United States District Court, D. Kansas
For ScriptPro LLC, Plaintiff: Allen Justin Poplin, Jennifer M. Gibson Hannah, Gerald M. Kraai, R. Scott Beeler, LEAD ATTORNEYS, Lathrop & Gage LLP - OP, Overland Park, KS; Brian C. Fries, David V. Clark, Robert C. Garrison, Travis W. McCallon, LEAD ATTORNEYS, Lathrop & Gage, LLP - KC, Kansas City, MO; Matthew K. Corbin, LEAD ATTORNEY, A-Law, LLC, Belton, MO.
For Innovation Associates, Inc, Defendant, Counter Claimant: B. Trent Webb, LEAD ATTORNEY, Brittany A. Boswell, Christine A. Guastello, PRO HAC VICE, Angela (Angel) D. Mitchell, Shook, Hardy & Bacon LLP - KC/Grand, Kansas City, MO.
For Innovation Associates, Inc, Counter Claimant: B. Trent Webb, LEAD ATTORNEY, Angela (Angel) D. Mitchell, Shook, Hardy & Bacon LLP - KC/Grand, Kansas City, MO; Douglas M. Greenwald, LEAD ATTORNEY, McAnany, Van Cleave & Phillips, PA - KCK, Kansas City, KS; Brittany A. Boswell, Christine A. Guastello, PRO HAC VICE, Shook, Hardy & Bacon LLP - KC/Grand, Kansas City, MO.
For ScriptPro LLC, Counter Defendant: Brian C. Fries, LEAD ATTORNEY, Lathrop & Gage, LLP - KC, Kansas City, MO; Gerald M. Kraai, R. Scott Beeler, Jennifer M. Gibson Hannah, LEAD ATTORNEYS, Lathrop & Gage, LLP - OP, Overland Park, KS; Matthew K. Corbin, LEAD ATTORNEY, A-Law, LLC, Belton, MO.
MEMORANDUM AND ORDER
CARLOS MURGUIA, United States District Judge.
This patent infringement case--originally filed in 2006--has a substantial history. Most recently, the Federal Circuit reversed this court's ruling that claims 1, 2, 4, and 8 of plaintiff ScriptPro LLC's patent were invalid for lack of an adequate written description. The Federal Circuit remanded the case for further proceedings. After remand, this court reinstated a number of motions that were pending before the appeal, and defendant Innovation Associates, Inc. filed another motion for summary judgment on the issue of invalidity (Doc. 410).
I. General Factual and Procedural Background
As the court has previously explained, 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 to the extent feasible. This patent--Patent No. 6,910,601 (" the '601 patent" )--is named " Collating Unit for Use With a Control Center Cooperating With an Automatic Prescription or Pharmaceutical Dispensing System." ScriptPro claims that Innovation's robot,
ROBOTX, infringes on claims 1, 2, 4, and 8 of its patent.
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.
This court previously held that the relevant claims lacked written description support. ScriptPro LLC v. Innovation Assocs., Inc., No. 06-2468-CM, 2012 WL 2402778, at *7 (D. Kan. June 26, 2012), rev'd, 762 F.3d 1360 (Fed. Cir. 2014). To reach this decision, the court concluded that the specification describes a machine containing sensors, but Claims 1, 2, 4, and 8 addressed a machine that did not require sensors. Id. The Federal Circuit disagreed, holding that a skilled artisan could reasonably understand the specification to refer to optional sensors--as opposed to required sensors. ScriptPro, LLC, 762 F.3d at 1360.
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, 106 S.Ct. 1348, 89 L.Ed.2d 538 (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. 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, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986); see Adler, 144 F.3d at 671 n.1 (concerning shifting burdens on summary judgment).
III. Factual Background Specific to this Motion
Resolution of this motion depends on language in the patent itself. To help explain how ScriptPro's invention works, the court summarizes several portions of the '601 patent that discuss the process for storing prescription containers.
o Prior Art Methods: The background of the invention indicates that " prior art automated control centers store the container based on a prescription number associated with the container, as opposed to storing the container based on a patient name for whom the ...