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Reissued Patents: Can Patent Claims Be Amended After Grant?

Any errors made while drafting a patent claim or during patent prosecution could render the patent worthless if challenged in the court. These errors might prove fatal and bring uninvited trouble to the applicant as they affect the royalties, monetary aspects related to the patents negatively. Proofreading patent applications is therefore essential, while being a time-consuming activity, to find contradictions in patent claims and specifications. If errors are found after the grant of a patent, then patent reissue is the best remedy.

If you're an inventor or an expert in intellectual property, you already know that patents are necessary to protect your inventions.


The objective of a patent application is to give a thorough, precise, and accurate description of the invention in a way that highlights and clearly specifies what the inventor has invented and wants the patent to protect. Writing a patent application requires extreme caution because even the smallest errors can negatively impact it and cause the patent application to be rejected. Let’s have a look at the US laws to rectify errors in the patent and the grounds for allowing a reissue patent.


Patent Reissue

A patent reissue takes place when a correction needs to be made to correct a significant error that exists in a patent that has already been granted. Thus, a patent reissue allows a patentee to re-prosecute the patent and correct any errors that have been found post-issuance in the claims or specification.


Grounds for Allowing Reissue Patent Application

• Cleansing the erroneous or defective specification or drawing

• Failing to or incorrectly claiming the priority

• Correcting the inventorship

• Narrowing the scope of a claim

• Enlarging the scope of a claim


Laws and Peculiarities Related to Reissue Patent Applications

In accordance with 35 U.S.C. 251, the error upon which a reissue is based must be one which causes the patent to be "deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent."

Thus, an error under 35 U.S.C. 251 has not been presented where the correction to the patent is one of spelling, or grammar, or a typographical, editorial or clerical error which does not cause the patent to be deemed wholly or partly inoperative or invalid for the reasons specified in 35 U.S.C. 251.

These corrections to a patent do not provide a basis for reissue (although these corrections may also be included in a reissue application, where a 35 U.S.C. 251 error is already present), and may be made via a certificate of correction MPEP § 1481.


Here is an interesting case that gives insight into the power of the court in case of a clerical error in claims of a patent. So, without further ado, let us dive deeper into this!


Case Law

Pavo Solutions LLC V. Kingston Technology Company, Inc.


A lawsuit was brought against Kingston in 2014 by CATR Co (CATR), which was later replaced by Pavo Solutions (Pavo), alleging infringement of the '544 patent. Kingston asked for an inter partes review (IPR) of the patent, which led the court to halt the case until the IPR's outcome. The district court continued the case since some of the '544 patent's claims had survived the IPR.


Kingston did not want to stop here and appealed to the Federal Circuit.

On appeal, the Federal Circuit concurred with the district court that the claim language referring to pivoting contained an obvious minor clerical error that was lawfully entitled to judicial rectification because "case" was used instead of "cover." Because the cover is designated as the part that must inevitably rotate with respect to the main body, the court emphasized that the claim's restrictions themselves demonstrate that the reference to the case was incorrect. Due to the fact that the case is a part of the main body and cannot, therefore, pivot with respect to a component of which it forms a part, the claim was therefore illogical on its face. Finally, the specification confirms the error by exclusively identifying the cover as the pivoting portion of the device.


Background

Pavo is the owner of U.S. Patent No. 6,926,544. The patent is related to a flash memory device with a rotating cover that pivots so that the cover does not need to be completely removed during use.


The '544 patent's claim 1 refers to "pivoting the case with respect to the flash memory main body," despite the fact that the "case" is already specified in the claim and in the specification as a part of the main body. In light of this, the district court decided that the repetition of the word "case" in the preceding phrase was the result of a clerical error and interpreted claim 1 to require pivoting the cover with regard to the main body. Later, it was decided that Kingston Technology was accountable for infringement damages of $7.5 million, which were increased by 50% for willful infringement.


Arguments from Kingston


Kingston presented five points on appeal, but the court only really examined three of them.


Arguments Addressed:

  1. The district court should not have judicially corrected the phrase "pivoting the case concerning the flash memory main body" because there was no error;

  2. Kingston could not have formed the intention to infringe to support the willful infringement verdict because Kingston did not intrude on the originally written claims; and

  3. The district court must not have permitted Mr. Bergman to rely on his model based on the IPMedia agreement.


The Court of Appeals for the Federal Circuit (CAFC) did not consider these two arguments that Kingston put forth:

  1. The district court improperly instructed the jury on the agreed-upon meaning of the claim, and

  2. The district court allowed Pavo to prejudice the jury by allowing Pavo to speak to Kingston's total revenue of sale.


The Court's Judgement and Opinion


The Court of Appeals for the Federal Circuit (CAFC) first addressed Kingston's argument that the district court should not have judicially amended the claims. A district court can fix "apparent small typographical and clerical errors in patents," according to the court, citing Novo Indus., L.P. v. Micro Molds Corp. (CAFC, 2003).


The court specified the standards that must be met for it to be eligible for correction. Based on the language of the claims and the specifications, as well as the fact that the prosecution history does not indicate that the claims should be interpreted differently, the rectification cannot be the topic of a justifiable disagreement.


The district court concluded that there was no room for reasonable argument over the revision because Kingston's alternative construction, which would have read "pivoting the case with respect to the cover" instead of "flash memory main body," produced the same claim scope. The district court concluded by noting that the prosecution history supported the correction.


The court also declined to set aside Kingston's conviction for willful infringement. Kingston asserted that it didn't infringe the claims as they were initially stated and couldn't have known a court would later change the claims. However, the Federal Circuit ruled that reliance on a clear-cut typographical error in the claim language does not constitute a defense to willful infringement since the error cannot hide the claim's intended meaning.


Further, Kingston had offered and cited expert opinion in support of its claims that the correction was inappropriate. Still, the court disregarded it because it did not accord with the material facts. The court determined that the district court did not abuse its power by deciding not to exclude Mr. Bergman's testimony. The district court's decision for calculating damages is one that the CAFC reviews for an abuse of discretion.


We quote CAFC

"Here, both parties agree that the IPMedia license was comparable. That license granted rights in the ’544 patent, and it plainly reflected the value that the contracting parties settled on for the patent. As the starting point for Mr. Bergman's analysis, it provided sufficient evidence of 'already built-in apportionment.'"


This case is noteworthy because, despite the fact that it was technically impossible to infringe the claims as issued, a conviction of willful infringement was upheld.


Conclusion

Any errors made while drafting a patent claim or during patent prosecution could render the patent worthless if challenged in the court. These errors might prove fatal and bring uninvited trouble to the applicant as they affect the royalties, monetary aspects related to the patents negatively. Proofreading patent applications is therefore essential, while being a time-consuming activity, to find contradictions in patent claims and specifications. If errors are found after the grant of a patent, then patent reissue is the best remedy.


As evident from case law, it can be claimed that the courts have used the law relating to clerical error amendment to further the interests of justice and to administer equitable justice. The courts have also used this discretion while bearing in mind that it does not belong to the plaintiff as a vested right but is instead granted at the court's discretion and should be used with care and prudence.


The courts must likewise follow the principles established by the court in its numerous rulings. The CAFC clarified that a minor clerical error did not remake the claim, noting that Kingston's argument appeared to rely on the notion that the district court altered the claims' scope.


In order to maintain the drafter's intent, it is proper for a court to alter claim language. The case also restricts how far defendants can evade deliberate, willful infringement by pointing up grammatical mistakes in the claim language.


References:

https://cafc.uscourts.gov/opinions-orders/21-1834.OPINION.6-3-2022_1960213.pdf

https://www.ipwatchdog.com/2022/06/06/cafc-affirms-california-courts-claim-construction-damages-calculation-flash-drive-infringement-suit/id=149443/

https://www.knobbe.com/blog/claims-clerical-errors-can-be-judicially-corrected-and-willfully-infringed

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