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`UNITED STATES DISTRICT COURT
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`SOUTHERN DISTRICT OF CALIFORNIA
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` Case No.: 17-cv-02479-GPC (DEB)
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`CLAIM CONSTRUCTION ORDER
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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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`In the present action, Plaintiff CliniComp International, Inc. (“CliniComp”) asserts
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`a claim of patent infringement against Defendant Cerner Corporation (“Cerner”), alleging
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`infringement of U.S. Patent No. 6,665,647 (“the ’647 Patent”). (Doc. No. 1, Compl.) On
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`February 14, 2022, the parties filed their joint claim construction hearing statement, chart,
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`and worksheet pursuant to Patent Local Rule 4.2, identifying the disputed claim terms from
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`the ’647 Patent. (Doc. No. 63.) On March 28, 2022, the parties each filed their opening
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`claim construction briefs. (Doc. Nos. 70, 71.) On April 11, 2022, the parties each filed
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`their responsive claim construction briefs. (Doc. Nos. 72, 73.) On May 20, 2022, the
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`parties filed an amended joint claim construction chart and worksheet. (Doc. No. 79.)
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`17-cv-02479-GPC (DEB)
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`Case 3:17-cv-02479-GPC-DEB Document 91 Filed 07/28/22 PageID.1911 Page 2 of 35
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`The Court held a claim construction hearing on July 22, 2022.1 Amardeep Thakur,
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`Bruce Zisser, and Shawn McDonald appeared for Plaintiff CliniComp. Jared Bobrow and
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`Benjamin Austin appeared for Defendant Cerner. After considering the parties’ briefing
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`and the arguments present at the hearing, the Court issues the following claim construction
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`order.
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`I.
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`BACKGROUND
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`CliniComp is the owner of the ’647 Patent by assignment. (Doc. No. 1, Compl. ¶
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`2.) In the present action, CliniComp alleges that Cerner directly infringes one or more
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`claims of the ’647 Patent, including but not limited to independent claim 1, by making,
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`using, selling, and/or offering to sell within the United States Cerner’s hosting and
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`monitoring services, including at least its Remote Hosting Option (“RHO”), its Enterprise
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`Solution Hosting (“eHosting”), and its Enterprise Cloud Services. (Doc. No. 1, Compl. ¶¶
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`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
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`Prior to the July 22, 2022 claim construction hearing, the Court provided the parties with a tentative
`claim construction order.
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`17-cv-02479-GPC (DEB)
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`Case 3:17-cv-02479-GPC-DEB Document 91 Filed 07/28/22 PageID.1912 Page 3 of 35
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`“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
`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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`///
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`17-cv-02479-GPC (DEB)
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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,2 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
`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 at 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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`(See Doc. No. 71-2, Ex. C at C-3.)
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`17-cv-02479-GPC (DEB)
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`Case 3:17-cv-02479-GPC-DEB Document 91 Filed 07/28/22 PageID.1914 Page 5 of 35
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`Defendant Cerner, alleging infringement of the ’647 Patent. (Doc. No. 1, Compl.) On
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`May 16, 2018, the Court granted Cerner’s motion to dismiss Clinicomp’s claims for willful
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`infringement and indirect infringement as well as the relief sought in connection with these
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`claims of injunctive relief, treble damages, and exceptionality damages. (Doc. No. 18 at
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`21.) On June 25, 2018, Cerner filed an answer to CliniComp’s complaint. (Doc. 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. (Doc. 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. (Doc. 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.3 (Doc. No. 32, Ex. A at
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`93-94.) On April 20, 2021, the Federal Circuit affirmed the PTAB’s determination that
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`claims 1-25 of the ’647 Patent are patentable.4 (Doc. No. 38-2, Ex. B at 10.) On June 24,
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`2021, the Court granted the parties’ joint motion to lift the stay of the action. (Doc. No.
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`44.)
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`On July 23, 2021, Cerner filed an amended answer to CliniComp’s complaint. (Doc.
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`No. 52.) On October 7, 2021, the Court issued a scheduling order in the action. (Doc. No.
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`55.) By the present claim constructions briefs, charts, and worksheets, the parties request
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`that the Court construe six disputed claim terms from the ’647 Patent. (Doc. Nos. 70, 71,
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`72, 73, 79.)
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`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 on Johnson and Evans; and (4) claim 54
`is not patentable based on Johnson, Evans, and Rai. (Doc. 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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`On November 15, 2021, the PTO issued an inter partes review certificate for the ’647 Patent,
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`stating: “Claims 1-25 are found patentable” and “Claims 50-55 are cancelled.” (Doc. No. 71-2, Ex. A at
`A-20-21.)
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`Case 3:17-cv-02479-GPC-DEB Document 91 Filed 07/28/22 PageID.1915 Page 6 of 35
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`A.
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`Legal Standards for Claim Construction
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`II. DISCUSSION
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`Claim construction is an issue of law for the court to decide. Teva Pharm. USA, Inc.
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`v. Sandoz, Inc., 135 S. Ct. 831, 838 (2015); Markman v. Westview Instr., Inc., 517 U.S.
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`370, 372 (1996). Although claim construction is ultimately a question of law, “subsidiary
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`factfinding is sometimes necessary.” Teva, 135 S. Ct. at 838.
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`“The purpose of claim construction is to ‘determin[e] the meaning and scope of the
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`patent claims asserted to be infringed.’” O2 Micro Int’l Ltd. v. Beyond Innovation Tech.
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`Co., 521 F.3d 1351, 1360 (Fed. Cir. 2008). “It is a ‘bedrock principle’ of patent law that
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`the ‘claims of a patent define the invention to which the patentee is entitled the right to
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`exclude.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc).
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`Claim terms “‘are generally given their ordinary and customary meaning[,]’” which
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`“is the meaning that the term would have to a person of ordinary skill in the art in question
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`at the time of the invention.” Id. at 1312–13. “In some cases, the ordinary meaning of
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`claim language as understood by a [POSITA] may be readily apparent even to lay judges,
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`and claim construction in such cases involves little more than the application of the widely
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`accepted meaning of commonly understood words.” Id. at 1314. “However, in many
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`cases, the meaning of a claim term as understood by persons of skill in the art is not readily
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`apparent.” O2 Micro, 521 F.3d at 1360. If the meaning of the term is not readily apparent,
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`the court must look to “those sources available to the public that show what a person of
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`skill in the art would have understood disputed claim language to mean,” including intrinsic
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`and extrinsic evidence. See Phillips, 415 F.3d at 1314. A court should begin with the
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`intrinsic record, which consists of the language of the claims, the patent specification, and,
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`if in evidence, the prosecution history of the asserted patent. Id.; see also Vederi, LLC v.
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`Google, Inc., 744 F.3d 1376, 1382 (Fed. Cir. 2014) (“In construing claims, this court relies
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`primarily on the claim language, the specification, and the prosecution history.”).
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`In determining the proper construction of a claim, a court should first look to the
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`language of the claims. See Vitronics, 90 F.3d at 1582; see also Comark Commc’ns v.
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`Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998) (“The appropriate starting point . . . is
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`always with the language of the asserted claim itself.”). The context in which a disputed
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`term is used in the asserted claims may provide substantial guidance as to the meaning of
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`the term. See Phillips, 415 F.3d at 1314. In addition, the context in which the disputed
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`term is used in other claims, both asserted and unasserted, may provide guidance because
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`“the usage of a term in one claim can often illuminate the meaning of the same term in
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`other claims.” Id. Furthermore, a disputed term should be construed “consistently with its
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`appearance in other places in the same claim or in other claims of the same patent.”
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`Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1342 (Fed. Cir. 2001); accord
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`Microprocessor Enhancement Corp. v. Texas Instruments Inc., 520 F.3d 1367, 1375 (Fed.
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`Cir. 2008); see also Paragon Sols., LLC v. Timex Corp., 566 F.3d 1075, 1087 (Fed. Cir.
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`2009) (“We apply a presumption that the same terms appearing in different portions of the
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`claims should be given the same meaning.” (internal quotation marks omitted)). Moreover,
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`“‘[a] claim construction that gives meaning to all the terms of the claim is preferred over
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`one that does not do so.’” Vederi, 744 F.3d 1383.
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`A court must also read claims “in view of the specification, of which they are a part.”
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`Markman, 52 F.3d at 979; see 35 U.S.C. § 112(b) (“The specification shall conclude with
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`one or more claims particularly pointing out and distinctly claiming the subject matter
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`which the inventor or a joint inventor regards as the invention.”). “‘Apart from the claim
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`language itself, the specification is the single best guide to the meaning of a claim term.’”
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`Vederi, 744 F.3d at 1382. For example, “a claim construction that excludes [a] preferred
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`embodiment [described in the specification] ‘is rarely, if ever, correct and would require
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`highly persuasive evidentiary support.’” Adams Respiratory Therapeutics, Inc. v. Perrigo
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`Co., 616 F.3d 1283, 1290 (Fed. Cir. 2010).
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`But “[t]he written description part of the specification does not delimit the right to
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`exclude. That is the function and purpose of claims.” Markman v. Westview Instruments,
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`Inc., 52 F.3d 967, 980 (Fed. Cir. 1995) (en banc). Therefore, “it is improper to read
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`limitations from a preferred embodiment described in the specification—even if it is the
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`only embodiment—into the claims absent a clear indication in the intrinsic record that the
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`patentee intended the claims to be so limited.” Dealertrack, Inc. v. Huber, 674 F.3d 1315,
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`1327 (Fed. Cir. 2012); see also Kara Tech. Inc. v. Stamps.com Inc., 582 F.3d 1341, 1348
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`(Fed. Cir. 2009) (“The patentee is entitled to the full scope of his claims, and we will not
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`limit him to his preferred embodiment or import a limitation from the specification into the
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`claims.”).
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`In addition to the claim language and the specification, the patent’s prosecution
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`history may be considered if it is in evidence. Phillips, 415 F.3d at 1317. The prosecution
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`history “consists of the complete record of the proceedings before the PTO and includes
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`the prior art cited during the examination of the patent.” Id. “Like the specification, the
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`prosecution history provides evidence of how the PTO and the inventor understood the
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`patent.” Id. “Yet because the prosecution history represents an ongoing negotiation
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`between the PTO and the applicant, rather than the final product of that negotiation, it often
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`lacks the clarity of the specification and thus is less useful for claim construction purposes.”
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`Id.
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`In most situations, analysis of the intrinsic evidence will resolve claim construction
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`disputes. See Vitronics, 90 F.3d at 1583; Teva, 135 S. Ct. at 841. However, “[w]here the
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`intrinsic record is ambiguous, and when necessary,” district courts may “rely on extrinsic
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`evidence, which ‘consists of all evidence external to the patent and prosecution history,
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`including expert and inventor testimony, dictionaries, and learned treatises.’” Power
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`Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 711 F.3d 1348, 1360 (Fed. Cir.
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`2013) (quoting Phillips, 415 F.3d at 1317). A court must evaluate all extrinsic evidence in
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`light of the intrinsic evidence. Phillips, 415 F.3d at 1319. “Extrinsic evidence may not be
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`used ‘to contradict claim meaning that is unambiguous in light of the intrinsic evidence.’”
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`Summit 6, LLC v. Samsung Elecs. Co., 802 F.3d 1283, 1290 (Fed. Cir. 2015); see also Bell
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`Atl. Network Servs., Inc. v. Covad Commc’ns Grp., Inc., 262 F.3d 1258, 1269 (Fed. Cir.
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`2001) (“[E]xtrinsic evidence . . . may not be used to vary, contradict, expand, or limit the
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`claim language from how it is defined, even by implication, in the specification or file
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`history.”); Vederi, 744 F.3d at 1382 (“[E]xtrinsic evidence may be less reliable than the
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`intrinsic evidence.”). In cases where subsidiary facts contained in the extrinsic evidence
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`“are in dispute, courts will need to make subsidiary factual findings about that extrinsic
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`evidence.” Teva, 135 S. Ct. at 841.
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`“[D]istrict courts are not (and should not be) required to construe every limitation
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`present in a patent’s asserted claims.” O2 Micro, 521 F.3d at 1362. In certain situations,
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`it is appropriate for a court to determine that a claim term needs no construction and its
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`plain and ordinary meaning applies. See id.; Phillips, 415 F.3d at 1314. But “[a]
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`determination that a claim term ‘needs no construction’ or has the ‘plain and ordinary
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`meaning’ may be inadequate when a term has more than one ‘ordinary’ meaning or when
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`reliance on a term’s ‘ordinary’ meaning does not resolve the parties’ dispute.” O2 Micro,
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`521 F.3d at 1361. If the parties dispute the scope of a certain claim term, it is the court’s
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`duty to resolve the dispute. Id. at 1362; accord Eon Corp. IP Holdings v. Silver Spring
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`Networks, 815 F.3d 1314, 1318 (Fed. Cir. 2016).
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`B. Disputed Claim Terms5
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`///
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`As an initial matter, the Court notes that the ’647 Patent was involved in another district court
`action, CliniComp International, Inc. v. athenahealth, Inc., 1:18-cv-00425-LY (W.D. Tex. 2018). At times
`in its claim construction briefing, CliniComp attempts to rely on rulings from the CliniComp. v.
`athenahealth case to support its claim construction positions in this case. (See, e.g., Doc. No. 70 at 1, 11
`n.9, 17, 23 n.15; Doc. No. 72 at 9.) The Court does not find CliniComp’s reliance on CliniComp. v.
`athenahealth persuasive. Cerner, the defendant in this action, was not a party to that action. In the
`CliniComp. v. athenahealth case, the parties entered into a stipulation that all of the disputed claim terms
`would be given their plain and ordinary meaning. (Doc. No. 70-2, Ex. A.) There is no similar stipulation
`in this case. And no formal separate claim construction order was ever entered in the CliniComp. v.
`athenahealth case.
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`In addition, “a fresh look at a claim construction can hone a prior court’s understanding and
`construction of a patent.” Rambus Inc. v. Hynix Semiconductor Inc., 569 F. Supp. 2d 946, 966 (N.D. Cal.
`2008). “[A]dditional litigation can refine and sharpen the courts’ understanding of an invention and . . . a
`second court should not defer to a prior court’s claim construction without questioning its accuracy.” Id.;
`see also Kinetic Concepts, Inc. v. Wake Forest Univ. Health Scis., No. SA-11-CV-163-XR, 2013 WL
`6164592, at *3 (W.D. Tex. Nov. 25, 2013) (“Stare decisis does not preclude this court from an independent
`analysis of claims that have been construed in other district courts.”).
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`17-cv-02479-GPC (DEB)
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`Case 3:17-cv-02479-GPC-DEB Document 91 Filed 07/28/22 PageID.1919 Page 10 of 35
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`1.
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`“[first/second] portion of the database associated with the [first/second]
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`healthcare enterprise facility”
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`Plaintiff CliniComp argues that the term “[first/second] portion of the database
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`associated with the [first/second] healthcare enterprise facility” should be given its plain
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`and ordinary meaning, with the caveat that the claimed “portion” is not created by merely
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`identifying data or associating subsets of data with common values (i.e., indexing by an
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`identifier), and these portions are created to protect one healthcare enterprise facility’s data
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`from access by the other healthcare enterprise facility. (Doc. No. 79-1 at A2.) Defendant
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`Cerner proposes that this term be construed as “a specific data structure in the database that
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`separates the data associated with the [first/second] healthcare enterprise facility from data
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`associated with any other healthcare enterprise facility, wherein the claimed [first/second]
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`‘portion’ is not created by merely identifying data or associating subsets of data with
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`common values (i.e., indexing by an identifier), and the [first/second] portion is created in
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`the database before the claimed ‘storing’ of ‘data’ occurs, is a separately-managed and
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`distinct compartment created for the purpose of separating data, and restricts access to data
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`therein to protect data associated with the [first/second] healthcare enterprise facility from
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`access by any other healthcare enterprise facility.” (Doc. No. 79-1 at A2-A3.)
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`Here, the parties dispute with respect to this claim term is multi-part. As an initial
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`matter, the parties appear to agree that the claimed “portion” is not created by merely
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`identifying data or associating subsets of data with common values (i.e., indexing by an
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`identifier), and these portions are created to protect one healthcare enterprise facility’s data
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`from access by the other healthcare enterprise facility. (See Doc. No. 79-1 at A2-A3; Doc.
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`No. 73 at 2.) Nevertheless, the parties dispute whether the claimed “portion” is a specific
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`data structure in the database that separates the data associated with the [first/second]
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`healthcare enterprise facility from data associated with any other healthcare enterprise
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`facility. Additionally, the parties dispute whether the claimed “portion” is created in the
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`database before the claimed “storing” of “data” occurs, and whether the claimed “portion”
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`is a separately-managed and distinct compartment created for the purpose of separating
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`17-cv-02479-GPC (DEB)
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`Case 3:17-cv-02479-GPC-DEB Document 91 Filed 07/28/22 PageID.1920 Page 11 of 35
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`data. The Court evaluates each of these disputes in turn below.
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`The Court begins with the first portion of Cerner’s proposed construction: that the
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`claimed “portion” is a specific data structure in the database that separates the data
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`associated with the [first/second] healthcare enterprise facility from data associated with
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`any other healthcare enterprise facility. To support this specific construction, Cerner does
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`not rely on the claim language or the specification of the ’647 Patent. (See Doc. No. 71 at
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`5-12; Doc. No. 73 at 1-2.) Instead, Cerner relies on statements made by CliniComp during
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`the IPR proceedings for the ’647 Patent. (See id.) Cerner contends that these statements
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`constitute prosecution disclaimers by CliniComp. (See id.)
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`“Prosecution disclaimer ‘preclud[es] patentees from recapturing through claim
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`interpretation specific meanings disclaimed during prosecution.’” Aylus Networks, Inc. v.
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`Apple Inc., 856 F.3d 1353, 1359 (Fed. Cir. 2017) (quoting Omega Eng’g, Inc, v. Raytek
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`Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003)). “[T]he doctrine of prosecution disclaimer
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`ensures that claims are not ‘construed one way in order to obtain their allowance and in a
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`different way against accused infringers.’” Id. at 1360 (quoting Southwall Techs., Inc. v.
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`Cardinal IG Co., 54 F.3d 1570, 1576 (Fed. Cir. 1995)).
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`“Such disclaimer can occur through amendment or argument.” Aylus, 856 F.3d at
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`1359. But “[f]or a statement during prosecution to qualify as a disavowal of claim scope,
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`it must be ‘so clear as to show reasonable clarity and deliberateness,’ and ‘so unmistakable
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`as to be unambiguous evidence of disclaimer.’” Genuine Enabling Tech. LLC v. Nintendo
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`Co., 29 F.4th 1365, 1374 (Fed. Cir. 2022); see also Aylus, 856 F.3d at 1361 (“[T]o invoke
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`the doctrine of prosecution disclaimer, any such statements must ‘be both clear and
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`unmistakable.’”); Computer Docking Station Corp. v. Dell, Inc., 519 F.3d 1366, 1375 (Fed.
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`Cir. 2008) (“Prosecution disclaimer does not apply to an ambiguous disavowal.”). “Thus,
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`when the patentee unequivocally and unambiguously disavows a certain meaning to obtain
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`a patent, the doctrine of prosecution history disclaimer narrows the meaning of the claim
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`consistent with the scope of the claim surrendered.” Biogen Idec, Inc. v. GlaxoSmithKline
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`LLC, 713 F.3d 1090, 1095 (Fed. Cir. 2013). “A patentee could do so, for example, by
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`17-cv-02479-GPC (DEB)
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`Case 3:17-cv-02479-GPC-DEB Document 91 Filed 07/28/22 PageID.1921 Page 12 of 35
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`clearly characterizing the invention in a way to try to overcome rejections based on prior
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`art.” Computer Docking Station, 519 F.3d at 1374.
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`“[S]tatements made by a patent owner during an IPR proceeding can be considered
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`during claim construction and relied upon to support a finding of prosecution disclaimer.”
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`Aylus, 856 F.3d at 1361. “‘The party seeking to invoke prosecution history disclaimer
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`bears the burden of proving the existence of a clear and unmistakable disclaimer that would
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`have been evident to one skilled in the art.’” Genuine Enabling Tech., 29 F.4th at 1374.
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`To support its prosecution disclaimer argument, Cerner relies on several statements
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`made by CliniComp during the IPR proceedings. During oral arguments before the PTAB,
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`CliniComp argued with respect to claim 1 of the ’647 Patent: “I think we explained that
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`the patent language requires first portion to be created through partitioning. It’s throughout
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`the figures. Throughout the specification.” (Doc. No. 71-2, Ex. E at E-21; see also id. at
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`E-9 (“partitioning is what’s required by the patent”).) CliniComp explained: “The purpose
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`of portioning is to partition.” (Id. at E-7.) CliniComp further explained with respect to the
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`claim term “portion:”
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`So Step 1 is, you go into the database, you partition it so it is associated
`with an enterprise. And that’s what the claim term says “associated”.
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`Once that partition is done, and it’s associated with that particular
`enterprise, only then do you . . . store that data in the portion of the database.
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`So this partition is an essential element of how it’s done to create these
`portions, and these portions do not have – are not overlapping. And that’s
`why it’s done for security purposes.
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`(Id.; see also id. at E-18 (“The claim is designed for you to have separate health care
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`enterprise data that is created upon a specific partition for a database that they store
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`together.”); Ex. K at K8-9.) CliniComp made these arguments to the PTAB in an effort to
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`distinguish claim 1 of the ’647 Patent from the Johnson prior art reference. (See Doc. No.
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`71-2, Ex. E at E-7-23.)
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`The Court agrees with Cerner that the above statements constitute a clear and
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`unmistakable disclaimer by CliniComp that the claimed “portion[s]” are created through
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`17-cv-02479-GPC (DEB)
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`

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`Case 3:17-cv-02479-GPC-DEB Document 91 Filed 07/28/22 PageID.1922 Page 13 of 35
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`partitioning.6 See MBO Lab’ys, Inc. v. Becton, Dickinson & Co., 474 F.3d 1323, 1330
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`(Fed. Cir. 2007) (“Prosecution arguments like this one which draw distinctions between
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`the patented invention and the prior art are useful for determining whether the patentee
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`intended to surrender territory, since they indicate in the inventor’s own words what the
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`invention is not.”); Uship Intell. Properties, LLC v. United States, 714 F.3d 1311, 1315
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`(Fed. Cir. 2013) (“[A]n applicant’s statements to the PTO characterizing its invention may
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`give rise to a prosecution disclaimer.”); see also X2Y Attenuators, LLC v. Int’l Trade
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`Comm’n, 757 F.3d 1358, 1362 (Fed. Cir. 2014) (“[L]abeling an embodiment or an element
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`as ‘essential’ may rise to the level of disavowal.”). Thus, a claim construction reflecting
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`CliniComp’s disclaimer as proposed by Cerner is appropriate here.7
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`Cerner further argues that because the word “partition” is a technical term, the Court
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`Indeed, in its opening claim construction brief, CliniComp explains that a “material benefit of the
`invention is t