Wednesday, August 10, 2011

CBT FLINT PARTNERS, LLC: Obvious and correctable error in the claim

As to the legal issue:

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.


Any correction of a claim has to be consistent with the invention “described in the specification and drawings of the original patent.” Essex, 272 U.S. at 444; see also Ultimax, 587 F.3d at 1353 (“Claim definiteness is analyzed not in a vacuum, but always in light of the teachings of the prior art and of the particular application disclosure as it would be inter- preted by one possessing the ordinary level of skill in the pertinent art.”). A court therefore must consider how a potential correction would impact the scope of a claim and if the inventor is entitled to the resulting claim scope based on the written description of the patent.

IPBiz notes that there are cases in which re-drafting was NOT allowed. Note the previous IPBiz text:

IPBiz notes the CAFC could have cited the wheelbarrow case,
Radio Steel v. MTD, 221 USPQ 657 (CAFC 1984) or the "baking
bread" case [ Chef America v. Lamb-Weston: "a nonsensical result does
not require the court to redraft the claims of the patent."

Meaning of term in claim preamble must be consistent with rest of claim


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