Federal Circuit Finds That Reliance On An Obvious Minor Clerical Error Is Not A Defense To Willful Infringement
On June 3, 2022, the United States Court of Appeals for the Federal Circuit (“CAFC”) affirmed the correction of an obvious minor clerical error in the asserted claim language and a judgment of willfulness by the United States District Court for the Central District of California (“CDCA”). Pavo Sols. LLC v. Kingston Tech. Co., Inc., No. 2021-1834 (Fed. Cir. June 3, 2022). The CAFC found that the CDCA properly corrected an obvious minor clerical error in the asserted claims and held that defendant’s reliance on such error was not a defense to willful infringement.
In 2014, Pavo Solutions LLC’s (“Appellee”) predecessor in interest CATR Co. sued Kingston Tech. Co., Inc. (“Appellant”) for infringement of claims of U.S. Patent No. 6,926,544 (the ’544 patent) directed to a “flash memory apparatus having a single body type rotary cover.” The asserted claims recited, in relevant part, “a flash memory main body including a rectangular case” and “a cover including [a] pair of parallel plate members.” The Appellant petitioned for inter partes review (“IPR”) of the ’544 patent, which was instituted and resulted in the cancellation of several claims. The district court case resumed after the IPR. During claim construction, the CDCA found that the claim phrase “the parallel plate members having at least one hinge hole receiving the hinge protuberance on the case for pivoting the case with respect to the flash memory main body” included a clerical error and judicially corrected the language from “pivoting the case” to “pivoting the cover.”
The case proceeded to trial, where the jury found that Appellant willfully infringed the asserted claims of the ’544 patent. Appellant moved for judgment as a matter of law, which was denied.
Appellant appealed, and the CAFC affirmed.
Regarding whether CDCA’s judicial correction, the CAFC first rejected Appellant’s arguments that the CDCA’s correction was not minor or obvious because it changed the claimed structure and broaden the claim language. The CAFC found that the claim as originally written doesn’t make sense because the claim as a whole requires a structure in which the cover pivots with respect to the flash memory main body, even absent the disputed “pivoting” language. The CAFC further noted that district courts are not precluded from correcting obvious minor errors that alter the claimed structure even where the corrected error was not linguistically incorrect, citing CAFC and Supreme Court precedent.
The CAFC then rejected Appellant’s argument that the error was subject to reasonable debate because the CDCA’s correction and Appellant’s proposed correction (“pivoting the case with respect to the cover”) do not result in identical claim scope—because the case and the flash memory main body need not be affixed together—was contrary to the ’544 patent specification.
Finally, the CAFC rejected Appellant’s argument that the Patent Trial and Appeal Board’s (“PTAB”) denial of Appellee’s request to make the same correction during the IPR suggests that the CDCA’s correction was inappropriate, noting that the denial was on procedural, not substantive, grounds.
Regarding willfulness, the CAFC held that reliance on an obvious minor clerical error in the claim language is not a defense to willful infringement because, by definition, such an error does not mask the obvious meaning of the claim. Further, the CAFC found that Appellant could not properly rely on the PTAB’s denial of Appellee’s correction request during IPR because it occurred after Appellee filed suit and put Appellant on notice of its allegedly infringing conduct.