Scriptro v. Innovation Asso.: Written Description Requirement in Summary Judgment

Category: 112 - Written Description
By: Jesus Hernandez, Blog Editor/Contributor  
TitleScriptro, LLC v. Innovation Asso., Inc., No. 2013-1561 (Fed. Cir. Aug. 6, 2014).
IssueWe have a narrow issue: 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 [in a summary judgement motion].
Scriptro, LLC at *7 (text added).
Holding[T]he specification itself creates a genuine issue of material fact on this question [that would necessitate denial of summary judgment]: 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.
Id. at *11(text added).
Procedural HistoryPlaintiffs ScriptPro, LLC and ScriptPro USA, Inc. (collectively, ScriptPro) sued Innovation Associates, Inc, alleging infringement of claims 1, 2, 4, and 8 of U.S. Patent No. 6,910,601. The district court granted summary judgment for Innovation Associates, holding that the asserted claims were invalid under 35 U.S.C. § 112, ¶ 1 (now § 112(a)), which requires, for a claim to be valid, that the patent’s specification describe the subject matter defined by the claim. The court rested its 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 appeals.
Scriptro, LLC at *2 (internal citations omitted).
Legal Reasoning (Taranto, Bryson, Hughes)
Claim at IssueThe claims included in the original application issued without change. […] [C]laim 1 read[s]:

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.

Scriptro, LLC at *3.
“collating unit” require sensors in specification, but not the claimsThe issue before us involves “sensors.” Like the just- quoted original claim 1, the claims asserted here do not require “sensors.” Other claims of the ’601 patent do require the use of a “plurality of sensors” to (with minor variations in the language used) “sense the presence of the containers stored in the collating unit.” […] 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.” […] The patent states: “The plurality of sensors”—at the holding areas—“are operable to determine the presence of a container within the collating unit.” […]
Id. at *4 (internal citations omitted).
Legal Standard - Written DescriptionOn the sole issue presented, the starting point is that 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. 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 (internal citations omitted).
"collating unit" not expressly limited to requiring sensorsThe 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). There is no sufficiently clear language in the specification that limits the invention to a collating unit with the (slot- checking) sensors. And considering what the specification does say, and 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. 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.
Scriptro, LLC at *8.
Specification Suggests Sensors are OptionalThe 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. Id. at col. 12, lines 30-33 (emphasis added, figure component numbers omitted). Relatedly, it describes such a sensor as a “security feature” to “determine if any container is located in the [holding] area.” Id. at col. 14, lines 32-37 (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.
Id. at *9-10.
For the foregoing reasons, we reverse the district court’s grant of summary judgment that claims 1, 2, 4, and 8 of the ’601 patent are invalid under 35 U.S.C. § 112 for lack of an adequate written description.
Scriptro, LLC at *12.
 Image Attribution Statement: FIG. 1 of U.S. Pat. No. 6,910,601.
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