throbber
Case 1:20-cv-00502-CFC Document 20 Filed 12/30/20 Page 1 of 22 PageID #: 212
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELA WARE
`
`MANAGEMENT SCIENCE
`ASSOCIATES, INC.,
`
`Plaintiff,
`
`V.
`
`Civil Action No. 20-0502-CFC
`
`DATAVANT, INC. and
`UNIVERSAL PATIENT KEY, INC.,
`
`Defendant.
`
`Neal C. Belgam, Eve H. Ormerod, SMITH, KATZENSTEIN, & JENKINS LLP,
`Wilmington, Delaware; James J. Bosco, Jr., Christian D. Ehret, THE WEBB LAW
`FIRM, Pittsburgh, Pennsylvania; Michael P. Flynn, DICKIE, MCCAMEY &
`CHILCOTE, P .C., Pittsburgh, Pennsylvania
`
`Counsel for Plaintiff
`
`Jack B. Blumenfeld, MORRIS, NICHOLS, ARSHT & TUNNELL LLP,
`Wilmington, Delaware; Andrew S. Ong, GOODWIN PROCTER LLP, Redwood
`City, California; Brett M. Schuman, GOODWIN PROCTER LLP, San Francisco,
`California; Christie Larochelle, GOODWIN PROCTER LLP, Boston,
`Massachusetts
`
`Counsel for Defendant
`
`MEMORANDUM OPINION
`
`December 30, 2020
`Wilmington, Delaware
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`UNITED STATES DISTRICT JUDGE
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`Plaintiff Management Science Associates, Inc. (MSA) has sued Defendants
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`Datavant, Inc. and Universal Patient Key, Inc. (UPK) for infringement of U.S.
`
`Patent No. 9,614,814 (the #814 patent). D.I. 1. Pending before me is Defendants'
`
`motion to dismiss pursuant to Federal Rule of Civil Procedure 12(b)(6). D.I. 10.
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`Defendants argue I should dismiss MSA's complaint because the asserted patent is
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`invalid under 35 U.S.C. § 101 for failing to claim patentable subject matter.
`
`I.
`
`Background
`
`MSA is a provider of de-identification technology for removing personally
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`identifiable information from data. D.I. ,I 17. Datavant and UPK are healthcare
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`data management companies. D.I. 1 ,r,r 21-22. MSA has alleged that Defendants
`sell de-identification software that infringes the #814 patent. D.I. 1 ,r,r 40-45.
`
`The asserted patent is titled "System and Method for Cascading Token
`
`Generation and Data De-identification." It claims systems and methods for de(cid:173)
`
`identifying client records. The patent describes approaches for creating unique
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`tokens that can be substituted for personally identifying information. The parties
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`agree the claim element that separates the #814 patent from the prior art is the use
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`of a "client tag," a unique identifier for each client, as one of the inputs in the
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`creation of a token. D.I. 1 at ,I 38; D.I. 15 at 1, 9; D.I. 16 at 1; see also D.I. 11-1,
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`Ex.Cat 7-8 (allowing application based on the "client tag" element). The "client
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`tag" may be as simple as the client's name. #814 patent at 6:41-43. A "client tag"
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`identifies the client who provided the record, enabling records from different
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`clients to be distinguished even if those records are otherwise the same, as could
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`occur, for example, if different clients provided records about the same patient.
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`#814 patent at 6:34-37.
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`The #814 patent's written description explains how de-identified tokens can
`
`be created. Much of this information is more pertinent to related U.S. Patent No.
`
`9,292,707, which shares the same written description as the #814 patent, but it still
`
`provides context for the #814 claims. The written description explains that "[f]or
`
`decades, data including personally-identified information has been de-identified
`
`through the creation of tokens that uniquely identify an individual." #814 patent at
`
`1 :21-23. One method of creating a token is hashing, where a mathematical
`
`function is used to convert arbitrary data (such as a password or personally
`
`identifying information) into data of a particular size. The hashing function is
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`unidirectional, meaning that the original data cannot be recovered from the output,
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`even if the hashing function is known. The #814 patent describes how a unique
`
`de-identified token can be created from multiple data elements ( e.g. name, date of
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`birth, and zip code of a patient in a database rather than name alone), and that a
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`unique "client tag" identifying the client may be among the data elements. #814
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`2
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`patent at 4:5-10, 6:41-43. One embodiment of the invention describes using a
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`hash function to create an intermediary token before combining that intermediary
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`token with another data element and applying a second hash function to generate a
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`final token. #814 patent at 1 :49-65. This process can be repeated multiple times.
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`The #814 patent has three independent claims. Claim 1 describes a
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`"computer implemented method for de-identifying records," claim 10 describes a
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`"computer program product for de-identifying records," and claim 19 describes a
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`"system for de-identifying records." #814 patent at claim 1 (9:63-64), claim 10
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`(10:60-61), claim 19 (12:14). The remaining seventeen claims in the #814 patent
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`are dependent claims.
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`The Complaint alleges Defendants infringe "at least claims 1, 10, and 19"
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`(the independent claims). D.I. 1. ,r 49. Defendants argue that claim 1 is
`
`representative. D.I. 11 at 5. Claim 1 recites:
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`[a] computer-implemented method for de-identifying records received
`from a plurality of clients, each of the plurality of clients associated
`with a client tag unique to the client and a plurality of records
`including identifying data for a plurality of individuals, comprising:
`
`receiving a record for an individual from at least one data storage
`device associated with a client, the record comprising a plurality of
`data elements identifying the individual;
`
`generating, with at least one processor, a token based at least partially
`on the plurality of data elements and a client tag uniquely identifying
`the client among the plurality of clients;
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`3
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`creating, with at least one processor, a de-identified record comprising
`a portion of the record and the token;
`
`matching, with at least one processor, the token or a new token based
`on the token to at least one other token in a database, the at least one
`other token generated based on the client tag and associated with at
`least one other de-identified record for the individual; and
`
`linking, with at least one processor, the de-identified record to the at
`least one other de-identified record in at least one data storage device.
`
`Claim 10 recites:
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`[a] computer program product for de-identifying records received
`from a plurality of clients, each of the plurality of clients associated
`with a client tag unique to the client and a plurality of records
`including identifying data for a plurality of individuals, comprising at
`least one non-transitory computer-readable medium comprising
`program instructions that, when executed by at least one processor,
`cause the at least one processor to:
`
`receive a record for an individual from at least one data storage device
`associated with a client, the record comprising a plurality of data
`elements identifying an individual;
`
`generate a token based at least partially on the plurality of data
`elements and a client tag uniquely identifying the client among the
`plurality of clients;
`
`create a de-identified record comprising a portion of the record and
`the token;
`
`match the token or a new token based on the token to at least one
`other token in a database, the at least one other token generated based
`on the client tag and associated with at least one other de-identified
`record for the individual; and
`
`link the de-identified record to the at least one other de-identified
`record in at least one data storage device.
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`4
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`Claim 19 recites:
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`[a] system for de-identifying records received from a plurality of
`clients, each of the plurality of clients associated with a client tag
`unique to the client and a plurality of records including identifying
`data for a plurality of individuals, comprising:
`
`(a) a data supplier computer comprising at least one processor and a
`de-identification engine, the de-identification engine configured to:
`
`(i) receive a record for an individual from at least one data
`storage device associated with a client, the record comprising a
`plurality of data elements identifying an individual; and
`
`(ii) generate a token based at least partially on the plurality of
`data elements and a client tag uniquely identifying the client;
`and
`
`(b) a data processing entity computer remote from the data supplier
`computer, the data processing computer comprising at least one
`processor configured to:
`
`(i) match the token or a new token based on the token to at least
`one other token in a database, the at least one other token
`generated based on the client tag and associated with at least
`one other de-identified record for the individual; and
`
`(ii) link a de-identified record comprising a portion of the
`record and the token to the at least one other de-identified
`record in at least one data storage device.
`
`In short, the claims cover systems and methods in which ( 1) a data record is
`
`received, (2) a token is generated based on a client token and other data elements,
`
`(3) a de-identified record is created with the token as the record's label (this step is
`
`omitted from claim 19), ( 4) the record is matched to an existing record using the
`
`token, and (5) the two records are linked. The dependent claims describe particular
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`5
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`implementation choices, see, e.g., #814 patent at claim 2 (requiring the token to be
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`created through hashing), or the inclusion of additional abstract steps, see, e.g.
`
`#814 patent at claim 4 (requiring the creation of an intermediate token which is
`
`then used as the input to create a final token).
`
`II. Legal Standards
`
`A.
`
`Legal Standards for Stating a Claim
`
`To state a claim on which relief can be granted, a complaint must contain "a
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`short and plain statement of the claim showing that the pleader is entitled to relief."
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`Fed. R. Civ. P. 8(a)(2). Detailed factual allegations are not required, but the
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`complaint must include more than mere "labels and conclusions" or "a formulaic
`
`recitation of the elements of a cause of action." Bell At/. Corp. v. Twombly, 550
`
`U.S. 544, 555 (2007) ( citation omitted). The complaint must set forth enough
`
`facts, accepted as true, to "state a claim to relief that is plausible on its face." Id. at
`
`570. A claim is facially plausible "when the plaintiff pleads factual content that
`
`allows the court to draw the reasonable inference that the defendant is liable for the
`
`misconduct alleged." Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) ( citation
`
`omitted). Deciding whether a claim is plausible is a "context-specific task that
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`requires the reviewing court to draw on its judicial experience and common sense."
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`Id. at 679 ( citation omitted).
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`When assessing the merits of a Rule 12(b)(6) motion to dismiss, a court
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`must accept as true all factual allegations in the complaint and in documents
`
`explicitly relied upon in the complaint, and it must view those facts in the light
`
`most favorable to the plaintiff. See Umland v. Planco Fin. Servs., 542 F .3d 59, 64
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`(3d Cir. 2008); Schmidt v. Skolas, 770 F.3d 241,249 (3d Cir. 2014) (internal
`
`quotation marks omitted).
`
`B.
`
`Legal Standards for Patent-Eligible Subject Matter
`
`Section 101 of the Patent Act defines patent-eligible subject matter. It
`
`provides: "Whoever invents or discovers any new and useful process, machine,
`
`manufacture, or composition of matter, or any new and useful improvement
`
`thereof, may obtain a patent therefor, subject to the conditions and requirements of
`
`-this title." 35 U.S.C. § 101.
`
`There are three judicially-created limitations on the literal words of§ 101.
`
`The Supreme Court has long held that laws of nature, natural phenomena, and
`
`abstract ideas are not patentable subject matter. Alice Corp. Pty. v. CLS Bank Int'/,
`
`573 U.S. 208,216 (2014). These exceptions to patentable subject matter arise
`
`from the concern that the monopolization of "these basic tools of scientific and
`
`technological work" "might tend to impede innovation more than it would tend to
`
`promote it." Id (internal quotation marks and citations omitted). Abstract ideas
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`include mathematical formulas and calculations. Gottschalk v. Benson, 409 U.S.
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`63, 71-72 (1972).
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`"[ A ]n invention is not rendered ineligible for patent [protection] simply
`
`because it involves an abstract concept[.]" Id. at 217. " [ A ]pplication[ s] of such
`
`concepts to a new and useful end ... remain eligible for patent protection." Id.
`
`(internal quotation marks and citations omitted). But in order "to transform an
`
`unpatentable law of nature [ or abstract idea] into a patent-eligible application of
`
`such law [ or abstract idea], one must do more than simply state the law of nature
`
`[or abstract idea] while adding the words 'apply it."' Mayo Collaborative Servs. v.
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`Prometheus Laby's, Inc., 566 U.S. 66, 71 (2012) (emphasis omitted).
`
`In Alice, the Supreme Court established a two-step framework by which
`
`courts are to distinguish patents that claim eligible subject matter under § 101 from
`
`patents that do not claim eligible subject matter under § 101. The court must first
`
`determine whether the patent's claims are drawn to a patent-ineligible concept(cid:173)
`
`i.e., are the claims directed to a law of nature, natural phenomenon, or abstract
`
`idea? Alice, 573 U.S. at 217. If the answer to this question is no, then the patent is
`
`not invalid for teaching ineligible subject matter. If the answer to this question is
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`yes, then the court must proceed to step two, where it considers "the elements of
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`each claim both individually and as an ordered combination" to determine if there
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`is an "inventive concept-i.e., an element or combination of elements that is
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`sufficient to ensure that the patent in practice amounts to significantly more than a
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`patent upon the [ineligible concept] itself." Id. at 217-18 (alteration in original)
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`(internal quotations and citations omitted).
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`Issued patents are presumed to be valid, but this presumption is rebuttable.
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`Microsoft Corp. v. i4i Ltd. Partnership, 564 U.S. 91, 96 (2011). The Patent
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`Office's decision on patent eligibility is not binding on this court. See WhitServe
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`LLC v. Dropbox, Inc., No. CV 18-665-CFC, 2019 WL 3342949, at *7 (D. Del. July
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`25, 2019); Belkin Int'/, Inc. v. Kappos, 696 F.3d 1379, 1385 (Fed. Cir. 2012)
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`("courts have the final say on unpatentability of claims, not the [Patent Office].").
`
`Subject-matter eligibility is a matter of law, but underlying facts must be shown by
`
`clear and convincing evidence. Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed.
`
`Cir. 2018).
`
`III. DISCUSSION
`
`Applying the two-step framework from Alice, I find that the #814 patent is
`
`invalid under § 101. The #814 patent's claims are directed to the abstract idea of
`
`collecting, labeling, and manipulating data and do not contain any inventive
`
`concept.
`
`A.
`
`Claim 1 Is Representative
`
`I find that the claims of the #814 patent can be considered together for the
`
`purposes of § 10 I and that claim I is representative for this analysis. When the
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`only difference between claims is the form in which they are drafted, it is
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`appropriate to treat them as "as equivalent for purposes of patent eligibility under §
`
`101." Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can. (U.S.), 687 F.3d 1266,
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`1277 (Fed. Cir. 2012). Here, the three independent claims all describe the same
`
`invention but change the form of the claim language. Claim 10 simply rephrases
`
`claim 1 as a "computer program product" rather than as a "computer-implemented
`
`method." #814 patent at claim 1 (9:63), claim 10 (10:60). And claim 19 rephrases
`
`the same process in the form of a system. #814 patent claim at 19 ( 12: 14 ). Each
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`claim describes the same steps of "receiving a record," "generating" a token,
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`"creating" a de-identified record, "matching" the token to another token, and
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`"linking" the de-identified record to another such record. #814 patent at claim 1,
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`claim 10, claim 19. Claim 19 leaves out the "creating" step, but this omission does
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`not affect the subject-matter eligibility of the claim.
`
`Although it is not clear whether MSA has asserted the patent's dependent
`
`claims, Defendants have challenged them and I find that the dependent claims do
`
`not add limitations that affect their subject-matter eligibility. Claims 2, 3, 11 and
`
`12 require hashing the client tag. Cf Smart Sys. Innovations, LLC v. Chi. Transit
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`Auth., 873 F.3d 1364, 1375 n.9 (Fed. Cir. 2017) (explaining that a hash identifier is
`
`a "generic and routine concept"). Claims 4 and 13 require creating an intermediate
`
`token, which is then used to create a final token. Claims 5 and 14 describe
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`10
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`combining the client tag with other data elements to create the token. Claims 6, 7,
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`15, and 16 describe choices for the client tag. Claims 8 and 17 add the
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`mathematical step of calculating a checksum. Claims 9 and 18 split the described
`
`data pipeline across two computers. Claim 20 simply requires that the computers
`
`in the system are configured to create records as is the case for all claims except
`
`claim 19. None of these limitations removes the claims from the realm of the
`
`abstract or adds any additional inventive steps beyond well-understood, routine, or
`
`conventional computer functionality.
`
`MSA identifies claim 19 as having a distinct scope from claim 1 and argues
`
`that it must be considered separately. D.I. 15 at 17. MSA emphasizes that claim
`
`19 requires the data processing entity computer and the data supplier computer to
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`be "remote" from each other. D.I. 15 at 18. But this limitation does not affect the
`
`§ 101 analysis. This claim takes the same idea as the other claims ( albeit without
`
`the "creating" step) and limits it to a particular, but routine, computer arrangement.
`
`A claim directed to an abstract idea does not become patent eligible simply
`
`because the claim only covers that idea's use or application in a narrow
`
`technological context. See buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355
`
`(Fed. Cir. 2014) ( explaining that narrowing the use of an abstract idea "to a
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`particular technological environment" does not make a claim directed to an
`
`otherwise abstract idea patent eligible).
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`MSA's reliance on BASCOM Global Internet Services Inc. v. AT&T
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`Mobility LLC is misplaced. 827 F.3d 1341 (Fed. Cir. 2016). In BASCOM the
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`patent had an inventive concept because it took advantage of the technical
`
`configuration of network technology to allow improved, individualized filtering of
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`internet content. 827 F.3d at 1349. In that case, the arrangement of separating the
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`filtering tool and the end user's computer provided technical performance
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`improvements. Id. at 1344-45. The Federal Circuit found that BASCOM's
`
`invention went "beyond simply using generic computer concepts in a conventional
`
`way." Id. at 1352. The BASCOM court agreed that each individual claim element
`
`was routine and well-understood in the art but found that the combination of
`
`elements was inventive. Id. at 1359. The Federal Circuit explained that the
`
`arrangement of elements as a whole reflected a technical invention which was
`
`inseparably linked to the properties of computer networks. Id. at 1350. The
`
`Federal Circuit noted that the invention "would not contain an inventive concept"
`
`if it merely covered the abstract idea of filtering content along with "the
`
`requirement to perform it on the Internet, or to perform it on a set of generic
`
`computer components." Id.
`
`The limitation that the two computers must be "remote" in claim 19 is
`
`analogous to the generic requirement that an idea be performed on the internet.
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`And the BASCOM court explained that such a requirement does not amount to an
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`inventive concept. Id. Having two remote computers does not go "beyond simply
`
`using generic computer concepts in a conventional way." Id. at 1352. Nor is there
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`an inventive concept when the claim elements are considered as an ordered
`
`combination. The arrangement of limitations does not provide any new technical
`
`solution. MSA asserts that separating the two computers in claim 19 of the #814
`
`patent has the benefit of allowing the "actual value being used as the client tag [to]
`
`not be discernable to the data supplier." D.I. 15 at 18. But neither MSA nor the
`
`#814 patent itself articulate why this benefit is a technical solution to a technical
`
`problem, rather than merely an incidental benefit of generic computer networks.
`
`In sum, because it does not contain any unconventional limitations, claim 19
`
`does not need to be treated separately from claim 1 for the purposes of § 101. See
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`Content Extraction & Transmission LLC v. Wells Fargo Bank, 776 F.3d 1343,
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`1348 (Fed. Cir. 2014) (explaining substantially similar claims directed to the same
`
`abstract idea can be considered together for subject matter eligibility).
`
`B.
`
`It Is Appropriate to Resolve This Case on a Motion to Dismiss
`
`If there are any claim construction disputes, "the court must proceed by
`
`adopting the non-moving party's constructions or the court must resolve the
`
`disputes to whatever extent is needed to conduct the § 101 analysis." Aatrix
`
`Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121, 1125 (Fed. Cir.
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`2018) (internal citations removed). The Federal Circuit has "repeatedly affirmed
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`§ 101 rejections at the motion to dismiss stage, before claim construction or
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`significant discovery has commenced." Cleveland Clinic Found. v. True Health
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`Diagnostics LLC, 859 F.3d 1352, 1360 (Fed. Cir. 2017); see also SAP Am., Inc.,
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`898 F .3d at 1166 ( citing cases); Epic IP LLC v. Backblaze, Inc., 3 51 F. Supp. 3d
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`733, 751-52 (D. Del. 2018) (Bryson, J.) (discussing when it is appropriate to
`
`resolve a § 101 motion on the pleadings).
`
`MSA argues that Defendants' motion is premature, because Defendants
`
`implicitly rely on a claim construction argument. MSA suggests there may be
`
`disagreement about the meaning of"client tag." D.I. 15 at 20. But MSA has not
`
`provided an alternative reading for "client tag" or articulated any other
`
`disagreement between the parties on the meaning of the #814 patent claims.
`
`Accordingly, I find that there is no claim construction dispute and that
`
`consideration of the #814 patent's subject-matter eligibility is not premature.
`
`C.
`
`Alice Step One - Whether the Claims Are Drawn to Patent(cid:173)
`Ineligible Subject Matter
`
`I begin by determining whether the claims at issue are directed to a patent-
`
`ineligible concept. Alice, 573 U.S. at 217. "[C]laims are considered in their
`
`entirety [ at step one] to ascertain whether their character as a whole is directed to
`
`excluded subject matter." Internet Patents Corp. v. Active Network, Inc., 790 F.3d
`
`1343, 1346 (Fed. Cir. 2015).
`
`14
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`Page 15 of 22
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`IPR2020-01672
`Datavant, Inc. v. Management Science Associates, Inc.
`Datavant, Inc.'s Exhibit 1010
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`

`

`Case 1:20-cv-00502-CFC Document 20 Filed 12/30/20 Page 16 of 22 PageID #: 227
`
`"The Supreme Court has not established a definitive rule to determine what
`
`constitutes an 'abstract idea' sufficient to satisfy the first step of the Mayo/Alice
`
`inquiry." Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016)
`
`( citation omitted). The Court has recognized, however, that fundamental economic
`
`practices, methods of organizing human activity, and mathematical formulae are
`
`abstract ideas. See Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("fundamental
`
`economic practice" of hedging is unpatentable abstract idea); Alice, 573 U.S. at
`
`220-21 ("organizing human activity" of intermediated settlement falls "squarely
`
`within realm of 'abstract ideas"'); Gottschalk v. Benson, 409 U.S. 63, 68, 71-72
`
`(1972) (mathematical algorithm to convert binary-coded decimal numerals into
`
`pure binary code is unpatentable abstract idea); Parker v. Flook, 437 U.S. 584,
`
`594-95 (1978) (mathematical formula for computing "alarm limits" in a catalytic
`
`conversion process is unpatentable abstract idea).
`
`To determine whether claims are directed to an abstract idea courts generally
`
`"compare the claims at issue to those claims already found to be directed to an
`
`abstract idea in previous cases." Enfish, 822 F .3d at 1334. The Federal Circuit has
`
`also instructed district courts to consider as part of Alice's step one whether the
`
`claims "focus on a specific means or method that improves the relevant technology
`
`or are instead directed to a result or effect that itself is the abstract idea and merely
`
`15
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`Page 16 of 22
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`IPR2020-01672
`Datavant, Inc. v. Management Science Associates, Inc.
`Datavant, Inc.'s Exhibit 1010
`
`

`

`Case 1:20-cv-00502-CFC Document 20 Filed 12/30/20 Page 17 of 22 PageID #: 228
`
`invoke generic processes and machinery." McRO, Inc. v. Bandai Namco Games
`
`Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016) (citing Enfish, 822 F.3d at 1336).
`
`Applying these standards, I find that the #814 patent is directed to the
`
`abstract idea of collecting, labelling, and manipulating data. See D.l. 15 at 12
`
`( characterizing the claims as directed at "generating a unique token based on a
`
`client tag and a plurality of elements, where the client tag uniquely identifies a
`
`client"). The written description explains that the "client tag" is simply a unique
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`client label, which may be as simple as the client's name. #814 patent at 6:42-43.
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`Besides labelling with a client tag, the patent merely describes routine data
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`collection and manipulation.
`
`Although the systems and methods claimed in the #814 patent require the
`
`use of generic computers, the claims are directed to a series of steps that can be
`
`performed in the human mind or with pen and paper. CyberSource Corp. v. Retail
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`Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) ("Such a method that can be
`
`performed by human thought alone is merely an abstract idea and is not patent(cid:173)
`
`eligible under § 101 "). There is "no particular concrete or tangible form" to the
`
`claimed invention. Ultramercial v. Hulu, 772 F.3d 709, 715 (Fed. Cir. 2014).
`
`Therefore, the claims are directed to an abstract idea.
`
`Electric Power Group, LLC. v. Alston, S.A. supports this conclusion. 830
`
`F.3d 1350, 1354 (Fed. Cir. 2016). In that case, the Federal Circuit explained as
`
`16
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`Page 17 of 22
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`IPR2020-01672
`Datavant, Inc. v. Management Science Associates, Inc.
`Datavant, Inc.'s Exhibit 1010
`
`

`

`Case 1:20-cv-00502-CFC Document 20 Filed 12/30/20 Page 18 of 22 PageID #: 229
`
`part of the Alice step one analysis that "information as such is an intangible" and
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`that therefore claims directed to "collecting information, including when limited to
`
`a particular content" are drawn to abstract ideas. Id. at 1354 (citing cases). In the
`
`court's words, the analysis of information "by steps people go through in their
`
`minds, or by mathematical algorithms, without more" are "mental processes within
`
`the abstract-idea category." Id. ( citing cases). And the output of these "abstract
`
`processes of collecting and analyzing information, without more ... is abstract as
`
`an ancillary part of such collection and analysis." Id. Here the claims are directed
`
`to precisely this kind of abstract process.
`
`MSA relies on En.fish, but the claims at issue in that case were patentable
`
`because they were not drawn to an abstract process that could be implemented on
`
`_computers but rather to a database technique that improved the technical
`
`capabilities of computers. Id. at 1336-37. In contrast, the use ofa unique client
`
`identifier does not improve the functioning of computers themselves. 1
`
`The #814 patent's written description explains why it may be useful to have
`
`a unique identifier for a client. #814 patent at 6:22-45. But the described benefits
`
`1 MSA also relies on Thales Visionix Inc. v. U.S., but that case presents very
`different facts than are at issue here. In Thales Visionix, the invention involved not
`just the manipulation of data, but also an unconventional arrangement of physical
`inertial sensors. 850 F.3d 1343, 1348 (Fed. Cir. 2017). The #814 patent claims
`involve no physical components other than generic computers.
`
`17
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`Page 18 of 22
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`IPR2020-01672
`Datavant, Inc. v. Management Science Associates, Inc.
`Datavant, Inc.'s Exhibit 1010
`
`

`

`Case 1:20-cv-00502-CFC Document 20 Filed 12/30/20 Page 19 of 22 PageID #: 230
`
`do not transform "client tags" into a technical solution to a technical problem. The
`
`idea of using a unique label for each client does not improve the technical
`
`capabilities of computers. This is apparent from the fact that "client tags" could be
`
`applied in any record keeping system such as a library card catalogue, an office
`
`filing system, or an analogue medical records database.
`
`MSA argues that the claims of the #814 patent are directed "to non-abstract,
`
`technical solutions to technical problems in the field of token generation and data
`
`de-identification that achieve a significant improvements in the operation and
`
`performance of data de-identification processes, token creation processes, record
`
`matching processes, and record linking processes." D.I. 15 at 5. But MSA
`
`supports this assertion only with conclusory allegations in the complaint, D.I. 1 at
`
`,r,r 27-38, which I am to ignore, Bell At/. Corp., 550 U.S. at 555.
`
`The Federal Circuit's case law makes clear that claims directed to forms of
`
`data collection and manipulation must offer technical improvements to computer
`
`technology in order to not be directed to an abstract idea. Compare Smart Sys.,
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`873 F.3d at 1372 ("We have determined that claims directed to the collection,
`
`storage, and recognition of data are directed to an abstract idea.") with Enfish, 822
`
`F.3d at 1336 (finding claims subject-matter eligible when directed to the
`
`"improvement to computer functionality itself'). For example, in SA

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