Scriptpro LLC v. Innovation Associates, Inc. ( 2016 )

United States Court of Appeals
for the Federal Circuit
______________________
SCRIPTPRO LLC, SCRIPTPRO USA, INC.,
Plaintiffs-Appellants
v.
INNOVATION ASSOCIATES, INC.,
Defendant-Appellee
______________________
2015-1565
______________________
Appeal from the United States District Court for the
District of Kansas in No. 2:06-cv-02468-CM, Judge Carlos
Murguia.
______________________
Decided: August 15, 2016
______________________
TRAVIS W. MCCALLON, Lathrop & Gage, LLP, Kansas
City, MO, argued for plaintiffs-appellants. Also represent-
ed by ROBERT CAMERON GARRISON; R. SCOTT BEELER,
Overland Park, KS.
ANGELA DAWN MITCHELL, Shook, Hardy & Bacon,
LLP, Kansas City, MO, argued for defendant-appellee.
Also represented by BASIL TRENT WEBB.
______________________
2 SCRIPTPRO LLC v. INNOVATION ASSOCIATES, INC.
Before MOORE, TARANTO, and HUGHES, Circuit Judges.
MOORE, Circuit Judge.
ScriptPro, LLC and ScriptPro USA, Inc. (collectively
“ScriptPro”) appeal the United States District Court for
the District of Kansas’s grant of summary judgment that
claims 1, 2, 4, and 8 (“asserted claims”) of U.S. Patent
No. 6,910,601 are invalid for lack of written description.
We reverse and remand for further proceedings.
BACKGROUND
The ’601 patent is directed to a “collating unit” used
with a control center and an automatic dispensing system
(“ADS”) to store prescription containers after a medication
has been dispensed into the containers. At issue in this
appeal is whether the ’601 patent’s specification limits the
invention to a collating unit that sorts and stores pre-
scription containers by patient-identifying information
and slot availability. In the decision appealed from, the
district court determined that the specification was limit-
ing and that the asserted claims, which are not so limited,
are invalid for lack of written description.
The ’601 patent explains that the claimed invention
“provides a distinct advance in the art of automated
storage units for use with static control centers cooperat-
ing with [ADSs].” ’601 patent, 4:15–17. Specifically, it
notes that the claimed collating units “may be used with
an existing static control center to automatically store
prescription containers” and that such storage occurs
“according to a storage algorithm that is dependent on a
patient name for whom a container is intended and an
availability of an open storage position in the collating
unit.” Id. at 4:19–25. It explains that, “[i]n operation, a
prescription for a patient is entered into the control
system of the ADS along with identifying information for
the prescription, such as the patient’s name.” Id. at 5:40–
42. After the ADS dispenses the medication, the filled
SCRIPTPRO LLC v. INNOVATION ASSOCIATES, INC. 3
prescription container is transported to the collating unit,
where the control system determines where to store the
container by taking into account “whether previous con-
tainers for the patient have been stored in the collating
unit and not yet retrieved,” id. at 5:47–49, and “if the
holding area is full,” id. at 5:54–59. When an operator
wishes to retrieve a patient’s filled prescriptions, “the
operator may input the identifying information for the
prescription, such as the patient’s name, into the control
system,” which can then indicate the holding area for that
patient’s prescriptions. Id. at 6:11–20. The ’601 patent
identifies a number of advantages of the claimed collating
unit, including the unit’s ability to automatically store
containers, eliminate errors associated with manual
retrieval and storage of containers, hold more than one
container in a holding area, store containers based on a
patient’s name, store multiple containers for a patient
together in the same area, and decrease operating costs
for pharmacies by eliminating the need for multiple
operators to retrieve and store containers. Id. at 6:21–45.
The parties agree that claim 8 is representative of the
asserted claims. This claim recites:
8. A collating unit for automatically storing
prescription containers dispensed by an automatic
dispensing system, the collating unit comprising:
an infeed conveyor for transporting the con-
tainers from the automatic dispensing sys-
tem to the collating unit;
a collating unit conveyor positioned generally
adjacent to the infeed conveyor;
a frame substantially surrounding and cover-
ing the infeed conveyor and the collating
unit conveyor;
a plurality of holding areas formed within the
frame for holding the containers;
4 SCRIPTPRO LLC v. INNOVATION ASSOCIATES, INC.
a plurality of guide arms mounted between the
infeed conveyor and the collating unit con-
veyor and operable to maneuver the con-
tainers from the infeed conveyor into the
plurality of holding areas; and
a control system for controlling operation of
the infeed conveyor, the collating unit con-
veyor, and the plurality of guide arms.
ScriptPro sued Innovation Associates, Inc. (“Innova-
tion”) for patent infringement in 2006. 1 This is the second
appeal addressing whether the asserted claims of the ’601
patent are invalid for lack of written description. In the
first appeal, we reversed the district court’s grant of
summary judgment that the asserted claims are invalid
for lack of written description. ScriptPro, LLC v. Innova-
tion Assocs., Inc., 762 F.3d 1355, 1356 (Fed. Cir. 2014)
(“ScriptPro I”). The district court had erroneously deter-
mined that the specification limits the invention to a
collating unit that requires use of sensors to determine
whether a holding unit is full. We explained that “[t]here
is no sufficiently clear language in the specification that
limits the invention to a collating unit with the (slot-
checking) sensors,” id. at 1359, and that other language in
the specification “positively suggests that slot sensors are
an optional, though desirable, feature of the contemplated
collating unit,” id. at 1360. We also explained that the
original claims that were filed as part of the application
1 After ScriptPro filed suit, Innovation petitioned
for, and the United States Patent and Trademark Office
(“PTO”) instituted, inter partes reexamination. During
reexamination ScriptPro amended the asserted claims,
adding language to claims 1 and 2, and rewriting claim 4
into independent format. Claim 8 was not amended. The
PTO confirmed the asserted claims as amended. These
changes do not impact the issues in this appeal.
SCRIPTPRO LLC v. INNOVATION ASSOCIATES, INC. 5
for the ’601 patent did not require sensors. We stated
that these original claims, which are part of the specifica-
tion and can provide written description support for later
issued claims, further support reading the specification as
describing sensors as optional. Id. at 1361. Although not
at issue in the first appeal, we noted that it was “not
immediately apparent” whether any claim language
required tracking which slots are open and what slots are
being used for a particular customer. Id. at 1359.
On remand, Innovation moved again for summary
judgment that the asserted claims are invalid for lack of
written description. This time Innovation argued that the
specification “unambiguously limits the manner in which
the collating unit achieves automated storage of prescrip-
tion containers . . . based on the availability of an open
storage position and patient-identifying information” but
the asserted claims “broadly claim a collating unit for
‘automatically storing’ absent any limitation that makes
[them] commensurate with the invention” as described in
the specification. J.A. 5191–92. In response, ScriptPro
argued that the specification describes associating stored
containers with a specific patient as one, but not the only,
goal of the ’601 patent, such that the specification does
not limit the claimed invention to sorting and storing
based on patient-identifying information.
The district court granted Innovation’s motion. It
quoted our concern expressed in ScriptPro I, and, citing
Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473 (Fed.
Cir. 1988) and ICU Medical, Inc. v. Alaris Medical Sys-
tems, Inc., 558 F.3d 1368 (Fed. Cir. 2009), it concluded
that the asserted claims are invalid for lack of written
description. ScriptPro LLC v. Innovation Assocs., Inc., 96
F. Supp. 3d 1201, 1205–07 (D. Kan. 2015) (“ScriptPro II”).
The district court explained that the specification de-
scribes the collating unit as using an algorithm based on
patient names and availability of open slots to store
containers and that “one of [the patent’s] central purposes
6 SCRIPTPRO LLC v. INNOVATION ASSOCIATES, INC.
is to collate and store prescriptions by patient.” Id. at
1206 (citing ’601 patent, 4:21–25). It determined that the
claims are broader than the description because they “do
not limit the ways in which the prescription containers
are stored” such that no reasonable jury could find the
written description requirement met. It concluded that,
“[w]ithout including a limitation to address the storage by
patient name, the claims are simply too broad to be valid.”
Id. at 1207. ScriptPro appeals. We have jurisdiction
under 28 U.S.C. § 1295(a)(1).
DISCUSSION
“A district court’s grant of summary judgment of inva-
lidity for lack of written description is reviewed de novo.”
Atl. Research Mktg. Sys., Inc. v. Troy, 659 F.3d 1345, 1353
(Fed. Cir. 2011). “Compliance with the written descrip-
tion requirement is a question of fact but is amenable to
summary judgment in cases where no reasonable fact
finder could return a verdict for the nonmoving party.”
PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299,
1307 (Fed. Cir. 2008). In determining whether the writ-
ten description requirement is met, we consider “whether
the disclosure of the application relied upon reasonably
conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing
date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d
1336, 1351 (Fed. Cir. 2010) (en banc).
In this appeal, ScriptPro argues that the district court
erred by interpreting the ’601 patent’s specification as
limited to sorting by patient-identifying information. The
problem, according to ScriptPro, is that the district court’s
focus on one purpose of the ’601 patent—to “keep[] track
of slot use by particular customers and slot availability,”
ScriptPro II, 96 F. Supp. 3d at 1207—caused it to errone-
ously conclude that the ’601 patent’s invention is limited
to a collating unit that “achiev[es] the singular purpose of
storing prescription containers” by patient-identifying
SCRIPTPRO LLC v. INNOVATION ASSOCIATES, INC. 7
information, specifically by patient name. Appellant’s Br.
23. According to ScriptPro, only if the specification is
read to limit the claimed invention to sorting and storing
prescription containers by patient-identifying information
can the asserted claims be “too broad” for failing to in-
clude such a limitation. ScriptPro argues that the speci-
fication does not limit the invention in this manner.
We agree with ScriptPro that the specification does
not limit the claimed invention to sorting and storing
prescription containers by patient-identifying infor-
mation. The ’601 patent discloses multiple problems that
the invention solves, including working with existing
ADSs, “stor[ing] more than one container in a holding
area,” “collat[ing] multiple containers for a patient in one
holding area,” “stor[ing] a container for a patient based on
the patient’s name, as opposed to a prescription number
associated with the patient,” and grouping together
“multiple prescriptions for a patient, whether in the form
of prescription vials, unit-of-use packages, or a combina-
tion thereof” for easy retrieval. ’601 patent, 3:59–4:9; see
id. at 6:21–45. And while some, indeed many, of these
solved problems involve sorting prescription containers by
patient-identifying information, not all of them do. For
example, storing more than one prescription container in
a holding area does not necessarily require that all the
containers in that holding area be for the same patient.
The prescription containers could be sorted into different
holding areas based on the medicament dispensed (e.g.,
sorting all containers for a specific antibiotic into the
same holding area, regardless of the patient for whom it is
prescribed), by the date the prescription was filled, or
some other sorting scheme. In fact, the ’601 patent ex-
pressly states that containers can be sorted and stored “by
patient, prescription, or other predetermined storage
scheme without input or handling by the operator.” ’601
patent, 8:21–24 (emphasis added).
8 SCRIPTPRO LLC v. INNOVATION ASSOCIATES, INC.
Consistent with this express disclosure, the original
claims filed as part of the application from which the ’601
patent issued were not limited to sorting and storing
prescription containers by patient-identifying infor-
mation. Rather, these original claims, like the asserted
claims, recite a collating unit that automatically stores
prescription containers dispensed by an ADS. As we have
explained, “[o]riginal claims are part of the specification
and in many cases will satisfy the written description
requirement.” Crown Packaging Tech., Inc. v. Ball Metal
Beverage Container Corp., 635 F.3d 1373, 1380 (Fed. Cir.
2011) (citing Ariad Pharm., 598 F.3d at 1349).
It is true, as Innovation argues, that much of the ’601
patent’s specification focuses on embodiments employing
a sorting and storage scheme based on patient-identifying
information. See, e.g., ’601 patent, 4:21–25 (“[t]he unit
stores prescription containers according to a storage
algorithm that is dependent on a patient name for whom
a container is intended”), 5:40–47 (“a prescription for a
patient is entered into the control system of the ADS
along with identifying information for the prescription,
such as the patient name . . . [t]he control system next
determines in which holding area to store the container”),
6:36–37 (“[t]he collating unit is also operable to associate
a stored container with a patient based on the patient’s
name”). And it is also true that the specification explains
that prior art automated control centers that store con-
tainers “based on a prescription number associated with
the container, as opposed to storing the container based
on a patient name” are “especially inconvenient for sever-
al reasons.” ’601 patent, 3:6–11. But a specification’s
focus on one particular embodiment or purpose cannot
limit the described invention where that specification
expressly contemplates other embodiments or purposes.
This is especially true in cases such as this, where the
originally filed claims are not limited to the embodiment
or purpose that is the focus of the specification. Similarly,
SCRIPTPRO LLC v. INNOVATION ASSOCIATES, INC. 9
mere recognition in the specification that an aspect of a
prior art system is “inconvenient” does not constitute
“disparagement” sufficient to limit the described inven-
tion—especially where the same specification expressly
contemplates that some embodiments of the described
invention incorporate the “inconvenient” aspect.
The ’601 patent’s express disclosure that sorting and
storing can be done in a number of ways distinguishes
this case from Gentry Gallery and ICU Medical. In those
cases, the specifications clearly limited the scope of the
inventions in ways that the claims clearly did not. Gentry
Gallery, 134 F.3d at 1479 (“the original disclosure clearly
identifies the console as the only possible location for the
controls” and the claims did not limit the location of the
controls); ICU Med., 558 F.3d at 1378 (“the specification
describes only medical valves with spikes” and the claims
did not include a spike limitation). Such is not the case
here. The ’601 specification does not limit the sorting and
storing of prescription containers by patient-identifying
information alone—any “predetermined storage scheme”
will do. ’601 patent, 8:21–24. And, as explained above,
the ’601 patent’s specification does not identify the single
purpose for the described invention as sorting and storing
prescription containers by patient-identifying infor-
mation. Multiple purposes are described, including
storing multiple prescription containers together accord-
ing to some storage scheme and creating a collating unit
that is easy to install with existing ADSs. It is certainly
reasonable that different claims could be directed to
covering these different aspects of the invention. Not
every claim must contain every limitation or achieve
every disclosed purpose. Here, the original claims filed as
part of the application for the ’601 patent did not include
a requirement that sorting and storing be done by use of
patient-identifying information. The district court erred
when it determined that the specification limited the
invention to storing prescription containers based on
10 SCRIPTPRO LLC v. INNOVATION ASSOCIATES, INC.
patient name and slot availability. Because the specifica-
tion does not limit the scope of the invention in the man-
ner the district court described, the asserted claims are
not invalid for lacking such a limitation. 2
CONCLUSION
For the foregoing reasons, we reverse the district
court’s grant of summary judgment that the asserted
claims are invalid for lack of written description and
remand the case for further proceedings. 3
REVERSED AND REMANDED
COSTS
Costs to ScriptPro.
2 Because we determine that the district court erred
in its conclusion that the invention disclosed in the speci-
fication was limited to sorting and storing prescription
containers by patient name and slot availability, we need
not reach ScriptPro’s alternative argument that “collating
unit” should be construed to require patient-specific
collation.
3 Though we see no triable issue of fact here, the
patentee did not move for summary judgment on this
issue before the district court. Thus, we remand this case
to the district court which is best situated to determine
how to move forward.