UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEALS BOARD

Transcription

1 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEALS BOARD CARE N CARE INSURANCE COMPANY, INC. and TRIZETTO CORPORATION, Petitioners v. INTEGRATED CLAIMS SYSTEMS, LLC, Patent Owner Case No.: To Be Assigned Patent No.: 8,676,609 PETITION FOR TRANSITIONAL POST-GRANT REVIEW OF A COVERED BUSINESS METHOD PATENT UNDER SECTION 18 OF THE LEAHY-SMITH AMERICA INVENTS ACT AND 37 C.F.R Mail Stop Patent Board Patent Trial and Appeal Board United States Patent and Trademark Office P.O. Box 1450 Alexandria, VA

2 TABLE OF CONTENTS Page I. 37 C.F.R. 42.8: MANDATORY NOTICES... 1 A. 37 C.F.R. 42.8(b)(1): Real Party-In-Interest... 1 B. 37 C.F.R. 42.8(b)(2): Related Matters... 1 C. 37 C.F.R. 42.8(b)(3) and (4): Designation of Lead and Back- Up Counsel and Identification of Service Information... 2 II. 37 C.F.R : PAYMENT OF FEES... 2 III. 37 C.F.R (a): GROUNDS FOR STANDING... 2 A. The 609 Patent Is a Covered Business Method Patent B. 37 C.F.R (a): Petitioners Are Eligible to File a CBMR C. 37 C.F.R (b): Petitioners Are Not Estopped IV. 37 C.F.R (b): IDENTIFICATION OF CHALLENGE... 3 A. 37 C.F.R (b)(1): Claims for Which CBMR Is Requested... 3 B. 37 C.F.R (b)(2): Statutory Grounds On Which the Challenge is Based... 3 C. 37 C.F.R (b)(3): Claim Construction... 3 D. 37 C.F.R (b)(4): How the Claims Are Unpatentable... 4 E. 37 C.F.R (b)(5): Evidence Supporting Challenge... 4 V. PRELIMINARY STATEMENT... 4 VI. THE 609 PATENT IS A COVERED BUSINESS METHOD PATENT... 5 A. The 609 Patent 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 Claims 81 and Are Expressly Directed to a Method and Corresponding Apparatus for Performing Data Processing Used In the Administration of a Financial Product... 7 i

3 2. The 609 Patent Describes its Claimed Invention as Being Directed to Data Processing Used in the Administration of a Financial Product That the 609 Patent Has Been Asserted Against Insurance Companies, and ICS s Infringement Allegations, Confirms It Relates to a Financial Product or Service B. The Challenged Claims Do Not Recite a Technological Invention The Challenged Claims Do Not Recite a Technological Feature That Is Novel and Non-obvious Over the Prior Art The Challenged Claims Do Not Solve a Technical Problem Using a Technical Solution VII. IT IS MORE LIKELY THAN NOT THAT THE CHALLENGED CLAIMS ARE UNPATENTABLE A. Description of the Alleged Invention of the 609 Patent B. Ground 1: The Challenged Claims Are Not Patent-Eligible Under 35 U.S.C Claims That Recite Abstract Ideas Implemented Using General- Purpose Computer Components Are Not Patent Eligible Alice Step 1: The Challenged Claims Are Drawn to an Abstract Idea Alice Step 2: Nothing In the Challenged Claims Supplies an Inventive Concept C. Ground 2: Challenged Claims 81, 83, 84, 85, 86, 87, and 88 Are Obvious In View of Lech In Combination With U.S. Patent No. 5,054,096 ( Beizer ), Rendering Them Unpatentable Under 35 U.S.C Overview of Lech Lech Is Prior Art and Eligible for Use in CBMR Overview of Beizer Beizer is Prior Art and Eligible for Use in CBMR D. One of Ordinary Skill In the Art Would Be Motivated to Combine Lech and Beizer ii

4 E. Lech In Combination With Beizer Discloses All Elements of Claim 81 and Renders It Obvious F. Lech in Combination with Beizer Discloses all Elements of Claim 83 and Renders It Obvious G. Lech In Combination With Beizer Discloses All Elements of Claim 84 and Renders It Obvious H. Lech In Combination With Beizer Discloses All Elements of Claim 85 and Renders It Obvious I. Lech In Combination With Beizer Discloses All Elements of Claim 86 and Renders It Obvious J. Lech In Combination With Beizer Discloses All Elements of Claim 87 and Renders It Obvious K. Lech In Combination With Beizer Discloses All Elements of Claim 88 and Renders It Obvious VIII. CONCLUSION iii

5 Cases TABLE OF AUTHORITIES Page Alice Corp. Pty. Ltd. v. CLS Bank Int l, 134 S. Ct (2014)... passim Am. Express Co. v. Lunenfeld, CBM , Paper 17 (PTAB June 18, 2014)... 13, 14 Apple Inc. v. SightSound Techs., LLC, CBM , Paper 14 (PTAB Oct. 8, 2013)... 6 Bilski v. Kappos, 561 U.S. at 593 (2010)... 23, 26, 27, 35 Bloomberg Inc. v. Markets-Alert PTY Ltd., CBM , Paper 18 (PTAB Mar. 29, 2013) Content Extraction and Transmission v. Wells Fargo Bank, N.A., No , et al., 2014 WL (Fed. Cir. Dec. 23, 2014)... passim Coresource, Inc. v. Quality Healthcare Intermediary, LLC, CBM , Paper 9 (PTAB July 28, 2014) Coupa Software, Inc. v. Ariba, Inc., CMB , Paper 11 (PTAB July 25, 2014) CRS Advanced Techs., Inc. v. Frontline Techs., Inc., CBM , Paper 17 (PTAB Jan. 23, 2013)... 7, 14 Cyberfone Sys., LLC v. CNN Interactive Grp., Inc., 558 F. App x 988 (Fed. Cir. 2014)... passim CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011)... passim DDR Holdings, LLC v. Hotels.com, L.P., , 2014 WL (Fed. Cir. Dec. 5, 2014) Dealertrack, Inc. v. Huber, 674 F.3d 1315 (Fed. Cir. 2012) iv

6 Gillman v. StoneEagle Servs., Inc., CBM , Paper 11 (PTAB Feb. 18, 2014)... 9 In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) KSR Int l Co. v. Teleflex Inc., 550 U.S. 398 (2007)... 47, 48 KSR Int l Co. v. Teleflex Inc., 72 Fed. Reg. 57,526 (Oct. 10, 2007)... 47, 48 Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co., CBM , Paper 66 (PTAB Jan. 23, 2014)... 7 Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co., CBM , Paper 15 (PTAB Feb. 12, 2013) Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co., CBM , Paper 13 (PTAB Jan. 27, 2013)... 8, 10 Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct (2012)... 24, 25, 26, 28 PNC Fin. Servs. Grp., Inc. v. Intellectual Ventures I LLC, CBM , Paper 13 (PTAB May 22, 2014) Salesforce.com, Inc. v. VirtualAgility, Inc., CBM , Paper 16 (PTAB Nov. 19, 2013) SAP Am., Inc. v. Versata Dev. Grp., Inc., CBM , Paper 36 (PTAB Jan. 9, 2013)... 6 Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014)... passim Statutes 157 CONG. REC. S (daily ed. Mar. 8, 2011)... 6, 11, U.S.C passim 35 U.S.C. 102(b)... 5, 46, U.S.C , 4, 47 v

7 35 U.S.C. 325(e)(1)... 3 P.L (a)(1)(C)... 46, 47 P.L (a)(1)(C)(i) P.L (d)(1)... 5, 12 Regulations 37 C.F.R (b) C.F.R (a) C.F.R (b) C.F.R (a)... 5, 6, 8, C.F.R (b)... 12, 14, Fed. Reg. 48,735 (Aug. 14, 2012)... 6, Fed. Reg. 48,736 (Aug. 14, 2012)... 7, Fed. Reg. 48,756 (Aug. 14, 2012)... 14, Fed. Reg. 48,764 (Aug. 14, 2012)... 14, 15, 18 vi

8 Care N Care Insurance Company, Inc. ( Care N Care ) and TriZetto Corporation ( TriZetto ) (collectively, Petitioners) request CBMR of Claims 81, 83, 84, 85, 86, 87, and 88 ( Challenged Claims ) of U.S. Patent. No. 8,676,609 ( 609 Patent ) (Ex. 1003). I. 37 C.F.R. 42.8: MANDATORY NOTICES A. 37 C.F.R. 42.8(b)(1): Real Party-In-Interest Care N Care and TriZetto are the real parties-in-interest. B. 37 C.F.R. 42.8(b)(2): Related Matters Patent Owner Integrated Claims Systems, LLC ( ICS ) has asserted the 609 Patent in numerous lawsuits in various federal district courts: (1) Integrated Claims Sys., LLC v. ConnectiCare, Inc., No. 3:14-cv (D. Conn.); (2) Integrated Claims Sys., LLC v. Molina Healthcare of Tex., Inc., No. 2:14-cv (E.D. Tex.); (3) Integrated Claims Sys., LLC v. Cmty. Health Choice, Inc., No. 2:14-cv (E.D. Tex.); (4) Integrated Claims Sys., LLC v. Care N Care Ins. Co., Inc., No. 2:14-cv (E.D. Tex.); (5) Integrated Claims Sys., LLC v. S. Vanguard Ins. Co., No. 2:14-cv (E.D. Tex.); (6) Integrated Claims Sys., LLC v. United Dental Care of Tex., Inc., No. 2:14-cv (E.D. Tex.). These cases and proceedings may affect, or be affected by, decisions here. The 609 Patent is not the subject of any other petitions for CBMR. 1

9 C. 37 C.F.R. 42.8(b)(3) and (4): Designation of Lead and Back-Up Counsel and Identification of Service Information Lead: Gianni Cutri (Reg. No ) Back-Up: Jared Barcenas (Reg. No ) Postal/Hand-Delivery Address: Kirkland & Ellis LLP 300 North LaSalle Street Chicago, Illinois Telephone: (312) Facsimile: (312) Petitioners submit a Power of Attorney. 37 C.F.R (b). Petitioners consent to service: TriZetto-CBMR-SVC@kirkland.com. II. 37 C.F.R : PAYMENT OF FEES The undersigned authorize the Office to charge the fee set forth in 37 C.F.R (a) for this Petition to Deposit Account No Review of seven (7) claims is requested; no excess claim fee is submitted. The undersigned further authorize payment for any additional fees that may be due in connection with this Petition to be charged to the above-referenced Deposit Account. III. 37 C.F.R (A): GROUNDS FOR STANDING A. The 609 Patent Is a Covered Business Method Patent. The 609 Patent is a covered business method patent. (See Section VI.) B. 37 C.F.R (a): Petitioners Are Eligible to File a CBMR. Care N Care has been sued for alleged infringement of the 609 Patent in Case No cv (E.D. Tex.), and TriZetto is indemnifying Care N Care. 2

10 C. 37 C.F.R (b): Petitioners Are Not Estopped. Petitioners certify the 609 Patent is available for CBMR and Petitioners are not estopped from requesting CBMR of the Challenged Claims on the identified grounds. Petitioners certify: (1) they do not own the 609 Patent; (2) they have not filed a civil action challenging the validity of any claim of the 609 Patent; (3) the estoppel provisions of 35 U.S.C. 325(e)(1) do not prohibit CBMR of the 609 Patent; and (4) this Petition is filed after the 609 Patent was granted. IV. 37 C.F.R (B): IDENTIFICATION OF CHALLENGE Petitioners request the Challenged Claims be found unpatentable. A. 37 C.F.R (b)(1): Claims for Which CBMR Is Requested Petitioners request CBMR of the Challenged Claims. B. 37 C.F.R (b)(2): Statutory Grounds On Which the Challenge is Based CBMR is requested pursuant to 35 U.S.C. 101, and 103. C. 37 C.F.R (b)(3): Claim Construction A claim of an unexpired patent in CBMR is given the broadest reasonable interpretation in light of the specification to one having ordinary skill in the art. 37 C.F.R (b). Petitioners contend that preambles of the independent claims are not limiting. For the purposes of this CBMR only, Petitioners propose the plain and ordinary meaning should be used for all terms. 3

11 D. 37 C.F.R (b)(4): How the Claims Are Unpatentable A detailed explanation of unpatentability is provided in Section VII. E. 37 C.F.R (b)(5): Evidence Supporting Challenge An Appendix of Exhibits is attached. Relevance of the evidence, including specific portions, is provided in Section VII. V. PRELIMINARY STATEMENT The 609 Patent is eligible for CBMR because it clearly claims methods and corresponding apparatuses for performing data processing... used in the practice, administration, or management of a financial product or service and does not claim a technological invention. Patent Owner ICS claims that the alleged invention of the 609 Patent is computerizing the processing of insurance claims that have attachments. There is no dispute that insurance claims processing was already performed using a process that contained both computerized and manual steps. The 609 Patent states that its purported invention, computerizing those manual steps, is [t]he natural next stage in the development of claims processing systems.... Ex at 3: But the Supreme Court and the Federal Circuit have confirmed this approach simply reciting a well-known, abstract idea while adding the words apply it with a computer, render the claims ineligible under 35 U.S.C Alice Corp. Pty. Ltd. v. CLS Bank Int l, 134 S. Ct. 2347, 2350 (2014). The Challenged Claims are also invalid under 35 U.S.C. 103 in view of the prior art, in particular based on: 4

12 (1) U.S. Patent No. 5,258,855 ( Lech ), entitled Information Processing Methodology, (Ex. 1009) and (2) U.S. Patent No. 5,054,096 ( Beizer ), entitled Method and Apparatus for Converting Documents Into Electronic Data for Transaction Processing, (Ex. 1010) both prior art under pre-aia 35 U.S.C. 102(b). Secondary considerations do not support a finding of nonobviousness. There is no evidence ICS will be able to show commercial success, long-felt need, failure of others, skepticism, praise, teaching away, recognition of a problem, or copying by competitors. Should ICS put forth any allegations regarding secondary considerations of nonobviousness, Petitioners request an opportunity to respond. VI. THE 609 PATENT IS A COVERED BUSINESS METHOD PATENT The AIA and USPTO Rules define a covered business method ( CBM ) patent as one 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, except that the term does not include patents for technological inventions. AIA 18(d)(1) ; 37 C.F.R (a). The AIA and USPTO Rules thus define a two-part test to determine whether a patent is a covered business method patent: (1) the patent must claim 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; 5

13 and (2) the claimed invention must not be a technological invention[]. Id. The 609 Patent satisfies the test. A. The 609 Patent 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. According to the AIA s legislative history, patents should be eligible for CBMR if they cover any ancillary activities related to a financial product or service, including... marketing, customer interfaces, Web site management and functionality, transmission or management of data, servicing, underwriting, customer communications, and back office operations-e.g., payment processing, stock clearing. 157 CONG. REC. S (daily ed. Mar. 8, 2011) (statement of Sen. Schumer) (Ex. 1011) (emphasis added). The Board has explained that the phrase financial product or service should be interpreted broadly. Apple Inc. v. SightSound Techs., LLC, CBM , Paper 14 at 11 (PTAB Oct. 8, 2013); see also 77 Fed. Reg. 48,735 (Aug. 14, 2012) (Ex. 1024) ( financial product or service should be interpreted broadly ). It has also explained that the word financial is just an adjective that simply means relating to monetary matters. SAP Am., Inc. v. Versata Dev. Grp., Inc., CBM , Paper 36 at 23 (PTAB Jan. 9, 2013). Consequently, the definition encompasses patents that claim activities that are financial in nature, incidental to a financial activity or 6

14 complementary to a financial activity. CRS Advanced Techs., Inc. v. Frontline Techs., Inc., CBM , Paper 17 at 7 (PTAB Jan. 23, 2013). In addition, [a] patent having one or more claims directed to a covered business method is a covered business method patent for purposes of the review, even if the patent includes additional claims. 77 Fed. Reg. at 48,736 (Aug. 14, 2012) (Ex. 1024); see also Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co., CBM , Paper 66 at 6 (PTAB Jan. 23, 2014) (entire patent eligible for CBMR where the subject matter of at least one claim is directed to a covered business method ). In other words, as Patent Owner ICS has conceded in its preliminary response to a CBMR petition in connection with a related patent, 1 [a] patent need have only one claim directed to a covered business method to be eligible for review. Ex at Claims 81 and Are Expressly Directed to a Method and Corresponding Apparatus for Performing Data Processing Used In the Administration of a Financial Product. The 609 Patent contains at least seven claims Claims 81 and that are expressly directed to a method or corresponding apparatus for performing data processing... used in the practice, administration, or management of a financial 1 U.S. Patent No. 7,178,020, which issued from an application that is the parent of the application that issued as the 609 Patent. 7

15 product or service, namely, processing insurance claim forms. AIA 18(d)(1); 37 C.F.R (a). Method Claim 81 is representative ( A computer implemented method, for processing electronic communications, the method comprises the steps of: receiving [...] an electronic communication [...] wherein at least some of the N1 identifiable data fields comprise insurance transaction data [...]; storing the electronic communication [...]; [and] processing the electronic communication [...] wherein the second digital data comprises insurance transaction data [....] ). 2 Ex at Claim 81. This claim thus expressly relates to processing data in an insurance claim form, which is quintessentially a financial product or service. See Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co., CBM , Paper 13 at 6 (PTAB Jan. 27, 2013) (noting that health insurance, property-casualty insurance, and liability insurance are all financial product[s] ); see also AMERICAN HERITAGE COLLEGE DICTIONARY at 705 (3d ed. 1997) (Ex. 1012) (defining insurance as an agreement to indemnify another against specified loss in return for premiums paid ). Indeed, the Board has explained that [a]djudicating an insurance claim and processing payment for that claim are inherently financial activities for purposes of CBM standing. Gillman v. StoneEagle Servs., Inc., CBM , Paper 11 at 8 2 Emphasis has been added in the language citing the 609 Patent throughout this petition for ease of review. 8

16 (PTAB Feb. 18, 2014) (denying institution on other grounds). More specifically, Claim 81 relates to processing insurance claim forms, which is one facet of the administration of an insurance policy. It describes a method for receiving insurance data (including an attachment) over the computer, storing the data, and determining parts of that data to be entered in a graphic user interface. Hence, it clearly meets the requirement of being a method or corresponding apparatus for performing data processing... used in the practice, administration, or management of a financial product or service. Further, the Background of the Invention in the 609 Patent states that High administrative costs for filing and processing health insurance claims have been the bane of the health insurance industry from its inception. Ex at 2: The patent goes on to state that [i]t is also estimated that if a coherent electronic system could be implemented, it would reduce these administrative costs to $15 per PAC and $5 per Final Payment claim. Ex at 4: As explained below, the patent purports to address these administrative costs (albeit merely by attempting to computerize the well-known idea of processing and administering insurance claim forms). Additionally, the 609 Patent relates to the determination by an insurance company whether the insurance claim is approved and the extent to which any money is paid from the insurance company to the medical professional. The 609 Patent specification explains that [i]n the area of 9

17 Prior Approval Claims, the goals of insurance companies are to validate the necessity of the procedure and to determine whether the patient s insurance policy obligates the insurance company to pay for [it]. Ex at 4: Thus, the 609 Patent relates to the administration of a financial product, in this case insurance. 2. The 609 Patent Describes its Claimed Invention as Being Directed to Data Processing Used in the Administration of a Financial Product. The specification of the 609 Patent confirms that the claimed invention is directed to CBM subject matter. A patent will be subject to CBM review if the specification makes clear that the claimed invention has particular application involving financial activities. See Salesforce.com, Inc. v. VirtualAgility, Inc., CBM , Paper 16 at 11 (PTAB Nov. 19, 2013). The alleged invention of the 609 Patent, according to the specification, relates to an AIC [attachment integrated claims] system for preparing and processing digital insurance claims, (Ex at 1:43 44), and the first purpose attributed to the alleged invention is to create a coherent system that allows for the electronic filing, transmission, and processing of insurance claims with attachments (id. at 8:30 32). Insurance is indisputably a financial product or service. See Liberty Mut. Ins. Co., CBM , Paper 13 at 6. Processing insurance claims electronically (with or without attachments) is obviously data processing, and insurance claims 10

18 are one facet of the administration of an insurance policy. Thus, as its specification confirms, the 609 Patent s claimed invention is directed to data processing... used in the practice, administration, or management of a financial product or service. 3. That the 609 Patent Has Been Asserted Against Insurance Companies, and ICS s Infringement Allegations, Confirms It Relates to a Financial Product or Service. That the 609 Patent relates to a financial product or service is confirmed both by (1) ICS s assertion of it against numerous insurance companies, and (2) ICS s assertions as to what specific instrumentality allegedly infringes the 609 Patent. According to the AIA s legislative history, if a patent holder alleges that a financial product or service infringes its patent, that patent shall be deemed to cover a financial product or service. 157 CONG. REC. S1365 (daily ed. Mar. 8, 2011) (statement of Sen. Schumer) (Ex. 1011). While not dispositive, the Board views infringement allegations as one factor to be considered in deciding whether a patent is directed to CBM subject matter. PNC Fin. Servs. Grp., Inc. v. Intellectual Ventures I LLC, CBM , Paper 13 at 14 (PTAB May 22, 2014). ICS has asserted the 609 Patent in litigation against at least six insurance and insurance claims processing companies, including United Dental Care of Texas, Molina Healthcare of Texas, Southern Vanguard Insurance Company, Care 11

19 N Care Insurance Company, Community Health Choice, and ConnectiCare, Inc. See Section I.B, supra. ICS s specific infringement allegations in district court litigation confirm that ICS believes the 609 Patent covers the processing of insurance claims. In Care N Care Ins. Co., No. 2:14-cv (E.D. Tex.), for example, ICS has accused Care N Care s Insurance Claim System of infringing the Challenged Claims of the 609 Patent. Ex (Complaint) at 6. ICS has alleged that Care N Care infringes the 609 Patent by virtue of processing an insurance claim submitted by a provider in accordance with [ANSI ASC] X12N standards such as 837 and 275. Ex The ANSI ASC X12N 837 standard pertains to a format for submitting health care insurance claims billing information. By alleging that processing insurance claims submitted in this format constitutes infringement, ICS has itself made clear that the 609 Patent relates to a financial product or service, namely insurance. B. The Challenged Claims Do Not Recite a Technological Invention. As noted, the definition of a CBM patent does not include patents for technological inventions. AIA 18(d)(1); 37 C.F.R (a). This exception excludes only those patents whose claimed subject matter as a whole (1) recites a technological feature that is novel and unobvious over the prior art and (2) solves a technical problem using a technical solution. 37 C.F.R (b); see also 77 12

20 Fed. Reg. 48,736 (Aug. 14, 2012) (Ex. 1024) ( solves a technical problem using a technical solution is with respect to the claimed subject matter as a whole ); 157 CONG. REC. S1364 (daily ed. Mar. 8, 2011) (statement of Sen. Schumer) (only those patents whose novelty turns on a technological innovation over the prior art and [which] are concerned with a technical problem which is solved with a technical solution and which requires the claims to state the technical features which the inventor desires to protect should be excluded from CBMR). Ex at S1364. The Patent Office and the PTAB have made clear that both prongs must be met for a patent to be excluded from CBMR. 77 Fed. Reg (Ex. 1024) (explaining that conjunctive test represents the best policy choice ); see also Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co., CBM , Paper 15 at 10 (PTAB Feb. 12, 2013) ( To qualify under the technological invention exception, the claimed subject matter as a whole must satisfy both of the following prongs. ). If at least one challenged claim fails the technological invention exception, the entire patent is not exempt from CBMR. See Am. Express Co. v. Lunenfeld, CBM , Paper 17 at 13 (PTAB June 18, 2014) ( [B]ecause at least claim 1... recites the use of known prior art technology, on this record, the [] patent is not exempt from covered business method patent review due to a 13

21 technological invention exception. ). None of the Challenged Claims meet either prong of the test. 1. The Challenged Claims Do Not Recite a Technological Feature That Is Novel and Non-obvious Over the Prior Art. None of the challenged claims meet the first prong, namely, recit[ing] a technological feature that is novel and unobvious over the prior art. 37 C.F.R (b). Mere recitation of known technologies, such as computer hardware, communication or computer networks, software, memory, computer-readable storage medium, scanners, display devices or databases, or [r]eciting the use of known prior art technology to accomplish a process or method, even if that process or method is novel and non-obvious, or [c]ombining prior art structures to achieve the normal, expected, or predictable result of that combination will not typically render a patent a technological invention. 77 Fed. Reg. 48,756, 48,764 (Aug. 14, 2012) (Ex. 1025); Am. Express Co., CBM , Paper 17 at A claim recites a technological invention only if it recites novel technological features. See Bloomberg Inc. v. Markets-Alert PTY Ltd., CBM , Paper 18 at 6 7 (PTAB Mar. 29, 2013); CRS Advanced Techs., Inc., CBM , Paper 17 at 9. The Challenged Claims recite only the use of well-known technology that was common-place when the 609 Patent s application was filed. Claim 81 is a computer implemented method, for processing electronic communications that 14

22 only recites the use of known prior art technology. In particular, it recites the steps of: (1) receiving, from a source external to a computer system, an electronic communication comprising digital data arranged in a set of fields, where some of the fields are insurance transaction data; (2) storing the electronic communication; and (3) processing the electronic communication by: displaying a graphic user interface, and selecting the data to be entered into the graphic user interface from the data contained in the received electronic communication. Ex at Claim 81. These steps all consist of the use of known technologies. Receiving electronic communication by a computer from an external source (step 1) was a known technology in use well before the priority date of the 609 Patent. E.g., Ex at 2:22 36 (explaining that use of personal computers with modems to transmit information from the health provider s computer to the insurance provider s computer system was known in the prior art); Bysinger Decl Storage of the received information (step 2) was also known in the prior art. E.g., Ex at 1:66 2:5 (explaining that storage of claim information on computers was known in the prior art); 77 Fed. Reg. 48,764 (Ex. 1025) (stating that a memory and computer readable storage medium were known technolog[ies] whose recitation does not typically render a patent a technological invention); 3 Citations referencing Bysinger Decl. refer to the declaration of Dr. Wallace G. Bysinger, attached hereto as Exhibit

23 Bysinger Decl. 36, 37. The third step also uses only known technology. First, graphical user displays were well known. Bysinger Decl. 24. Second, selecting which pieces of information to display on the graphic user interface does not use any technology. Indeed, the claim is silent as to how this determination is made, other than to say that it uses a logic process which can also be done as a mental step. Claim 83 depends from Claim 81 and simply adds that the received digital data include patient healthcare data and be received from a healthcare provider. Ex at Claim 83. Requiring patient healthcare data to be included in the communication sent from a healthcare provider does not use any novel or nonobvious technology. Claim 84 also depends from Claim 81, and similar to Claim 83, requires the received communication to have certain information here, patient and physician identification. Ex at Claim 84. For the same reason as for Claim 83, this claim does not use any new or non-obvious technology. Claim 85 depends from Claim 81 and adds the step of receiving additional digital data into at least one field of the graphic user interface. Ex at Claim 85. Receiving data into a field of graphic user interface entails conventional software programming and no novel or non-obvious technology. Bysinger Decl. 42, 46. Claim 86 depends from Claim 81 and adds the step of copying the received digital data from one of the fields to a field in the graphic user interface. The act of 16

24 copying digital data to a field of a graphic user interface entails conventional software programming, not any new or non-obvious technology. Bysinger Decl. 45. Claim 87 depends from Claim 81 and adds the step of printing at least some of the digital data in the graphic user interface. Printing digital data uses conventional software programming and hardware (a printer) and does not entail any new or non-obvious technology. Claim 88 also depends from Claim 81 and adds the step of transmitting at least some of the digital data to be entered in the graphic user interface. Ex at Claim 88. As discussed in connection with Claim 1, transmitting digital data requires only conventional technology and adds no novel and non-obvious technology to Claim 81. E.g., Ex at 2:22 36 (explaining that use of personal computers with modems to transmit information from the health provider s computer to the insurance provider s computer system was known in the prior art); Bysinger Decl. 46. In sum, none of the Challenged Claims recites a technological feature that is novel and non-obvious over the prior art. Instead, they recite only well-known technology, such as receiving electronic communication, storing the electronic communication, displaying [a] graphic user interface, determining digital data to enter into the graphic user interface, and printing digital data. Even when examined as a whole, none of the Challenged Claims recite a combination of technological features that could be considered novel or non- 17

25 obvious. These are generic tasks that could be done with conventional software and hardware well before the priority date of the 609 Patent. Importantly, even if the methods recited in the Challenged Claims were novel and non-obvious (which they are not; see section VII.C. infra), that would not transform these claims into technological inventions. See 77 Fed. Reg. 48,756, 48,764 (Aug. 14, 2012) (Ex. 1025) (not enough merely to [r]ecit[e] the use of known prior art technology to accomplish a process or method, even if that process or method is novel and nonobvious ) (emphasis added). The technological invention exception does not apply because the Challenged Claims all fail to recite any novel and non-obvious technological feature. 2. The Challenged Claims Do Not Solve a Technical Problem Using a Technical Solution. By its own admission, the 609 Patent does not solve a technical problem with a novel technical solution. Rather, it purports to solve an alleged business problem simply by [c]ombining prior art structures to achieve the normal, expected, or predictable result of that combination. 77 Fed. Reg. 48,756, 48,764 (Aug. 14, 2012) (Ex. 1025). This is an independent reason that the technological invention exception does not apply. See 37 C.F.R (b). a. The Alleged Problem is Non-Technical. The 609 Patent attempts to address an alleged business problem, namely: how to process insurance claims that have attachments. Ex at 8:

26 (purpose of present invention is to create a coherent system that allows for the electronic filing, transmission, and processing of insurance claims with attachments ). According to the 609 Patent, insurance claims have been processed entirely on paper. Id. at 1: A coherent system for the electronic filing, transmission, and processing of insurance claims already existed and was employed by thousands of [healthcare] providers and hundreds of insurance companies at the time the 609 Patent s application was filed. Id. at 2:66 3:2. However, according to the 609 Patent, there were still some types of claims known as claims with attachments that were handled using a hybrid system involving some electronic and some manual (i.e., hard copy / paper) processing. Id. at 3:10 14, 4:7 15. In other words, the process for claims with attachments was well-known, but partially manual (i.e., paper-based). Continuing to process these claims partially in paper form was allegedly labor intensive, prone to problems, and slow, which the patentee says made it time-consuming, costly and irritating. Id. at 4: The 609 Patent s invention allegedly was motivated by the desire to overcome the problems associated with the... hybrid system for processing claims with attachments. Id. at 8: The 609 Patent s proposed solution to the alleged problems of paper-based processing of insurance claims with attachments was to computerize[] this process, which it described as [t]he 19

27 natural next stage in the development of claims processing systems. Id. at 3: The alleged problems associated with the hybrid system for processing claims with attachments that it was labor intensive, prone to problems, and slow, and time-consuming, costly and irritating are not technical problems. No scientific or technical knowledge is needed to understand the alleged problem that the 609 Patent seeks to solve, which demonstrates that the alleged problem is not technical. Instead the alleged problems that the 609 Patent seeks to solve (i.e. that processing paper forms is labor intensive, prone to problems, and slow, and time-consuming, costly and irritating ) are generic business process problems faced by any business that relies on paper forms. In Coupa Software, Inc. v. Ariba, Inc., the Board addressed a patent whose goal was making a business process more efficient, and concluded that such a goal does not qualify as solv[ing] a technical problem : Petitioner also argues that the... patent makes clear that the problem being addressed was to make more efficient the business process of purchasing which is not a technical problem.... [W]e agree with Petitioner that the... patent s suggestion that the invention improves the efficiency of the procurement process is not a technical solution to a technical problem. Rather, the solution is based on the improvement of a business process, which is directed to 20

28 the problem of how that process is presented to users, as opposed to being a technical problem. CBM , Paper 11 at 9 10 (PTAB July 25, 2014). Here, similarly, the 609 Patent is directed at solving an alleged problem of (in)efficiency in a particular business process namely, paper-based insurance claims processing which is not a technical problem. b. To the Extent the Challenged Claims Solve Any Alleged Problem, They Do So Only By Reciting Well-Known Prior Art Technology. The Challenged Claims do not us[e] a technical solution to the alleged problems and therefore they do not qualify for the technological invention exception. Challenged Claims 83, 84, 85, 86, and 88 recite no technological features at all. They simply recite a pure method of Claim 81 and recite either what type of data is received or where that data is sent. With no technological features, they ipso facto cannot be a technical solution to any alleged problem. The remaining Challenged Claims 81 and 87 recite very few technological features, such as an electrical communication comprising [] digital data having various a data fields, a graphic user interface with data fields, and the storage of the electronic communication (Claim 81); and printing the digital data (Claim 87). As explained above (see Section VI.B.1., supra), all of these are carried out by well-known, conventional technologies that was in the prior art. For purposes of 21

29 the technological invention exception, however, it is not enough that the invention makes use of technological systems, features, or components, because [u]se of technology is ubiquitous and on some level underlies virtually every invention. Coresource, Inc. v. Quality Healthcare Intermediary, LLC, CBM , Paper 9 at 8 (PTAB July 28, 2014). Moreover, as already explained, every technological feature recited in the Challenged Claims is generic, well-known computer hardware that was in the prior art. See Section VI.B.1., supra. VII. IT IS MORE LIKELY THAN NOT THAT THE CHALLENGED CLAIMS ARE UNPATENTABLE. A. Description of the Alleged Invention of the 609 Patent The 609 Patent attempts to solve an alleged problem related to processing insurance claim forms. See Section VI.B.2.a. It admits that at the time of the alleged invention, insurance claims processing had already largely been computerized more specifically, that a coherent system already existed that allowed for the electronic filing, transmission, and processing of insurance claims, and that this system was employed by thousands of providers and hundreds of insurance companies. Ex at 1:66 2:7, 2:22 31, 2:66 3:2. According to the 609 Patent, however, claims with attachments were still handled using a hybrid system that involved some electronic and some manual (i.e., hard copy / paper) processing. Id. at 3:10 15, 4:7 18. It proposed to solve this problem by computerize[ing] this process, which it describes as [t]he 22

30 natural next stage in the development of claims processing systems. Id. at 3:34 35, 8: Consistent with this understanding, the 609 Patent s exemplary embodiment of the essential steps of the claimed invention (id. at 10:65 11:2) amounts to little more than describing the existing paper-based process and saying do it on a computer. Compare, e.g., id. at 5:22 6:64 ( the PAC form is filled out entirely by hand... [t]he form and the x-rays are placed in the envelope... the envelope is mailed ) with id. at 10:66 11:12:67 (alleged invention calls for [f]iling out [the] PAC form on the computer screen; [d]igitizing, e.g., scanning, the patient s x-ray [and]... [t]ransmitting... to the designated insurance company ). B. Ground 1: The Challenged Claims Are Not Patent-Eligible Under 35 U.S.C The Challenged Claims are not patent eligible under 35 U.S.C They embody the abstract idea of transmitting or copying information from a source to a destination, and add little more than a token, conventional, and wholly generic computer implementation. Also, none of the Challenged Claims satisfy the Federal Circuit s machine-or-transformation test, which is a useful and important clue that they are not patent-eligible. See Bilski v. Kappos, 561 U.S. at 593, (2010). 1. Claims That Recite Abstract Ideas Implemented Using General-Purpose Computer Components Are Not Patent Eligible. 23

31 Section 101 of the Patent Act has long had an important implicit exception, that [l]aws of nature, natural phenomena, and abstract ideas are not patentable. Alice, 134 S. Ct. at For example, one cannot patent the concept of intermediated settlement, i.e., using a third party to permit only those transactions for which there are sufficient funds (id.), the concept of verifying the validity of credit card transaction[s] over the Internet (CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011)), or the abstract idea of offering free media in exchange for watching advertisements (Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714 (Fed. Cir. 2014)). [T]he concern that drives this exclusionary principle [is] one of pre-emption. Alice, 134 S. Ct. at Patents directed to abstract ideas risk disproportionately tying up the use of the underlying ideas. Id. In Mayo Collaborative Servs. v. Prometheus Labs., Inc. and Alice Corp. Pty. Ltd. v. CLS Bank Int l, the Supreme Court established a two-step framework for applying this exception to 101 patent eligibility. Alice, 134 S. Ct. at 2355; see Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, (2012). The first step is to determine whether the claims at issue are directed to one of those patent-ineligible concepts laws of nature, natural phenomena, or abstract ideas. Alice, 134 S. Ct. at 2355; see Mayo, 132 S. Ct. at Regardless of what statutory category... a claim s language is crafted to literally 24

32 invoke, it is necessary to look to the underlying invention for patent-eligibility purposes. CyberSource, 654 F.3d at In other words, the claimed invention should be viewed in its simplest form. See Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012). [W]ell-established, fundamental concepts fall within the category of abstract ideas. Cyberfone Sys., LLC v. CNN Interactive Grp., Inc., 558 F. App x 988, 991 (Fed. Cir. 2014) (Ex. 1022). If they are directed to a patent-ineligible concept, the second step is to ask what else is there in the claim...? Alice, 134 S. Ct. at 2355; Mayo, 132 S. Ct. at This second step is a search for an inventive concept, that is, 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; Mayo, 132 S. Ct. at A claim that recites an abstract idea must include additional features to ensure that the claim is more than a drafting effort designed to monopolize the abstract idea. Alice, 134 S. Ct. at 2357; see also Mayo, 132 S. Ct. at Simply appending conventional steps, specified at a high level of generality, [is] not enough to supply an inventive concept. Alice, 134 S. Ct. at 2357; see also Mayo, 132 S. Ct. at For example, mere recitation of a generic computer cannot transform a patentineligible abstract idea into a patent-eligible invention, because [g]iven the ubiquity of computers... wholly generic computer implementation is not 25

33 generally the sort of additional feature that provides any practical assurance that the process is more than a drafting effort designed to monopolize the abstract idea itself. Alice, 134 S. Ct. at 2358; see also Mayo, 132 S. Ct. at It is also not enough to limit[] an abstract idea to one field of use, or add token postsolution components, Kappos, 561 U.S. at , or limit the use of the idea to a particular technological environment, Alice, 134 S. Ct. at However, if a patent is directed to a problem specifically arising in the realm of computer networks and claims a solution necessarily rooted in computer technology, it may pass muster under 101. DDR Holdings, LLC v. Hotels.com, L.P., , 2014 WL , at *10 (Fed. Cir. Dec. 5, 2014) (Ex. 1019). In addition to the two-step framework of Mayo and Alice, the Supreme Court has said that the Federal Circuit s machine-or-transformation test can play a part in analyzing patent eligibility under 101. See Kappos, 561 U.S. at 593. The machine-or-transformation test asks whether the claimed invention (1) is tied to a particular machine or apparatus or (2) transforms a particular article into a different state or thing. In re Bilski, 545 F.3d 943, 954 (Fed. Cir. 2008). To satisfy the test, the use of a specific machine or transformation of an article must impose meaningful limits on the claim s scope. Id. at 961. Simply manipulating public or private legal obligations or relationships, business risks, or other such abstractions cannot meet the test because they are not physical objects or 26

34 substances, and they are not representative of physical objects or substances. Ultramercial, 772 F.3d at 717. While not dispositive, the test can provide a useful and important clue to patent eligibility. Kappos, 561 U.S. at Alice Step 1: The Challenged Claims Are Drawn to an Abstract Idea. As noted, the concern underlying the exception to 101 is one of preemption. Alice, 134 S. Ct. at First, in the district court case against Petitioner Care N Care, ICS claims that a system and method allowing the electronic submission and processing of insurance claims and corresponding electronic attachments, and the auto adjudication of insurance claims (the Insurance Claim System ) infringes the 609 Patent. Ex at 4, 6. ICS further claims that not only Care N Care but its vendors, insurance providers, customers and others infringe the 609 Patent (Ex at 6) and that, further, anyone processing claims according to an industry standard for formatting insurance claims (the ANSI ASC X12 standard) is also an infringer. Ex at 2. In other words, ICS seeks to preempt the entire field of the electronic submission and processing of insurance claims and corresponding electronic attachments as well as the auto adjudication of insurance claims. By essentially claiming an abstract idea with no inventive concept, the Challenged Claims raise serious preemption concerns. 27

35 Further, the 609 Patent itself states that the patent is not limited to insurance claim processing: the present invention is not limited to systems for the processing of dental insurance claims. Rather, the present invention encompasses the preparation, transmission and processing of data packages including a plurality of data fields wherein at least one of the data fields is a digital attachment, e.g., a digital or graphic image. Ex at 10: But in doing so, the Challenged Claims risk disproportionately tying up the use of the underlying idea[], Alice, 134 S. Ct. at , which is merely the transmission of text with accompanying attachments. This is strong evidence that the Challenged Claims are ineligible for patent protection. As noted, the first step in the 101 analysis is to determine whether the claims at issue are directed to one of those patent-ineligible concepts such as an abstract idea. Alice, 134 S. Ct. at 2355; see Mayo, 132 S. Ct. at The Challenged Claims clearly are. Claim 81 reads: 81. A computer implemented method, for processing electronic communications, the method comprises the steps of: receiving [...] an electronic communication [...] wherein at least some of the N1 identifiable data fields comprise insurance transaction data [...]; storing the electronic communication [...]; [and] processing the electronic communication by [...] determining second digital data to be entered in at least one field in the set of N2 identifiable fields [...] 28

36 wherein the second digital data comprises insurance transaction data [....] ). Ex at Claim 81. Distilled to its essence, Claim 81 is directed to the abstract idea of receiving information, storing it, and determining which of its parts to enter into a display. Copying information from a source to a destination is something that humans have been doing on paper for thousands of years-- indeed, essentially since the dawn of written language. For example, until they were largely supplanted by the printing press, scribes in the Middle Ages would laboriously hand-produce verbatim copies of written works; these were known as manuscripts (from the Latin manu scriptus, literally written by hand ). See Peter K. Yu, Of Monks, Medieval Scribes, and Middlemen, 2006 Mich. St. L. Rev. 1, 3 4, 10 (2006) (Ex. 1015). Scribes would begin with an existing written text (a first file ) and copy each word ( identifiable field ) verbatim onto new parchment or vellum (a second file ). The 609 Patent itself offers another, more recent example from the field of insurance claims processing; it describes that in the prior art, the envelope finally arrives at the mail room 320 of the insurance company 300 at step S14. In the mail room, the envelope is opened (step S15), the data from the PAC form is entered into the insurance company s mainframe computer 350 and is given a Document Identification Number 29

37 (DIN) that identifies the patient and the current claim application (step S16). See task T2 in FIG. 1. During step S17, the x-ray is labeled with the same DIN. It will be appreciated that the DIN on the x-ray and in the document now on the mainframe computer must be identical.during step S18, the x-ray is manually forwarded to the reviewing dentist s area. See task T3 in FIG. 1. During step S20, a group of x-rays arrives from the mail room at the reviewing dentist s area. A film x-ray is pulled out of the waiting pile by the dentist during step S21 and the reviewing dentist then accesses the PAC form directory during step S22 by, for example, reading the DIN from the x-ray and typing the DIN into the computer. The electronic PAC form corresponding to this x-ray is located in memory and downloaded to the reviewing dentist s monitor during step S23. Ex at 5:54 6:13. Thus, the applicant himself acknowledged that thenexisting processes for handling insurance claims involved receiving information in paper form from another source (i.e., receiving, from a source external to a computer system, an electronic communication ), entering (and therefore, storing) that information on the insurance provider s computers ( storing the electronic communication in memory ), and subsequently displaying that information on a monitor ( determining [] digital data to be entered in at least one field [of a graphic user interface] using at least some of the insurance transaction data in 30

38 the [electronic communication] ). Examples from other times and other fields of endeavor could fill volumes. Transmitting information from one source to a destination and determining the parts of that information to show is a wellestablished, fundamental concept[] that falls within the category of abstract ideas. See Cyberfone, 558 F. App x at 991. Claims 83 88, because they depend from Claim 81, are likewise directed to the same abstract idea. The Federal Circuit has dealt with patent claims remarkably similar to the Challenged Claims in Content Extraction and Transmission v. Wells Fargo Bank, N.A., disposing of them as patent ineligible under 101. See Content Extraction and Transmission v. Wells Fargo Bank, N.A., No , et al., 2014 WL , at *4 4 (Fed. Cir. Dec. 23, 2014) (Ex. 1018) (hereinafter CET ). In CET, the patent at issue, U.S. Patent No. 5,258,855, issued to Lech (hereinafter Lech ). Importantly, this same patent provides the basis for Petitioners 103 arguments below. Thus, given the substantial overlap between Lech and the Challenged Claims, the Federal Circuit s holdings are particularly instructive. 4 Not only are the Challenged Claims similar to those in CET for purposes of 101, they are obvious under 103 based on U.S. Patent No. 5,258,855 ( Lech ), one of the patents invalidated in CET, as described below. 31

39 The claims at issue in CET were patent ineligible because they were directed to the abstract idea of 1) collecting data, 2) recognizing certain data within the collected data set, and 3) storing that recognized data. Id. at *3. The Federal Circuit explained that the concept of data collection, recognition, and storage is undisputedly well-known. Indeed, humans have always performed these functions. Id. at *3. The same is true in the instant case, including because the patentee himself confirmed that the copying of data from one file to another was already well known by the time of the invention. See Ex at 2:17 21 (admitting that, in the prior art systems, the data for each paper claim had to be entered into the computer to form an electronic claim which was accomplished by transcribing exactly the same information that had been handwritten into the original paper claim before it was sent to the insurance company. ). And like the patentee in CET, ICS cannot escape the conclusion that its patents are drawn to an abstract idea by pointing to the use of a computer, scanner, or other bit-processing device. The Federal Circuit explicitly rejected the argument that claims do not cover an abstract idea because human minds are unable to process and recognize the stream of bits output by a scanner, holding that the claims in Alice also required a computer that processed streams of bits, but nonetheless were found to be abstract. See CET, 2014 WL , at *3. 32

40 This is very similar to the abstract idea at issue here: Claim 81 s step of determining which parts of the information to enter into a graphical display is analogous to the step in CET of recognizing certain data within the collected data set. Likewise, the Claim 81 s steps of receiving information and storing it are analogous to the CET of collecting data and storing [the] recognized data. As another instructive example, in Cyberfone Sys., LLC v. CNN Interactive Grp., Inc., the Federal Circuit dealt with patent claims very similar to the Challenged Claims, concluding that they were directed to an abstract concept and were therefore patent-ineligible under 101. See 558 F. App x 988, (Fed. Cir. 2014). The claims in Cyberfone recited a method comprising (1) obtaining data transaction information, from a single transmission, (2) forming a plurality of different exploded data transactions from the single transmission, and (3) sending said different exploded data transactions over a channel to said different destinations.... Id. at 990. In the court s view, the claimed method essentially required obtaining data, exploding the data, i.e., separating it into component parts, and sending those parts to different destinations. Id. Noting that using categories to organize, store, and transmit information is well-established, the Federal Circuit concluded that the idea of collecting information... then separating and transmitting that information according to its classification, is an abstract idea that is not patent-eligible. Id. at 992. The Challenged Claims are 33

41 like the claims in Cyberfone but even more abstract because they do not require any data be classified or categorized before being sent on. Indeed, nearly all of the Challenged Claims can clearly be described as directed to methods of obtaining data... separating it into component parts, and sending those parts to different destinations that the Federal Circuit in Cyberfone held embodied an abstract idea. Cyberfone, 558 F. App x at Alice Step 2: Nothing In the Challenged Claims Supplies an Inventive Concept. Nothing in the Challenged Claims, either individually or viewed as an ordered combination (Alice, 134 S. Ct. at 2355), supplies an inventive concept sufficient to transform the embodied abstract idea into a patent-eligible invention. At best, the Challenged Claims add only token, conventional computer hardware, set forth, if at all, at a high level of generality. In other words, the Challenged Claims do precisely what the Supreme Court has said is insufficient for 101: they recite an abstract idea and then say apply it with a computer. Alice, 134 S. Ct. at And sometimes, the Challenged Claims do not even add this much, as in Claim 81, explained below. Consequently, the Challenged Claims all fail step two of the Mayo-Alice framework. The Challenged Claims also all fail the Federal Circuit s machine-ortransformation test because none of the machines recited impose meaningful limits on the claim s scope (indeed, some of the Challenged Claims recite no machines at 34

42 all) and because they are directed merely at collection and organization of data. This fact is a useful clue in the second step of the Alice framework that they are not patent-eligible. Ultramercial, 772 F.3d at 716; see also Kappos, 561 U.S. at 603. Here again, CET is instructive. Examining the claims in Lech, which overlap almost entirely with the Challenged Claims here, the Federal Circuit explained that the claims in Lech: merely recite the use of this existing scanning and processing technology to recognize and store data from specific data fields such as amounts, addresses, and dates. There is no inventive concept in CET s use of a generic scanner and computer to perform wellunderstood, routine, and conventional activities commonly used in industry. See Alice, 134 S.Ct. at At most, CET s claims attempt to limit the abstract idea of recognizing and storing information from hard copy documents using a scanner and a computer to a particular technological environment. Such a limitation has been held insufficient to save a claim in this context. See CET, 2014 WL , at *4. Here, the Challenged Claims also nothing more than an abstract idea, in some cases also accompanied by the recitation of generic computer elements. 35

43 a. Claim 81 Independent Claim 81 recites a simple method of receiving electronic information ( first digital data, which includes insurance transaction data ) related to a health insurance claim transaction, storing it, and deciding which parts of that information to enter into a graphic user interface. See Section VII.B.2, supra. It recites no additional features supplying an inventive concept beyond the abstract idea already discussed. Although the claim specifies that second digital data are to be entered in the fields of a graphic user interface using the received insurance transaction data using a logic process, this adds no inventive concept because it (along with all of the other steps) entail routine and conventional functions of computers. CET, 2014 WL , at *4 (idea of recogniz[ing] and stor[ing] data from specific data fields such as amounts, addresses, and dates not patent-eligible.). Indeed, a person could carry out the recited task by pen and paper. The claim does not disclose any specific and novel or non-obvious logic process, so even the simplest logical method is covered for example, the method of copying all of the received information into the fields of the graphic user interface. As another common example, anyone who has ever filled out a tax return using salary information from their W-2 has carried out this precise method, because they would have received a communication (i.e., a W-2 form), would have stored the information from it (say, on their computer), and 36

44 using a logic process, would have determined what information from the W-2 to enter into the tax return (e.g., Box 1, Wages, tips, other compensation would be copied to the tax form s Line 7, Wages, salaries, tips, etc. ). Claim 81 also fails the machine-or-transformation test. It fails the machine prong of the test because it plainly does not require the method to be performed by a particular machine, or even a machine at all. See CyberSource, 654 F.3d at 1370; Ex at 1:55 2:3 (prior art systems already utilized handwritten transcription). It fails the transformation prong because [t]he mere collection and organization of data which is all Claim 81 does is insufficient to meet the transformation prong of the test. CyberSource, 654 F.3d at 1370, 1375; Cyberfone, 558 F. App x at 993; CET, 2014 WL , at *3 ( the concept of data collection, recognition, and storage is undisputedly well-known. Indeed, humans have always performed these functions. ). Claim 81 is likewise very similar to the claims at issue in Ultramercial, in that it merely stores and manipulates abstractions in this case, data. See Ultramercial, 772 F.3d at 712. But data are not physical objects or substances, and... are not representative of physical objects or substances, so storing or manipulating it cannot meet the transformation prong of the test. Id. at 717. b. Claim 83 Claim 83 depends from Claim 81 and recites: 37

45 83. The method of claim 81, wherein the first digital data comprises patient healthcare data and is received from a healthcare provider. Ex at Claim 83. This claim recites no additional features supplying an inventive concept. Specifying that the received digital data must have a particular content adds nothing because this idea was in the prior art. Bysinger Decl. 37, 46. The claim also fails the machine-or-transformation test. It fails the machine prong of the test because, like Claim 81, it plainly does not require the method to be performed by a particular machine, or even a machine at all. See CyberSource, 654 F.3d at Like Claim 81, Claim 83 can be carried out by a person on pen and paper. It also fails the transformation prong because [t]he mere collection and organization of data which is all Claim 83 does is insufficient to meet the transformation prong of the test. CyberSource, 654 F.3d at at 1370, 1375; Cyberfone, 558 F. App x at 993; CET, 2014 WL , at *3 ( the concept of data collection, recognition, and storage is undisputedly well-known. Indeed, humans have always performed these functions ); see also Ultramercial, 772 F.3d at 717 (manipulating abstractions insufficient to meet transformation prong). c. Claim 84 Claim 84 depends from Claim 81 and recites: 84. The method of claim 81, wherein the first digital data comprises at least patient identification data and physician identification data. 38

46 Ex at Claim 84. This claim recites no additional features supplying an inventive concept. Specifying that the received digital data must have a particular content adds nothing because this idea was in the prior art. Bysinger Decl. 37, 46. The claim also fails the machine-or-transformation test. The machine prong is not met because, like Claim 81, Claim 84 plainly does not require the method to be performed by a particular machine, or even a machine at all. See CyberSource, 654 F.3d at Indeed, it can be carried out by a person on pen and paper. It also fails the transformation prong for the same reason that Claim 81 fails it: [t]he mere collection and organization of data which is all Claim 84 does is insufficient to meet the transformation prong of the test. CyberSource, 654 F.3d at 1370, 1375; Cyberfone, 558 F. App x at 993; CET at *3 ( the concept of data collection, recognition, and storage is undisputedly well-known. Indeed, humans have always performed these functions ); see also Ultramercial, 772 F.3d at 717 (manipulating abstractions insufficient to meet transformation prong). d. Claim 85 Claim 85 depends from Claim 81 and recites: 85. The method of claim 81, further comprising the step of receiving additional digital data into at least one field in the graphic user interface. 39

47 Ex at Claim 85. Claim 85 recites no additional features supplying an inventive concept, because it requires more of the same type of task recited by Claim 81: i.e., additional data are to be received into the graphic user interface. Thus it fails the machine-or-transformation test for the same reason that Claim 81 fails it. e. Claim 86 Claim 86 is depends from Claim 81 and recites: 86. The method of claim 81, further comprising the step of copying the first digital data from at least one field in the N 1 identifiable data fields into at least one field of the N 2 second identifiable data fields. Ex at Claim 86. Claim 86 recites a simple method of copying information from a first file to a second file. See Section VII.B.2, supra. It recites no additional features supplying an inventive concept beyond the abstract idea already discussed. CET, 2014 WL , at *4 (idea of recogniz[ing] and stor[ing] data from specific data fields such as amounts, addresses, and dates not patenteligible). Indeed, a person could perform the recited method of Claim 81 with just pen and paper. Just as a common example, anyone who has ever filled out a tax return using salary information from their W-2 has carried out this precise method, because they would have received a first file (i.e., a W-2), copied information from fields on it (e.g., Box 1, Wages, tips, other compensation ) to the correlated 40

48 fields (e.g., Line 7, Wages, salaries, tips, etc. ) of a second file (i.e., a Form 1040). CET likewise confirms that including functionality related to a field in dependent claims is insufficient to render any Challenged Claim patent-eligible. In CET, the patentee argued that dependent claims in Lech that included additional steps, such as extracting and detecting specific data fields, repeating some steps, and storing data as images or text, render[ed] those claims patent-eligible. See CET, 2014 WL , at *5 (emphasis added). The Federal Circuit rejected this argument, holding that all of the additional limitations in the claims cited in CET s appeal brief recite well-known, routine, and conventional functions of scanners and computers. Id. The same is true of the narrower, dependent Challenged Claims at issue here, including Claim 86. Claim 86 also fails the machine-or-transformation test. It fails the machine prong of the test because, like Claim 81, Claim 86 plainly does not require the method to be performed by a particular machine, or even a machine at all. See CyberSource, 654 F.3d at Like Claim 81, Claim 86 can be carried out by a person on pen and paper. It also fails the transformation prong because [t]he mere collection and organization of data which is all Claim 86 does is insufficient to meet the transformation prong of the test. Id. at 1370, 1375; Cyberfone, 558 F. 41

49 App x at 993; see also Ultramercial, 772 F.3d at 717 (manipulating abstractions insufficient to meet transformation prong). f. Claim 87 Claim 87 depends from Claim 81 and recites: 87. The method of claim 81, further comprising the step of printing at least some of the second digital data. Ex at Claim 87. This claim adds no inventive concept, as it merely requires certain information to be printed. Printing is a classic example of a wellunderstood, routine, and conventional activity done by computers. Wellunderstood, routine, and conventional [computer] activities previously known to the industry do not impose any meaningful limitations on a claim for the purpose of a 101 analysis. CET, 2014 WL , at *4. Claim 87 also fails the machine-or-transformation test. It fails the machine prong because, like Claim 81, Claim 87 plainly does not require the method to be performed by a particular machine, or even a machine at all. See CyberSource, 654 F.3d at Like Claim 81, Claim 87 can be carried out by a person on pen and paper. It also fails the transformation prong because the printing does not transform an article into another article or thing. g. Claim 88 Claim 88 depends from method Claim 81 and recites: 42

50 88. The method of claim 81, wherein the method further comprises the step of transmitting at least some of the second digital data. Ex at Claim 88. This claim adds no inventive concept, since it merely requires certain information to be transmitted. Transmission is a classic example of a well-understood, routine, and conventional activity done by computers. See Ultramercial, 772 F.3d at (stating that implementation of a method on the internet does not add an inventive concept). Well-understood, routine, and conventional [computer] activities previously known to the industry do not impose any meaningful limitations on a claim for the purpose of a 101 analysis. CET, 2014 WL , at *4; c.f. Cyberfone, 558 F. App x at 992 (concluding that the idea of collecting information... then separating and transmitting that information according to its classification, is an abstract idea that is not patenteligible. ) (emphasis added). Claim 88 also fails the machine-or-transformation test. It fails the machine prong because, like Claim 81, Claim 88 plainly does not require the method to be performed by a particular machine, or even a machine at all. See CyberSource, 654 F.3d at Like Claim 81, Claim 88 can be carried out by a person on pen and paper. The claim also fails the transformation prong because transmitting data does not transform it into an article or thing. C. Ground 2: Challenged Claims 81, 83, 84, 85, 86, 87, and 88 Are Obvious In View of Lech In Combination With U.S. Patent No. 43

51 5,054,096 ( Beizer ), Rendering Them Unpatentable Under 35 U.S.C Overview of Lech Lech, entitled Information Processing Methodology, discloses methods and apparatuses for electronically extracting and processing data received from hard copy documents in a way that minimizes the need to manually process hard copy documents. Ex at 1:5 10. In general, the systems and methods of Lech allow[] a user to select specific portions of information extracted from a diversity of hard copy documents and... direct portions of this information to several different users in accordance with the needs of a particular user. Id. at 2:14 18; Bysinger Decl. 49. In an exemplary embodiment, a hard copy document such as a bill is fed into an automated digitizing unit such as a conventional scanner. Bysinger Decl. 51; Ex at 15:58 60, 5:59 65, 4:53 61, Fig. 1. The scanner stores in memory both (1) an actual image of the hard copy document and (2) textual information extracted off the document. Bysinger Decl. 51; Ex at 5:66 8, 4:26 27, 7: The document image, the extracted textual information, or both are then sent to a computer. Bysinger Decl. 51; Ex at 5:1 2. The computer then pars[es] information extracted from the hard copy document and... direct[s] this parsed information to specific users or application programs as an input file. Ex at 4:45 49, 5:25 29, 9:27 30, 10: The extraction and parsing of information can happen either 44

52 automatically in accordance with predefined content instructions (for example, templates which specify the location of information on the hard copy document) or interactively with user input. Id. at 2:60 3:25, 8:68 9:2, 13:67 14:10; Bysinger Decl. 49. These application programs to which the input files are sent can be, for example, specific departments within a company, such as the accounting department or mailroom, and each department has its own application program which utilizes information in the input files. Bysinger Decl. 51; Ex at 1:34 44, 13:57 64, 13:67 14:10. Thus, as an example, three separate departments within a company may require information from a hard copy bill. The accounting department may need financial information such as the vendor name, account number, statement date, and amount due; the second and third departments may require only mail-to information and previous balance information. Bysinger Decl. 52; Ex at 13: The systems and methods of Lech extract information off the received hard copy bill, parse the extracted information, generate input files comprising the specific information needed by each department, and electronically transmit those input files to the appropriate destination, i.e., to applications programs within each department. The Federal Circuit in CET confirmed that these disclosures were insufficient to render any of the claims in Lech patenteligible under section 101. See CET, 2014 WL Lech Is Prior Art and Eligible for Use in CBMR. 45

53 The earliest application to which the 609 Patent could theoretically claim priority is provisional application No. 60/014,427 ( the 427 Provisional Application ), filed March 28, Ex Lech issued November 2, 1993, more than two years earlier. Ex It is thus prior art to the 609 Patent under pre-aia 35 U.S.C. 102(b) and meets the requirements of AIA 18(a)(1)(C) for two independent reasons: (1) it clearly is described by section 102(a) of pre-aia 35 U.S.C., in accordance with AIA 18(a)(1)(C)(i); and (2) it issued more than 1 year before the date of the application for the 609 Patent, in accordance with AIA 18(a)(1)(C)(i). 3. Overview of Beizer Beizer, entitled Method and Apparatus for Converting Documents into Electronic Data for Transaction Processing, discloses a system for transaction processing large quantities of documents. Ex at Abstract. Beizer explains that this technology is useful for transaction companies that must access data from portions of received documents quickly, such as insurance claims processing companies. Id. at 1: The documents are scanned by an optical scanner, and then transmitted to a server or workstation for processing. Id. at 7: The processing allows data from portions of the scanned documents to be extracted so 5 Petitioners do not concede that the 609 Patent is in fact entitled to claim priority to the 427 Application. 46

54 that it can easily be analyzed, accessed later, transmitted to remote locations and/or a mainframe, and archived. Id. at 11:63 12: Beizer is Prior Art and Eligible for Use in CBMR. As noted, the earliest application to which the 609 Patent could theoretically claim priority is the 427 Provisional Application, filed March 28, Ex Beizer issued on October 1, 1991, more than four years earlier. Ex It is thus prior art to the 609 Patent under pre-aia 35 U.S.C. 102(b) and easily meets the requirements of AIA 18(a)(1)(C). D. One of Ordinary Skill In the Art Would Be Motivated to Combine Lech and Beizer. A person of ordinary skill in the art would have been motivated to combine the teachings of Lech and Beizer to arrive at the invention claimed in Claims 81, 83, 84, 85, 86, 87, and 88 of the 609 Patent. Bysinger Decl ; See KSR Int l Co. v. Teleflex Inc., 550 U.S. 398 (2007). There is no bright line rule to determine whether there would be a motivation to combine, but the Office has articulated a set of rationales for finding a claim obvious. See Examination Guidelines for Determining Obviousness Under 35 U.S.C. 103 in view of the Supreme Court Decision in KSR Int l Co. v. Teleflex Inc., 72 Fed. Reg. 57,526 (Oct. 10, 2007) (Ex. 1023). Those rationales include: some teaching/suggestion/motivation to combine; combining based on known methods or simple substitution for one known element to obtain predictable results; being 47

55 obvious to try ; and/or known work in one field prompting its use in the same or different field based on design incentives/market forces. Id. at 57,529. The Supreme Court has further acknowledged that common sense can provide a sufficient foundation to identify prior art combinations that would be obvious to a person of ordinary skill in the art. KSR, 550 U.S. at 416. First, it would have been common sense to combine Lech and Beizer, as they are both directed to very similar subject matter in the same field of invention, as they both describe systems for extracting digitized data from hard copy documents so that it can be stored and processed. Ex at 1:7:10; Ex : Both Lech and Beizer list the same U.S. Classification of 382 for Image Analysis, and even the same subclass 61 for format control. Ex at 1; Ex at 1; Ex at 1; Ex at 2. This would certainly lead a person of skill in the art to combine the references. Second, a person of skill in the art would have been motivated to combine Beizer and Lech based on simple substitution of one known element to obtain predictable results. It would be a simple substitution to replace the type of document processed in Lech, letters, checks, forms, pictures, reports, music scores, film..., with known insurance claim forms such as those disclosed in Beizer. Ex at 15:50. This would obtain a predictable result in which insurance forms are able to be processed according to the invention. Lech even 48

56 explicitly suggests doing so: other types of hard copy documents can be processed by the invention. Ex at 15: Finally, it would have been obvious to try, as known work in one field would prompt its use in a different field based on design incentives/market forces. The 609 Patent describes the various problems at that time surrounding manual processing of hard copy forms in the insurance industry. Ex at 1: In fact, it is the alleged purpose of the 609 Patent to develop a faster and more cost effective claims processing system. Ex at 1: A person of skill in the art would have looked to general document processing inventions such as Lech to solve these problems. Bysinger Decl. 65. Since Lech teaches processing in general, but is not specific to the insurance industry, a person of skill in the art would also look to Beizer to implement this type of invention in systems created specifically for the healthcare industry. E. Lech In Combination With Beizer Discloses All Elements of Claim 81 and Renders It Obvious. Lech discloses a computer implemented method, for processing electronic communications (Claim 81 preamble), e.g., [t]he invention provides an application program interface which inputs a diversity of hard copy documents using an automated digitizing unit and which stores information from the hard copy documents in a memory as stored document information. Portions of the stored document information are selected in accordance with content instructions.. 49

57 .. Selected stored document information is then formatted into the transmission format used by the particular application program.... Ex at 2: Here, the computer depicted in Fig. 1 shows that the method disclosed in Lech is computer implemented. The selection, formatting, and transmission of stored document information further shows that the method that takes place on the computer in Fig. 1 comprises processing electronic communications. Lech discloses receiving, from a source external to a computer system, an electronic communication. Lech explains that Fig. 4 illustrates the overall data flow for the Fig. 1 preferred embodiment. Ex at 7: Lech further explains that the information processing module 2.0 is implemented primarily by computer 230. Ex at 8: Lech discloses that the information processing module 2.0 [i.e. computer 230] can... receive information from a remote external device through communication interface 4.0, as shown in Fig. 4. Therefore, in this embodiment, the scanner is external to the computer system. As shown in the following excerpt of Fig. 5, the communication device (which is connected to the remote external device) supplies the input document. 50

58 Ex at Fig. 5. The input document is comprised of image information, for example, a digitized image of the actual appearance of hard copy document 100 and textual information extracted from the document by character recognition device 1.3. Ex at Thus, this is an electronic communication comprising first digital data (e.g., data extracted from hard copy document) in N1 identifiable fields. The fields are identifiable, as the hard copy document clearly labels each field with a name. Ex at Fig. 2. Thus, Lech discloses receiving, from a source external to a computer system, an electronic communication comprising first digital data in N1 identifiable fields. Lech further discloses at least some of the N1 identifiable data fields comprise insurance transaction data, e.g., For example, letters, checks, forms, pictures, reports, music scores, film, and other types of hard copy documents can be processed by the invention for accounts payable/receivable accounting, 51

59 inventory control, record keeping, budgeting, data base management, music transcription, forms processing, computerized art, survey and questionnaire processing, statistical data analysis, correspondence processing and other applications. Ex at 15: Therefore, Lech s disclosure that other types of hard copy documents could be processed by the invention for demonstrates that it would have been common sense to combine Lech and Beizer, as they are both describe systems for extracting digitized data from hard copy documents. Moreover, Lech s specific disclosure that the invention could be used for forms processing, and other applications would motivate one of ordinary skill to substitute the general forms found in Lech with the specific insurance forms and transaction data found in Beizer. Beizer explicitly discloses at least some of the N1 identifiable data fields comprise insurance transaction data, explaining that data for a particular department, for example medicare payments, is directed from the proper scanner to the department which handles that type of claim. Ex at 7: Medicare, of course, is a national insurance program that has been in place since Ex Also, a server can send[] the record to a workstation 35 where the claim is analyzed and proper payment is determined. Ex at 7: Users may also use a calculator for doing routing calculations, for example totaling the cost for procedures on a medical claim. Ex at 9: Lastly, Beizer discloses that If, for example, the 52

60 company is a medical insurance company, the search can be by claim number, subscriber name or subscriber number. Ex at 11: Thus, Lech in combination with Beizer discloses at least some of the N1 identifiable data fields comprise insurance transaction data. Lech further discloses at least one of the N1 identifiable data fields comprises attachment data for at least one attachment stored in memory of a first computer, e.g., FIG. 7 illustrates information processing data flow in the maintain library module 2.1. The maintain library module 2.1 maintains a library of image information, for example, a digitized image representing the actual appearance of the hard copy document, and textual information of the hard copy documents for reference during processing. Ex at 8: Here, the attachment data is the combination of both the digitized image and the corresponding textual information of a hard copy document. Lech discloses an attachment as well: The invention also allows storing a copy of the hard copy document in a memory and retrieving the copy of the hard copy document. Ex at 4: Lech also discloses that the attachment is stored in memory of a first computer, as [t]he information from scanner memory 220 or main memory 250 is transmitted to computer 230. Ex at 5:

61 Lech discloses storing the electronic communication in memory of a second computer, e.g., where the first computer is a scanner with memory, and information is transferred from the scanner memory to the main memory of a computer, then [i]nstructions to or in the computer 230 control the main memory 250, the printer 260, the application units 270, and the bus 240. Instructions to or in computer 230 can also control exchanges of information with scanner memory 220. Ex at 5: Fig. 1 demonstrates how the scanner with memory (i.e., the first computer) can exchange information with the computer with main memory. The scanner can transmit data to the computer along the path highlighted in green, and the path highlighted in red shows how the computer can then store the received information from the scanner in the main memory. Lech discloses processing the electronic communication, e.g., documents are scanned using an optical scanner, and the data from the scanned documents are transmitted to a computer. Ex at 5:1 2. The computer is used to generate an input file by selecting portions of the data 54

62 from the document in accordance with content instructions. Ex at 5:8 13. The input files containing portions of the document data are then transmitted to various application programs. Ex at 11:62 66; 13:67 14:3. Further, Lech explicitly discloses a preferred embodiment showing an information processing data flow diagram for the process document module. Ex at 9: Fig. 9 of Lech shows this processing system in detail. The process document module gathers 2.3 stored information to create an input file, then transmits the input file to an application unit or an output device like a printer. Ex at 9: The process document module contains an extract data module 2.3.1, which is used to extract data off of the 55

63 document based on instructions from a user. Ex at 9: The process document module also contains a preapplication process module 2.3.2, which gathers and associates extracted information according to content instructions. Ex at 10:1 4. If information required by the content instructions is lacking, the preapplication process module prompts the user for the specified additional information. Ex at 10: 4 7. Then, the preapplication process module conforms the selected information into the required transmission format. Ex at 10:7 10. Lech discloses displaying at least one graphic user interface screen comprising a set of N2 identifiable data fields, wherein N2 is an integer, and the attachment, e.g., a second mode of operation illustrated in Fig. 3B in which the display of computer 230 is split into two portions, [a] left-hand portion 232L display[ing] the image of the hard copy document and a right-hand portion 232R display[ing] the required application program information. Id. at 6:45 50; Bysinger Decl. 72. In Lech, the user can input instructions to associate specific pieces of information on the hard copy document (for example, the vendor name indicated by the mouse arrow 232A) with particular subfiles in memory (for example, the vendor field next to which the cursor 232C appears). Id. at 6: As annotated on Lech Fig. 3B, the computer 230 copies information from fields on the left side of the display 232L to correlated fields on the right side of the display 56

64 232R, when the user identifies the correct field based on the field identities. Bysinger Decl. 72. For example, the prompt message can ask the user to identify the location of account number information on the hard copy document. Ex at 6: The user finds the field labeled [a]ccount number and then the information is copied by the computer. Id. at 6: Here, the N2 identifiable data fields represent the required application program information, and the attachment is a digital copy of the hard copy document. Lech discloses that [t]he information from scanner memory 220 or main memory 250 is transmitted to computer 230. In the preferred embodiment, computer 230 includes a display 232, a keyboard 234, and a mouse 236. The display 232 displays an image of the hard copy document itself and/or information necessary to process the information extracted off of the hard copy document. Ex at 5:1 7. Lech further discloses the use of a template to extract information off the document and to associate the extracted information with a particular variable or subfile. Ex at 8:68 9:2, 4:39 40 ( The interface can also extract specific pieces of information using a predefined template. ). The template is created using field identities. When creating the template, the user assigns specific names to information located at specific portions of the document. Ex at 13:1 3. The specific names disclosed are field names such as [a]ccount number.. 57

65 .[s]tatement date...[p]ayment date...[p]revious balance etc. Ex at 13:6 13. Thus, when the template is used to extract information from the document image, the template uses the field identities entered by the user to determine which information to copy. Lech discloses determining second digital data to be entered in at least one field in the set of N2 identifiable data fields using at least some of the insurance transaction data in the set of N1 identifiable data fields in a logic process, e.g., a second mode of operation illustrated in Fig. 3B in which the display of computer 230 is split into two portions, [a] left-hand portion 232L display[ing] the image of the hard copy document and a right-hand portion 232R display[ing] the required application program information. Id. at 6:45 50; Bysinger Decl. 75. In Lech, the user can input instructions to associate specific pieces of information on the hard copy document (for example, the vendor name indicated by the mouse arrow 232A) with particular subfiles in memory (for example, the vendor field next to which the cursor 232C appears). Id. at 6: As annotated on Lech 58

66 Fig. 3B, the computer 230 copies information from fields on the left side of the display 232L to correlated fields on the right side of the display 232R, when the user identifies the correct field based on the field identities. Bysinger Decl. 75. For example, the prompt message can ask the user to identify the location of account number information on the hard copy document. Ex at 6: The user finds the field labeled [a]ccount number and then the information is copied by the computer. Id. at 6: Lech further discloses the use of a template to extract information off the document and to associate the extracted information with a particular variable or subfile. Ex at 8:68 9:2; id. at 4:39 40 ( The interface can also extract specific pieces of information using a predefined template. ). The template is created using field identities. When creating the template, the user assigns specific names to information located at specific portions of the document. Ex at 13:1 3. The specific names disclosed are field names such as [a]ccount number...[s]tatement date...[p]ayment date...[p]revious balance etc. Ex at 13:6 13. Thus, when the template is used to extract information from the document image, the template uses the field identities entered by the user to determine which information to copy. Lech further discloses search[ing] hard copy documents for a particular character... located on the hard copy documents. The information... to be 59

67 extracted off of the hard copy document is specified relative to the location of this character... Ex at 3: This is yet another way that field identities are used in Lech to copy the data contained in the fields. Lastly, Beizer discloses the second digital data comprises insurance transaction data and the second digital data excludes the attachment, e.g., where the second digital data is the information taken from the attachment. For example, data for a particular department, for example medicare payments, is directed from the proper scanner to the department which handles that type of claim. Ex at 7: Here, the information on Medicare payments is the insurance transaction data. Beizer further discloses that server 32 sends the record to a workstation 35 where the claim is analyzed and proper payment is determined. Ex at 7: Again, the record sent to a workstation comprises insurance transaction data because is it being used to determine proper payment to a provider. Additionally, for convenience a calculator 409 can be selected for doing routing calculations, for example totaling the cost for procedures on a medical claim. Ex at 9: Lastly, Beizer explains that [s]ometimes information can be obtained from the server 32 and FIG. 8 shows the screen display for a search.... If, for example, the company is a medical insurance company, the search can be by claim number, subscriber name or subscriber number. Ex at 11: In each of these embodiments, it is clear that 60

68 Beizer explicitly contemplates that the second digital data comprises insurance transaction data, whether that data relates to Medicare payments, provider payments, medical procedure costs, claim number, subscriber name, or subscriber number. Beizer thus make explicit what is inherently disclosed in Lech that the digital data extracted from hard copy document can, in fact, be insurance transaction data. F. Lech in Combination with Beizer Discloses all Elements of Claim 83 and Renders It Obvious. Lech in combination with Beizer discloses the method of claim 81, as discussed in section VII.E. and incorporated herein by reference. Beizer discloses that the first digital data comprises patient healthcare data and is received from a healthcare provider. Beizer states that the present invention is a particularly useful means of transmitting visual type hospital records, for example, x-rays, EKG s, CAT scans, etc., to remote locations. Ex at 11: It explains that the company receiving the records is a medical records processing center, and that it can receive medical records from subscriber hospitals, or other medical providers. Ex at 11:66 12:2. Additionally, medical claims [can] be directed electronically from scanners at a hospital to a medical claim office. Ex at 12: A person of skill in the art would know that hospital records and medical claims are patient healthcare data. Bysinger Decl. 79. A person of skill in the art would also know that a hospital is a healthcare provider. Thus, all 61

69 elements of Claim 83 are disclosed in Beizer and Lech, and therefore it is unpatentable. G. Lech In Combination With Beizer Discloses All Elements of Claim 84 and Renders It Obvious. Lech in combination with Beizer discloses the method of claim 81, as discussed in section VII.E. and incorporated herein by reference. Beizer discloses that the first digital data comprises at least patient identification data and physician identification data. Beizer expressly discloses that the patient identification data is contained in the fields of data that are being processed. In teaching the procedure of copying fields of data from the document image to the form, Beizer uses the examples of social security number (Ex at 10:7 8) and patient s name (Ex at 10:21). A person of skill in the art would know that the patient s name and social security number are patient identification data. Additionally, Beizer discloses that the invention can be used to send medical claims electronically from a hospital to a claim office. Ex at 12: A person of skill in the art would know that a medical claim is submitted to an insurance company in order to receive payment. Bysinger Decl. 80. It is inherent that the claim would include the treating physician s name within the description of services, in order for the physician to receive payment. Bysinger Decl. 80. Thus, Lech and Beizer disclose all elements of Claim 84, rendering it obvious. 62

70 H. Lech In Combination With Beizer Discloses All Elements of Claim 85 and Renders It Obvious. Lech in combination with Beizer discloses the method of claim 81, as discussed in section VII.E. and incorporated herein by reference. Lech further discloses receiving additional digital data into at least one field in the graphic user interface, e.g., Content instructions can also be used to identify additional pieces of data which are required for the input files of the particular application. Ex at 14: In Fig. 12A of Lech, a particular department (i.e., application unit) needs to know the value for each of the defined variable names. Ex at 13: However, the value for the Debits variable is missing; thus, content instructions could be used to identify that additional information is needed here. I. Lech In Combination With Beizer Discloses All Elements of Claim 86 and Renders It Obvious. Lech in combination with Beizer discloses the method of claim 81, as discussed in section VII.E. and incorporated herein by reference. Lech further discloses copying the first digital data from at least one field in the N1 identifiable data fields into at least one field of the N2 second identifiable data fields. 63

71 Lech discloses three methods of copying the data fields. The first allows the user to identify the data, based on prompts from the computer, discussed above, in which the display of computer 230 is split into two portions, one displaying an image of the hard copy document and the other displaying a destination file or application program. Id. at 6:45 50; Bysinger Decl. 83. The user can then input instructions to associate specific pieces of information on the hard copy document (for example, the vendor name...) with particular subfiles... (for example, the vendor field next to which the cursor 232C appears). Id. at 6: The user does this by clicking on the corresponding field name, or identity to the field name prompted by the computer. Id. at 6: A second method of copying data is disclosed where a user can define a template which is used to extract information off a document. Ex at 7:1 7. As discussed above, the template is defined by the user identifying the relevant field name and assigning location information so that the template can extract the correct data fields. Therefore, this method of copying is based on the field identities. 64

72 The third method disclosed to identify data fields to be copied teaches that the information sought to be extracted is specified relative to a location of [a] character or symbol... Ex at 8:68 9:2, 3:22 25; Bysinger Decl. 84. The characters on the document used to identify the information to be extracted would be considered field identities. Bysinger Decl. 84. Lech also discloses a select definitions module which allows the user to store and select a set of definitions to be used for processing the document and that these definitions identify pieces of information on the document by, for example... proximity to key words.... Ex at 9: The key words used to identify pieces of information on the document to be extracted would also be considered field identities. Bysinger Decl. 84. J. Lech In Combination With Beizer Discloses All Elements of Claim 87 and Renders It Obvious. Lech in combination with Beizer discloses the method of claim 81, as discussed in section VII.E. and incorporated herein by reference. Lech further discloses printing at least some of the second digital data, e.g., The process document module 2.3 then transmits the input file(s) via bus 240 and/or communication interface 4.0 to an application unit 270, an output device such as printer 260, or to main memory 250. Ex at 9: Fig. 1 of Lech shows that an input file can be sent via bus 240 to printer 260 via the route denoted in red. 65

73 K. Lech In Combination With Beizer Discloses All Elements of Claim 88 and Renders It Obvious. Lech in combination with Beizer discloses the method of claim 81, as discussed in section VII.E. and incorporated herein by reference. Lech further discloses transmitting at least some of the second digital data, e.g., the user can extract specific portions of data from an image copy of a document, can generate an input file for transmission to an application program, or can directly process information interactively with an application program. Ex at 11: Fig. 12A shows that once a user has extracted the required portions of data from an image copy of a document, the resulting input file of the compiled information can be transmitted to an application program (i.e., a department). VIII. CONCLUSION Petitioners request CBMR and cancellation of the Challenged Claims. Date: January 19, 2015 Respectfully submitted, /s/gianni Cutri Gianni Cutri (Reg. No ) Jared Barcenas (Reg. No ) KIRKLAND & ELLIS LLP 300 North LaSalle Street 66