Free Claim Construction Answering Brief - District Court of Delaware - Delaware

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE MCKESSON INFORMATION SOLUTIONS LLC, Plaintiff, v. THE TRIZETTO GROUP, INC., Defendant. ) ) ) ) ) ) ) ) ) )

C.A. No. 04-1258 (SLR)

THE TRIZETTO GROUP, INC.'S ANSWERING CLAIM CONSTRUCTION BRIEF

MORRIS, NICHOLS, ARSHT & TUNNELL LLP Jack B. Blumenfeld (#1014) Rodger D. Smith II (#3778) 1201 N. Market Street Wilmington, Delaware 19899 (302) 658-9200 Attorneys for Defendant The TriZetto Group, Inc. OF COUNSEL: Jeffrey T. Thomas David Segal Michael A. Sitzman Daniel P. Muino GIBSON, DUNN & CRUTCHER LLP Jamboree Center, 4 Park Plaza Irvine, CA 92614 January 20, 2006

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TABLE OF CONTENTS Page I. NATURE AND STAGE OF THE PROCEEDINGS ........................................................ 1 II. SUMMARY OF ARGUMENT ......................................................................................... 1 III. STATEMENT OF FACTS ................................................................................................ 2 IV. THE LEGAL STANDARD FOR CLAIM CONSTRUCTION ........................................ 2 A. B. McKesson Misstates The Applicable Legal Standards Governing Claim Construction........................................................................................................... 2 McKesson Fails To Satisfy Its Obligation to Identify Corresponding Structure For The Claimed Functions Of The Patent................................................................... 6 1. Neither The Portions Of The Specification Nor Law Cited By McKesson Support Its Identification of "Any Software And/Or Hardware" As The Structure For Every § 112, ¶ 6 Claim Element........................................ 10 To The Extent That The Software Code In The Patent Constitutes Corresponding Structure, It Must Be Identified As Part Of The Court's Claim Construction .................................................................................. 13

2.

C.

The Method Claims Recite Functions, Not Acts, And Therefore Are Also Governed By § 112, ¶ 6 ....................................................................................... 14

V. THE DISPUTED CLAIM TERMS ................................................................................. 16 A. Predetermined Database....................................................................................... 16 1. 2. 3. B. McKesson's Proposed Construction Eliminates The Word "Predetermined" .................................................................................................................. 16 TriZetto's Proposed Construction Gives Meaning To The Words "Predetermined Database" And Is Supported By The Intrinsic Evidence.17 The "Predetermined Database" Must Contain Both The Medical Service Codes And The Relationships Between Them ........................................ 21

Means For Ascertaining Whether The At Least One Claim Contains A Plurality Of Medical Service Codes ................................................................................... 22 1. Functionally, Counting Codes Is Not The Same As Ascertaining Whether More Than One Code Exists.................................................................... 22

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TABLE OF CONTENTS Page 2. C. Figure 2, Box 20 Of The Specification Provides The Corresponding Structure................................................................................................... 24

The Determining Elements .................................................................................. 25 1. 2. 3. 4. 5. 6. Determining The Presence Of A Code (Claims 1(b) and 13(c)) ............. 27 Determining If One Of The Codes is "Valid Or Invalid" (Claims 3(d), 15(d), 16(c)) ............................................................................................. 28 Determining By Comparing One Code With Another Code (Claim (Claims 2(c), 10(d), 12(d), 14(d) and 12(e))............................................ 30 "Non-medical criteria" (Claims 2 and 14) ............................................... 32 "Medically determined relationships" (Claim 12) ................................... 32 The Undisclosed Predetermined Database Is Essential Structure To The Determining Means.................................................................................. 33

D. E. F. G.

"Authorizing" And "Rejecting" Means And Steps .............................................. 33 "Means For Receiving At Least One Claim" (Claims 3, 10, 12-15) ................... 36 "Means For Operating On A Predetermined Database" (Claims 1, 2, and 16).... 36 The Additional Limitations Of The Dependent Claims....................................... 37 1. 2. 3. Means for revising the at least one claim (claims 4 and 11).................... 37 Means for informing the user (claims 5 and 13)...................................... 38 Means for requesting further information from the user (claim 8).......... 38

VI. MCKESSON OFFERS NO BASIS FOR THE COURT TO PRECLUDE TRIZETTO'S TIMELY SERVED CLAIM CONSTRUCTIONS .......................................................... 39 VII. CONCLUSION................................................................................................................ 40

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TABLE OF AUTHORITIES Page Cases Altiris, Inc. v. Symantec Corp., 318 F.3d 1363 (Fed. Cir. 2003).................................................................................................7 AquaTex Indus. v. Techniche Sol'ns, 419 F.3d 1374 (Fed. Cir. 2005).................................................................................................3 AT&T Corp. v. Microsoft Corp., 2003 U.S. Dist. LEXIS 10716 (S.D.N.Y. 2003).....................................................................13 B. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419 (Fed. Cir. 1997)........................................11 Budde v. Harley-Davidson, Inc., 250 F.3d 1369 (Fed. Cir. 2002)...............................................................................................12 Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293 (Fed. Cir. 2005).................................................................................................5 Faroudja Lab., Inc. v. Dwin Elecs., Inc., 76 F. Supp. 2d 999 (N.D. Cal. 1999) ........................................................................................6 Fonar Corp. v. GE, 107 F.3d 1543 (Fed. Cir. 1997)...........................................................................................6, 13 Harris Corp. v. Ericsson Inc., 417 F.3d 1241 (Fed. Cir. 2005).................................................................................................7 Information Technology Innovation, LLC v. Motorola, Inc., 391 F. Supp. 2d 719 (N.D. Ill. 2005) ........................................................................................3 LizardTech, Inc. v. Earth Resource Mapping, Inc., 2006 U.S. App. LEXIS 137 (Fed. Cir. Jan. 5, 2006) ................................................................5 Medical Instrumentation & Diagnostic Corp. v. Elekta AB ("MIDCO"), 344 F.3d 1205 (Fed. Cir. 2003).....................................................................................6, 11, 12 Nomos Corp. v. Brainlab USA, Inc., 357 F.3d 1364 (Fed. Cir. 2004).................................................................................................5 Nystrom v. Trex Co., 424 F.3d 1136 (Fed. Cir. 2005).................................................................................................3 O.I. Corp. v. Tekmar Co., 115 F.3d 1576 (Fed. Cir. 1997).................................................................................................6

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TABLE OF AUTHORITIES Page Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931 (Fed. Cir. 1987)...................................................................................................8 Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005).....................................................................................1, 2, 3, 4 SciMed Life Sys. v. Advanced Cardiovascular Sys., 242 F.3d 1337 (Fed. Cir. 2001).................................................................................................4 Signtech USA, Ltd. v. Vutek, Inc., 174 F.3d 1352 (Fed. Cir. 1999).................................................................................................6 Texas Digital Sys. v. Telegenix, Inc., 308 F.3d 1193 (Fed. Cir. 2002).................................................................................................2 Wang Lab., Inc. v. AOL, 197 F.3d 1377 (Fed. Cir. 1999).................................................................................................4 WMS Gaming Inc. v. Int'l Game Tech., 184 F.3d 1339 (Fed. Cir. 1999).....................................................................................7, 12, 13 Statutes 35 U.S.C. § 112.............................................................................................................................1

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I.

NATURE AND STAGE OF THE PROCEEDINGS

On September 13, 2004, McKesson Information Solutions, LLC ("McKesson") filed this suit against The TriZetto Group, Inc. ("TriZetto") alleging infringement of U.S. Patent No. 5,253,164 ("the '164 patent"). On October 1, 2004, McKesson amended its Complaint. On November 1, 2004, TriZetto answered and filed a counterclaim seeking a declaratory judgment. With the exception of matters pending before the Special Master, fact and expert discovery have been completed. The Court has bifurcated the issue of invalidity and stayed motion practice and trial on that issue. Motion practice is proceeding on the non-bifurcated issues and a hearing is scheduled for February 16, at which time the Court is also scheduled to consider any issues of claim construction. Trial on the issues of infringement, damages, and equitable defenses is currently set for April 17. TriZetto filed its opening claim construction brief on December 15, 2005. D.I. 158. McKesson filed its opening claim construction brief on December 16. D.I. 170. Pursuant to the Court's revised standing order and the parties' stipulation, this is TriZetto's response to McKesson's claim construction brief. II. SUMMARY OF ARGUMENT

McKesson's opening claim construction brief fails to remedy the inherent defects in its proposed claim construction. Although McKesson suggests that "ordinary meaning" is enough to construe the majority of the claim elements, the Federal Circuit has repeatedly emphasized that a claim must be construed in light of the specification, and any "ordinary meaning" cannot be contrary to its usage in the specification. See, e.g., Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Nor can the ordinary meaning be used where there simply is no ordinary meaning or even evidence submitted as to such meaning. While its misstatement of the principles of claim construction is enough to render much of its proposed construction worthless, McKesson further compounds the problem by ignoring Federal Circuit precedents regarding the construction of claims governed by 35 U.S.C. § 112, ¶ 6. Throughout its Brief, McKesson creates the appearance that it is identifying corresponding

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structure by repeatedly referencing rules and figures from the patent, but, in the end, any corresponding structure magically gets reduced to "any software." In short, McKesson's attempt to recapture improperly all means and acts of the claimed functions should not be permitted. This brief and TriZetto's Opening Brief (D.I. 158) present ample support in the case law, intrinsic and extrinsic evidence to demonstrate the many flaws inherent in McKesson's proposed construction. Thus, TriZetto respectfully requests that the Court adopt its proposed construction. III. STATEMENT OF FACTS

The relevant facts have been provided in TriZetto's Opening Brief. See D.I. 158. IV. THE LEGAL STANDARD FOR CLAIM CONSTRUCTION

The applicable claim construction standards are set forth in TriZetto's Opening Brief. See generally D.I. 158 at 6-9; see also Phillips, 415 F.3d 1303. A. McKesson Misstates The Applicable Legal Standards Governing Claim Construction The overall theme of McKesson's brief is that the "words of a claim are generally given their ordinary and customary meaning." D.I. 170 at 3 (citing Phillips, 415 F.3d at 1312). McKesson further asserts that the "presumption that terms should be given their ordinary meaning is only rebutted if the patentee 'has disavowed or disclaimed [this] scope of coverage, by using words or expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.'" D.I. 170 at 3-4 (citations omitted). These general are incomplete. Specifically, in Phillips, the Federal Circuit "made clear . . . that the ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention." Phillips, 415 F.3d at 1313 (emphasis added). The Court further held that, "[i]mportantly, the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification." Id. (emphasis added). With respect to the suggestion in Texas Digital Sys. v. Telegenix, Inc., 308 F.3d 1193 (Fed. Cir. 2002) that any disavowal of ordinary meaning (as, for example, set forth in a dictionary) must be express, the Federal Circuit in Phillips held that "[a]ssigning such a limited

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role to the specification, and in particular requiring that any definition of claim language in the specification be express, is inconsistent with our rulings that the specification is 'the single best guide to the meaning of a disputed term.'" Id. at 1319-21. To this end, several post-Phillips decisions have questioned the notion (advanced by McKesson) that a patentee can rely exclusively on the "ordinary meaning" of claim terms divorced from the overall context of the intrinsic record. See, e.g., Nystrom v. Trex Co., 424 F.3d 1136, 1144-45 (Fed. Cir. 2005) ("as explained in Phillips, [the patentee] is not entitled to a claim construction divorced from the context of the written description and prosecution history"); AquaTex Indus. v. Techniche Sol'ns, 419 F.3d 1374, 1380 (Fed. Cir. 2005) ("[t]he specification is of central importance in construing claims. . . . Where, as here, the disputed claim term is technical or a term of art, 'the best source for understanding [it] is the specification from which it arose.").
1

Accordingly, contrary to McKesson's assertions and proposed constructions, the

proper construction of claim terms is not simply based on the untethered "ordinary meaning" of the words, but must be considered in light of the patent specification from the point of view of one of ordinary skill in the art at the time of the patent filing. Building on its incomplete statements about ordinary meaning, McKesson suggests that Phillips provides unqualified support of the use of general-purpose dictionaries to ascertain the ordinary meaning of claim terms. D.I. 170 at 3-4. McKesson's portrayal of Phillips in this
1

The district court in Information Technology Innovation, LLC v. Motorola, Inc., 391 F. Supp. 2d 719 (N.D. Ill. 2005), further explained:
[T]he Federal Circuit clarified the approach courts should use when analyzing claim language. District courts are directed to focus at the outset on how the patentee used the claim term in the claims, specification, and prosecution history rather than beginning the analysis by consulting dictionaries or similar sources. Criticizing the over-reliance on dictionaries that resulted from the methodology adopted in Texas Digital, [Phillips] noted that "heavy reliance on the dictionary divorced from the intrinsic evidence risks transforming the meaning of the claim term to the artisan into the meaning of the term in the abstract." . . . . But although dictionaries can inform claim construction, the focus should remain on the how the term is used within the patent. Courts must be careful to not adopt a definition that contradicts the intrinsic evidence. (Id. at 723, 725 (citations to Phillips omitted)).

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regard also is misleading. Phillips does state that general purpose dictionaries may be helpful "[i]n some cases [where] the ordinary meaning of claim language as understood by a person of skill in the art may be readily apparent even to lay judges, and claim construction in such cases involves little more than the application of the widely accepted meaning of commonly understood words." 415 F.3d at 1314 (emphasis added). Phillips also recognized, however, that "[i]n many cases that give rise to litigation . . . determining the ordinary and customary meaning of the claim requires examination of terms that have a particular meaning in a field of art," which requires looking to sources other than general purpose dictionaries, including the intrinsic evidence. Id. (internal citations omitted). In fact, the Phillips court expressly cautioned against placing too much reliance on general-purpose dictionaries, explaining: The problem is that if the district court starts with the broad dictionary definition in every case and fails to fully appreciate how the specification implicitly limits that definition, the error will systematically cause the construction of the claim to be unduly expansive. The risk of systematic overbreadth is greatly reduced if the court instead focuses at the outset on how the patentee used the claim term in the claims, specification, and prosecution history, rather than starting with a broad definition and whittling it down. 415 F.3d at 1320-23 (citations omitted). Here, McKesson's proposed "ordinary meaning" and dictionary definitions evidence the risk discussed in Phillips ­ it would result in a claim scope that extends far beyond what the inventors believed they had invented and had in their possession at the time of the '164 patent filing. Additionally, although TriZetto agrees with McKesson that the Court must be careful not to limit improperly the scope of claims based on the specification, where the specification makes clear that the claimed invention is narrower than the claim language might imply, it is entirely permissible and proper to limit the claims. SciMed Life Sys. v. Advanced Cardiovascular Sys., 242 F.3d 1337, 1345 (Fed. Cir. 2001); Wang Lab., Inc. v. AOL, 197 F.3d 1377, 1383 (Fed. Cir. 1999) ("when the 'preferred embodiment' is described as the invention itself, the claims are not entitled to a broader scope than that embodiment"); see also LizardTech, Inc. v. Earth Resource Mapping, Inc., 2006 U.S. App. LEXIS 137, at ** 5-6 (Fed. Cir. Jan. 5, 2006) ("[I]n whatever

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form the claims are finally issued, they must be interpreted, in light of the written description, but not beyond it, because otherwise they would be interpreted to cover inventions or aspects of an invention that have not been disclosed. Claims are not necessarily limited to preferred embodiments, but, if there are no other embodiments, and no other disclosure, then they may be so limited. One does not receive entitlement to a period of exclusivity for what one has not disclosed to the public.") (Lourie, J. concurring). Similar to the circumstances in SciMed and Wang, the '164 patent contains no detailed description of the invention other than the preferred embodiment. Indeed, the Figures discussed as part of the "preferred embodiment" are expressly identified as depicting "the overall operation of the programmed computer of the present invention," and the rules listed in Figure 6 and set forth in Appendix B are specifically identified as "the categories of rules applied to the entries in the present invention." See Ex. A, col. 4, figs. 2, 6 (emphasis added); see also id., Figs. 1-7 (identifying the figures as depicting the ­ not an ­ embodiment of the invention). Moreover, with respect to claim elements governed by Section 112, paragraph 6, the structure corresponding to those elements is expressly limited to the structure disclosed in the specification, which often will include the preferred embodiment. When the preferred

embodiment is the only corresponding structure disclosed in the specification, the means-plusfunction element is limited to covering the preferred embodiment and its equivalents. See Nomos Corp. v. Brainlab USA, Inc., 357 F.3d 1364, 1368 (Fed. Cir. 2004) ("This is the only embodiment of the invention described in the . . . patent. As a result, the corresponding structure is limited to that embodiment . . . and its equivalents.").
2
2

See also Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1304 (Fed. Cir. 2005) ("because there is only one embodiment described in the specification . . . there is no basis on which to extend the limitation to cover alternative, non-disclosed structure not shown to be structurally equivalent"); Faroudja Lab., Inc. v. Dwin Elecs., Inc., 76 F. Supp. 2d 999, 1013 (N.D. Cal. 1999) ("'[a]lthough patentees are not necessarily limited to their preferred embodiment, interpretation of a means-plus-function element requires this court to consult the structure disclosed in the specification, which often, as in this case, describes little more than the preferred embodiment'") (quoting Signtech USA, Ltd. v. Vutek, Inc., 174 F.3d 1352, 1356 (Fed. Cir. 1999)); id. ("[c]ourts
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B.

McKesson Fails To Satisfy Its Obligation to Identify Corresponding Structure For The Claimed Functions Of The Patent As the authority cited by McKesson (D.I. 170 at 5) makes clear: Section 112, ¶ 6, as is well-documented, was intended to permit use of means expressions without recitation of all the possible means that might be used in a claimed apparatus . . . The price that must be paid for use of that convenience is limitation of the claim to the means specified in the written description and equivalents thereof.

O.I. Corp. v. Tekmar Co., 115 F.3d 1576, 1583 (Fed. Cir. 1997). Additionally, in exchange for the benefit of writing a claim element in the simplified means-plus-function form, the patentee is obliged to clearly link the claimed function to the corresponding structure disclosed in the patent specification. See Medical Instrumentation & Diagnostic Corp. v. Elekta AB ("MIDCO"), 344 F.3d 1205, 1211 (Fed. Cir. 2003) ("[t]he duty of the patentee to clearly link or associate structure with the claimed function is the quid pro quo for allowing the patentee to express the claim in terms of function under section 112, paragraph 6"). In its brief, McKesson states that "[a]dditional portions of the specification further disclose or infer the algorithms and other structures corresponding to the claim functions," including figures 1, 2, and 4, and Appendices A through D (which includes the software code). D.I. 170 at 18. In its claim construction, however, while repeatedly making statements that there is corresponding structure linked to the claimed functions (see, e.g., id. at 21, 23, 31, 33, 37-40), McKesson never identifies any "corresponding structure" beyond "any software." For example, in the discussion of determining means, McKesson broadly cites to various rules that are used in connection with the disclosed system to determine whether one or more codes submitted on a claim should be authorized or rejected. Id. at 30-31. After going through that exercise, however, McKesson does not construe the claims to include the specific rules that it identifies and fails to identify any specific structure that is clearly linked to the precise
[Footnote continued from previous page]

have also made it clear that a specification that merely mentions the possibility of alternative structures without specifically identifying them is not sufficient to expand the scope of the claim beyond the single example used") (citing Fonar Corp. v. GE, 107 F.3d 1543, 1551 (Fed. Cir. 1997)).

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determination criteria in the claims, such as "non-medical criteria" or "medically exclusive."

3

Instead, McKesson construes the corresponding structure to be "software capable of interacting with the database" to perform the determining functions. Indeed, for each means-plus-function element of the claims, McKesson references some specific structure but then concludes that the relevant structure is simply "software," or "hardware and software." D.I. 170 at 21, 23, 31, 33, 37-40. When construing means-plusfunction terms, simply invoking "software" or "hardware and software" as corresponding structure is not enough ­ the specific algorithm in the specification must be identified. Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1253 (Fed. Cir. 2005) ("[a] computer-implemented means-plus-function term is limited to the corresponding structure disclosed in the specification and equivalents thereof, and the corresponding structure is the algorithm"); WMS Gaming Inc. v. Int'l Game Tech., 184 F.3d 1339, 1348 (Fed. Cir. 1999) ("[t]he structure of a microprocessor programmed to carry out an algorithm is limited by the disclosed algorithm"); Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1376 (Fed. Cir. 2003) ("merely pointing out that the relevant structure is software rather than hardware is insufficient . . . one must still look to the

3

As detailed below, McKesson does not point to such clearly linked structure because there is none, at least as to some elements. The patent specification describes a system and utility of applying specific clinical editing rules to make an expert determination about appropriateness of submitted medical codes, while the claims of the patent inexplicably and confusingly recite various vague "determining" functions. For example, compare Ex. A, col. 5, l. 60-68 ("[T]he program will examine the multiple codes presented to determine whether payment or payment authorization for each of the stated codes is medically appropriate, or whether one or more of the codes is medically inappropriate, or whether one or all of the multiple codes should be replaced by other code(s). In order to accomplish this, a set of rules developed for use of this program is now invoked."); col. 6, ll. 13-16 ("Therefore, for both single and multiple code entries, a set of rules applicable to CPT-4 codes singlely and in combination are used to evaluate the appropriate ness of the codes for payment.") with Ex. A, Claim 12 ("means for determining whether one of the medical services codes in the at least one claim is medically exclusive with any other medical service code in the at least one claim"); Claim 14 ("means for determining whether one of the medical service codes in the at least one claim is mutually exclusive due to non-medical criteria with any other medical service code in the at least one claim").

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specification for an adequate understanding of the structure of that software"). By characterizing the structure as "software" or "hardware and software" to support the purely functional claims in the '164 patent, McKesson impermissibly seeks to capture all means to perform the claimed functions. Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 934 (Fed. Cir. 1987)

("section 112, paragraph 6, rules out the possibility that any and every means which performs the function specified in the claim literally satisfies that limitation"). Importantly, if the Court were to adopt McKesson's broad definition of structure to include any hardware and/or software, the '164 patent would be rendered obvious, unsupported by the written description, and subject to an on-sale bar as a matter of law. By asserting that one of ordinary skill would know how to implement every recited function in the patent claims (see, e.g., D.I. 170 at 22, 29, 39), McKesson is essentially admitting that the patent was obvious to one of ordinary skill in the art.
4

Indeed, one of the inventors of the '164 patent admitted that much of what is recited in the claims is not novel. Dr. Holloway admitted that the basic idea of using software to correct for unbundling was not novel in 1987. See Ex. K (Holloway Dep.) at 144:12-24. Rather, according to Dr. Holloway, the claimed invention's novelty arises from the disclosed twenty-one "metarules" and the specific order of their application. Id. at 147:9-14 ("Q: Okay. So it was once you ­ it was once that you had those 21 metarules and you had discovered the sequence in which they needed to be fired, it was at that point that you thought you had something novel? A:
5

4

In contrast, when opining that the '164 patent is valid, McKesson's experts point to the specific details of the implementation, including the rules in Appendix B. See infra, at 9. If McKesson is correct and the rules are not part of the claims, the Court can readily deal with the question of validity as a matter of law prior to any trial on infringement. Dr. Holloway also testified that the "database containing medical service codes and a set of relationships among the medical service codes" was novel, but that the specific relationships were not disclosed in the patent. Ex. K (Holloway Dep.) at 275:12-276:3.

5

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Yes."); see also Ex. L (Hertenstein Dep.) at 228:19-229:4 (the basis for the patent was the Appendix B rules).
6

McKesson's invalidity expert, Dr. David Wilson, also asserts that the patent was novel over the prior art principally because of the specific clinical editing rules developed by the inventors. Ex. M (Wilson Report) at 18 (noting that the operation of the rules in Appendix B is explained in the description of the preferred embodiment, but not identifying those rules in the patent claims); 29 (describing process for developing rules); 30 (noting that the techniques used in the '164 patent are completely different from Dr. Hertenstein's manual process). In attempting to distinguish the prior art, Dr. Wilson relies on the Appendix B rules. See, e.g., Ex. N (Wilson Dep.) at 35-36 (stating that reference disclosing manual process for clinical editing did not anticipate because it did not disclose the relevant rules); 38 (stating that MEDCLAIM does not anticipate because it does not show "program logic or processing rules"). Yet, under McKesson's proposed "any software" claim construction, these rules are not part of the claims of the '164 patent. Furthermore, Dr. Wilson's report emphasizes the central role of the specification. Dr. Wilson spends several pages of his expert report describing how the rules contained in the '164 patent "disclose[] exactly how one might design a knowledge base for medical codes." Ex. M (Wilson Report) at 31. Wilson further notes that "[t]he database design must match the structure of the logic used in the knowledge base interpreter in order for CodeReview to work efficiently." Id. (emphasis added) (explaining that the Appendix C database design correlates with the Appendix B rules). Finally, McKesson's proposed construction, which does not include the set of clinical editing rules utilized in the flowcharts and outlined in Appendix B, is directly contrary to the arguments the patentee made during prosecution. Specifically, in attempting to overcome the

6

Other than the Appendix B rules, the patent merely describes using a computer and a database to automate Dr. Hertenstein's manual Caterpillar process. See Ex. L (Hertenstein Dep.) at 209:20-210:1.

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repeated rejection of its claims, the patentee asserted that "[t]he present invention uses and claims a set of rules that describe the relationship between medical service codes (which correspond to particular medical services or procedures) to determine whether or not there are improper medical service codes in a particular claim." Ex. O (Prelim. Amend., dated Jan. 29, 1991) at 16. Thus, because McKesson's construction fails to expressly include the particular set of rules disclosed in the patent, it should be rejected. For these reasons, the Court should not permit McKesson to avoid "paying the price" for having written claims that are governed by 35 U.S.C. § 112, ¶ 6 and obtain claim coverage for any software implementation of the claimed functions. 1. Neither The Portions Of The Specification Nor Law Cited By McKesson Support Its Identification of "Any Software And/Or Hardware" As The Structure For Every § 112, ¶ 6 Claim Element

As noted above, McKesson argues that the corresponding structure for all of the claim elements governed by § 112, ¶ 6 can be construed to be any software or any hardware and software. See D.I. 170 at 21, 23, 31, 33, 37-40. In support of this argument, McKesson principally relies on one section of the specification, which states: The computer system 2 may be any type of which can interact with the present invention. One such suitable computer system is the well-known IBM "personal computer" containing sufficient data processing capabilities and memory and suitable commercially available database management software programs to perform the desired functions. Other suitable computer systems exist and are intended to come within the scope of the present invention. Ex. A, col. 4, ll. 33-42; see also D.I. 170 at 20, 22, 23 (citing same).
7

Contrary to McKesson's contention, this section of the specification plainly refers to the fact that the disclosed program (CodeReview) can be run on any suitable general purpose computer in conjunction with a commercially-available database program. In the case of the

7

McKesson also relies on the general disclaimer that appears before the claims that states that other variations are intended to come within the scope of the claims. See '164 patent, col. 10, ll. 60-64. This language, however, is indisputably not linked to any claimed function, nor does it identify any specific structure. As such, it cannot support McKesson's position.

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disclosed method and apparatus, the source code in Appendix D ran on an IBM personal computer with DBase III. See Ex. A, col. 4, ll. 33-40; Ex. K (Holloway Dep.) at 178:16-179:6; 193:14-25. Yet, McKesson does not incorporate CodeReview, Dbase III, or any other software algorithm or program as corresponding structure for the means-plus-function elements. Additionally, although this section refers to performing the "desired functions" (Ex. A, col. 4, l. 40), it does not specifically refer to any of the claimed functions such as "ascertaining," "determining," "authorizing," or "rejecting." B. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997) (noting that a disclosed structure is corresponding "only if the specification or the prosecution history clearly links or associates that structure to the function recited in the claim"). Rather, in the context of and in light of the reference to the use of commercially-available database software, it is apparent that the "desired functions" here refers to the functionality of having a program (the "interpreter") interact with data in the database files (the "knowledge base"), as opposed to the other specific functions set forth in the claims. In sum, this section of the specification does not stand for the proposition that the purported inventive method and apparatus could be practiced without any reference to the specific program flowcharts, rules, and other structure disclosed in the specification. Accordingly, because it provides the essential foundation for McKesson's proposed claim construction, McKesson's construction should be rejected. Just as the factual basis for McKesson's "any software" construction is without merit, so are McKesson's legal arguments. McKesson misreads the Federal Circuit's MIDCO case to support its position. First, MIDCO does not permit a patentee to satisfy the structural

requirement by having its expert invoke "software," as McKesson suggests. D.I. 170 at 14. MIDCO made clear that specific software structure had to be revealed in the patent specification. MIDCO, 344 F.3d at 1212 ("it is not proper to look to the knowledge of one skilled in the art apart from and unconnected to the disclosure of the patent"). The patentee in MIDCO argued, as McKesson does here, that corresponding structure was provided by a general statement in the patent specification indicating that software for performing the patented functions was "either

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commercially available or within the skill of practitioners in the programming arts." Id. at 1217. The Federal Circuit rejected this contention, observing that such a generic reference to "software" did not disclose specific structure linked to each claim element. Id. at 1217-18 ("there must be something in the disclosure to indicate to the public that the patentee intends for a particular structure to correspond to a claimed function"). Second, in MIDCO, the patentee did not assert that every means-plus-function element could be implemented in software, but only asserted that the digital-to-analog converting means of one element had such corresponding structure. By contrast, McKesson would effectively be admitting obviousness by contending that the "determining" means and steps ­ purportedly the very inventive contribution made by the '164 patent ­ was capable of being implemented in "any software" known to one of ordinary skill in the art. McKesson's proposal is especially
8

remarkable as the idea of using software to perform claims editing, including unbundling, was not only publicly disclosed by the inventors more than one year prior to the patent filing, but was also offered for sale by them. Third, McKesson's reading of MIDCO conflicts with other Federal Circuit authority. Specifically, as McKesson quotes (D.I. 170 at 13), WMS Gaming held that "[i]n a means-plusfunction claim in which the disclosed structure is a computer, or microprocessor, programmed to carry out an algorithm, the disclosed structure is not the general purpose computer, but rather the special purpose computer programmed to perform the disclosed algorithm." 184 F.3d at 1349 (emphasis added). In other words, WMS Gaming rejected the very position advanced by

McKesson that the corresponding structure for a computer-implemented means-plus-function element is simply "software" (i.e., "an[y] algorithm executed by a computer"). Id. at 1348.
8

Similarly, in Budde v. Harley-Davidson, Inc., 250 F.3d 1369 (Fed. Cir. 2002), discussed in MIDCO and relied upon by McKesson (D.I. 170 at 14), the corresponding structure was a particular device ­ a "vacuum sensor" ­ disclosed in the patent for performing a specific claimed function. Budde, 250 F.3d at 1381. Unlike the selected quotes relied on by McKesson, the specification in Budde referenced the specific function ­ vacuum sensors ­ which were "commercially available units which produce analog signals for the control unit." Id.

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2.

To The Extent That The Software Code In The Patent Constitutes Corresponding Structure, It Must Be Identified As Part Of The Court's Claim Construction

McKesson suggests that TriZetto's proffered constructions of the structure of the meansplus-function elements are improper because they include specific portions of the software code. D.I. 170 at 18-19. As support, McKesson relies on the Federal Circuit's opinion in Fonar. The portion of Fonar cited by McKesson concerns a patentee's obligation to disclose the best mode of an invention, not whether disclosed software must be considered as part of the means-plusfunction or steps-plus-function analysis. Fonar, 107 F.3d at 1549 (holding that "[s]tating the functions of the best mode software satisfies that [best mode] description test"). Moreover, even if the source code is not required for purposes of best mode, this does not compel the conclusion that when source code is disclosed as structure for the claimed functions ­ which McKesson admits ­ that code can simply be ignored. Thus, the quoted portion of Fonar is completely inapplicable here. Correspondingly, McKesson's assertion that Fonar provides support for its construction of the corresponding structure is simply wrong. McKesson also alleges that the court would "abdicate" its role of claim construction if it identified specific software as the structure for any claim elements. D.I. 170 at 19 (citing Markman). Nothing in Markman (or any other patent case), however, precludes the appropriate identification of portions of software code as structure corresponding to means-plus-function or steps-plus-function elements. To the contrary, where software code is disclosed in a patent, and is clearly linked to the functions of the claims, it is appropriate that the specific code that performs those functions be identified as corresponding structure. See, e.g., AT&T Corp. v. Microsoft Corp., 2003 U.S. Dist. LEXIS 10716 (S.D.N.Y. 2003) (holding, in a claim construction order, that various appendices containing short subroutines of software code are corresponding structure that implement certain boxes of the flow charts in the specification).
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See, e.g., D.I. 170 at 29 (McKesson identifying the entirety of Appendix D (the software code) as the structure for claim elements).

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By refusing to identify the specific structure in the specification that corresponds and is clearly linked to the claimed functions, McKesson has abdicated its obligation to identify specifically the alleged scope of the claimed invention. C. The Method Claims Recite Functions, Not Acts, And Therefore Are Also Governed By § 112, ¶ 6 Finally, the inventors' use of "steps of" rather than "steps for" language only means that there is no presumption that the elements of claims 1, 2, and 16 are drafted in step-plus-function format. Accordingly, the claims must be analyzed in light of the intrinsic evidence to determine whether § 112, ¶ 6 applies. Masco Corp. v. United States, 303 F.3d 1316, 1327 (Fed. Cir. 2002); Seal-Flex, Inc. v. Athletic Track & Court Constr., 172 F.3d 836, 849 (Fed. Cir. 1999) (Rader, J., concurring) ("[C]laim elements without express step-plus-function language may nevertheless fall within § 112, ¶ 6 if they merely claim the underlying function without recitation of acts for performing that function"); see O.I. Corp., 115 F.3d at 1583 ("Each claim must be independently reviewed in order to determine if it is subject to the requirements of section 112, P 6."). The Court made clear in Masco that claims employing "steps of" language are subject to § 112, ¶ 6 if "the limitation contains nothing that can be construed as an act." Masco, 303 F.3d at 1327. The Seal-Flex court cited Judge Rader's elucidation of the distinction between "acts" and "functions": In general terms, the "underlying function" of a method claim element corresponds to what that element ultimately accomplishes in relationship to what the other elements of the claim and the claim as a whole accomplish. "Acts," on the other hand, correspond to how the function is accomplished. Therefore, claim interpretation focuses on what the claim limitation accomplishes, i.e., its underlying function, in relation to what is accomplished by the other limitations and the claim as a whole. If a claim element recites only an underlying function without acts for performing it, then § 112, ¶ 6 applies even without express stepplus-function language. Seal-Flex, 172 F.3d at 849-50 (Rader, J., concurring). The question in this case, therefore, is whether the steps of the method claims in the '164 patent recite any acts. In Masco, "transmitting a force . . .to drive the lever" to contact the cam was the act that accomplished the function of "driv[ing] the lever into the cam." 303 F.3d at 1327-28. Similarly,

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the patent in Seal-Flex recited the step of "spreading an adhesive tack coating for adhering the mat to the foundation." 172 F.3d at 839. Judge Rader concluded that "the function of 'adhering' is the result achieved by performing the claimed act of 'spreading."' Id. at 850-51 (concurring opinion). But "if this claim limitation had specified only the underlying function, namely, 'adhering the mat to the foundation,' without recital of specific acts for 'adhering,' [then] § 112 ¶ 6 would have governed, despite the lack of 'step for' language." Id. at 851 (emphasis added). In this case, the elements of the method claims ­ which, although not determinative, include identical admittedly functional language used in the apparatus claims ­ also do not recite any corresponding act and, thus, are governed by § 112, ¶ 6. In contrast to the situations in Masco and Seal-Flex, none of McKesson's various filings in this case even attempt to identify the function of the method steps other than the cited functions in the claims themselves. McKesson cannot identify the acts in the method claims, because the claims only identify the relevant functions. Specifically, here, the function of "receiving" a claim is performed by the act of "entering" the claim information, the function of "determining" is performed by the act of "applying" the rules and "checking" the relevant databases, and the functions of "authorizing" and "rejecting" codes is performed by the act of "displaying: a message to the user advising him or her which codes to assign to the claim. In any event, even if the steps of the method claims are not governed by § 112, ¶ 6, the proper construction of the terms limit their interpretation to the specific structures disclosed in the specification. See, e.g., O.I. Corp., 115 F.3d at 1583-84 (even though "passage" was not governed by § 112, ¶ 6, limiting term to non-smooth walled structures disclosed in the specification). For example, during prosecution the patentee argued that "[t]he present invention uses and claims a set of rules that describe the relationship between medical service codes (which correspond to particular medical services or procedures) to determine whether or not there are improper medical service codes in a particular claim." Ex. O (Prelim. Amend., dated Jan. 29, 1991) at 16. In the patent, the inventors make clear that, when dealing with multiple codes, the claim should be processed by both the multiple and single code edits in order for

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codes to be properly authorized or rejected for payment. See Ex. A ('164 patent), col. 6, ll. 13-16 ("Therefore, for both single and multiple code entries, a set of rules applicable to CPT-4 codes singlely and in combination are used to evaluate the appropriateness of codes for payment."); col. 4, ll. 5-14 (descriptions of figures 2, 4, and 5 as showing the relevant flow of operation of the claimed invention). In fact, nowhere in the patent is there a suggestion that only applying some narrow subset of the rules provides the utility of the claimed invention. Thus, the "determining" step must be read to include the rules and specific database. Correspondingly, the construction of the "ascertaining whether" and "authorizing/rejecting" steps also should be narrowly construed to conform with the specification. V. A. THE DISPUTED CLAIM TERMS

Predetermined Database 1. McKesson's Proposed Construction Eliminates The Word "Predetermined."

In its Opening Brief, McKesson proposes that the phrase "predetermined database" be interpreted with the phrase "containing medical service codes and a set of relationships among the medical service codes" as meaning "a database containing relationships among medical service codes for processing medical claims to detect potential coding errors." D.I. 170 at 7. By packing all of these terms together and claiming that they should be given their "ordinary meaning," McKesson hopes that the Court will overlook the fact that its interpretation of the word "predetermined" effectively eliminates the word from the claims. Specifically, McKesson asserts that the "clear" ordinary meaning of the word "predetermined" "from the context of each claim" requires that the relationships in the database are determined before the claim is received for processing. D.I. 170 at 7. The context of the claim, in which the predetermined database is never modified, however, makes clear that the database ­ whether or not it was predetermined ­ would need to be determined before the claim is received for processing. Thus, there are two fundamental and obvious flaws in McKesson's approach.

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First, McKesson's proposed construction effectively gives the word "predetermined" no meaning and improperly reads it out of the claims. Elekta Instrument S.A. v. O.U.R. Scientific Int'l, Inc., 214 F.3d 1302, 1307 (Fed. Cir. 2000) (construing claim to avoid rendering the 30 degree claim limitation superfluous); Gen. Am. Transp. Corp. v. Cryo-Trans, Inc., 93 F.3d 766, 770 (Fed. Cir. 1996) (rejecting the district court's claim construction because it rendered superfluous the claim requirement for openings adjacent to the end walls). It is a fundamental aspect of claim construction that the Court must give meaning to each claim limitation at issue. Ethicon, 93 F.3d at 1582. From the outset of prosecution, the drafters of the '164 patent included the word "predetermined" as a modifier of the word "database" in each and every one of the patent claims. Pretending that the word has no meaning or real effect should not be permitted. Second, contrary to McKesson's contention, there is no ordinary meaning for the phrase "predetermined database." In fact, the evidence from McKesson's own experts reveals that the phrase "predetermined database" has no ordinary meaning to one of ordinary skill in the art. See D.I. 158 at 12-13 (collecting testimony of experts). Indeed, when pressed to define

"predetermined database," McKesson's experts could not even agree on a definition. See id. (same). If the phrase "predetermined database," did have an "ordinary meaning," presumably McKesson's experts would have agreed on a definition. Thus, the proposed construction offered by McKesson eliminating the word "predetermined" from the claims altogether cannot stand. 2. TriZetto's Proposed Construction Gives Meaning To The Words "Predetermined Database" And Is Supported By The Intrinsic Evidence.

In contrast to McKesson's approach, TriZetto has attempted to offer a construction of the phrase "predetermined database," that gives meaning and effect to both words and that is supported by the disclosures in the patent specification: A database . . . that is designed to be modified or updated only by the system designer or vendor, and that is not designed to be modifiable by the end user. McKesson argues that TriZetto is attempting to add limitations to claims that do not exist. On the contrary, TriZetto is attempting to provide a construction that gives meaning to each claim

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term and is consistent with the intrinsic evidence. When deciding between the two constructions, TriZetto's construction must be adopted because all of the claim terms must be given preference. Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) ("A claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so."). a. "Predetermined" by whom?

A principal dispute between the parties' is not whether the knowledge base (i.e., the predetermined database) can ever be updated, as McKesson attempts to suggest, but who has access to and the ability to update the rules in the "predetermined database" ­ the end user or the "experts," whose judgments were the basis for the specific claims edits included in the program. See Ex. A, col. 5, l. 67-col. 6, l. 11 ("In order to [determine whether payment or payment authorization for each code on the claim was medically appropriate or not], a set of rules were developed for use of this program . . . These rules were derived using the CPT-4 classification system, . . . and possible combinations of procedures assessed by expert medical specialists. . . . Each of the rules was developed as a result of reviewing medical procedures by expert medical personnel . . . . [and the] expert medical personnel also appl[ying] clinical judgment.").
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To this

end, McKesson's argument that TriZetto's construction would exclude the preferred embodiment because the patent describes the fact that the database can be updated and modified based on the claims history, D.I. 170 at 8, is wrong ­ TriZetto's construction does not preclude modification or update of the database, but simply specifies who can make such modifications or updates.

10

McKesson also argues that TriZetto's construction may permit one to avoid infringement by permitting users to modify the "predetermined database." D.I. 170 at 8. TriZetto submits that whether a particular system would literally infringe a claim as properly construed in light of the intrinsic record, however, is not appropriately considered as part of the Court's claim construction. Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996) (holding that construing patent claims is a question of law for the judge, separate from determining whether infringement occurred which is a question of fact to be submitted to the jury).

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In the context of disclosing the purpose and function of the "predetermined database," the patent specification makes repeated reference to the expert-decision-making rules contained in the "predetermined database." See Ex. A, col. 3, ll. 42-45 ("The knowledge base interpreter is a part of the CodeReview program and contains an association of the CPT-4 codes with the knowledge base of expert-derived decisions or rules."); id., col. 5, ll. 67-68 ("In order to accomplish this, a set of rules developed for use of this program is now invoked."); id., col. 5, l. 68-col. 6, l. 4 ("These rules were derived using the CPT-4 classification system, and from various medical procedures which were examined, classified, and possible combinations of procedures assessed by expert medical specialists."). The specification also makes clear that the rules are created by the manufacturer or vendor and they are not user-modifiable. See, e.g., id., col. 3, ll. 32-34 ("There is included [with the CodeReview program] a knowledge base and a knowledge base interpreter which applies the knowledge base using the rules specified in the knowledge base interpreter"). Indeed, there is no suggestion or hint in the specification that modification by an end user of the preset rules can be achieved by the '164 invention or that such functionality was ever contemplated by the inventors. Nowhere in the specification, flowcharts, or the appendices is there any computer code or other mechanism that would permit the end user to view, let alone modify, the rules contained in the "predetermined database." McKesson erroneously relies on the patent's discussion of the HISTORY database as evidence that the "predetermined database" is user modifiable. D.I. 170 at 8. The description of the HISTORY database in the specification, however, actually supports TriZetto's position. First, there is no disclosure of any means for the user of the computer system to view the contents of the HISTORY database, and there is no explanation of how an end-user should or could use the contents of the HISTORY database to modify the "predetermined database." In contrast, the specification does provide support that "experts" (that is, the system designer or vendor) can and should review the HISTORY database in order to provide updates to the system rules and program based on errors, changes and other new coding issues. Ex. A, col. 10, ll. 3-8 (the HISTORY database is used "as a means to study these 'case histories' and refine, update, and

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change the rules and the knowledge base interpreter" (i.e., the computer code of the program itself)). Additionally, McKesson has not submitted any evidence that one of ordinary skill

would consider the end users discussed in the specification "experts" or that they would understand how to use the HISTORY database to modify the rules or the code of the program. Importantly, the extrinsic evidence also supports TriZetto's construction. The inventors testified that including a new rule or edit in the database was not simply a process of inserting it into the database, but rather required careful checking to make sure the interaction with the entire program flow produced the correct result. Ex. P (Goldberg Dep.) at 330-334 (describing

interviewing process required to develop rules); Ex. K (Holloway Dep.) at 91-93 (stating that the rules were developed by spending a lot of time with Dr. Hertenstein and by comparing the computer's trial results with Dr. Hertenstein's judgment); Ex. L (Hertenstein Dep.) at 224-227. Additionally, the rules databases in CodeReview, the program on which the '164 patent is based (see, e.g., Ex. A, col. 3, ll. 17-29; App. A (examples of "typical session[s] with CodeReview"), could not be viewed or modified by the users. See Ex. Q (MCK 119730). In fact, in

CodeReview, the HISTORY database was returned to HPR (the vendor of the CodeReview program described in the '164 patent) on a regular basis so that HPR could review and update the rules.
11

11

See, e.g., Ex. R ("Functional Specifications for Batch Version of Code Review," revised Oct. 27. 1989) at MCK 042486 ("There are three reasons for CodeReviewTM to maintain [the History File]: . . . 2) to allow HPR physicians to evaluate CodeReview'sTM recommendations and increase its clinical astuteness by providing solutions to the most recently derived coding problems . . ." (emphasis added)); id. (the customer will "send the Decision History file to HPR" on a monthly basis); Ex. S ("Code Review" hand typed manual) at MCK 028722 ("It is important that you keep a backup [of the pended and history files] for HPR Inc. as it will indicate . . . whether or not CodeReview decisions need to be altered to better suit your needs."); Ex. T (CodeReviewTM User Guide, copyright 1989) at MCK 051136 ("Backing up the History File--Send to HPR"); see also Ex. U (Product Description for CodeReviewTM Release 1.0, Feb. 1989) (describing the updating of the Knowledge Base by HPR, including review of the coding file).

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Accordingly, TriZetto submits that all of the intrinsic and extrinsic evidence supports its construction that the "predetermined database" of the '164 patent was expressly designed to be "predetermined" by the experts and not the end users. b. Database
12 13

As used in the '164 patent specification a "database" consists of a single table of data ­ such as, the ALLCODE, INTERACT, BYITSELF, and MESSAGE databases. Specifically, the

specification repeatedly describes each of these tables of data (see Ex. A, App. C) as a single, separate "database,"
14

and also references the collection of separate database tables with the

plural "databases." See id., col. 10, ll. 48-50 ("Of course, the process described with reference to program 10 may be performed with databases other than the CPT-4 example given." (emphasis added)). Although today "database" may have an "ordinary meaning" of a single database file potentially containing multiple tables, the intrinsic evidence unambiguously establishes that the inventors consistently used the term "database" to refer to a single table of data. 3.
15

The "Predetermined Database" Must Contain Both The Medical Service Codes And The Relationships Between Them

As expressly set forth in the specification, TriZetto's proposed construction requires that the "predetermined database" includes both "the medical service codes and a set of relationships among the medical service codes." McKesson does not dispute this aspect of TriZetto's

construction. Rather, it argues that it is unnecessary. D.I. 170 at 8. The clarification that the

12 13

A database table is a two-dimensional arrangement of rows and columns that hold data. The patent also describes a PROCESS and a HISTORY database, but the fields in these databases are not set forth in the patent. Compare '164 patent, Fig. 2 with id., App. C. See, e.g., Ex. A, col. 5, 13-15 ("it is determined whether the code entry is valid or invalid by reference to the ALLCODE database" (emphasis added)); id., col. 6, l. 59 ("If so, after a lookup in the INTERACT database . . ." (emphasis added)); col. 8, ll. 45-49 ("It must be appreciated that not all codes will be in the BYITSELF database, so . . . perhaps only one of those three will be in the BYITSELF file . . ." (emphasis added)). The extrinsic evidence also supports this construction. In DBase III, a database contained a single table of data and multiple databases were used if more than one set of records (tables) were desired. See Ex. V at 9-10 (DBASE III Manual, 1986).

14

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"predetermined database" referred to in the claims include both the codes and their relationships is important because the patent specification refers to several different databases. Specifically, the specification includes disclosure of databases that lists all codes (ALLCODE), one that lists superseded codes (SUPERSED), one that lists codes and relationships (INTERACT), one that list codes with other criteria such as place of service, anesthesia, diagnosis, etc. (BYITSELF), and a database of messages (MESSAGE). See Ex. A, App. C; see also note 13. The claims, however, all specifically refer to the one database that contains the codes and relationships (INTERACT) as the "predetermined database." Accordingly, TriZetto respectfully submits that the term "predetermined database" should be construed to unambiguously refer to the database that includes both the medical service codes and their relationships. B. Means For Ascertaining Whether The At Least One Claim Contains A Plurality Of Medical Service Codes 1. Functionally, Counting Codes Is Not The Same As Ascertaining Whether More Than One Code Exists
16

Relying on a 1996 dictionary definition, McKesson contends that the function of the "ascertaining" element should be given its ordinary meaning. D.I. 170 at 24. For the most part,

the parties do not dispute the meaning of the word "ascertaining." The principal dispute between the parties is whether this entire claim limitation equates to simply counting the number of medical service codes on the claim, as McKesson asserts (see D.I. 158 at 17), or whether the function of this limitation is to determine if the medical claim contains more than one medical
16
17

McKesson provides no basis for the Court to rely on a 1996 dictionary when the patent was filed in 1988. McKesson's experts proffer a definition that outright contradicts any supposed ordinary meaning in this claim element. McKesson's experts improperly construe this claim element to refer simply to a "count" of the number of codes that has no impact on subsequent steps. See Ex. E (Musen Dep.) at 113:6-11, 113:23-114:5 (stating that merely "numbering codes" meets the "ascertaining whether" element); see also Ex. F (Johnson Dep.) at 96:1-6 ("Q. Okay. Now, with respect to step three, 'Processing to determine' -this is of the algorithm [that Dr. Johnson previously testified corresponded to the "ascertaining" element] now ­ 'if more than one medical procedure code has been entered,' do you read that to mean that the computer is counting the number of procedure codes on the claim? A. Could be. That's a possible implementation.").

17

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service code as proposed by TriZetto. D.I. 158 at 17 (proposed construction: Identifying if the claim contains more than one medical service code in order to determine whether multiple code edits shoul