Earlier this month in ScriptPro LLC v. Innovation Associates, Inc., the Federal Circuit overturned a district court’s grant of summary judgment based on a lack of written description under 35 U.S.C. § 112. The device patent at issue, ScriptPro’s U.S. Patent No. 6,910,601 (“the’601 patent”), “is directed to a ‘collating unit’ used with a control center and an automatic dispensing system…to store prescription containers after a medication has been dispensed into containers." The district court determined that the “patent’s specification limits the invention to a collating unit that sorts and stores prescription containers by patient-identifying information and slot availability,” and that, therefore, the claims, which contained no such limitation, were invalid for lack of written description.

The Federal Circuit concluded that the specification does not limit the claimed invention to use of a collating unit that sorts and stores prescription containers by patient-identifying information. In reaching this conclusion, the Federal Circuit found several aspects of the intrinsic evidence persuasive.

First, the court explained that the specification describes multiple problems that the invention solves, and that the solutions to the problems included but were not limited to sorting and storing by patient-identifying information. The Court found it particularly persuasive that the specification stated that sorting and storing could be done “by patient, prescription, or other predetermined storage scheme. …”  Second, the court looked to the originally filed claims of the application that led to the ’601 patent, which are considered part of the patent’s written description and which were not limited to sorting and storing based on patient-identifying information.

Furthermore, the court concluded that while the specification focused on “embodiments employing a sorting and storage scheme based on patient-identifying information,” this focus did not limit the claims to such embodiments. As the court explained:

[A] specification’s focus on one particular embodiment or purpose cannot limit the described invention where that specification expressly contemplates other embodiments or purposes. This is especially true in cases such as this, where the originally filed claims are not limited to the embodiment or purpose that is the focus of the specification.

Finally, the court rejected the argument that the invention was limited because the specification characterized prior art automated control centers that stored prescription containers based on prescription number as “inconvenient for several reasons.” The court explained 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.”  The Federal Circuit distinguished this case from Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473 (Fed.Cir. 1988) and ICU Medical, Inc. v. Alaris Medical Systems, Inc., 558 F.3d 1368 (Fed. Cir. 2009) since in those cases “the specifications clearly limited the scope of the inventions in ways that the claims [in the ‘601 patent] clearly did not.”

Having determined that the district court erred in limiting the claims based on the specification, the Federal Circuit concluded that the claims were not invalid for lack of written description.  This was the second time the Federal Circuit addressed whether the asserted claims of the ’601 patent are invalid for lack of written description—and concluded that they are not.  In the first appeal in 2014, the Federal Circuit held that the district court erred in concluding that the specification limits the invention a “collating unit” that requires the use of sensors to determine whether the holding unit was full.  ScriptPro LLC v. Innovation Associates, Inc., 762 F.3d 1355, 1356 (Fed. Cir. 2014).