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ARTICLE · 13 OCTOBER 2014

ScriptPro’s Claims Not A Prescription For Invalidity

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
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U.S. Patent No. 6,910,601 (the '601 patent) relates to a machine for sorting pills, and automatically filling and labeling the bottles for individual patients.

United StatesIntellectual Property
J. Derek McCorquindale
J. Derek McCorquindale
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The recent Federal Circuit case ScriptPro, LLC v. Innovation Associates, Inc., No. 2013-1561 (Fed. Cir. Aug. 6, 2014), reversed the trial court's summary judgment invalidity determination under 35 U.S.C. § 112, ¶1 (now § 112(a)).  For a claim to be valid, the patent's specification must describe the subject matter defined in the claims.  See Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).  Typically, § 112, ¶1 is used to invalidate claims where an added claim element does not have adequate support in the written description to show possession as of the filing date.  In somewhat the other direction, the district court in ScriptPro rested its invalidity 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.'" ScriptPro, slip op. at 2 (citing ScriptPro LLC v. Innovation Assocs., Inc., No. 06-2468, 2012 WL 2402778

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