throbber
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.

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