Specification Focus on one Embodiment Cannot Limit the Invention if Specification Contemplates Other Embodiments

Federal CircuitScriptpro Llc v. Innovation Assocs. (Fed. Cir. Aug. 5, 2016) (Before Dyk, Plager, and Taranto, J.) (Opinion for the court, Dyk, J.) Click Here for a copy of the opinion.

The patent at issue is directed to a “collating unit” used with a control center and an automatic dispensing system to store prescription containers after medication has been dispensed inside. The district court held that the specification was limiting and that the claims were invalid for lack of written description. The patent explains that the invention provides “a distinct advance in the art of automated storage units for use with static control centers” cooperating with automatic dispensing systems, explaining that after the medication is dispensed, a filled container is transported to a collating unit, where the system determines where to store the container by accounting whether previous containers for the patient have not yet been retrieved.

ScriptPro sued Innovation for patent infringement in 2006, and this is the second appeal addressing whether the claims of the patent at issue are invalid for written description. In the first appeal, the Court reversed the district court’s grant of summary judgment that the claims were invalid, finding that the district court had erroneously determined that the specification limited the invention to a collating unit requiring use of sensors to determine whether a holding unit was full. On remand, Innovation moved for summary judgment once again, arguing this time that the specification unambiguously limited the manner in which the collating unit achieved automated storage of prescription containers based on the availability of open storage and patient-identifying information. The claims, according to Innovation, broadly claimed a collating unit for “automatically storing” absent any limitation that made them commensurate with the invention. The district court granted Innovation’s motion, finding that the claims were broader than the description because they were not limiting the ways in which the containers were stored. ScriptPro appealed.

The Court reversed, agreeing with ScriptPro that the specification did not limit the invention to sorting and storing containers by patient-identifying information. The Court noted that the patent disclosed multiple problems that the invention solved, such as sorting containers in a holding area, collating multiple containers for a patient in one holding area, and grouping together multiple prescriptions for a single patient for easy retrieval. The Court held that not all of these solutions involved patient-identifying information, and in fact, the patent expressly stated that containers could also be sorted by “other predetermined storage scheme[s] without input or handling by the operator.” While much of the specification focuses on a scheme involving patient-identifying information, the Court held that a specification’s focus cannot be limited on one particular embodiment where it expressly contemplates other embodiments or purposes. The specification clearly disclosed that sorting and storage could be done in a number of ways, not only by patient-identifying information. The Court held that the district court erred when it determined that the specification limited the invention to storing prescription containers based on patient name and slot availability. Thus, the Court reversed the grant of summary judgment and remanded the case for further proceedings.

This case puts district courts at notice that a patent specification cannot limit an invention based on one particular embodiment that is the focus of the specification. Instead, a specification should be interpreted with respect to its entire disclosure, including any and all embodiments described or mentioned.

Lindsay Henner, Parker Hancock, and Puja Dave also contributed to this summary.

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Joseph Robinson

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

Joseph Robinson

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

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