762 F.3d 1355 (Fed. Cir. 2014), 2013-1561, ScriptPro, LLC v. Innovation Associates, Inc.

Docket Nº:2013-1561
Citation:762 F.3d 1355, 111 U.S.P.Q.2d 1917
Opinion Judge:Taranto, Circuit Judge.
Party Name:SCRIPTPRO, LLC AND SCRIPTPRO USA, INC., Plaintiffs-Appellants, v. INNOVATION ASSOCIATES, INC., Defendant-Appellee
Attorney:TRAVIS W. MCCALLON, Lathrop & Gage LLP, of Kansas City, Missouri, argued for plaintiffs-appellants. With him on the brief were A. JUSTIN POPLIN, R. SCOTT BEELER, and JENNIFER M. HANNAH, of Overland Park, Kansas. ANGELA D. MITCHELL, Shook, Hardy & Bacon L.L.P., of Kansas City, Missouri, argued for...
Judge Panel:Before TARANTO, BRYSON, and HUGHES, Circuit Judges.
Case Date:August 06, 2014
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit
 
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Page 1355

762 F.3d 1355 (Fed. Cir. 2014)

111 U.S.P.Q.2d 1917

SCRIPTPRO, LLC AND SCRIPTPRO USA, INC., Plaintiffs-Appellants,

v.

INNOVATION ASSOCIATES, INC., Defendant-Appellee

2013-1561

United States Court of Appeals, Federal Circuit

August 6, 2014

Appeal from the United States District Court for the District of Kansas in No. 06-CV-2468, Judge Carlos Murguia.

TRAVIS W. MCCALLON, Lathrop & Gage LLP, of Kansas City, Missouri, argued for plaintiffs-appellants. With him on the brief were A. JUSTIN POPLIN, R. SCOTT BEELER, and JENNIFER M. HANNAH, of Overland Park, Kansas.

ANGELA D. MITCHELL, Shook, Hardy & Bacon L.L.P., of Kansas City, Missouri, argued for defendant-appellee. With her on the brief were B. TRENT WEBB and CHRISTINE A. GUASTELLO.

Before TARANTO, BRYSON, and HUGHES, Circuit Judges.

OPINION

Page 1356

Taranto, Circuit Judge.

Plaintiffs ScriptPro, LLC and ScriptPro USA, Inc. (collectively, ScriptPro) sued Innovation Associates, Inc, alleging infringement of claims 1, 2, 4, and 8 of U.S. Patent No. 6,910,601. The district court granted summary judgment for Innovation Associates, holding that the asserted claims are invalid under 35 U.S.C. § 112, ¶ 1 (now § 112(a)), which requires, for a claim to be valid, that the patent's specification describe the subject matter defined by the claim. The court rested its holding on a single conclusion--that the specification describes a machine containing " sensors," whereas the claims at issue claim a machine that need not have " sensors." ScriptPro LLC v. Innovation Assocs., Inc., No. 06-2468, 2012 WL 2402778 (D. Kan. June 26, 2012). ScriptPro appeals. Because summary judgment of invalidity on that ground is not appropriate here, we reverse. We do not have before us, and therefore do not address, other questions that may be raised by the generality of the language of the claims.

Background

The '601 patent describes as the invention a " collating unit," which works with an " automatic dispensing system" that automatically fills and labels pill bottles or other prescription containers. The collating unit has a number of storage positions ( e.g., slots) into which containers are placed as they emerge from the dispensing system. " The unit stores prescription containers 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." '601 patent, col. 4, lines 22-25 (summary of the invention).

In addition to noting that the invention enhances accuracy and efficiency for pharmacies

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generally, id. at col. 6, lines 21-32, the patent emphasizes patient-specific collating as an advantage: the collating unit " can collate and store multiple containers for a patient within the same area." Id. at col. 6, lines 37-38. The patent describes this feature as an improvement over the prior art, which (1) stored only one prescription container in each holding area and (2) stored the prescription containers using a container-specific, not patient-specific, identifier. See id. at col. 3, lines 4-8. In this court, ScriptPro emphasizes that this ability--correlating a specific holding area to a specific patient--is one of the primary goals of the '601 patent. See Br. of Appellant 23, 28.

The claims included in the original application issued without change. As issued, the '601 patent had 21 claims. All began with the same preamble--" A collating unit for automatically storing prescription containers dispensed by an automatic dispensing system, the collating unit comprising . . ." --followed by a list of required elements. For example, claim 1 read:

1. A collating unit for automatically storing prescription containers dispensed by an automatic dispensing system, the collating unit comprising:

a storage unit for storing the containers delivered by an infeed conveyor; a plurality of holding areas formed within the storage unit for holding the containers; a plurality of guide arms mounted within the storage unit and operable to maneuver the containers from the infeed conveyor into the plurality of holding areas; and a control system for controlling operation of the infeed conveyor and the plurality of guide arms.

Original '601 patent, col. 15, line 58, to col. 16, line 2. Some additional language was added to claims 1, 2, and 4 (but not to claim 8) when the claims were reexamined, but no party has suggested that the amendments bear on the issue currently before us.

The issue before us involves " sensors." Like the just-quoted original claim 1, the claims asserted here do not require " sensors." Other claims of the '601 patent do require the use of a " plurality of sensors" to (with minor variations in the language used) " sense the presence of the containers stored in the collating unit." '601 patent, col. 16, lines 58-59 (claim 9).

According to the specification, " [t]he collating...

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