Scriptpro LLC v. Innovation Associates, Inc. (Fed. Cir. 2016) is an opinion that provides pointers on how to write a patent application based on a few of the arguments that were presented by the defendant attempting to invalidate the patent, specifically, failure to satisfy the written description requirement. By anticipating these types of arguments, it may mitigate potential invalidity attacks in the future.
Written Description requirement
In Innovation, ScriptPro (patent owner) sued Innovation (defendant, alleged infringer) for patent infringement under U.S. Pat. No. 6,910,601. Innovation argued that the patent was invalid for failing to satisfy the written description requirement. In determining whether the written description requirement was met, in general, the courts consider whether the patent reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter at the time the corresponding patent application was filed. Possession of the claimed invention is the determining factor as to whether the written description requirement was met.
Description of the patented invention
The ‘601 patent was directed to a collating unit used with an Automatic Dispensing System (“ADS”) to store prescription containers after the medication has been dispensed into the containers. The patent disclosed an ADS that sorts and stores prescription containers by patient-identifying information and slot availability. However, the claims in the patent were not limited to ADS’ that sort and store prescription containers by patient-identifying information and slot availability. The defendant argued that the inventor did not have possession of the broader invention wherein the ADS sorts and stores prescription containers without regard to the patient identifying information.
Broad description helped to satisfy the written description requirement
The Federal Circuit agreed that while the patent described many problems by sorting prescription containers by patient-identifying information solutions, not all of them did. For example, the Federal Circuit found that the ‘601 patent expressly stated the containers can be sorted and stored by the patient, prescription, or other predetermined storage scheme without input or handling by the operator.
The italicized language is a common language when writing a patent application. Other examples of language similar to the italicized language are “by way of example and not limitation, it is also contemplated that …” followed by alternative embodiments, features, and aspects not discussed with the preferred embodiment of the invention. If the patent disclosure includes a discussion of one problem being solved by the invention, then it may be a good practice to incorporate additional problems and possible solutions to mitigate potential attacks based on the failure to satisfy the written description requirement of a broader invention. In this case, the statement was not an extensive discussion but at least an identification of the problem and solution in a paragraph. This may be sufficient to broaden the patent application.
Broad claims helped to satisfy the written description requirement
Additionally, the court found that the claims as originally filed were not limited to sorting and storing prescription containers by patient-identifying information. Rather, the original claims were directed to a collating unit that automatically stores prescription containers dispensed by the ADS.
The Federal Circuit placed an emphasis on the original claims to show that the inventor had possession of the broadly claimed invention. The original claim refers to the claims as originally filed in a corresponding patent application. Please note that the provisional patent application does not require a claim set in order to be accorded a filing date. In this regard, it may be prudent to include one or more broad claims in a provisional patent application in order to establish possession of a broad version of the invention and not to include the claim set only when filing the corresponding non-provisional application.
A possible way to think about the invention in broad terms
With respect to the claim set of the non-provisional application, an exercise that might be helpful in crafting broad claims so that a broadly claimed invention satisfies the written description requirement is to identify the point of novelty of the invention. The point of novelty is the point at which the invention departs from the prior art. It can be elusive to properly identify the point of novelty but it should be attempted.
Disparagement of the prior art technology
Moreover, although the patent described prior art automated control center that stores containers based on the prescription number of the container, as opposed to storing the container based on a patient name as inconvenient, this also did not show that the patent owner did not have possession of the broadly claimed invention.
Instead, the Federal Circuit placed a strong emphasis on the originally filed claims and how it did not limit the claimed invention to one that is dependent upon the patient identifying information. Also, describing a prior art system as being inconvenient does not constitute disparagement sufficient to limit the scope of a claim, especially where the disclosure contemplates some embodiments incorporating the inconvenient feature.
In general, including negative comments on prior art technology in the patent application is not recommended. The reason is that negative comments could be construed as disparagement of the prior art and may only serve to limit the scope of the claim and not enlarge scope of the claim. Sometimes these negative comments can be used to distinguish the present invention from that of the prior art technology and help convince an examiner to allow the patent.
Include disparaging comments about prior art in other ways than in the patent application
In this case, it may be better to introduce those disparaging statements about the prior art in other ways that might not detrimentally affect the scope of the claim in the patent. For example, the deficiencies in the prior art may be presented in the remarks section of a response to an office action by the patent office. The deficiencies in the prior art may be presented in an information disclosure statement. These are all means of presenting the deficiencies in the prior art to the examiner outside of the patent disclosure itself.
I invite you to contact me with your patent questions at (949) 433-0900. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego, and surrounding cities.