Addressing the interplay between the written description and claim construction, the US Court of Appeals for the Federal Circuit reversed the district court, finding that the specification did not clearly limit the scope of the invention in a way that invalidated the broader claims. Scriptpro, LLC v. Innovation Associates, Inc., Case No. 15-1565 (Fed. Cir., Aug. 15, 2016) (Moore, J).
Scriptpro sued Innovation alleging infringement of its patent directed to a collating unit for storing containers of dispensed prescription medication. Innovation twice moved for summary judgment, arguing that the claims omitted an essential feature and thus lacked adequate written description under 35 USC § 112. The district court granted the first motion, and Scriptpro successfully appealed (IP Update, Vol. 17, No. 9). On remand, Innovation moved for summary judgment that the claims lacked a different essential feature. The district court again granted the motion, and Scriptpro appealed.
In the second appeal, Innovation argued that the district court correctly held that the specification unambiguously limited the invention to storage of prescription containers based on patient-identifying information, while the claims were much broader and thus not commensurate with the invention. The Federal Circuit disagreed, finding that the specification and the original claims suggest sorting and storing containers based on factors other than patient-identifying information. While the Court acknowledged that much of the specification focused on patient-identifying information, it explained that “a specification’s focus on one particular embodiment or purpose cannot limit the described invention where that specification expressly contemplates other embodiments or purposes.” In this case, the specification described multiple purposes for the invention: “[n]ot every claim must contain every limitation or achieve every disclosed purpose.” Similarly, the Court found that describing an aspect of a prior art system as “inconvenient” does not rise to the level of “disparagement” sufficient to limit the described invention, in particular where some embodiments of the invention include the same aspect.
Finally, the Court noted that the patent’s express disclosure of various ways to sort and store containers distinguished this case from ICU Medical (IP Update, Vol. 12, No. 3) and Gentry Gallery, where the specifications clearly limited the scope of the inventions in ways that the claims clearly did not. Accordingly, the Court again reversed the district court’s grant of summary judgment and remanded for further proceedings.