The Federal Circuit recently reversed a district court’s grant of summary judgment of invalidity for lack of written description under 35 U.S.C. § 112. The Federal Circuit held that the district court had incorrectly determined that one of the disclosed embodiments imposed limits on the scope of the invention. The Federal Circuit based its decision on the disclosures about the variety of problems solved by the invention and the originally filed claims.
The patent at issue, U.S. Patent No. 6,910,601, discussed a “collating unit,” which corrals prescription containers after they have been filled with a prescription by an automatic dispensing system. The asserted claims were directed to such a collating unit, but did not recite a limitation for how the containers were sorted and stored. The district court determined that the ’601 patent disclosed only a collating unit that used patient-specific information for sorting and storing the containers. Citing Gentry Gallery and ICU Medical, the district court ruled that the claims were invalid for being broader than the disclosure.
The Federal Circuit disagreed. That court drew a distinction between the disclosures in the ’601 patent and the patents involved in Gentry Gallery and ICU Medical. In Gentry Gallery and ICU Medical, “the specifications clearly limited the scope of the claims in ways that the claims clearly did not.” But, even though “much of the ’601 patent’s specification focuse[d] on” a type of embodiment using patient-specific information, the Federal Circuit held that the ’601 patent was not so limited. Rather, the specification disclosed other problems which the invention could solve by using different types of information, such as the type of medication or the date the prescription is filled. Additionally, the Federal Circuit found support in the originally-filed claims. As part of the disclosure, these claims supported the broader invention because they, too, were not limited to embodiments relying on patient-specific information.
ScriptPro LLC v. Innovation Assocs., Inc., No. 2015-1565, 2016 WL 4269920 (Fed. Cir. Aug. 15, 2016).
[Moore (opinion), Taranto, and Hughes]