scriptpro (con d): propriety of a minimum elements generic...

ScriptPro (con’d): Propriety of a “Minimum Elements” Generic Claim

As noted previously, ScriptPro LLC v. Innovation Associates, Inc., __ F.3d __ (Fed. Cir. Aug. 6, 2014)(Taranto, J.), suggests that where a disclosed embodiment is a patentable combination of an invention with plural elements (e.g., “A+B+C”) but where a “minimum elements” combination is both novel and nonobvious (e.g., “A+B”), the “minimum elements” claim (e.g., “A+B”) may not meet the requirements of 35 USC § 112(a).

“Minimum Elements” Generic Claim for Optimum Coverage: As a practical matter, a “minimum elements” claim is often necessary for meaningful generic coverage and, as a matter of binding precedent, there is serious doubt as to whether the suggestion by the panel comports with such binding case law.

Conflict with Binding Precedent: The pdf version of this note contains details of case law in conflict with ScriptPro followed by a yellow highlight marked copy of the opinion.

Regards,

Hal

August 8, 2014


2

The “All Elements” Rule of the Pennwalt Case

Fundamental to any understanding of why there should be claims to a limited

number of elements of a combination is a detailed appreciation for the nuances of

Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931 (Fed. Cir. 1987) (en banc).

If there is a claim to a combination of elements that includes an “unimportant”

element that does not impact the overall result of an invention, a finding of

infringement requires that “all elements” be present. There is no basis to find

infringement where a competitor precisely copies the “gist” of the invention and the

“important” elements if any unimportant element of the claimed combination (or its

equivalent) is eliminated.

The “all elements” rule of Pennwalt is considered to be the law of the

Supreme Court. See Unidynamics Corp. v. Automatic Products Intern., Ltd., 157

F.3d 1311, 1322 (Fed. Cir. 1998)(Rich, J.)(referring to “the Supreme Court's all-

elements rule as enunciated in Warner-Jenkinson Co. v. Hilton Davis Chemical

Co., 520 U.S. 17 (1997)[.]”). As explained by the current Chief Judge of the

Federal Circuit in Athletic Alternatives, Inc. v. Prince Mfg., Inc., 73 F.3d 1573,

1581-82 (Fed. Cir. 1996)(Michel, J.):

“As we have often observed, *** the doctrine of equivalents is not a license to

ignore or ‘erase ... structural and functional limitations of the claim,’ limitations

‘on which the public is entitled to rely in avoiding infringement.’ Perkin-Elmer

Corp. v. Westinghouse Elec. Corp., 822 F.2d 1528, 1532 (Fed.Cir.1987). Liability

for infringement thus requires, without exception, that an accused product contain

each limitation or its equivalent [which principle has been called the ‘all

limitations’ or ‘all elements’ rule.] Dolly, Inc. v. Spalding & Evenflo Cos., 16 F.3d

394, 398 (Fed.Cir.1994); Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931,

935 (Fed.Cir.1987) ([e]n banc), cert. denied, 485 U.S. 961, 485 U.S. 1009 (1988).”


3

The Pennwalt “All Elements” Rule

The implications of the Pennwalt “all elements” rule may be seen from the

following hypothetical discussion based upon actual claim 1 of the case itself:

“1. An automatic sorting apparatus comprising

“[1] conveyance means for transporting a plurality of items to be sorted along a

track and having individual cups for transporting each said item, said individual

cups being connected in a continuous belt,

“[2] electronic weighing means incorporated into a portion of said track for

generating a signal proportional to the weight of said item to be sorted,

“[3] reference signal means for providing a predetermined number of reference

signals, the value of each signal established according to a predetermined criteria,

“[4] comparison means for comparing the signal generated by said electronic

weighing means to the reference signals provided by said reference signal means,

“[5] clock means for incrementally signalling changes in position of an item to be

sorted,

“[6] first position indicating means responsive to the signal from said clock means

and the signal from said comparison means for generating a signal indicative of the

position of the item to be sorted, and

“[7] discharge means responsive to the signal generated by said position indicating

means for discharging the item to be sorted at a predetermined position.”

If one as an initial draftsman is putting together a case for a fruit sorter as in

Pennwalt, is this claim too broad? Too narrow? The answer depends upon the

state of the prior art and the purpose of the claim.


4

If the only patentable novelty of the invention is found in the combination

of all seven elements, then the claim is as broad as can be drafted. But, if it

appears on drafting the application that a fruit sorter with element [2], alone,

establishes patentable novelty, then the claim is far too narrow as a generic claim.

(Then, the generic claim should cover only the fruit sorter with the improvement of

element [2].)

But, if the object is to capture a copyist who is providing a fruit sorter with

all seven elements, then claim 1 is far better than any broader claim: It will be far

easier to defend against an invalidity attack because the narrower the claim the

more difficult it will be to establish either lack of novelty under 35 USC § 102 or

obviousness under 35 USC § 103(a). Assuming that the element [2], alone,

provides patentable novelty for the invention, then in addition to a claim only

reciting that one element and a narrow claim (such as claim 1 above), there may be

different claims of varying scope by providing claims with differing numbers of

required elements.

In the actual en banc decision in the Pennwalt case there was a finding of no

infringement either literally or under the doctrine of equivalents as the accused

infringing device lacked element [6], the "first position indicating means." In a

stinging separate opinion, Judge Newman claimed that the badly split Pennwalt

court failed to look to the invention as a whole and should have found infringement

under the doctrine of equivalents. Yet, the majority opinion in Pennwalt has stood

the test of time and clearly is the established law of the Federal Circuit today.


5

Claiming the “Minimum Elements” Mitigates the Pennwalt Problem

If the applicant claims only the complete combination, then a competitor

can easily circumvent the claims by elimination of one of the elements of the

combination under the “all elements” rule: Thus, “[l]iteral infringement requires

that the accused device embody every element of the claim as properly

interpreted.” Texas Instruments, Inc. v. United States International Trade Comm’n,

805 F.2d 1558, 1562 (Fed. Cir. 1986)(Newman, J.)(citing Mannesmann Demag

Corp. v. Engineered Metal Products Co., 793 F.2d 1279, 1282 (Fed. Cir. 1986);

Stewart-Warner Corp. v. City of Pontiac, 767 F.2d 1563, 1570 (Fed. Cir. 1985)).

Propriety of the “Minimum Elements” Claim under Bendix

The propriety of generic claims to a “minimum elements” combination

invention is seen from Bendix Corp. v. United States, 600 F.2d 1364 (Ct. Cl.

1979); Carl Zeiss Stiftung v. Renishaw PLC, 945 F.2d 1173 (Fed. Cir.

1991)(Michel, J.)

It has long been the general rule that where an invention is to a

combination of elements, and where a combination of fewer of such elements is

both novel and nonobvious, then the generic claim in the application should reside

in the combination of fewer elements, the “minimum elements” which represent a

patentable contribution.


6

As explained in Bendix, “it is not necessary that a claim recite each and

every element needed for the practical utilization of the claimed subject matter.”

Bendix, 600 F.2d at 1369 (citing United States v. Adams, 383 U.S. 39 (1966)).

That the applicant is entitled to claim both the combination and the

subcombination where both are novel and nonobvious is explained by Judge

Michel in Carl Zeiss v. Renishaw:

“It has long been held, and we today reaffirm, that it is entirely consistent with the

claim definiteness requirement of the second paragraph of section 112, to present

‘subcombination’ claims, drawn to only one aspect or combination of elements of

an invention that has utility separate and apart from other aspects of the invention.

As one of our predecessor courts stated, ‘it is not necessary that a claim recite each

and every element needed for the practical utilization of the claimed subject

matter,’ as it is ‘entirely appropriate, and consistent with § 112, to present claims to

only [one] aspect.’ Bendix Corp. v. United States, 600 F.2d 1364, 1369 (Ct. Cl.

1979). Thus, the holding of invalidity that rests on a conclusion of lack of claim

definiteness is legally incorrect. Furthermore, the district court erred in looking

only to the descriptive part of the specification to determine what McMurtry

invented. It is to the claims which particularly point out what the inventor regards

as his invention that one must look, and each claim must be considered separately.

In one piece of apparatus disclosed as an embodiment of an invention, there may

be several inventions; therefore, the claims are the place to look, and each claim

must be considered separately.”

Carl Zeiss, 945 F.2d at 1181 (footnote omitted)

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 ______________________

TRAVIS W. MCCALLON, Lathrop & Gage LLP, of Kan-

sas City, Missouri, argued for plaintiffs-appellants. With him on the brief were A. JUSTIN POPLIN, R. SCOTT BEELER, and JENNIFER 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. TRENT WEBB and CHRISTINE A. GUASTELLO.

______________________

Before TARANTO, BRYSON, and HUGHES, Circuit Judges.

SCRIPTPRO, LLC v. INNOVATION ASSOCIATES 2

TARANTO, 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


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


(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:


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


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


written-description issue here. We have jurisdiction under 28 U.S.C. § 1295(a)(1).

DISCUSSION 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


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,


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-


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


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.


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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