On August 15, 2016, in an opinion by Judge Moore in ScriptPro LLC. V. Innovation Assocs., Inc. (ScriptPro I), the United States Court of Appeals for the Federal Circuit addressed the issue of how much written description support is needed under 35 U.S.C. § 112(a) (pre-AIA 35 U.S.C. § 112, first paragraph) for patent claims that are broader than the primary embodiments disclosed in the specification.[1] More specifically, the holding of ScriptPro I reinforces the importance of describing multiple embodiments within the specification, and alternatively including some broadening language within the specification to help defend broad claims against allegations that the specification lacks written description support.[2]

Background

In 2006, ScriptPro sued Innovation Associates, Inc. (“Innovation Associates”) for infringement of U.S. Patent No. 6,910,601 (“the ’601 patent”). The ’601 patent describes a collating unit used to store prescription containers after medication has been dispensed into the prescription containers by an automatic dispensing system (“ADS”).[3] The District Court granted summary judgment of invalidity for lack of written description support, stating that the specification describes only an algorithm for sorting the prescription containers based on patient names and the availability of open slots, and that the “claims are simply too broad to be valid.”[4] More specifically, the District Count agreed with Innovation Associates “that the specification ‘unambiguously limits the manner in which the collating unit achieves automated storage of prescription containers . . . based on the availability of an open storage position and patient-identifying information.’”[5]

The ’601 Patent

The specification of the ’601 patent describes a collating unit for use with an ADS that, according to a preferred embodiment, “automatically store[s] prescription containers . . . according to a storage algorithm that is dependent on a patient name for whom a container is intended and an availability of an open storage position in the collating unit.”[6] The specification further describes that:

“The ADS then dispenses a container containing the prescribed medicament. The container is transported to the . . . collating unit. . . . The control system next determines in which holding area to store the container. The selected holding area is dependent on whether previous containers for the patient have been stored in the collating unit and not yet retrieved. If containers for the patient have already been stored and not yet retrieved, the control system determines if the holding area has space to store the additional container. To accomplish this, the sensor positioned at the open end of the holding area determines if the holding area is full. If the holding area is not full, the container is stored in the holding area.”[7]

An operator can then retrieve a filled prescription by “input[ting] the identifying information for the prescription, such as the patient’s name, into the control system . . . which indicates the holding area location of the desired container.”[8]

Analysis

At issue in the appeal was whether the specification provides adequate written description support to broadly claim “maneuver the containers . . . into the plurality of holding areas,” as recited in representative claim 8, without further limiting the process by which the holding areas are chosen. Reviewing the issue de novo, the Federal Circuit found that there was adequate written description support for the broader claims noting “that the specification does not limit the claimed invention to sorting and storing prescription containers by patient-identifying information.”[9]

In reaching this conclusion the Federal Circuit noted that there were numerous teachings within the specification of the ’601 patent indicating that the inventors of the ’601 patent had possession of the broader claimed subject matter.[10] More specifically, the Federal Circuit noted that even though many of the problems described to be solved by the ’601 patent “involve sorting prescription containers by patient-identifying information, not all of them do.”[11] For example, the Federal Circuit noted that solving the problem of how to “store more than one container in a holding area”[12] “does not necessarily require that all the containers in that holding area be for the same patient. The prescription containers could be sorted into different holding areas based on the medicament dispensed”[13]. More tellingly, the Federal Circuit noted that the specification of the ’601 patent expressly describes that prescription containers can be sorted and stored “by patient, prescription, or other predetermined storage scheme without input or handling by the operator.”[14] The Federal Circuit further noted that the originally filed claims, which are part of the specification, “were not limited to sorting and storing prescription containers by patient-identifying information.”[15] For example, original claim 8 includes the identical guide arms limitation (“a plurality of guide arms mounted between the infeed conveyor and the collating unit conveyor and operable to maneuver the containers from the infeed conveyor into the plurality of holding areas”) as in the disputed claim 8 without further limiting how the holding areas are chosen.

In summary, the Federal Circuit reiterated 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. 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.”[16]

Practice Recommendation

When drafting patent applications, patent practitioners should review the scope of the filed (or anticipated) claims relative to the disclosed embodiments to ensure that there is adequate support for claims that are broader than the disclosed embodiments. When the disclosed embodiments are somewhat narrowly focused on one particular embodiment (e.g., the sorting of prescription containers based on patient-identifying information of the ’601 patent), it may be prudent to include at least one additional embodiment that can further support the broader claims. In the absence of an additional embodiment, at least some broadening language in the specification is recommended (e.g., the “other predetermined storage scheme” language of the ’601 patent). Following such practices would do much to defend broad claims against allegations that the specification lacks written description support.