SATISFYING WRITTEN DESCRIPTION WITH EXAMPLES

Ambar P. Nayate, Shumaker & Sieffert, P.A.

In ScriptPro v. Innovation Associates,[1] the Federal Circuit reviewed a grant of summary judgment against ScriptPro, which concluded that various claims of U.S. Patent No. 6,910,601 are invalid for lack of written description.  This was the second time the Federal Circuit dealt with the issue of written description for the ‘601 patent.

The Federal Circuit reversed the district court’s grant of summary judgment and held that the claims of the ‘601 patent comply with the written description requirement.  The Federal Circuit’s reasoning in the ScriptPro case for finding that the claims satisfy the written description requirement provides good practice points.

The Federal Circuit stated that “[t]he ‘601 patent is directed to a ‘collating unit’ used with a control center and an automatic dispensing system (‘ADS’) to store prescription containers after a medication has been dispensed into the containers.”[2]  The issue in the appeal was “whether the ‘601 patent’s specification limits the invention to a collating unit that sorts and stores prescription containers by patient-identifying information and slot availability.”[3]

Claim 8 is representative of the asserted claims:

A collating unit for automatically storing prescription containers dispensed by an automatic dispensing system, the collating unit comprising:

an infeed conveyor for transporting the containers from the automatic dispensing system to the collating unit;

a collating unit conveyor positioned generally adjacent to the infeed conveyor;

a frame substantially surrounding and covering the infeed conveyor and the collating unit conveyor;

a plurality of holding areas formed within the frame for holding the containers;

a plurality of guide arms mounted between the infeed conveyor and the collating unit conveyor and operable to maneuver the containers from the infeed conveyor into the plurality of holding areas; and

a control system for controlling operation of the infeed conveyor, the collating unit conveyor, and the plurality of guide arms.

In this case, the district court interpreted the specification of the ‘601 patent to mean that the collating unit of the ‘601 patent uses an algorithm based on patient names and availability of open slots to store containers and that “one of [the patent’s] central purposes is to collate and store prescription by patient.”[4]  The district court concluded that “[w]ithout including a limitation to address the storage by patient name, the claims are simply too broad to be valid.”[5]

In its appeal, ScriptPro argued that the specification does not limit the invention to sorting and storing prescription containers by patient-identifying information, and therefore, failure to include these limitations in the claims does not make the claims “too broad.”  The Federal Circuit agreed with ScriptPro.

The specification for the ‘601 patent lays out various problems in prior art techniques.[6]  The specification noted that storing container based on a prescription number associated with the container, as opposed to storing the container based on a patient name for whom the container is intended “is especially inconvenient for several reasons.”[7]  It was this language, describing the problem, that caused the district court to latch on to a solution described in the ‘601 patent as being required in the claims.  The ‘601 patent specification states that “[t]he unit stores prescription containers according to a storage algorithm that is dependent on a patient name for whom a container is intended and an availability of an open storage position in the collating unit.”[8]

The Federal Circuit noted that “while some, indeed many, of the solved problems involve sorting prescription containers by patient-identifying information, not all of them do.”[9]  To support this conclusion, the Federal Circuit provided different possibilities where sorting is done without patient-identifying information, and stated that “the ‘601 patent expressly states that containers can be sorted and stored ‘by patient, prescription, or other predetermined storage scheme without input or handling by the operator,’” quoting and emphasizing from col. 8, lines 21–24 of the ‘601 patent.[10]

Additionally, the Federal Circuit relied on the original claims as filed, and the original claims did not require sorting and storing based on patient-identifying information.  The Federal Circuit reiterated that the original claims are part of the specification and can satisfy the written description requirement.

In responding to the assertions made by Innovation as to why the specification limits the invention to sorting and storing based on patient-identifying information, the Federal Circuit agreed with Innovation that “much of the ‘601 patent’s specification focuses on embodiments employing a sorting and storage scheme based on patient-identifying information.”[11]  The Federal Circuit also agreed that “the specification explains that prior art automated control centers that store containers ‘based on a prescription number associated with the container, as opposed to storing the container based on a patient name’ are ‘especially inconvenient for several reasons’.”[12]

The Federal Circuit explained that “a specification’s focus on one particular embodiment or purpose cannot limit the described invention where that specification expressly contemplates other embodiments or purposes,” and “[t]his 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.”  Notably, the Federal Circuit also 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–especially where the same specification expressly contemplates that some embodiments of the described invention incorporate the ‘inconvenient’ aspect.” [13]

Several lessons can be gleaned from the Federal Circuit’s opinion.  To reiterate, the specification of the ‘601 patent described the invention in a problem/solution framework.  The problem/solution framework works well as general patent practice from telling the story of the invention, providing some level of support for non-obviousness in the U.S. or inventive step in Europe and other jurisdictions, and potentially assisting in overcoming abstractness-based rejections under 35 U.S.C. § 101.

In the problem/solution framework, patent practitioners should be careful in defining the problem and solution.  In the ‘601 patent, while the specification may have focused on solution to one problem, the specification did describe multiple problems and multiple solutions.  Therefore, patent practitioners should take care to avoid defining a problem in a way that limits the invention to solving only that problem.  Similarly, patent practitioners should take care to avoid defining a solution in a way that solves only one problem.

Patent practitioners should avoid language that implies that the examples must always solve the identified problems.  Using language that indicates that the example techniques “may” or “can” solve the identified problems is useful.  Patent practitioners should also avoid language that implies that the advantages of the examples are only to solve the identified problems.  There may be other benefits worth touting.  For instance, if there is some facet in the prior techniques that is “inconvenient” (a term used in the specification and highlighted by the Federal Circuit) but can still be part of the example techniques, patent practitioners should consider including such examples.

Where the story of invention is directed to solve one specific problem, the patent practitioner should describe example solutions in a way that allows for various permutations and combinations.  This approach can negate interpretations that certain portions of the solutions are absolute requirements in the claim language. 

It is worth reminding that the ScriptPro case was decided based on the written description requirement.  As general practice, patent practitioners should take caution in drafting the specification to avoid overly limiting the claims, so that infringers cannot make easy design arounds.  Those drafting techniques should be also used when defining the problem and solution in the specification to help reduce the chances of claims being invalidated for lack of written description.


[1] No. 2015-1565 (Fed. Cir. Aug. 15, 2016)

[2] Slip. Op. at 2

[3] Id.

[4] Slip Op. at 5–6, citing ScriptPro LLC v. Innovation Assocs., Inc., 96 F. Supp. 3d 1201, 1206.

[5] Slip Op. at 6.

[6] See col. 1, line 15–col. 4, line 11 of the ‘601 patent.

[7] See col. 3, lines 6–11 of the ‘601 patent.

[8] Col. 4, lines 21–24 of the ‘601 patent.

[9] Slip Op. at 7.

[10] Slip Op. at 7 (emphasis in original).

[11] Slip Op. at 8.

[12] Slip Op. at 8, citing col. 3, lines 6–11 of the ‘601 patent.

[13] Slip Op. at 9.