CBT Flint Partners v. Return Path and Cisco Ironport Systems (CAFC 2010-1202, -1203) precedential; Judges Lourie (author), Bryson, and Linn

A correction should have been made with the patent office before punting the patent into the courthouse. 35 U.S.C. §254 allows for such a simple mend.

On to the CAFC remedy -

We agree with CBT that claim 13 of the '550 patent is not indefinite, and we do so ultimately by holding that there is an obvious and correctable error in the claim, the construction of which is not subject to reasonable debate. Claim construction is an issue of law, Markman v. Westview Instruments, Inc., 52 F.3d 967, 977-78 (Fed. Cir. 1995) (en banc), which we review de novo, Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454-55 (Fed. Cir. 1998) (en banc). Although the claims of a patent define the invention that the patentee is entitled to exclude others from practicing, we must read the claims "in view of the specification, of which they are a part." Phillips v. AWH Corp., 415 F.3d 1303, 1312-15 (Fed. Cir. 2005) (en banc). If the court determines that a claim is not "amenable to construction," then the claim is invalid as indefinite under 35 U.S.C. § 112, ¶ 2. Honeywell Int'l, Inc. v. Int'l Trade Comm'n, 341 F.3d 1332, 1338 (Fed. Cir. 2003) (quoting Exxon Research & Eng'g Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001)).

Judge Thrash unempowered himself because the defendants trotted out Novo Industries L.P. v. Micro Molds Corp., telling Thrash that he couldn't make hash, so Thrash threw the claim in the trash.

It is well-settled law that, in a patent infringement suit, a district court may correct an obvious error in a patent claim. I.T.S. Rubber Co. v. Essex Rubber Co., 272 U.S. 429, 442 (1926) ("Essex"). In Novo Industries, we held that "[a] district court can correct a patent 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." 350 F.3d at 1357. We concluded that the enactment of 35 U.S.C. §§ 254 and 255 did not overrule Essex or deny authority to the district courts to correct a claim in appropriate circumstances. Id. at 1356. In Novo Industries, we declined to make the proposed corrections to the claim at issue because those corrections were substantively significant and required guesswork as to what was intended by the patentee in order to make sense of the patent claim. Id. at 1357.

More recently, on the other hand, in Ultimax Cement Manufacturing Corp. v. CTS Cement Manufacturing Corp., we found authority for the district court to correct a claim by adding a comma between the symbols for fluorine and chlorine. 587 F.3d 1339, 1353 (Fed. Cir. 2009). We concluded that one of ordinary skill in the art would know that the formula should contain a comma. Id. Thus, we emphasized that in deciding whether it had authority to correct a claim, a district court must consider any proposed correction "from the point of view of one skilled in the art." Id.

Any correction of a claim has to be consistent with the invention "described in the specification and drawings of the original patent." Essex, 272 U.S. at 444; see also Ultimax, 587 F.3d at 1353 ("Claim definiteness is analyzed not in a vacuum, but always in light of the teachings of the prior art and of the particular application disclosure as it would be interpreted by one possessing the ordinary level of skill in the pertinent art."). A court therefore must consider how a potential correction would impact the scope of a claim and if the inventor is entitled to the resulting claim scope based on the written description of the patent.

To analyze you have to detect, so dropping detect wouldn't make any difference. If you drop analyze, the next claim limitation is to "determine," which means you'd have to analyze. Just add an "and" and be done with it.

The district court was not required to guess which meaning was intended in order to make sense out of the patent claim, nor is one of skill in the art. Novo, 350 F.3d at 1357; see also Essex, 272 U.S. at 443 ("This is not in any real sense, a re-making of the claim; but is merely giving to it the meaning which was intended by the applicant and understood by the examiner.").

Reversed-in-part, vacated-in-part, and remanded.

Costs to CBT (for not getting this corrected beforehand?).