Free Statement - District Court of Delaware - Delaware

Case 1:04-cv-01258-SLR

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Filed 04/22/2006

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A pnx t Mc esns pi 220 Me oadm ped A o K s 'A r 2,06 m r u o l n Regarding Its Proposed Revisions To The Jury Instructions

THE ASSERTED CLAIMS Before you can decide whether or not TriZetto has infringed the '164 patent, you will have to understand the patent "claims." The patent claims are the numbered paragraphs at

the end of the patent. The purpose of the claims is to provide notice to the public of what a patent covers and does not cover. The

claims are intended to describe, in words, the boundaries of the invention described and illustrated in the patent. claims define the patent owner's property rights. Infringement is the act of trespassing on those rights. the claims of the patent can be infringed. Neither Tthe Only The

specification, which is the written description of the invention, nor and the drawings of the patent describe one or more of the ways to practice the invention, sometimes referred to as the inventors' preferred embodiment, but they do not define the invention. Infringement is determined by

reference to the claims--not by reference to the specification and drawings.can be infringed. The claims of a patent do not have to cover every feature of the patented invention. Each claim is a separate

statement of the patented invention and, therefore, each of the asserted claims must be considered individually. To show

infringement of the '164 patent, McKesson needs only to establish that one of the asserted claims has been infringed. A- 1

Case 1:04-cv-01258-SLR

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A pnx t Mc esns pi 220 Me oadm ped A o K s 'A r 2,06 m r u o l n Regarding Its Proposed Revisions To The Jury Instructions

The three asserted claims are found beginning at column 117, line 2 of McKesson's '164 patent, which is exhibit 1 in evidence.

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A pnx t Mc esns pi 220 Me oadm ped A o K s 'A r 2,06 m r u o l n Regarding Its Proposed Revisions To The Jury Instructions

LITERAL INFRINGEMENT McKesson contends that the accused products directly infringe the asserted claims by literally infringing those claims. For an accused product to literally infringe an

asserted claim, the subject matter of the claim must be found in the accused product. In other words, an asserted claim is

literally infringed if the accused product includes each and every limitation in the patent claim. Literal infringement

must be determined with respect to each asserted claim individually by comparing the accused products to each of the asserted claims. If the accused product omits any single

limitation recited in a given claim, that product does not literally infringe that claim. Therefore, in determining whether an accused product literally infringes any asserted claim, you must: First, determine the scope of the asserted claim by reading the claim language, limitation by limitation, as those limitations have been construed by the court or, if they have not been specifically construed, according to their ordinary meaning. In applying the ordinary meaning of claim language that the court has not specifically construed, keep in mind that the ordinary meaning that you apply should not be limited to what is described in the specification and figures of the patent. It is the claim language -- not the specification and figures

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A pnx t Mc esns pi 220 Me oadm ped A o K s 'A r 2,06 m r u o l n Regarding Its Proposed Revisions To The Jury Instructions

-- that defines the invention.

Conversely, the ordinary

meaning of the claim language will not exclude the inventors' preferred embodiment(s) described in the specification and drawings -- such an interpretation of the claim language would rarely, if ever, be correct. Second, compare the accused product to each of the limitations of the asserted claim. . . . .

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A pnx t Mc esns pi 220 Me oadm ped A o K s 'A r 2,06 m r u o l n Regarding Its Proposed Revisions To The Jury Instructions

CLAIM CONSTRUCTION It is my duty under the law to define what the patent claims mean. . . . You are advised that the following definitions for the following terms must be applied: . . . 5. "Valid or invalid" shall mean appropriate or

inappropriate for payment. 6. "Ascertaining whether the at least one claim contains

a plurality of medical service codes" should be construed consistent with its ordinary meaning. This element covers

any method that performs the recited step and is not limited to the steps illustrated in Figures 2 and 3 of the '164 patent and need not be performed in order to determine if multiple code edits should be checked. 7. "Determining whether any medical service code in the

at least one claim is not present in the predetermined database" should be construed consistent with its ordinary meaning. This element covers any method that performs the

recited step, including the description of the preferred embodiment at column 5, lines 11-15 and Appendix C at columns 51-5 : " i i d t r i e w e h r t e c d e t y i v l d 2 ... t s eemnd hte h oe nr s ai or invalid by reference to the ALLCODE database 11"; "ALLCODE: Allcod i t e f l w i h c n a n e e y c d ... " e s h ie hc otis vr oe .

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A pnx t Mc esns pi 220 Me oadm ped A o K s 'A r 2,06 m r u o l n Regarding Its Proposed Revisions To The Jury Instructions

The parties have agreedcourt has decided that the remaining language should be construed consistent with its ordinary meaning. . . .

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A pnx t Mc esns pi 220 Me oadm ped A o K s 'A r 2,06 m r u o l n Regarding Its Proposed Revisions To The Jury Instructions

TIMING OF PATENT FILING AND ISSUANCE IRRELEVANT TO INFRINGEMENT QUESTION

During the trial, the jury asked the following question: "Is a program performing a function before a patent file date and issue date considered to be infringing even though they perform the same function." In this case, the answer to that question is "Yes." To explain further, the patent's issue date is October 12, 1993. The patent's effective filing date -- the date when

the application was first filed -- is September 30, 1988 (the earliest date under "Related U.S. Application Data). Neither

of those dates, nor any testimony concerning when the accused products were developed, is relevant to the question of infringement.

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