Saturday, June 18, 2022

What happens when a patent expires during proceedings? Dissent brings up "unclean hands"

from :

In 2017, we affirmed-in-part, vacated-in-part, and remanded the Patent Trial and Appeal Board (Board) decisions in inter partes reexamination proceedings for U.S. Patent Nos. 8,023,290 (’290 patent) and 7,272,021 (’021 patent). Vicor Corp. v. SynQor, Inc., 869 F.3d 1309, 1312 (Fed. Cir. 2017) (SynQor II). Before the Board issued its remand decisions, the ’021 patent expired. Patent Owner SynQor appeals, asking this court to vacate the Board’s decision rejecting claims 49 and 50 of the ’021 patent pursuant to United States v. Munsingwear, 340 U.S. 36 (1950), whereby an appellate court can vacate a lower court’s or administrative agency’s decision when review of that decision on the merits becomes moot “by the vagaries of circumstance.” U.S. Bancorp Mortg. Co. v. Bonner Mall P’ship, 513 U.S. 18, 25 (1994). Recently, in SynQor, Inc. v. Vicor Corp., 988 F.3d 1341 (Fed. Cir. 2021) (SynQor IV), we granted SynQor’s request for vacatur of a Board decision rejecting claims 34–38 of related U.S. Patent No. 7,072,190 (’190 patent). Because the request for vacatur in this case is materially identical to the request in SynQor IV, we similarly vacate the Board’s remand decision regarding claims 49 and 50 of the ’021 patent.

Judge Lourie dissented:

I respectfully dissent from the vacatur of the Board’s decision rejecting claims 49 and 50. The majority states that this case is “materially indistinguishable” from SynQor IV because the patent in both cases expired before the Board’s appeals process was completed. Majority at 6. I question that conclusion. In SynQor IV, the Board first rejected new claim 34 two years before the patent expired. In contrast, in this case, the patent expired before the Board rejected new claims 49 and 50. That makes a big difference when SynQor comes before us seeking an equitable remedy.

Vacatur is an equitable remedy. See U.S. Bancorp Mortg. Co. v. Bonner Mall P’ship, 513 U.S. 18, 26 (1994); see also 15 James W. Moore et al., Moore’s Federal Practice § 101.97 (Matthew Bender 3d ed. 2021) (“The burden is on the party seeking vacatur to demonstrate equitable entitlement to the remedy.”). And equity requires clean hands. See Gilead Scis, Inc. v. Merck & Co., Inc., 888 F.3d 1231 (Fed. Cir. 2018) (the doctrine of unclean hands “closes the doors of a court of equity to one tainted with inequitableness or bad faith relative to the matter in which he seeks relief”) (quoting Precision Instrument Mfg. Co. v. Auto. Maint. Mach. Co., 324 U.S. 806, 814–15 (1945)). Here, 13 months had passed during which the ’021 patent appeal was pending before the Board and SynQor did not notify the Board that the patent had expired. It only did so a month after the Board’s decision. That looks suspiciously like a strategic decision to lay low until the decision and, only if one lost, seek vacatur. That is not happenstance; it looks like either gamesmanship or negligence, and rewarding that conduct with vacatur is not equity. The Board was obligated to expand scarce resources in adjudicating the appeal before it, when SynQor could have been upfront with the Board and informed it that, in its view, the appeal was moot. For the above reasons, I dissent from the majority’s decision to vacate a decision that should be affirmed.

Monday, June 13, 2022

Appellant wins in L'Oreal case

Of prosecution history

We hold that this prosecution history requires that the wherein clause’s reference to the recited concentrations being “applied to the dermal cells” be read as referring to concentrations of the composition applied to the skin’s surface. The amendments and comments clearly convey that UMass was continuing the pre-amendment reliance on the concentration in the composition before application to the skin, rather than introducing a materially different, unexplained notion of concentration, no longer assessed before contact with the object of application. UMass’s proposed construction now cannot fairly be squared with the understanding that both it and the examiner expressed during prosecution, and on which skilled artisans are entitled to rely. UMass makes various counterarguments concerning the prosecution history, but all are unavailing. As an initial, legal matter, we reiterate that this is not a case where the prosecution history must meet the standard of clear and unmistakable disclaimer for overcoming an otherwiseplain meaning, contrary to UMass, the Board, and the district court’s framings. See UMass Reply Br. 27; J.A. 2808– 10; J.A. 3721 (Hearing Tr. at 58:4–7). We need not decide whether that standard is met here. Because the meaning of the relevant claim language is not plain, but rather ambiguous for the reasons described in Section II.A, we can look to the prosecution history to “inform[] the meaning of the disputed claim phrase and address[] an ambiguity otherwise left unresolved.” Personalized Media Communications, 952 F.3d at 1345; see also SoundView Innovations, LLC v. Hulu, LLC, 33 F.4th 1326, 1332–35 (Fed. Cir. 2022).


As a result of our new construction, the district court’s subsequent indefiniteness ruling must be vacated, and we remand for the district court to conduct any further proceedings that are necessary. Although L’Oréal proposes that, if we reverse the claim construction of the wherein clause, we could directly enter a judgment of non-infringement, we leave it to the district court to determine how to proceed under the new construction. See L’Oréal Response Br. 45–46 & n.24 (contending that UMass conceded noninfringement); UMass Reply Br. 21 (disputing concession); Oral Arg. at 18:45–19:10, 48:13–49:16 (also discussing existence of invalidity counterclaims).

Of abuse of discretion

Here, the district court abused its discretion in not allowing jurisdictional discovery on the record before it. In front of the magistrate judge, UMass made more than clearly frivolous, bare allegations that L’Oréal S.A. was subject to personal jurisdiction, either because L’Oréal S.A. introduced the accused products into the stream of commerce or because L’Oréal USA operated as L’Oréal S.A.’s agent in certain potentially relevant respects. See Plaintiffs’ Memorandum of Law in Opposition to Defendant L’Oréal S.A.’s Motion to Dismiss at 1–17, University of Massachusetts v. L’Oreal S.A., No. 1:17-cv-00868 (D. Del. Dec. 8, 2017), ECF No. 27. For example, as potentially relevant to both theories, UMass put forward evidence buttressing the possibility that L’Oréal S.A. researched and developed the addition of adenosine to skin-care products, J.A. 263–69; J.A. 1070; J.A. 1073–77, and L’Oréal S.A.’s own submitted declaration indicated that L’Oréal S.A. may have licensed that technology to L’Oréal USA, J.A. 553–54 (Rabinowitz Decl. ¶ 6) (“From time to time, L’Oréal S.A. and L’Oréal USA engage in the sale of goods or services between the two companies.”). For its part, L’Oréal S.A. did not specifically deny allegations that it developed and licensed the relevant technology to L’Oréal USA, stating only that “L’Oréal S.A. does not directly develop, sell, market, or advertise to consumers in Delaware any of the products at issue in this action,” without making it clear what it meant by “directly develop.” J.A. 553–54 (Rabinowitz Decl. ¶ 6).2

Because this evidence raises the possibility that discovery might have uncovered the requisite contacts under our precedent, see, e.g., Nuance Communications, Inc. v. Abbyy Software House, 626 F.3d 1222, 1233–34 (Fed. Cir. 2010); Celgard, LLC v. SK Innovation Co., 792 F.3d 1373, 1379– 82 (Fed. Cir. 2015), we vacate the jurisdictional determinations. UMass is entitled to jurisdictional discovery before any jurisdictional determination, if one remains necessary, is made.

Saturday, June 11, 2022

Tiger Lily Ventures loses trademark appeal at CAFC

Some background

Until 2008, Lehman Brothers1 was one of the largest investment banks in the United States, with hundreds of billions of dollars in assets under management and more than 25,000 employees in offices worldwide. Lehman Brothers owned trademark rights in connection with its name, including a number of federal trademark registrations for the standard character mark LEHMAN BROTHERS. Immediately after Lehman Brothers filed for bankruptcy in 2008, it sold several of its businesses and other assets to Barclays for approximately $1.5 billion. As part of that sale, Lehman Brothers assigned to Barclays all of its LEHMAN BROTHERS trademarks and accompanying goodwill. Shortly thereafter, Barclays granted Lehman Brothers a worldwide, non-exclusive license to use the LEHMAN BROTHERS trademarks in connection with Lehman Brothers’ retained and continuing businesses and operations. The term of the license was two years for use in connection with Lehman Brothers’ investment banking and capital markets businesses and perpetual for use in connection with other Lehman Brothers businesses and operations. Over the years that followed, however, Barclays allowed all of its acquired LEHMAN BROTHERS trademark registrations to expire. On March 6, 2013, Tiger Lily, a company with no corporate affiliation to Lehman Brothers or Barclays, filed Application No. 85/868,892 for registration of the standard character mark LEHMAN BROTHERS for beer and spirits. A few months later, on October 2, 2013, Barclays filed Application No. 86/081,143 to register the standard character mark LEHMAN BROTHERS for use in connection with various financial services. And not long after that, on June 2, 2014, Tiger Lily filed Application No. 86/298,069 for registration of the same standard character LEHMAN BROTHERS mark for bar services and restaurant services.


In view of its findings, the Board sustained Barclays’ oppositions on the grounds of likelihood of confusion but dismissed Barclays’ oppositions on the grounds of false suggestion of a connection, dilution, and lack of bona fide intent. Id. And the Board dismissed Tiger Lily’s opposition in its entirety. Id. Tiger Lily appealed. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(B).


Tiger Lily attempts to focus on the fact that the bankruptcy proceedings will eventually end and that Lehman Brothers is involved in the type of bankruptcy from which it will not emerge as a continuing enterprise. See, e.g., Oral Arg. at 3:39–4:22. But we are unpersuaded that these facts are material to the issue at hand. Regardless whether Lehman Brothers will cease to exist after the bankruptcy concludes, it is not disputed that the bankruptcy has not yet concluded, and the record lacks clear evidence as to when any such conclusion is expected. Thus, any evidence about Lehman Brothers’ intentions after the conclusion of the bankruptcy proceedings relates only to the second element of Tiger Lily’s abandonment claim—i.e., whether Barclays intends not to resume use of the LEHMAN BROTHERS mark. As discussed above, Tiger Lily has failed to show that use of the mark has yet been discontinued, and indeed Tiger Lily appears to concede that it has not. Evidence relating to the second element, post-bankruptcy use, is thus irrelevant. Additionally, separate from Lehman Brothers’ use of the mark, the evidence shows that Barclays itself has continued to use the LEHMAN BROTHERS mark.

(...) Of interest

Turning to Tiger Lily’s arguments concerning the similarity of the goods and services, Tiger Lily emphasizes abstract distinctions between whisky on the one hand and financial services on the other. For example, Tiger Lily asserts that the consuming public would not assume that the Lehman Brothers company began “selling whisky commercially or open[ed] up a bar or a restaurant,” see Appellant Br. at 30. But that assertion, while likely true, is also irrelevant; the relevant inquiry considers “if the respective products are related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that they emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369 (Fed. Cir. 2012) (quoting 7-Eleven, Inc. v. Wechsler, 83 U.S.P.Q.2d 1715, 1724 (T.T.A.B. 2007).3 In short, Tiger Lily’s arguments ignore the context-specific realities of the consumer markets in which the parties’ goods and services are offered. Barclays is correct that in modern consumer markets commercial trademarks are often licensed for use on products that may differ from the original source of the trademark. See, e.g., L.C. Licensing Inc. v. Berman, 86 U.S.P.Q.2d 1883, 1889 (T.T.A.B. 2008) (“It is common knowledge, and a fact of which we can take judicial notice, that the licensing of commercial trademarks on ‘collateral products’ has become a part of everyday life.”). In this regard, the Board relied on Barclays’ extensive evidence showing examples of companies that have promoted financial services through use of their trademarks in connection with alcohol, food, and beverages. See, e.g., Board Decision, slip op. at 43–46 n.68. And the evidence demonstrates that, in marketing its own banking products and services, Lehman Brothers used its LEHMAN BROTHERS mark in connection with products that are related to whisky and alcoholic beverages. See, e.g., J.A. 17664 (Lehman Brothers Whisky Decanter), J.A. 17696 (Lehman Brothers Beverage Cooler). As a legal principle, because the LEHMAN BROTHERS mark has achieved a high degree of fame, it is afforded a broad scope of protection. See Bose Corp. v. QSC Audio Prods., Inc., 293 F.3d 1367, 1371 (Fed. Cir. 2002); see also Kenner Parker Toys Inc. v. Rose Art Indus. Inc., 963 F.2d 350, 353 (Fed. Cir. 1992) (“[A] mark with extensive public recognition and renown deserves and receives more legal protection than an obscure or weak mark.”). Our precedent makes clear that a famous mark “casts a long shadow which competitors must avoid.” Kenner Parker Toys, 963 F.2d at 353 (citing Nina Ricci, S.A.R.L. v. E.T.F. Enters., Inc., 889 F.2d 1070, 1074 (Fed. Cir. 1989)). In this case, it may very well be true that Tiger Lily is not actively “confusing” consumers into believing that Lehman Brothers or Barclays is selling whisky. See, e.g., Oral Arg. 9:12– 9:20 (Tiger Lily arguing that there is no “deception” and that there are no “consumers that stand to be confused”). But the evidence shows that, by referencing the Lehman Brothers history in its marketing materials and by copying Lehman Brothers’ logo, Tiger Lily is seeking to take advantage of the widespread consumer recognition of Barclays’ LEHMAN BROTHERS mark. Tiger Lily attempts to draw a distinction between “consumer recognition” as compared with “goodwill,” and argues that it is actually trying to trade on the “bad will” associated with the LEHMAN BROTHERS mark. See Oral Arg. at 9:54–9:59; 11:01– 11:15. But we find no legal support for these subtle distinctions, and we thus find that Tiger Lily’s attempts to capitalize on the fame of the LEHMAN BROTHERS mark weighs in favor of finding a likelihood of confusion. We also agree with Barclays that Tiger Lily is placing undue emphasis on a supposed lack of actual confusion. Tiger Lily’s evidence on this point appears to consist of two vague unsupported paragraphs in a declaration from a single witness who generally asserted that the whisky has been selling since early 2016 in the United Kingdom and the United States without providing details to demonstrate the scope of the sales activity. See J.A. 25580. The mere fact that Tiger Lily’s whisky customers have not affirmatively said that they are confused by “ask[ing] for a banking product or service” or “indicat[ing] that they felt deceived,” see id., does not prove that customers have not in fact been confused about whether the whisky is affiliated with Lehman Brothers; the “absence of evidence is not always evidence of absence.” See, e.g., Int’l Ass’n of Machinists & Aero. Workers, Local Lodge 964 v. BF Goodrich Aero. Aerostructures Grp., 387 F.3d 1046, 1055 (9th Cir. 2004).

note also Supreme Court Passes on Tiger Trademark Dispute link and

Friday, June 10, 2022

Trademark case on "Parma"

The outcome:

A. ZETA S.R.L. (“Zeta”) appeals the Trademark Trial and Appeal Board’s (“Board”) decision affirming the trademark examining attorney’s refusal to register the mark PARMA COFFEE because it was primarily geographically descriptive under 15 U.S.C. § 1052(e)(2). For the reasons discussed below, we affirm the Board’s decision. I Zeta filed an application under 15 U.S.C. § 1051(b) to register PARMA COFFEE for “Chocolate; Chocolate-based beverages; Cocoa; Cocoa-based beverages; Coffee extracts; Coffee and coffee substitutes; Honey; Honey substitutes; Natural sweetener; Sugar; Tea; Tea extracts; Tea-based beverages; Preparations for making coffee-based beverages.” Joint Appendix (“J.A.”) 14-20. The examining attorney issued an initial office action preliminarily finding that the proposed mark was primarily geographically descriptive of Parma, Italy and, therefore, refusing registration under 15 U.S.C. § 1052(e)(2). The examining attorney requested a written response from Zeta specifying “where the goods . . . will come from or will originate.” J.A. 24.

Pro se appellant Agarwal loses at CAFC: arguments that are not appropriately developed are waived

From the case:

We affirm because Mr. Agarwal has not adequately developed an argument for why we should do otherwise. “It is well established that arguments that are not appropriately developed in a party’s briefing may be deemed waived.” United States v. Great Am. Ins. Co. of N.Y., 738 F.3d 1320, 1328 (Fed. Cir. 2013) (citing SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006)); see also Kellogg Brown & Root Servs., Inc. v. Sec’y of the Army, 973 F.3d 1366, 1371 (Fed. Cir. 2020) (noting that failure to “meaningfully brief[]” an issue on which the appellant needed to prevail to achieve its requested relief “alone would justify affirmance”). “The recitation of the applicable law . . . does not prevent the waiver of an argument unless that recitation is accompanied by an explanation of how the law applies to the facts of the particular case.” MicroStrategy Inc. v. Bus. Objects Ams., 238 F. App’x 605, 610 (Fed. Cir. 2007) (nonprecedential). Mr. Agarwal’s argument for why the district court’s claim construction was erroneous is reproduced in its entirety below:

The district court imported limitations concerning the construction/operation of the preferred embodiment into the claim scope of “passive sensor” absent lexicography/disclaimer. This was improper under GE Lighting Solutions, LLC v. Agilight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014). Appellant’s Informal Br. 2.

This argument does not explain how the general principle against importing limitations from preferred embodiments applies to this case; indeed, it doesn’t identify what limitations Mr. Agarwal believes the district court erred in importing. Mr. Agarwal’s perfunctory presentation of his claim-construction argument amounts to no presentation at all.

Wednesday, June 08, 2022

Pro se appellant Kiely loses at CAFC

Kiely applied for a U.S. patent with various claims directed to a “comestible kit,” or in other words, a kit for assembling an edible toy. Claim 41 is representative: 41. A comestible kit for the creation of one or more assembly configurations comprising: (a) comprising a torso comprising a processed comestible generally shaped to represent a torso comprising a selection from the group comprising a person, an animal, an animated character, a creature, an alien, a toy, a structure, a vegetable, and a fruit, or (b) comprising an appendage comprising a comestible generally shaped to represent an appendage comprising a selection from the group comprising a person, an animal, an animated character, a creature, an alien, a toy, a structure, a vegetable, and a fruit.

From footnote 2

The examiner also rejected claims 45 and 64 as indefinite because they recite the subjective terms “whimsical” and “silly” without specifying a standard for determining the requisite degree required to satisfy those terms. See App’x 17–18. Similarly, the examiner rejected claims 49, 52, and 54 as indefinite, for improperly invoking § 112(f), because they recite “attachment means” without disclosing any corresponding structure. App’x 18–19. We do not address these issues, as they are moot in light of our opinion today.

Of Markush groups:

We first address the issue of indefiniteness. We conclude that claims 41–54, 56, 57, and 59–64 are unpatentable under § 112(b) because they employ improper Markush language. A proper Markush claim incorporates a closed list of specified alternative limitations. Abbott Lab’ys v. Baxter Pharm. Prods., Inc., 334 F.3d 1274, 1280–81 (Fed. Cir. 2003). A Markush claim that recites a selection from an open list of alternatives—by using, for example, an open-ended transition word like “comprising”—generally violates 35 U.S.C. § 112(b) because such a claim fails to make clear what unlisted alternatives, if any, are intended to be encompassed by the claim. Id.; Manual of Patent Examining Procedure (“MPEP”) §§ 2117, 2173.05(H). Here, each independent claim recites “a selection from the group comprising a person, an animal, an animated character, a creature, an alien, a toy, a structure, a vegetable, and a fruit.”

Claim 41 was poorly drafted:

41. A comestible kit for the creation of one or more assembly configurations comprising: (a) comprising a torso comprising a processed comestible generally shaped to represent a torso comprising a selection from the group comprising a person, an animal, an animated character, a creature, an alien, a toy, a structure, a vegetable, and a fruit, or

(b) comprising an appendage comprising a comestible generally shaped to represent an appendage comprising a selection from the group comprising a person, an animal, an animated character, a creature, an alien, a toy, a structure, a vegetable, and a fruit

And was found anticipated.

Of obviousness

Kiely contends that claim 47 is non-obvious because it depends from claim 41, which the Board did not reject as obvious. Appellant’s Br. 61 (citing In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988)); App’x 32. It is generally true that dependent claims are non-obvious under § 103 if the independent claims from which they depend are determined to be non-obvious. See In re Fine, 837 F.2d at 1076. Here, however, claim 41 was determined to be anticipated under § 102. The examiner and the Board did not determine whether claim 47 is non-obvious under § 103 because they did not need to in light of the § 102 finding.

[Query: if a single reference teaches all elements of a dependent claim, can the associated independent claim, with fewer elements, not also be anticipated?]

Note also the December 15, 2015 IPBiz post: Anticipation is not the epitome of obviousness, which includes the text:

This is precisely why our precedent has rejected reliance on the "legal homily" that "anticipation is the epitome of obviousness." Mendenhall, 5 F.3d at 1563. We have expressly upheld a jury verdict of anticipation under § 102(b), even when the same jury found the patent nonobvious under § 103. Id. Though the dissent argues that a "long line of precedent" supports its argument that every anticipated claim is obvious, not a single one of the cases it cites actually holds that the "epitome" maxim precludes a jury from finding a patent invalid under § 102, simply because it is nonobvious under § 103.


Blawgspot: 8 June 2022

Friday, June 03, 2022

Kingston Technologies loses. Claim error correction. Willfulness.

The appellant, represented by Fish & Richardson, lost.

Kingston Technology Company, Inc. (“Kingston”) appeals the U.S. District Court for the Central District of California’s judgment that Kingston willfully infringed claims 1, 4, and 24 of U.S. Patent No. 6,926,544 (“the ’544 patent”) and awarding $7,515,327.40 in compensatory damages, enhanced by 50 percent. We affirm

The Technology:

The ’544 patent is generally directed to “[a] flash memory apparatus having a single body type rotary cover.” ’544 patent Abstract. According to the patent, flash memory devices use covers to protect USB ports from damage and foreign substances. Because prior-art covers were separable from the flash memory apparatus, they could often be lost, or the joint between the cover and the device could loosen and damage the USB port. The ’544 patent purports to solve these problems using a “cover [that] is not completely separated from the main body during use.” Id. at col. 2 ll. 23–27. The patent describes a device in which a flash memory apparatus “includes a flash memory main body.” Id. at col. 3 ll. 11–14. The flash memory main body has a case with a “hinge protuberance.” Id. at col. 3 ll. 20– 23. A cover is formed as a U-shaped cavity with a circular hinge hole on one end for receiving the hinge protuberance on the case. Open sides in the cover allow “the flash memory main body . . . to go in and out of the cover.” Id. at col. 3 ll. 55–58. Figure 2 of the ’544 patent most clearly illustrates these features and the cooperation between the flash memory main body 30 and the cover 40

Of judicial correction:

We first address Kingston’s argument that the district court should not have judicially corrected “pivoting the case with respect to the flash memory main body.” We review a district court’s claim construction de novo, Apple Inc. v. WiLAN Inc., 25 F.4th 960, 967 (Fed. Cir. 2022), and any subsidiary fact findings about extrinsic evidence for clear error, Forest Labs., LLC v. Sigmapharm Labs., LLC, 918 F.3d 928, 932–33 (Fed. Cir. 2019). We conclude that the district court appropriately corrected an obvious minor clerical error in the claims. A district court may correct “obvious minor typographical and clerical errors in patents.” Novo Indus., L.P. v. Micro Molds Corp., 350 F.3d 1348, 1357 (Fed. Cir. 2003). Correction is appropriate “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 different interpretation of the claims.” Id. at 1354. The error must be “evident from the face of the patent,” Grp. One, Ltd. v. Hallmark Cards, Inc., 407 F.3d 1297, 1303 (Fed. Cir. 2005), and the determination “must be made from the point of view of one skilled in the art,” Ultimax Cement Mfg. Corp. v. CTS Cement Mfg. Corp., 587 F.3d 1339, 1353 (Fed. Cir. 2009).

Chef America is cited:

Finally, Kingston suggests that our decision in Chef America, Inc. v. Lamb-Weston, Inc. precludes judicial correction here. Appellant’s Br. 24 (citing 358 F.3d 1371, 1374 (Fed. Cir. 2004)). In Chef America, we considered a patent directed to a process for making dough products. 358 F.3d at 1372. Both independent claims at issue included the step of “heating the resulting batter-coated dough to a temperature in the range of about 400° F. to 850° F.” Id. The patent owner sought to interpret this language as if it read “heating the . . . dough at a temperature in the range of” about 400° F to 850° F because it was undisputed that, if one performed the steps of the claim as written and heated the dough to 400° F or higher, the dough “would be burned to a crisp.” Id. at 1373–74 (emphasis added). We declined to construe the claim contrary to its plain language, observing that the language was clear and unmistakable and that we “may not redraft claims, whether to make them operable or to sustain their validity.” Id. at 1374. Here, Kingston argues that, if the district court correctly concluded that the language of the ’544 patent’s claims precluded the case from pivoting with respect to the flash memory main body, that structural impossibility is not sufficient to justify judicial correction. But this case is unlike Chef America for several reasons. First, as discussed, the structural limitations of the claims show that the reference to “case” was an error because they describe a cover that necessarily pivots with respect to the flash memory main body, so it is not structural impossibility alone that justifies correction. Second, the claim as written facially did not make sense (i.e., the case pivoting with respect to a component of which it forms a part) rather than describe a realistic but perhaps undesirable result, i.e., cooking dough to 400° F and burning it. Third, the specification of the ’544 patent confirms the error in the claims by exclusively describing a flash memory device with a pivoting cover, whereas in Chef America, nothing in the specification or the prosecution history suggested that the patentee meant for the dough to be cooked “at” 400° F rather than “to” 400° F. See id. at 1374–75. Fourth, in Chef America we pointed out that the “patentees made no attempt to have . . . an error corrected, . . . by action of the district court.” Id. at 1375. Accordingly, Chef America does not preclude the result we reach here.
Finally, throughout its briefing on appeal and in the district court, Kingston relied on the unrebutted testimony of an expert, Timothy Fletcher, who opined that the error in the claims was not minor or obvious. The district court summarily dismissed Mr. Fletcher’s testimony. See Claim Construction Order, 2018 WL 5099486, at *4 (characterizing Mr. Fletcher’s testimony as “inconsistent with the drawings presented in the patent and the other language of the patent”). The district court was correct to do so: Mr. Fletcher admitted that he had considered the “for pivoting” language in isolation, not in context as he should have. See J.A. 7465–66; CBT Flint, 654 F.3d at 1359. Accordingly, none of Mr. Fletcher’s opinions alter our analysis

Having determined that the claim language contains an obvious clerical error, that the correction is not subject to reasonable debate, and that the prosecution history does not suggest a different interpretation, we affirm the district court’s construction that “pivoting the case with respect to the flash memory main body” means “pivoting the cover with respect to the flash memory main body.”


Kingston next argues that the jury’s willful-infringement verdict must be set aside. Kingston submits that it could not have formed the requisite intent to support a willfulness finding because it did not infringe the claims as originally written and because it could not have anticipated that a court would later correct the claims.


Kingston suggests that upholding the willful-infringement verdict amounts to calling Kingston reckless for relying on the Board’s rejection of Pavo’s correction request during the IPR. But, as we explained above, the Board did not consider the substance of Pavo’s correction request, so there was nothing for Kingston to rely on. More importantly, “culpability is generally measured against the knowledge of the actor at the time of the challenged conduct.” Halo Elecs., Inc. v. Pulse Elecs., Inc., 579 U.S. 93, 105 (2016). The Board’s inaction, which came later, is irrelevant to the issue of Kingston’s intent to infringe the ’544 patent. See Odetics, Inc. v. Storage Tech. Corp., 185 F.3d 1259, 1276 (Fed. Cir. 1999) (“The proper time to assess willfulness is at the time the infringer received notice . . ., making the relevance of later developments . . . questionable at best.”).