Patent Law Practice Center

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.”

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Nintendo Prevails at ITC in Wii Case

On Sept. 12, 2013, Nintendo won a patent infringement case brought at the International Trade Commission by Creative Kingdoms. The commission found that Nintendo’s Wii and Wii U systems do not infringe Creative Kingdoms’ patents. The commission also found that Creative Kingdoms’ patents are invalid.

On April 27, 2011, the Commission instituted the investigation based on a complaint filed by Creative Kingdoms, LLC of Wakefield, Rhode Island and New Kingdoms, LLC of Nehalem, Oregon. The complaint alleged violations of Section 337 by reason of infringement of certain claims of U.S. Patent Nos. 7,500,917 (“the ‘917 patent”), 7,896,742 (“the ‘742 patent”), 7,850,527 (“the ‘527 patent”), and 6,761,637 (the ‘637 patent). The ‘637 patent was subsequently terminated from the investigation. On August 31, 2012, the ALJ issued a final Initial Determination (ID) finding no violation of section 337 by Nintendo.

The ALJ found that the accused products infringe sole asserted claim 24 of the ‘742 patent, but that the claim is invalid for failing to satisfy the enablement requirement and the written description requirement under 35 U.S.C. § 112. The ALJ found that no accused products infringe the asserted claims of the ‘917 patent and the ‘527 patent. The ALJ also found that the asserted claims of the ‘917 and ‘527 patents are invalid for failing to satisfy the enablement requirement and the written description requirement. The ALJ concluded that complainant has failed to show that a domestic industry exists in the United States that exploits the asserted patents as required by 19 U.S.C. § 1337(a)(2). The ALJ did not make a finding regarding the technical prong of the domestic industry requirement with respect to the asserted patents. The ALJ also did not making a finding with respect to anticipation and obviousness of the asserted patents.

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Written Description Requirement: Ariad v. Eli Lilly

I recently had the opportunity to listen in on PLI’s one hour briefing titled Ariad v. Eli Lilly and the Separate Written Description Requirement. This briefing was conducted by Vera M. Elson, a partner in the international law firm McDermott Will & Emery and Burt Magen, a partner in the law firm Vierra Magen Marcus & DeNiro LLP.  Ms. Elson focuses her practice on intellectual property trial and counseling for her firm’s technology clients.  Mr. Magen focuses his practice on intellectual property counseling and patent prosecution for his firm’s technology clients.

Elson began by explaining that pre-Ariad § 112, ¶1 focused on two underlying purposes behind a separate written description.  The first was Possession:  “The purpose of the written description requirement is broader than to merely explain how to make and use; the applicant must also convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention.” Vas-Cath, Inc. v. Mahurkar, 935 F. 2d 1555 (Fed. Cir. 1991).  In other words, what you claimed you actually invented.  The second was Meaningful Disclosure: “A patent specification must convey the detailed identity of an invention, thereby serving a teaching function as a quid pro quo in which the public is given meaningful disclosure in exchange for being excluded from practicing the invention for a limited period of time. Univ. of Rochester v. G.D. Searle & Co., Inc. 358 F. 3d 916, 921 (Fed. Cir. 2004).  That is to say, you actually invented what you say you invented and you taught it to us.  But, everything came to a head with the Ariad case. (more…)