District Court Had Authority to Correct Obvious Error in "Spam" Patent Claim
The U.S. Court of Appeals for the Federal Circuit reversed a district court decision holding a patent claim relating to spam e-mail technology invalid for indefiniteness, finding the district court had authority to correct an obvious error.
“Detect Analyze” Error in Spam Claim
CBT Flint Partners, LLC (“CBT”) is the owner of U.S. Patent Nos. 6,192,114 (the ’114 patent) and 6,587,550 (the ’550 patent), both relating to “methods and systems for charging a fee for sending unsolicited and unwanted e-mail, generally known as ‘spam,’ to e-mail recipients.” CBT Flint at 2-3. Importantly, claim 13 of the ’550 patent recites “a computer in communication with a network, the computer being programmed to detect analyze [sic] 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.” CBT brought suit in the U.S. District Court for the Northern District of Georgia against Return Path, Inc. and Cisco Ironport Systems, LLC (collectively, “Return Path”), alleging Return Path’s “Bonded Sender” system infringed all ten claims of the ’114 patent and claim 13 of the ’550 patent.
Following claim construction, the district court granted summary judgment of noninfringement of claim 13 of the ’550 patent, finding the recitation of “detect analyze” was a drafting error that rendered the claim indefinite. The district court determined that the claim could be reasonably corrected in one of three ways: “(1) delete the word ‘detect,’ (2) delete the word ‘analyze,’ or (3) add the word ‘and’ between the words ‘detect’ and ‘analyze.’” Id. at 4-5. Finding that the necessary correction was subject to reasonable debate, the district court held that it lacked authority to correct the error. Moreover, the district court noted that one of the inventors testified that he was unsure which way he meant to draft the claim. Based on the district court’s claim construction, the parties stipulated to noninfringement of the ’114 patent. The district court awarded Return Path costs, including e-discovery costs, but denied Return Path’s motion for declaration of an exceptional case and request for attorney fees, finding that CBT’s claims, while objectively baseless, did not justify an inference of bad faith.
Noninfringement Summary Judgment Reversed Based on Reasonable Correction of Obvious Error
The Federal Circuit reversed the noninfringement summary judgment, finding the district court erred in holding that it was not authorized to correct the “detect analyze” error in claim 13 of the ’550 patent. The court noted that “[a] district court can correct a patent 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.” CBT Flint at 9 (quoting Novo Industries L.P. v. Micro Molds Corp., 350 F.3d 1348, 1357 (Fed. Cir. 2003)). Analyzing the district court’s three reasonable alternatives “from the point of view of one skilled in the art,” the Federal Circuit concluded that the claim had the same scope and meaning under each alternative, i.e., requiring the computer program to detect and analyze the e-mail. Id. at 9 (citing Ultimax Cement Mfg. Corp. v. CTS Cement Mfg. Corp., 587 F.3d 1339, 1353 (Fed. Cir. 2009)). Namely, the Federal Circuit found that if the word “detect” was deleted, the system would necessarily have to first detect an e-mail in order to analyze the e-mail. Next, the court determined that if the word “analyze” was deleted, after detecting an e-mail, the program would have to analyze the e-mail in order to meet the subsequent limitation “to determine whether or not the sending party is an authorized sending party or an unauthorized sending party.” Reviewing the specification, the Federal Circuit found sufficient disclosure to support a claim requiring that the computer be programmed to detect and analyze the e-mail. The court concluded that the addition of the word “and” between the words “detect” and “analyze,” “corrects an obvious error.” Id. at 11. Additionally, the Federal Circuit criticized the district court’s heavy reliance on one portion of the co-inventor’s testimony, finding that the testimony merely related to the inventor’s recollection of how he intended to draft claim 13. Further, the court found that the district court ignored the inventor’s testimony that the claim meaning would be the same under any of the three proposed corrections. In view of its summary judgment reversal, the Federal Circuit vacated the award of costs and remanded for further consideration.
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