Perhaps the most surprising aspect of the Federal Circuit’s decision was its affirmance of the district court’s 50% enhancement of the jury’s compensatory damages award based on the court’s finding that Kingston willfully infringed the patent claims, which as issued, were inoperable.
Mistakes can and sometimes do happen—even in the drafting and issuance of patent claims. The U.S. Patent & Trademark Office’s Manual of Patent Examining Procedures addresses two broad categories of mistakes: (1) clear errors committed by the Patent Office (MPEP § 1480) and (2) minor clerical or typographical mistakes committed by the patent applicant (MPEP § 1481). In each such case, the Patent Office issues a Certificate of Correction that is published with the patent and that identifies the corrected mistakes.
“Judicial correction” is an alternative avenue for correcting patent errors that are discovered during litigation. In early cases, the Court of Appeals for the Federal Circuit recognized a district court’s authority to correct “obvious minor typographical and clerical errors in patents,” provided that “(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.” Novo Indus., L.P. v. Micro Molds Corp., 350 F.3d 1348, 1357 (Fed. Cir. 2003).
In a recent decision, Pavo Solutions LLC v. Kingston Tech. Co., Inc., No. 2021-1834 (Fed. Cir. June 3, 2022), the Federal Circuit ruled that judicial corrections to patent claim language are not confined to correcting typographical and clerical errors in a claim and, in certain circumstances, may extend to replacing erroneous structural descriptions in the claim. The Federal Circuit further ruled that reliance on obvious mistaken structural descriptions “in the claim language is not a defense to willful infringement.” Id. at 16.
In that case, Pavo had accused Kingston of infringing claims of U.S. Patent No. 6,926,544 (“the ’544 patent”) directed to “[a] flash memory apparatus having a single body type rotary cover.” The jury found infringement and awarded $7,515,327.40 in compensatory damages. The district court enhanced the damages by 50 percent upon its finding of willful patent infringement. The Federal Circuit affirmed.
The accused Kingston flash memory devices were pocket-sized USB memory sticks. The main body of the memory stick was enclosed in a surrounding plastic case. The point of contention in the litigation was the cover used to protect the protruding metal USB plug. Instead of a form-fitting, removable plastic cover, the device was equipped with a U-shaped cover attached to hinges on opposing sides that could pivot to an upright position protecting the USB plug or to an open position exposing the plug and permitting its use with a computer. Pavo asserted that Kingston’s hinged cover infringed the ’544 patent claims, not literally as drafted and issued, but as corrected during the district court’s claim construction.
During claim construction, Pavo argued that the claim phrase “pivoting the case with respect to the flash memory main body” contained an obvious and judicially correctible error because the phrase described a structurally impossible function. In other words, because the case surrounded the flash memory main body, it could not pivot “with respect to” the main body. According to Pavo, the obvious correction would substitute “case” with “cover” so that the phrase reads, “pivoting the cover with respect to the flash memory main body.”
The district court agreed with Pavo and corrected the claim language. On appeal, Kingston argued that “the district court should not have judicially corrected the phrase . . . because the [claim] does not contain an error and, even if it does, the error is neither minor nor obvious.” Id. at 6. According to Kingston, the error was not minor “because replacing one structural element with another is ‘a substantial alteration of the claimed structure.’” Id. at 9.
The Federal Circuit nonetheless agreed with the district court that the error in the claim’s phrase was obvious from the full context of the claim language because “the claims describe a movement that is only possible if the cover pivots with respect to the flash memory main body.” Id. (emphasis in original). Since the mistaken claim term could be understood from “the claim language alone,” the Federal Circuit concluded that the mistake was “an obvious minor clerical error.” Id.
The Federal Circuit dispelled Kingston’s argument that judicial correction is limited to correcting linguistic or typographical errors by reciting precedent for judicial corrections that resulted in substantive revisions to the claims. See, e.g., Ultimax Cement Mfg. Corp. v. CTS Cement Mfg. Corp., 587 F.3d 1339, 1352-53 (Fed. Cir. 2009) (comma inserted into chemical formula); Lemelson v. General Mills, Inc., 968 F.2d 1202, 1203 (Fed. Cir. 1992) (the word “toy” inserted into claim preamble); I.T.S. Rubber Co. v. Essex Rubber Co., 272 U.S. 429, 441-43 (1926) (“upper edge” corrected to “rear upper edge”).
The Federal Circuit likewise rejected Kingston’s contention that the obvious inoperability of the claim did not warrant judicial correction. In support of that contention, Kingston had relied on Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1374 (Fed. Cir. 2004), in which the court refused to correct the patent claim’s baking instruction for dough. There, the Federal Circuit panel declined to replace “heating the . . . dough . . . to about 400° F to 850° F” with “heating the . . . dough . . . at about 400° F to 850° F,” even though it was undisputed that when heated to 400° F or higher, “the dough would burn to a crisp.” Id. In declining the claim correction, the Federal Circuit panel reasoned that the claim’s “language was clear and unmistakable” and that a court “may not redraft claims, whether to make them operable or to sustain their validity.” Id.
The panel in the Kingston case distinguished the prior Chef America decision by suggesting that inoperability was not the basis for judicially correcting the ’544 patent claims. Instead, the error was apparent from a full reading of the claim itself, which indicated that the “cover” not the “case” was intended to pivot with respect to the flash memory body. Kingston at 10-11. Moreover, without the correction, “the claim as written facially did not make sense.” Id. at 11. In contrast, the claims in the Chef America case “describe a realistic but perhaps undesirable result, i.e., cooking dough to 400° F and burning it.” Id.
The Federal Circuit determined that the correction “was not subject to reasonable debate” because the court “‘was not required to guess which meaning was intended in order to make sense out of the patent claims.’” Id. at 12 (quoting CBT Flint Partners, LLC v. Return Path, Inc., 654 F.3d 1353, 1360 (Fed. Cir. 2011)). The Federal Circuit concluded its analysis of the district court’s judicial correction by finding that the correction was consistent with the prosecution history. The court noted that throughout the prosecution of the patent application, both the examiner and the applicant “consistently characterized the claims as describing ‘pivoting the case [] within the cover,’ ‘allowing the cover to pivot,’ and ‘a cover . . . having a hinge element functioning with the case.’” Id. at 14 (citations omitted).
Perhaps the most surprising aspect of the Federal Circuit’s decision was its affirmance of the district court’s 50% enhancement of the jury’s compensatory damages award based on the court’s finding that Kingston willfully infringed the patent claims, which as issued, were inoperable. Kingston had argued 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.” Id. at 15. Kingston further pointed out that during inter-partes review of the ’544 patent at the Patent Office, Pavo had asked the board to correct the claim language, but the board denied the request. Kingston argued, therefore, that its reliance on the board’s rejection of the correction request was not reckless and that Kingston could not have willfully infringed the claims. Id. at 16.
The Federal Circuit disregarded Kingston’s reliance on the board’s rejection of the claim correction request, noting that the rejection was made on procedural rather than substantive grounds. Id. Apparently, Pavo made the request after briefing was completed in the IPR and shortly before oral argument. The board declined the request, stating ironically, that “potential changes to the claims at this stage could lead to a moving target that is unfair to [Kingston].” Id. at 15. According to the Federal Circuit, the board’s reference to “‘potential changes that could’” alter the claim scope “shows that the board did not consider the substance of Pavo’s request.” Id. Moreover, since, in the Federal Circuit’s view, the error was merely “an obvious minor clerical error,” Kingston’s reliance on the “obvious minor clerical error in the claim language is not a defense to willful infringement.” Id. at 16.
The likely impact of this decision on patent practitioners when evaluating the scope of patent claims is the added burden of determining whether the literal scope of the claims “makes sense” and if not, whether the claims are susceptible to judicial correction. With respect to willful infringement, at least, one could argue that the burden of resolving claim errors and their attendant ambiguities should rightfully fall on the patentee before asserting the patent, especially for the correction of structural claim elements rather than typographical errors. Claims corrected through patent office procedures result in a published record and, arguably, provide fair notice of claim scope for purposes of willful infringement.
As a practical matter, nonetheless, prudent patentees are unlikely to rely too heavily on judicial correction to remedy patent claim errors. Predicting a court’s openness to judicial correction is potentially a fool’s errand and risks the patentee’s fate in the Chef America case. Pre-suit diligence in assessing the scope and vulnerabilities of patent claims will ordinarily uncover obvious errors. In such circumstances, there are often several procedural avenues open to the patentee for correcting errors before asserting the patent in litigation. For that reason, judicial correction will continue to be an available but rarely used procedure to correct patent claim errors.
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