Failed Attempt to Cover Explicity, What the Claims Already Covered Implicitly, Narrowed Their Scope

Automed Technologies, Inc., v. Knapp Logistics & Automation, Inc., [06-1587](May 31, 2007)[PER CURIAM, Mayer, Rader, Garbis] NON-PRECEDENTIAL The Federal Circuit affirmed summary judgment of non-infringement of U.S. Patent No. RE37,829 on a method of automatically filling prescription drug orders.
BRIEF: At issue was the district court's claim construction. Automed argued that the district court improperly imported limitations into the claims regarding the order in which vials are to be filled and labeled. The Federal Circuit examined the specification, which clearly implied an order to the steps, but said "because the portions of the specification discussed above purport to be describing a non-exhaustive set of embodiments, the claim language and the specification, without more, may have been insufficient to support the trial court’s claim construction." However, when the Federal Circuit we evaluate the prosecution history, it becomes evident that labeling before filling is indeed not encompassed by the claims. During prosecution Automed attempted to add a claim a claim expressly covering the steps in either order, but this claim was rejected for introducing new matter, and was withdrawn. The Federal Circuit said that: "Even if this action does not constitute a clear and unmistakable statement of disavowal giving rise to prosecution history estoppel as to the asserted claims, it would, nevertheless, be inconsistent in light of the concession to construe them in a manner that encompassed labeling before filling."
COMMENT: It is interesting that but for the failed attempt to present a claim clearly covering the process with different orders of steps, the Federal Circuit apparently would have construed to claims as broad enough to cover the process in any order of steps. In other words a failed attempt to cover explicitly, which the claims already covered implicitly, narrowed their scope.