Scriptpro LLC v. Innovation Assocs., Inc.
| Decision Date | 26 June 2012 |
| Docket Number | No. 06-2468-CM,06-2468-CM |
| Parties | SCRIPTPRO LLC, et al., Plaintiffs, v. INNOVATION ASSOCIATES, INC., Defendant. |
| Court | U.S. District Court — District of Kansas |
Plaintiffs ScriptPro, LLC, and ScriptPro USA, Inc. (collectively "ScriptPro") bring this action alleging that defendant Innovation Associates, Inc. ("Innovation"), infringes on ScriptPro's patent. (Doc. 89.) Innovation counterclaims for a declaratory judgment of invalidity, noninfringement and/or unenforceability as to the patent, and also alleges tortious interference with prospective and existing business relations and unfair trade practices. (Doc. 113.) In an Order dated April 26, 2011, the court construed a number of terms that the parties believed to be in issue. (Doc. 146.) Now before the court are the following motions:
As set out in the court's previous order, both ScriptPro and Innovation sell robots that automatically fill prescriptions for pharmacies (Automatic Dispensing Systems, or ADSs).
ScriptPro holds a patent for and sells a "collating unit" that attaches to an ADS and sorts output into holding areas grouped by patient or other identifying information. Patent No. 6,910,601 ("the '601 patent"), entitled "Collating Unit for Use With a Control Center Cooperating With an Automatic Prescription or Pharmaceutical Dispensing System," was issued on June 28, 2005, to ScriptPro. ScriptPro asserts that Innovation's robot, ROBOTx, infringes on its patent; specifically, on claims 1, 2, 4, and 8.
Shortly after ScriptPro filed this lawsuit, Innovation initiated Inter Partes Reexamination No. 95/000,292 with respect to the '601 patent, and the case was stayed from May 2007 until July 2010. An Inter Partes Reexamination Certificate was issued with respect to the '601 patent on January 4,2011.
Through reexamination, claim 4 was rewritten in independent form but was not amended substantively. Independent claims 1 and 2 were substantively amended.
A patent infringement analysis involves two steps: (1) construing the meaning and scope of the claims and (2) comparing the construed claims to the device accused of infringing. Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995). The court issued a claim construction order on April 26, 2011. (Doc. 146.) This matter is currently before the court on cross-motions for summary judgment.
Summary judgment is appropriate if the moving party demonstrates that there is "no genuine issue as to any material fact" and that it is "entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a). In applying this standard, the court views the evidence and all reasonable inferences therefrom in the light most favorable to the nonmoving party. Adler v. Wal-Mart Stores, Inc., 144 F.3d 664, 670 (10th Cir. 1998) (citing Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986)). The moving party bears the initial burden of demonstrating an absence of a genuine issue of material fact and entitlement to judgment as a matter of law. Id. at 670-71. In attempting to meet that standard, a movant that does not bear the ultimate burden of persuasion at trial need not negate the other party's claim; rather, the movant need simply point out to the court a lack of evidence for the other party on an essential element of that party's claim. Id. at 671 (citing Celotex Corp. v. Catrett, 477 U.S. 317, 325 (1986)).
Once the movant has met this initial burden, the burden shifts to the nonmoving party to "set forth specific facts showing that there is a genuine issue for trial." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 256 (1986); see Adler, 144 F.3d at 671 n.1 (). "To accomplish this, the facts must be identified by reference to affidavits, deposition transcripts, or specific exhibits incorporated therein." Adler, 144 F.3d at 671 (internal citations and quotations omitted). The nonmoving party cannot defeat a properly supported motion for summary judgment by relying on conclusory allegations; rather, the opposing party must come forward with significant admissible probative evidence supporting that party's allegations. Anderson, 477 U.S. at 256.
The filing of cross-motions for summary judgment does not change the standard of review. James Barlow Family Ltd. P'ship v. David M. Munson Inc., 132 F.3d 1316, 1319 (10th Cir. 1997) ().
Defendant seeks summary judgment as to the following issues:
The court ultimately grants summary judgment in favor of Innovation and against ScriptPro on the subject of invalidity, based on its determination that Innovation is not estopped from pursuing invalidity pursuant to § 112, and that the claims fail to satisfy the written-description requirement. In light of this ruling, the court does not address the remainder of Innovation's arguments.
The parties stipulate that Innovation is not estopped by 35 U.S.C. § 315(c) from asserting that claims 4 and 8 are invalid for failing to comply with the written description and enablement requirements of 35 U.S.C. § 112. (Doc. 279 at 4.) However, ScriptPro contests Innovation's ability to challenge the validity of claims 1 and 2 for alleged lack of written description and enablement. ScriptPro argues that Innovation was free to—and did— raise § 112 challenges during reexamination and, having had that opportunity, is estopped by § 315(c) from raising them now.
The applicable standard is not disputed: the Patent Act provides that a third party such as Innovation, who requests inter partes reexamination "is estopped from asserting at a later time, in any civil action . . . the invalidity of any claim finally determined to be valid and patentable on any ground which the third-party requester raised or could have raised during the inter partes reexamination proceedings." 35 U.S.C. § 315(c). The court must determine whether, as a matter of law, Innovation is precluded from asserting invalidity as to claims 1 and 2 based on lack of written description and enablement.
There is no dispute that claims 1 and 2 were substantively amended during reexamination to overcome prior art. There is also no dispute that the amendments did not delete from original claims1 and 2 any claim limitation requiring a plurality of sensors.2 Innovation notes that a third party can request inter partes reexamination only "on the basis of any prior art cited under the provisions of section 301." Id. § 311. And "other matters, such as public use or sale, . . . 35 U.S.C. 112 . . . will not be considered when making the determination on the request and should not be presented in the request." MPEP § 2617. The Patent and Trademark Office ("PTO") only examines § 112 requirements as to claim language added during reexamination that is different from original claim language and any language deleted from a claim during reexamination. MPEP § 2258 (37 C.F.R. § 1.552) ( that "a claim which is amended or a new claim which is presented containing a limitation not found in the original patent claim should be considered for compliance under 35 U.S.C. 112 only with respect to that limitation"). In other words, Innovation could not have raised § 112 claims based on the lack of a limitation requiring sensors because the reexamination did not encompass this language (or lack thereof).
The Patent Act is clear about what can be raised in reexamination. And based on the summary judgment record, this § 112 argument could not have been raised. Innovation is therefore not estopped from raising it now. The court turns to address Innovation's argument that it is entitled to summary judgment that the claims lack written description.
The written-description requirement is contained in Section 112 of the Patent Act. The first paragraph of that section provides:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it ismost nearly connected, to make and use the same, and shall...
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