IP Law Daily, PATENT—Fed. Cir.: Patent on ‘collating unit’ for prescription drug containers improperly invalidated, (Aug 15, 2016)

Mark Engstrom, J.D.

A federal district court improperly granted summary judgment of invalidity for lack of a written description in the asserted claims of a ScriptPro patent on a “collating unit” for prescription drug containers, the U.S. Court of Appeals for the Federal Circuit has ruled. Because the patent specification did not limit the scope of the invention in the way that the district court had determined, the invalidity ruling was reversed and the case was remanded for further proceedings (ScriptPro LLC v. Innovation Associates, Inc., August 15, 2016, Moore, K.).

ScriptPro and ScriptPro USA sued Innovation Associates for the infringement of U.S. Patent No. 6,910,601, which described a “collating unit” for use with a “control center” and an “automatic dispensing system” (ADS). The invention collated and stored prescription drug containers that were filled with medication.

Innovation Associates appealed the district court’s finding that the asserted claims lacked a written description of the patent’s sorting and storing limitation. Therefore, the Federal Circuit had to decide whether the patent specification limited the claimed invention to a collating unit that sorted and stored prescription drug containers by patient-identifying information and slot availability. The district court had found that the specification was limiting, and that the asserted claims, which were not so limited, were therefore invalid for lack of a written description.

ScriptPro argued that the district court had erred by interpreting the patent specification as being limited to the sorting of the containers by patient-identifying information. In ScriptPro’s view, the district court’s focus on a single purpose of the patent—keeping track of slot use by particular customers and slot availability—caused the lower court to erroneously conclude that the invention was limited to a collating unit that achieved the singular purpose of storing prescription containers by the patient’s name.

According to ScriptPro, only if the specification was read to limit the claimed invention to sorting and storing prescription containers by patient-identifying information could the asserted claims be “too broad” for failing to include that limitation, and ScriptPro argued that the specification did not limit the invention in that manner.

The Federal Circuit agreed with ScriptPro: the specification did not limit the claimed invention to sorting and storing prescription containers by patient-identifying information. Significantly, the asserted patent disclosed multiple problems that the invention solved, including working with existing ADSs, storing more than one container in a holding area, collating multiple containers for a patient in a single holding area, storing a container for a patient based on the patient’s name (rather than a prescription number that was 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.

The court acknowledged that many of those solved problems involved the sorting of prescription containers by patient-identifying information. However, the prescription containers could be sorted into different holding areas based on the medication dispensed, the date the prescription was filled, or some other sorting scheme, according to the court. In fact, the patent in suit expressly stated that containers could be sorted and stored “by patient, prescription, or other predetermined storage scheme without input or handling by the operator.”

Although much of the specification focused on embodiments that employed a sorting and storage scheme that was based on patient-identifying information, a specification’s focus on one particular purpose or embodiment could not limit the described invention if the specification expressly contemplated other embodiments or purposes, the court explained. That was especially true in cases where, as here, the originally filed claims were not limited to the purpose or embodiment that was the focus of the specification.

Similarly, the specification’s “mere recognition” that one aspect of a prior art system was “inconvenient” did not constitute “disparagement” that was sufficient to limit the described invention, especially when the same specification had expressly contemplated that some embodiments of the invention incorporated the “inconvenient” aspect.

For those reasons, the district court erred when it found that the specification of the asserted patent limited the invention to storing prescription containers based on patient name and slot availability. Because the specification did not limit the scope of the invention in that way, the asserted claims were not invalid for lacking that limitation.

The case is No. 2015-1565.

Attorneys: Travis W. McCallon, Robert Cameron Garrison, and R. Scott Beeler (Lathrop & Gage, LLP) for ScriptPro LLC and ScriptPro USA, Inc. Angela Dawn Mitchell and Basil Trent Webb (Shook, Hardy & Bacon, LLP) for Innovation Associates, Inc.

Companies: ScriptPro LLC; ScriptPro USA, Inc.; Innovation Associates, Inc.

Cases: Patent FedCirNews