Claim With Omitted Material Limitation May Not Be Asserted Before Correction

When a patent issues with a mistake, a certificate of correction can be obtained to correct it under certain circumstances. 35 U.S.C. §§ 254, 255. When an issued claim "omits a material limitation, and such omission is not evident on the face of the patent, the patentee cannot assert that claim until it has been corrected by the PTO. " H-W Tech., L.C. v. Overstock.com, Inc., 758 F.3d 1329, 1335 (Fed. Cir. 2014).

H-W Technology was an appeal from an infringement suit asserting U.S. Patent No. 7,525,955 ("the '955 patent"), in which H-W Technology ("H-W") alleged infringement of claim 9, among others. Claim 9 recites a "method for performing contextual searches on an Internet Phone (IP) phone." Id. at 1333. In relevant part, the method of claim 9 as allowed by the U.S. Patent and Trademark Office (USPTO) recites steps of receiving search criteria from a user, submitting those criteria to a server, and receiving a list of merchants matching the search criteria from the server, "wherein said user completes a transaction with at least one of said merchants listed without the need to generate a voice call." Id. Issued claim 9, however, mistakenly omitted the limitation italicized above. Id. H-W asserted uncorrected claim 9.

H-W obtained a certificate of correction for claim 9 after filing its complaint, but did not amend its complaint to refer to corrected claim 9. H-W did request that the district court order correction of claim 9. The district court refused, did not consider the certificate or correction, and instead held claim 9 indefinite on summary judgment.

The Federal Circuit first considered H-W's argument that the district court should have corrected claim 9 on its own authority. Such an action can be taken when "the error is evident from the face of the patent." Grp. One Ltd. v. Hallmark Cards, Inc., 407 F.3d 1297, 1303 (Fed. Cir. 2005). The court found that nothing in the '955 patent itself made the error evident. Among other things, claim 9 "reads coherently without the missing limitation," and the limitation appeared in the specification as an optional feature. H-W Tech., 758 F.3d at 1333-34. The court acknowledged that the USPTO's error was "clear on the face of the prosecution history," but noted that "evidence of error in the prosecution history alone [is] insufficient to allow the district court to correct the error." Id. at 1334.

Turning to whether the certificate of correction should have been considered, the Federal Circuit...