Although the inclusion of truly essential features may be required for a claim to satisfy the written description requirement, the court acknowledged that “[i]t is common, and often permissible, for particular claims to pick out a subset of the full range of described features, omitting others.” Further, although context specific, qualifiers such as “generally” or “broadly” (as here) may be used to emphasize that a certain set of features are not to be interpreted as essential to the invention. “A specification can adequately communicate to a skilled artisan that the patentee invented not just the combination of all identified features but combinations of only some of those features (sub-combinations)—which may achieve stated purposes even without omitted features.”
Background / Facts: The patent being asserted here is directed to a “collating unit,” which works with an “automatic dispensing system” that automatically fills and labels pill bottles or other prescription containers. According to the specification, “[t]he collating unit of the present invention broadly includes” several components: “an infeed conveyor, a base, a collating unit conveyor, a frame, a plurality of holding areas, a plurality of guide arms, a plurality of sensors, and a control system.” Despite the specification describing the collating machine here as containing “sensors,” the claims at issue claim a machine that need not have “sensors.”
Issue(s): Whether the absence of sensors from the claims at issue means that those claims are unsupported by the written description under 35 U.S.C. § 112(a).
Holding(s): No. “Neither the specification’s declaration that ‘[t]he collating unit of the present invention broadly includes … a plurality of sensors’ nor the ‘broadly comprises’ language of the Abstract is enough to support [an] invalidity ruling. … The term ‘broadly’ qualifies the assertion of inclusion. Like ‘generally,’ the qualifier ‘broadly’ suggests that exceptions are allowed to the assertion of what occurs most (perhaps even almost all) of the time. … 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.” Although the “broadly” qualifier seems to have played a large role in the decision, it should be noted that the court went on to cite other corroborating evidence that it was possible to interpret the invention as not requiring “sensors” per se.