Scriptpro, LLC v. Innovation Assocs., Inc.

• Citation: 762 F.3d 1355
• Decision Date: 06 August 2014
• Docket Number: No. 2013–1561.,2013–1561.
• Parties: SCRIPTPRO, LLC and Scriptpro USA, Inc., Plaintiffs–Appellants, v. INNOVATION ASSOCIATES, INC., Defendant–Appellee.
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

762 F.3d 1355

SCRIPTPRO, LLC and Scriptpro USA, Inc., Plaintiffs–Appellants,

v.INNOVATION ASSOCIATES, INC., Defendant–Appellee.

No. 2013–1561.

United States Court of Appeals, Federal Circuit.

Aug. 6, 2014.

Travis W. McCallon, Lathrop & Gage LLP, of Kansas City, MO, argued for plaintiffs-appellants. With him on the brief were A. Justin Poplin, R. Scott Beeler, and Jennifer M. Hannah, of Overland Park, KS.

Angela D. Mitchell, Shook, Hardy & Bacon L.L.P., of Kansas City, MO, argued for defendant-appellee. With her on the brief were B. Trent Webb and Christine A. Guastello.

Before TARANTO, BRYSON, and HUGHES, Circuit Judges.

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 pharmaciesgenerally, 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 unit of the present invention broadly includes ” several components: “an infeed conveyor, a base, a collating unit conveyor, a frame, a plurality of holding areas, a plurality of guide arms, a plurality of sensors, and a control system.” Id. at col. 4, lines 26–29 (emphases added to highlight terms of interest to the analysis). See also id. at Abstract (the invention “broadly comprises” several components, including “a plurality of sensors”). The patent states: “The plurality of sensors”—at the holding areas—“are operable to determine the presence of a container within the collating unit.” Id. at col. 4, lines 61–62. The patent describes how, “[i]n operation,” when a container for a particular patient comes out of the dispensing system, “[t]he control system” of the collating unit

determines in which holding area to store the container. The selected holding area is dependent on whether previous containers for the patient have been stored in the collating unit and not yet retrieved. If containers for the patient have already been stored and not yet retrieved, the control system determines if the holding area has space to store the additional container.

Id. at col. 5, lines 40, 46–52. The patent then adds:

To accomplish this, the sensor positioned at the open end of the holding area determines if the holding area is full. If the holding area is not full, the container is stored in the holding area. If the holding area is full, or if no container for the patient has been stored and not yet retrieved, the control system selects the first empty holding area for storage of the container.

Id. at col. 5, lines 52–59. Having described placement of a container into a slot, the patent also addresses retrieval:

When an operator of the collating unit desires to retrieve the container from the holding area, the operator may input the identifying information for the prescription, such as the patient's name, into the control system via the input device. Alternatively, the operator may scan the bar code on the paperwork of the prescription.... The control system then instructs an indicator ... to flash, which indicates the holding area location of the desired container.

Id. at col. 6, lines 11–20. Those descriptions appear in the “summary of the invention.” Additional language relevant to the issue presented here appears in the description of preferred embodiments.

In October 2006, ScriptPro brought this infringement suit against Innovation Associates, which competes with ScriptPro in selling machines for automatic dispensing of prescriptions. Innovation Associates counterclaimed on various grounds, including invalidity. Shortly thereafter, Innovation Associates initiated an inter partes reexamination of the '601 patent at the United States Patent and Trademark Office, and the district court stayed proceedings in this case to await the PTO's determination.

On January 4, 2011, the PTO completed its reexamination of the '601 patent. It confirmed claims 1 and 2 as substantively amended in ways not relevant to this appeal. It confirmed claim 4, formerly a dependent claim, as rewritten to be an independent claim, but not otherwise amended. And it confirmed claim 8 without amendment.

Proceedings in this infringement suit resumed. The district court construed certain claim terms, and the parties filed cross-motions for summary judgment. On June 26, 2012, the district court granted summary judgment of invalidity on the ground that the patent's specification does not describe the subject matter of the asserted claims, which do not require sensors. ScriptPro LLC v. Innovation Assocs., Inc., No. 06–2468–CM, 2012 WL 2402778 (D.Kan. June 26, 2012).

The court agreed with Innovation Associates that the specification indisputably limits the invention to a collating unit that uses sensors to determine whether a particular holding area is full when selecting a holding area for storage of a prescription container. The court concluded: “no reasonable jury could find that the inventors were in possession of a collating unit that operated without sensors.” Id. at *7. The court rejected, as insufficient to prevent summary judgment, the deposition testimony and (unsworn) report of ScriptPro's expert, Dr. Faddis, who stated that “it is clear from the written description of the '601 Patent that sensors are not required to practice the claimed invention” because, “[f]or example,” “the collating unit could simply keep track, in memory, [of] what storage locations are available and simply route the appropriate prescriptions to these locations.” J.A. 3191. The court dismissed Dr. Faddis's opinion as “entirely conclusory” and “only offer[ing] an opinion on the ultimate legal issue that is not helpful to the jury.” ScriptPro,2012 WL 2402778, at *7.

Although a state-law counterclaim remained in the case for a year, in July 2013 what was left of the case was dismissed. ScriptPro timely appealed, raising only a written-description issue here. We have jurisdiction under 28 U.S.C. § 1295(a)(1).

Discussion

A grant of summary judgment is reviewed de novo. Crown Packaging Tech., Inc. v. Ball Metal Beverage Container Corp., 635 F.3d 1373, 1380 (Fed.Cir.2011). “Compliance with the written description requirement is a question of fact,” and summary judgment is...