ScriptPro, LLC v. Innovation Associates, Inc.

In reviving a patent owner’s patent infringement lawsuit, the U.S. Court of Appeals for the Federal Circuit reversed a district court’s summary judgment that a patent was invalid for lack of written description, determining that the absence of sensors from the claims at issue did not mean that those claims were unsupported by the written description that included sensors.  ScriptPro, LLC v. Innovation Associates, Inc., Case No. 13-1561 (Fed. Cir., Aug. 6, 2014) (Taranto, J.).

ScriptPro sued Innovation Associates alleging infringement of its patent directed to an automatic dispensing system that fills and labels pill bottles and other prescription containers. The patent emphasized its patient-specific identification and collating, noting that prior art stored containers using a container-specific identifier. The district court granted summary judgment in favor of the defendant, holding that the claims of the patent were invalid under § 112 ¶ 1 (now § 112(a)). According to the district court, the specification described an invention containing “sensors” used to determine whether a particular holding area was full, while the claims at issue were directed to an invention that did not require “sensors.” ScriptPro appealed.

The issue before the Federal Circuit was whether the absence of sensors from the claims at issue means that those claims are unsupported by the written description as a matter of law.  The Court analyzed the patent’s specification, noting that the description of embodiments having sensors found in the specification did not necessarily mean that the only invention described included sensors. The Court emphasized that a specification can adequately communicate to a skilled artisan that the patentee invented not just the combination of all identified features but combinations and subcombinations of only some of those features, which may achieve stated purposes even without omitted features.

The Federal Circuit referenced the portion of the specification that stated the invention “broadly includes” a plurality of sensors.  Such qualifiers suggest that exceptions are allowed to the assertion of what occurs most, or perhaps even almost all, of the time. The Court determined that phrases such as “broadly includes” and “broadly comprises” are not clear limitations that a skilled artisan, if being reasonable, would have to read as requiring slot sensors.

The Federal Circuit further noted that the specification indicated that, while desirable, the sensors were an optional feature of the invention.  As the Court explained references to the sensor’s functionality tended to suggest that its absence would not prevent the system from working.  Given the disclosure in the specification, the Federal Circuit determined that claims to a sensorless machine could not be said on summary judgment to be too broad and that a skilled artisan may be able to reasonably read the specification as teaching a specific means of achieving a central stated purpose without requiring sensors.