Friday, July 10, 2020

The CAFC discusses prosecution errors in the Fitbit case; written decision was not "a reasonable resolution"

The outcome of Fitbit v. Valencell:

We hold that Fitbit as a joined party has the right to
appeal the Board’s decisions pertaining to claims 3–5. We
conclude that the Board erred in its rulings concerning
claims 3–5. We vacate the decision that claims 3–5 are not
unpatentable, and remand for determination of the merits
of patentability on the grounds presented in the petition.

Of errors in patents:

The prosecution history shows this conspicuous error, for claims 4 and 5, as filed and throughout the
prosecution, correctly recited their antecedent; and, in a
claim chart filed in preparation for issuance the examiner
was told that there was “no change.” It appears that neither the applicant nor the examiner caught the error. However, the error has come to light, and the Board declined to
accept the parties’ shared view of the correct antecedent.

The preferable agency action is to seek to serve the
agency’s assignment under the America Invents Act, and
to resolve the merits of patentability. Although the Board
does not discuss its authority to correct errors, there is
foundation for such authority in the America Invents Act,
which assured that the Board has authority to amend
claims of issued patents. See 35 U.S.C. § 316(d). And precedent has provided guidelines for district courts to correct
errors in issued patents. See Novo Indus., L.P. v. Micro
Molds Corp., 350 F.3d 1348, 1354 (Fed. Cir. 2003) (“[A] district court can do so 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.”);
see also CBT Flint Partners, LLC v. Return Path, Inc., 654
F.3d 1353, 1358 (Fed. Cir. 2011) (the district court can correct an obvious drafting error). The concept of error correction is not new to the Agency, which is authorized to issue
Certificates of Correction.


Although the Board states that
the intended meaning of the claims is “subject to reasonable debate,” we perceive no debate. Rather, the parties to
this proceeding agree as to the error and its correction. The
Board erred in declining to accept the parties’ uniform position and correct the error that claim 4 depend from
claim 3. With this correction, the rejection of claims 4 and
5 for absence of antecedent basis for “the application” disappears.
We conclude that the Agency’s treatment of this error
as the basis of a Final Written Decision of patentability is
not a reasonable resolution, and does not comport with the
Agency’s assignment to resolve patentability issues. On
the correct antecedent basis, the petition’s issue of obviousness may be resolved by the Board, in furtherance of resolution of the parties’ dispute in concurrent district court
The Board’s Final Written Decision on the ground of
“absence of antecedent” basis is vacated. On remand the
Board shall determine patentability of corrected claims 4
and 5 on the asserted grounds of obviousness.


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