[00:00:00] Speaker 01:
versus innovation associates.

[00:00:17] Speaker 01:
Mr. McCallum, just give her a second to get settled at council table.

[00:00:43] Speaker 01:
OK, please proceed.

[00:00:45] Speaker 03:
Thank you, Your Honors.

[00:00:45] Speaker 03:
Travis McCallan for Appellant Script Pro.

[00:00:48] Speaker 03:
May it please the Court.

[00:00:50] Speaker 03:
I think the place to start on this appeal is obviously with the district court's order in this case.

[00:00:56] Speaker 03:
And the district court immediately below held that the critical missing element, those are the court's words, in the claims at issue is a limitation specifying that the control system directs storage of the containers based on patient name.

[00:01:12] Speaker 03:
Now, there's really no dispute on this appeal that that patient name requirement is erroneous.

[00:01:18] Speaker 03:
Innovation does not try to justify that patient name requirement.

[00:01:23] Speaker 03:
Instead, they call it immaterial semantics.

[00:01:26] Speaker 03:
They don't do that to get behind the ruling.

[00:01:29] Speaker 03:
They do that in order to shift the argument and make yet another new argument about what this issue is really about.

[00:01:37] Speaker 03:
Now, the specification doesn't support that patient name requirement either.

[00:01:40] Speaker 03:
In fact, it specifically identifies another piece of identifying.

[00:01:44] Speaker 01:
Let's just assume that patient identifying information is what we're all talking about.

[00:01:49] Speaker 01:
Don't waste your time on this distinction between name and identifying information.

[00:01:52] Speaker 01:
Absolutely.

[00:01:53] Speaker 03:
Move on.

[00:01:54] Speaker 03:
If the contention is that the specification requires patient-specific collation, then there's three big problems with that argument as well.

[00:02:02] Speaker 03:
The first, again, is the specification itself.

[00:02:06] Speaker 03:
which is not merely silent on this issue.

[00:02:08] Speaker 03:
It's actually affirmatively open-ended.

[00:02:12] Speaker 03:
It says that the invention collates containers based on an organization scheme that accounts for identifying information of the container, such as a patient name or a prescription number.

[00:02:22] Speaker 03:
Now, it doesn't say patient-specific identifying information.

[00:02:25] Speaker 03:
It just says identifying information.

[00:02:27] Speaker 02:
I mean, it does seem, though, that the specification is largely directed at patient-specific collation.

[00:02:34] Speaker 02:
It's what it talks about when it talks about the problems and the improvements and all of the difficulties are associated with sorting things by patient and not having to look at the specific prescription number and look it up.

[00:02:49] Speaker 02:
I mean, it does seem like that's, at the very least, the main purpose of the invention.

[00:02:54] Speaker 03:
Certainly, the embodiments discuss, the preferred embodiments discuss patient-specific collation.

[00:03:00] Speaker 03:
But as the court knows, the patent isn't necessarily limited to the specific embodiments identified in the specification.

[00:03:08] Speaker 03:
And certainly, given this very specific language about identifying information that appears multiple times in the specification,

[00:03:16] Speaker 03:
We believe that opens up that identifying information to other pieces, patient-specific or not patient-specific.

[00:03:22] Speaker 03:
And back to the purposes of the invention as well, certainly a couple of those purposes relate to something that you could call patient-specific collation.

[00:03:31] Speaker 03:
But there's also non-patient-specific collation purposes set out in the specification.

[00:03:36] Speaker 03:
There's actually a non-collation purpose set out in the specification.

[00:03:39] Speaker 03:
So those purposes by themselves, we don't believe, limit the invention.

[00:03:44] Speaker 03:
to something that must perform patient-specific collation.

[00:03:51] Speaker 03:
You also have the original claims in this case.

[00:03:54] Speaker 03:
The original claims, like the claims that are now before this court, didn't include patient-specific limitations.

[00:04:01] Speaker 03:
They claimed a collating unit, just like the claims that are now before the court.

[00:04:05] Speaker 03:
And those claims are part of the specification.

[00:04:08] Speaker 03:
So we believe it's pretty clear that those claims are good evidence that the inventors recognized

[00:04:13] Speaker 03:
and possessed at the time an invention that required collation.

[00:04:18] Speaker 03:
It required some sort of identifying information, some sort of organizational scheme, but it didn't necessarily require patient-specific collation.

[00:04:28] Speaker 03:
Third big reason why the argument that innovation puts forward about patient-specific collation is erroneous is that at the end of the day, it's fundamentally inconsistent.

[00:04:39] Speaker 03:
Innovation would have the court believe that a person of ordinary skill reads this specification and can conclude only that it describes a patient-specific collating unit.

[00:04:50] Speaker 03:
Everything in that specification, according to innovation, describes a patient-specific collating unit.

[00:04:56] Speaker 03:
And yet, when we turn to the claims, that same person of ordinary skill somehow forgets everything that he or she read in that specification.

[00:05:04] Speaker 03:
And instead, according to innovation, a person skilled in the art would not understand collate to mean

[00:05:10] Speaker 03:
arranging for a particular customer using patient identifying information.

[00:05:14] Speaker 03:
Those are two inconsistent positions.

[00:05:16] Speaker 03:
And what innovation is really doing is divorcing the claims from the specification.

[00:05:22] Speaker 03:
And certainly our position, Scrippro's position, is that the specification does not limit the invention to patient-specific collating unit.

[00:05:29] Speaker 03:
Therefore, when the term a collating unit appears in the claims, it's not a patient-specific collating unit.

[00:05:34] Speaker 03:
It's just a collating unit.

[00:05:35] Speaker 03:
But either way, whether it's limited

[00:05:38] Speaker 03:
By the specification or not, there's really no path to victory for innovation, because their path requires the court to divorce those claims from the specification.

[00:05:48] Speaker 03:
So for all those reasons, we believe both the district court's order and innovation's different argument on appeal cannot stand.

[00:05:57] Speaker 03:
And certainly, at bare minimum, there are factual issues here, given the language of the specification, including the purposes and the specific language about identifying information

[00:06:07] Speaker 03:
given the original claims of the patent, given the inconsistency of their position.

[00:06:12] Speaker 03:
At bare minimum, there are factual issues here that remain to be resolved at trial.

[00:06:17] Speaker 03:
This is not a case that can support summary and validation of the patent.

[00:06:23] Speaker 03:
Those are the merits.

[00:06:24] Speaker 03:
I also do briefly want to touch on some of the procedural-based arguments that innovation makes.

[00:06:31] Speaker 03:
And I think it's telling, in fact, how many waiver-based arguments appear in their brief.

[00:06:37] Speaker 03:
And I think that's indicative of the hair-triggered nature of some of these waiver-based arguments.

[00:06:42] Speaker 03:
The first set of arguments has to deal with the arguments that ScriptPro made in the prior appeal in this case.

[00:06:51] Speaker 03:
And Innovation now claims that basically what ScriptPro said during the prior appeal somehow effectively limits the scope of the invention that's now before the court.

[00:07:02] Speaker 03:
There's two main points that we'd make as far as those arguments go.

[00:07:06] Speaker 03:
The first is that Scrippro simply didn't argue on the last appeal that this invention must be limited to patient-specific collation.

[00:07:14] Speaker 03:
It certainly used examples of patient-specific collation to make its point on the prior appeal.

[00:07:20] Speaker 03:
But it was entitled to do so because those examples are in the specification.

[00:07:25] Speaker 03:
And the claims cover those examples.

[00:07:27] Speaker 03:
But that doesn't mean that the invention is limited to patient-specific collation.

[00:07:33] Speaker 03:
And the second point is, Scrippro didn't need to argue that this invention is limited to patient-specific collation to prevail on the last appeal.

[00:07:42] Speaker 03:
Rather, the main point that Scrippro made on that last appeal was that this invention utilizes identifying information.

[00:07:49] Speaker 03:
It doesn't matter whether it's patient-specific identifying information or some other type of identifying information.

[00:07:54] Speaker 03:
The fact that there's identifying information was enough to rebut the argument that innovation had made that the sensors were essential to the invention on the last appeal.

[00:08:05] Speaker 03:
The last set of what I'm calling the waiver-based arguments that Innovation makes has to do with the summary judgment arguments immediately below and then the arguments here on appeal.

[00:08:16] Speaker 03:
And the one point that I just want to make on those arguments is that Innovation has shifted its position and, in fact, continues to shift its position as evidenced by the move from patient name to patient identifying.

[00:08:29] Speaker 03:
In their motion below, their initial motion before the district court

[00:08:34] Speaker 03:
Innovation put forward what we've called in our briefs a structural component argument.

[00:08:39] Speaker 03:
They argued that the claims are invalid because they lack any component for keeping track of what slots are open and what slots are being used for a particular patient.

[00:08:48] Speaker 03:
Innovation responded to that argument.

[00:08:50] Speaker 03:
And on reply, I'm sorry, Scrippro responded to that argument.

[00:08:54] Speaker 03:
And in reply, innovation changed and said that that component is now irrelevant.

[00:09:00] Speaker 03:
and that the claims instead were invalid because they do not require storage according to the central purpose of the invention.

[00:09:06] Speaker 03:
So it shifted from a component argument to a statement of the actual purpose of the invention.

[00:09:12] Speaker 03:
And those are two different arguments.

[00:09:14] Speaker 03:
We know they're different, in fact, because innovation now presents them to this board in its appeal group as two separate arguments.

[00:09:24] Speaker 03:
Do you like this?

[00:09:25] Speaker 03:
Oh, I'm sorry.

[00:09:27] Speaker 03:
The only argument that was before Script Pro when it responded to innovation summary judgment motion was the component argument.

[00:09:34] Speaker 03:
That's the argument it responded to.

[00:09:35] Speaker 03:
There can't be any waiver on this issue.

[00:09:39] Speaker 01:
Would you like to save your remaining time for rebuttal?

[00:09:41] Speaker 03:
I would, unless there's any further questions.

[00:09:43] Speaker 01:
No?

[00:09:43] Speaker 01:
That's good.

[00:09:44] Speaker 01:
Thank you very much.

[00:09:44] Speaker 01:
Mr. Mitchell?

[00:09:44] Speaker 01:
I mean, Ms.

[00:09:45] Speaker 01:
Mitchell?

[00:09:57] Speaker 00:
We're here today because Scrippro's claims are broader than the broadest form of the invention described in the specification, and that is patient-specific collation.

[00:10:11] Speaker 01:
The claims themselves... Do you think prescription number is patient-specific collation?

[00:10:19] Speaker 00:
Prescription number does lead to patient-specific collation according to the specification, focusing on column 11, line 45 through 48 through 50.

[00:10:35] Speaker 00:
When a script is assigned a script number, the script number identifies the particular patient name and medicament to be dispensed.

[00:10:45] Speaker 00:
And so even according to the preferred embodiment that does allow for input by a prescription number, it's still tied and correlated to a patient name, which you then subsequently see in figure 8 and the accompanying text in terms of how it goes about correlation as well.

[00:11:02] Speaker 01:
What about the language at column 8?

[00:11:05] Speaker 01:
Why don't we start at line 19?

[00:11:09] Speaker 01:
This is under the preferred embodiment.

[00:11:13] Speaker 01:
Thus, do you have it handy?

[00:11:15] Speaker 01:
Yes.

[00:11:15] Speaker 01:
Thus, the co-elating unit 10 of the present invention provides an automatic container storage unit that may be used with existing control centers.

[00:11:25] Speaker 01:
The co-elating unit 10 automatically stores containers exiting the ADS by patient, not patient name, but by patient, prescription, or other predetermined storage scheme without input

[00:11:41] Speaker 01:
or handling by the operator.

[00:11:43] Speaker 01:
Why doesn't that clearly contemplate that even the preferred embodiment allows for coalition by any predetermined storage scheme?

[00:11:55] Speaker 00:
If it does allow for, first of all, the purposes of the invention are patient specific.

[00:12:05] Speaker 00:
No, but certainly the background of the invention discusses that as the problem to be solved.

[00:12:10] Speaker 01:
Not the problem, one of the problems to be solved, right?

[00:12:12] Speaker 01:
Because there is also multiple containers per slot and having it work with existing ADSs.

[00:12:19] Speaker 00:
So for example, even the multiple containers per slot, that's tied to patient because the specification tells us that one of the problems is

[00:12:26] Speaker 00:
patients often have multiple prescriptions.

[00:12:28] Speaker 00:
And so that was the whole point of having slots that could hold multiple prescriptions.

[00:12:33] Speaker 01:
Why?

[00:12:33] Speaker 01:
Why can't you sort by medicament and then you'd have multiple prescriptions in a single slot?

[00:12:38] Speaker 01:
It would just be by active ingredient of the medicine.

[00:12:41] Speaker 00:
You could.

[00:12:41] Speaker 00:
I suppose the question is why

[00:12:45] Speaker 00:
would a person of ordinary skill reading the specification understood the inventors to have been in possession of that type of storage scheme.

[00:12:53] Speaker 00:
And here we have in column four, right under the summary of the invention, you have the present invention language.

[00:13:00] Speaker 00:
The present invention solved the above described problems by providing a collating unit and on lines 22, the unit stores prescription containers according to a storage algorithm that is dependent on a patient name for who the container is intended and an availability of an open storage position in a collating unit.

[00:13:20] Speaker 01:
Yes, but if I were to read that as limited, then I would limit, if I actually thought that stood for the proposition that you're advocating,

[00:13:27] Speaker 01:
then I'd have to say this is limited to patient name and can't even include patient identifying information and can't include a prescription number.

[00:13:35] Speaker 01:
And that's not even really what you're arguing on appeal.

[00:13:39] Speaker 01:
So this present invention language clearly is not a clear and unmistakable disclaimer of everything other than patient name because you're not even making that argument on appeal.

[00:13:48] Speaker 00:
So let's assume that turning back to the language, I guess, on column 8, the collating unit automatically stores containers exiting the ADS by patient prescription or other predetermined storage scheme without input or handling by the operator.

[00:14:02] Speaker 00:
There is, however, no disclosure anywhere in the specification for how to accomplish that other type of storage scheme.

[00:14:10] Speaker 00:
And the claims don't even require any particular type of storage scheme, even if we're not talking about

[00:14:16] Speaker 00:
which I think reading the specifications as a whole, it does disclose some type of patient-specific collation.

[00:14:24] Speaker 02:
Well, it certainly discloses patient-specific collation, but there's nothing in here that suggests don't do it any other way, is there?

[00:14:32] Speaker 02:
And isn't that what you need?

[00:14:38] Speaker 02:
You're asking us to make an inference that because it only, and I don't think it only does, but even assuming it only talked about

[00:14:46] Speaker 02:
patient-specific collation, that it affirmatively disclaims everything else.

[00:14:52] Speaker 02:
But it talks about overcoming problems in the prior art, but it talks about it in terms of improving them.

[00:14:59] Speaker 02:
It doesn't say that you can't do it that way.

[00:15:02] Speaker 02:
It's just an improvement.

[00:15:04] Speaker 02:
So I don't understand how that's specifically saying, we're not doing it this way, or we can't do it this way.

[00:15:12] Speaker 02:
I mean, this unit, if

[00:15:13] Speaker 02:
If whoever buys it decides they don't want to collate by patient name and wants to collate based upon some other predetermined storage scheme, they can do it, can't they?

[00:15:24] Speaker 02:
And that's what it describes.

[00:15:27] Speaker 00:
So, I feel like I'm,

[00:15:41] Speaker 00:
I don't really know where to go with that because I feel like we're on different pages in terms of the overall disclosure of the specification.

[00:15:48] Speaker 02:
Well, I think it's a pretty simple question.

[00:15:51] Speaker 02:
I mean, I agree with you that at least one, and it's seemingly a major point of this invention, is to collate by either patient name or patient identification number.

[00:16:03] Speaker 02:
It talks about that for the large part of the specification throughout.

[00:16:08] Speaker 02:
Correct.

[00:16:09] Speaker 02:
But we've never said that's enough to disclaim other more broad claims, as long as they're supported.

[00:16:16] Speaker 02:
And maybe this is minimal support when it talks about other predetermined storage, but it's in there.

[00:16:23] Speaker 02:
And there's nothing else that says you can only do it one way.

[00:16:27] Speaker 02:
So I don't understand.

[00:16:28] Speaker 02:
I mean, it seems implicit in your argument

[00:16:33] Speaker 02:
is adopting a change in the way we view disclaimer, which of course we can't do as a panel.

[00:16:41] Speaker 00:
Correct.

[00:16:42] Speaker 00:
I mean, our argument is that the specification unambiguously limits the nature of the invention to a patient-specific collating unit.

[00:16:51] Speaker 00:
And I understand from y'all that you don't agree with that because of the language in column A. Well, and also because there's no language that says only do it this way.

[00:17:01] Speaker 02:
it just talks about do it this way and there seems to be a difference between those things.

[00:17:07] Speaker 00:
So the patent itself does disparage the priority.

[00:17:13] Speaker 00:
In that sense, it's like Lizard Tech and Tronzo in that the background of the invention talks about the problems of inconveniencing pharmacists who have to fumble around and look for all these different prescriptions in different locations and slots and holding areas.

[00:17:29] Speaker 01:
Is that the section that's actually tied to saying why it'd be better to do it by name than prescription number?

[00:17:36] Speaker 01:
Are you talking about column three, where they talk about how it's time consuming and prone to errors since the operator much matched prescription numbers that are often several digits in length?

[00:17:47] Speaker 01:
Is that the background of the invention?

[00:17:49] Speaker 00:
The background of the invention throughout talks about, for example, there's some language in column one.

[00:17:54] Speaker 00:
It talks about pharmacists not having enough time to keep up with the containers as they're exiting the automatic description, automatic dispensing system.

[00:18:04] Speaker 00:
And if the patient has several

[00:18:05] Speaker 01:
Containers court if the patient has several containers the operator has to sort through even more containers to try to find them all And then there's more language beginning at the bottom of page two Well doesn't that just go to the automated nature of the system that's being claimed as opposed to patient name in particular I mean like for example the part you're talking about is when when an operator wishes to receive a

[00:18:31] Speaker 01:
particular patient's container, the operator must look at it, read the label of each one on the outfeed, and then put it in the correct container.

[00:18:37] Speaker 01:
I mean, that's what's in column one, and what that's really doing is saying, boy, wouldn't it be great to have an automated way of doing this, some sort of machine that could read something on the label and thereby allocate it to a bin, rather than having the pharmacist have to do it manually.

[00:18:51] Speaker 00:
I mean, certainly some type of organizational scheme that makes life easier for the pharmacist that's less efficient

[00:18:57] Speaker 00:
or that's more efficient and less prone to error than prior ways, which was simply to output these prescriptions by prescription number, and then they have to go and check and see is that the right prescription number for whatever it is.

[00:19:10] Speaker 00:
So certainly that's the purpose of the invention.

[00:19:12] Speaker 00:
And anything beyond that stated purpose is disparage.

[00:19:18] Speaker 00:
And so that it would be our position that that brings this case in line with the likes of Tronzo and Lizard Tech where the patent's disparage, the priority is not accomplishing the objectives set for the overall purpose essentially of what the invention was and missing a claim limitation.

[00:19:53] Speaker 00:
Do you have anything further?

[00:19:55] Speaker 00:
No, I don't think I have anything.

[00:19:57] Speaker 01:
Okay.

[00:19:57] Speaker 01:
That's fine, Ms.

[00:19:58] Speaker 01:
Mitchell.

[00:19:58] Speaker 01:
Thank you.

[00:20:00] Speaker 01:
Mr. McCallum?

[00:20:08] Speaker 01:
Do you feel like there's something you need to address?

[00:20:10] Speaker 03:
Just a couple of quick points, Your Honor.

[00:20:14] Speaker 03:
Your Honor's noted that innovation's position would represent some sort of change in the way that this Court

[00:20:20] Speaker 03:
And that, in fact, is true.

[00:20:23] Speaker 03:
And if you look at Innovations Red Reef at page 35, they argue that Scrippro didn't point to any portion of the specification that disavows the patient-specific organizational scheme that is missing from the claims.

[00:20:37] Speaker 03:
That, of course, is not the standard and is not the point of the argument we're making.

[00:20:42] Speaker 03:
As far as the case law that Ms.

[00:20:45] Speaker 03:
Mitchell brought up,

[00:20:46] Speaker 03:
All of innovation's cases involve specifications that describe one and only one way to do something, and that is simply not the case with this specification.

[00:20:58] Speaker 01:
I know it's not in front of us, and it's virtually irrelevant to what we're deciding, but I'm just curious.

[00:21:04] Speaker 01:
This is an infringement suit.

[00:21:06] Speaker 01:
What does the accused device sort by?

[00:21:09] Speaker 01:
How do they correlate?

[00:21:11] Speaker 03:
That's my understanding your best guess.

[00:21:15] Speaker 03:
Yeah best guess is by by patient of some kind but that's not a I Don't that's not a question.

[00:21:23] Speaker 03:
I'm fully prepared to answer right here before you today But any event I think I'll pull pull out now and Again, we think that reversal is warranted in this case.

[00:21:37] Speaker 03:
Thank you.

[00:21:37] Speaker 01:
I think both counsel the case is taken under submission and

[00:21:41] Speaker 02:
All right.

[00:21:48] Speaker 02:
Y'all can call to adjourn from day to day.