PTAB

IPR2019-00376

Health Care Logistics Inc v. Kit Check Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Management of Pharmacy Kits
  • Brief Description: The ’099 patent discloses a system for managing the contents of pharmacy kits using radio-frequency identification (RFID) technology. The system verifies kit contents by placing the kit in a shielded reading station, scanning RFID tags on medication containers, and using a processor to confirm contents against a template, including identifying missing items, verifying substitute items, and checking expiration dates.

3. Grounds for Unpatentability

Ground 1: Obviousness over Andreasson and Sriharto - Claim 14 is obvious over Andreasson in view of Sriharto.

  • Prior Art Relied Upon: Andreasson (Patent 7,175,081) and Sriharto (Application # 2008/0316045).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Andreasson taught the core system of claim 14, disclosing RFID-based methods for tracking and inventorying medical products within a healthcare facility using a transportable medical dispensing unit. This unit, containing RFID-tagged medication containers, an RFID reader, a processor, and a display, functioned as the claimed “reading station” for a “pharmacy kit.” Petitioner contended that Sriharto was offered primarily for its express teachings on two key features not explicitly detailed in Andreasson: (1) a process for recommending an available substitute drug when a prescribed drug is determined to be missing from a medical cart, and (2) the use of electromagnetic shielding in the container to ensure accurate RFID scanning.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Andreasson’s general RFID inventory system with Sriharto’s specific features to improve its functionality. Handling missing items via substitution is a predictable problem in inventory management, and Sriharto provided a known, automated solution. Similarly, ensuring signal integrity with shielding was a known technique to improve the reliability of RFID systems, making its inclusion in Andreasson's system a predictable and logical improvement.
    • Expectation of Success: A POSITA would have a reasonable expectation of success in this combination, as it involved integrating known solutions (substitution logic and shielding) into a conventional RFID inventory framework to achieve their expected functions.

Ground 2: Obviousness over Danilewitz, Tethrake, Sriharto, and Vishik - Claim 14 is obvious over Danilewitz in view of Tethrake and further in view of Sriharto and Vishik.

  • Prior Art Relied Upon: Danilewitz (Application # 2007/0150382), Tethrake (Patent 7,268,684), Sriharto (Application # 2008/0316045), and Vishik (Application # 2009/0224891).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground presented an alternative combination where Danilewitz provided the primary system. Danilewitz disclosed an RFID-based pharmaceutical cabinet for managing inventory, which taught the claimed “reading station.” Tethrake, which described tracking surgical instrument kits in trays using RFID, was introduced to more overtly teach the concept of a “kit” within a container. Sriharto was incorporated for the same reasons as in Ground 1: its teachings on handling substitute medications and using electromagnetic shielding. Vishik was added to further reinforce that it was well-known in the art for RFID tag data to include “transactional data comprising substitute information,” explicitly teaching the use of ontologies to classify and substitute interchangeable items.
    • Motivation to Combine: A POSITA beginning with Danilewitz's RFID pharmaceutical cabinet would be motivated to incorporate the features from the other references to create a more comprehensive and robust system. Tethrake’s teachings on managing items as a "kit" were directly applicable to the pharmacy context. The motivations to add Sriharto’s substitution logic and shielding were the same as in Ground 1—to solve predictable problems with known solutions. Vishik provided additional rationale, showing that managing substitution data was a known and desirable feature for inventory systems, further motivating a POSITA to include such functionality.
    • Expectation of Success: A POSITA would have expected success in combining these elements. The integration involved applying established concepts—kitting (Tethrake), substitution logic (Sriharto, Vishik), and shielding (Sriharto)—to a standard RFID inventory cabinet (Danilewitz), with each component performing its predictable function.

4. Key Claim Construction Positions

  • Petitioner asserted that its invalidity grounds applied regardless of which proposed claim constructions were adopted but highlighted differing constructions from the related district court litigation.
  • "Pharmacy Kit[s]": Petitioner proposed "Transportable container having a collection of medical items for a common purpose...," whereas Patent Owner proposed a similar construction using "pharmacy items."
  • "Substitute first pharmacy item": Petitioner proposed a detailed construction where the substitute is an alternative identified by a template. In contrast, Patent Owner argued for the term's plain and ordinary meaning. The distinction was relevant to how the system identifies and verifies a substitute medication.

5. Key Technical Contentions (Beyond Claim Construction)

  • Petitioner's central technical contention, underlying all grounds, was that the technology recited in claim 14 represented nothing more than the routine application of well-known, off-the-shelf RFID hardware and backend software components. It was argued that at the time of the invention, it was common practice in inventory management to use RFID to scan kits, verify contents against a list, check for missing or expired items, and handle substitutions. Therefore, the challenged claim merely combined these known elements for their intended and predictable purposes.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claim 14 of the ’099 patent as unpatentable.