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Whereby Clause Is an Effective Limitation

April 22, 2005

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Last Month at the Federal Circuit - May 2005

Judges: Newman, Bryson, and Dyk (per curiam)

In Hoffer v. Microsoft Corp., No. 04- 1103 (Fed. Cir. Apr. 22, 2005), the Federal Circuit affirmed a judgment of noninfringement, but reversed a judgment of invalidity on the ground of indefiniteness for U.S. Patent No. 5,799,151 (“the ‘151 patent”).

The ‘151 patent is directed to an apparatus and method by which remote users of computer terminals obtain data concerning economic activity from an index and interactively communicate concerning economic topics. The claim in question includes a whereby clause, which recites that a trade network supports users who are collectively able to concurrently engage in interactive-data messaging on topic boards. The patent holder, Steven Hoffer, argued that the district court had erred in holding that this whereby clause limited the claim, pointing out that the Federal Circuit had previously held that “a written clause in a method claim is not given weight when it simply expresses the intended result of a process set positively recited.” Minton v. Nat’l Ass’n of Secs. Dealers, Inc., 336 F.3d 1373, 1381 (Fed. Cir. 2003). According to the Federal Circuit, however, when the whereby clause states a condition that is material to patentability, it cannot be ignored. The Court observed that, according to the specification, this whereby clause is not just an intended result of a process step but is part of the process itself and is described as an integral part of the inventive process. Accordingly, the Federal Circuit agreed with the district court’s claim construction of the whereby clause and affirmed the judgment of noninfringement.

Claim 22 as written is dependent from claim 38. However, there is no claim 38 in the issued patent. The district court held claim 22 invalid for indefiniteness based on this error. The Federal Circuit vacated that decision, however, concluding that the error in the dependence of claim 22 is apparent on the face of the printed patent and the correct antecedent claim is apparent from the prosecution history. The error arose through the normal prosecution of deleting and renumbering certain claims. The Examiner simply failed to correct the corresponding claim dependency. Although Mr. Hoffer later obtained a certificate of correction, the district court declined to accept it, deeming it late and concluding that the court was powerless to correct the error. The Federal Circuit ruled that absent evidence of culpability or intent to deceive, a patent should not be invalidated based on an obvious administrative error. When a harmless error in a patent is not subject to reasonable debate, it can be corrected by the district court.

Judge Newman concurred in the judgment, but wrote separately to express her concerns that the Court did not review the entire appealed claim construction.