CAFC Reverses Summary Judgment for Lack of Adequate Written Description


In ScriptPro, LLC v. Innovation Associates, the Federal Circuit recently addressed the sufficiency of a disclosure vis-a-vis the patent claims issued.

The dispute arose when ScriptPro, LLC and ScriptPro USA, Inc. (collectively, “ScriptPro”) sued Innovation Associates, Inc, alleging infringement of claims 1, 2, 4, and 8 of U.S. Patent No. 6,910,601. The district court granted summary judgment for Innovation Associates, holding that the asserted claims were invalid under 35 U.S.C. § 112(a) because the specification describes a machine containing “sensors” and the claims at issue describe a machine that does not need to have “sensors.” ScriptPro appealed and the Federal Circuit, per Judge Taranto (with Judges Bryson and Hughes) reversed, finding summary judgement inappropriate.

Generally speaking, the ’601 patent describes as the invention a “collating unit,” which works with an “automatic dispensing system” that automatically fills and labels pill bottles or other prescription containers. The collating unit has a number of storage positions (e.g., slots) into which containers are placed as they emerge from the dispensing system. The claims at issue do not require “sensors,” although other claims of the ’601 patent do require the use of a “plurality of sensors.”

The specification of the ‘601 patent stated that “[t]he collating unit of the present invention broadly includes” several components…” (emphasis in the original)  The specification went on to include sensors. The term “broadly includes” became important in the eventual Federal Circuit decision.

The district court concluded that “no reasonable jury could find that the inventors were in possession of a collating unit that operated without sensors.” Furthermore, the district court rejected the deposition testimony of ScriptPro’s expert, Dr. Faddis, who stated that “it is clear from the written description of the ’601 Patent that sensors are not required to practice the claimed invention” because, “the collating unit could simply keep track, in memory, [of] what storage locations are available and simply route the appropriate prescriptions to these locations.”

Prior to addressing the substance of the sole issue presented, the Federal Circuit did note that “[i]t is not immediately apparent how the claim language, properly construed, requires any means of achieving that purpose.” The Court saved this issue for later, but raising doubts about the completeness, or perhaps enablement, of the claim will likely present further issues for the patentee when the case is remanded.

After explaining that the goal of the specification is to communicate the invention to one of skill in the art, the Federal Circuit explained that the specification does not preclude that the plaintiff could prove that it had disclosed to one of skill in the art an invention that did not incorporate sensors. Judge Taranto explained:

There is no sufficiently clear language in the specification that limits the invention to a collating unit with the (slot- checking) sensors. And considering what the specification does say, and what ScriptPro highlights as a central purpose of the claimed advance in technology, it cannot be said as a matter of law that claims 1, 2, 4, and 8 have a scope incommensurate with what is described as the invention.

With respect to the language of the specification indicating that certain elements were “broadly included,” the Federal Circuit explained that “broadly suggests that exceptions are allowed to the assertion of what occurs most….” Judge Taranto then went on to say:

When followed by a list of individual components of the subject preceding “broadly includes,” however, the phrase, which is unusual, does not plainly convey such an absolute meaning. Indeed, a less than absolute meaning tends to be suggested by the very fact that the word “broadly” has been included: what is the word doing in the phrase if not to moderate an otherwise-straightforward assertion that the inventive collating unit “includes” the enumerated items? We conclude that the “broadly includes”/“broadly comprises” phrases are less than a clear statement of limitation that a skilled artisan, if being reasonable, would have to read as requiring the slot sensors at issue.

The last part of the above quote seems to suggest that a reasonably skilled artisan would read the specification as requiring sensors, which is clearly not what the Federal Circuit held and is inconsistent with its discussion of “broadly” in the decision. This becomes clear when additional reasons why a skilled artisan would possibly understand sensor to be unnecessary are lumped together as illustrative of the flexibility of the specification. For example, Judge Taranto wrote about how sensors were described as a preferred embodiment and suggesting that, although desirable, the sensors were optional.

Ultimately, Judge Taranto concluded:

The claims to a sensorless collating unit cannot be said on summary judgment to be too broad given that disclosure. A skilled artisan may well be able reasonably to read the specification as teaching a specific means of achieving a central stated purpose of the asserted invention without the slot sensors.

The decision of the district court was reversed and remanded.


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