A Claim Error Obvious And Correctable From The Perspective Of A Person Of Ordinary Skill In The Art Held Not Invalid

This article previously appeared in Last Month at the Federal Circuit, September 2011

Judges: Lourie (author), Bryson, Linn

[Appealed from N.D. Ga., Judge Thrash, Jr.]

In CBT Flint Partners, LLC v. Return Path, Inc., Nos. 10-1202, -1203 (Fed. Cir. Aug. 10, 2011), the Federal Circuit reversed the district court's SJ of invalidity of claim 13 of U.S. Patent No. 6,587,550 ("the '550 patent") because the district court had authority to correct the supposed error found in the claim, vacated the district court's rulings on costs, and denied CBT Flint Partners, LLC's ("CBT") cross-appeal for attorneys' fees.

CBT owns the '550 patent and U.S. Patent No. 6,192,114 ("the '114 patent"), which both relate to methods and systems for charging a fee for sending unsolicited and unwanted e-mail (known as "spam"). In a preferred embodiment of the '550 patent system, when a party sends a spam message to an intended receiving party, the Internet Service Provider determines whether the sender of the e-mail is an authorized sending party, and, if authorized, forwards the spam e-mail to the receiving party. If, however, the sending party is not authorized, the system sends a message to the sending party with an option to pay a fee and have the spam message forwarded to the recipient. Claim 13 of the '550 patent, the only claim-at-issue in the appeal, recites, inter alia, "[a]n apparatus for determining whether a sending party . . . is an authorized sending party, the apparatus comprising: a computer in communication with a network, the computer being programmed to detect analyze the electronic mail communication sent by the sending party to determine whether or not the sending party is an authorized sending party or an unauthorized sending party . . . ." Slip op. at 3-4 (citation omitted).

CBT sued Cisco Ironport Systems, LLC ("Cisco") and Return Path, Inc. ("Return Path") for infringement of the '550 and '114 patents. The accused system analyzes each incoming e-mail message to determine whether the e-mail came from an authorized computer, and, if so, forwards it. The accused system, however, does not have any mechanism to permit the forwarding of e-mail from unauthorized computers to a recipient, even if the unauthorized sending party is willing to pay a fee.

The district court agreed with the parties that claim 13 contained a "drafting error"; specifically, the claim recites "the computer being programmed to detect analyze the electronic mail communication."...