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Claims With Clerical Errors Can Be Judicially Corrected and Willfully Infringed

| Spencer R. CarterHans L. Mayer

PAVO SOLUTIONS LLC v. KINGSTON TECHNOLOGY COMPANY, INC.

Before: Lourie, Prost, and Chen.  Appeal from the United States District Court for the Central District of California.

Summary: A court can correct obvious minor typographical or clerical errors in claim language even when doing so would alter the claimed structure; reliance on such a clerical error is not a defense to willful infringement.

CATR Co. (later substituted by Pavo Solutions) sued Kingston for infringement of a patent relating to a pivoting cover for a USB apparatus. During claim construction, the district court found that the claim language “pivoting the case with respect to the flash memory main body” included a clerical error and it judicially corrected the language by replacing the word “case” with the word “cover”. The jury returned a verdict of willful infringement and awarded Pavo damages. The district court denied Kingston’s motion for JMOL and Kingston appealed. 

Regarding Kingston’s argument that the district court should not have judicially corrected the claim language, the Federal Circuit concluded that the claim contained an obvious minor typographical or clerical error because the error was clear from the “full context of the claim language.” The Federal Circuit disagreed with Kingston’s argument that replacing one structural element with another is “a substantial alteration of the claimed structure” such that the error could not be “minor”.  The Federal Circuit stated that “[n]othing in our case law precludes district courts from correcting obvious minor errors that alter the claimed structure” and that “courts are not limited to correcting errors that result in linguistic incorrectness.” The Federal Circuit also concluded that the correction is not subject to reasonable debate in view of the claim language and the specification. It reasoned that Kingston’s proposed alternative correction, in light of the specification and drawings, would result in the same claim scope as the district court’s correction. Finally, the Federal Circuit concluded that the prosecution history did not suggest a different interpretation of the claims. It noted that the characterizations and descriptions of the Applicant as well as multiple reviewing bodies (the examiner, the Board, the Federal Circuit) consistently understood the scope of the claim to be as corrected.

The Federal Circuit then addressed Kingston’s argument that it could not have formed the requisite intent to support a willfulness finding because it did not infringe the claims as originally written and because it could not have anticipated that a court would later correct the claims. The Federal Circuit held that “reliance on an obvious minor clerical error in the claim language is not a defense to willful infringement.” The Federal Circuit also noted that Kingston could not reasonably rely on the Board’s refusal to make the same correction during IPR because the Board denied the request on procedural grounds without considering the substance of the request and because the Board’s denial came after Kingston’s willful infringing conduct.

The Federal Circuit did not address Kingston’s other two arguments reasoning that Kingston forfeited those arguments by failing to raise them to the district court in post-trial motions.

Editor: Paul Stewart