Docket No. 2013-1561
TARANTO, BRYSON, HUGHES
August 6, 2014
Brief Summary: DC grant of SJ of invalidity for lack of written description reversed because specification’s use of “broadly includes” (specification) or “broadly comprises” (Abstract) indicated the inclusion of “sensors” was optional.
Summary: ScriptPro appealed DC grant of SJ to IA that ScriptPro’s US 6,910,601 was invalid for lack of written description of a machine for filling and labeling pill bottles or other prescription containers because “the specification describes a machine containing ‘sensors’, whereas the claims at issue claim a machine that need not have ‘sensors’”. After ScriptPro brought the infringement suit against IA, IA counterclaimed on various grounds, including invalidity but also initiated an interpartes reexamination. The DC stayed the proceedings and the PTO confirmed the claims (“amended in ways not relevant to this appeal”). When infringement proceedings resumed, the DC concluded “that the specification indisputably limits the invention to the collating unit that uses sensors”, rejecting ScriptPro’s expert opinion that “it is clear…that sensors are not required” as “entirely conclusory”. Citing Ariad (FC 2010), the FC concluded “[t]here is no sufficiently clear language in the specification that limits the invention to a collating unit with the (slot-checking) sensors…[a]nd 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.” The opinion explained that neither the “broadly includes” (specification) or “broadly comprises” (Abstract) is enough to support the DC conclusion because “[l]ike ‘generally’, the qualifier ‘broadly’ suggests that exceptions are allowed” unless “followed by a list of individual components of the subject preceding ‘broadly includes’” (not absolutely, however). The opinion noted “one last point” that the originally filed claims “did not include a requirement of sensors” which “can help resovle the ambiguity, though even originaly claims may be insufficient as descriptions or be insufficiently supported by the rest of the specification” (Crown Packaging, FC 2011; LizardTech, FC 2005). The DC decision was therefore reversed.
Federal Circuit summaries 