Even Though Claims Did Not Satisfy Machine-or-Transformation Test, Patent Not Held Ineligible Because the Claims Were Not Directed to an Abstract Idea

February 24, 2012

Defendants filed a motion for summary judgment asserting that all claims of the patent-in-suit was invalid under 35 U.S.C. § 101 because the claims did not satisfy the machine-or-transformation test and otherwise disclosed an abstract idea. The patent-in-suit is directed to a method for computing Current Procedural Technology ("CPT") from documents generated by physicians. CPT codes are a system of codes developed by the American Medical Association ("AMA") in conjunction with the Health Care Financing Administration.

The CPT codes provide a uniform language, which facilitates patient billing. The invention allows a CPT code to be calculated based on the documentation process that occurs during the physician-patient meeting. During the meeting, the computer prompts the physician with a list from which the physician chooses particular descriptions that best characterize the patient's status. All of the claims involve a process for determining CPT codes based on information that is gathered during the physician-patient meeting.

Defendants argued that the machine-or-transformation test was not satisfied because it merely requires a general purpose computer. The district court agreed that the general purpose computer did not satisfy the machine prong of the machine-or-transformation test. " The '443 patent claims require the use of a general purpose computer; however, this alone does not satisfy the machine prong of the machine-or-transformation test because it fails to impose a meaningful limitation on the claim scope. See Bilski I, 545 F.3d at 961 ("[T]he use of a specific machine...must impose meaningful limits on the claim's scope to impart patent-eligibility." (citing Benson, 409 U.S. At 71-71)). To hold otherwise would dictate that all software-based claims satisfy the machine-or-transformation test. This is not the law. See Benson, 409 U.S. at 65, 73 (Finding a method to be performed on a computer for converting binary coded decimals into pure binary form to be patent-ineligible). The Federal Circuit recently explained that requiring a computer for computation and data storage in a method claim did not impose a meaningful limitation on patent claims. See Fuzzysharp Techs. Inc. v. 3DLabs Inc., 2011 U.S. App. LEXIS 22274, at *8-9 (Fed. Cir. Nov. 4, 2011). Thus, requiring a computer for generic tasks such as computation and data storage is insufficient to satisfy the machine prong of the machine-or-transformation test. The '443 patent claims require the use of a general purpose computer for computation, storage, and display; these generic functions do not impose meaningful limits on the claims. Accordingly, the '443 patent claims do not satisfy the machine prong of the machine-or-transformation test "

The district court also concluded that the transformation prong was not satisfied because "[t]he '443 patent involves claims for manipulating data gathered in a physician-patient encounter and generating a final CPT code for that encounter. Final CPT codes are not physical and tangible objects; they are a system of standardized numeric codes use to uniformly categorize physician-patient encounters. Thus, the '443 patent method claims do not satisfy the transformation prong of the machine-or-transformation test."

Nonetheless, the district court found that the claims were not invalid because they were not drawn to an abstract idea. "The '443 patent claims are not drawn to an abstract idea. They involve the use of a computer and complex programming and are not drawn to purely mental processes. Prior attempts to solve the coding problems addressed by the '443 patent entailed hiring full-time coders who pored over medical records and tomes of information about CPT code criteria to determine the appropriate code. The '443 claims provide a patentable improvement to the previous methods for determining the CPT codes for a physician-patient encounter. See Research Corp., 627 F.3d at 869 ""[T]his court notes that inventions with specific applications or improvements to technologies in the marketplace are not likely to be so abstract that they override the statutory language and framework of the Patent Act."). The claims are also subject to meaningful limits. They relate specifically to a physician-patient encounter and involve the determination of a specific type of medical procedure code that is published by the AMA. Though the claims do not satisfy the machine-or-transformation test, they are still subject to meaningful limitations of their scope. Accordingly, the '443 patent claims are not drawn to an abstract idea. They survive the § 101 threshold inquiry and are for patentable-subject matter."

Accordingly, the district court denied the motion for summary judgment.

Prompt Medical Systems, L.P. v. Allscriptsmysis Healthcare Solutions, Inc., Case No. 6:10-CV-71 (E.D. Tex. Feb. 13, 2012)

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