MMR - Coordinated Cases - Plaintiff - S Reply Claim Construction Brief

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Case No. 2:13-cv-00631-ODW(SHx)
PLAINTIFFS REPLY CLAIM CONSTRUCTION BRIEF
Randall J . Sunshine (SBN 137363)
rsunshine@linerlaw.com
Edward A. Klein (SBN 145736)
eklein@linerlaw.com
Ryan E. Hatch (SBN 235577)
rhatch@linerlaw.com
LINER LLP
1100 Glendon Avenue, 14
th
Floor
Los Angeles, California 90024.3503
Telephone: (310) 500-3500
Facsimile: (310) 500-3501

Ted S. Ward (SBN 143810)
tward@ward-lawoffice.com
LAW OFFICE OF TED S. WARD
1100 Glendon Avenue, 14
th
Floor
Los Angeles, California 90024.3503
Telephone: (310) 500-3384
Facsimile: (310) 500-3501

Attorneys for Plaintiff
MYMEDICALRECORDS, INC.

UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
MYMEDICALRECORDS, INC.,

Plaintiff,

vs.

WALGREEN CO.,

Defendant.

(Related to 13-cv-02538-ODW-SH; 13-
cv-03560-ODW-SH; and 13-cv-07285-
ODW-SH)

PLAINTIFF
MYMEDICALRECORDS, INC.S
REPLY CLAIM CONSTRUCTION
BRIEF

Date: August 19, 2014
Time: 11:00 a.m.
Crtrm.: 11

The Hon. Otis D. Wright, II

Trial Date: TBD

AND RELATED COORDINATED
CASES

Case 2:13-cv-00631-ODW-SH Document 73 Filed 08/04/14 Page 1 of 17 Page ID #:2510
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TABLE OF CONTENTS
Page
I. INTRODUCTION ............................................................................................. 1
II. DISPUTED CLAIM TERMS PROPOSED BY ALL DEFENDANTS ........... 2
A. From a health care provider associated with the user ............................. 2
B. Maintained on the server independently / Maintained separately .......... 4
C. Means for scheduling one or more prescription refills concerning
a drug prescription .................................................................................. 5
1. Legal standards for means or step plus function claims........ 5
2. The claim term is not governed by 35 U.S.C. 112(f)
because the claim itself recites sufficient structure ...................... 7
3. The specification also includes sufficient acts, structure, or
materials corresponding to the MFS Limitation ........................... 9
III. DISPUTED CLAIM TERMS PROPOSED BY SELECTED
DEFENDANTS ............................................................................................... 10
D. Health care provider .............................................................................. 10
E. Managed privately by the user .............................................................. 10
F. Prescription refill(s) .............................................................................. 11
G. The schedule.......................................................................................... 12
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TABLE OF AUTHORITIES
Page(s)
Cases
Advanced Fiber Techs. Trust v. J&L Fiber Servs.,
674 F.3d 1365 (Fed. Cir. 2012) ........................................................................ 5, 11
Aero Prods. Int'l, Inc. v. Intex Rec. Corp.,
466 F.3d 1000 (Fed. Cir. 2006) .............................................................................. 6
Apple Inc. v. Motorola, Inc.,
2014 U.S. App. LEXIS 7757 (Fed. Cir. Apr. 25, 2014) ............................. 6, 7, 8, 9
Atmel Corp. v. Information Storage Devices,
198 F.3d 1374 (Fed. Cir. 1999) ........................................................................ 9, 10
Creo Prods. v. Presstek, Inc.,
305 F.3d 1337 (Fed. Cir. 2002) .............................................................................. 9
Degeorge v. Bernier,
768 F.2d 1318 (Fed. Cir. 1985) .............................................................................. 2
Finisar Corp. v. DirecTV Grp., Inc.,
523 F.3d 1323 (Fed. Cir. 2008) .............................................................................. 7
Helmsderfer v. Bobrick Washroom Equip., Inc.,
527 F.3d 1379 (Fed. Cir. 2008) ............................................................................ 11
Hill-Rom Servs. Stryker Corp.,
2014 U.S. App. LEXIS 12105 (Fed. Cir. 2014) .............................................. 1, 10
MBO Labs., Inc. v. Becton, Dickinson, & Co.,
474 F.3d 1323 (Fed. Cir. 2007) .............................................................................. 3
Nautilus v. Biosig Instruments, Inc.,
572 U.S. ___; 134 S. Ct. 2120, 189 L. Ed. 2d 37 (2014) ................................... 5, 6
Neurografix v. Siemens Medical Solutions USA, Inc.,
No. 10CV1990, MRP (RZx), 2011 WL 3439324 (C.D. Cal. May
5, 2011) ................................................................................................................... 6
Omega Eng'g, Inc. v. Raytek Corp.,
334 F.3d 1314 (Fed. Cir. 2003) .............................................................................. 5
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Perfect Web Technologies, Inc. v. InfoUSA. Inc.,
587 F.3d 1324 (Fed. Cir. 2009) .................................................................... 1, 2, 10
Personalized Media Commcns, LLC v. Intl Trade Commn,
161 F.3d 696 (Fed. Cir. 1998) ................................................................................ 8
Phillips v. AWH Corp.,
415 F.3d 1303 (Fed. Cir. 2005) ................................................................ 1, 2, 3, 12
Schindler Elevator Corp. v. Otis Elevator Co.,
593 F.3d 1275 (Fed. Cir. 2010) ........................................................................ 5, 11
Sundance, Inc. v. Demonte Fabricating Ltd.,
550 F.3d 1356 (Fed. Cir. 2008) ........................................................................ 1, 10
Vanderlande Indus. Nederland BVv. Int 'l Trade Comm n., 366 F.3d
1311, 1323 (Fed. Cir. 2004) ................................................................................... 1
Verizon Servs. Corp. v. Vonage Holding Corp.
503 F.3d 1295, 1305 (Fed. Cir. 2007) .................................................................... 3
Vivid Tech., Inc. v. Am. Sci. & Engg. Inc.,
200 F.3d 795, 803 (Fed. Cir. 1999) ........................................................................ 1
Statutes
35 U.S.C. 112(f) .................................................................................................... 7, 9
35 U.S.C. 282 ............................................................................................................ 6
Federal Regulations
21 C.F.R. 1306.22(e) ............................................................................................... 12

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I. INTRODUCTION
Claim construction is not a free-for-all. Claim construction is a two-step
process. First, a Court must decide if the parties disputes over identified claim
terms require resolution. If so, a Court must follow the canons of construction and
define disputed terms. Only claim terms in controversy need to be construed, and
only to the extent necessary to resolve the controversy. Vanderlande Indus.
Nederland BVv. Int 'l Trade Comm n., 366 F.3d 1311, 1323 (Fed. Cir. 2004); Vivid
Tech., Inc. v. Am. Sci. & Eng g. Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). There is
no explanation of why Defendants are requesting construction of any claim terms,
which begs the question whether a construction is even needed.
Once it is determined that claim construction is justified, [w]e depart from
the plain and ordinary meaning of claim terms based on the specification in only two
instances: lexicography and disavowal. . The standards for finding lexicography
and disavowal are exacting. Hill-Rom Servs. Stryker Corp., 2014 U.S. App. LEXIS
12105 (Fed. Cir. 2014). These exacting requirements are not pled let alone met.
Even if a lexicography or disavowal analysis was appropriate, Defendants
ignore the role of one of ordinary skill in the art and instead improperly rely on
attorney argument. The ordinary and customary meaning of a claim term is the
meaning that the term would have to a person of ordinary skill in the art in question
at the time of the invention, i.e., as of the effective filing date of the patent
application. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en
banc). Defendants do not set forth the level of ordinary skill being applied and
instead offer attorney argument. Unsworn attorney argument is not evidence.
Perfect Web Technologies, Inc. v. InfoUSA. Inc., 587 F.3d 1324, 1332 (Fed. Cir.
2009); Sundance, Inc. v. Demonte Fabricating Ltd., 550 F.3d 1356, 1363 (Fed. Cir.
2008) (overturning courts failure to grant a motion in limine precluding attorney
from offering testimony on invalidity).
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II. DISPUTED CLAIM TERMS PROPOSED BY ALL DEFENDANTS
A. From a health care provider associated with the user
Term MMRs Construction Defendants Construction
2. from a health
care provider
associated with the
user
Plain and ordinary meaning,
or wherein the files are
from a health care
provider associated with
the user
wherein the files are
received from the users
healthcare provider
There are two disputes associated with this term, how the document is
received and what the relationship between the user and the healthcare provider is.
With respect to the concept of how the item is received, Defendants
construction violates the norms of the English language. The term from a health
care provider associated with the user modifies the files, not the step of
receiving. A phrase is understood to modify the nearest language in proximity.
See, e.g., Degeorge v. Bernier, 768 F.2d 1318 (Fed. Cir. 1985) (finding that
[m]odifiers of a term are usually in proximity to such term, and would be
understood to modify such term) (superseded by statute on other grounds). Here,
the closest language in proximity to from a health care provider is the files
comprising the [personal health records / drug prescriptions] associated with the
user, not the step of receiving at the server. Therefore, the files are from a
healthcare provider (i.e. where they may originate from), but they do not need to be
received from the healthcare provider (i.e. where they were sent from).
Care should be taken when considering Defendants attorney argument over
what the specification does, or does not, disclose. The specification is viewed
through the eyes of one of ordinary skill in the art and attorney argument is not
evidence. See Phillips, 415 F.3d, at 1313; and Perfect Web, 587 F.3, at 1332. The
attorney argument does not give the Court a proper factual predicate upon which to
make a legal decision.
With respect to the relationship between the user and the healthcare provider,
the dispute revolves around the word associated with and how that term impacts
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the relationship between the health care provider and the user. Defendants re-write
the term associated with, which connotes a direct or indirect relationship (e.g.
J ane is associated with J ohn), into a possessive relationship (e.g. J ane is J ohns
wife). However, Defendants also concede that this term should be construed as its
ordinary and customary meaning. (Defendants Responsive Claim Construction
Brief, Dkt. No. 72 (Response) at 3:8-11 ([b]ecause the specification provides no
such alternate definition of from a healthcare provider associated with the user, the
ordinary and customary meaning of this term in view of the specification .).
Accordingly, no construction of the term is warranted, but even if needed,
Defendants selective interpretation runs afoul of basic claim construction maxims.
The Federal Circuit has held that a claim term should be construed
consistently with its appearance in other places in the same claim or in other claims
of the same patent. Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005)
(en banc). The word associated appears in claims 8 through 12 of the 466 Patent
and claims 1 through 3 of the 866 Patent several times to describe the relationship
between several different elements. (See 466 Patent at 16:66, 17:3, 9-10, 14, 27;
883 Patent at 15:47, 48, 50, 58, 64, 65; 16:17.) Defendants only define one
particular use of the term associated and ignore all of the other uses, which creates
an internally inconsistent claim interpretation. The same term should not have
different meanings in the same claim.
The Federal Circuit has been very clear that a claim interpretation that
excludes a preferred embodiment from the scope of the claim is rarely, if ever,
correct. Verizon Servs. Corp. v. Vonage Holding Corp. 503 F.3d 1295, 1305 (Fed.
Cir. 2007), citing MBO Labs., Inc. v. Becton, Dickinson, & Co., 474 F.3d 1323,
1333 (Fed. Cir. 2007) (internal citations omitted). Defendants take the position that
[t]here is no canon of claim construction holding that a particular claim must
encompass all disclosures in the specification. (Response at 3:25-27.) While all
embodiments do not need to be covered by the claim language, excluding the
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preferred embodiments is rarely correct. Plaintiff cited in its Opening Claim
Construction Brief, Dkt. No. 58 (Opening Brief) to a myriad of instances in which
Defendants construction would impermissibly exclude the preferred embodiments.
(See Opening Brief at 8, fn 5.)
B. Maintained on the server independently / Maintained separately
Terms MMRs Construction Defendants Construction
3. maintained on
the server
independently
or stored on the server
separately
stored on a server
controlled by a party
separate from the health
care provider, wherein the
health care provider is not
permitted access to the files
on the server.
4. maintained
separately
or stored separately
The parties do not dispute that maintained on a server means stored on a
server. The only issue in dispute is the meaning of independently, which is only
in one of the terms. (Response at 5.) Plaintiff maintains that the term is well
understood and does not require construction; thus, the plain and ordinary meaning
of independently and separately should control. Only if a construction is
necessary, does Plaintiff advance the option of defining separately. Plaintiffs
proposal is similar to the first half of Defendants proposal stored on a server
controlled by a party separate from the health care provider.
Claim 8 recites wherein the files are maintained on the server independently
from any files maintained by the health care provider and wherein the files are
managed privately by the user independently from the health care provider. 466
Patent at 17:18-22 (emphasis added). There are two different limitations that the
Defendants are requesting construction of, maintained and managed.
Defendants construction of maintained on the server independently introduces
concepts of who cannot have access to files, which conflicts with the express claim
language relating to managed.
Claim 8 of the 466 patent uses the transition term comprising and is open-
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ended, which means the presence of other parts or steps will not avoid infringement.
See Cal Model J ury Instr. at 3.3. By including a negative concept wherein the
health care provider is not permitted access to the files on the server, Defendants
are attempting to introduce the concept of disclaimer without citation to the case law
or proper evidentiary support. Disclaimer arises when a patentee makes a clear and
unambiguous disavowal of claim scope during prosecution, that disclaimer informs
the claim construction analysis by narrow[ing] the ordinary meaning of the claim
congruent with the scope of the surrender. Advanced Fiber Techs. Trust v. J&L
Fiber Servs., 674 F.3d 1365, 1372-4 (Fed. Cir. 2012), citing Omega Eng'g, Inc. v.
Raytek Corp., 334 F.3d 1314, 1324 (Fed. Cir. 2003); see also Schindler Elevator
Corp. v. Otis Elevator Co., 593 F.3d 1275, 1285 (Fed. Cir. 2010). Defendants point
to no clear and unambiguous disavowal that would require both the terms
separately and independently to have both been disavowed as required.
C. Means for scheduling one or more prescription refills concerning a
drug prescription
Term MMRs Construction Defendants Construction
7. means for scheduling
one or more prescription
refills concerning a drug
prescription
Not subject to 112(f);
and not indefinite
Subject to 112(f) and
indefinite for failure to
recite structure.
1. Legal standards for means or step plus function claims
This hearing (and related briefing) is directed to claim construction and not
invalidity. Thus, to the extent that Defendants are seeking to invalidate the claim
term as indefinite, the Defendants have not addressed the applicable legal standard
nor have they come forward with admissible factual evidence to support such an a
argument. The Supreme Court, in Nautilus v. Biosig Instruments, Inc., 572 U.S.
___; 134 S. Ct. 2120, 189 L. Ed. 2d 37 (2014), clarified that indefiniteness relates to
invalidity. Defendants conveniently ignore the relevant standard. A patent is
invalid for indefiniteness if its claims, read in light of the patents specification and
prosecution history, fail to inform, with reasonable certainty, those skilled in the art
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about the scope of the invention. The Supreme Court clarified that the definiteness
inquiry trains on the understanding of a skilled artisan at the time of the patent
application, not that of a court viewing matters post hoc. Nautilus, 134 S. Ct., at
2129. Patents are presumed to be valid, and so, Defendants bear the burden of
proving that an ordinary artisan would not understand the disclosure. 35 U.S.C.
282; see Aero Prods. Int'l, Inc. v. Intex Rec. Corp., 466 F.3d 1000, 1015 (Fed. Cir.
2006).
Defendants rely on a single pre-Nautilus district court order as alleged support
for their constructions. Neurografix v. Siemens Medical Solutions USA, Inc., No.
10CV1990, MRP (RZx), 2011 WL 3439324, at *10-16 (C.D. Cal. May 5, 2011) .
Even when the Neurografix court applied the pre-Nautilus standard, it held that
[b]ecause neither party addressed how a person of skill in the art would identify the
nerve or the background, the Court declines to find the term indefinite or construe
the term. If the parties pursue the issue, the parties must explain how skilled artisans
distinguish those parts from each other.
1
Id. at *26. The Court did not, nor could
it, invalidate the claim under the guise of a Markman hearing, but rather the Court
could only defer a ruling pending receipt of evidence from one of ordinary skill in
the art. It is wholly improper to morph the claim construction process into
dispositive motion practice.
There is no dispute that the relevant structure pertaining to claim 1 of the
883 Patent relates to computer software. The Federal Circuit recently held that to
one of ordinary skill in the art, the structure of computer software is understood
through, for example, an outline of an algorithm, a flowchart or a specific set of
instructions or rules, and that structure may also be provided by describing the
claim limitations operation, such as its input, output, or connections. Apple Inc. v.

1
To the extent the Court would like testimony on these issues at this hearing, Plaintiff reserves the
right to call its expert and the inventor, Mr. Lorsch, as witnesses to testify consistent with their
prior presentations, declarations and depositions.
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Motorola, Inc., 2014 U.S. App. LEXIS 7757 (Fed. Cir. Apr. 25, 2014); see Finisar
Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) (an algorithm
may be disclosed in any understandable terms including as a mathematical formula,
in prose, or as a flow chart, or in any other manner that provides sufficient
structure.)
2

2. The claim term is not governed by 35 U.S.C. 112(f) because
the claim itself recites sufficient structure
Plaintiffs expert testified that the claim term is supported by sufficient
structure in reciting steps (a) and (b), which are steps in an algorithm (even
assuming that were required), and also describe the algorithms operation by
providing inputs, outputs, and objectives. (Opening Brief at 19-20; J estice Depo.
Tr. at 240:16-241:10, attached as Supp. Hatch Decl., Ex. B). Defendants concede
that the claim term recites at least some steps in support of the function of
scheduling a prescription refill, and only argue that the limitation does not entirely
perform the recited function. (Response at 11.) In particular, they contend that the
claim merely repeats the scheduling function, and does not explain how to
perform it. (Id.)
Defendants position is inconsistent with the parties agreed construction of
schedule [scheduling] one or more prescription refills, which is create [creating]
a schedule for one or more prescription refills. (See Amended J oint Claim
Construction and Prehearing Statement, Docket No. 61 (the J CCS), p. 2.) The
agreed construction replaces the repetitive words that Defendants find objectionable,
and also indicates how the scheduling is performed, i.e. by creating a schedule.

2
Defendants contend that the structure in a claim limitation must be in the form of an
algorithm. (Response at 10, fn 5.) This cannot be correct, as the Court in Apple made clear by
stating that the district court misapplied our precedent by requiring the claim limitations
themselves to disclose a step-by-step algorithm., which only applies to corresponding
structure in the specification, not the claims, and only when it is not disputed that claims were
drafted in means-plus-function format. Apple, 2014 U.S. App. LEXIS 7757 (Fed. Cir. 2014)
(emphasis added).
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Defendants ignore the agreed construction, and never even provided it to their own
expert.
3

Moreover, the claim need not recite a specific algorithm for scheduling or
describe in detail how the scheduling occurs. A limitation need not connote a
single, specific structure but may describe a class of structures and not be subject
to 112(f). See Apple, 2014 U.S. App. LEXIS 7757 (Fed. Cir. 2014). For example,
in Apple, the Court found that the term heuristic defines a class of structures and
therefore the claim limitations reciting this term provide sufficiently definite
structure to a person of ordinary skill in the art, even though there was no specific
heuristic algorithm in the claim. Id; See Personalized Media Commcns, LLC v.
Intl Trade Commn, 161 F.3d 696, 705 (Fed. Cir. 1998) ( detector conveys to
one knowledgeable in the art a variety of structures known as detectors,.)
Likewise, Plaintiffs expert testified that scheduling defines a class of
structures called schedulers, which are well known to a person of ordinary skill in
the art.
4
The scheduling limitations therefore provide sufficiently definite
structure to a person of ordinary skill in the art, for performing the recited function
of scheduling, even though the claim does not specifically identify the precise
algorithm for the scheduling. Apple, 2014 U.S. App. LEXIS 7757 (Fed. Cir. 2014).
Moreover, the fact that the structure for scheduling is defined partly in terms of its
function, i.e. the function of scheduling prescription refills, does not detract

3
Dwoskin Depo. Tr. at 165:2-8, attached as Supplemental Declaration of Ryan E. Hatch (Supp.
Hatch Decl.), Ex. A (Q Are you aware that the parties parties have a agreed construction of the
term, scheduling one or more prescription refills? A No, I was not aware of that. Q And you're
not aware of what that agreed construction is? A No, I'm not.)
4
J estice Depo. Tr. 59:18-20, attached as Supp. Hatch Decl., Ex. B (A. The scheduler is a well
understood set of software. We've been scheduling in computers since 1960.); J estice Decl. at
19 (A POSA would also understand that the step of (b) scheduling the one or more prescription
refills concerning the drug prescription based on the prescription and directed by the user can
be implemented by software constructs for designating that events will occur. A POSA would
know how to implement software constructs for designating that events will occur, and could
implement this step using a calendar or other internal data structure.).
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from the definiteness of its structure, as many devices take their names from the
functions they perform. Id. Accordingly, the claim term and steps (a) and (b)
recite sufficient structure in support of the function of scheduling, and the claim
limitation is not governed by 112(f).
3. The specification also includes sufficient acts, structure, or
materials corresponding to the MFS Limitation
If the Court should find that the claim term is governed by Section 112(f)
despite the structure in steps (a) and (b), then it should also find that the term is not
indefinite. Here, graphical user interface (GUI) elements in Figures 7-11 of the
883 Patent, together with the flowchart in Figure 1 sufficiently describe the
operation of scheduling a prescription refill to a person of ordinary skill. (See
J estice Decl. at 5-7, attached to Opening Brief as Hatch Decl., Ex. B; Opening Brief
at 21-24.) For example, both experts agree that the my calendar menu item shown
in Figure 7 leads to a calendar used for scheduling, which provides sufficiently
definite structure. (Opening Brief at 23, fn 15.)
Defendants contend that there are many algorithms for scheduling, and the
specification does not identify any particular algorithm.
5
(Response at 13-16.)
However, the requirement of specific structure in 112, P 6 does not raise the
specter of an unending disclosure of what everyone in the field knows. Atmel
Corp. v. Information Storage Devices, 198 F.3d 1374, 1382 (Fed. Cir. 1999)
(emphasis added), accord Creo Prods. v. Presstek, Inc., 305 F.3d 1337 (Fed. Cir.
2002). For example, one skilled in the art knows how to make and use a bolt, a
wheel, a gear, a transistor, or a known chemical starting material. Atmel, 198 F.3d
1374 at 1382. Likewise, Plaintiffs expert testified that one skilled in the art knows

5
Defendants cite to a declaration in a separate and unrelated case, which they never disclosed as
extrinsic evidence on which they intended to rely on for claim construction. (Response at 16-17,
fn. 12; J CCS at 13-16.) Accordingly, objects to its use as evidence in these proceedings and
reserve the right to call its expert and the inventor, Mr. Lorsch as witnesses at the Hearing. See
J estice Depo. Tr. at 128:20-23, attached Supp. Hatch Decl., Ex. B (objecting that the declaration
was not disclosed on the joint claim construction statement as extrinsic evidence.)
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how to use a my calendar button and scheduler. (J estice Decl. at 5-7; Opening
Brief at 21-24.) It is unnecessary to encumber the specification with detailed
algorithms for rudimentary functions. Indeed, the specification would be of
enormous and unnecessary length if one had to literally reinvent and describe the
wheel in this manner. Atmel, 198 F.3d 1374 at 1382.
III. DISPUTED CLAIM TERMS PROPOSED BY SELECTED
DEFENDANTS
D. Health care provider
Term MMRs Construction Defendants Constructions
1. health care
provider
Plain and ordinary
meaning, or A
provider of health care
services
Quest:
A provider of health services
that does not own, operate, or
control the server
The plain and ordinary meaning of health care provider is a provider of
health care services, and does not connote anything regarding a server. (Opening
Brief at 6.) Quest attempts to ascribe a unique meaning to the term by alleging that
the specification always excludes ownership, but does so with attorney argument.
Unsworn attorney argument is not evidence. Perfect Web, 587 F.3d, 1332. The
patent specification is written such that it can be understood by one of ordinary skill
in the art. Allowing an attorney to testify as to what one of ordinary skill in the art
would understand when the attorney is not qualified as an expert is improper.
Sundance, 550 F.3d, 1363.
Even if the attorney argument is considered, [t]here are no words of manifest
exclusion or restriction. Hill-Rom Servs., 2014 U.S. App. LEXIS 12105, at *8.
Absent words that manifest the intent to limit the meaning of a term, we do not
import limitations from the specification into the claims. Id.
E. Managed privately by the user
Term MMRs Construction Allscripts, Quest and
Empty Jar
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5. managed
privately by the
user
or directed or controlled
privately by the user
controlled and organized
only by the user
Defendants do not dispute that managed means directed or controlled.
The only issue is whether managed privately by the user requires that the files be
organized only by the user. (Response at 19.) Once again this is an attempt to
read disclaimer (only by the user) into an otherwise open-ended claim. See
Advanced Fiber, 674 F.3d, 1372-4; Schindler Elevator Corp., 593 F.3d, 1285.
Once again, Defendants do not point to a single place in the claims,
specification, file history, or other evidence where organized only by the user
even appears. (Id. at 19-21.) While the specification refers to the users ability to
organize files, it never equates this with managing files. In fact, these concepts
are different, as evidenced by independent claims 1 and 15, which recite different
terms for organizing files and that files are managed privately by the user
(the exact language at issue here). See, e.g., Helmsderfer v. Bobrick Washroom
Equip., Inc., 527 F.3d 1379, 1381-1382 (Fed. Cir. 2008) (different claim terms are
presumed to have different meanings).
F. Prescription refill(s)
Term MMRs Construction Allscripts and Quest
6. prescription
refill(s)
or an order including a
second or subsequent
supply of medication.
An order for a second or
subsequent supply of
medication that is authorized
by an existing prescription.
Defendants re-write the plain and ordinary meaning of a refill by including
authorized by an existing prescription. The rules concerning authorization for
subsequent supply of medications differ by class of drug (e.g. Schedule II, III, IV,
etc.) and other regulations. Defendants attempt to limit the 833 patent to rules
governing dispensing Schedule II controlled substances over the Internet.
(Response, Ex. K.) There is no legal of factual basis to invoke such a disclaimer.
Defendants only submitted a portion of the Federal Regulations on controlled
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substances. For example, 21 C.F.R. 1306.22(e) allows oral refill authorization
for Schedule III and IV controlled substances when the original refills have been
used. (Supp. Hatch Decl., Ex. C.) Thus, a refill does not need to be authorized by
the existing prescription as Defendants attempt to limit the term.
G. The schedule
Term MMRs Construction Allscripts and Quest
8. the schedule

or a designation that an
event will occur
a file, such as a calendar
entry, designating the date(s)
for the one or more
prescription refills
Allscripts and Quest already agree to a construction reciting create
[creating] a schedule (Opening Brief at 24.) They do not dispute that the
schedule here refers to the very same schedule for one or more prescription
refills in the agreed construction. (Response at 24-25.) Phillips v. AWH Corp.,
415 F.3d, 1314 (a claim term should be construed consistently with its appearance
in other places in the same claim or in other claims of the same patent.)
Allscripts and Quest cite to no evidence why the plain and ordinary meaning
of the term the schedule (n.) should not be used. There is no explanation of
lexicography or disclaimer. Defendants depart from the plain and ordinary meaning
and use improper attorney argument import into the the schedule a file, a
calendar entry, dates, and prescription refills. Even then the argument is
internally inconsistent. On one hand, they argue the concept of a temporal
indicator is not limited to a date, but can also include a time, elapsed time (i.e.
the amount of time from a particular point in time), or some other temporal
indication. (Response at 24.) And then on the other, the construction limits the
claim to require date(s), to the exclusion of time or any other kind of temporal
indicator. Under Defendants own arguments, their construction cannot be correct.

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Respectfully submitted,

Dated: August 4, 2014 LINER LLP

By:

/s/ Ryan E. Hatch
Randall J . Sunshine
Edward A. Klein
Ryan E. Hatch
Attorney for Plaintiff
MYMEDICALRECORDS, INC.


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