Healthcare - and mHealth - faces patent enforcement issues

Lee Kim

MMRGlobal recently issued a press release claiming to own "significant foundational patents (that are) relevant to virtually any provider who transmits electronic health records in that it will limit their ability to communicate protected health information without potentially infringing on MMR's patents." According to this press release, MMRGlobal has begun the process of patent enforcement and licensing of its patent portfolio.

Two patent applications recently allowed by the United States Patent and Trademark Office "cover the exchange of protected health information to and from patients, doctors, pharmacies, insurance providers and other healthcare professionals in forms including, but not limited to, email, text, phone, facsimile and web-based portals," and these will mature into patents in due course. These patent applications have claims that are broadly written, and there is no exclusion for the mode of exchange of protected health information, such as through the use of mobile devices. It is the patent claims (and the specific wording of such claims) that define what the patent owner may or may not enforce.

According to the press release, MMRGlobal's outside counsel has begun sending 250 letters per week to hospitals, medical groups, pharmacies and other healthcare professionals as part of its efforts to license the company's intellectual property.

Other examples of patent enforcement include letters being sent by Innovatio IP Ventures, LLC, to entities using Wi-Fi technology. Some hospitals have reported receiving these letters, which essentially demand the payment of a license fee for using Wi-Fi technology  -  which Innovatio IP Ventures, LLC, claims to own by way of patents.

If you do receive one of these letters, understand that patent owners do have the right to enforce their patents. Sometimes the allegations have merit, and other times they do not.  You may want to consult with your attorney (or retain a qualified attorney if you do not already have one) who can give you advice on the best next steps.  

Having an attorney respond to the letter will most likely buy time to investigate the claims stated in the letter. Investigating the patent owner's claims may include a review of the patents in question and any agreements with vendors that you may have which may provide for indemnification against such claims. After the investigation is complete, your attorney will discuss with you possible legal strategy and defenses. Your attorney may also send a response letter on your behalf outlining your position. Your position may be that the patent owner's patents are not valid or that you are not infringing on the patented technology.

Patents may not be valid because the claims "read on" the prior art. If the patent claims, however, are directed to subject matter that is not novel, non-obvious or useful, or if the claims are indefinite, then the patent may be subject to an attack on its validity. The patent claims may not be valid, for example, if what is claimed was already patented or described in a printed publication in this country or a foreign country or in public use or on sale in this country for more than one year prior to the date of application for a patent in the United States. Once claims are invalidated, they are no longer enforceable by the patent owner.

The allegations of the patent owner may be attacked on other legal grounds as well. An example of recent litigation activity involving Innovatio IP Ventures, LLC, is an amended complaint that was recently filed by Cisco, Motorola and Netgear.

Being that many in the healthcare industry have or will be receiving patent enforcement and licensing letters, you may also want to consider aligning your business with others who may be similarly situated and together, as a team, work out possible strategies and defenses, in addition to sharing in the costs.  

Lee Kim is an attorney at Tucker Arensberg, PC. Her practice areas include healthcare, health information technology and intellectual property. She is admitted to practice in Pennsylvania, the District of Columbia and before the United States Patent and Trademark Office as a registered patent attorney. She is currently president-elect of the Western Pennsylvania Chapter of the Healthcare Information and Management Systems Society and a member of the mHIMSS taskforce. She will be speaking at the 2012 mHealth Summit on security considerations for mobile devices and wireless networks and HIPAA Security Rule compliance.