Can A Court Rewrite Claim Language During Claim Construction? If You Don't Ask For It, You'll Never Know (Pavo Solutions, Part I)

• Published date: 04 August 2022
• Subject Matter: Intellectual Property, Patent
• Law Firm: Oblon, McClelland, Maier & Neustadt, L.L.P
• Author: Mr Jeffrey B. McIntyre

In Pavo Solutions v. Kingston Technology (June 2022), the Federal Circuit rewrote claim language in the asserted patent by changing the claim element "for pivoting" from case to cover. The claim element in question read as follows:

...at least one hinge hole receiving the hinge protuberance on the case for pivoting the [[case/cover]] with respect to the flash memory main body...

So instead of the claim requiring the case to pivot per its plain language, the Federal Circuit rewrote the claim to require the cover to pivot.

In changing the claim language, the Federal Circuit noted governing precedent:

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).

The Federal Circuit noted that '[j]udicial correction 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. [citation omitted],' and then analyzed the situation before it, concluding that other claim language was consistent with the cover pivoting, not the case, and that the prosecution history supported this outcome.

That's a brief summary of the case. But here are a few tidbits for consideration.

1. What exactly are 'obvious minor typographical and clerical errors in patents'? Interestingly, the Federal Circuit noted that it could alter the structure of the claimed product, if needed ('even if Kingston were right that the correction changes the structure described in the corrected claim, nothing in our case law precludes district courts from correcting obvious minor errors that alter the claimed structure. [Case citations and discussion omitted]. These cases confirm that judicial correction may result in structural alterations.'). Is changing structure really a minor typographical or clerical error? Is the focus really on...