Invalidating Patent Claims For Failing to Include Required Aspects of an Invention
In last month’s blog, we discussed the Federal Circuit’s decision in X2Y Attenuators, LLC. V. International Trade Commission, a case which demonstrated how limiting descriptions of an invention in a patent specification can be used to restrict the scope of otherwise facially broad claims. This month, in ScriptPro, LLC v. Innovation Associates, Inc.,the Federal Circuit considered another possible impact of providing such limiting descriptions in the specification: invalidation of the claims under the Patent Statute’s written description requirement. Click here for a copy of the opinion.
One thorny issue in the patent law is whether and under what circumstances patent claims can be invalidated for “overbreadth” when they are otherwise novel and non-obvious over the prior art. We have discussed the issue previously in our blog. The ScriptPro opinion demonstrates that when a specification describes an invention in limiting terms, claims that are broader than the limiting description can potentially be invalidated for violating the written description requirement.
In ScriptPro the Federal Circuit considered a challenge to the validity of patent claims directed to a collating unit for storing prescription containers dispensed by an automatic dispensing unit. The challenged claims recited a number of components, none of which included sensors for determining the presence of containers within the collating unit. However, every embodiment in the specification mentioned such sensors, and the specification included the following statement: “The present invention broadly includes . . . a plurality of sensors.” The district court granted summary judgment of invalidity, holding that no reasonable jury could have found that the inventors were in possession of a collating unit that lacked sensors. Opinion at 6.
The Federal Circuit reversed but acknowledged that if the specification had “sufficiently clear language . . . that limit[ed] the invention to a collating unit with the . . . sensors,” summary judgment of invalidity under the written description requirement might have been proper. Opinion at 8. However, the Court found that the patent lacked such language. The Court closely analyzed the specific language of the embodiments to come to the conclusion that sensors could be characterized as “optional.” Notably, the Court held that the phrase “broadly includes . . . a plurality of sensors” suggested that sensors are not mandatory because of the word “broadly.” Opinion at 8-9. It could be argued that the Court went to great lengths to find a way to interpret the embodiment descriptions in the patentee’s favor. However, the patentee merely defeated summary judgment. Now the issue will be tried to a jury that will likely be confronted with a “battle of the experts” over how the specification would have been interpreted by a person of ordinary skill in the art.
What is important to notice when comparing this case to X2Y Attenuators is that there was no feature in the Scriptpro claims that the Court could use as a textual hook to limit the claims to require sensors. Otherwise, it seems likely that the district court would have construed the claims to require sensors based on the statements in the specification. Notably, claim construction is a legal issue, while compliance with the written description requirement is a factual issue. Thus, if the claims were construed to require sensors, the Federal Circuit may well have affirmed summary judgment of non-infringement (assuming the accused products indisputably lacked sensors). Ordinarily, a case such as Scriptpro would probably have been decided in the patentee’s favor because the originally-filed claims did not include sensors. However, the opinion indicates that the patentee may have waived that issue, so the Federal Circuit did not base its opinion on it.
The Scriptpro opinion is important both for patent prosecutors and patent litigators. Patent prosecutors should (again) be reminded of the dangers of including limiting characterizations of an invention in their specifications. Litigators should take note that when limiting characterizations of an invention are present in the specification of an asserted patent, not only may they provide a basis for seeking a narrowing claim construction to secure a judgment of non-infringement (as in X2Y Attenuators), but they also may provide a basis for invalidating the claims under the written description requirement if the court declines to construe the claims narrowly.