Health Care Logistics, Inc. v. Kit Check, Inc.

1. Case Identification

• Case #: IPR No. Unassigned
• Patent #: 8,990,099
• Filed: November 30, 2018
• Petitioner(s): Health Care Logistics, Inc.
• Patent Owner(s): Kit Check, Inc.
• Challenged Claims: 14

2. Patent Overview

• Title: Management of Pharmacy Kits
• Brief Description: The ’099 patent discloses a system for managing pharmacy kits using radio-frequency identification (RFID) technology. The system is designed to verify the contents of a kit, including checking for correct medications, expiration dates, and the presence of authorized substitute medications, by scanning RFID tags attached to medication containers within an electromagnetically shielded reading station.

3. Grounds for Unpatentability

Ground 1: 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 teaches the core of the claimed system: an RFID-based method for tracking and inventorying medical products, including pharmaceuticals, within a healthcare facility. Andreasson’s transportable medical dispensing unit, which contains removable compartments for RFID-tagged medications and includes an RFID reader and display, was asserted to teach the claimed “reading station” and “pharmacy kit.” Petitioner contended that Sriharto supplies the missing elements, specifically teaching an “intelligent medical material cart” that is programmed to recommend a substitute drug when a prescribed drug is missing. Sriharto also expressly taught the use of an electromagnetic shielding element in its cart to ensure reliable RFID scanning, directly mapping to the shielding limitation of claim 14.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Andreasson’s general RFID tracking system with Sriharto’s specific features to create an improved, more practical system for a hospital environment. A POSITA would be motivated to add Sriharto’s substitution logic to Andreasson’s system to handle common scenarios of missing medications and would incorporate Sriharto’s shielding to improve the reliability and accuracy of scanning within a metal cart, which was a known challenge.
  • Expectation of Success: A POSITA would have a high expectation of success, as the combination involved integrating known and complementary features from RFID-based inventory systems to achieve a predictable result—a more robust pharmacy kit management system.

Ground 2: 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: Petitioner asserted this combination provides an alternative path to obviousness. Danilewitz was argued to teach a foundational RFID-based pharmaceutical cabinet for managing inventory of individual product units. Tethrake was offered for its more explicit teaching of tracking, inspecting, and verifying the contents of kits (specifically surgical instrument kits in trays), which is analogous to the claimed “pharmacy kit.” As in Ground 1, Sriharto was cited for its teachings on recommending substitute medications, checking expiration thresholds, and using electromagnetic shielding. Finally, Vishik was added to further demonstrate that using RFID data to identify substitute items was a well-known concept, as Vishik described using ontologies to classify and substitute interchangeable items.
  • Motivation to Combine: A POSITA would be motivated to improve Danilewitz’s basic pharmaceutical cabinet. They would look to Tethrake’s system to implement management of pre-configured kits rather than just individual items, a common hospital workflow. To make this kit management system more functional, a POSITA would incorporate the substitution logic and shielding taught by Sriharto for the same reasons as in Ground 1. Vishik’s disclosure would confirm that using RFID data to manage substitutions was a known and available technique, reinforcing the motivation to combine these features.
  • Expectation of Success: The combination represented the application of known features from various RFID inventory systems to create a more comprehensive product. A POSITA would expect that integrating kit-based tracking (Tethrake), substitution logic (Sriharto, Vishik), and shielding (Sriharto) into a pharmaceutical cabinet (Danilewitz) would work for its intended purpose.

4. Key Claim Construction Positions

• Petitioner asserted that the invalidity grounds apply regardless of which party’s proposed constructions are adopted. However, in a related district court case, the parties proposed differing constructions for several key terms, including:
  • "Template"/"Pharmacy kit template": Petitioner proposed a broad definition (“A specification that defines the contents of a kit”), while Patent Owner proposed a more limiting one (“Predetermined specification of permissible pharmacy items that form the contents of a pharmacy kit”).
  • "Substitute first pharmacy item": Petitioner proposed a definition tied to the template (“Substitute refers to an available drug/pharmacy item/medication identified by the template as an alternative”), whereas Patent Owner argued for a plain and ordinary meaning.
  • These differences in construction, particularly regarding the role and definition of the "template," are central to defining the scope of the claimed verification and substitution process.

5. Relief Requested

• Petitioner requests the institution of an inter partes review and the cancellation of claim 14 of Patent 8,990,099 as unpatentable under 35 U.S.C. §103.