Monday, August 15, 2016

Scriptpro wins reversal of D. Kansas at CAFC

The outcome of Scriptpro was reversal of a district court decision:

ScriptPro, LLC and ScriptPro USA, Inc. (collectively
“ScriptPro”) appeal the United States District Court for
the District of Kansas’s grant of summary judgment that
claims 1, 2, 4, and 8 (“asserted claims”) of U.S. Patent
No. 6,910,601 are invalid for lack of written description.
We reverse and remand for further proceedings.

The Gentry case arose and was distinguished:

The ’601 patent’s express disclosure that sorting and
storing can be done in a number of ways distinguishes
this case from Gentry Gallery and ICU Medical. In those
cases, the specifications clearly limited the scope of the
inventions in ways that the claims clearly did not. Gentry
Gallery, 134 F.3d at 1479 (“the original disclosure clearly
identifies the console as the only possible location for the
controls” and the claims did not limit the location of the
controls); ICU Med., 558 F.3d at 1378 (“the specification
describes only medical valves with spikes” and the claims
did not include a spike limitation). Such is not the case
here. The ’601 specification does not limit the sorting and
storing of prescription containers by patient-identifying
information alone—any “predetermined storage scheme”
will do. ’601 patent, 8:21–24. 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 ADSs. 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.2
For the foregoing reasons, we reverse the district
court’s grant of summary judgment that the asserted
claims are invalid for lack of written description and
remand the case for further proceedings.3

Footnotes 2 and 3:

2 Because we determine that the district court erred
in its conclusion that the invention disclosed in the specification
was limited to sorting and storing prescription
containers by patient name and slot availability, we need
not reach ScriptPro’s alternative argument that “collating
unit” should be construed to require patient-specific
3 Though we see no triable issue of fact here, the
patentee did not move for summary judgment on this
issue before the district court. Thus, we remand this case
to the district court which is best situated to determine
how to move forward.


Post a Comment

<< Home