September 2014
Claims That Omit a Feature Described in the Specification Do Not Lack Written Description Support
| Judges: Taranto (author), Bryson, Hughes |
| [Appealed from D. Kan., Judge Murguia] |
In ScriptPro, LLC v. Innovation Associates, Inc., No. 13-1561 (Fed. Cir. Aug. 6, 2014), the Federal Circuit reversed the district court’s SJ decision that the asserted claims of U.S. Patent No. 6,910,601 (“the ’601 patent”) were invalid under 35 U.S.C. § 112, ¶ 1 (now 35 U.S.C. § 112(a)).
ScriptPro, LLC and ScriptPro USA, Inc. (collectively “ScriptPro”) sued Innovation Associates, Inc. (“Innovation Associates”) for infringement of the ’601 patent. The ’601 patent describes “a ‘collating unit,’ which works with an ‘automatic dispensing system’ that automatically fills and labels pill bottles or other prescription containers.” Slip op. at 2. According to the specification, the collating unit “broadly comprises” several components, including “a plurality of sensors” operable to determine the presence of a container within the collating unit. Id. at 4 (citation omitted). The specification also describes the “control system” of the collating unit, which determines in which holding area to store a container based on the presence of previous containers in that holding area, a process that may be accomplished by the sensors. Id. at 4-5. Each of the asserted claims recites a collating unit comprising several elements, but none requires sensors. Innovation Associates moved for SJ of invalidity under 35 U.S.C. § 112, ¶ 1, which the district court granted, concluding that the ’601 patent’s specification did not describe the subject matter of the asserted claims because they did not require sensors.
“A specification can adequately communicate to a skilled artisan that the patentee invented not just the combination of all identified features but combinations of only some of those features (subcombinations)—which may achieve stated purposes even without omitted features.” Slip op. at 8.
On appeal, the Federal Circuit reversed. The Court first recognized that, although the specification describes embodiments having sensors, “[i]t is common, and often permissible, for particular claims to pick out a subset of the full range of described features, omitting others.” Id. at 7-8. And, according to the Court, “[t]here is no sufficiently clear language in the specification that limits the invention to a collating unit with the . . . sensors,” and, thus, the asserted claims do not “have a scope incommensurate with what is described as the invention.” Id. at 8. The Court then pointed to language in the specification that suggested that the control system itself may use a memory that keeps track of containers without the confirming check of the sensors. Accordingly, the Court held that “the specification itself creates a genuine issue of material fact on . . . [whether] a trier of fact could find that a skilled artisan would understand the specification to disclose” alternative embodiments that do not require sensors. Id. at 11. Finally, the Court noted that some originally filed claims omitted the sensor requirement, which “fits the bases in the specification for deeming sensors to be merely optional.” Id. at 11-12.
The Court thus reversed the district court’s SJ decision that the asserted claims of the ’601 patent were invalid under § 112, ¶ 1, for lack of an adequate written description.
