ScriptPro, LLC and ScriptPro USA, LLC (ScriptPro) accused Innovation Associates, Inc. (Innovation Associates) of infringing on claims 1, 2, 4, and 8 of their U.S. Patent No. 6,910,601 (’601 patent). The ’601 patent relates to a collation unit that works with an automatic dispensing system that automatically fills and labels pill bottles or other prescription containers. The district court granted summary judgment to Innovation Associates on the basis that the asserted claims are invalid under 35 USC 112, first paragraph (or 35 USC 112(a) in the current statute). The district court based its holding on the conclusion that “the specification describes a machine containing ‘sensors,’ whereas the claims at issue claim a machine that need not have ‘sensors.’”
ScriptPro appealed to the Federal Circuit, which ultimately reversed the district court’s summary judgment of invalidity (ScriptPro, LLC and ScriptPro USA, Inc. v. Innovation Associates, Inc., Docket No. 2013-1561, 6 August 2014). The main reasons for the reversal are that a skilled artisan upon reading the specification can reasonably conclude that sensors are desirable but ultimately optional in ScriptPro's system and that the original claims in the application resulting in the '601 patent did not require sensors. Original claims not requiring sensors means that at least the possibility of not using sensors was acknowledged at the time the application for patent was filed (Crown Packaging, 635 F.3d at 1380, “Original claims are part of the specification and in many cases will satisfy the written description requirement.”).
It should be noted that the Federal Circuit did not consider whether the claims as drafted rely on sensors. The only question the Federal Circuit addressed was whether the absence of sensors in the claims means that the claims are not supported by the written description.
The specification of the ‘601 patent uses the phrase “broadly includes” when listing the components of its system. This phrase is odd in patent drafting, but the Federal Circuit did not interpret the phrase as meaning that every component following the phrase must be present in the system. Instead, the Federal Circuit noted that the qualifier “broadly” is similar to the qualifier “generally” and allows some wiggle room in interpretation.