August 15, 2016

Broad Original Claims Prevent Invalidity for Lack of Adequate Written Description

By Bryan K. Wheelock, Principal

In Scriptpro LLC, v. Innovation Associates, Inc., [2015-1565] (August 15, 2016), the Federal Circuit reversed Summary Judgment that claims 1, 2, 4, and 8 of U.S. Patent No. 6,910,601 were invalid for lack of written description.  The patent was directed to a “collating unit” used with a control center and an automatic dispensing system (“ADS”) to store prescription containers after a medication has been dispensed into the containers.

At issue was whether the patent’s specification limits the invention to a collating unit that sorts and stores prescription containers by patient-identifying information and slot availability.  In the decision appealed from, the district court determined that the specification was limiting and that the asserted claims, which are not so limited, are invalid for lack of written description.

The Federal Circuit agreed with the Patent Owner that the specification does not limit the claimed invention to sorting and storing prescription containers by patient-identifying information.  The patent expressly states that containers can be sorted and stored “by patient, prescription, or other predetermined storage scheme without input or handling by the operator.”  Consistent with this express disclosure, the original claims filed as part of the application from which the patent issued were not limited to sorting and storing prescription containers by patient-identifying information.  Rather, these original claims, like the asserted claims, recite a collating unit that automatically stores prescription containers dispensed by an ADS.  As we have explained, “[o]riginal claims are part of the specification and in many cases will satisfy the written description requirement.”

A specification’s focus on one particular embodiment or purpose cannot limit the described invention where that specification expressly contemplates other embodiments or purposes.  This is especially true in cases such as this, where the originally filed claims are not limited to the embodiment or purpose that is the focus of the specification.  Similarly, mere recognition in the specification that an aspect of a prior art system is “inconvenient” does not constitute “disparagement” sufficient to limit the described invention — especially where the same specification expressly contemplates that some embodiments of the described invention incorporate the “inconvenient” aspect.

The Federal Circuit said that it is certainly reasonable that different claims could be directed to covering different aspects of the invention.  Not every claim must contain every limitation or achieve every disclosed purpose.  The original claims did not include a requirement that sorting and storing be done by use of patient-identifying.  The Federal Circuit said that the district court erred when it determined that the specification limited the invention to storing prescription containers based on patient name and slot availability.

The Federal Circuit concluded that because the specification does not limit the scope of the invention in the manner the district court described, the asserted claims are not invalid for lacking such a limitation.