Federal Circuit Review - June 2022

June 2022 Federal Circuit Newsletter (Japanese)

Claims With Clerical Errors Can Be Judicially Corrected and Willfully Infringed

In Pavo Solutions LLC v. Kingston Technology Company, Inc., Appeal No. 21-1834, the Federal Circuit held that a court can correct obvious minor typographical or clerical errors in claim language, even when doing so would alter the claimed structure, and that 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 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 at the district court in post-trial motions.

Concentration of a Sub-Topically Applied Compound Is Measured at Topical Application

In University Of Massachusetts v. L’oréal S.A., Appeal No. 21-1969, the Federal Circuit held that, in claims of two patents regarding skin enhancement, the recited concentration of a compound that is applied to sub-topical dermal cells is measured at the point the compound is applied topically to the skin.

The University of Massachusetts (“UMass”) sued L’Oréal alleging infringement of two patents. The asserted patents describe methods of skin enhancement through topical application of compositions containing adenosine. A representative claim recites a concentration of adenosine twice. First, it recites a concentration applied topically to skin: “topically applying to the skin a composition comprising a concentration of adenosine in an amount effective to enhance the condition of the skin, without increasing dermal cell proliferation.” Later, it recites a concentration range applied to sub-topical dermal cells: “wherein the adenosine concentration applied to the dermal cells is 10^-4 M to 10^-7 M.” The district court issued a claim-construction ruling that the recited concentration range refers to “the concentration as it is applied to the dermal cells,” not as it is applied topically to skin. The district court emphasized that, as a result, the first-recited concentration is distinct from the later-recited concentration range. Based on that ruling, L’Oréal moved for summary judgment that the language containing the first-recited concentration is indefinite for failure to establish the claimed concentration. The district court granted the motion and entered final judgment of invalidity against UMass. UMass appealed.

The Federal Circuit reversed the district court’s claim-construction ruling. It held that the recited concentration range refers to the concentration as it is applied topically to skin. The Federal Circuit recognized that the representative claim recites the concentration range “applied to the dermal cells” rather than applied topically to skin. But it reasoned the same concentration can be applied both directly to the skin surface and indirectly to the sub-topical dermal cells. Looking to the specification, the court identified multiple specific concentrations for “topically administering” adenosine and noted that none specify measuring concentration after seepage through the skin into the dermal cells. Turning to the prosecution history, the Federal Circuit noted the claim language indicating the concentration range “applied to the dermal cells” was added in an amendment. According to the court, the applicant implied that the amended wording did not change the location where the concentration was to be measured. Based on its new claim construction, the Federal Circuit vacated the district court’s indefiniteness ruling and remanded.

Silence Is No Support For Negative Claim Limitation

In Novartis Pharmaceuticals Corp. v. Hec Pharm Co., Ltd. Appeal No. 21-1070 the Federal Circuit held that silence regarding the presence or absence of a limitation in a patent specification was not sufficient to provide written description support for a negative claim limitation.

Novartis sued HEC for infringement. The patent at issue was directed to a method of treating relapsing-remitting multiple sclerosis by administering the drug “at a daily dosage of 0.5 mg, absent an immediately preceding loading dose regimen.” A loading dose is a higher-than-daily dose of the drug, typically given as the first dose. HEC argued there was no written description support for the negative limitation “absent an immediately preceding loading dose regimen.” The district court disagreed and found Novartis’s patent was not invalid for lack of written description.

The Federal Circuit initially affirmed the district court’s decision. HEC petitioned for rehearing, which the Federal Circuit granted. On rehearing, the Federal Circuit vacated its initial decision, reversed the district court’s written description ruling, and held the patent at issue invalid for lack of written description. The Federal Circuit noted that, even for negative claim limitations, silence is generally not sufficient to provide written description support. The court held that, while a negative limitation need not be recited in haec verba, the specification must contain some disclosure that conveys to a person of skill in the art that the exclusion of the limitation was intended by the inventor, such as discussion of the disadvantages or alternatives to the limitation. In this case, the patent’s specification was silent regarding whether a loading dose should or should not be used as part of the treatment regimen. The court therefore held that the specification failed to adequately describe the absence of a loading dose and concluded that the patent is invalid under 35 U.S.C. §112.

Judge Linn dissented, arguing that the majority applied “a heightened written description standard to the facts of this case in requiring not only a ‘reason to exclude’ but a showing that the negative limitation in question was ‘necessarily excluded.’”