Scriptpro LLC v. Innovation Associates, Inc.
833 F.3d 1336
Fed. Cir.2016Background
- ScriptPro owns U.S. Patent No. 6,910,601 directed to a collating unit that automatically stores prescription containers from an automatic dispensing system (ADS).
- Representative claim 8 recites conveyors, guide arms, multiple holding areas, and a control system for automatically storing dispensed containers; it does not expressly require sorting by patient identity or use of slot sensors.
- ScriptPro sued Innovation for infringement; the district court granted summary judgment holding asserted claims invalid for lack of written description, reasoning the specification limited the invention to storing by patient-identifying information and slot availability.
- On the first appeal (ScriptPro I), this court reversed a different written-description ruling that had read the specification as requiring slot-checking sensors; the court held sensors were not required by the specification.
- On remand the district court again found the asserted claims broader than the specification because it viewed the specification as centered on storing by patient name and slot availability; ScriptPro appealed that holding.
- The Federal Circuit here reverses the district court, holding the specification does not limit the invention to patient-identifying storage schemes and that the asserted claims are not invalid for lack of written description on that basis; the case is remanded for further proceedings.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the specification limits the claimed invention to sorting/storing by patient-identifying information (e.g., patient name) and slot availability | ScriptPro: specification does not limit the invention to patient-based sorting; patient-based sorting is one disclosed embodiment among others | Innovation: specification unambiguously requires storage based on patient-identifying information and open slot availability; claims are broader than the description | Court: Held for ScriptPro — specification expressly contemplates multiple storage schemes ("patient, prescription, or other predetermined storage scheme") and does not limit claims to patient-identifying sorting |
| Whether the asserted claims are invalid for lack of written description because they lack a patient-identifying limitation | ScriptPro: original specification and original claims (part of the spec) support broader claims; written description satisfied | Innovation: claims are not commensurate with the disclosed invention focused on patient/slot algorithm | Court: Held for ScriptPro — written description requirement met regarding scope; asserted claims not invalid on that ground |
Key Cases Cited
- Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473 (Fed. Cir.) (specification limited controls to console; claims broader, resulting in written-description issue)
- ICU Medical, Inc. v. Alaris Medical Systems, Inc., 558 F.3d 1368 (Fed. Cir.) (specification described only valves with spikes; claims lacking spike limitation were not supported)
- Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir.) (written description standard: disclosure must reasonably convey inventor possessed claimed subject matter)
- Atl. Research Mktg. Sys., Inc. v. Troy, 659 F.3d 1345 (Fed. Cir.) (standard of review for written-description summary judgment)
- Crown Packaging Tech., Inc. v. Ball Metal Beverage Container Corp., 635 F.3d 1373 (Fed. Cir.) (original claims in a specification can provide written description support)