Written Description

Lee Wright | August 20, 2014

ScriptPro, LLC v. Innovation Associates, Inc.

August 6, 2014

Panel: Taranto, Bryson and Hughes. Opinion by Taranto

Summary:

ScriptPro sued Innovation Associates, Inc, alleging infringement of claims 1, 2, 4, and 8 of U.S. Patent No. 6,910,601. Innovation Associates counterclaimed on various grounds, including invalidity under 35 U.S.C. § 112.

Shortly after suit filed, Innovation Associates initiated an inter partes reexamination of the ’601 patent at the PTO, and the district court stayed proceedings in this case to await the PTO’s determination.

The PTO completed its reexamination of the ’601 patent.  It confirmed amended claims 1 and 2 (amended in ways not relevant to this appeal).  It confirmed claim 4, formerly a dependent claim, as rewritten to be an independent claim, but not otherwise amended. And it confirmed claim 8 without amendment.  The amendments are not relevant to the issues on appeal.

Proceedings in the infringement suit resumed.

The district court granted summary judgment for Innovation Associates, holding that the asserted claims were invalid under 35 U.S.C. § 112.

The district court rested its holding on a single conclusion—that the specification describes a machine containing “sensors,” whereas the claims at issue do not claim a machine having “sensors.”

ScriptPro appealed.

The district court granted summary judgment of invalidity on the ground that the patent’s specification does not describe the subject matter of the asserted claims, which do not require sensors.  This is the only issue on appeal.

The district court agreed with Innovation Associates that the specification indisputably limits the invention to a collating unit that uses sensors to determine whether a particular holding area is full when selecting a holding area for storage of a prescription container.

The district court concluded “no reasonable jury could find that the inventors were in possession of a collating unit that operated without sensors.”

The district court decision is reversed.

Discussion: 

The issue is narrow:  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.

“Compliance with the written description requirement is a question of fact,” and summary judgment is proper if and only if “no reasonable fact finder could return a verdict for the non-moving party” on the issue.  PowerOasis, Inc. v. T–Mobile USA, Inc., 522 F.3d 1299, 1307 (Fed. Cir. 2008).

For example, original claim 1 read:

1.  A collating unit for automatically storing prescription containers dispensed by an automatic dispensing system, the collating unit comprising:

a storage unit for storing the containers delivered by an infeed conveyor;

a plurality of holding areas formed within the storage unit for holding the containers;

a plurality of guide arms mounted within the storage unit and operable to maneuver the containers from the infeed conveyor into the plurality of holding areas; and

a control system for controlling operation of the infeed conveyor and the plurality of guide arms.

The claims of the patent include claims that do not require “sensors” such as claim 1 and other claims that do require sensors, such as claim 9, which recites a plurality of sensors mounted on the frame and operable to sense the presence of stored containers.

According to the specification “[t]he collating unit of the present invention broadly includes” several components: “an infeed conveyor, a base, a collating unit conveyor, a frame, a plurality of holding areas, a plurality of guide arms, a plurality of sensors, and a control system.” (emphases added).

Similarly, the Abstract indicates that the invention “broadly comprises” several components, including “a plurality of sensors”.

The patent describes how, “[i]n operation,” when a container for a particular patient comes out of the dispensing system, “[t]he control system” of the collating unit 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.

In the specification, “The plurality of sensors”—at the holding areas—“are operable to determine the presence of a container within the collating unit.”

It is common, and often permissible, for particular claims to pick out a subset of the full range of described features, omitting others. E.g., Crown Packaging, 635 F.3d at 1380-81; Revolution Eyewear, Inc. v. Aspex Eyewear, Inc., 563 F.3d 1358, 1366-67 (Fed. Cir. 2009); cf. Phillips v. AWH Corp., 415 F.3d 1303, 1326-27 (Fed. Cir. 2005).  The Court held that 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.

The specification in this case does not preclude that result as a matter of law.  ScriptPro could establish that the written description conveys to the relevant skilled artisan that “the inventor[s] actually invented the invention claimed” in claims 1, 2, 4, and 8.  Ariad Pharm., Inc.v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010).

The Court also noted with the specification’s description of embodiments having sensors for providing information about slot allocations and availability does not necessarily mean that the only described invention is a collating unit with such sensors.

Support from the Abstract

Neither the specification’s declaration that “[t]he collating unit of the present invention broadly includes . . . a plurality of sensors” nor the “broadly comprises” language of the Abstract is enough to support the invalidity ruling on summary judgment.

The Court construed the term “broadly” to qualify the assertion of inclusionLike “generally,” the qualifier “broadly” suggests that exceptions are allowed to the assertion of what occurs most (perhaps even almost all) of the time.

The combination “broadly includes” might have a more absolute meaning when followed by an enumeration of examples of what precedes the phrase.  The Court questions that if a less than absolute meaning tends to be suggested by the very fact that the word “broadly” has been included, what is the word doing in the phrase if not to moderate an other wise straight forward assertion that the inventive collating unit “includes” the enumerated items?

The Court concludes that the “broadly includes”/“broadly comprises” phrases are less than a clear statement of limitation that a skilled artisan, if being reasonable, would have to read as requiring the slot sensors at issue.

Support from the Specification

The Court discusses the specification statement that “[t]he plurality of sensors are operable to determine the presence of a container” in the collating unit, by its terms says what the itemized sensors can do when they are present.  It does not declare that they must be present.  Seemingly more helpful to the invalidity challenge, the specification says that “[t]o accomplish” the determination whether a slot has space “the sensor positioned at the open end of the holding area” detects whether the area is full.  But that too might be read as saying what the sensor does when it is used, not that it must be used.

Importantly, the passages quoted above do not stand alone. The specification, in describing preferred embodiments, elsewhere positively suggests that slot sensors are an optional, though desirable, feature of the contemplated collating unit.  The specification says: “[i]f the sensor . . . does confirm the presence of the container,” the collating unit selects the next empty holding area for storage (emphasis added). Relatedly, it describes such a sensor as a “security feature” to “determine if any container is located in the [holding] area.” (emphasis added).

Those references to the sensor’s functionality tend to suggest that its absence would not prevent the system from working—that whether the holding area is full can first be determined through other means and then later “confirmed” by the sensors. The same suggestion is present in the passage referring to use of sensors to determine whether the collating unit should display an “error message,” which seems to presuppose an independent source of the information for  comparison.  Those passages seem to provide a basis for a skilled artisan to read the specification as characterizing the slot sensors as a desirable, but ultimately optional, feature of the invention.

The Court notes that the suggestion in the particular language just quoted aligns with the disclosure’s explanation of functions sought to be achieved by the invention.  The claims to a sensorless collating unit cannot be said on summary judgment to be too broad given that disclosure.  A skilled artisan may well be able reasonably to read the specification as teaching a specific means of achieving a central stated purpose of the asserted invention without the slot sensors.

The Court states the specification describes the “control system” as initially selecting a slot for storage of a particular prescription container based on the patient’s identity—which might well be understood to suggest a computer memory in the control system that keeps track of slot-patient assignments.  Similarly, the specification describes the control system’s receipt of information about what containers have been retrieved from particular slots. Even without regard to whether the control system is preprogrammed to know the capacity of particular slots, those disclosures might be understood to show use of the control system itself to achieve the highlighted functionality without the “confirm[ing]” check of slot sensors.  Indeed, the specification, in describing a preferred embodiment, says that “[a]s containers are stored information in the memory,” so that an operator “may at any time determine which containers are currently stored in the collating unit and the location of the containers . . . .”.

The Court concludes that in any event, the specification itself creates a genuine issue of material fact on this question: a trier of fact could find that a skilled artisan would understand the specification to disclose a system that relies on the computer memory, without sensors, to fulfill the central purpose of keeping track of slot use by particular customers and slot availability, with sensors optionally providing confirmation only.

Support from the Claims

The Court notes:  as originally filed, the application that matured into the ’601 patent had claims that did not include a requirement of sensors.  When a specification is ambiguous about which of several features are stand-alone inventions, the original claims can help resolve the ambiguity, even if original claims may be … insufficiently supported by the rest of the specification. See Crown Packaging, 635 F.3d at 1380 (“Original claims are part of the specification and in many cases will satisfy the written description requirement.”); LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1346 (Fed. Cir. 2005) (noting “that an originally filed claim can provide the requisite written description to satisfy section 112”).

Here, the claims included in the original application issued without change.  The original claims omit a sensor requirement, an omission that fits the basis in the specification for deeming sensors to be merely optional.

There were some arguments from Innovation Associates concerning the abstract, which were not discussed in the decision.  The Court noted that reliance on the specification, apart from the claims, was sufficient precludes summary judgment of inadequate written description support of claims not requiring sensors.

Summary of the Court’s decision:  There is no sufficiently clear language in the specification that limits the invention to a collating unit with the (slotchecking) sensors.  Considering what the specification does say, and considering what ScriptPro highlights as a central purpose of the claimed advance in technology, it cannot be said as a matter of law that claims 1, 2, 4, and 8 have a scope incommensurate with what is described as the invention.

There was an unsworn expert witness, who indicated that a skilled artisan would read the specification to disclose a “collating unit [that] could simply keep track, in memory, [of] what storage  locations are available and simply route the appropriate prescriptions to these locations.”

Innovation acknowledged that the district court had considered the expert’s opinion and did not argue that its decision to consider the expert’s opinion was an abuse of discretion.

Take Away:

Written description can come from the originally filed abstract, specification and/or claims.

The qualifier “broadly” may be broadly interpreted to be as broad as “generally.”

The phrases “broadly includes”/“broadly comprises” may not be a clear statement of limitation.

Be careful with statements concerning “the central purpose of the claimed advance in technology.”  They may be helpful or troublesome for patentee.

Full Opinion

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