District Courts Cannot Guess at Fixes for Claim Errors
December 05, 2003
Last Month at the Federal Circuit - January 2004
Judges: Dyk (author), Clevenger, and Gajarsa
In Novo Industries, L.P. v. Micro Molds Corp., No. 03-1230 (Fed. Cir. Dec. 5, 2003), the Federal Circuit rejected the district court’s attempt to correct an error in the claim through its claim construction, finding that the district court overstepped its authority in correcting the error, and held the claim invalid for indefiniteness.
Novo Industries, L.P. (“Novo”) is the assignee of U.S. Patent No. 5,056,578 (“the ‘578 patent”), which discloses and claims a carrier assembly for movably supporting one of a plurality of vertical-oriented slats in a vertical-blind assembly.
Novo filed suit against Micro Molds Corporation and Oscar Helver (collectively “Micro Molds”), asserting infringement of claim 13 of the ‘578 patent. Novo added claim 13 during prosecution of the application that matured into the ‘578 patent, in response to a rejection over prior art. Claim 13 differed from the rejected claims by, among other things, including the words “a rotatable with” inserted into the phrase “stop means formed on a rotatable with said support finger.”
Novo argued at a Markman hearing that claim 13 includes an obvious typographical error, which it proposed correcting by construction in either of two ways: (1) the words “a rotatable with” were superfluous and should be deleted altogether, or (2) the words “with said” could be deleted. Micro Molds countered that the addition of the words “a rotatable with” to the claim indicated that Novo had abandoned coverage of a stop means on the support finger itself, prohibiting a construction of the claim to include a stop means on the support finger. Thus, Micro Molds argued that the stop means had to be located on a separate “rotatable.”
The district court rejected both parties’ arguments and construed claim 13 to mean that the stop means is formed on and rotatable with the support finger, effectively interpreting the word “a” in the claim as “and.” A jury found that Micro Molds had literally infringed claim 13 of the ‘578 patent and was guilty of willful infringement, for which the district court awarded double damages.
The Federal Circuit began its analysis by reviewing the Supreme Court’s decision in I.T.S. Rubber Co. v. Essex Rubber Co., 272 U.S. 429 (“Essex”), which established the authority of courts to interpret a patent during an infringement suit to correct certain obvious errors. The Federal Circuit then asked whether the enactment of 35 U.S.C. §§ 254 and 255 had overruled Essex. Sections 254 and 255 provide for issuance of a certificate of correction to correct a mistake by the PTO (§ 254) or the patentee (§ 255). In contrasting §§ 254 and 255 with the Essex rule, the Federal Circuit noted that issuance of a certificate of correction under §§ 254 or 255 acts to prospectively effect a correction of the patent and, thus, is only effective for causes of action arising after the certificate of correction was issued. Thus, the Federal Circuit observed that, without the ability of the district court to correct errors when construing a patent claim, every patent containing an error rendering a claim indefinite would be invalid until and unless the error was correct ed by the PTO. The Court found this outcome unsatisfactory, in part, due to the policy of the PTO not to correct errors deemed “minor.” The Federal Circuit also observed that nothing in the legislative history of the Patent Act of 1952 suggested that Congress intended to overrule Essex by enactment of §§ 254 and 255.
The Federal Circuit then turned to the limits of the district courts’ error-correcting authority. First, the Court noted that §§ 254 and 255, unlike 35 U.S.C. § 256, which deals with correction of inventorship, do not give the district courts the same authority as the PTO. Namely, while the district court can order issuance of a certificate correcting the inventorship of a patent under § 256, §§ 254 and 255 grant the district court no such authority. Second, the Court noted that § 255 permits the correction of a broad category of errors, limited only in that the method of correction of the error must be clearly evident from the specification, drawings, and prosecution history of the patent. Third, the Court emphasized the importance of the PTO bringing its expertise in patent matters to bear on errors that are not evident from the face of the patent itself, as was the case in Essex. Finally, the Federal Circuit observed that allowing the district court to correct such errors would act to effectively write the nonretroactivity provisions out of §§ 254 and 255.
Based on these considerations, and in view of its own precedent, the Federal Circuit concluded that a district court can correct a patent only if (1) the correction is not subject to reasonable debate based on consideration of the claim language and the specification, and (2) the prosecution history does not suggest a different interpretation of the claims.
Turning to claim 13 of the ‘578 patent, the Court concluded that the nature of the error is not apparent from the face of the patent, pointing to the fact that Novo provided two different possible claim constructions, Micro Molds a third, and the district court a fourth. According to the Federal Circuit, a district court’s authority to correct an error in a patent does not extend to “guessing” what the patentee intended.
Having determined that the district court could not correct claim 13, the Federal Circuit concluded that the claim is not amenable to construction and is, therefore, invalid for indefiniteness.