ScriptPro v. Innovation Associates (Fed. Cir. 2016)
Very Slow Roller Coaster: This Kansas-based infringement lawsuit was filed back in 2006. The case was stayed pending an inter partes reexamination. Once re-opened, the district court held that ScriptPro’s asserted claims invalid for lack of written description under 35 U.S.C. § 112, ¶ 1. In a 2014 appeal of that decision, the Federal Circuit reversed – finding genuine issues of material fact regarding whether a skilled artisan deem the patentee in possession of the invention upon reading the specification. On remand, the district court again held the claims invalid on written description grounds and citing the oft maligned ‘essential element’ cases of 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). On appeal, the Federal Circuit has now reversed again and remanded for trial.
The claim at issue is directed to a conveyor and “automatic” collating system for prescription containers. U.S. Patent No. 6,910,601, Claim 8. The claim itself does not specify how the collation occurs, but throughout the specification the patentee indicates that the containers will be collated by patient name and storage space availability. Seeing that distinction, the district court agreed with the challenger that the claims fail because they were not commensurate with the written description of the invention.
The District Court:
[O]ne of [the invention’s] central purposes is to collate and store prescriptions by patient. But the claims do not limit the ways in which the prescription containers are stored. They do not specify any type of collation or storage. . . .
These broad claims are not supported by the much-more-limited specification. They do not require that the control system organize containers based on patient name and space availability. During its appeal, ScriptPro repeatedly emphasized a central purpose of the ′601 patent: to “keep [ ] track of slot use by particular customers and slot availability.” [quoting Federal Circuit decision] This means that the use of any other method for automatic storage is outside this purpose. Based on the broad claim language that is outside a central purpose of the patent, the court determines that no reasonable jury could find the written-description requirement met. . . . ScriptPro argues, keeping track of slot use by particular customers and slot availability is only one of several goals. But ScriptPro does not identify any alternate goals.
The court finds ScriptPro’s argument unpersuasive. While every claim need not encompass every goal, here the claims do not address one of the invention’s central goals—one that ScriptPro repeatedly emphasized on appeal. It is disingenuous for ScriptPro to now downplay the significance of the goal. Without including a limitation to address the storage by patient name, the claims are simply too broad to be valid.
On appeal, the Federal Circuit has reversed – holding that the patentee included a sufficient number of wobbly-words to avoid limiting the specification.
It is true, as Innovation argues, that much of the ’601 patent’s specification focuses on embodiments employing a sorting and storage scheme based on patient-identifying information. See, e.g., ’601 patent, 4:21–25 (“[t]he unit stores prescription containers according to a storage algorithm that is dependent on a patient name for whom a container is intended”), 5:40–47 (“a prescription for a patient is entered into the control system of the ADS along with identifying information for the prescription, such as the patient name . . . [t]he control system next determines in which holding area to store the container”), 6:36–37 (“[t]he collating unit is also operable to associate a stored container with a patient based on the patient’s name”). And it is also true 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.” ’601 patent, 3:6–11. But a specification’s focus on one particular embodiment or purpose cannot limit the described invention where that specification expressly contemplates other embodiments or purposes.
[Appellate Decision]. (patent drafters consider the plural in of “other embodiments“)
An amazing aspect of this case is that the distinguishing feature for written description is the focus on whether a patient’s name is being used to sort bottles (vs some number). On remand, the defendant’s next round involve Alice.
MPEP 2173:
Further, without reciting the particular structure, materials or steps that accomplish the function or achieve the result, all means or methods of resolving the problem may be encompassed by the claim. Ariad Pharmaceuticals., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1353, 94 USPQ2d 1161, 1173 (Fed. Cir. 2010) (en banc). See also Datamize LLC v. Plumtree Software Inc., 75 USPQ2d 1801 (Fed. Cir. 2005) where a claim directed to a software based system for creating a customized computer interface screen recited that the screen be “aesthetically pleasing,” which is an intended result and does not provide a clear cut indication of scope because it imposed no structural limits on the screen. Unlimited functional claim limitations that extend to all means or methods of resolving a problem may not be adequately supported by the written description or may not be commensurate in scope with the enabling disclosure, both of which are required by 35 U.S.C. 112(a) and pre-AIA 35 U.S.C. 112, first paragraph. In re Hyatt, 708 F.2d 712, 714, 218 USPQ 195, 197 (Fed. Cir. 1983); Ariad, 598 F.3d at 1340, 94 USPQ2d at 1167. For instance, a single means claim covering every conceivable means for achieving the stated result was held to be invalid under 35 U.S.C. 112, first paragraph because the court recognized that the specification, which disclosed only those means known to the inventor, was not commensurate in scope with the claim.
Ben,
So what?
Try to do more than just cut-n-paste some MPEP section and show that you can actually employ critical thinking to the actual points presented here.
(your cut-n-paste just does not cut it)
Remember, we are talking about the case where the applicant has indeed provided enablement.
My Comment at #10 below, and the comments it elicited, prompts another foray.
Litigators and judges play an eternal game of cat and mouse. Drafters are told by the litigators how to draft, which in turn prompts the judges to change the Rules of the Game, and so the rules of good drafting then have to change to reflect the changed Rules.
For example, that section of the specification that used to be sub-titled “Summary of the Invention” is now just the “Summary” (of what, we are not told) and every instance of the word “invention” is purged from the specification.
Currently, we are seeing increased emphasis on the requirement for “possession” and a “written description”, in order to nudge drafting back towards what makes sense.
In #10, I allude to the EPO emphasis on the “undisclosed intermediate generalisation”. Its counterpart in the USA is the beefed-up WD requirement.
My point is “A rose by any other name” and that it’s a small world, getting smaller all the time.
That’s a rather long winded way to say “anon is right.”
😉
I thought it was a long winded way to place Disney on the same plane with Shakespeare. I guess beauty is in the eye of the beholder.
…and you again make an errant assumption that judicial nudges are always “towards what makes sense.”
The current morass from the judicial muckery on 101 is a clear example of such misguided “nudging.” The Court’s own “scrivining,” is driven by something other than “what makes sense.”
…and finally, subsumed in “your point” that the world is getting smaller all the time is the errant view that differences between sovereigns are not important – there just is no excuse for your mantra that continues to ignore the differences in sovereigns and your posts to the contrary are nothing but base propaganda and the worst of “say something often enough so that it garners the appearance of truth.”
An astonishing number of comments in this thread have to do with the different but complementary roles of the “enablement” and “written description” requirements. There seems to be much unnecessary confusion. An example might help.
Applicant files, summarises the invention as “fruit” and claims fruit. Enables with a Worked Example, an orange.
But PTO cites an apple. So Applicant narrows to “core-free fruit”, (or “segmented fruit” or “citrus fruit”. Fails on WD because the application as filed is devoid of any announcement that invention lies in core-less (or segmented, or citrus) fruit.
The worked example of the orange enables all of the claims, but at the filing date the inventor had not nailed the concept of core-less or segmented or citrus fruit.
As the FtF regime of the AIA starts to bite, the difference will assume ever-greater significance.
Your “word” example assumes the “answer” you think that you want.
You SAY that the worked example of an orange is enabled.
How then does THAT happen without the possession of said orange?
Clearly, to enable the orange, one WOULD have to cover the core-less or segmented or citrus aspects (else wise, did you REALLY enable?) – remember, in your example, it is the applicant that has enabled (did you pick that up, Ben?)
All that you have done, MaxDrei, is, well, nothing.
Nothing? Well I enabled other readers to comment, and thereby reveal whether or not they understand the different concepts of WD and enablement.
Yes, by the way. The application as filed does enable the claimed subject matter. Nevertheless, the application as filed fails to demonstrate possession of the claimed subject matter, at the intermediate level of generality set forth in the amended claim.
Great – but you still have missed the point of all those “astonishing number of comments”
Were you really aiming for that?
You also presume far too much (standard boilerplate) that allows applicants to claim that very same “intermediate level of generality“
(most of us here in the States are already familiar with the Patent Profanity of things like “this invention is” and long have changed drafting styles to compensate)
…or as Professor Crouch put it: “holding that the patentee included a sufficient number of wobbly-words to avoid limiting the specification.”
😉
I’m guessing that sort of obfuscation cuts the mustard in 2XXX art units, but not 36XX, eh?
Sorry Ben, I recognize the attempt at humor (or is it ad hominem), but do not recognize what point you are attempting to make.
At 7.1.2.1.1.1 anon flatly refuses to explain why it is a given that an inventor has enabled their invention.
However, it’s worth it to develop this argument as it looks like it is the crux of anon’s and Les’s confusion with regards to the distinction between enablement and written description.
anon, when an examiner gives a 102 rejection, should they give an enablement rejection as well, because the invention was clearly enabled BEFORE the application? Do the typical Wands factors apply to this special 102-enablement rejection?
Absolutely wrong Ben.
Try reading the explanations given in several places.
Give me the post number of one such explanation.
Take your pick – all the posts are still here.
(start with 7.1)
Read slowly if you must.
“There is a bit of the “Aried-logic flaw” in play by Les.
How can one have enabled something that one does not possess?”
That does not explain why it is a given that the inventor enabled the invention.
The ONE who enabled something…..
(again – I am the one that set up the premise under discussion….)
You are more than free to set up a different premise. In fact I note as much at 12:55: (the post number is “…”)
“Now, my little presentation of the “Ariad-logic problem” is but one mode of that defining of having possession (and certainly not the only mode), but nonetheless, there really ARE times when both rise and fall together.“
And any confusion is NOT belonging to me.
Continuing to refuse to explain means you are at least partially at fault.
I DID explain – you were not listening.
That’s a “YOU” problem.
Your own example of a 102 rejection is the tripe that you tried to pull below.
It’s not an example. It’s a question posed to try to deduce your position. However, you clearly have no interest in advancing the conversation. You’re a lowlife.
You used a strawman to “deduce my position”….?
And you call ME a lowlife…?
LOL – stop taking Malcolm’s memes.
It was a question. Not a strawman. You could have said “no, of course not” and then explain how the “inventor” enabled that which was ALREADY enabled.
Read your tripe again.
Please.
😉
This case is only remarkable because of the district court’s apparent lack of understanding of basic civil procedure and patent law. This is the second appeal and reversal in a case that should have gone to trial or settle a long time ago. (It was filed in 2006). While enablement is an important issue in this case, the district court erroneously granted summary judgment invalidating the claims and the CAFC reversed that decision in the first appeal because there exist triable issues of fact as to the description’s meaning to a person of ordinary skill in the art.
Upon remand, the district court apparently confused the written description with “invention,” and decided that the claims were invalid because they were broader than the embodiments. This non-existent ground for invalidity was properly reversed by the CAFC in the second appeal, so that the issues of enablement, obviousness, etc. can proceed to trial or settlement (unless the district court grants another ill-advised motion during this remand.
Indeed. However, “confus[ing] the written description with ‘invention,’ and decided that the claims were invalid because they were broader than the embodiments” is directly attributable to some of the Fed. Cir.’s own panel decisions, primarily by the dissenters in In re Phillips, cited by the D.C.
P.S. Unnecessary D.C. and appellate legal fees fiascoes for clients, as in this old case, should be avoidable for newer cases where IPR or CBM alternatives are available.
“…decided that the claims were invalid because they were broader than the embodiments. This non-existent ground for invalidity…”
Nonexistent, but with historical precedent. Lizardtech taught A*sub*specific but claimed A*sub*broad, and was shot down by CAFC.
Ben: Are you saying “as to enable any person skilled in the art to which it pertains” is more stringent a requirement than “so that any person skilled in the art can make and use the invention without undue experimentation”
No, I am not. And I believe that was clear when I said your description of enablement was fine.
You appear to be desperately avoiding Ariad.
There is a bit of the “Aried-logic flaw” in play by Les.
How can one have enabled something that one does not possess?
How can one have enabled something that one does not possess?
I think it’s possible because the term “possess” in this context is a legal term. It means that you have a fixed and permanent idea of what you’ve claimed, and you’ve evidenced that in your specification.
“Select a drug from the group consisting of X and Y and administer it to treat your headache” is an enabled method claim. Anybody can select drug X and administer it!
But if all you have in your spec is a disclosure of 1000 different drugs that “might work” to treat a cold and 1000 sentences describing administering each of them (including X and Y), then you don’t “possess” the invention, at least not at the time of filing.
That’s one answer to your question.
The “legal term” answer does not hold what you think that it holds, Malcolm.
For example: product by process claims.
Also, it is black letter law that for a group, not all embodiments have to work….
Also – and one of my pet peeves – ALL Pharma patents do not know or “possess” their utility at time of filing, because they are ALL filed prior to proving out efficacy with the FDA.
Hey, you want your way? The ENTIRE Pharma industry is going to be a little peeved.
Additionally, multiplicity alone does not negate possession (your very example is flawed because your specification shows the exact same possession in both cases with the only difference being one of number of items that you possessed).
I can be pre-enabled by the state of the art regardless of whether the inventor enabled the invention.
That’s nice – but that’s not what we are talking about.
It is a given in our conversation that the ~
applicant
is the one that has enabled, and given that fact, how is it that she can be said ~
not to possess the very thing that she has enabled.
Uh, why is that a given?
Because it is – I have noted this below, and the comment above also indicates this.
I am the one that introduced this “Ariad-logic fault.”
anon, since you’re confused, take a look at this:
“Because it is”.
That’s a cop out. Just FYI.
No cop out – and no confusion (on my part).
Try reading the posts Ben – I was the first to point out the Ariad-logic fault and I explicitly noted that it was the applicant that provided the enablement.
You might want to try explaining yourself for once in your life. Your online discussions, and I daresay your practice, might improve.
LOL – asked and answered – thanks (and my practice is wonderful, but thank you eve so much for your concern).
You’ve mentioned this twice below. It would be easier to keep the replies in one place.
So…
Why is it a given that the applicant has enabled the invention?
Lol – amswered in several places.
You asserted it in several places. I am not surprised that you might confuse asserting and explaining. Can you point me to the post # where you explained why it is a given that the applicant has enabled the invention? Maybe it got caught in the filter. Or maybe you could just provide the explanation.
Asserted AND explained.
Clearly.
“explained.”
Falsehood. Give me the post #.
As I said: take your pick, all of the posts are still here.
Well, if you are not saying that, then you agree with me that if something is enabled, it is described.
As anon observed, how can one enable something that isn’t adequately described?
So, forgive me for taking a short cut and referencing only the enablement lingo…
Still desperately avoiding Ariad, huh?
They explicitly said that enabled scope could be undescribed.
Ariad: “Thus, although written description and enablement often rise and fall together, requiring a written description of the invention plays a vital role in curtailing claims that do not require undue experimentation to make and use, and thus satisfy enablement, but that have not been invented, and thus cannot be described. For example, a propyl or butyl compound may be made by a process analogous to a disclosed methyl compound, but, in the absence of a statement that the inventor invented propyl and butyl compounds, such compounds have not been described and are not entitled to a patent.”
I don’t think he is “desparately avoiding” it as he is merely playing on the fault in logic that remains in that decision.
You keep on saying something that is not happening, while it is you that is avoiding confronting that fault in logic.
The point here being that you have agreed that the item has been enabled. The question remains: how do you find enablement without possession?
(This might be related to the part of the quote of rising and falling together – something that does not always happen, but on the other hand, something that can (and does) happen.
“The question remains: how do you find enablement without possession?”
Because what one of ordinary skill in the art can make and use without undue experimentation can cause a claim to be enabled, even if there is nothing useful in the disclosure.
If its enabled, then clearly the disclosure included everything that was needed and the thing is sufficiently described.
A five year old claims “A rocket!” The claim is obviously enabled. Does one of ordinary skill in the art conclude that the applicant was in possession of the invention?
You are moving the goalposts…
I’ll bet that anon thinks the kid with the swing set patents enabled swingsets! I feel bad for his customers as he clearly puts his ideology above common sense or the law.
Nothing of the sort Ben – sorry that you are having a difficult time facing the problem that I have pointed out.
Utility of the disclosure…?
You are wandering off track
(And how exactly is something with no utility enabled…?)
Ben,
You still have not dealt with the fault in logic.
Are you “desparately avoiding” correcting that fault in logic?
😉