{"id":1184,"date":"2016-08-15T12:00:14","date_gmt":"2016-08-15T16:00:14","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1184"},"modified":"2016-09-03T22:04:00","modified_gmt":"2016-09-04T02:04:00","slug":"broad-original-claims-prevent-invalidity-for-lack-of-adequate-written-description","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1184","title":{"rendered":"Broad Original Claims Prevent Invalidity for Lack of Adequate Written Description"},"content":{"rendered":"

In\u00a0Scriptpro LLC, v.\u00a0Innovation Associates, Inc.,<\/em> [2015-1565] (August 15, 2016), the Federal Circuit reversed Summary Judgment that\u00a0claims 1, 2, 4, and 8 of U.S. Patent
\nNo. 6,910,601 were invalid for lack of written description. \u00a0The patent was\u00a0directed to a \u201ccollating unit\u201d used\u00a0with a control center and an automatic dispensing system\u00a0(\u201cADS\u201d) to store prescription containers after a medication\u00a0has been dispensed into the containers.<\/p>\n

At issue was\u00a0whether the patent\u2019s specification limits the\u00a0invention to a collating unit that sorts and stores prescription\u00a0containers by patient-identifying information\u00a0and slot availability. In the decision appealed from, the\u00a0district court determined that the specification was limiting\u00a0and that the asserted claims, which are not so limited,
\nare invalid for lack of written description.<\/p>\n

The Federal Circuit agreed with the Patent Owner that\u00a0the specification does\u00a0not limit the claimed invention to sorting and storing\u00a0prescription containers by patient-identifying information. \u00a0The\u00a0patent expressly\u00a0states that containers can be sorted and stored \u201cby
\npatient, prescription, or other predetermined storage\u00a0scheme without input or handling by the operator.\u201d \u00a0Consistent with this express disclosure, the original\u00a0claims filed as part of the application from which the\u00a0patent issued were not limited to sorting and storing\u00a0prescription containers by patient-identifying information. \u00a0Rather, these original claims, like the asserted\u00a0claims, recite a collating unit that automatically stores\u00a0prescription containers dispensed by an ADS. As we have\u00a0explained, \u201c[o]riginal claims are part of the specification\u00a0and in many cases will satisfy the written description\u00a0requirement.\u201d<\/p>\n

A\u00a0specification\u2019s\u00a0focus on one particular embodiment or purpose cannot\u00a0limit the described invention where that specification\u00a0expressly contemplates other embodiments or purposes. \u00a0This is especially true in cases such as this, where the
\noriginally filed claims are not limited to the embodiment\u00a0or purpose that is the focus of the specification. \u00a0Similarly,\u00a0mere recognition in the specification that an aspect of a
\nprior art system is \u201cinconvenient\u201d does not constitute\u00a0\u201cdisparagement\u201d sufficient to limit the described invention \u2014\u00a0especially where the same specification expressly
\ncontemplates that some embodiments of the described\u00a0invention incorporate the \u201cinconvenient\u201d aspect.<\/p>\n

The Federal Circuit said that it is certainly\u00a0reasonable that different claims could be directed to\u00a0covering different aspects of the invention. Not\u00a0every claim must contain every limitation or achieve\u00a0every disclosed purpose. The original claims did not include
\na requirement that sorting and storing be done by use of\u00a0patient-identifying. \u00a0The Federal Circuit said that the district court erred\u00a0when it determined that the specification limited the\u00a0invention to storing prescription containers based on\u00a0patient name and slot availability.<\/p>\n

The Federal Circuit concluded that because the specification\u00a0does not limit the scope of the invention in the manner\u00a0the district court described, the asserted claims are
\nnot invalid for lacking such a limitation.<\/p>\n

 <\/p>\n","protected":false},"excerpt":{"rendered":"

In\u00a0Scriptpro LLC, v.\u00a0Innovation Associates, Inc., [2015-1565] (August 15, 2016), the Federal Circuit reversed Summary Judgment that\u00a0claims 1, 2, 4, and 8 of U.S. Patent No. 6,910,601 were invalid for lack of written description. \u00a0The patent was\u00a0directed to a \u201ccollating unit\u201d … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[7,31],"tags":[],"class_list":["post-1184","post","type-post","status-publish","format-standard","hentry","category-claim-constructino","category-written-description"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1184","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1184"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1184\/revisions"}],"predecessor-version":[{"id":1185,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1184\/revisions\/1185"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1184"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1184"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1184"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}