Case: 20-1853 Document: 41 Page: 1 Filed: 04/20/2021
`NOTE: This disposition is nonprecedential.
`United States Court of Appeals
`for the Federal Circuit
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in Nos. IPR2018-
`01634, IPR2019-00926.
`Decided: April 20, 2021
`SHARON A. ISRAEL, Shook, Hardy & Bacon, LLP, Hou-
`ston, TX, for appellant Cerner Corporation. Also repre-
` DAVID M. HOFFMAN, Fish & Richardson P.C., Austin,
`TX, for appellant athenahealth, Inc. Also represented by
` AMARDEEP LAL THAKUR, Manatt, Phelps & Phillips


`Case: 20-1853 Document: 41 Page: 2 Filed: 04/20/2021
`LLP, Costa Mesa, CA, for appellee. Also represented by
` ______________________
`Before LOURIE, O’MALLEY, and STOLL, Circuit Judges.
`This is not the first time issues presented on appeal do
`not mirror directly those presented to the lower tribunal.
`Such is the case here. Because we conclude that the claim
`construction debate on which this appeal initially turns
`was never presented to the Patent Trial and Appeal Board
`(“Board”) and that the Board had substantial evidence to
`support its assessment of the prior art disclosure at issue,
`we affirm the Board’s patentability determination.
`Cerner Corporation and athenahealth, Inc. (collec-
`tively, “Cerner”) appeal from a final written decision of the
`Board holding claims 1–25 of U.S. Patent 6,665,647 (the
`“’647 patent”) patentable. Those are the determinations we
`The ’647 patent describes a healthcare management
`system for healthcare enterprises. The purpose of the ’647
`patent is to allow healthcare enterprises to consolidate leg-
`acy software applications and new software applications to-
`gether on one software platform. Many healthcare
`enterprises utilize legacy systems for managing data re-
`lated to a variety of uses, including patient care, account-
`ing, 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`established systems are often outdated and too inflexible to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 pa-
`tent allows healthcare enterprises to preserve existing leg-
`acy applications while simultaneously phasing in new or
`updated applications on the same system.


`Case: 20-1853 Document: 41 Page: 3 Filed: 04/20/2021
`The enterprise healthcare management system in the
`’647 patent allows enterprises to “remotely host[] . . . turn-
`key health care applications” and “provide[s] . . . enterprise
`users access to the turnkey applications via a public net-
`work.” Id. at col. 2 ll. 61–65. Enterprises can upgrade ex-
`isting capabilities and add functionality not available in
`their current system without significant capital invest-
`ments. Because the applications are hosted on a public net-
`work (i.e., the internet), the healthcare enterprise only
`needs computing resources sufficient to allow secure, qual-
`ity access to the internet. The “turnkey” management sys-
`tem adjusts to changes within the enterprise as the system
`“easily and cost-effectively scales” to respond to an enter-
`prise’s needs. Id. at col. 3 ll. 19–23.
`The information collected by the enterprise from its ap-
`plications may be stored in a searchable database. Specif-
`ically, 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, radiol-
`ogy, laboratory, and clinical information data utilized by
`other applications of the application suite.
`The ’647 patent discloses that “the clinical data reposi-
`tory is a database that is partitioned” and that “the data-
`base 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 support-
`ing multiple enterprises, in which case “the information re-
`lated 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 in-
`volved with using the system, the clinical data repository
`may have multiple partitions, with each partition holding
`healthcare management information for the respective en-


`Case: 20-1853 Document: 41 Page: 4 Filed: 04/20/2021
`Among other things, the ’647 patent describes the par-
`titioning 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 enter-
`prise facility” and separately storing “[the] second
`healthcare data in a second portion of the database associ-
`ated with the second healthcare enterprise facility.” Id. at
`col. 14 ll. 24–29. The system allows two (or more) inde-
`pendent healthcare enterprises to share access to certain
`applications while maintaining sole access to their respec-
`tive unique healthcare applications. The databases are ef-
`fectively “partitioned” or “portioned” in this way.
`Relevant to this appeal is the “storing” clause in claim
`1 of the ’647 patent. Claims 2–25 depend from claim 1.
`Both parties agree that claim 1 of the ’647 patent is repre-
`sentative of the claims on appeal. Claim 1, which contains
`the storing clause, is reproduced below:
`1. A method of operating an enterprise healthcare
`management system for a first healthcare enter-
`prise facility and a second healthcare enterprise fa-
`cility independent of the first healthcare enterprise
`facility, comprising:
`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 communi-
`cation 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;
`receiving first healthcare data from the first end
`user and second healthcare data from the second
`end user;


`Case: 20-1853 Document: 41 Page: 5 Filed: 04/20/2021
`processing the first healthcare data and the second
`healthcare data with the healthcare application;
`storing the processed first healthcare data in a first
`portion of the database associated with the first
`healthcare enterprise facility and storing the pro-
`cessed second healthcare data in a second portion of
`the database associated with the second healthcare
`enterprise facility;
`configuring the database to accept legacy infor-
`mation derived from a legacy application operating
`at each of the first and second healthcare enter-
`prise facilities, wherein the functions in the
`healthcare application are not duplicative of the
`legacy application; and
`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 infor-
`mation for managing and tracking a performance
`of the respective one of the first and second
`healthcare enterprise facilities,
`wherein healthcare data in the first portion of the
`database is only accessible to the first end user de-
`vice and healthcare data in the second portion of
`the database is only accessible to the second end
`user device.
`’647 patent claim 1 (emphasis added).
`Cerner filed a petition to institute an inter partes re-
`view of claims 1–25 and 50–55 of the ’647 patent. The
`Board instituted an IPR with respect to all claims. Ad-
`dressing the claims in reverse order in its Final Written
`Decision, the Board first found claims 50–55—which were
`claims to the databases of a single healthcare facility and
`did not claim partitioning or portioning the databases—un-
`patentable as obvious in view of various combinations of


`Case: 20-1853 Document: 41 Page: 6 Filed: 04/20/2021
`prior art references, including a prior art patent to Johnson
`(U.S. Patent No. 6,915,265 (“Johnson patent”), issued July
`5, 2005, filed Oct. 29, 1997). See J.A. 87. The Board deter-
`mined, however, that Cerner failed to show by a prepon-
`derance of the evidence that claims 1–5, 10–13, and 15–
`25—directed to multi-facility databases partially sepa-
`rated into portions—were unpatentable based on those
`same references. Id. The Board also determined that
`Cerner failed to show by a preponderance of the evidence
`that claims 6–9 and 14 were unpatentable for similar rea-
`Cerner now appeals the Board’s decision related to
`claims 1–25 of the ’647 patent. We have jurisdiction over
`this appeal under 28 U.S.C. § 1295(a)(4)(A) and 35 U.S.C.
`§ 141(c).
`Cerner’s appeal turns on Johnson. Johnson discloses
`an information system for managing healthcare infor-
`mation. See Johnson patent at col. 2 ll. 25–28. Johnson
`describes a system in which a central host maintains “cen-
`tral databases” along with several applications. Id. at col.
`10 ll. 27–37. The databases contain information used by
`medical service providers for administrative purposes such
`as records of treatment authorization and accounting rec-
`ords with payment history and financial information. One
`of the “central databases” included in Johnson is the pro-
`vider service history/payment database. Id. at col. 16 ll.
`15–16. This database contains information used by medi-
`cal service providers for administrative purposes. Id.
`Each of the records stored in the provider service his-
`tory/payment database is associated with a particular ser-
`vice provider using a “provider ID” that identifies each
`service provider. Id. at col. 26 ll. 44–46. All of the data in
`the provider service history/payment database from a
`given service provider is grouped together under that pro-
`vider’s provider ID. Id. Service providers have access to


`Case: 20-1853 Document: 41 Page: 7 Filed: 04/20/2021
`their databases as well as the central databases. In this
`way the provider service history/payment database is “in-
`dexed” using the provider ID. Id. at col. 8 ll. 11–14.
`Cerner’s appeal turns on equating the “indexing” by pro-
`vider ID described in Johnson with the “portioning” of da-
`tabases disclosed in the ’647 patent.
`On appeal, Cerner argues that the Board’s nonobvious-
`ness determination was premised on an improper construc-
`tion of the term “portion.” Cerner contends that, if the term
`“portion” were construed properly, Johnson’s indexing
`would disclose the storing clause of claim 1. Cerner also
`argues that Johnson discloses or suggests the storing
`clause of claim 1, regardless of the construction of the term
`“portion” and that substantial evidence does not support
`the Board’s conclusion to the contrary. Finally, Cerner as-
`serts that the Board’s decision is not supported by suffi-
`cient reasoning to be affirmed. We address Cerner’s
`arguments in turn.
`Cerner first argues that the Board’s nonobviousness
`determination regarding claims 1–25 was premised on an
`incorrect construction of the term “portion,” which appears
`in the storing clause in claim 1 of the ’647 patent. Cerner
`contends that the Board deviated from the ordinary mean-
`ing of “portion” and, by doing so, narrowed the meaning of
`“portion” to exclude “data groupings created by indexing”—
`the process disclosed in Johnson. Cerner maintains that
`Johnson sufficiently discloses the logical or physical sepa-
`ration of data into the distinct “portions” described in the
`’647 patent.
`The problem for Cerner is that it never asked the Board
`to construe the term “portion” in the storing clause of claim
`1 and the Board did not do so. Cerner and Clinicomp asked
`for a number of terms to be construed and the Board thor-
`oughly analyzed each of the identified claim term.


`Case: 20-1853 Document: 41 Page: 8 Filed: 04/20/2021
`Instead, the parties and the Board proceeded on the as-
`sumption that the terms “partition” as used in the specifi-
`cation and the term “portion” as used in the claim were
`interchangeable and that they had a common ordinary
`meaning to one of skill in the art. As the Board described
`it, the two words were distinct, but it was a “distinction
`without a substantive difference.” J.A. 85. The Board’s
`finding on this point was not persuasively debated below,
`and with good reason. It is supported both by the plain
`language of the ’647 patent specification and by the testi-
`mony of both experts. Quite simply, the Board did not de-
`cline to construe any claim term presented to it and did not
`misunderstand the parties’ requests for claim construction.
`The ’647 patent discloses that “the database portion [of
`the clinical data repository] may be configured as either a
`logical partition or a physical partition.” ’647 patent at col.
`9 ll. 62–64 (emphasis added). If the words of the ’647 pa-
`tent are taken in their plain meaning, the ’647 patent
`makes clear that portions of the database are understood
`as either: (1) logical partitions; or (2) physical partitions.
`The specification describing the database portion supports
`the Board’s understanding that “portions” of the database
`described in the ’647 patent take form as “partitions” and
`the terms (i.e., “partition” and “portion”) are interchangea-
`ble in the context of the ’647 patent. ’647 patent at col. 9 ll.
`60–64. The Board did not err in determining that a portion
`is a logical or physical separation of data, especially when
`Petitioners never asked it to conclude otherwise.1
`Cerner’s real dispute is not with the Board’s under-
`standing of the term portion, but with the Board’s conclu-
`sion that Cerner had not directed it to any persuasive
`disclosure in Johnson that the unique provider IDs in
`In fact, Cerner accepted this characterization of the
`term portion when it first argued that indexing was the
`same as logical partitioning.


`Case: 20-1853 Document: 41 Page: 9 Filed: 04/20/2021
`Johnson results in a “logical or physical separation of
`data.” J.A. 84. Cerner is unhappy that the Board found
`that Johnson does not disclose the “portioning/partition-
`ing” described in the ’647 patent.
`But the Board had substantial evidence to support its
`conclusion. The Board properly credited the expert testi-
`mony of Dr. Bergeron, a highly qualified expert in the field
`of medical informatics, who concluded that the portioning
`described in the ’647 patent is a separate function from the
`indexing disclosed in Johnson. Dr. Bergeron testified that
`there “is no disclosure that Johnson’s database is parti-
`tioned into a portion for a first and second healthcare pro-
`vider.” J.A. 82. He further explained that “Johnson’s
`disclosures that the service history/payment database may
`be indexed by provider ID does not teach or suggest a
`multi-partition database.” Id.
`Dr. Bergeron’s testimony explained that merely identi-
`fying data or associating subsets of data with common val-
`ues (i.e., indexing by provider ID) does not constitute
`partitioning between distinct healthcare facilities. Relying
`on Dr. Bergeron’s testimony, the Board concluded that it
`had not been directed to anything in Johnson that supports
`Cerner’s positions that the data indexed under a given
`unique provider ID is itself “logical[ly] partitioned, or ‘por-
`tioned,’” from other aspects of the database. J.A. 84.
`The Board was persuaded that the indexing in Johnson
`would do nothing to separate or protect the respective data
`from outside facilities while still allowing access to the
`shared applications. As the Board noted “although John-
`son discloses that ‘a server can store subsets of the central
`databases’ the disclosed purpose is not to create a portion
`of the database, but simply to allow ‘localized sharing of
`data among service providers operating within a single ad-
`ministrative setting, for example, within a hospital or


`Case: 20-1853 Document: 41 Page: 10 Filed: 04/20/2021
`clinic, without the delay and additional costs of continual
`central host accesses.’”2 Id. at 83–84.
`The Board carefully considered the expert testimony of
`both parties when reaching this conclusion and expressly
`credited Patent Owner’s expert that Johnson fails to dis-
`close storing the data associated with two healthcare facil-
`ities in separate portions of a database. And, the Board
`explicitly noted that, “the passage in Johnson on which Dr.
`Sujansky [(Petitioner’s expert)] relies discloses use by dif-
`ferent people in a single ‘hospital or clinic,’” not separate
`healthcare facilities. Id. at 84. Though the provider IDs
`may keep track of who accesses which application on the
`database for that single facility, it does not partition the
`database, either logically or physically.
`Having carefully considered the relevant arguments of
`the parties and the relevant testimony of the parties’ ex-
`perts, and in the absence of evidence that Johnson dis-
`closed the portioning limitation in the storing clause of
`claim 1, the Board had substantial evidence to support its
`nonobviousness determination for the claims on appeal.
`We have considered the parties’ remaining argu-
`ments—particularly Cerner’s claim that the Board’s expla-
`nation for its reasoning was lacking—and do not find them
`persuasive. For the foregoing reasons, we affirm the
`Board’s determination that claims 1–25 of the ’647 patent
`are patentable.
`2 As the Board noted, Cerner’s contention that claim
`1 did not actually require “partitioning” was a belated at-
`tempt to move the goalposts— one without evidentiary sup-

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