United States: ScriptPro’s Claims Not A Prescription For Invalidity

The recent Federal Circuit case ScriptPro, LLC v. Innovation Associates, Inc., No. 2013-1561 (Fed. Cir. Aug. 6, 2014), reversed the trial court's summary judgment invalidity determination under 35 U.S.C. § 112, ¶1 (now § 112(a)).  For a claim to be valid, the patent's specification must describe the subject matter defined in the claims.  See Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).  Typically, § 112, ¶1 is used to invalidate claims where an added claim element does not have adequate support in the written description to show possession as of the filing date.  In somewhat the other direction, the district court in ScriptPro rested its invalidity holding on a single conclusion: "that the specification describes a machine containing 'sensors,' whereas the claims at issue claim a machine that need not have 'sensors.'" ScriptPro, slip op. at 2 (citing ScriptPro LLC v. Innovation Assocs., Inc., No. 06-2468, 2012 WL 2402778 (D. Kan. June 26, 2012)).  The Federal Circuit determined that claims lacking a fully described element from the specification do not, as a matter law, require a holding of invalidity. CITE

U.S. Patent No. 6,910,601 (the '601 patent) relates to a machine for sorting pills, and automatically filling and labeling the bottles for individual patients.  The invention was touted as enhancing the accuracy and efficiency of pharmacies generally, and, as a primary goal, allowing them to collate and store multiple containers for a patient within the same area.  Id. at 2-3 (citing '601 patent, 6:21-38).  Claim 1 reads:

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.

'601 patent, 15:57-16:2.  Absent from the above claim, or any asserted claim in the '601 patent, is a "sensors" element.  See ScriptPro, slip op. at 4.  Yet, according to the specification, "[t]he collating unit of the present invention broadly includes" several components, including "a plurality of sensors, and a control system."  '601 patent, 4:26-29 (emphasis added); see also id., Abstract, 5:52-59 ("[T]he sensor positioned at the open end of the holding area determines if the holding area is full.").  The examples of the collating units, moreover, all included such sensors. The machine is depicted in Fig. 1, below, with sensors at 26:

ScriptPro sued Innovation Associates for patent infringement.  The district court construed claim terms and entertained cross-motions for summary judgment.  The court found that the specification indisputably limited the invention to machines employing sensors that determine whether holding areas are full, such that "no reasonable jury could find that the inventors were in possession of a collating unit that operated without sensors."  ScriptPro, 2012 WL 2402778, at *7.  Importantly, the court rejected as "entirely conclusory" the expert testimony opining that, based on the written description, the sensors were not required to practice the claimed invention.  Id.  The trial court granted summary judgment of invalidity, holding as a matter of law that the patent's specification does not describe the subject matter of the asserted claims, which do not require sensors.  See ScriptPro, slip op. at 6.

In a unanimous Federal Circuit opinion, the authoring Judge Taranto identified the narrow the issue on review: "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."  Id. at 7.  The court taught with respect to this sole issue that

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.

, slip op. at 7-8 (citations omitted).  According to the Federal Circuit, on the facts of the case, the specification's description of embodiments as having sensors for providing information about slot allocations "does not necessarily mean that the only described invention is a collating unit with such sensors."  Id. at 7 (emphasis added). 

The court articulated numerous reasons for its determination.  First, the specification was found to have "no sufficiently clear language" limiting the invention to only a collating unit with sensors.  Id. at 8.  Even the specification's declaration that the present invention "broadly comprises" sensors as part of the collating unit was not enough to support the summary judgment conclusion.  Id. at 8 ("Like 'generally,' the qualifier 'broadly' suggests that exceptions are allowed to the assertion of what occurs most (perhaps even almost all) of the time.").  Second, according to the court, "the specification in describing the preferred embodiment, elsewhere positively suggests that slot sensors are an optional, though desirable feature of the contemplated collating unit."  Id. at 9.  Third, a lack of sensors was not deemed incommensurate with the central purpose of the invention, i.e., correlating a specific holding area to a specific patient.  Id. at 8.  Fourth, ScriptPro's expert report suggested that a collating unit could operate without sensors, keeping track instead with computer memory what storage locations are available.  Id. at 11.  Fifth, the court noted that, as filed, the original claims also lacked sensors, which could serve to indicate that they have always been "merely optional."  Id. at 11-12 ("When a specification is ambiguous about which of several features are stand-alone inventions, the original claims can help resolve the ambiguity . . . ."). 

Accordingly, the court held that the patent's specification did not preclude, as a matter of law, ScriptPro from establishing that the written description conveys to one of skill that the inventors were in possession of the sensorless inventions of claims 1, 2, 4, and 8.  The court reversed the summary judgment determination.

It is well-understood that claims should be limited to the supporting disclosure.  But this case reaffirms that applicants can choose to claim only a subset of the full array of described features, leaving others unclaimed.  In other words, while there may be an adequate description for an entire combination of elements, claiming mere subcombinations of the identified features does not necessarily render a claim invalid under § 112, as a matter of law.  It is advisable, notwithstanding, for practitioners to clearly and adequately describe not just the combination of all elements, but also embodiments that may have only some elements deemed optional.

This article previously appeared in Full Disclosure Patent Newsletter, September 2014.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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