims are patent ineligible
`
`under 35 U.S.C. § 101 and are unpatentable as obvious under 35 U.S.C. § 103.
`
`II. MANDATORY NOTICES
`Real Party-in-Interest: Symphony Health Solutions Corporation
`
`Related Matters: IMS Health Incorporated v. Symphony Health Solutions
`
`Corp. et al, Civil Action No. 13:2071-GMS (D. Del.). Petitioner has also filed a
`
`CBM petition for the other patents asserted in the underlying litigation. See U.S.
`
`Patent Nos. 6,397,224 (Case No. CBM2015-00070) and 7,577,578 (Case No.
`
`CBM2014-00188).
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`
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`Lead and Back-Up Counsel and Service Information:
`
`Lead Counsel
`
`Bruce D. George
`USPTO Reg. No. 43,631
`Blank Rome LLP
`One Logan Square
`130 North 18th Street
`Philadelphia, PA 19103-6998
`Telephone: 215-569-5500
`Fax: 215-569-5555
`George@blankrome.com
`
`
`
`Back-up Counsel
`
`Steven M. Johnston
`USPTO Reg. No. 61, 268
`Blank Rome LLP
`One Logan Square
`130 North 18th Street
`Philadelphia, PA 19103-6998
`Telephone: 215-569-5500
`Fax: 215-569-5555
`sjohnston@blankrome.com
`
`Peter K. Zacharias
`USPTO Reg. No. 62,204
`Blank Rome LLP
`One Logan Square
`130 North 18th Street
`Philadelphia, PA 19103-6998
`Telephone: 215-569-5500
`Fax: 215-569-5555
`Zacharias@blankrome.com
`
`
`III. OVERVIEW OF THE ’452 PATENT
`The ’452 patent issued from U.S. Patent Application No. 09/665,752, which
`
`was filed on September 20, 2000. The provisional application that eventually
`
`matured into the ’452 patent was filed on September 20, 1999, and the patent
`
`issued on June 25, 2013. As used herein, the priority date of the ’452 Patent
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`(“Priority Date”) is September 20, 1999. The ’452 patent is entitled “System and
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`Method for Analyzing De-Identified Health Care Data,” and is directed to de-
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`identifying health care records in order to comply with privacy laws that prohibit
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`transmission of personal information contained within health care claims data.
`
`Generally speaking, the ’452 patent claims a system and method of de-
`
`identifying patient records in a database before transmitting them for external
`
`analysis. The claimed system and method includes the steps of extracting
`
`personally identifying information from a subset of data fields in the database and
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`encrypting the extracted information to generate a single encrypted patient
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`identifier that uniquely and anonymously identifies a particular patient. The
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`encrypted unique patent identifier (“EUPI”) replaces all of the identifying
`
`information in the record for that particular patient, and is used to anonymously
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`identify that patient so that future transactions for that patient can be linked
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`together and/or identified as an individual patient, albeit one whose actual identity
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`is unknown.
`
`The patent describes a simultaneous need to comply with regulations
`
`requiring security measures for health information, while also being able to
`
`associate multiple records related to a single individual “to generate valuable
`
`research and market data based upon the unique attributes for specific individuals,
`
`such as age, gender, and geographic distribution.” ’452 Patent (Ex. 1001) at 1:53-
`
`55. The patent goes on to describe the need for a system having the ability “to
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`efficiently gather information from the claims databases to allow research and
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`analysis of the attributes that affect the pharmaceutical industry.” Id. at 1:56-59.
`
`The patent purports to address these requirements through an allegedly novel
`
`system and method for creating a unique alias associated with an individual
`
`identified in a health care database, which allows for the aggregation of segregated
`
`data for marketing research. Id. at 1:66-2:2. The patent claims a health care
`
`database in which at least one patient record having a plurality of identification
`
`fields is stored, wherein at least one subset of the identification fields uniquely
`
`identifies the patient. Id. at 13:10-18. As claimed, the health care database is in
`
`communication with one or more processors which are themselves in
`
`communication with a second database, wherein the processors execute
`
`instructions to: (i) select a patient record from the health care database; (ii) extract
`
`alphanumeric information that uniquely identifies the patient from a subset of the
`
`identification fields contained in the database; (iii) generate an encrypted unique
`
`patient identifier (EUPI) by encrypting the extracted alphanumeric information;
`
`and (iv) generate a de-identified patient record containing at least one health care
`
`field from the patient record and the encrypted unique patient identifier. Id. at
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`13:19-37. Once the de-identified patient record has been generated, it is then
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`transmitted to a second database. Id. at 13:38-39.
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`The ’452 patent explains that pharmaceutical claims are processed on large
`
`computer systems which receive claims data for patients who have been prescribed
`
`one or more medications and have filed claims with insurance companies (or
`
`government entities) in order to have the claim paid by the company or entity. Id.
`
`at 22-27. Multiple dependent claims are directed to a system in which the health
`
`care field contained in the de-identified patient record comprises pharmaceutical
`
`claims data, medical claims data, or hospital claims data (i.e., claims for receiving
`
`payment or reimbursement). Additional dependent claims are directed to
`
`generating a report based on the data included in the identified records (i.e., claims
`
`data). According to the specification, the report displayed by the system may
`
`contain several attributes, and can “therefore be used in a number of ways to help
`
`make business decisions, such as monitoring new drug launches and marketing
`
`campaigns, enhanced sales force targeting, and micro-marketing in select
`
`geographic areas or to select customers. Furthermore, the system can be used for
`
`forecasting and development of pharmaceutical marketing strategy including
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`indication-specific product positioning, early warning market share shifts, clinical
`
`trial site selection, investigator recruiting, and accurate intelligence on market size
`
`and demand.” Id. at 3:25-45.
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`Throughout, the claims use broad computer-based terminology to recite
`
`various elements such as “a health care database,” “processors in communication
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`with the at least one health care database and a second database,” “extracting
`
`alphanumeric information from a plurality of the identification fields in the patient
`
`record,” and “encrypting the extracted alphanumeric information uniquely
`
`identifying the patient.” As set forth herein, however, the ‘452 Patent fails to claim
`
`anything but conventional, well-known computer elements, and otherwise fails to
`
`limit the ‘452 Patent claims beyond the abstract notion of encrypting patient
`
`information contained in a database and transmitting the de-identified patient
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`record to a second database. Additionally, several of the claims are directed to “a
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`non-transitory computer-readable medium encoded with instructions that, when
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`executed by one or more processors, cause the one or more processors to perform
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`operations comprising….” Claims of this type, so-called Beauregard claims1
`
`, have
`
`come under increased scrutiny of late, and as recently explained by the Supreme
`
`Court, computer system and/or computer-readable medium claims that “add
`
`nothing of substance to the underlying abstract idea … are patent ineligible under §
`
`101” and therefore rise or fall with the underlying system and method claims.
`
`Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. __, 134 S.Ct. 2347, 2360 (June
`
`19, 2014). Even if the claims of the ’452 Patent were directed to patentable subject
`
`matter, which they are not, under their broadest reasonable construction
`
`
`1 See In re Beauregard, 53 F.3d 1583, 35 U.S.P.Q.2d (BNA) 1383 (Fed. Cir. 1995).
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`appropriate here, the claims read upon any method of encrypting patient
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`information to generate a unique patient alias, generating a de-identified patient
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`record which contains the unique alias and at least one health care field associated
`
`with the unique alias, and transmitting that de-identified patient record to a second
`
`database.
`
`IV. GROUNDS FOR STANDING
`A. At Least One Challenged Claim is Unpatentable
`As further detailed below, claims 1, 2, 4, 7-9, 11, 12, and 15 of the ’452
`
`patent (“the Challenged Claims”) are invalid under 35 U.S.C. §§ 101 and 103.
`
`Thus, for the reasons set forth below, it is “more likely than not that at least one of
`
`the claims of the ’452 patent is unpatentable.” 35 U.S.C. § 324(a).
`
`The ’452 Patent is Directed to a Covered Business Method.
`
`B.
`The ’452 Patent is a “covered business method patent” as defined under § 18
`
`of the AIA and 37 C.F.R. § 42.301. Section 18(d)(1) of the AIA identifies a
`
`covered business method patent as “a patent that claims a method or corresponding
`
`apparatus for performing data processing or other operations used in the practice,
`
`administration, or management of a financial product or service.” See also 37
`
`C.F.R. § 42.301(a) (reciting similar language). The USPTO has indicated that it
`
`broadly defines the term “covered business method patent” to encompass patents
`
`claiming activities that are outside the financial services industry, but still
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`fundamentally financial in nature. See 77 Fed. Reg. 157 at 48734-35; see also SAP
`7
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`Am., Inc. v. Versata Dev. Grp., Inc., No. CBM2012-00001, slip op. at *23 (Paper
`
`No. 36) (P.T.A.B. Jan. 9, 2013). The legislative history supports this view that
`
`“financial product or service” is not limited to the financial services industry.
`
`77 Fed. Reg. 157 at 48,735 (Response to Comment 1: “[T]he legislative history
`
`explains that the definition of covered business method patent was drafted to
`
`encompass patents ‘claiming activities that are financial in nature, incidental to a
`
`financial activity or complementary to a financial activity.’”) (internal citations
`
`omitted).
`
`The focus of the financial product or service inquiry is on the claims. See
`
`Int’l Sec. Exch., LLC v. Chicago Bd. Options Exch., Case CBM2013-00050, slip
`
`op. 9 (PTAB Mar. 4, 2014) (Paper 16)) (“For purposes of determining whether a
`
`patent is eligible for a covered business method patent review, the focus is on the
`
`claims.”). However, a patent needs only one claim directed to a covered business
`
`method in order to be eligible for CBM review. Id. As the Board has observed,
`
`“an agreement between two parties stipulating movements of money or other
`
`consideration now or in the future” represents the “type of activities that are
`
`‘complementary to a financial’ and ‘relate to monetary matters.’” Apple Inc. v.
`
`Sightsound Techs., LLC, CBM2013-00019, slip op. at *12 (PTAB Oct. 8, 2013)
`
`(Paper 17); see also Salesforce.com, Inc. v. Virtualagility, Inc., CBM2013-00024,
`
`slip op. at *6-15 (PTAB November 19, 2013) (Paper 16) (holding that “applying
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`the invention as a financial product or service for use by an organization to
`
`improve the financial health of the organization” constitutes a financial product or
`
`service under the AIA, particularly as it relates to: (i) the cost of or investment in a
`
`particular financial goal or initiative, (ii) the economic return anticipated for
`
`achievement of the particular goal or initiative, (iii) the ratio of return on
`
`investment, or (iv) the potential profit or loss of a scalable process.).
`
`The ‘452 Patent claims are directed to systems and methods for de-
`
`identifying health care data records in a database and transmitting the de-identified
`
`patient record to a second database. See Ex. 1001 at 13:10-39.
`
`Claim 1 is representative:
`
`1. A system for de-identifying health care data comprising:
`
`at least one health care database, the at least one health care database
`including at least one patient record, each patient record including a
`plurality of identification fields associated with a patient and at least
`one health care field, wherein at least one subset of the identification
`fields associated with a patient uniquely identifies the patient; and
`
`one or more processors in communication with the at least one health
`care database and a second database, wherein the one or more
`processors execute instructions that cause the one or more processors
`to:
`
`select a patient record from the at least one health care database,
`
`extract alphanumeric information from a plurality of the identification
`fields included in the patient record, the extracted alphanumeric
`information uniquely identifying the patient;
`
`generate an encrypted unique patient identifier by encrypting the
`extracted alphanumeric information,
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`generate a de-identified patient record, wherein the de-identified
`patient record includes the at least one health care field that is
`included in the selected patient record and the encrypted unique
`patient identifier, and wherein the de-identified patient record does not
`include any information that identifies the patient other than the
`encrypted unique patient identifier, and
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`transmit the de-identified patient record to the second database.
`
`All of the claims recite the limitation of “generating an encrypted unique
`
`patient identifier” (or a similar variation thereof) by encrypting alphanumeric
`
`information extracted from fields uniquely identifying a patient record. Once the
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`encrypted unique patient identifier (“EUPI”) has been generated, a de-identified
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`patient record containing the EUPI and at least one health care field associated
`
`with that EUPI is generated and transmitted to a second database. The
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`specification also makes clear that the unique alias (i.e., the claimed EUPI)
`
`associated with an individual identified in a health care database “allows for the
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`aggregation of segregated data for marketing research.” The de-identified patient
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`record is rooted in that patient’s financial history, and it is precisely this history
`
`that renders the de-identified records (alone or in the aggregate) so valuable.2
`
`
`
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`2 According to one estimate, the health care analytics industry is expected to
`
`become a $20B industry by 2020. See
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`http://www.healthdatamanagement.com/news/Healthcare-Analytics-Market-to-
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`Two of the Challenged Claims recite that the at least one health care field
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`included in the de-identified health care data record “comprises pharmaceutical
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`claims data, medical claims data, or hospital claims data,” all of which are clearly
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`financial in nature in that they reflect a financial transaction wherein payment is
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`exchanged for a medical service, hospital stay, or prescription medication.
`
`Moreover, claim 9 of the ‘452 Patent claims an additional method step of
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`“identifying one or more records stored in the second database that include the
`
`unique patient identifier; and generating a report based on data included in the
`
`identified records.” In other words, the ’452 Patent claims a method of preparing a
`
`detailed financial history of an anonymized patient that reflects, for example, how
`
`much an anonymized patient spent on a particular medical treatment or
`
`prescription medication, where and when that patient’s money was spent, and how
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`frequently the patient returned for follow-up treatment and/or to refill a
`
`prescription. This report claimed in the ’452 Patent is fundamentally financial in
`
`nature, and is a quintessential application of the claimed invention “to improve the
`
`financial health of an organization.”
`
`
`Reach-More-Than-20-Billion-Dollars-by-2020-48850-1.html (last accessed
`
`February 20, 2015).
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`As the specification makes clear, the underlying financial nature of the
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`claimed report is used “make business decisions, such as monitoring new drug
`
`launches and marketing campaigns, enhanced sales force targeting, and micro-
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`marketing in select geographic areas or to select customers. Furthermore, the
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`system can be used for forecasting and development of pharmaceutical marketing
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`strategy including indication-specific product positioning, early warning market
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`share shifts, clinical trial site selection, investigator recruiting, and accurate
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`intelligence on market size and demand.” ’452 Patent (Ex. 1001) at 3:25-45.
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`The PTAB’s analysis of what constitutes a covered business method in Par
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`Pharmaceutical, Inc., Roxane Laboratories, Inc. and Amneal Pharmaceuticals,
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`LLC v. Jazz Pharmaceuticals, Inc. is instructive in this regard. In Par
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`Pharmaceutical, the Board analyzed whether a claim directed to a method for
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`controlling access to a prescription drug to guard against potential abuse and
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`unauthorized diversion was eligible for CBM review. See Case No. CBM2014-
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`00149, slip op. at *11 (PTAB Jan. 13, 2015) (Paper 12). In deciding that the claim
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`was not eligible for review, the Board explained that the claims did “not recite or
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`require an activity involving the movement of money or extension of credit in
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`connection with the sale of a prescription drug.” In this case, multiple dependent
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`claims require that one of the health care fields be “pharmaceutical claims data,
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`medical claims data, or hospital claims data,” the precise sort of financial
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`transaction the Board found lacking in Par Pharmaceutical. Moreover, the
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`aggregated, anonymized patient data described in the ’452 Patent is a “product or
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`service particular to or characteristic of financial institutions such as banks,
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`insurance companies, and investment houses.” Id. at 12-13 (identifying exemplary
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`CBM claim language as requiring or reciting: (i) sale of a prescription drug; (ii)
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`processing of payments, benefits, or insurance claims related to the sale of a
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`prescription drug; (iii) a method of insuring a patient or determining the cost of
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`insurance; (iv) a method of determining the cost of prescription benefits; (v) a
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`method of facilitating payment of health care benefits; or (vi) the extension of
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`credit for the purchase of a prescription drug.).
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`Several of the Challenged Claims contemplate the exact financial activities
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`described in Par Pharmaceutical. At least one claim is directed to a financial
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`report that is, fundamentally, a financial product. Furthermore, the analytics (i.e.,
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`identifying multiple health care records associated with a unique patient identifier
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`and aggregating claims data) used to generate that report are services being
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`performed to extract highly valuable financial information from the anonymized
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`records. By any measure, the claims are directed to a financial product and/or
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`service that derives its value from the financial histories of individual, anonymized
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`patients on which it is based. See also Ex. 1002, Clark Decl. ¶¶ 19-25.
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`C. The Challenged Claims Are Not Directed to a “Technological
`Invention.”
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`A “covered business method patent” under AIA § 18 does not include
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`patents for “technological inventions.” AIA § 18(d)(1). A patent claims a
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`“technological invention” if, and only if, “the claimed subject matter as a whole
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`recites a technological feature that is novel and unobvious over the prior art; and
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`solves a technical problem using a technical solution.” AIA § 18(d)(2); 37 C.F.R.
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`§ 42.301(b). The following claim drafting techniques typically do not render a
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`patent a “technological invention”:
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`(a) Mere recitation of known technologies, such as computer
`hardware, communication on computer networks, software, memory,
`computer readable storage medium, scanners, display devices or
`databases, or specialized machines, such as an ATM or point of sale
`device.
`(b) Reciting the use of known prior art technology to
`accomplish a process or method, even if that process or method is
`novel and non-obvious.
`(c) Combining prior art structures to achieve the normal,
`expected, or predictable result of that combination.
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`Office Patent Trial Practice Guide, 77 Fed. Reg. 157 at 48756, 48763-48764 (Aug.
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`14, 2012).
`
`Here, the Challenged Claims recite no new technological features, nor do
`
`they solve a technical problem with a technical solution. Claim 1 recites a “health
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`care database” in communication with a second database wherein identifying
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`elements from data records in the database are de-identified prior to transmission
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`to the second database. Ex. 1001 at claim 1; id. at 1:65 – 2:2 (“The present
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`invention is directed to a system and method for creating a unique alias associated
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`with an individual identified in a health care database, that allows the aggregation
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`of segregated data for marketing research.”). Even if the specific method claimed
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`were novel and nonobvious (it is not), such generic “computer-implement[ation]”
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`of that method is not “technological” for purposes of CBM review because general
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`purpose computers, databases, database records management, and cryptographic
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`mechanisms for encrypting data fields within a database (claim 1) were well-
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`known many years before the ’452 patent’s priority date of September 20, 1999.
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`See 77 Fed. Reg. 157 at 48756, 48763-48764 (Aug. 14, 2012); see also Alice v.
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`CLS Bank, 134 S.Ct. at 2357-59; Ex. 1002, Clark Decl. ¶¶ 19-25.
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`The claimed “encryption” technique is also not a technological invention.
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`The Challenged Claims do not limit the type of “encryption,” and the specification
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`makes clear that the encryption takes place on a general-purpose computer. Id. at
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`¶¶ 26-31. Furthermore, the term encrypted/encrypting recited in each Challenged
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`Claim is not defined or described in any meaningful detail in the specification, and
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`several commercial databases with facilities for implementing the claimed de-
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`identification features were widely known and available long before September
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`1999. Id. at ¶¶ 30-31.
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`Thus, whether taken alone or in combination, the features of the ’452 patent
`
`claims recite only generic, conventional technologies for linking data records. See
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`SAP, CBM2012-00001, slip op. at *28 (no technological invention where “no
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`specific, unconventional software, computer equipment, tools or processing
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`capabilities are required.”) (citing Dealertrack v. Huber, 674 F.3d 1315, 1333
`
`(Fed. Cir. 2012)). The claims’ lack of novelty and non-obviousness are confirmed
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`in view of the prior art identified below.
`
`The ’452 patent claims also do not solve any technical problems using a
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`technical solution. The ’452 patent identifies its problem to be solved as
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`compliance with regulations governing the transmission of personal health
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`information while still efficiently gathering information from various health care
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`databases to facilitate research and analysis of the attributes of health care records
`
`that affect the pharmaceutical industry. See Ex. 1001 at 1:44-60. However, this
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`increased focus on maintaining the privacy of personal health information is not a
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`technological problem capable of being solved, for example, with improved
`
`c