The district court granted defendants’ motion for summary judgment of invalidity based on lack of written description, under § 112(1). It reasoned that the invention disclosed in the specification was “limited to sorting and storing prescription containers by patient name and slot availability,” and accordingly, “without including a limitation to address the storage by patient name, the claims are simply too broad to be valid.”

On appeal, the Federal Circuit reversed the district court’s grant of summary judgment.  It reasoned that “the specification’s focus on one particular embodiment or purpose cannot limit the described invention where that specification expressly contemplates other embodiments or purposes,” especially “where the originally filed claims are not limited to the embodiment or purpose that is the focus of the specification.”  The Federal Circuit emphasized that “original claims are part of the specification and in many cases will satisfy the written description requirement.”  The Court further reasoned that “the mere recognition in the specification that an aspect of a prior art system is ‘inconvenient’ does not constitute ‘disparagement’ sufficient to limit the described invention.” 

ScriptPro, LLC v. Innovation Associates, Inc., Case No. 2015-1565 (August 15, 2016); Opinion by: Taranto, joined by Lourie and O’Malley; Appealed From: United States District Court for the District of Kansas, Murguia, J.  Read the full opinion here.

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