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.”).


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