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`UNITED STATES DISTRICT COURT
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`SOUTHERN DISTRICT OF CALIFORNIA
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`CLINICOMP INTERNATIONAL, INC.,
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`v.
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`CERNER CORPORATION,
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`Plaintiff,
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`Defendant.
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` Case No.: 17-cv-02479-GPC (DEB)
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`ORDER GRANTING DEFENDANT’S
`MOTION FOR ATTORNEY’S FEES
`PURSUANT TO 35 U.S.C. § 285
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`[Dkt. No. 124.]
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`On November 30, 2022, Defendant Cerner Corporation (“Cerner”) filed a motion
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`for attorney’s fees pursuant to 35 U.S.C. § 285. (Dkt. No. 124.) On December 16, 2022,
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`Plaintiff CliniComp International, Inc. (“CliniComp”) filed a response in opposition to
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`Cerner’s motion for attorney’s fees. (Dkt. No. 127.) On December 30, 2022, Cerner filed
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`a reply. (Dkt. No. 130.) On February 2, 2023, the Court took the motion under submission.
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`(Dkt. No. 132.) For the reasons set forth below, the Court grants Cerner’s motion for
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`attorney’s fees.
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`I.
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`BACKGROUND
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`CliniComp is the owner of U.S. Patent No. 6,665,647 (“the ’647 Patent”) by
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`assignment. (Dkt. No. 1, Compl. ¶ 2.) In the present action, CliniComp alleged that Cerner
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`directly infringes claims 1, 2, 5, 10-13, 15-18, and 20-23 of the ’647 Patent by making,
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`using, selling, and/or offering to sell within the United States Cerner’s CommunityWorks,
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`17-cv-02479-GPC (DEB)
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`Case 3:17-cv-02479-GPC-DEB Document 133 Filed 02/03/23 PageID.3782 Page 2 of 23
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`PowerWorks, and Lights on Network services (collectively “the accused services”). (Dkt.
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`No. 103, Ex. 2 at 21; see also Dkt. No. 1, Compl. ¶¶ 15-16.)
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`The ’647 Patent is entitled “Enterprise Healthcare Management System and Method
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`of Using Same.” U.S. Patent No. 6,665,647, at [54] (filed Dec. 16, 2003). The Federal
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`Circuit described the ’647 Patent as follows:
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`The ’647 patent describes a healthcare management system for
`healthcare enterprises. The purpose of the ’647 patent is to allow healthcare
`enterprises to consolidate legacy software applications and new software
`applications together on one software platform. Many healthcare enterprises
`utilize legacy systems for managing data related to a variety of uses, including
`patient care, accounting, insurance, and administrative functions. These
`established systems are often outdated and too inflexible to support healthcare
`enterprises in the “modern managed care environment.” ’647 patent at col. 1
`ll. 58–62. The healthcare management system described in the ’647 patent
`allows healthcare enterprises to preserve existing legacy applications while
`simultaneously phasing in new or updated applications on the same system.
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`The enterprise healthcare management system in the ’647 patent allows
`enterprises to “remotely host[] . . . turnkey health care applications” and
`“provide[s] . . . enterprise users access to the turnkey applications via a public
`network.” Id. at col. 2 ll. 61–65. Enterprises can upgrade existing capabilities
`and add functionality not available in their current system without significant
`capital investments. Because the applications are hosted on a public network
`(i.e., the internet), the healthcare enterprise only needs computing resources
`sufficient to allow secure, quality access to the internet. The “turnkey”
`management system adjusts to changes within the enterprise as the system
`“easily and cost-effectively scales” to respond to an enterprise’s needs. Id. at
`col. 3 ll. 19–23.
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`The information collected by the enterprise from its applications may
`be stored in a searchable database. Specifically, the ’647 patent discloses a
`clinical data repository that stores information from applications within the
`suite of applications on the system. The clinical data repository stores
`“multidisciplinary information on a wide variety of enterprise functions.” Id.
`at col. 6 ll. 31–40. For example, the clinical data repository stores
`pharmaceutical, radiology, laboratory, and clinical information data utilized
`by other applications of the application suite.
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`The ’647 patent discloses that “the clinical data repository is a database
`that is partitioned” and that “the database portion may be configured as either
`a logical partition or a physical partition.” Id. at col. 9 ll. 60–64. The
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`Case 3:17-cv-02479-GPC-DEB Document 133 Filed 02/03/23 PageID.3783 Page 3 of 23
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`healthcare management system is also capable of supporting multiple
`enterprises, in which case “the information related to each of the separate
`healthcare enterprises is stored in a separate partition of the database.” Id. at
`col. 10 ll. 6–10. As such, when multiple enterprises are involved with using
`the system, the clinical data repository may have multiple partitions, with each
`partition holding healthcare management information for the respective
`enterprise.
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`Among other things, the ’647 patent describes the partitioning of data
`for multiple enterprises so as to allow the storing of “[the] first healthcare data
`in a first portion of the database associated with the first healthcare enterprise
`facility” and separately storing “[the] second healthcare data in a second
`portion of the database associated with the second healthcare enterprise
`facility.” Id. at col. 14 ll. 24–29. The system allows two (or more)
`independent healthcare enterprises to share access to certain applications
`while maintaining sole access to their respective unique healthcare
`applications. The databases are effectively “partitioned” or “portioned” in this
`way.
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`Cerner Corp. v. Clinicomp Int’l, Inc., 852 F. App’x 532, 532–33 (Fed. Cir. 2021).
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`Independent claim 1 of the ’647 Patent, the only independent claim asserted by
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`CliniComp in this action,1 recites:
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`1. A method of operating an enterprise healthcare management system for a
`first healthcare enterprise facility and a second healthcare enterprise facility
`independent of the first healthcare enterprise facility, comprising:
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`establishing a first secure communication channel via a public network
`between an application server and a first end user device in the first enterprise
`facility and establishing a second secure communication channel via the
`public network between the application server and a second end user device
`in the second enterprise facility, the application server remotely hosting a
`healthcare application and having a database;
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`receiving first healthcare data from the first end user and second healthcare
`data from the second end user;
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`processing the first healthcare data and the second healthcare data with the
`healthcare application;
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`storing the processed first healthcare data in a first portion of the database
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`1
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`(See Dkt. No. 103, Ex. 2 at 2.)
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`3
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`17-cv-02479-GPC (DEB)
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`Case 3:17-cv-02479-GPC-DEB Document 133 Filed 02/03/23 PageID.3784 Page 4 of 23
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`associated with the first healthcare enterprise facility and storing the
`processed second healthcare data in a second portion of the database
`associated with the second healthcare enterprise facility;
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`configuring the database to accept legacy information derived from a legacy
`application operating at each of the first and second healthcare enterprise
`facilities, wherein the functions in the healthcare application are not
`duplicative of the legacy application; and
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`generating a query to extract information from the database relevant to a
`respective one of the first and second healthcare enterprise facilities derived
`from the healthcare data and the legacy information for managing and tracking
`a performance of the respective one of the first and second healthcare
`enterprise facilities,
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`wherein healthcare data in the first portion of the database is only accessible
`to the first end user device and healthcare data in the second portion of the
`database is only accessible to the second end user device.
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`’647 Patent col. 14 ll. 8-45.
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`On December 11, 2017, CliniComp filed a complaint for patent infringement against
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`Cerner, alleging infringement of the ’647 Patent. (Dkt. No. 1, Compl.) On May 16, 2018,
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`the Court granted Cerner’s motion to dismiss CliniComp’s claims for willful infringement
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`and indirect infringement as well as the relief sought in connection with these claims of
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`injunctive relief, treble damages, and exceptionality damages. (Dkt. No. 18 at 21.) On
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`June 25, 2018, Cerner filed an answer to CliniComp’s complaint. (Dkt. No. 19.)
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`On March 5, 2019, the Patent Trial and Appeal Board (“PTAB”) instituted an inter
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`partes review (“IPR”) as to claims 1-25 and 50-55 of the ’647 Patent. (Dkt. No. 30-1, Ex.
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`A.) On March 7, 2019, the Court granted a stay of the action pending completion of the
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`IPR proceedings. (Dkt. No. 31.) On March 26, 2020, the PTAB issued a final written
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`decision, determining that claims 50-55 of the ’647 Patent are not patentable in light of the
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`prior art, but that claims 1-25 of the ’647 Patent are patentable.2 (Dkt. No. 32, Ex. A at 93-
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`2
`Specifically, the PTAB concluded that Cerner had shown by a preponderance of the
`evidence that: (1) claims 50-52 are not patentable based on Evans; (2) claims 53 and 54 are
`not patentable based on Evans and Rai; (3) claims 50-53, and 55 are not patentable based
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`4
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`17-cv-02479-GPC (DEB)
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`Case 3:17-cv-02479-GPC-DEB Document 133 Filed 02/03/23 PageID.3785 Page 5 of 23
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`94.) On April 20, 2021, the Federal Circuit affirmed the PTAB’s determination that claims
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`1-25 of the ’647 Patent are patentable.3 (Dkt. No. 38-2, Ex. B at 10.) On June 24, 2021,
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`the Court granted the parties’ joint motion to lift the stay of the action. (Dkt. No. 44.)
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`On July 23, 2021, Cerner filed an amended answer to CliniComp’s complaint. (Dkt.
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`No. 52.) On October 7, 2021, the Court issued a scheduling order for the action. (Dkt. No.
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`55.)
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`On July 28, 2022, the Court issued a claim construction order, construing the
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`disputed claim terms from the ’647 Patent. (Dkt. No. 91.) On November 15, 2022, the
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`Court granted Cerner’s motion for summary judgment of non-infringement. (Dkt. No. 120.)
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`Specifically, the Court held that Cerner had demonstrated that the accused services do not
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`infringe the asserted claims of the ’647 Patent as a matter of law. (Id. at 44.) On November
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`16, 2022, the Court entered a judgment in the action in favor of Defendant Cerner and
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`against Plaintiff CliniComp. (Dkt. No. 121.) On December 30, 2022, the Clerk of Court
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`taxed costs in favor of Cerner in the amount of $8,265.80. (Dkt. No. 131 at 3.)
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`By the present motion, Cerner moves for attorney’s fees pursuant to 35 U.S.C. §
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`285. (Dkt. No. 124-1.) Specifically, Cerner requests that the Court award Cerner its
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`attorneys’ fees incurred since July 28, 2022 – the date the Court issued its claim
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`construction order.4 (Id. at 1, 17.)
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`on Johnson and Evans; and (4) claim 54 is not patentable based on Johnson, Evans, and
`Rai. (Dkt. No. 32, Ex. A at 93-94.) The PTAB further concluded that Cerner had not
`shown by a preponderance of the evidence: (1) that claims 1-5, 10-13, and 15-25 are
`unpatentable based on Johnson and Evans; or (2) that claims 6-9, and 14 are unpatentable
`based on Johnson, Evans, and Rai. (Id. at 93.)
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`3
`On November 15, 2021, the PTO issued an inter partes review certificate for the
`’647 Patent, stating: “Claims 1-25 are found patentable” and “Claims 50-55 are cancelled.”
`(Dkt. No. 71-2, Ex. A at A-20–A-21.)
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`Pursuant to Federal Rule of Civil Procedure 54(d)(2)(B)(iii), Cerner estimates that
`the amount of fees sought by its motion for attorney’s fees is “approximately $925,000.”
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`17-cv-02479-GPC (DEB)
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`I.
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`Legal Standards
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`II. DISCUSSION
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`A.
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`Legal Standards Governing Attorney’s Fees Under 35 U.S.C. § 285
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`“Section 285 of the Patent Act authorizes a district court to award attorney’s fees in
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`patent litigation.” Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545, 548
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`(2014). Section 285 provides: “The court in exceptional cases may award reasonable
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`attorney fees to the prevailing party.” 35 U.S.C. § 285.
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`The Supreme Court has held that “an ‘exceptional’ case is simply one that stands out
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`from others with respect to the substantive strength of a party’s litigating position
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`(considering both the governing law and the facts of the case) or the unreasonable manner
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`in which the case was litigated.” Octane Fitness, 572 U.S. at 554; accord Energy Heating,
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`LLC v. Heat On-The-Fly, LLC, 15 F.4th 1378, 1382 (Fed. Cir. 2021). “[A] case presenting
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`either subjective bad faith or exceptionally meritless claims may sufficiently set itself apart
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`from mine-run cases to warrant a fee award.” Octane Fitness, 572 U.S. at 555. But “fee
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`awards are not to be used ‘as a penalty for failure to win a patent infringement suit.’”
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`Checkpoint Sys., Inc. v. All-Tag Sec. S.A., 858 F.3d 1371, 1376 (Fed. Cir. 2017) (quoting
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`Octane Fitness, 572 U.S. at 548); see Universal Stabilization Techs., Inc. v. Advanced
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`Bionutrition Corp., No. 17CV87-GPC(MDD), 2018 WL 6181479, at *4 (S.D. Cal. Nov.
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`27, 2018) (“Failure to win on summary judgment is not a basis for an attorney’s fee award
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`under § 285.”); see also FireBlok IP Holdings, LLC v. Hilti, Inc., 855 F. App’x 735, 739
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`(Fed. Cir. 2021) (“The strength of a party’s litigation position is what is relevant to an
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`exceptional case determination, not the correctness or success of that position.” (citing SFA
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`Sys., LLC v. Newegg Inc., 793 F.3d 1344, 1348 (Fed. Cir. 2015))).
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`“[A] district court makes the exceptional-case determination on a case-by-case basis
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`considering the totality of the circumstances.” Energy Heating, 15 F.4th at 1382 (citing
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`(Dkt. No. 124-1 at 17.) See Fed. R. Civ. P. 54(d)(2)(B)(iii) (stating that a motion for
`attorney’s fees must “state the amount sought or provide a fair estimate of it”).
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`17-cv-02479-GPC (DEB)
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`Octane Fitness, 572 U.S. at 554); see Intell. Ventures I LLC v. Trend Micro Inc., 944 F.3d
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`1380, 1384 (Fed. Cir. 2019) (explaining that a district court must determine whether “the
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`case overall was exceptional”). In determining whether to award fees, district courts may
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`consider a nonexclusive list of factors, including “‘frivolousness, motivation, objective
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`unreasonableness (both in the factual and legal components of the case) and the need in
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`particular circumstances to advance considerations of compensation and deterrence.’”
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`Octane Fitness, 572 U.S. at 554 n.6 (quoting Fogerty v. Fantasy, Inc., 510 U.S. 517, 534
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`n.19 (1994)). There is no precise rule or formula for determining whether to award
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`attorney’s fees, but instead equitable discretion should be exercised in light of the above
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`considerations. Id. at 554 (quoting Fogerty, 510 U.S. at 534); see Blackbird Tech LLC v.
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`Health In Motion LLC, 944 F.3d 910, 914 (Fed. Cir. 2019).
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`The determination of whether a case is “exceptional” under § 285 is committed “to
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`the discretion of the district court.” Highmark Inc. v. Allcare Health Mgmt. Sys., Inc., 572
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`U.S. 559, 563 (2014); see Thermolife Int’l LLC v. GNC Corp., 922 F.3d 1347, 1356 (Fed.
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`Cir. 2019) (“We generally ‘give great deference to the district court’s exercise of discretion
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`in awarding fees.’” (quoting Energy Heating, 889 F.3d at 1307)); Spineology, 910 F.3d at
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`1229 (“We review all aspects of a district court’s § 285 determination for abuse of
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`discretion, keeping in mind that the district court is better positioned to decide whether a
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`case is exceptional, because it lives with the case over a prolonged period of time.” (quoting
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`Highmark, 572 U.S. at 560, 564)). “A district court must ‘provide a concise but clear
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`explanation of its reasons for the fee award.’” Thermolife, 922 F.3d at 1356 (quoting
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`Hensley v. Eckerhart, 461 U.S. 424, 437 (1983)). The party seeking fees must prove that
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`the case is exceptional by a preponderance of the evidence. Energy Heating, 15 F.4th at
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`1382; see Octane Fitness, 572 U.S. at 557–58.
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`B.
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`Legal Standards Governing Patent Infringement
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`Because the exceptionality determination in this case involves an assessment of the
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`strength of CliniComp’s claim for patent infringement, the Court sets forth the relevant
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`legal standards governing patent infringement claims. See Octane Fitness, 572 U.S. at 554
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`7
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`17-cv-02479-GPC (DEB)
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`Case 3:17-cv-02479-GPC-DEB Document 133 Filed 02/03/23 PageID.3788 Page 8 of 23
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`(explaining that an exceptionality determination requires an examination of the substantive
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`strength of a party’s litigating position under “the governing law”). A patent infringement
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`analysis proceeds in two steps. Niazi Licensing Corp. v. St. Jude Med. S.C., Inc., 30 F.4th
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`1339, 1350 (Fed. Cir. 2022); JVW Enterprises, Inc. v. Interact Accessories, Inc., 424 F.3d
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`1324, 1329 (Fed. Cir. 2005). In the first step, the court construes the asserted claims as a
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`matter of law. See Niazi, 30 F.4th at 1351; JVW, 424 F.3d at 1329. In the second step,
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`the factfinder compares the properly construed claims to the accused method or device.
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`See id.
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`“‘The patentee bears the burden of proving infringement by a preponderance of the
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`evidence.’” Creative Compounds, LLC v. Starmark Labs., 651 F.3d 1303, 1314 (Fed. Cir.
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`2011). To establish infringement of a method claim, “a patentee must prove that each and
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`every step of the method or process was performed.” Aristocrat Techs. Australia Pty Ltd.
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`v. Int’l Game Tech., 709 F.3d 1348, 1362 (Fed. Cir. 2013); see Akamai Techs., Inc. v.
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`Limelight Networks, Inc., 797 F.3d 1020, 1022 (Fed. Cir. 2015) (en banc) (“Direct
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`infringement under § 271(a) occurs where all steps of a claimed method are performed by
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`or attributable to a single entity.”); Star Sci., Inc. v. R.J. Reynolds Tobacco Co., 655 F.3d
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`1364, 1378 (Fed. Cir. 2011) (“To prove infringement, a plaintiff must prove the presence
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`of each and every claim element or its equivalent in the accused method or device.”).
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`II. Analysis
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`Cerner argues that it is entitled to its reasonable attorney’s fees under 35 U.S.C. §
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`285 because this case stands out as an exceptional one. (Dkt. No. 124-1 at 1-3.) The Court
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`agrees with Cerner. The Federal Circuit has “frequently held that a case is exceptional
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`when a party continues to litigate claims that have become baseless in view of a district
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`court’s claim construction opinion.” Innovation Scis., LLC v. Amazon.com, Inc., 842 F.
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`App’x 555, 557 (Fed. Cir. 2021) (citing AdjustaCam, LLC v. Newegg, Inc., 861 F.3d 1353,
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`1360 (Fed. Cir. 2017); Taurus IP, LLC v. DaimlerChrysler Corp., 726 F.3d 1306, 1326–29
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`(Fed. Cir. 2013)); see also Taurus IP, 726 F.3d at 1328 (“[A] party cannot assert baseless
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`infringement claims and must continually assess the soundness of pending infringement
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`17-cv-02479-GPC (DEB)
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`claims, especially after an adverse claim construction.”). That is precisely what happened
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`in the present action.
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`Independent claim 1 of the ’646 Patent recites the following “storing . . .” claim
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`limitation:
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`storing the processed first healthcare data in a first portion of the database
`associated with the first healthcare enterprise facility and storing the
`processed second healthcare data in a second portion of the database
`associated with the second healthcare enterprise facility;
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`’647 Patent col. 14 ll. 25-30.
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`During the IPR proceedings as to the ’647 Patent, CliniComp made several clear and
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`detailed arguments to the PTAB regarding the scope of this “storing . . .” limitation in claim
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`1 of the ’647 Patent. Specifically, in an effort to distinguish the claimed invention from
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`one of the prior art references at issue, the Johnson reference, during the oral hearing before
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`the PTAB on December 3, 2019, CliniComp argued to the PTAB that the “storing . . .”
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`limitation requires a very specific type of partitioning. (See, e.g., Dkt. No. 71-2, Ex. E at
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`E-7 (“So Step 1 is, you go into the database, you partition it so it is associated with an
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`enterprise. And that’s what the claim term says ‘associated’. Once that partition is done,
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`and it’s associated with that particular enterprise, only then do you . . . store that data in the
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`portion of the database. So this partition is an essential element of how it’s done to create
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`these portions . . . .”), E-11-12 (“JUDGE GROSSMAN: . . . And you’re saying that in
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`Claim 1, you put the information from the different sources in separate compartments, and
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`you search only each – you have to search each compartment individually. [CliniComp’s
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`Counsel]: I’m saying one step further. You have to create that compartment for a particular
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`service provider before you can put the data in, before you can do that search.”), E-17
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`(“[Partitions] means separate and distinct and having your own management.”), E-21 (“I
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`think we explained that the patent language requires first portion to be created through
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`partitioning.”), E-23 (“The claim limitation says, ‘Storing the limitation in a first portion.’
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`When you take a subcomponent of [the database] and copy it elsewhere, you haven’t
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`changed the database at all, and that cannot possibly be a basis for meeting this claim
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`limitation.”); see also Dkt. No. 71-2, Ex. K at K-9 (“[T]he term ‘portion’ as used in claim
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`1 requires a specific arrangement of data structures and is not satisfied by indexing.”); Dkt.
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`No. 71-2 Ex. F at F-32 (“A POSITA would understand that Johnson’s disclosure of
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`indexing is not a disclosure of partitioning the database.”).) These clear and unmistakable
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`statements to the PTAB during the IPR proceedings constitute prosecution disclaimers.
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`(See Dkt. No. 91 at 12-16 (holding CliniComp’s statements to the PTAB constitute
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`prosecution disclaimers); Dkt. No. 120 at 36-37 (holding additional statements made by
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`CliniComp to the PTAB constitute prosecution disclaimers).) See Aylus Networks, Inc. v.
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`Apple Inc., 856 F.3d 1353, 1361 (Fed. Cir. 2017) (explaining that “statements made by a
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`patent owner during an IPR proceeding” can constitute prosecution disclaimer so long as
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`the statements are “‘both clear and unmistakable’”); MBO Lab’ys, Inc. v. Becton,
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`Dickinson & Co., 474 F.3d 1323, 1330 (Fed. Cir. 2007) (“Prosecution arguments like this
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`one which draw distinctions between the patented invention and the prior art are useful for
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`determining whether the patentee intended to surrender territory, since they indicate in the
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`inventor’s own words what the invention is not.”); Purdue Pharma L.P. v. Endo Pharms.
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`Inc., 438 F.3d 1123, 1136 (Fed. Cir. 2006) (explaining that prosecution disclaimer “may
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`occur, for example, when the patentee explicitly characterizes an aspect of his invention in
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`a specific manner to overcome prior art”); Computer Docking Station Corp. v. Dell, Inc.,
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`519 F.3d 1366, 1374 (Fed. Cir. 2008) (explaining that a patentee may limit the scope of a
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`claim term “by clearly characterizing the invention in a way to try to overcome rejections
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`based on prior art”). At the conclusion of the IPR proceedings, the PTAB – relying on
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`CliniComp’s arguments regarding the scope of the term “portion” in the “storing . . .”
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`limitation – upheld the patentability of claims 1-25 of the ’647 Patent, and the Federal
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`Circuit affirmed that decision. (See Dkt. No. 71-2, Ex. D at D-81–D-87, D-94–D-95
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`(“[W]e agree with [CliniComp] and its supporting testimony of Dr. Bergeron that merely
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`identifying data or associating subsets of data with common values (i.e., indexing by
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`provider ID) does not constitute partitioning.”).) See Cerner, 852 F. App’x at 536 (“The
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`Board carefully considered the expert testimony of both parties when reaching [its]
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`17-cv-02479-GPC (DEB)
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`conclusion and expressly credited Patent Owner’s expert that Johnson fails to disclose
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`storing the data associated with two healthcare facilities in separate portions of a database.
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`. . . Though the provider IDs may keep track of who accesses which application on the
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`database for that single facility, it does not partition the database, either logically or
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`physically.” (emphasis in original)).
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`At the claim construction phase of the case, the parties disputed the scope of the
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`claim term “[first/second] portion of the database associated with the [first/second]
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`healthcare enterprise facility” in the “storing . . .” limitation of claim 1. (See Dkt. No. 63-
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`1 at A2; Dkt. No. 70 at 5-8; Dkt. No. 71 at 4-12.) CliniComp asserted that the claim term
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`“[first/second] portion of the database associated with the [first/second] healthcare
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`enterprise facility” should be given its plain and ordinary meaning and no construction was
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`necessary for that claim term. (Dkt. No. 63-1 at A2; Dkt. No. 70 at 5, 7.) Notably,
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`CliniComp asserted that the claim term should be given its plain and ordinary meaning
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`despite the numerous statements it made to the PTAB regarding the scope of the term
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`“portion” and the “storing . . .” limitation as noted above in the preceding paragraph. And,
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`notably, CliniComp asserted that the claim term should be given its plain and ordinary
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`meaning even though in its own claim construction briefing, CliniComp conceded that it
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`made certain prosecution disclaimers to the PTAB during the IPR proceedings.5 (See Dkt.
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`No. 70 at 7 (“CliniComp recognizes that by making certain arguments during the IPR, it
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`limited, to a degree, the scope of the claim language at issue.”); Dkt. No. 71 at 4
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`(“CliniComp might have disclaimed indexing alone as the mechanism for creating the
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`5
`CliniComp contends that in its proposed construction for the claim term, it expressly
`acknowledged that independent claim 1 excludes merely indexing. (Dkt. No. 127 at 6.)
`The Court acknowledges that at claim construction, CliniComp conceded that claim 1
`excludes merely indexing. (See Dkt. No. 63-1 at A2). Nevertheless, despite that
`concession, CliniComp still contended that the claim term “[first/second] portion of the
`database associated with the [first/second] healthcare enterprise facility” should simply be
`given its plain and ordinary meaning and no construction was necessary. (See id.)
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`database portions, but it did not disclaim . . . .”); see also Dkt. No. 63-1 at A2 (stating
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`“CliniComp does not dispute that the claimed ‘portions’ do not include data groupings
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`created exclusively by indexing – the process disclosed in Johnson”).)
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`On July 28, 2022, the Court issued its claim construction order for this case. (Dkt.
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`No. 91.) In the claim construction order, the Court construed the claim term “[first/second]
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`portion of the database associated with the [first/second] healthcare enterprise facility” as
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`“a specific arrangement of data structures of the database that separates the data associated
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`with the [first/second] healthcare enterprise facility from data associated with any other
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`healthcare enterprise facility, wherein the claimed [first/second] ‘portion’ is not created by
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`merely identifying data or associating subsets of data with common values (i.e., indexing
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`by an identifier), and the [first/second] portion of the database is created before the claimed
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`‘storing’ of ‘data’ occurs, and restricts access to data therein to protect data associated with
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`the [first/second] healthcare enterprise facility from access by any other healthcare
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`enterprise facility.” (Id. at 17-18.) The Court’s construction for this claim term was
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`primarily based on the multiple clear and unmistakable prosecution disclaimers that
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`CliniComp made during the IPR proceedings as to the ’647 Patent.6 (See id. at 12-16
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`6
`The Court notes that even though the Court’s construction for the claim term
`“[first/second] portion of the database associated with the [first/second] healthcare
`enterprise facility” included several prosecution disclaimers made by CliniComp during
`the IPR proceedings, the Court’s construction for the claim term could have properly
`included additional prosecution disclaimers made by CliniComp. For example, in the
`claim construction order, the Court also held that CliniComp made clear and unmistakable
`disclaimers during the IPR proceedings requiring that the claimed “portion” be “‘separate
`and distinct and having [its] own management.’” (Dkt. No. 91 at 16 (quoting Dkt. No. 71-
`2, Ex. E at E-17).) The Court declined to include this additional requirement into the
`Court’s claim construction because, at the time, it was unclear as to why it was needed.
`(See id. at 16-17.) In addition, in the summary judgment order, the Court held that
`CliniComp also made clear and unmistakable disclaimers during the IPR proceedings
`distinguishing the “storing . . .” limitation in claim 1 from what CliniComp referred to as
`“replication.” (See Dkt. No. 120 at 36-37.)
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`Case 3:17-cv-02479-GPC-DEB Document 133 Filed 02/03/23 PageID.3793 Page 13 of 23
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`(detailing the prosecution disclaimers made by CliniComp during the PTAB proceedings).)
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`During the claim construction phase of the case, CliniComp also took discovery on
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`how the accused services operate. Cerner started producing technical documents in
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`December 2021 and substantially completed production of them in June 2022. (Dkt. No.
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`99-3, Yu Decl. ¶ 2.) CliniComp’s technical expert reviewed Cerner’s source code multiple
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`times in March 2022. (Dkt. No. 124-4, Ex. 2.) And, by July 8, 2022, CliniComp had
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`deposed three of Cerner’s technical witnesses regarding the operation of the accused
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`services. (See, e.g., Dkt. No. 103, Exs. 3-5.)
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`Following the Court’s issuance of the claim construction order, CliniComp served
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`Cerner with its amended final infringement contentions on August 29, 2022, asserting that
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`Cerner infringed the ’647 Patent under the Court’s claim constructions. (See Dkt. No. 103,
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`Ex. 2.) In those contentions, CliniComp asserted that the Cerner’s accused services satisfy
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`the “storing . . .” limitation in claim 1 because:
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`Cerner’s “Active Data Security” and “Reference Data Security” “allow
`Cerner to partition data into private groups.” More specifically, Cerner
`created partitions for each client of [the accused services] before storing any
`client data in the database by programing databa