Pulling Your Chestnuts Out of the Fire

It is an important tenet of Patent Law that the original claims are part of the application specification. In the United States that tenet was put to use by the CAFC in ScriptPro LLC v. Innovation Associates, Inc.

The case involved alleged infringement of US 6910601 by Innovation Associates (note that there is a reexamination certificate which is only available in the PDF version of the patent under “images”).

ScriptPro originally filed suit in October 2006 in the District court for the District of Kansas.  Innovation Associates filed a request for inter partes reexamination at the USPTO on August 17, 2007 (the reexamination request is available from PAIR if you look at the continuity data tab in US 6910601) in which they alleged invalidity for one or more of a multitude of “substantial new questions of patentability” according to §§ 102 and 103 based upon numerous references which were either not of record, or not actually employed in formulating a rejection, during the original examination.

The District court for the District of Kansas stayed their own proceedings during the USPTO proceedings, which ended on January 4, 2011. The USPTO confirmed the validity of independent claims 1 and 8 with minor amendments which have no bearing on the subsequent court proceedings.

Each of independent claims 1 and 8 are directed towards a “collating unit” which stores prescription [drug] containers in slots, with prescriptions belonging to a single patient being grouped together in the same slot.  Neither claim 1 nor claim 8 includes “sensors” as an element, although dependent claims 7 and 9 recite sensors and explain their relationship to base claims 1 and 8 respectively.

A third independent claim (13) recites sensors, but was not asserted against Innovation Associates.

Innovation Associates, following an unsuccessful three year attempt to invalidate the patent at the USPTO, asserted new grounds of invalidity at the District court. The alleged infringer pleaded that claims 1 and 8 of the patent in suit were invalid as lacking written description according to § 112; first paragraph (§ 112(a) in the AIA).

The District court granted summary judgment for Innovation Associates on June 26, 2012 (slightly less than 6 years after the suit was filed), holding that asserted claims 1 and 8 were invalid under 35 U.S.C. § 112, first paragraph, which requires, for a claim to be valid, that the patent’s specification describe the subject matter defined by the claim. The court rested its holding on a single conclusion- that the specification describes a machine containing “sensors,” whereas the claims at issue claim a machine that need not have “sensors.”

Upon deciding the case, the CAFC noted that “The claims included in the original application issued without change.” and that “Some additional language was added to claims 1, 2, and 4 (but not to claim 8) when the claims were reexamined, but no party has suggested that the amendments bear on the issue currently before us.

In light of these facts, the CAFC took a narrow view of its role as arbiter:

We have a narrow issue: whether the absence of sensors from the claims at issue means that those claims are unsupported by the written description as a matter of law.

The CAFC notes:

“…the starting point is that the specification’s description of  embodiments having sensors for providing information about slot allocations and availability does not necessarily mean that the only described invention is a collating unit with such sensors. It is common, and often permissible, for particular claims to pick out a subset of the full range of described features, omitting others.  E.g., Crown  Packaging, 635 F.3d at 1380-81; Revolution Eyewear, Inc. v. Aspex Eyewear, Inc., 563 F.3d 1358, 1366-67 (Fed. Cir. 2009); cf. Phillips v. AWH Corp., 415 F.3d 1303, 1326-27 (Fed. Cir. 2005).  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.

The specification in this case does not preclude that result as a matter of law. ScriptPro could establish that the written description conveys to the relevant skilled artisan that “the inventor[s] actually invented the invention claimed” in claims 1, 2, 4, and 8.  Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). 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, 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 CAFC then undertakes a review of all the places in the specification that describe the “sensors” and explains why the specification does not indicate that they are required.

As an Example:

According to the specification, “[t]he collating unit of the present invention broadly  includes” several components: “an infeed conveyor, a base, a collating unit conveyor, a frame, a plurality of holding areas, a plurality of guide arms, a plurality of sensors, and a control system.” Id. at col. 4, lines 26-29

When followed by a list of individual components of the subject preceding “broadly includes,” however, the phrase, which is unusual, does not plainly convey such an absolute meaning.  Indeed, a less than absolute meaning tends to be suggested by the very fact that the word “broadly” has been included: what is the word doing in the phrase if not to moderate an otherwise straightforward assertion that the inventive collating unit “includes” the enumerated items?  We conclude that the “broadly includes”/“broadly comprises” phrases are less than a clear statement of limitation that a skilled artisan, if being reasonable, would have to read as requiring the slot sensors at issue.

Near the end of the decision, the CAFC explicitly states the tenet that began this posting:

We note one last point: as originally filed, the application that matured into the ’601 patent had claims that did not include a requirement of sensors.  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.  See Crown Packaging, 635 F.3d at 1380 (“Original claims are part of the specification and in many cases will satisfy the written description requirement.”)  (emphasis added); LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1346 (Fed. Cir. 2005) (noting “that an originally filed claim can provide the requisite written description to satisfy section 112,” but holding that “nothing in claim 21 or the specification constitutes an adequate and enabling description” despite the fact that “claim 21 is part of the original disclosure”). Here, original claims omit a sensor requirement, an omission that fits the bases in the specification for deeming sensors to be merely optional.

Therefore, on August 6, 2014, the CAFC reversed the District court’s grant of Summary judgment and remanded for trial.

There are a couple of take home messages here:

First, the accused infringer was able to delay the start of any legal evaluation of whether their activities actually infringe the claims by nearly eight years. If they are eventually found to infringe, the patentee will want to say that any infringement after the time the suit was initiated (October 2006) was willful and should be punished by treble damages. The alleged infringer will respond that throughout the reexamination at the USPTO, the proceedings leading to summary judgment in the district court and the appeal to the CAFC they held a bona fide belief that the claims at issue were invalid. It seems likely that Innovation Associates is even now having an opinion of counsel prepared to support a future assertion that any infringing activity conducted after the CAFC decision was not willful either.

Second, it is always a good idea to describe things as “optional” or occurring “in some embodiments”. Explicit statements to that effect in the specification might have prevented the summary judgment at the district court and saved the time and expense associated with an appeal to the CAFC.

In the meantime, I salute the counsel for Innovation Associates. Delaying the beginning of any meaningful inquiry into what their client actually does and whether or not it constitutes infringing activity is a significant accomplishment, regardless of the final outcome of this case. One can only wonder whether there will be a request for certiorari here to buy even more time.