Federal Circuit Patent Watch: Obvious minor clerical errors in the claim language may not form basis for a defense to willful infringement

Federal Circuit Patent Watch: Obvious minor clerical errors in the claim language may not form basis for a defense to willful infringement

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Precedential Federal Circuit Opinions 

1. ARTHREX, INC. v. SMITH & NEPHEW, INC. [OPINION] (2018-2140, May 27, 2022) (Moore, Reyna, Chen)

Moore, C. J. Affirming PTAB decision finding unpatentable certain claims of challenged patent and also affirming decision by Commissioner for Patents denying patent owner’s request for the Director of the Patent and Trademark Office (PTO) to review the Board’s decision. The Commissioner’s exercise of the Director’s authority to decide rehearing petitions did not violate the Appointments Clause of the Constitution, the Federal Vacancies Reform Act, or the Constitution’s separation of powers. Substantial evidence supported the Board’s finding that an intervening application lacked written description of the relevant generic claim limitation, in part, because that application denigrated certain embodiments and described alternatives to overcome their disadvantages. If the specification derides a particular structure and seeks to replace it with alternatives that ostensibly perform its function better, a reasonable person could find that the specification lacks written description for that structure. The Board did not lack statutory authority to determine the validity of patent owner’s priority claim during IPR—section 311(b) merely dictates the grounds on which an IPR petition may be based, not the issues that the Board may consider to resolve those grounds.

2. CLEARONE, INC. v. SHURE ACQUISITION HOLDINGS, INC. [OPINION] (2021-1517, June 1, 2022) (Moore, Newman, Hughes) 

Moore, C. J. Affirming decisions of PTAB holding claim limitation not indefinite and denying request to file a motion for sanctions against patent owner. Just because a term is susceptible to more than one meaning does not render it indefinite. The intrinsic evidence informed, with reasonable certainty, skilled artisans about the scope of the invention, and substantial evidence supported that scope. The Board did not abuse its discretion in making findings that the patent owner did not intend to breach its duty to disclose references and that the arguments petitioner raised in its sanctions motion were essentially the same as the arguments presented in its Request for Rehearing and, thus, amounted to nothing more than a thinly veiled attempt at a second bite at the apple.

3. PAVO SOLUTIONS LLC v. KINGSTON TECHNOLOGY COMPANY, INC. [OPINION] (2021-1834, June 3, 2022) (Lourie, Prose, and Chen) 

Prost, J. Affirming district court judgment that defendant willfully infringed asserted claims and awarding compensatory damages, enhanced by 50 percent. The district court appropriately corrected an obvious minor clerical error in the claims, particularly where the error was clear from the full context of the claim language. Nothing in the case law precludes district courts from correcting obvious minor errors that alter the claimed structure, and courts are not limited to correcting errors that result in linguistic incorrectness. The district court also properly rejected the argument that defendant could not have formed an intent to infringe necessary to support a willful infringement verdict; reliance on an obvious minor clerical error in the claim language is not a defense to willful infringement. An obvious minor clerical error, by definition, does not mask the claimed  meaning, so defendant cannot hide behind the error to escape the jury’s verdict. District court also did not err in declining to exclude damages expert testimony, where damages expert relied on a non-payment term in a comparable license. The relevant term was a representation that provided greater context for the royalty, and not a separate term, e.g. triggered only under certain circumstances as in prior Federal Circuit decisions.

4. UNIVERSITY OF MASSACHUSETTS v. L’ORÉAL S.A. [OPINION] (2021-1969, June 13, 2022) (Prost, Mayer, Taranto)

Taranto, J. Reversing district court’s claim construction and also vacating personal-jurisdiction determinations. The claim language was not plain on its face and contained evident uncertainties and indicators pointing against plaintiffs’ view; the specification and prosecution history also cut against plaintiff’s arguments. District court abused its discretion in not allowing jurisdictional discovery on the record before it, given that plaintiff made more than clearly frivolous or bare allegations that one of the defendants was subject to personal jurisdiction and that evidence raised the possibility that discovery might have uncovered the requisite contacts.

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