StoneEagle Services, Inc. v. Pay-Plus Solutions, Inc.

113 F. Supp. 3d 1241, 2015 WL 4042097, 2015 U.S. Dist. LEXIS 85789
CourtDistrict Court, M.D. Florida
DecidedJuly 1, 2015
DocketCase No. 8:13-cv-2240-T-33MAP
StatusPublished
Cited by3 cases

This text of 113 F. Supp. 3d 1241 (StoneEagle Services, Inc. v. Pay-Plus Solutions, Inc.) is published on Counsel Stack Legal Research, covering District Court, M.D. Florida primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
StoneEagle Services, Inc. v. Pay-Plus Solutions, Inc., 113 F. Supp. 3d 1241, 2015 WL 4042097, 2015 U.S. Dist. LEXIS 85789 (M.D. Fla. 2015).

Opinion

ORDER

VIRGINIA M. HERNANDEZ COVINGTON, District Judge.

This matter comes before the Court pursuant to Defendants Pay-Plus Solutions, Inc. (“PPS”) and Premier Healthcare Exchange, Inc.’s (“PHX”)- Dispositive Motion for Summary Judgment (Doc. # 123), filed on March 20, -2015. Plaintiff StoneEagle Services, Inc. filed a response in opposition to the Motion on April 20, 2015. (Doc. # 156). Thereafter, Defendants filed a reply in support of their Motion on May 4, 2015. (Doc. # 168); For the reasons set forth below, the Motion is denied.1

I. Factual Background

Plaintiff initiated this patent infringement action on August 29, ■ 2013, filed an Amended Complaint on February 7, 2014, and thereafter filed a Second Amended Complaint on November 20, 2014. (Doc. ## 1, 28, 66). Plaintiff alleges that Defendants willfully infringed Plaintiffs rights under two. patents: Reissue Patent No. U.S. RE43,904 E (“the 904 Patent”), which has twenty-six claims and was,issued on January 1, ,2013, and Reissue Patent No. U.S. RE44,748 E;(“the 748 Patent”), which has thirty claims and was issued on February 4, 2014. (Doc. # 66 at ¶¶ 1, 8-10 & Ex. A, B). These patents are reissue patents of U.S. Patent No. 7,792,686 (“the 686 Patent”), which was issued on September 7, 2010. (Doc. # 143 at 5; Doc. # 156 at 5).

Traditionally, “health insurers paid medical service providers by mailing checks with an explanation of benefits (‘EOB’).” (Doc. # 156 at 5). In doing so, insurers incurred “significant expenses” printing and mailing these checks and EOBs to héalth caré providers. (Id.): However, “[a] small percentage of payments were [1244]*1244made by insurers- via an' automatic clearing house (‘ACH’) direct deposit.” (Id.). According to Plaintiff, “[a]t the time of the patent application giving rise to [Plaintiffs] Patents, ACH payments were disassociated from the EOBs, making ACH payments less desirable to providers due to reconciliation issues.” (Id.).

The relevant Patents cover a health care provider reimbursement system, by which a payor, such as an insurance company, makes “a virtual payment to.a medical provider by transmitting a stored-value card account payment of the authorized benefit amount, together with an [EOB].” (Doc. # 66 at ¶¶ 14-16 & Ex. A, B). According to the Patents’ abstracts, the disclosed method is an improvement over the prior art. (Id.).

In discussing this prior art, “the [Patents explain that, in handling a health care provider’s claim for services rendered to a patient, a payer ‘generates an [EOB] and a check for the benefit payment-,’” which “are then sent concurrently to the health care provider[].” (Doc. #143 at 6) (citing Doc. # 66 at Ex. A, B). The cited “drawbacks” of the prior art are “the cost and time associated with generating hardcopy checks and sending them by mail to [a] health care provider[].” (Id.). The Patents seek to “‘reduce this transactional cost and speed up payment of benefits to health care providers’ by electronically transmitting a file containing the payment and [EOBs].” (Id.).

Plaintiff alleges that Defendants’ health care benefits payment processing system, “Pay-Plus” Select” directly competes with Plaintiffs patented system. (Doc. # 66 at ¶¶ 17-18). Namely, Plaintiff has asserted infringement.of claims 2, 7, 12, 17, and 22 of the 904 Patent and claims 7, 13, 19, and 25 of the 748 Patent. (Id.).

. The accused Pay-Plus™ Select system is a “health care payment service used to deliver EOBs and payment information to health care providers.” (Doc. # 143 at 7). Defendants explain that several companies in addition to PPS are involved in performing aspects of Pay-Plus” Select: “(1) UMB Bank is the issuing bank for Pay-Plus” Select card payments; (2) StoreFinancial is the card processor for UMB Bank; (3) MasterCard provides the credit card[;] and (4) InterFAX is a faxing service that transmits EOB faxes and payment faxes to health care providers.” (Id.).

Since Pay-Plus” Select’s introduction into the market in February of 2012, three versions of the product have been ■ used. (Id.) (citing Doc. # 143-3 at ¶¶ 5-8). Initially, the EOB and payment information were transmitted to providers in one mul-ti-page fax transmission (the “one-fax system”). (Id.). Then, on October 10, 2013, “StoreFinancial implemented a modification to its software to generate two separate files for transmission to health care providers in two separate fax transmissions: one file contains an EOB and a second file contains the card payment information (the ‘two-fax system’).” (Id.). In particular:

PPS provides EOB and payee information to StoreFinancial in two separate files. StoreFinancial generates the card payment information (e.g., card number, etc.) and creates two separate PDF files, one containing the EOB and another containing the card payment information. StoreFinancial then transmits the separate PDF files to InterFAX, which in turn faxes the separate files to the provider as two separate fax transmissions.

(Id. at 8). In 2014, PPS also began transmitting EOB and card payment information by mail to some providers (the “hard-copy mailing system”). (Id. at 7-8).

[1245]*1245According- to Defendants, in all three versions, “PPS has always provided, and continues to provide, StoreFinancial two separate files: one file containing payment information, and a second file containing the information necessary to generate the EOB.” (Id. at 7). , Further, Defendants assert that in each version, “PPS has always received information about claiin payments to be paid directly from the administrator or payer, instead of obtaining such information from a transmittal made by a payer/administrator to a provider.” (Id, at 8).

According to the expert report of the Patent’s creator — Mr. Robert Allen — (1) the “one-fax system” allegedly infringes all of the asserted claims and (2)-the “two fax system” and “hardcopy mailing system” each allegedly infringes claims 7, 13, 19, and 25 of the 748 Patent. (Id.).

II. Procedural Background

On December 2, 2014, Defendants filed Answers to the operative complaint, including, as an affirmative defense, a'challenge to the validity of the Patents pursuant to 35 U.S.C. § 101. (Doc. # 67 at 7; Doc. # 68 at 7). Thereafter, on December 9, 2014, Defendants filed a Motion for Judgment on the Pleadings arguing that the claims at issue are directed to patent-ineligible subject matter under 35 U.S.C. § 101, which warranted judgment in Defendants’ favor. (Doc. # 69). This Court denied Defendants’ Motion without prejudice, partially as claim construction had not occurred in this action. (See Doc. #91).

On March 4, 2015, the Patent Trial and Appeal Board (“PTAB”) denied PPS’ Petition to institute inter partes review of the 904 Patent. (See Doc. # 112). PPS’ Petition to institute inter partes

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113 F. Supp. 3d 1241, 2015 WL 4042097, 2015 U.S. Dist. LEXIS 85789, Counsel Stack Legal Research, https://law.counselstack.com/opinion/stoneeagle-services-inc-v-pay-plus-solutions-inc-flmd-2015.