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Plaintiff Loses Motion for Summary Judgment after District Court Concludes that Dispute over Person of Ordinary Skill in the Art Is Not Material

The plaintiff, MyMedicalRecords (“MMR”), owns U.S. Patent No. 8,498,883 (the ‘883 Patent) entitled “Method for Providing a User with a Service for Accessing and Collecting Prescriptions.” MMR asserted claims 1-3 of the ‘883 Patent against Quest Diagnostics, Inc., WebMD Health Corp., WebMD Health Services Group Inc., and Allscripts Healthcare Solutions, Inc. (collectively, “Defendants”).

As explained by the district court, the asserted claims are method claims directed to providing users with a secure and private way to collect, access, and manage drug prescriptions online. Independent claim 1 recites a “means for scheduling one or more prescription refills concerning a drug prescription” limitation. Claims 2 and 3 depend on claim 1 and therefore incorporate this “means for scheduling” limitation by reference.

Defendants moved for Summary Judgment of Invalidity, arguing that the district court had found the “means for scheduling” term indefinite in its Claim Construction Order. The district court had already determined that the “means for scheduling” claim limitation, found in all asserted claims 1-3, was indefinite because the ‘883 Patent itself discloses no algorithm for performing the recited function. See, e.g., Triton Tech of Tx., LLC v. Nintendo of Am., Inc., 753 F.3d 1375, 1378 (Fed. Cir. 2014) (holding that a means-plus-function limitation is indefinite if the stated function is performed by a general-purpose computer or microprocessor and the specification fails to disclose the algorithm that the computer performs to accomplish that function).

In opposition to the summary judgment motion, MMR argued there was a factual dispute regarding the level of ordinary skill in the art that prevented summary judgment. The district court found this argument irrelevant and immaterial as indefiniteness is a question of law resolvable during claim construction. Personalized Media Commc’ns., LLC v. Int’l Trade Comm’n, 161 F.3d 696, 705 (Fed. Cir. 1998). (“[I]ndefiniteness is a legal conclusion that is drawn from the court’s performance of its duty as the construer of patent claims.”).

As concluded by the district court, “while it is true that claims are to be construed and indefiniteness is to be determined from the perspective of a hypothetical person of ordinary skill in the art (POSITA), this Court’s Claim Construction Order itself makes clear that the Court’s indefinitenss ruling was made from the perspective of a POSITA. There are no factual disputes to be resolved as to the asserted claims 1-3 of the ‘883 Patent.

Accordingly, the district court granted the Defendants motion for summary judgment.

Mymedicalrecords, Inc. v. Walgreen Co., Case No. 2:13-CV-00631-ODW (C.D. Cal. Dec. 22, 2014)

The authors of are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Stan Gibson at 310.201.3548 or