Scriptpro, LLC and Scriptpro USA, Inc. v. Innovation Associates, Inc.

United States Court of Appeals
for the Federal Circuit
______________________
SCRIPTPRO, LLC AND SCRIPTPRO USA, INC.,
Plaintiffs-Appellants,
v.
INNOVATION ASSOCIATES, INC.,
Defendant-Appellee.
______________________
2013-1561
______________________
Appeal from the United States District Court for the
District of Kansas in No. 06-CV-2468, Judge Carlos
Murguia.
______________________
Decided: August 6, 2014
______________________
T RAVIS W. M CCALLON, Lathrop & Gage LLP, of Kan-
sas City, Missouri, argued for plaintiffs-appellants. With
him on the brief were A. J USTIN P OPLIN, R. SCOTT BEELER ,
and J ENNIFER M. HANNAH , of Overland Park, Kansas.
ANGELA D. MITCHELL , Shook, Hardy & Bacon L.L.P.,
of Kansas City, Missouri, argued for defendant-appellee.
With her on the brief were B. T RENT WEBB and CHRISTINE
A. G UASTELLO.
______________________
Before T ARANTO, BRYSON, and H UGHES , Circuit Judges.

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SCRIPTPRO, LLC v. INNOVATION ASSOCIATES 2
T ARANTO, Circuit Judge.
Plaintiffs ScriptPro, LLC and ScriptPro USA, Inc.
(collectively, ScriptPro) sued Innovation Associates, Inc,
alleging infringement of claims 1, 2, 4, and 8 of U.S.
Patent No. 6,910,601. The district court granted sum-
mary judgment for Innovation Associates, holding that
the asserted claims were invalid under 35 U.S.C. § 112, ¶
1 (now § 112(a)), which requires, for a claim to be valid,
that the patent’s specification describe the subject matter
defined by the claim. The court rested its 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
LLC v. Innovation Assocs., Inc., No. 06-2468, 2012 WL
2402778 (D. Kan. June 26, 2012). ScriptPro appeals.
Because summary judgment of invalidity on that ground
is not appropriate here, we reverse. We do not have
before us, and therefore do not address, other questions
that may be raised by the generality of the language of
the claims.
BACKGROUND
The ’601 patent describes as the invention a “collating
unit,” which works with an “automatic dispensing system”
that automatically fills and labels pill bottles or other
prescription containers. The collating unit has a number
of storage positions (e.g., slots) into which containers are
placed as they emerge from the dispensing system. “The
unit stores prescription containers according to a storage
algorithm that is dependent on a patient name for whom
a container is intended and an availability of an open
storage position in the collating unit.” ’601 patent, col. 4,
lines 22-25 (summary of the invention).
In addition to noting that the invention enhances ac-
curacy and efficiency for pharmacies generally, id. at col.
6, lines 21-32, the patent emphasizes patient-specific
collating as an advantage: the collating unit “can collate

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SCRIPTPRO, LLC v. INNOVATION ASSOCIATES 3
and store multiple containers for a patient within the
same area.” Id. at col. 6, lines 37-38. The patent de-
scribes this feature as an improvement over the prior art,
which (1) stored only one prescription container in each
holding area and (2) stored the prescription containers
using a container-specific, not patient-specific, identifier.
See id. at col. 3, lines 4-8. In this court, ScriptPro empha-
sizes that this ability—correlating a specific holding area
to a specific patient—is one of the primary goals of the
’601 patent. See Br. of Appellant 23, 28.
The claims included in the original application issued
without change. As issued, the ’601 patent had 21 claims.
All began with the same preamble—“A collating unit for
automatically storing prescription containers dispensed
by an automatic dispensing system, the collating unit
comprising . . .”—followed by a list of required elements.
For example, claim 1 read:
1. A collating unit for automatically storing pre-
scription containers dispensed by an automatic
dispensing system, the collating unit comprising:
a storage unit for storing the containers
delivered by an infeed conveyor;
a plurality of holding areas formed within
the storage unit for holding the contain-
ers;
a plurality of guide arms mounted within
the storage unit and operable to maneuver
the containers from the infeed conveyor
into the plurality of holding areas; and
a control system for controlling operation
of the infeed conveyor and the plurality of
guide arms.
Original ’601 patent, col. 15, line 58, to col. 16, line 2.
Some additional language was added to claims 1, 2, and 4

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SCRIPTPRO, LLC v. INNOVATION ASSOCIATES 4
(but not to claim 8) when the claims were reexamined, but
no party has suggested that the amendments bear on the
issue currently before us.
The issue before us involves “sensors.” Like the just-
quoted original claim 1, the claims asserted here do not
require “sensors.” Other claims of the ’601 patent do
require the use of a “plurality of sensors” to (with minor
variations in the language used) “sense the presence of
the containers stored in the collating unit.” ’601 patent,
col. 16, lines 58-59 (claim 9).
According to the specification, “[t]he collating unit of
the present invention broadly includes” several compo-
nents: “an infeed conveyor, a base, a collating unit con-
veyor, a frame, a plurality of holding areas, a plurality of
guide arms, a plurality of sensors, and a control system.”
Id. at col. 4, lines 26-29 (emphases added to highlight
terms of interest to the analysis). See also id. at Abstract
(the invention “broadly comprises” several components,
including “a plurality of sensors”). The patent states:
“The plurality of sensors”—at the holding areas—“are
operable to determine the presence of a container within
the collating unit.” Id. at col. 4, lines 61-62. The patent
describes how, “[i]n operation,” when a container for a
particular patient comes out of the dispensing system,
“[t]he control system” of the collating unit
determines in which holding area to store the con-
tainer. The selected holding area is dependent on
whether previous containers for the patient have
been stored in the collating unit and not yet re-
trieved. If containers for the patient have already
been stored and not yet retrieved, the control sys-
tem determines if the holding area has space to
store the additional container.
Id. at col. 5, lines 40, 46-52. The patent then adds:

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SCRIPTPRO, LLC v. INNOVATION ASSOCIATES 5
To accomplish this, the sensor positioned at the
open end of the holding area determines if the
holding area is full. If the holding area is not full,
the container is stored in the holding area. If the
holding area is full, or if no container for the pa-
tient has been stored and not yet retrieved, the
control system selects the first empty holding area
for storage of the container.
Id. at col. 5, lines 52-59. Having described placement of a
container into a slot, the patent also addresses retrieval:
When an operator of the collating unit desires to
retrieve the container from the holding area, the
operator may input the identifying information for
the prescription, such as the patient’s name, into
the control system via the input device. Alterna-
tively, the operator may scan the bar code on the
paperwork of the prescription . . . . The control
system then instructs an indicator . . . to flash,
which indicates the holding area location of the
desired container.
Id. at col. 6, lines 11-20. Those descriptions appear in the
“summary of the invention.” Additional language rele-
vant to the issue presented here appears in the descrip-
tion of preferred embodiments.
In October 2006, ScriptPro brought this infringement
suit against Innovation Associates, which competes with
ScriptPro in selling machines for automatic dispensing of
prescriptions. Innovation Associates counterclaimed on
various grounds, including invalidity. Shortly thereafter,
Innovation Associates initiated an inter partes reexami-
nation of the ’601 patent at the United States Patent and
Trademark Office, and the district court stayed proceed-
ings in this case to await the PTO’s determination.
On January 4, 2011, the PTO completed its reexami-
nation of the ’601 patent. It confirmed claims 1 and 2 as

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SCRIPTPRO, LLC v. INNOVATION ASSOCIATES 6
substantively amended in ways not relevant to this ap-
peal. It confirmed claim 4, formerly a dependent claim, as
rewritten to be an independent claim, but not otherwise
amended. And it confirmed claim 8 without amendment.
Proceedings in this infringement suit resumed. The
district court construed certain claim terms, and the
parties filed cross-motions for summary judgment. On
June 26, 2012, the district court granted summary judg-
ment of invalidity on the ground that the patent’s specifi-
cation does not describe the subject matter of the asserted
claims, which do not require sensors. ScriptPro LLC v.
Innovation Assocs., Inc., No. 06-2468-CM, 2012 WL
2402778 (D. Kan. June 26, 2012).
The court agreed with Innovation Associates that the
specification indisputably limits the invention to a collat-
ing unit that uses sensors to determine whether a particu-
lar holding area is full when selecting a holding area for
storage of a prescription container. The court concluded:
“no reasonable jury could find that the inventors were in
possession of a collating unit that operated without sen-
sors.” Id. at *7. The court rejected, as insufficient to
prevent summary judgment, the deposition testimony and
(unsworn) report of ScriptPro’s expert, Dr. Faddis, who
stated that “it is clear from the written description of the
’601 Patent that sensors are not required to practice the
claimed invention” because, “[f]or example,” “the collating
unit could simply keep track, in memory, [of] what stor-
age locations are available and simply route the appropri-
ate prescriptions to these locations.” J.A. 3191. The court
dismissed Dr. Faddis’s opinion as “entirely conclusory”
and “only offer[ing] an opinion on the ultimate legal issue
that is not helpful to the jury.” ScriptPro, 2012 WL
2402778, at *7.
Although a state-law counterclaim remained in the
case for a year, in July 2013 what was left of the case was
dismissed. ScriptPro timely appealed, raising only a

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SCRIPTPRO, LLC v. INNOVATION ASSOCIATES 7
written-description issue here. We have jurisdiction
under 28 U.S.C. § 1295(a)(1).
D ISCUSSION
A grant of summary judgment is reviewed de novo.
Crown Packaging Tech., Inc. v. Ball Metal Beverage
Container Corp., 635 F.3d 1373, 1380 (Fed. Cir. 2011).
“Compliance with the written description requirement is
a question of fact,” and summary judgment is proper if
and only if “no reasonable fact finder could return a
verdict for the non-moving party” on the issue. PowerOa-
sis, Inc. v. T–Mobile USA, Inc., 522 F.3d 1299, 1307 (Fed.
Cir. 2008).
We have a narrow issue: whether the absence of sen-
sors from the claims at issue means that those claims are
unsupported by the written description as a matter of
law. We do not have before us other questions that might
be raised by the generality of the claim language. We
note one such question because it is related to what
ScriptPro, in making its present argument, stresses as a
central purpose of the invention described in the specifica-
tion: to keep track of what slots are open and what slots
are being used for a particular customer. See, e.g., Br. of
Appellant 23 (“one of the primary goals of the invention is
to ‘associate a stored container with a patient based on
the patient’s name’ and then ‘collate and store multiple
containers for a patient within the same area’”) (quoting
’601 patent, col. 6, lines 35-38). It is not immediately
apparent how the claim language, properly construed,
requires any means of achieving that purpose. We simply
assume, for present purposes, that it does.
On the sole issue presented, the starting point is that
the specification’s description of embodiments having
sensors for providing information about slot allocations
and availability does not necessarily mean that the only
described invention is a collating unit with such sensors.
It is common, and often permissible, for particular claims

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SCRIPTPRO, LLC v. INNOVATION ASSOCIATES 8
to pick out a subset of the full range of described features,
omitting others. E.g., Crown Packaging, 635 F.3d at
1380-81; Revolution Eyewear, Inc. v. Aspex Eyewear, Inc.,
563 F.3d 1358, 1366-67 (Fed. Cir. 2009); cf. Phillips v.
AWH Corp., 415 F.3d 1303, 1326-27 (Fed. Cir. 2005). A
specification can adequately communicate to a skilled
artisan that the patentee invented not just the combina-
tion of all identified features but combinations of only
some of those features (subcombinations)—which may
achieve stated purposes even without omitted features.
The specification in this case does not preclude that
result as a matter of law. ScriptPro could establish that
the written description conveys to the relevant skilled
artisan that “the inventor[s] actually invented the inven-
tion claimed” in claims 1, 2, 4, and 8. Ariad Pharm., Inc.
v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010).
There is no sufficiently clear language in the specification
that limits the invention to a collating unit with the (slot-
checking) sensors. And considering what the specification
does say, and what ScriptPro highlights as a central
purpose of the claimed advance in technology, it cannot be
said as a matter of law that claims 1, 2, 4, and 8 have a
scope incommensurate with what is described as the
invention.
Neither the specification’s declaration that “[t]he col-
lating unit of the present invention broadly includes . . . a
plurality of sensors” nor the “broadly comprises” language
of the Abstract is enough to support the invalidity ruling
on summary judgment. ’601 patent, col. 4, lines 25-28; id.
at Abstract. The term “broadly” qualifies the assertion of
inclusion. Like “generally,” the qualifier “broadly” sug-
gests that exceptions are allowed to the assertion of what
occurs most (perhaps even almost all) of the time. The
combination “broadly includes” might have a more abso-
lute meaning when followed by an enumeration of exam-
ples of what precedes the phrase, e.g., “The term ‘law’
broadly includes constitutional provisions, statutes,

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SCRIPTPRO, LLC v. INNOVATION ASSOCIATES 9
regulations, . . . .” When followed by a list of individual
components of the subject preceding “broadly includes,”
however, the phrase, which is unusual, does not plainly
convey such an absolute meaning. Indeed, a less than
absolute meaning tends to be suggested by the very fact
that the word “broadly” has been included: what is the
word doing in the phrase if not to moderate an otherwise-
straightforward assertion that the inventive collating unit
“includes” the enumerated items? We conclude that the
“broadly includes”/“broadly comprises” phrases are less
than a clear statement of limitation that a skilled artisan,
if being reasonable, would have to read as requiring the
slot sensors at issue.
The specification statement that “[t]he plurality of
sensors are operable to determine the presence of a con-
tainer” in the collating unit, id. at col. 4, lines 61-62, by its
terms says what the itemized sensors can do when they
are present. It does not declare that they must be pre-
sent. Seemingly more helpful to the invalidity challenge,
the specification says that “[t]o accomplish” the determi-
nation whether a slot has space “the sensor positioned at
the open end of the holding area” detects whether the
area is full. Id. at col. 5, lines 52-54. But that too might
be read as saying what the sensor does when it is used,
not that it must be used.
Importantly, the just-quoted passages do not stand
alone. The specification, in describing preferred embodi-
ments, elsewhere positively suggests that slot sensors are
an optional, though desirable, feature of the contemplated
collating unit. The specification says: “[i]f the sensor . . .
does confirm the presence of the container,” the collating
unit selects the next empty holding area for storage. Id.
at col. 12, lines 30-33 (emphasis added, figure component
numbers omitted). Relatedly, it describes such a sensor
as a “security feature” to “determine if any container is
located in the [holding] area.” Id. at col. 14, lines 32-37
(emphasis added). Those references to the sensor’s func-

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SCRIPTPRO, LLC v. INNOVATION ASSOCIATES 10
tionality tend to suggest that its absence would not pre-
vent the system from working—that whether the holding
area is full can first be determined through other means
and then later “confirmed” by the sensors. The same
suggestion is present in the passage referring to use of
sensors to determine whether the collating unit should
display an “error message,” which seems to presuppose an
independent source of the information for comparison. Id.
at col. 12, lines 6-11. Those passages seem to provide a
basis for a skilled artisan to read the specification as
characterizing the slot sensors as a desirable, but ulti-
mately optional, feature of the invention.
The suggestion in the particular language just quoted
aligns with the disclosure’s explanation of functions
sought to be achieved by the invention. The claims to a
sensorless collating unit cannot be said on summary
judgment to be too broad given that disclosure. A skilled
artisan may well be able reasonably to read the specifica-
tion as teaching a specific means of achieving a central
stated purpose of the asserted invention without the slot
sensors.
As quoted above, the specification describes the “con-
trol system” as initially selecting a slot for storage of a
particular prescription container based on the patient’s
identity—which might well be understood to suggest a
computer memory in the control system that keeps track
of slot-patient assignments. ’601 patent, col. 5, lines 46-
52. Similarly, the specification describes the control
system’s receipt of information about what containers
have been retrieved from particular slots. Id. at col. 6,
lines 11-20. Even without regard to whether the control
system is preprogrammed to know the capacity of particu-
lar slots, those disclosures might be understood to show
use of the control system itself to achieve the highlighted
functionality without the “confirm[ing]” check of slot
sensors. Indeed, the specification, in describing a pre-
ferred embodiment, says that “[a]s containers are stored

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SCRIPTPRO, LLC v. INNOVATION ASSOCIATES 11
in the collating unit, the control system . . . stores such
information in the memory,” so that an operator “may at
any time determine which containers are currently stored
in the collating unit and the location of the containers
. . . .” Id. at col. 12, lines 45-51 (figure component num-
bers omitted).
We understand ScriptPro’s expert, Dr. Faddis, to have
so stated. He indicated that a skilled artisan would read
the specification to disclose a “collating unit [that] could
simply keep track, in memory, [of] what storage locations
are available and simply route the appropriate prescrip-
tions to these locations.” J.A. 3191. While Dr. Faddis’s
report was not sworn under penalty of perjury, Innovation
Associates acknowledges that the district court considered
his opinion and does not argue that its decision to do so
was an abuse of discretion. See Br. of Appellee at 24. In
any event, the specification itself creates a genuine issue
of material fact on this question: a trier of fact could find
that a skilled artisan would understand the specification
to disclose a system that relies on the computer memory,
without sensors, to fulfill the central purpose of keeping
track of slot use by particular customers and slot availa-
bility, with sensors optionally providing confirmation
only. It is a separate question whether the claims claim
such reliance, but as already stated, we merely assume
the answer to that question, which is not before us.
We note one last point: as originally filed, the applica-
tion that matured into the ’601 patent had claims that did
not include a requirement of sensors. When a specifica-
tion is ambiguous about which of several features are
stand-alone inventions, the original claims can help
resolve the ambiguity, though even original claims may be
insufficient as descriptions or be insufficiently supported
by the rest of the specification. See Crown Packaging, 635
F.3d at 1380 (“Original claims are part of the specification
and in many cases will satisfy the written description
requirement.”) (emphasis added); LizardTech, Inc. v.

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SCRIPTPRO, LLC v. INNOVATION ASSOCIATES 12
Earth Res. Mapping, Inc., 424 F.3d 1336, 1346 (Fed. Cir.
2005) (noting “that an originally filed claim can provide
the requisite written description to satisfy section 112,”
but holding that “nothing in claim 21 or the specification
constitutes an adequate and enabling description” despite
the fact that “claim 21 is part of the original disclosure”).
Here, original claims omit a sensor requirement, an
omission that fits the bases in the specification for deem-
ing sensors to be merely optional.
Innovation Associates argues that ScriptPro waived
any argument that the originally filed claims demonstrate
the adequacy of the written description. We need not
decide that issue, however, because we have already
concluded that the specification, apart from those claims,
precludes summary judgment of inadequate written-
description support of claims not requiring sensors.
Reliance on the original claims will be available to
ScriptPro in further proceedings on this issue.
CONCLUSION
For the foregoing reasons, we reverse the district
court’s grant of summary judgment that claims 1, 2, 4,
and 8 of the ’601 patent are invalid under 35 U.S.C. § 112
for lack of an adequate written description.
REVERSED

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