ScriptPro, LLC v. Innovation Assocs., Inc., 762 F.3d 1355 (Fed. Cir. Aug. 6, 2014) (TARANTO, Bryson, Hughes) (D. Kan.: Murguia) (4 of 5 stars)

Federal Circuit reverses summary judgment of inadequate written description. The patent claimed a collating unit that dispenses pills into prescription bottles through multiple slots. Narrow claims also required a sensor to detect if a bottle was in the slot, but the asserted claims were not so limited. The “narrow issue” on appeal 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.” Slip op. at 7. 

The Federal Circuit held it did not. The specification’s description of embodiments with sensors did not necessarily exclude non-sensor embodiments. “It is common, and often permissible, for particular claims to pick out a subset of the full range of described features, omitting others. 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.” Id. at 7-8.

Moreover, the specification hinted that non-sensor embodiments were within the invention. It said “the collating unit of the present invention broadly includes … a plurality of sensors,” and “like ‘generally,’ the qualifier ‘broadly’ suggests that exceptions are allowed”—otherwise, there was no reason to include it. Id. at 8. Statements that the sensors performed particular functions could “be read as saying what the sensor does when it is used, not that it must be used.” Id. at 9. Other passages suggested the sensor was optional because they said what would happen “if” it were used and implied that other components could provide the same functionality. The claimed unit would also still fulfill the invention’s central purpose without a sensor.

Finally, the originally-filed claims included some that did not recite a sensor, further suggesting the invention was not limited to sensors. “When a specification is ambiguous about which of several features are stand-alone inventions, the original claims can help resolve the ambiguity, though even original claims may be insufficient as descriptions or be insufficiently supported by the rest of the specification.” Id. at 11.