In Patent Infringement One Word Makes all the Difference
In 2005, a pharmaceutical corporation named ScriptPro obtained a patent on a device relating to an automated prescription container dispensing system that automatically fills and labels pill bottles. See Scriptpro, LLC v. Innovation Associates, Inc., 2013-1561, 2014 WL 3844192, at * 1 (Fed. Cir. Aug. 6, 2014); COLLATING UNIT FOR USE WITH A CONTROL CENTER COOPERATING WITH AN AUTOMATIC PRESCRIPTION OR PHARMACEUTICAL DISPENSING SYSTEM, US PAT 6910601.
ScriptPro then brought suit against competitor Innovation Associates, who deals in pharmacy automation systems, for patent infringement. See Scriptpro, 2014 WL 3844192, at * 1. Innovation contended that ScriptPro’s patent was invalid because the specification described a machine having sensors, and yet the claims at issue did not have sensors. Id. The district court granted summary judgment for Innovation on this issue concluding that no reasonable jury could find that ScriptPro could operate its dispensing system without sensors. Id. at * 3. The court found that ScriptPro’s specification limited its invention to one that actually uses sensors. Id. The United States Court of Appeals for the Federal Circuit, however, disagreed with this conclusion and reversed. Id. at * 6-7.
In general, a specification must contain a description of an invention that would enable any person that is skilled in the field of that invention to make and use the invention. See 35 U.S.C.A. § 112(a) (West). The Court of Appeals analyzed ScriptPro’s specification, and in particular the language dealing with sensors. The specification stated that the invention “broadly includes … a plurality sensors.” See Scriptpro, 2014 WL 3844192, at * 4.
The court then analyzed what the word “broadly” means, and concluded that “broadly” does not actually require that ScriptPro’s invention actually include sensors. Id. The court then made the analogy that “the term ‘law’ broadly includes constitutional provisions, statutes, [and] regulations ….” suggesting that not each component of the “law” is actually required to resolve a dispute. See id. Similarly, not each component of ScriptPro’s invention (i.e. the sensors) is required to make a functioning device. The court noted that it is common and permissible “for particular claims to pick out a subset of the full range of described features [while] omitting others ….” id. at * 4, and that in this case, a skilled artisan could understand the specification to rely on a computer memory without sensors to fulfill the purpose of the invention, id. at 6.
This opinion essentially stands for the proposition that although one must describe his or her invention with sufficient particularity to avoid being indefinite and thus unpatentable, it is also important to paint the picture of the invention with broad brush strokes such as not to be confined within unnecessary limitations.
This opinion also highlights the importance of hiring a patent attorney who understands the canvass and the art of drafting an appropriate an appropriate and unobjectionable patent application. If you live in the Orange County or Los Angeles County areas, and have a new invention with various iterations that you would like to broadly protect, contact one of our skilled patent attorneys today.
André Ausseresses
JAFARI LAW GROUP®, INC.