Immediately after issuance of a patent, it is useful to check that the claims are accurately printed on the patent. The USPTO uses character recognition software which sometimes results in inconsistencies in the claims. The following case illustrates a situation where the failure to check the accuracy of the claims resulted in the unenforceability of the claim at issue.
In H-W Technology, L.C. v. Overstock.com, Inc. (Fed. Cir. 2014), HW sued Overstock for infringement of Claim 9 of US Pat. No. 7525955, among others. The patent claim was directed to contextual searches on an IP phone. When the patent issued, the claim was missing the emphasized “wherein” clause below.
- A method for performing contextual searches on an Internet Phone (IP) phone comprising the steps of: receiving a command to perform a contextual search; receiving search criteria from a user of said IP phone; submitting said search criteria to a server coupled to said IP phone; and receiving from said server a list of merchants matching said search criteria and information regarding each of said merchants in said list; wherein said user completes a transaction with at least one of said merchants listed without the need to generate a voice call; wherein said information received by said user comprises a variety of offers, wherein said user selects one of said variety of offers associated with said one of said merchants listed, wherein said selected offer is transmitted to said one of said merchants listed electronically; and wherein said user’s contact and payment information is not transmitted to said one of said merchants listed, wherein said user’s contact and payment information is available to said one of said merchants listed.
During litigation, Overstock notified HW that the asserted patent claim was missing a limitation that should have been printed on the patent document but was inadvertently left off by the USPTO. HW subsequently obtained a Certificate of Correction from the USPTO adding the missing wherein clause back into Claim 9.
Nonetheless, the District Court, under its own authority, did not correct the error in Claim 9 for the purposes of the litigation because the error was not evident from the face of the patent. The error was apparent only upon a review of the prosecution file history between the patent applicant and the USPTO. Claim 9 otherwise read coherently even without the missing limitation
HW also argued that the face of the patent (i.e., the specification) evidences the error in Claim 9. HW pointed to a passage that recited the missing limitation, but it was described as being optional and not a requirement of the claimed invention. The Federal Circuit also warned about the prohibition of inserting limitations into the claim that are not recited in the claims but only in the specification. The refusal of the District Court, under its own authority, to correct the error in Claim 9 was affirmed.
The District Court also did not consider the Certificate of Correction. 35 USC § 254 allows for the correction of a patent based on USPTO error. However, the Certificate of Correction of the patent is only effective for causes of action arising after it was issued. Here, HW did not assert that the causes of actions arose after the issuance of the Certificate of Correction, nor did it amend the complaint to make such an assertion. For these reasons, the patent owner could not assert the corrected version of Claim 9 against the defendant.
Moreover, the statute appears to and some district courts have cut off the opportunity to seek past damages prior to the issuance of the Certificate of Correction. Accordingly, it would be advantageous to correct the patent as soon as possible if necessary.
The remaining issue considered by the Federal Circuit was whether HW should be permitted to assert the uncorrected version of Claim 9 against Overstock. This question was answered in the negative because to do so would undermine the notice function of patents. Otherwise, patent owners would be permitted to sue others based on claims that they never asked for.
Simply put, in this case, correcting the errors of Claim 9 at the last minute left the patent owner without any options. They couldn’t enforce the corrected nor the uncorrected versions of Claim 9 against the defendant.
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