Hiding Behind Clerical Errors – Lessons from Pavo Solutions vs. Kingston Technology Company – Patent
A patent gives its holder the right to prohibit others from practicing the invention claimed in the patent. In the United States, infringement becomes willful when the infringing activity is carried out deliberately and intentionally with prior knowledge of the patent (see Power Lift, Inc. vs. Lang Tools, Inc.227 USPQ 435, 438 (Fed. Cir. 1985).
Recently, the United States Court of Appeals for the Federal Circuit issued a decision in an ongoing dispute between Pavo Solutions, LLC (“Pavo”) and Kingston Technology Company, Inc. (“Kingston”) (Pavo Solutions, LLC v Kingston Technology Company, Inc., CAFC, June 3, 2022), which addresses the following issues: (a) whether a district court can correct an obvious clerical error in a patent; and (b) whether the district court can find an intentional violation after and as a result of the correction of the clerical error.
US patent no. 6,926,544 (“the ‘544 patent”) was issued to Pavo in 2015, by CATR Co. (“CATR”). The ‘544 patent seeks “[a] flash memory device having a unique body-type rotating cover.” (identifier, 2). Figure 2 clearly illustrates the claimed flash memory device:
On August 22, 2014, CATR Co. (“CATR”), prior to awarding the ‘544 patent to Pavo, sued Kingston alleging infringement of that patent. On a mission, Pavo replaced CATR as the requester.
In the course of the proceedings, the district court judicially corrected the wording of claim 1 to read: “rotating the
cover relative to the main body of flash memory”, rather than “rotating the Case with respect to the main body of the flash memory”, in accordance with the support of the patent specification (emphasis added). During the trial, the jury found that Kingston willfully infringed the ‘544 patent and awarded damages to Pavo.
In its appeal, Kingston argued that the district court erred in judicially correcting the claim. Further, Kingston argued that it could not have willfully infringed the ‘544 patent, because Kingston reasonably relied on the fact that it had not infringed the claims of the ‘544 patent, such as they were originally written, that is to say before the judicial correction.
In its decision, the Federal Circuit found that the district court correctly corrected a minor clerical error evident in the claims. The court explained that the correction of a clerical error in a claim is only appropriate “if (1) the correction is not subject to reasonable argument based on an examination of the wording of the claim and of the specification and (2) the prosecution history does not suggest any other interpretation of the claims.” (identifier. seven). Further, in determining that a particular correction is appropriate, the court “must consider how a potential correction would affect the scope of a claim and whether the inventor is entitled to the scope of the resulting claim based on the written description of the patent”. (identifier., 7-8).
In its analysis, the court determined that the error in the claim was clear from the full context of the language of the claim and the support provided by the specification. Therefore, the judicial correction “only gave it the meaning intended by the applicant and understood by the examiner”. (identifier., 13). The court then determined that the prosecution history did not suggest a different interpretation of the claim, since the plaintiff, the examiner and the courts were consistent with the understanding of the scope of the invention set out in the claims.
Based on its finding that the district court acted properly in correcting the clerical error cited in the application, the court further determined that Kingston willfully infringed the patent. The court explained that Kingston could not rely on “an obvious minor clerical error in the language of the claim” as a defense to willful infringement. (identifier., 16). The court explained that it based its reasoning behind this decision on the fact that “[a]n obvious minor clerical definition, does not obscure the meaning” of the claim and therefore Kingston could not “hide behind the error to escape the verdict of the jury”. (identifier. 16).
A few takeaways stand out from this decision.
First of all, and as trite and “obvious” as it may sound, mindfulness and proofreading are essential skills for patent attorneys. Ensuring that a claim actually states what is intended is key to ensuring the client receives the patent they thought they were paying for. Kingston expressed regret that although the claiming error was relatively minor, so as to be taken up by the court, it was enough change to play against them. However, other court decisions point to the implications of what can happen when a clerical error leads to the opposite result without there being a violation (see for example, CBT Flint Partners, LLC vs. Return Path, Inc..)
Second, an infringement analysis must consider the wording of the claim and any possible clerical errors, particularly to avoid the risk of a willful infringement claim. To err on the side of caution in this matter can mean the difference between no infraction, infraction, and willful infraction. In the current situation, if Kingston had sought an opinion of infringement from a patent attorney who exercised caution and did not rely on a clerical error in the claims, Kingston might not have been responsible for willful infringement or might have avoided an infringement action. absolutely.
In conclusion, this case emphasizes the fact that a patent attorney and his clients live and die by the pen and the reliance placed on the scope of a patent’s claims. Therefore, as patent attorneys, there is a fiduciary duty to ensure that a claim actually states the intended scope to ensure a high quality work product when drafting a patent application. Further, a patent attorney should err on the side of caution when advising a client in a potential infringement situation and avoid relying on errors in a patent when assuring the client that he will not does not infringe the patent.
The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.