Specification describes machine with sensors – Can you omit the sensor limitation in the claims?

By Dennis Crouch

ScriptPro v. Innovation Associates (Fed. Cir. 2014)

Kansas district court Judge Carlos Murguia found ScriptPro’s patent claims invalid under 35 U.S.C. §112 for lacking written description. See U.S. Patent No. 6,910,601. That holding has been reversed by a unanimous Federal Circuit panel that included Judges Taranto (Author), Bryson, and Hughes.

Although the technology at issue here is largely mechanical (a pill collating machine), the case is akin to a genus-species debate and also relates closely to the ‘essential element‘ pseudo-doctrine of Gentry Gallery.

Here, all of the examples of the patented collating machine include a set of sensors used to determine whether a particular holding area is full. Further, the specification suggests that – even at its broadest – the invention includes the sensors: “[T]he present invention broadly includes . . . a plurality of sensors.” However, the claims do not include sensor limitations – with the result being that machines both with and without the sensors could be seen as infringing. Seeing that discrepancy between the specification and the claims, the district court ruled that the original written description does not show that the inventor possessed a collating machine that operated without the sensors and thus that the claims covering machines sans sensors fail the written description test. Judge Murguia wrote:

Based on the record before it, the court concludes that no reasonable jury could find that the inventors were in possession of a collating unit that operated without sensors. Innovation is therefore entitled to summary judgment on its claim of invalidity as to all challenged claims.

On appeal, the Federal Circuit has reversed – finding that summary judgment was improper.

It is common, and often permissible, for particular claims to pick out a subset of the full range of described features, omitting others. A specification can adequately communicate to a skilled artisan that the patentee invented not just the combination of all identified features but combinations of only some of those features (subcombinations)—which may achieve stated purposes even without omitted features.

. . . There is no sufficiently clear language in the specification that limits the invention to a collating unit with the (slotchecking) sensors. And considering what the specification does say, and what ScriptPro highlights as a central purpose of the claimed advance in technology [keeping track of open slots – a function that does not require the sensors], 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 term “broadly” qualifies the assertion of inclusion [and] suggests that exceptions are allowed to the assertion of what occurs most (perhaps even almost all) of the time.

Readers will note that, while the court begins with a suggestion that written description requires that the patent document affirmatively convey invention of sub-combination, the actual approach looks more to whether the patent document affirmatively denies the subcombinations.

Here, the court thought it important – although not determinative – that the original application as filed included the non-sensor claims. Thus, this is not an example of an ex post attempt to expand scope that is most common in written description cases.

When a specification is ambiguous about which of several features are stand-alone inventions, the original claims can help resolve the ambiguity, though even original claims may be insufficient as descriptions or be insufficiently supported by the rest of the specification.

The notion is that original claims are part of the specification and thus relevant. However, they are also potentially inadequate (as we learned in Ariad and LizardTech).

Not a Summary Judgment Question: One lens for considering this case by recognizing that the failure of written description is a factual question to be decided by a jury. Although it may not ultimately win on the issue, the patentee presented a factual argument supported by expert testimony regarding what a person of skill in the art would have recognized based upon reading the specification. What the court here ruled is that that presentation of evidence by the patentee was sufficient to defeat the defendant’s summary judgment motion of invalidity. We may eventually see a jury verdict in this case — ~10 years after the lawsuit was originally filed.

103 thoughts on “Specification describes machine with sensors – Can you omit the sensor limitation in the claims?

  1. Whether you call it harmonisation or convergence or consilience, I see a coming together of thinking on patentability catalysed by the irreducible simplicity of the “from scratch” 1973 provisions of the EPC. This is most recently illustrated by Alice. Those drafting the EPC stood on the shoulders of the giants of pre-existing patent law jurisprudence.

    I write this because I think the present case might have benefitted from the new SCOTUS thinking (had it been available) announced in Nautilus, that “reasonable certainty” is required. The days when it was considered the acme of the patent attorney’s drafting skill to “inject ambiguity into the claims” may now be numbered. From now on, if you try to “have it both ways” you might end up with neither.

    Apart from that though, it is interesting to ask how ScriptPro’s claims might haver been judged in opposition at the EPO. As we know, the European ounterpart to indefiniteness is Art 84 (clarity), that for “written description” is Art 123 (added matter) and that for enablement is Art 83 (sufficiency). The fundamentals of patent law are the same everywhere: a sufficient disclosure of Invention X is required, already on the filing date, with a claim to that X, clear enough that we know what is within the ambit (and what not). At the EPO, there is a squeeze on claim scope, that you cannot rely for patentability on a feature (here the sensor) which is needed to achieve sufficiency or to get home on the obviousnness analysis, if it is not in the claim. I like such squeezes, they squeeze out the attorney’s urge deliberately to obfuscate.

    1. What a lovely soapbox.

      Why do you think the decided case of Nautilus is not available? Is not the Supreme Court’s decision available since its release?

      And further nonsense from you – patent fundamentals simply are NOT universal. Patent law is a sovereign-based law and clearly there remains fumdamental differences. If indeed the opposite were true, we would not be hearing from shills like you.

      1. Here’s what I just posted to the English blog PatLit, in ist thread on EPO Decision T2231/09:

        The expression “Bermuda Triangle” is beloved of DG1 when it presents its “Examination Matters” yearly seminars. Ever more cases, of clearly patentable subject matter, and otherwise sailing through substantive examination within DG1, nevertheless disappear without trace, in the Triangle formed by EPC Articles 54, 84 and 123(2). Here’s how:

        Using “broadest reasonable interpretation” the claim lacks novelty and so must be narrowed. But all attempts to secure novelty by such an amendment founder on the rocks of Art 84 or 123(2).

        DG1 has no conscience. It has no experience how to draft and so blithely supposes that there is no difficulty at all, for any Applicant that takes the trouble to draft competently the patent application before filing it.

        Mind you, it may have a point, to some extent. In the recent Nautilus case, the Supreme Court of the USA looked at clarity and the behaviour of attorneys deliberately to draft with ambiguity. At least at the EPO, if you try to have it both ways, you might end up with nothing.

        link to patlit.blogspot.de

        1. The link you provide indicates a strong and capricious anti-patent view.

          How exactly does that support ANYTHING that you ever promulgate here (in a good way)?

            1. Your link betrays some of your ignorance: there is NO one-world-patent because patent law is still specific-sovereign oriented.

              Whatever tide you see, let’s make sure you recognize the individual sovereignty first (and foremost).

        1. Lol busy begging the professor to eliminate evidence of your psychopathy anon?

          lulz lulz lulz.

          Guess they’re right in the video, people really do protect psychopaths in everyday life. Hilarious, but I guess that’s just how it goes.

          1. Not really.

            He eliminated the back and forth that stemmed from the initial point – that point remains – and I see now a new beginning.

            (hint: it starts with you 6 – it always has, hasn’t it?)

            1. ” and I see now a new beginning.”

              You see now a “new beginning”? And it “starts with me”?

              Lulz. So much ps ycho pathic babble speak! I’m sure all that makes total sense in your ps ych o pathic mind! Your little ps y ch opathisms are so hilarious.

    2. One man’s negative portrayal (attorney’s urge deliberately to obfuscate) is another man’s ability to adequately capture the invention (ladders of abstraction) to protect the client running twenty years into the future.

      As most (easily 95%) of all valuable patent claims are more than just strictly picture claims, the balance between negative portrayal and reality favors the attorney actions that are being slandered.

  2. Dennis: Readers will note that, while the court begins with a suggestion that written description requires that the patent document affirmatively convey invention of sub-combination, the actual approach looks more to whether the patent document affirmatively denies the subcombinations.

    Yes, but if it was an original claim then that is the proper question. No?

  3. Standard practice is to re-write the claims prior to filing — especially the broadest claims — and insert them into the specification as examples of embodiments of the invention. A lot of money could have been saved by the patentee had the prosecuting counsel taken this step. Sometimes, of course, the inventor/client drops a bunch of claims in at the last minute and there isn’t time to update the specification.

    CAFC: When a specification is ambiguous about which of several features are stand-alone inventions, the original claims can help resolve the ambiguity

    I don’t see anything controversial or unfair there.

    even original claims may be insufficient as descriptions or be insufficiently supported by the rest of the specification.

    I’m curious about this last clause. Are those two distinct questions separated by the “or”? It’s true that merely describing one’s alleged “invention” is not “sufficient” in every case to satisfy the “possession” requirement of 112 (e.g., a claim to a broad genus of functionally-characterized chemicals without disclosure of sufficient species, even where the specification arguable teaches one how to identify those species without undue experimentation). Is this the same issue the court is referring to when they use the alternate phrase “insufficient support”?

    Based on what I’ve read, it doesn’t seem likely that the defendant in this case will have much luck with an enablement argument. Seems like validity may be the best bet …?

    1. Standard practice is to re-write the claims prior to filing — especially the broadest claims — and insert them into the specification as examples of embodiments of the invention

      Agreed – especially in any application that will serve as a vehicle to PCT filing (part if the über patent profanity principles).

      But really, not have time to update the specification with such? It would take ten minutes tops.

      1. not have time to update the specification with such? It would take ten minutes tops

        The time would depend on the number of claims we’re talking about but I agree that it’s worth trying. If nothing else, you can always just cut and paste the claims in, as they are, as examples of various embodiments.

        The scenario I had in mind was the one where you expect to have nothing else to do prior to filing except to finalize the claims and re-write them into the description but then the inventor/client dumps a last minute bus load of information into your lap (new Figures, data, etc) requiring more analysis, not to mention more claim drafting. Triage mode, in other words. The fun stuff.

        1. LOL – the ready lesson then is NOT to file if that (the last-minute client dump) happens.

          Any such minute filing – “of necessity” should be simply, and professionally, declined.

          1. Any such minute filing – “of necessity” should be simply, and professionally, declined

            Do you do that with a phone call or do you send the email to the client just before you shut down your computer?

            1. “Do you do that with a phone call or do you send the email to the client just before you shut down your computer?”

              I think he does that with his imaginary mail room staff.

            2. LOL – dealing with clients is a lot different than dealing with sc um lawyers who want to send things under the cover of a different non-involved attorney in an attempt to trick you…

              …or did you forget (again) the rest of the fact pattern under that old discussion…?

              I ask because you may have – or you just might be dissembling yet again.

              1. Interesting to note that even on a topic that is largely agreed upon, Malcolm cannot resist his short script ad hominem and mischaracterizing ways.

                The cape of “anon says” surely is a vibrant red to some.

  4. Another gem from the Federal Circuit. First, I’m just going to quote this passage and you tell me if sensors are necessary for the operation of this machine: “The control system next determines in which holding area to store the container. The selected holding area is dependent on whether previous containers for the patient have been stored in the collating unit and not yet retrieved. If containers for the patient have already been stored and not yet retrieved, the control system determines if the holding area has space to store the additional container. To accomplish this, the sensor positioned at the open end of the holding area determines if the holding area is full. If the holding area is not full, the container is stored in the holding area. If the holding area is full, or if no container for the patient has been stored and not yet retrieved, the control system selects the first empty holding area for storage of the container.”

    Does that sound like the control system can make a judgment on holding area fullness without a sensor?

    Construction rules require giving a meaning to each word and the District Court correctly views “broadly comprising” as meaning “at least comprising” (i.e. “there are several embodiments, but all of them will at least comprise the following limitations”). Instead, the Federal Circuit argues that “broadly” modifies “comprises” (it does) but somehow concludes that the only direction it can modify it is to un-require the limitation, completely eviscerating the “comprising” term. The correct construction (the only one giving power to both terms) is to say that “broadly comprises” moves “comprises” further down the channel – closer to “consisting essentially of” area en route to just “consisting of” – which is precisely the viewpoint the District Court takes.

    The court then goes on to say that the sensors could be construed as merely a “security feature” to “confirm” a holding by “some other means.” To wildly speculate about what those “some other means” could be, the court says it must be the (fortunately for them) completely vague “control systems” module. The court states that one could view the control systems as storing the position, with only the sensors to confirm the issue. Okay, let’s say that’s the case…The court then performs a wonderful coup de gras by casually closing with: “It is a separate question of whether the claims CLAIM such reliance, but as already stated, we merely assume the answer to that question, which is not before us.”

    In other words – here’s a necessary act that must be done by the machine. Here’s two things that can do it (sensors or a control system). It is undisputed sensors are not in the claim. A control system, which is in the claim, makes no mention of the functionality that it would need at all (a reason it doesn’t is because the court kind of made up the functionality itself). Yet we’re going to conclude that there exists a material issue of fact.

    If there was error in the summary judgment, certainly that error was harmless because the only other means which could have saved the claim ALSO DOESN’T APPEAR IN THE CLAIM. But let’s also ignore that – if you construed the mere mention of the control system as including the claim, the algorithm for determining if it was full would have to be disclosed. Summary judgment does not require that there be no issue of fact (i.e. sensor versus module) it only requires that there be no material issue of fact, which is disposed of by neither being claimed.

    1. Random, virtually the entire oral argument was taken up with the issue of the claims-as-filed. Claim eight (added in re-examination) is exactly claim one as filed, with the addition of a “collating unit conveyor, and a “frame.” The infeed conveyor element, present in claim one as filed, now included new “purpose” language. Sensors were introduced only in dependent claim seven as filed.

      Claim eight may have problems in terms of breadth, but the court was singularly unimpressed with the argument that there was no written description support for a claim to an assembly of apparatus that appeared in the written description, as filed, even if that was not the exact basis for its holding.

      I think the real problem with the claim is that it does not claim the invention described in the specification which is an apparatus that is intended to place new pill containers into the same slot where prior pill containers were placed for the same patient, unless, of course, it was full. There is nothing in the claim that has anything to do with that invention.

      1. In fact, the specification says the prior prescription dispensers were by prescription number and could not accumulate prescriptions by patient name so as to place all the prescription fulfillment containers into the same slot for packaging purposes.

        From the specification: “Automated control centers have been developed which are operable to automatically start a containers exiting the ADS. Such automatic control centers commonly include a storage unit having a plurality of holding slots, holding areas or other storage mechanism in which the prescription containers are stored. Unfortunately, prior art automated control centers are limited to storing only one prescription container per slot or compartment. Additionally, prior art automated control center store the container based on a prescription number associated with the container, as opposed to storing the container based upon a patient name for whom the container is intended.… Sense prior art automated control centers are only operable to store one container per slot, an operator retrieving stored containers for a patient must retrieve containers from several different slots. Further, because the slots in which to containers for the patient are not stored next to each other, or even proximate to each other, the operator is required to look for containers at several various locations within the storage unit.”

        Second, prior art automated control centers are only operable to store the container for the patient under the prescription number, and thus any indicator for the slot in which the container is stored only displaced the prescription number.”

        1. Ned,

          The judges dropped plenty of hints of what was explicitly before it (issue wise).

          Does it make much sense to explore other issues not before the court?

          This seems to reflect on your untoward desire and habit of over reading case law, instead of gleaning which law the case was actually discussing.

          You have an odd habit of seeing things not there while NOT seeing things that are there.

          1. Anon, no eyes really responding to the post by Random. The description of what the invention was in the specification is quite at odds with the claims as filed and issued which are entirely mechanical in nature.

            One reading the specification and then reading the claims would say, “What have these things to do with each other?”

          2. The judges dropped plenty of hints of what was explicitly before it (issue wise).

            Not so much a hint as outright saying it, but their logic is wrong. The district court says because there are no sensors to achieve a stated requirement of the machine, the claim is undescribed.

            CAFC comes back and says that the computer module could have achieved the result as well, and that because no claim construction facts are in the record it is improper to uphold summary judgment because the mention of the control system might include that functionality.

            But they need to complete the thought. Whether the claims include the module with the functionality or not is, to their mind, a fact in dispute, but it can’t be a material fact in dispute. That’s because even if one were (in the unlikely event) to construe the claims as referencing that module with that functionality, that module is ALSO undescribed. If the module performed that functionality, under their rules that functionality must be described by an algorithm, and there’s no fact finding necessary to show that there’s no algorithm in the spec – that’s a simple matter of law conclusion.

            Had the module functionality been described and it was clear it was in the application, the patentee wouldn’t have had to resort to an expert (and the CAFC wouldn’t have to essentially adopt his logic) to say “maybe the computer can do this” because they could point to the specification saying that the computer could do it. So there’s an issue of fact, but not a material issue of fact because either branch results in a legal determination of being undescribed. This represents the danger of just putting in a box, labelling it a “Control System” and then allowing any lazy analyst to say “well it must be in there.” Patent law doesn’t allow applicants to submit profit memes.

            This court is lazy and stops at step two – simply saying “it might not have been the sensor.”

            It’s not a big problem for this particular case, because it won’t end with a trial as suggested, just another summary judgment motion covering both branches.

        2. Unfortunately, prior art automated control centers are limited to storing only one prescription container per slot or compartment.

          Exactly, the difference between a sensor and a computer simply counting if something was put into a slot since it was last emptied is that the sensor is a qualitative instrument: It will allow X packages to be placed in there, so long as X doesn’t push the group out far enough to tip the sensor. The software means can’t do that, it would just be a zero/one statement of whether something had been put in the slot. If what the court argued was true, then that (sensorless) claim would not have the distinction from the prior art the applicant argues his machine has.

          Second, prior art automated control centers are only operable to store the container for the patient under the prescription number, and thus any indicator for the slot in which the container is stored only displaced the prescription number.”

          Gotta love the things applicants think will get around obviousness sometimes.

    2. Construction rules require giving a meaning to each word

      … of the specification?

      Lol – is this the same Random Examanier that just made a big fuss over NOT reading the specification so as to search the possibilities (in amendments) of the claims – as submitted?

      1. “Construction rules require giving a meaning to each word”

        … of the specification?

        Of anything, and yes of course the specification. When you want to find the meaning of something one of the rules is giving effect to each word. When the question is Is claim X described by spec Y, you need to both construe claim X and spec Y. How else would you do it?

        Lol – is this the same Random Examanier that just made a big fuss over NOT reading the specification so as to search the possibilities (in amendments) of the claims – as submitted?

        I’m not making a fuss over anything, as I don’t care either way. Examiners examine according to their own strategies. You’re the one making the fuss about what some of us do.

        1. For someone who allegedly “don’t care either way” you sure as H made a fuss of it on recent threads.

          Or don’t you remember?

          1. Apparently I don’t. I remember Oh No also being upset over examiners not reading the spec, and I explained why we don’t.

            You can try and convince me I’m making a fuss, but the rules are in agreement with how I like things, and people on this board lack the power to change them, so I don’t know why I would throw up a fuss, or why I would do it here if I did. Can you explain that for me?

            1. As to “over examiners not reading the spec, and I explained why we don’t.

              First, I’d like to see you provide the rule that allows such, and second I’d like to see you square that rule with what you are posting today regarding construing every word.

              Do you even see the duplicity you have caught yourself all up in?

              1. Do you even see the duplicity you have caught yourself all up in?

                There’s no duplicity anon, I’ve routinely said on this board that the major problem in patent law is that the office (and others) performs a 112, 1st analysis wrong. When you teach people 112, 1st wrong, you’re going to get people not reading the spec, since the BRI of claims for 103 purposes largely doesn’t need the spec, while a correct 112 analysis does.

              2. No duplicity. eh?

                Funny then you ignore the very point I ask of you, and now turn that point somehow into a “the Office is doing it wrong” thing.

                Once again – As to “over examiners not reading the spec, and I explained why we don’t.”

                First, I’d like to see you provide the rule that allows such, and second I’d like to see you square that rule with what you are posting today regarding construing every word.

                You seem NOW to be backtracking furiously from your initial claims.

              3. First, I’d like to see you provide the rule that allows such

                I’d like to see the rule that requires such, because if you ask most examiners they will say that their job is to reject claims. If you’re having trouble squaring that with the idea that you can’t properly make some rejections (kinda our job) without reading the spec, well now you’ve got a point there, don’t you?

                second I’d like to see you square that rule with what you are posting today regarding construing every word

                That’s what I just did, but I’ll spell it out for you. To make a 112, 1st rejection, you necessarily have to know what the spec says (and sometimes construe ambiguous phrases in the spec). If you don’t read the spec, you can’t make a 112, 1st rejection. The fact that some people conclude that a 112, 1st rejection will never exist and thus they aren’t losing anything by not reading a spec, is a problem the office, and by extension the entire community (because it perpetuates), has.

                To be extremely clear: I work in software. When I see code which is only described by the function it performs in the claims (which is every app), I look to the spec to see if they describe even one algorithm for achieving the code. If none exists, I make a 112, 1st, because you have to include an algorithm. If one exists, I still make a 112, 1st, because they’re using functional language to broaden their disclosed algorithm without proof or reasoning that they are in possession of the difference in scope.

                When one of my coworkers sees the same code, they say a) computer code is always enabled and b) describing the functional result is a sufficient description. Therefore they need not enter the spec, because they conclude from the claim there’s no 112, 1st to be made. Further, it rarely hurts them to enter the spec, because the application usually (improperly) never provides anything other than the functional language in the spec, thus they are not further informed on the claim.

                According to you, because the result is stated, and because a PHOSITA can achieve at least one means of causing the result, the claim has no 112, 1st rejection. That’s a viewpoint shared by many examiners. It is incorrect, and it is why we have such a patent thicket in software (multiple applicants describing the same or similar invisible steps using different functional language results in multiple overlapping patents issuing). The mere fact that your interpretation causes a patent thicket might suggest to you that you’re wrong about how to interpret it, but I need not hang my hat on that as I have several supreme court cases against functional claiming, and even a few decent CAFC cases about WD (Ariad, Lizardtech, etc). Regardless, you should rejoice, as since you believe I’m wrong about what constitutes a 112, 1st rejection, you’re actually getting exactly the examination you think is correct.

                The rule of General Electric v. Wabash stands – one cannot use functional language to be vague about the structure of their invention, with the caveat that limited use of functional language can describe old things. The CAFC lacks the power to overturn the supreme court precedent and Congress has not chosen to do so. Functional language results in overbroad claims because the actual disclosure fails to fill the scope of the claimed means. The most an Applicant can describe and enable is every means known to him. The most a PHOSITA can describe and enable is every means currently known to the art at the time of filing. A functional claim covers every possible means of achievement. Absent proof that we know all we will ever know on the subject, the claim is overbroad.

              4. Random, I think the central problem with software claims is that the methods described, to the extent they’re computational nature, are nonstatutory.

                There has to be invention elsewhere – in the computer being improved, or in a traditional process being improved, or larger apparatus being improved. If there is nothing more being improved, but simply calculations being done, every other piece of hardware or system being old, the problem is patentable subject matter, not 112 or 101.

                If, in the larger context, the computer is improved, or the larger system is improved, technically, then the claim states eligible subject matter and the programmed computer in context is doing something new.

                But here, if the individual steps are described in terms of what they are rather than the result they achieve, I think there really is no problem under 112. But if the steps are described in terms of their results rather than what they do, then this is the kind of functional claiming to which one can object, and reject under section 112, 1st.

    3. “Does that sound like the control system can make a judgment on holding area fullness without a sensor?”

      Yes it does. One of skill in the art would understand that computers can add and subtract.

      “The selected holding area is dependent on whether previous containers for the patient have been stored in the collating unit and not yet retrieved. ”

      The machine would be aware of whether containers were previously stored (+1) and aware if they have been retrieved (-1) and could thereby keep an inventory count for the storage area. It is a small thing for the machine to be provisioned with a capacity count for the storage area and to subtract the currant inventory count from that capacity.

      What you quoted was a description of an embodiment or set of embodiments, perhaps even a preferred embodiment. NOT the ONLY embodiment.

      1. Yes it does. One of skill in the art would understand that computers can add and subtract.

        Even the CAFC doesn’t ascribe this to the invention. The system doesn’t “count”, it just does an on/off flag for whether there is at least one thing in the box. Further, it appears the system is designed to work with different packages and different size slots. Counting wouldn’t determine if a slot was “full”, that could only be done with sensors. The most the system could do would be to say “occupied” or not. “Occupied” does not get you to the functionality of determining if the next package could fit into that slot or not, it just says whether ANYTHING is in there, which prior systems could already do.

        The machine would be aware of whether containers were previously stored (+1) and aware if they have been retrieved (-1) and could thereby keep an inventory count for the storage area.

        The machine only knows that a retrieval act took place (so -X, not -1). Regardless, the question is not that, the question is: Without a sensor, how does the system know what constitutes Max(X) before overflow to effectuate this language: “If containers for the patient have already been stored and not yet retrieved, the control system determines if the holding area has space to store the additional container.”? That language doesn’t even assume a retrieval. What is the means contemplated for it? “To accomplish this, the sensor positioned at the
        open end of the holding area determines if the holding area is full.”

        1. Again, Random, what would happen if there were no sensors at all?

          Could the apparatus still put new patient pill containers in the same slot as others were put?

          Perhaps the operator on retrieving a patient’s set of prescriptions simply reset some software flag to indicate the slot was now empty on the assumption that the operator retrieved all of them.

        2. A maximum capacity is simply entered for what ever bin size is attached. The count or inventory is maintained and compared to that max capacity. When the count equals the max capacity, no more can be added until one or more are retrieved. Computers are also known to be able to add and subtract. So, if it is +X, – X, one of ordinary skill would have understood that computers can handle that too.

    4. “Construction rules require giving a meaning to each word and the District Court correctly views “broadly comprising” as meaning “at least comprising” (i.e. “there are several embodiments, but all of them will at least comprise the following limitations”). ”

      Broadly speaking, the comment posters on Patently-O are intelligent and insightful.

      That doesn’t mean they all are.

      “Broadly includes” does not mean must include. If it did, what would narrowly include mean? Broadly includes means if you want a shopping list for the wide range of embodiments I am going to describe, this is what should be on it. Broadly, modern American automobiles include air conditioners. That does not mean they all do.

  5. Not sure how the district court missed this one. It is a simple question, “will there be no evidence that can be shown that an ordinary person in the art could make this invention without the use of sensor?” How can you say anything but “no” to that?

    1. Jay, as described in the oral argument, the essence of the invention was to determine whether a particular slot to which pill containers had previously been used for particular patient, by name, was empty or not. Sensors can determine that. But the patent owners expert also testified that one of ordinary skill in the art would know that simply counting insertions and removals of pill containers could also determine whether a particular slot was empty.

    2. “will there be no evidence that can be shown that an ordinary person in the art could make this invention without the use of sensor?”

      That goes to enablement, not written description.

      1. All you need Random Examiner is to recognize that claims as filed are included in the term “specification,” and that sometimes even, claims are both self-describing as to what the applicant holds out as her invention (satisfying written description) and self-enabling as to what the claimed invention is (satisfying enablement).

        Pointing out the difference between enablement and written description is nice of you – doing so while ignoring the more important legal point under discussion is not so nice of you.

        1. I agree with you this far: If the other parts of the spec are silent on the issue, resorting to the claims to say “this was a contemplated combination” would be valid. That was done in other cases. But when the specification says “My invention is A” and the claims claim B, you don’t have a specification supplemented by the disclosure in the claims, you simply have an initial claim set that is undescribed. Original claims can be undescribed.

          sometimes even, claims are both self-describing as to what the applicant holds out as her invention (satisfying written description) and self-enabling as to what the claimed invention is (satisfying enablement)

          This is certainly possible, but this isn’t that case, especially when the other means of achieving the goal of the invention also won’t be found to be included in the claims once it gets kicked back down.

          1. I do believe the point here is that the original claims (remember – those are PART OF the specification) do say “my invention is B.”

            It may be that another part of the specification says “My invention may also be A” (remember – try to construe the term “broadly” appropriately) – but that does not detract what another part of the specification says.

            but this isn’t that case

            Apparently, it is.

          2. Random, the basic problem here is the background section admitted that slotted systems for holding prescriptions were old. The only novelty described was a system to collate by patient name. What that had to do with the apparatus that did the prior art function is not clear.

          3. “But when the specification says ‘My invention is A’ and the claims claim B, you don’t have a specification supplemented by the disclosure in the claims, you simply have an initial claim set that is undescribed. Original claims can be undescribed.”

            Wrong. The original claims don’t “supplement” the disclosure, they are part of it.

  6. Question: Even though claims like this may not be 112 defective for not expressly incorporating an additional limitation, could the specification statement that: [“[T]he present invention broadly includes . . . a plurality of sensors.”] still be argued for claim scope interpretation as to infringement? [Although presumably that would not make a difference in this particular case]
    [There are, of course, a number of Fed. Cir. decisions in which specification statements or even specific examples have been used to limit effective claim scope in litigation, as opposed to the BRC test for claims within the PTO.]

    1. Curmudgeon, the court asked the infringer during oral argument whether there was any claim construction where the claims were limited to include sensors. The infringer responded that the claims had been construed but neither they all nor the patent owner had contended that any term was limited to sensors.

      I presume that had the claims been so limited there would be no issue about written description support; but whether sensors were required would have been argued on appeal, but this time in the context of claim construction.

      It would have been interesting then to see whether the claims as filed would have been pertinent to claim construction because the claims as filed had claims that did not include sensors – indicating that the inventor did not believe sensors to be critical or even essential to the invention.

      1. “…the claims as filed had claims that did not include sensors – indicating that the inventor did not believe sensors to be critical or even essential to the invention.”

        Exactly. Claims as-filed are by law *part of* the specification, and thus by definition cannot be new matter. I’m really at a loss to understand how part of the specification can be deemed unsupported by the specification.

        When a patentee doesn’t claim enough, they say too bad and hold you to what you claim. That’s fair, if the game is going to be claim-focused, but then it has to work the other way too.

      2. So if infringement or non-infringement does not hinge on a particular omitted element, it seems that the Court is telegraphing that an attempt to invalidate the claim for lacking written description support for the irrelevant or uncontested element amounts to gimmickry. Provided that a PHOSITA set forth a reasonable position for the omission and the original claim omitted the element.

        The claims also omit numerous other elements that are clearly present in each and every drawing. For example, the claims don’t mention several of the doors or handles on the dispensing system. The district court did not attempt to argue that the patent lacked written description support for the doors and handles, even though every embodiment clearly shows them.

        1. Good points Bluto.

          But what do you do about this ability to selectively choose the invention when scriviners dutifully obey the law and fit the invention into a statutory category but you subjectively feel that they are just being tricksters and the “real” invention is more than the claimed invention (nevermind that the claimed invention is the only thing that is actually enforceable)?

          Do you:
          a) violate the separation of powers doctrine by (implicitly or explicitly) write your own patent law
          b) hold that the patent law – as written – violates the constitutional imperatives, and is thus void, sending a message back to those with proper authority to write a law that does not violate the constitution, or
          c) restrain yourself from putting your fingers into the 101 Nose of Wax and not speculate as to purely conjectural effects of powerful broad patents that otherwise do meet the actual words of the law as written by Congress

          Is there really any wonder as to why the Supreme Court currently has its lowest confidence rating among the people of the US? Just look at the Ivory Tower backgrounds and the activism warning signs.

          As one regular poster who is very much pro-Royal Nine leaning as even noted: “It does seem, therefore, that the Supreme Court is off on a lark, making things up as they go, almost like the make-believe world of Alice in Wonderland. Regretful indeed.

          1. Do you:
            a) violate the separation of powers doctrine by (implicitly or explicitly) write your own patent law
            b) hold that the patent law – as written – violates the constitutional imperatives, and is thus void, sending a message back to those with proper authority to write a law that does not violate the constitution, or
            c) restrain yourself from putting your fingers into the 101 Nose of Wax and not speculate as to purely conjectural effects of powerful broad patents that otherwise do meet the actual words of the law as written by Congress

            Or do you: get a life?

            1. Once again (gee shockers), wipe away the ad hominem and you have a ZERO post by Malcolm.

              No one in the history of blogging says less with more.

              1. You v0m1ted ad hominem and nothing more.

                That you think that you added anything worthwhile to the discussion thread is part and parcel of your problem (and the source of the most b1ight on this blog).

                Have a nice day.

          2. “when scriviners dutifully obey the law ”

            See and that’s the fundamental rub. Re re’s think that the “lawl” is merely one directed to making scriveners use the proper form of claim. That is to say, this law has no substantive impact, only formal impact.

            Newsflash, the lawl, indeed the whole of the substantive patent entitlement statutes, are for inventors, not scriveners. And all the scrivening in the world won’t make an inventor out of a non-inventor. That is, if the lawl is being appropriately executed.

            1. Your characterization is off, 6.

              Not only is form looked at to be proper – per the words of Congress, but content – and this is important – as to what Congress has written.

              You keep on missing the larger issue as to which branch of the government has been allocated authority under the constitution to WRITE the law.

              Reading the map is simply not the same as writing the map.

              Pay attention.

              1. “You keep on missing the larger issue as to which branch of the government has been allocated authority under the constitution to WRITE the law.”

                I haven’t “missed” it what so ever. I have addressed it many thousands of times and choose not to do so for the thousand and oneth time.

              2. 6,

                You should take the hint: you mischaracterized.

                Your insisting on being wrong yet again still won’t change your being wrong into being right.

                (and yes, objectively speaking, there really is a right and wrong here).

              3. “you mischaracterized.”

                Oh, now instead of missing a “point” I “mischaracterized” something. Right. Gotcha. Keep on tweaking the issues Mr. OCPD. Tweak tweak tweak.

              4. 6,

                You appear even more desperate than ever. What’s the matter? Are they tightening down the “other time” you are charging to read and post here? You seem to be giving your posts even less thought than ever – as shocking as that may be.

          3. this ability to selectively choose the invention

            Just so we’re clear, this isn’t what went on here. The applicant could have stayed silent about what his invention constitutes. Instead he made an affirmative statement. But with the knowledge we’re talking generally:

            Do you

            a. The court routinely cuts out parts of laws which would violate the constitution in an attempt to save as much as Congress’ intent as possible. That’s not even close to a separation of powers issue. If the constitution used the words “not including software” and Congress wrote a statute allowing software, nobody would be shocked when the supreme court cut out the software, nor would they call it a “rewriting” of the law or a separation of powers issue. You can take issue with their conclusion, but there is no doubt but that the resulting act is proper.

            b. The court never tells Congress to rewrite anything when it acts, it acts and expects Congress to counteract if Congress so wishes. Congress is charged with knowing the actions of the court, and there have been several cases on the issue over the course of the last few years. If Congress didn’t like what the court was doing they could easily rewrite the law. In fact, Congress’ inaction (even to the level of a lack of debate) might suggest to you that maybe your view of this is a bit overblown.

            c. It’s not really speculation to say that Alice didn’t create (or know how to create) even a significant portion of all the possible processor-machines that will exist that could do mediated transfer. If the patent law allowed him to capture it it wouldn’t be securing an inventor his invention.

            1. Your lack of knowledge and appreciation of law, different types of law (common law, codified law), and the structure and history of US law shine forth in your reply.

              You are also in error, as the AIA does capture and reflect a certain level of “Courts do not construe our actions here” in the post-grant subset of business method review (you speak of that which you just do not know).

              You continue to NOT understand and over apply your “must know all possible equivalents” viewpoint.

              In other words, all that you have done here is cement yourself in your flawed thinking.

              Open your eyes son.

        2. So if infringement or non-infringement does not hinge on a particular omitted element, it seems that the Court is telegraphing that an attempt to invalidate the claim for lacking written description support for the irrelevant or uncontested element amounts to gimmickry.

          That seems like a poor way of thinking, as it would suggest that the patent would be valid against one defendant who infringes the claim language but invalid against another defendant who also infringes the claim language but does so in a different way. Or to put another way, that one could avoid liability by flipping on unclaimed element X. That seems wrong for a lot of reasons.

          For example, the claims don’t mention several of the doors or handles on the dispensing system.

          The spec doesn’t have a statement in it that his invention comprises doors.

          1. I am sure that drawing in the specification indicates otherwise. See the drawing at the top of this page.

            Then ask yourself why you are being so thick as to miss the point being made by Bluto.

            1. I understand his point – “if infringement or non-infringement does not hinge on a particular omitted element…an attempt to invalidate the claim for lacking written description support for the irrelevant or uncontested element amounts to gimmickry”

              I’m guessing, based on your other post, that you’re going to run with this and turn it into an abstraction/functional claiming argument – if it’s reasonable to omit a limitation and the limitation doesn’t matter for infringement, ignore the WD failure. That’s wrong because 112, 1st is it’s own substantive rejection and leads to the absurd conclusion that he could fail in his description of a dependent scope but succeed in description of an independent scope.

              For example, assume this spec failed to properly explain how the sensors worked and omitted them from the independent claim. Under Bluto’s argument, so long as omitting the sensors from the claim was reasonable:

              1 – The independent claim would be valid against and infringed by, and thus liability attaches to, a defendant who used sensors and raised a WD defense (this is the “gimmick” defense), but
              2 – The dependent claim specifically positing sensors as the means would be an infringing scope held invalid because the sensors were claimed and undescribed and
              3 – The same independent claim would be invalid when another defendant who didn’t use sensors, but otherwise used an infringing scope, raised a WD defense

              Of course, since WD requires one to describe the breadth of their scope, you can’t have a situation where the 1-2 interplay exists. Since sensors aren’t in claim 1, you can’t have the liability difference you see between 1-3, as the only difference is the use of an unclaimed feature. Since the validity of the patent stands or falls on it’s own, the validity can’t be defendant-dependent, as 1-3 works.

              If you say you’re doing something novel and fail to describe how you do it, you simply can’t rely upon the enablement of the art to save you, because enablement is a different issue. Description is a subjective standard – did the applicant prove that he has something. Saying you do something new and then not disclosing how fails description, even if a PHOSITA would be enabled to build it because some third party disclosed the same thing.

              1. You soooo don’t know what you are talking about.

                Provide one single application you know of that does what you say – down to the elimination of ANY dependence of PHOSITA.

                You simply do not have to talk about what is known in the art in your application.

                I know that you don’t like that, but that is the way it is.

                And with every iota of extra power given to PHOSITA, that much less is needed to be captured in an application. Mere words cover sooooooo much with a powerful PHOSITA backing you up.

                It’s the wonderful trailing edge type gift from the Supremes.

              2. You simply do not have to talk about what is known in the art in your application.

                Just not the rule. You’re conflating enablement with WD. A PHOSITA being able to build something, that’s enablement, and it informs upon WD, but isn’t WD.

                If the art knows 10 unique ways of doing something but the applicant only describes 5, the applicant gets 5. 10 might be enabled, but WD limits it to his 5. If applicant only describes 1, he gets 1. If applicant describes zero, he gets zero.

                You cannot rely solely upon a PHOSITA and ipsis verbis language to beat WD, see Ariad.

              3. More (errant) lessons in law from the whiner against lawyers.

                Too funny.

                1) I am NOT conflating enablement and WD. I know what they are. I know they are different. My reply does not indicate that I am talking about enablement – and it is you that makes the error by jumping to that other portion of 112 (that’s not the first jump of yours there on this thread).

                2) No one anywhere has mentioned ipses verbis as any type of saving grace (unless you are confusing the fact – still – that originally filed claims are considered a part of the specification…(you need to re read the Ariad decision)

                3) You are in the software arts…? LOL – how freakin pathet1c then, your posted notions and lack of the knowledge on the stuff you want to preach on.

    1. “… The use [of "literally" inappropriately] is pure hyperbole intended to gain emphasis, but it often appears in contexts where no additional emphasis is necessary.”

      Strunk and White would say not to even use the word.

      “Chris Kelley literally reinvented football in the NFL with his use of the Eagles offense last season.”

  7. “Original claims” are important to identifing what the inventor thought his invention to be?

    Who’d a thunk it?

    1. Recall, we were having this discussion about claims as filed here just weeks ago. It might be that the Feds read this blog.

      1. I am pretty certain that some paralegals of the ‘Fed’ in the PTAB read this blog.

        Up until recently, they may have even been paid (in the category of other time) for doing so.

        Let’s just hope they are a discerning bunch.

    2. so it is important to have a number of independent claims, e.g., A, B, C; A, B, D; B, C, E, F; and A’, B, C ?

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