ScriptPro, LLC. v. Innovation Associates, Inc.
2015-1565, Decided: August 15, 2016
Will a specification’s description of an embodiment as “especially inconvenient” render a claim invalid when it includes the “inconvenient” embodiment? In a §112 written description dispute involving machines that organize prescription medication containers, the Federal Circuit said no.
This case began a decade ago when ScriptPro sued Innovation Associates for infringing Patent No. 6,910,601—a patent directed to a “collating unit” used with an automatic dispensing system to store filled prescription containers. In the ‘601 patent’s main embodiment, filled prescription containers are stored according to a storage algorithm that depends on the name of the patient for whom the prescription container is intended. The specification also says that prior art systems that store containers “based on a prescription number associated with the container, as opposed to storing the container based on a patient name” are “especially inconvenient.”
At the trial court, Innovation focused on the above language, arguing that since the specification “unambiguously limits the manner in which the collating unit achieves automated storage of prescription containers . . . based on the availability of an open storage position and patient [name],” the asserted claims—which are not limited to storing containers based on patient name—fail to meet the written description requirement. Relying on the precedent set by the Gentry Gallery and ICU Medical written description cases, the district court agreed and concluded: “[w]ithout including a limitation to address the storage by patient name, the claims are simply too broad to be valid.”
The Federal Circuit acknowledged that broadly worded claims will fail the written description requirement if the specification clearly shows that the inventor did not “have possession” of the claimed subject matter as of the filing date, but held that the specification did not limit the scope of the invention in the manner the district court described. This holding was based on three main points.
First, the panel explained that even though the specification focuses mainly on sorting containers by patient name, it also discloses that prescription containers could be sorted into different holding areas based on the medication type (for instance, all containers for a specific antibiotic could be sorted into the same holding area, regardless of the patient for whom it is prescribed), by the date the prescription was filled, or some other sorting scheme. By contrast, the patents at issue in Gentry Gallery and ICU Medical expressly limited the inventions in a way that their claims did not.
Second, the Court noted that the original claims filed as part of the application for the ‘601 patent did not require prescription containers to be sorted by patient name, explaining that its earlier Crown Packaging and Ariad cases stand for the proposition that “[o]riginal claims are part of the specification and in many cases will satisfy the written description requirement.”
Finally, the opinion said that mere recognition in the specification that an aspect of a prior art system is “inconvenient” does not constitute “disparagement” sufficient to limit the described invention—especially (as in this case) where the same specification expressly states that some embodiments incorporate the “inconvenient” aspect.