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District Court Could Not Correct Indefinite Claims

04-1296
May 16, 2005

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Last Month at the Federal Circuit - June 2005

Judges: Dyk (author), Lourie, and Plager

In Group One Ltd. v. Hallmark Cards, Inc., No. 04-1296 (Fed. Cir. May 16, 2005), the Federal Circuit reversed and vacated a district court's grant of JMOL for invalidity based on obviousness and reinstated a jury verdict that the patents were not invalid. The Federal Circuit also affirmed a decision that one of the patents-in-suit could not be corrected and was invalid.

This is the third appeal in this litigation concerning U.S. Patent Nos. 5,518,492 ("the '492 patent") and 5,511,752 ("the '752 patent"). The patents-in-suit claim a device and method for curling ribbon. Hallmark Cards, Inc. ("Hallmark") manufactures precurled ribbon products using a number of ribbon-curling machines. The district court found the asserted claims invalid for indefiniteness because necessary language was omitted from the claims of the '492 patent. A printing error by the PTO had resulted in the omission of certain language from the claims. Group One Ltd. ("Group One") did not challenge the holding, but argued that the district court should have corrected the claims. The district court held that it lacked authority to do so.

According to the Federal Circuit, the error in the claim is not evident on the face of the patent. The prosecution history discloses that the missing language was required to be added by the Examiner as a condition for issuance, but one cannot discern what language is missing simply by reading the patent. In such an instance, the district court does not have authority to correct the patent. Accordingly, the Federal Circuit affirmed the district court's determination that the claims of the '492 patent are invalid.

Concerning the obviousness of certain asserted claims, the Court found that the record clearly shows that each of the claimed elements existed in a multitude of prior art references. However, some of these references did not relate to ribbon curling. Thus, the issue was whether there was a motivation to combine certain prior art patents. The Federal Circuit found sufficient evidence in the expert testimony to support the jury's original verdict of nonobviousness and reversed the district court's JMOL of invalidity.