H-W Technology, L.C. v. overstock.com, Inc.
758 F.3d 1329
Fed. Cir.2014Background
- H-W Technology sued Overstock alleging infringement of claims 9 and 17 of U.S. Patent No. 7,525,955, which concern performing contextual searches on an IP phone and completing transactions without a voice call.
- After issuance, claim 9 as printed omitted language the PTO later corrected via a certificate of correction; H-W filed suit before the certificate issued and asserted the uncorrected claim.
- During litigation, the district court construed "user of said phone"/"said user" to mean "a consumer operating the IP Phone," and granted summary judgment holding claims 9 and 17 indefinite.
- H-W obtained a PTO certificate of correction for claim 9 after suit was filed but did not amend its complaint to assert the corrected claim in this action.
- On appeal, the Federal Circuit affirmed the claim construction and the invalidity of claim 17, held the district court lacked authority to correct claim 9, concluded the certificate of correction could not be applied to causes of action that arose before its issuance, and ruled H-W could not assert the uncorrected claim in this lawsuit.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Construction of "user of said phone" / "said user" | "User" can be a person or a thing (general dictionary support) | The claims/specification/extrinsic evidence show a human consumer operates the IP phone | Affirmed: means "a consumer operating the IP Phone" |
| Whether district court could correct claim 9 sua sponte | District court should correct the missing limitation because prosecution history/specification show the omission | Error not evident on patent face; district court lacks authority absent an evident error | Affirmed: district court properly declined to correct claim 9 |
| Effect of PTO certificate of correction on this suit | Certificate should cure the omission and be considered by the court | Certificate only effective for causes of action arising after issuance; H-W sued before it issued | Affirmed: district court correctly did not consider certificate for this lawsuit |
| Validity/definiteness of claim 17 | Claim 17 is valid as an apparatus/computer-readable-medium claim | Claim 17 mixes apparatus and method limitations (unclear when infringement occurs) | Affirmed: claim 17 is indefinite and invalid |
Key Cases Cited
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.) (en banc) (claims construed using intrinsic evidence primarily)
- Grp. One, Ltd. v. Hallmark Cards, Inc., 407 F.3d 1297 (Fed. Cir.) (district court may correct patent only if error is evident on its face)
- Sw. Software, Inc. v. Harlequin Inc., 226 F.3d 1280 (Fed. Cir.) (certificate of correction applies only to causes of action arising after its issuance)
- IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377 (Fed. Cir.) (claims invalid where system claim impermissibly recites method steps leading to indefiniteness)
- In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303 (Fed. Cir.) (similar holding: claims indefinite when user-action limitations render scope unclear)
- SRI Int’l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107 (Fed. Cir.) (limitations present in one claim generally cannot be read into another)
- LaserDynamics, Inc. v. Quanta Computer, Inc., 694 F.3d 51 (Fed. Cir.) (summary judgment review standard)
- Exxon Research & Eng’g Co. v. United States, 265 F.3d 1371 (Fed. Cir.) (review standard for indefiniteness)
- Morton Salt Co. v. G. S. Suppiger Co., 314 U.S. 488 (U.S.) (unenforceability addressed in equity)