Written Description
| 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.
Tags: abstract > claims as originally filed > specification > written description
