Courts May Correct Obvious Errors in a Patent Claim

CBT Flint Partners, LLC. V. Return Path, Inc., No. 2010-1202 (Fed. Cir. Aug. 10, 2011):

Holding:

An obvious and correctable error in the claim, the construction of which is not subject to reasonable debate does not render the claim indefinite. Slip op. at 8.

Relevant Facts:

One claim of the patent-in-suit contained a “drafting error” for which the district court found at least three reasonable and possible corrections. Slip op. at 5. The district court concluded itself unauthorized to rectify the error and therefore found the claim invalid on the ground of indefiniteness. Id. One of the defendants moved for a finding of an exceptional case, as well as an award of costs and attorney fees. Id. at 6. The district court awarded only costs. Id. Both sides appeal. Id. The Federal Circuit reversed the summary judgment and consequently the award of costs.

Comments:

Note the Federal Circuit explained the correct rule with respect to whether a court may correct a claim error:

It is well-settled law that, in a patent infringement suit, a district court may correct an obvious error in a patent claim. I.T.S. Rubber Co. v. Essex Rubber Co., 272 U.S. 429, 442 (1926) (“Essex”). In Novo Industries, we held 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 differ-ent interpretation of the claims.” 350 F.3d at 1357. We concluded that the enactment of 35 U.S.C. §§ 254 and 255 did not overrule Essex or deny authority to the district courts to correct a claim in appropriate circumstances. Id. at 1356. In Novo Industries, we declined to make the proposed corrections to the claim at issue because those corrections were substantively significant and required guesswork as to what was intended by the patentee in order to make sense of the patent claim. Id. at 1357.

Slip op. at 9.

Also note that claim indefiniteness rendered by claim drafting errors does not easily trigger a finding of an exceptional case under 35 U.S.C. § 285.