CBT FLINT PARTNERS, LLC v. Return Path, Inc.
654 F.3d 1353
| Fed. Cir. | 2011Background
- CBT Flint owns the '550 and '114 patents related to charging fees for spam email; the asserted claim at issue is claim 13 of the '550 patent.
- The district court granted summary judgment that claim 13 was indefinite under 35 U.S.C. § 112, ¶ 2, due to a drafting error in the phrase 'detect analyze.'
- The district court identified three possible corrections to the drafting error and concluded that corrections were subject to reasonable debate, thus lacking authority to correct under Novo Industries.
- After litigation, CBT and Cisco disputed costs; the district court awarded Cisco costs (including e-discovery costs) and denied attorney fees, with CBT appealing the cost ruling and Cisco cross-appealing denial of exceptional-case designation.
- On appeal, the Federal Circuit held the district court had authority to correct the drafting error after considering the claim in light of the specification and ordinary skill in the art, and that the correction does not alter the invention’s scope.
- The court reversed the summary judgment of invalidity, vacated cost rulings, denied Cisco’s cross-appeal, and remanded for further proceedings consistent with its opinion.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether claim 13 is indefinable due to drafting error | CBT argues the claim had a clear, correctable error that yields a single meaning | Cisco contends no authority exists to correct under Novo when several corrections are reasonable | Claim 13 is not indefinite and is correctable |
| Whether the district court had authority to correct the drafting error | Correction aligns with the specification and ordinary skill | Correction must be done by PTO; no district-court authority when multiple reasonable corrections exist | District court had authority to correct the error |
| How the correction affects claim scope and construction | Corrected reading yields same scope across proposed corrections | Corrections could alter scope; court should not construe before correction | Correction consistent with the invention; scope remains aligned with claim |
Key Cases Cited
- Novo Indus. L.P. v. Micro Molds Corp., 350 F.3d 1348 (Fed.Cir.2003) (district court may correct a patent claim when no reasonable debate exists about the proper correction)
- Ultimax Cement Mfg. Corp. v. CTS Cement Mfg. Corp., 587 F.3d 1339 (Fed.Cir.2009) (correction may be made when reading from the perspective of one skilled in the art)
- I.T.S. Rubber Co. v. Essex Rubber Co., 272 U.S. 429 (U.S. (1926)) (district courts may correct obvious errors in patent claims consistent with the specification)
- Markman v. Westview Instruments, Inc., 517 F.3d 1353 (Fed.Cir.1995) (claim construction is a matter of law)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed.Cir.2005) (claims are construed in view of the specification and its context)
- Honeywell Int'l, Inc. v. Intl. Trade Comm'n, 341 F.3d 1332 (Fed.Cir.2003) (definiteness is evaluated with reference to the specification and prior art)