Fresh From the Bench: Precedential Patent Cases From the Federal Circuit
ScriptPro v. Innovation – For the second time, the Circuit reverses summary judgment of invalidity of a patent directed to an automated pill dispensing system. The district court determined that the specification was limiting and that the asserted claims, which are not so limited, were invalid for lack of written description. The panel disagrees, ruling that the specification does not “limit the sorting and storing of prescription containers by patient-identifying information alone—any predetermined storage scheme will do.” Multiple purposes are described in the specification, including storing multiple prescription containers together according to some storage scheme and creating a collating unit that is easy to install with existing dispensing systems. Because the specification does not limit the scope of the invention in the manner the district court described, the asserted claims are not invalid for lacking such a limitation.
ScriptPro LLC v. Innovation Associates, Inc., Fed. Cir. 2015-1565 (August 15, 2016)
ScriptPro sued Innovation for infringement of its ’601 patent directed to a “collating unit” used with a control center and an automatic dispensing system to store prescription containers after a medication has been dispensed into the containers. At issue in this appeal is whether the patent’s specification limits the invention to a collating unit that sorts and stores prescription containers by patient-identifying information and slot availability. In the decision appealed from, the district court determined that the specification was limiting and that the asserted claims, which are not so limited, are invalid for lack of written description.
A Prior Appeal Ruled that the Specification Does Not Limit the Invention to the Use of Sensors
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 I”). The district court had erroneously determined 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 “there is no sufficiently clear language in the specification that limits the invention to a collating unit with the (slot-checking) sensors,” and that other language in the specification “positively suggests that slot sensors are an optional, though desirable, feature of the contemplated collating unit.” We also explained that the original claims that were filed as part of the application for the ’601 patent did not require sensors.
On remand, Innovation moved again for summary judgment, arguing that the specification “unambiguously limits the manner in which the collating unit achieves automated storage of prescription 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. The district court granted Innovation’s motion, quoting our concern expressed in ScriptPro I, and concluded that the asserted claims are invalid for lack of written description. The district court explained that the specification describes 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 is to collate and store prescriptions by patient.” 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, “without including a limitation to address the storage by patient name, the claims are simply too broad to be valid.”
The Specification Does Not Limit the Claims to Sorting by Patient Identifying Information
The ’601 patent discloses multiple problems that the invention solves, including working with existing ADSs, “storing more than one container in a holding area,” “collating multiple containers for a patient in one holding area,” “storing 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 combination thereof” for easy retrieval. 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 expressly states that containers can be sorted and stored “by patient, prescription, or other predetermined storage scheme without input or handling by the operator.” 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 information.
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. 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, mere recognition in the specification that an aspect of a prior art system is “inconvenient” does not constitute “disparagement” sufficient to limit the described invention—especially where the same specification expressly contemplates that some embodiments of the described invention incorporate the “inconvenient” aspect.
The ’601 specification does not limit the sorting and storing of prescription containers by patient-identifying information alone—any “predetermined storage scheme” will do. 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 information. Multiple purposes are described, including storing multiple prescription containers together according to some storage scheme and creating a collating unit that is easy to install with existing dispensing systems. 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 patient name and slot availability. Because the specification does not limit the scope of the invention in the manner the district court described, the asserted claims are not invalid for lacking such a limitation.