*1 entity constitute the same for on-sale bar addition,
purposes. In OEA cited no has text,
statutory persuasive precedent or
compelling statutory purpose that would
justify “supplier” the creation of a excep- reasons,
tion to the on-sale bar. For these partial summary judgment granted by
the district court is
AFFIRMED. COMPANY,
SUPERIOR FIREPLACE
Plaintiff-Appellant,
The MAJESTIC PRODUCTS COMPA- Castings,
NY and Vermont De- Appellants.
fendants-Cross 00-1233,
Nos. 00-1281 and 00-1282.
United Appeals, States Court of
Federal Circuit.
DECIDED: Nov. *3 Dillard, Christie, A.
David Parker & Hale, LLP, Pasadena, CA, argued him plaintiff-appellant. With on the brief Craig A. Gelfound. Gannon, Michael D. Baniak Nicholas Gannon, Evanston, IL, argued Pine & him appellants. for defendants-cross With H. Baniak. on the brief was Michael MAYER, Judge, Before Chief LINN DYK, Judges. Circuit LINN, Judge. Circuit Superior Fireplace (“Superior”) ap- Co. judgment a final from the United peals considered to be attractive and desirable for the Central Dis- Court States District However, products. commercial one dis- Fireplace Co. trict of California. Co., advantage fireplaces general is that F.Supp.2d 1001 Prods. Majestic they up space. can a lot of take This (C.D.Cal.2000) (judgment). The district particularly disadvantageous for smaller determined, summary judgment, court rooms, etc., apartments, hotel in which of correction for Superior’s certificate space premium. Although at a small (“'534 5,678,534 Patent No. United States made, gas fireplaces can be the smaller invalid and that the uncorrected patent”) is are, good models often do not look as by Majestic infringed is not '534 thus, of less commercial value. Additional- Castings, Inc. Products Co. and Vermont *4 ly, many gas fireplaces are built because “Majestic”). Superior Fire- (collectively, structures, reducing into walls or other Co., Prods. Majestic place Co. to fireplace size of the can lead excessive (CD.Cal.2000) (“Opin- F.Supp.2d surrounding the structure heating of ”). ion fireplace. fireplace is small Whether invalidity of the Superior seeks review large, requirement to have flue for also seeks review determination. disadvan- venting gases combustion is also (1) of a the district court’s: exclusion tageous space required of the for because patent attorney by Superior’s declaration the flue. part of the alleged a facsimile to be patent purports The '534 to solve at history patent; of the '534 problems providing least some of these (2) judgment of a motion to amend denial First, as a combination of three features. alleg- on the or for reconsideration based Figure patent, 2 from the '534 shown ques- an examiner’s edly new evidence of below, a reflective sheet 11 is included seeking Majestic appeals, cross tionnaire. artificial provided behind the flame 8 and finding of the court’s review district F, increasing apparent depth log thus case and its exceptional this was not an appear- a better visual fireplace Majestic attorney not to award decision Second, fireplace interior of the ance. judg- affirm the district court’s fees. We provide as to various is constructed so respect Superior’s challenges ment with pathways fireplace convection within respect and vacate and remand and, thus, re- heat into the room transfer Majestic’s challenges. into structure sur- duce heat transfer Third, fireplace. catalytic rounding the BACKGROUND eliminating provided, converter 9 is thus A. The '534 Patent allowing flue and a more the need for a flame instead of the gas fireplace visually attractive The '534 relates or invisible flames. generally burning are cleaner blue technology. fireplaces Gas *5 patent only- plenum Claim 1 of the '534 is the room air to be exhausted into a situated; appeal fireplace claim at issue in this as in reads room which the follows: opening an intake into the for firebox gas log fireplace
1. A in comprising receiving primary room air into the com- chamber; combination: bustion wall, wall, firebox, housing having top a a bottom a burner within the at least one wall; log adjacent side walls and a rear artificial within the firebox to said burner and means for supporting a firebox within the housing comprising firebox; log said at least one within the wall, walls, topa rear walls and side said forming primary delivering firebox a combustion for a means source of com- chamber; burner; gas bustible to the plenum comprising top room air an opening top exhaust wall of the firebox; plenum top room air between the wall of the firebox top and the wall of the hous- catalytic positioned converter in the ing, plenum a rear room air between the opening exhaust of the firebox and form- rear wall of the firebox rear and the wall chamber; ing secondary combustion housing communication top plenum; room air whereby products pri- exhaust from the an opening allowing inlet for air to room mary combustion chamber are received plenum; enter the rear room air by catalytic converter wherein sec- opening an outlet ondary communication with combustion place takes top plenum room air allowing products secondary exhaust room air products top and exhaust in the are combustion chamber received 11, 1997, plenum indicating room air and are mixed with March thus top by the rear room air room air received amended claim—with the expres- revised plenum and exhausted into the room sion “rear walls”—was allowable. fireplace is situated. which the The examiner’s amendment also remind- (em- col. 1. 41—col. 1. 32 patent, ’534 ed Superior changes “[s]hould added). phasis dispute appeal unacceptable appli- additions be and/or emphasized on the term “rear focuses cant, an may Supe- amendment be filed.” walls,” in the firebox limitation above. rior did submit an amendment under 37 changed singu- term was to the plural This (“section amendment”) C.F.R. 1.312 in Superior’s lar term “rear wall” certifi- later, 11, 1997, three months on June mak- correction, explained below in cate ing forty at least separate changes to the History the section entitled Procedural amendment, however, specification. This litiga- Litigation. explaining Before walls,” did not amend the claim term “rear tion, however, we document the events submitted no further amend- patent being led to the '534 issued Consequently, ment before issuance. with the walls.” term “rear patent '534 issued with the term “rear prosecuting In the course of walls” on October 1997. After the application, Superior submitted amend- issued, Superior identified another adding eventually ment a new claim that and, 28, 1998, August nine errors sub- initially issued as claim This recit- mitted a noting “Make-of-Record Letter” ed wall” in the limitation. “rear firebox these errors. The “Make-of-Record Let- February Superior repre- On ter” did not list amendments to the sentatives met with the examiner and *6 claim term “rear walls.” agreed changes to certain to the claims. Superior alleges that the prosecution changes agreed during meeting to history story. not contain the does whole in an are set forth “Examiner Interview According Superior, prior to to March the Summary summary That Record.” does 6 interview the examiner edited the claim any change not the “rear show to wall” in question Superior and faxed to the edit- limitation. ap- ed claim. This edited claim does not March the and a On examiner history. pear prosecution the These representative Superior up for followed edits, according Superior, by to were made meeting telephonic the earlier with a inter- the not to effect examiner substantive During parties view. that interview the merely facilitate change but to consider- discussed a reference that the examiner newly by the ation of discovered reference subsequent had to the discovered Febru- numerals, correspond- showing reference ary meeting. This interview was also reference, ing to features of the after each with an Inter- memorialized “Examiner claim in question. of the limitations of the Record,” Summary view mailed on March however, faxed, According Superior, to 11, 1997, in which the examiner stated that changed edited claim also “rear wall” to question claim in be modified would it Superior “rear walls.” asserts set forth in the examiner’s “as attached faxed, up copy marked edited shows, That amendment.” amendment Supe- claim to show the amendments that changes, that “rear wall” was among other March inter- during rior authorized amended to “rear walls.” That is the first mark-ups are silent with Superior’s view. point chronologically in the change from “rear wall” to regard to history change. such a A “No- shows is, That Allowability” mark-ups also mailed on “rear walls.” do tice of original language, then construed question walls” nor in “rear delete the “s” walls,” require at Based on this “rear any way. with the term change found, that the addi- court silence, insinuates The district Superior least two walls. “rear wall” was never the “s” to that both disputed appeal, tion of on and it is not authorized. devices do agreed that the accused parties than one rear wall not contain more by Superior, it is discussed Although not infringement no literal that there can be amendment clear the examiner’s require two the claim is construed claim that changes to the made additional F.Supp.2d Opinion, walls. more rear Superior’s mark-up. reflected are not further found The district court at 1009. mark-up was not Thus, alleged Superior’s claim, offered “one shred Superior had not as issued. final version of evidence,” authority, cited to no “ha[d] History Litigation B. Procedural facts, made virtual- ha[d] no presented recovery under ly argument” support no 12,1998, filed a com- March On (“DOE”). infringement of Id. against Majestic equivalents the doctrine of plaint this, At time after court patent. Accordingly, the '534 some the district at 1011. limi- Majestic pointed out that the second infringement that there was no determined claim 1 recited “rear walls.” Su- tation of nonin- Neither of the under DOE. apply for a certif- perior proceeded then challenged fringement findings directly are from the Patent icate of correction is the construction of appeal, nor (“PTO”), seeking to Trademark Office Thus, if we affirm the uncorrected claim. “rear walls” to change the claim term from that the certificate district court’s decision “rear wall.” invalid, noninfringement must fol- then low. request was filed on
Superior’s first February under 35 U.S.C. proceedings, In the course of its only to the correction of applies which refused to admit as evidence district court de- by made the PTO. PTO mistakes by proffered Superior. two documents stating part that “the request, nied this The first document was a declaration printed accordance with Marantidis, attorney, al- Superior’s patent *7 Trademark record in the Patent and Office that the leging that the examiner admitted by to issue the application passed of the change from “rear wall” to “rear walls” request Superior examiner.” then filed by error made was a applies only § which under 35 U.S.C. refused the examiner. The district court by mistakes made to the correction of ground Marantidis declaration on granted request, this applicant. The PTO 4. hearsay. it was Id. at 1009 n. Au- issuing a certificate of correction on Superior’s second document was The 17,1999. requests gust We note that both faxed, marked-up version of the edited granted certificate was were filed and the proffered as claim. This document was an. the '534 years less than two after Nelson, to a declaration of an attor- exhibit Accordingly, Superior issued. was within firm The ney at the same as Marantidis. two-year broadening reis- window admit the facsimi- district court refused to § had it elected sues under 35 U.S.C. le for lack of foundation. Id. pursue that route. attor- Majestic submitted a motion for judgment parties summary The filed § The ney fees under 35 U.S.C. dis- court determined motions the district court, argument and trict without oral that the correction issued certificate of concluded, issuing opinion, was invalid. The district court without PTO consideration, diligence, ... that the tained with due question- [the careful “[a]fter an ‘exceptional instant case is not case’ as does not add new or naire] different statute,” by the and denied contemplated what already information from known Fireplace v. Superior the motion. Co. Correction,” from the Certificate of Co., Majestic Prods. No. CV-98-1816 questionnaire did “not contradict (C.D.Cal. 2000) (civil minutes) Feb. any of Superior the Court’s conclusions.” ”). (“Denial Attorney Fees Co., Fireplace Majestic Co. v. Prods. No. decision, (C.D.Cal. 2000) (civil summary judgment After the CV-98-1816 Feb. minutes) (“Denial Superior question- ”). became aware of a PTO Reconsideration naire entitled “Notice Re: Certificates of Superior appeals invalidity holding, Correction,” prepared by the in con- PTO refusals, evidentiary and the denial of grant nection with the of the certificate of its judgment motion amend or for re- § correction under 85 U.S.C. 255 and 37 Majestic appeals consideration. cross questionnaire C.F.R. 1.323. The is dated finding exceptional this was not an prose- June 1999 and is included case and the decision not to award attor- However, history. cution avers ney appellate jur- fees. We have exclusive ques- that it did not become aware of the appealed. isdiction over the issues summary judg- tionnaire until after the 1295(a)(1)(1994). U.S.C. decision, it presumably ment because ob- prosecution history copy tained DISCUSSION questionnaire pre- had before been A. Exclusion of Evidence pared. form, evidentiary rulings The in this questionnaire is a and the and, unique jurisdiction case are to our substantive content consists of six boxes checked, indicating ques- that are three accordingly, we review them under the law requiring response tions from an examin- pertinent regional of the circuit. Pro- er, indicating yes/no and three more Plastics, Mold & Tool Co. v. Great Lakes provided by answers the examiner. question
first and answer affirm that the (Fed.Cir.1996) (“When considering is change requested would not “constitute jurisdic unique sues which are not our require new matter or reexamination.” regional tion defer to the law of the question The second and answer affirm circuit.”). Circuit, pertinent The Ninth change requested that the would not “ma- case, evidentiary circuit reviews terially scope meaning affect the of the rulings type appealed from for an question claims allowed.” The third Int’l, abuse of discretion. Wendt Host answer affirm that the should “read *8 (9th Cir.1997). Inc., 806, 125 F.3d 810 in the certificate of correction.” as shown challenging the Superior is exclu questionnaire, Superior on the Based explained sion of two documents. As earli judgment a motion to amend or for filed er, by Superi- the first is declaration Superior alleged that the reconsideration. patent attorney, or’s Marantidis. For questionnaire the district showed reasons, following two we hold that erred, at questionnaire court or that the district court did not abuse its discretion genuine issue of material least raised inadmissi finding that the declaration was fact, regarding change whether hearsay. ble typographical “rear walls” was a error or First, squarely falls under the statement court de- of minor character. district motion, hearsay. The declaration stating nied the that “even if ob- definition of 1366 any contain indica- Yeung me facsimile itself does not “Examiner advised
alleges that of Correc- prepared that the Certificate it or who made the [Marantidis] tion of who sought the error granted Second, because tion was written notes on it. Nelson’s hand error corrected was to be for his lays declaration no foundation allegation contains “an part.” on his This regarding the facsimile. He statements 801(a), assertion,” ... Fed.R.Evid. oral of the personal knowledge forth no sets examiner, than one made “other or the hand written notes facsimile testifying hearing, ... at the trial or while Further, according on it. were made prove the truth of offered evidence attorney of the lead the declaration 801(c). asserted,” the matter Fed.R.Evid. patent, the '534 Nel- charge prosecuting Second, reject argument Superior’s prosecu- son was not even involved excep- that the statement falls under tion. against statements interest. At
tion for
minimum,
exception requires
that the
B.
Certificate
Correction
“contrary to the declarant’s
statement be
of Review
Standard
pecuniary
proprietary
or
[the examiner’s]
interest,
subject
...
the de-
tend[ ]
grant
We review a district court’s
liability,
clarant to civil or criminal
or ...
novo,
summary judgment
reapplying
de
by
render invalid a
the declarant
applicable at
the district
the standard
804(b)(3).
Fed.R.Evid.
against another.”
Tech., Inc.,
Seagate
court. Rodime PLC v.
presented
persuasive
has
no
ar-
1294,
1429,
1301,
USPQ2d
174 F.3d
gument
any
of these conditions were
(Fed.Cir.1999) (citing Conroy v. Ree
met.
Ltd.,
Int'l,
1570, 1575,
bok
(Fed.Cir.1994)).
USPQ2d
Sum
second document
only
mary judgment
appropriate
when
marked-up version of the edited claim al
genuine
“there is no
as to
mate
issue
legedly
Superior's representative
faxed to
...
up by
moving party
rial fact and
is enti
the examiner and then marked
Superior's representative.
judgment
tled to a
as a matter of law.”
This document
proffered
56(c).
all
Fed.R.Civ.P.
We draw
reason
as an exhibit to a declara
Nelson,
attorney
non-movant.
able inferences
favor of the
tion of
at the same
firm as Marantidis. The declaration mere
Liberty Lobby,
Anderson v.
U.S.
ly
106 S.Ct.
typed prepared text was in advance of the questions ent threshold of law that are telephonic March conference be Adang, novo. reviewed de Barton Superior's tween the Patent Examiner and attorney." The district court stated that Galleries, (Fed.Cir.1998); Madison Ltd. v. "the document itself lacks foundation for (Fed.Cir.1989). U.S., authenticity" "lays its and Nelson no foun dation for the statements he makes in *9 2. Burden of Persuasion Opinion,
connection with the document.". F.Supp.2d at 1009 n. 4. question first we consider is Majestic’s persuasion burden of on its First, find no of We abuse discretion. challenge to the certificate of correction self-authenticating. the facsimile is not It prosecution history, Superi- was not in the and the before the district court. Because 1350, 1359-60, part USPQ 763, of correction became of or’s certifícate 770-71 (Fed.Cir.1984). changed and claim lan- explained above, the '534 As Majestic’s guage, challenge to the certifi- present challenge is a challenge to the challenge cate amounted to a to the cor- validity of the certificate of correction. (Supp. rected claim itself. 35 U.S.C. But since the effect of that challenge in the 1999) (“Such patent, together V with the present case challenge validity is to certificate, shall have the same effect and claim, a convincing the clear and standard ... operation law the same had applicable precedent under our to other originally been issued such corrected validity challenges apply should also to the form.”). Majestic’s was, in challenge es- present challenge validity to the of the respects, indistinguishable sential from certificate correction. challenge other to validity of cor- The district court did not discuss or claim 1. is rected This evident from the apply the convincing clear and standard. holding that district court’s the corrected might This be explained by the court’s purposes claim is null and void for the determination that the Administrative Pro- cases, subject this case and all future (“APA”) cedure Act applied. The APA present appeal. This result is indistin- provides variety appel- standards of guishable, practical purposes, agency late review of action. 5 U.S.C. fundamental effect of successful direct (1994). § 706 In addition to a de novo validity challenge to claim. It is true of legal questions, review the APA sets invalidation certificate of forth a number of different standards in- correction resulted uncorrected claim alia, cluding, “arbitrary, inter capricious, restored, being invalidity whereas in other ”, an abuse of discretion ... “unsup- replacement contexts there is no such ported by substantial evidence....” Id. On However, claim. this difference does not Majestic appeal, urges, only in albeit detract from fact invalidity all footnote, applies that the APA and that the contexts, successful, challenge where the is convincing inapposite clear and standard is at least one claim of an otherwise valid involving to cases certificates of correction. patent is rendered invalid. above, explained As we find the clear claims, Challenges validity to the convincing apposite standard to certifi- issued, regularly whether issued after a cates correcting language of a claim. pursuant reexamination to 35 U.S.C. Moreover, that, we conclude consistent 301-307, §§ pur or issued after a reissue validity challenges with our case law on 251-252, §§ suant to 35 U.S.C. must meet generally, convincing the clear and stan- the clear convincing per standard of apply challenges dard should to the Lantech, Inc., suasion. v. Co. Kaufman validity of correcting certificates the lan- 970, 973-74, 1 USPQ2d (Fed.Cir.1986). guage of a claim. Whether the APA stan- requirement This appellate supplant dards of review presumption validity.1 based on the 1999) (“A evidentiary clear convincing standard (Supp. U.S.C. V valid.”); presumed applicable validity challenges sepa- shall be Am. Hoist is a & Sons, Inc., Derrick question. Co. Sowa & 725 F.2d rate It also a complex ques- (Fed.Cir.1984). Additionally, previously this court has noted We observe that the imposition that the of this standard is related presumed job PTO is to have done its in this presumption job to the that the PTO does its Superior’s regard case with certificate of properly. Am. Hoist & Derrick Co. v. Sowa & correction. USPQ Sons, Inc., *10 1368 original- had been arising as the same fully not briefed. have parties that the
tion
form.
in such corrected
ly
howev
issued
question,
that
not address
We need
opin
in this
because,
later
er,
explained
as
1999).
(Supp.
§ 255
V
35 U.S.C.
standards, we would
ion,
any of the
under
on the initial
court focused
The district
affirm the
result and would
reach the same
be “of
requirement
the mistake
impor
court’s decision. Given
district
nature,
mi-
or of
typographical
clerical
prominence
APA issue and its
tance of this
nor character.”
35 U.S.C.
decision
Supreme
of the
Court’s
light
sepa-
these two branches
court addressed
150,
Zurko,
119
527 U.S.
Dickinson
rately.
USPQ2d
144 L.Ed.2d
S.Ct.
“mistake
construing
phrase
In
(1999),
that it will resur
expect
in 35
nature”
typographical
clerical or
will
a case in which the decision
face “in
court followed
the district
U.S.C.
[issue],
...
[in which]
turn on
required
precedent
own
the PTO’s
Brana,
fully
the issue.” In re
parties
brief
that,
very unique and unusual
“[a]bsent
1560, 1569, USPQ2d
circumstances,
typographical
clerical or
(Fed.Cir.1995);
Napier,
In re
be manifest from
contents
error should
(Fed.Cir.1995)
614, USPQ2d
patent sought
to be
of the file of the
applicability
(declining to address
at
Opinion,
F.Supp.2d
corrected.”
the ultimate decision did
the APA because
Arnott,
(citing In re
issue).
In view of the
turn on that
not
(Comm’r
Pat
1369
(3d
225,
USPQ
Metais,
quired.” Camargo
166
231
Cir.
Correa
S.A. v.
1970)).
proceeded
States,
(Fed.Cir.
The court then
to con
771,
United
200 F.3d
773
original
1999) (citation omitted).
claim and
strue both
the cor
“We also consid
and,
resulting
rected claim
based on the
only
er not
meaning
the bare
of the
determinations,
legal
concluded that
but
placement
word[s]
also
pur
[their]
alleged
correction of the
mistake in this pose in
statutory
Fanning,
scheme.”
Opinion,
case did broaden the claims.
92
West,
Phillips
717,
& Molnar v.
160 F.3d
F.Supp.2d at 1008. Since the correction
(Fed.Cir.1998)
(internal
721
quotations
claim,
had
in a
resulted
broadened
omitted);
Cain,
656,
Tyler v.
533 U.S.
court concluded that the corrected mistake
2478,
(2001)
2482,
S.Ct.
Having determined that neither the first 1144, (Fed.Cir.1998) (“statu USPQ2d nor the second branch of require- the first tory interpretation is a ‘holistic endeavor’ met, ment was the district court declared requires consideration of a statutory correction, that the certificate of and hence entirety”). scheme its In appropriate Opinion, corrected claim was invalid. cases, ambiguity may be resolved con slip op. court, at 1010. The district ac- sidering the public notice function in inter cordingly, any did not need to address preting statutes. Vectra Fit § requirements additional such as ness, F.3d at at 1148 alleged whether the mistake “not the (“Moreover, an additional consideration fault of the Patent and Trademark Office” weighs against also interpretation showing and whether “a ha[d] been made scheme[, statutory § involving 251 and good such mistake occurred in faith.” 253,] § for argues. pub which Vectra § 35 U.S.C. 255. lic rely upon is entitled to public rec determining ord of a the scope of Typographical Review of “Clerical or claims.”). patent’s We note that nei Nature” parties ther has directed us to a. legislative history that we should consider.
Statutory interpretation b. matter of law and we thus review the interpretation district court’s of 35 U.S.C. phrase “clerical or typographical § 255 without deference. Barton explicitly nature” is not defined in Adang, 1144, USPQ2d so we plain meaning first look to the (Fed.Cir.1998). spe Our task understanding phrase. common A mistake, cifically concerns whether a dictionary standard defines “clerical” as claim, correction of which would broaden a relating work, to an office clerk or office and, so, can be corrected under “typographical” and defines relating under what conditions. This is issue of setting type, printing type, first impression. arrangement of matter printed from type. Dictionary Webster’s New World “In construing a statute ... (David the American begin by inspecting Language B. language its 1982). ed., Thus, plain meaning. If the Guralnik unambig words are Warner Books uous, no inquiry usually gen- further re- clerical or typographical mistakes are *12 to a classification This leads rected. simple mis- include to
erally understood three into mistakes typographical that are misspellings these as obvious takes such immediate- viewing are Upon such mistakes categories. Some immediately apparent. that a to what no doubt no doubt as there is and leave ly apparent misspelling, typographical mistake, or errors Examples a clerical of such indeed is. the mistake mistake, has occurred. leave no doubt misspellings that include intended; “frane” which was the word §a whether dispute parties The “frame,” In con- example. for instead may ever or mistake typographical clerical ty- those trast, category includes a second correction, that, upon a mistake encompass to the apparent mistakes not pographical un- common a claim. The would broaden re- all; a mistake example, reader at typographical or derstanding of a clerical that, spelled that is word sulting in certainly includes mistakes another mistake in the logically or reads correction, correctly broaden that would either upon Majestic suggests, category how- thirdA narrow a claim. of the sentence. context ever, may only be broadened ap- a claim it is those where includes of mistakes provisions made, of U.S.C. the reissue under but has been parent that a mistake acknowledge Congress § 251. We is. Exam- what the mistake it unclear in in broadening detail with reissues dealt that create mistakes are those ples of such §of 255 interpretation § 251 and that our terms, unclear which leave inconsistent but scheme, statutory the entire must consider It is in error. conflicting terms of the at 2482 Tyler, § S.Ct. including public to the reader not evident (“we their context the words in interpret mis- correct appropriately how to record in the over- place to their and with a view categories. third second and takes of the scheme”) (internal quotations statutory all which, any, of resolve these help To Molnar, omitted); Fanning, & Phillips may cor- of mistakes be categories three (“We not consider 160 F.3d at also not again § “consider we rected under but meaning word[s] only the bare meaning word[s] [of only the bare in the purpose placement [their] also pur- placement and § [their] 255] but also (internal scheme.”) quotations statutory Fanning, statutory scheme.” in the pose omitted). § § unlike Although Molnar, 160 at 721. The Phillips & broadening not deal with expressly does encompasses here statutory scheme § corrections, 255 do the words 251-256, govern §§ which U.S.C. We are broadening corrections. preclude patents. correction of We amendment and a limitation impose great so hesitant particu- §§ and 252 are of believe from the stat- express indication without scheme, statutory in the lar relevance § interpret Accordingly, ute. post-issu- they explicitly deal since of clerical or broadening corrections allow may broaden ance amendments typographical mistakes. provisions address these scope. We now §a 255 dispute whether parties also in more detail. mistake, cor- clerical or correction addresses the Section 251 claim, rection of which would broaden correc- understood that it is an “error” and public record. must be evident § the broad- under 251 can result tions from observation question This arises (1994 § 35 U.S.C. & ening of claim. typographical mis- that not all clerical 1999) of an (allowing Supp. V correction and even immediately apparent, takes are elaim[ed] ... patentee “the error which may not apparent, it where the mistake is claim”). right had a cor- less than he be be clear the mistake should how right to broaden a claim is not patentee’s rely scope should be able to on the of non- absolute, First, claims”). requires however. disclaimed claim supported by that the broadened be Having already determined that broad- original specification. (allowing Id. ening encompassed corrections are only reissue “for the invention disclosed circumstances, at least certain it *13 Second, patent”). § the original pre- 251 place § here that we weight the of 251 a patentee applying cludes from for a § and 252. Sections 251 and 252 evince broadening years reissue more than two the clear intent Congress protect the patent § after a has issued. 35 U.S.C. 251 public against the unanticipated broaden- (“No (1994) patent grant- reissued shall be ing of a grant claim after the patent of the enlarging scope ed the of the claims of the by the It PTO. would be inconsistent with original patent unless applied for within objective § interpret 255 to allow a years grant two from the of the original patentee to broaden a claim due to the Third, patent.”). and most important for correction of a typographical clerical or analysis, Congress our protected further mistake that public the could not discern public the by providing intervening rights from the public file and for which the public respect for the with to claims that public therefore had no effective notice. § were broadened under 251. 35 U.S.C. broadening Such a correction would leave 1999) § (Supp. (providing 252 V interven- notice, public the without effective without ing rights); Box Seattle Co. v. Indus. Crat- two-year bar, the constraint of a time and 818, ing Packing, 829-30, & 731 F.2d hope without the of intervening rights. (Fed.Cir.1984) (dis- 568, USPQ 221 576-77 This court previously has noted the 252). pro cussing § intervening rights the priety of independently considering the statutory This Congress’ scheme reveals public interpreting notice function in the concern for public protect- notice and for Fitness, patent statutes. Vectra ing the public unanticipated 1384, at USPQ2d (“Moreover, 49 at 1148 broadening of a claim. Section 251 itself an additional weighs consideration also provides only minimal notice for broaden- against interpretation statutory of the reissues, ing requiring simply that scheme[, 253,] § involving § 251 original specification support the broad- argues. which public Vectra is enti ened claim. requirement Such a minimal rely upon tled to public record of a implicit § is also requirement 255’s patent in determining scope of the reexamination required. not be But Con- claims.”). patent’s Supreme Both the gress displayed greater for pub- concern Court and this court have highlighted the §§ lic notice in 251 and 252 insulating importance patent of the notice function of public from lack of effective notice claims. Warner-Jenkinson Co. v. Hilton of, through first, provision two-year Co., 17, 29, 117 Davis Chem. 520 U.S. S.Ct. and, second, limit on broadening reissues 1040, 137 41 USPQ2d L.Ed.2d intervening rights. We are mindful that (1997) (discussing 1871 impact § interpretation our 255 must not frus- equivalents doctrine of on Congress’ objectives § trate “the definitional 251 and Fitness, § public-notice statutory See Vectra 162 at functions of the USPQ2d claiming requirement”); Corp. at 1148 Festo (interpreting Co., § § in light Kogyo Shoketsu Kinzoku so as to ensure that Kabushiki Ltd., § the notice function 251 was not frus-
trated, (Fed.Cir.2000) (en banc) stating two-year that “after the (stating that reissues, broadening public window for “the notice function of claims has — However, such § 255. intend to restrict granted, cert. paramount”), become obligation override our L.Ed.2d 692 cannot U.S.—, an inference 121 S.Ct. 00-1543). weight (No. Placing only due with (2001) comport § interpret function of statutory notice public the overall § but interpret that we should suggests claims par- embodied encompassing and scheme— aof broadening correction § to allow a protecting § §in ticularly 252— clearly it is only where error unanticipated broad- public against drawings, specification, evident from cre- giving proper claim and ening of a history the error how For public notice function. to the dence Such be corrected. appropriately should reasons, the fact despite these 255 insures interpretation prosecu- explicitly reference does not as to the with notice provided public *14 inter- necessary it to history, deem tion Biologische Biotec the claims. scope of Cf. to contain this statutory section this pret v. & Co. KG GmbH Naturverpackungen requirement. implicit, extra-textual Inc., 58 F.3d 249 Biocorp, (Fed.Cir.2001) (apply 1737, 1741 USPQ2d are parties the The cases cited to the identification standard ing a similar not on one of them is controlling and not history, the prosecution in the of mistakes Amott, expressed its the PTO In point. of which is both appropriate correction very unique by stating “[a]bsent that view stating that scope, clear and affects circumstances, or a clerical and unusual must record prosecution the error in “[a]n manifest should be typographical error in documents are errors be viewed as patent the file of the from contents appar is, it been would have general; that USPQ2d at sought to be corrected.” that an error reader ent to the interested PTO, other than agree with 1053. We to it be unfair made, that would was such provide to for find no cause to note that we added)). (emphasis enforce error” unusual cir “unique for exception not § 255 should argues that Superior broadened. a claim is cumstances” when correc- appropriate require be held to Works, the Third Circuit Eagle In Iron mistake typographical tion of a clerical not authorize § that 255 “does stated record the intrinsic from to be evident 429 F.2d at the claims.” broadening of will broaden a when correction even Circuit, thus, marked out 1383. The Third Congress ex- notes that Superior claim. we have on line than brighter an even evident be that mistake plicitly required possible public for providing to notice §in of the PTO from records such precluding broadening corrections — mistakes attributable which deals However, deci altogether. broadening applicant, and to the opposed PTO on issues regional circuits sions of the is not explicit requirement that such an not jurisdiction are our exclusive within concludes § 255. present Corp. v. court. South binding on this not be inter- § 255 should therefrom that States, United the correction preted require banc). (en (Fed.Cir.1982) USPQ specifica- mistake to evident be Brandt, Inc. also discuss parties history. tion, prosecution drawings, and (N.D.Ill.1983). Crane, F.Supp. 1339 course, is, the statu- part Section § However, interpret did not Brandt interpret- tory context we must consider Brandt point. and is therefore on the Superior’s § observation ing under not invalid claim was decided these two sec- textual difference between § court but district 35 U.S.C. sup- argued can tions is correct and be validity of address the upon called not not Congress did port an inference cation, § correcting 255 certificate that claim drawings, history § interpret or to 255. Id. at 1341-42. how the error should appropriately be cor- rected. questions The dissent the need to con- manner, § strue 255 in citing this our hold- c.
ing Software, Southivest Inc. v. Harle- quin, USPQ2d We now review the district (Fed.Cir.2000). Southwest, In we held court’s summary judgment decision that that a certificate of correction issued under the alleged “rear walls” mistake was not of only 254 is valid for arising claims after clerical or nature. Apply the certificate issued. Id. at 56 ing the clear convincing evidence stan However, at 1172. holding in dard to validity challenge, we must Southivest does not relieve duty us our affirm the find district holding court’s if we of interpreting 255 in statutory its con- genuine absence of a issue that text. Reissued claims that are not appropriate correction of the alleged “rear substantially identical to original pat- walls” mistake was not clearly evident ent only claims also are valid for the trial from the intrinsic record. The intrinsic arising actions causes after the issue record, is, public record, consists the reissued claims. 35 U.S.C. of *15 original the and claims, corrected the this, Despite Congress 252. provided a description written drawings, and and the mechanism for protecting public the from prosecution history. We in address these unanticipated claim broadening via the turn. two-year period intervening and rights of The claim language question in recites §§ 35 U.S.C. 251 and 252. This indicates “a within housing firebox the comprising a that simply making corrected appli- claims wall, top rear walls and side walls.” '534 only after-arising cable causes of action (uncorrected patent, col. 11.44-45 claim is in provide itself insufficient to requi- the 1). grammatical There is no error that public site notice. suggests a mistake. The next in limitation Furthermore, the Southwest court itself claim, however, refers to “the rear wall was concerned with placing the risk inher- patent, firebox.” '534 col. 11.3^1 ent in unanticipated broadening where it (uncorrected 1). Because limi- belongs: patentee on the that has availed tation rear singular, refers to wall in the patent system, himself of the not on the “the,” with the definite article it does not public that is rely upon entitled to agree with the earlier reference to rear public patent. record of the does not “[I]t in plural. walls One these limita- asking seem to us to be expect too much to mistake, tions contains a but the claim patentee a to check a when it is does not indicate which is mistaken. To in issued order to determine whether it help question, resolve this we consider contains errors that require the issu- Figure 2 conjunction with the written ance of certificate of correction.” South- description. Software, west 226 F.3d at USPQ2d at 1173. description written and drawings are consistent with being either there two
We Superior’s have considered ar- other only rear walls or one rear wall. The guments, do persuasive. but not find them interpretation, former that there are two Accordingly, interpret require 255 to walls, suggested that a rear is most broadening strongly by correction of a clerical only commonality error be allowed between sheet 11 and clearly where it is specifi- evident from the commonality rear wall which suggests firebox, as the rear of the it is at placed as to be considered be 11 should that sheet rear wall. 11 and rear wall firebox a second Sheet rear wall. second size, placement, in terms of 15 are common hand, interpretation the other On size, 11 has sheet Regarding function. and suggest- is only one rear wall there is 2, that is the Figure height, shown description the written fact that ed is a width that 15 and as wall same rear Figure numeral 11 defines reference with a back “substantially commensurate reference and defines a reflective sheet Figure patent, 7.” '534 casing the heater the firebox. a rear wall of numeral 15 as Regarding place- 11.44-45. col. and written names in the separate The use the rear of ment, placed 11 is toward sheet only use of one and the description rearwardly from firebox, being “spaced claims, wall, names, sug- rear those patent, Figure housing 2.” '534 the burner rear wall 15. 11 is not a that the sheet gest function, 3,11. Regarding col. 50-51. and history, we to the Looking together operate wall 15 and rear sheet 11 First, the exam- key facts. take note of two one be- pathways: three air provide walls” “rear wall” to “rear changed iner 11, a sheet housing burner tween a tele- amendment after an examiner’s rear wall sheet second between was scheduled and outer interview that phonic rear wall 15 third and a between 3,11. discussing prior col. 50-62 art. patent, '534 casing purpose interpretation This 11. 11-24. col. is that clear inference examiner that there is by the further reinforced fact change agreed that such patentee of the '534 in the claims no limitation art. prior to overcome necessary clearly corresponds to patent which by the fact That inference buttressed 11; corresponding only possible sheet change, object to the Superior did limitation the “rear walls” limitation is *16 amendment though the examiner’s even pat- A claim 1. reader uncorrected right to do Superior of its itself reminded conclude, the struc- might given ent well Second, Superior any suggestion that so. above, that sheet similarity described tural as al- review the simply patent did not together correspond wall 15 and rear issued, Superi- explaining thus lowed and limitation. the “rear walls” object examiner’s to the or’s failure to specification that The dissent notes the amendment, sec- negated by Superior’s is firebox rear to “the contains a reference and Make-of-Record amendment tion 312 “strongly as characterizes this wall 15” and Letter, impor- the as as critical well only single a view that its supporting]” Southwest reviewing claims. tance of Cf. that the We believe wall disclosed. rear is F.3d Harlequin Software, Inc. v. the this use of too much into dissent reads (Fed. phrase. The “the” this definite article Cir.2000) “it not seem (stating that does num- that the one wall phrase *17 inventor he particular when used a term is plain with the meaning phrase. Ca of little probative no weight or in deter margo Metais, Correa S.A. v. United mining scope the of (except a claim as States, (Fed.Cir.1999). in prosecution documented the history).” commonly “Minor” is defined as in “lesser Instruments, Markman v. Westview seriousness_” importance ... [or] The 967, 985, 34 USPQ2d American Heritage College Dictionary 869 (Fed.Cir.1995). Thus, (3d Superior’s sugges ed.1993). scope of a claim tion that we compare claim scope by con essence, very is its and that with which the sidering was patentee by par what any competitors and “intended” the are most ties, that, by concerned. A rather than corrected, construing mistake the claims would broaden scope they of a for what actually recite, claim must completely thus be viewed highly important as and without merit. arbitrary, “Because capricious, [the whether this or the substantial evidence stan abuse of or discretion otherwise not Gartside, accor- apply. dard would In re dance generally law] with standard is consid- (Fed.Cir. ered to be the most deferential of the APA 2000). review,” standards of we need not determine not add does questionnaire] construction, gence, [the claim court’s
The district from different information the cor- new or that agree, found which we the uncor- the Certifi- already known broader than from claim was what was rected interpreted have Reconsid- We claim. Denial rected of Correction.” cate minor character” ... of phrase “mistake the reasons eration, at 1. For slip op. mistakes, those exclude to 35 U.S.C. dis- below, no abuse of we find articulated a would broaden of which correction cretion. mistake, we was such claim. Since merely reflects questionnaire not it was of law that matter conclude come must have that the PTO conclusions of correction a certificate correctable of cor- the certificate grant order § 255. under 35 U.S.C. that presumed court district rection. The conclusions these had come to the PTO for Certificate 6. Conclusion conclu- find that such proceeded of Correction were error. sions in a claim a mistake that We hold to the district attention draws Superior scope broadens of which the correction must have that “the PTO clearly statement not court’s claim of that coverage a ‘minor was of drawings, the error that specification, concluded from evident a “mistake at history F.Supp.2d is not Opinion, character.’” prosecution nature” sub argues clerical or then 1009-10. § 255. under 35 U.S.C. ject correction to be shows statement questionnaire the correction hold that mistake alsoWe the frivo- argument borders false. This a “mis is not a claim broadens of which court’s the district The context of lous. subject to minor .... character” take of absolutely no doubt leaves statement Apply § 255. 35 U.S.C. correction under made proposition, it is a statement conclude interpretations, we ing these of whether transitioning to a discussion by Superior, effected the correction Id. of minor character. error is alleged is not effect of which broadens effect, is, stating that The district court specification, from clearly evident typograph- error is not alleged because history, drawings, and clerical, the PTO and because ical § 255. Ac 35 U.S.C. correctable under certificate, we must assume granted certificate hold that cordingly, to be error alleged found that the PTO is invalid. correction court The district of minor character. explain- immediately begins then opinion of Motion Denial C. minor is not of alleged error ing why the evidentiary rul with the As character. of discretion for an abuse we review ings, *18 mo Superior’s of denial the district court’s Attorney Fees Exceptional D. Case or reconsider judgment for tion to amend of whether determination “The v. Great & Tool Co. ation. Pro-Mold and, thus, for eligible is exceptional case 1568, 1574, Plastics, Inc., 37 75 F.3d Lakes 285 is attorney fees under award of an (“When (Fed.Cir.1996) 1626, 1631 USPQ2d clear for reviewed factual determination unique which are considering issues of determination subsequent error. The to the law of we defer jurisdiction our appropriate attorney fees are whether Stein, F.3d circuit.”); re 197 In regional Te discretion.” for an abuse reviewed Cir.2000). earlier, (9th As stated 424 Inc., Am., 257 Tokyo Electron Corp. gal motion, stat denied the the district court 1385, 1400 1331, 1351, USPQ2d 59 F.3d with due dili- obtained ing “even
1377 (Fed.Cir.2001) (internal quotations, ellipsis, ous open questions as to whether Su omitted). and citation perior ever good had a faith belief in its Majestic claim that infringed pat the '534 earlier, court, As we stated the district ent, given that the “rear walls” limitation argument without oral issuing and without present was in the claims when the com concluded, opinion, an “[a]fter careful con plaint given was filed and that no action sideration, ... that the instant case is not had been up taken to that time either to ‘exceptional an contemplated by case’ as seek correction as a public matter of rec Fees, the statute.” Denial Attorney slip ord or to advise the court of presence op. at 1. Whether or not a district court alleged mistake. ultimately finds a exceptional case on mo Hoffmann-La Roche Inc. v. Invamed 213 F.3d fees, attorney tion for it is important 1365-66, (Fed.Cir. USPQ2d 1846, 54 provide the court some indication of the 2000) (in the context of a 285 finding reasoning underlying its decision pro that a case was not exceptional, noting that vide a basis for meaningful appellate re “Torpharm Here, presented has not view. the district facts court’s failure to showing that when provide any Syntex Roche and findings reasoning prevents or filed their reviewing complaint, they us from had According its decision. reason to believe ly, patents we are that their constrained to vacate and did not pro re cover the mand on the issue exceptional case and cesses used to Torpharm’s make generic attorney Davidson, fees. See Gechter v. drug”). concepts Other good related to 1454, 1457, 116 F.3d USPQ2d 1030, faith, unjustified such as litiga bad faith (Fed.Cir.1997) (stating, in the context lawsuits, tion and frivolous are also of an appeal from a PTO interference deci grounds for finding exceptional. case Id. sion, that opinion “[w]hen the explaining 1365, USPQ2d at at (stating, in the the decision adequate lacks fact findings, context of an infringer accused seeking an meaningful possible, review is not frustrat exceptional finding and an award of attor ing very purpose appellate review”); fees, ney “[a]mong types of con Transmatic, Indus., Inc., Inc. v. Gulton 53 duct which can form a finding basis for 1270, 1276, USPQ2d exceptional case are infringement, willful (Fed.Cir.1995) (vacating because “[w]ithout inequitable P.T.O., conduct before the mis more detailed findings and reasoning, we conduct during litigation, vexatious or un cannot evaluate court’s damage justified litigation, suit”); and frivolous award”); Co., Atl. Thermoplastics Inc. v. Desiccants, Medzam, Inc. v. Multiform Faytex Corp., 23 Ltd., 1473, 1481-82, USPQ2d (Fed.Cir.1992) (vacat (Fed.Cir.1998) (stating, in a ing because “[t]he district court did not case in which the infringer sought accused provide any findings of fact or analysis for exceptional finding fees, attorney conclusion”). its [on-sale bar] that “[fjindings exceptional case have been variety factors; based on a
We note that this is not a case in example, willful record, or intentional infringe which the at least the record on ment, inequitable ..., appeal, compels a conduct attorney denial of vexatious or fees. unjustified It litigation, must be remembered that at or other the time misfeasant filed, behavior”); the complaint Prods., Cambridge the claims includ Ltd. v. *19 Nutrients, Inc., ed the “rear 1048, walls” limitation Penn and no re 962 F.2d 1050- quest 51, (Fed.Cir. had 1577, been filed with 22 USPQ2d the PTO to 1579-80 1992) (“In correct the § claim under either 254 or the case of awards to prevailing Majestic 255. As argues, there are seri- infringers accused ... ‘exceptional cases’ summary court’s district affirm the or we litigation faith normally those of bad are of cor- Superior’s certificate judgment that con- inequitable fraud or involving those affirm the dis- alsoWe rection is invalid. pat- the procuring patentee by the duct evidentiary preclusions trict court’s ent.”)- judg- amend to Superior’s motion of denial was ex this case that finding A However, we for reconsideration. ment or course, the not, end of would ceptional remand, consis- proceedings for vacate and to decision subsequent inquiry. court’s the district opinion, tent with this non, fees, discretion vel is attorney award exceptional case not an that this is finding intan weigh judge the ary “permits Majestic not to award and its decision the de factors: tangible well as gible as attorney fees. infringer, culpability gree AFFIRMED-IN-PART, VACATED- behav litigation question, closeness REMANDED. AND IN-PART whereby fee ior, factors any other an instrument may serve shifting dissenting. DYK, Judge, Circuit Indus., Inc. v. West Presto justice.” Nat'l that the majority PTO’s with the agree I 1185, 1197, USPQ2d Co., Bend of correc- the certificate granting action (Fed.Cir.1996); Mfg. Modine 1685, 1693 validity a presumption tion is entitled Inc., Group, v. Allen Co. clear and con- must overcome that be (Fed.Cir.1990) (pro 1622, 1626 USPQ2d agree that I also vincing evidence. list). viding a similar authorized, under 35 U.S.C. PTO is remand, should court the district On typo- for of correction certificates to issue findings to allow our necessary make mistakes broaden or clerical graphical a determina- include review. This should I share the patent, scope any, if preparation, pre-filing tion of what section hesitancy interpret majority’s From the record by Superior. done broadening corrections prohibit 255 to inspect- it unclear appeal, is stat- from the express indication “without pre- infringing products, allegedly ed the However, part I com- Ante at ute.” at charts, the claims construed pared it reads into majority when pany with the are claims. We issue, read those or even the error be requirement that the statute a position by Superior’s apparent perplexed history, a prosecution from apparent lawsuit, it was that, it filed this at the time lacking an equally requirement which that claim recited fact ignorant of the I ac- in the statute. “express indication” Ro- Eng’g, Inc. v. View “rear walls.” Cf. majority’s hold- from cordingly dissent Sys., botic Vision of correction is certificate ing that (Fed.Cir.2000) 1179, 1183 majority’s decision invalid and from context, in the also in a Rule (stating, judgment summary grant of affirming the in- Circuit, party alleging that a Ninth non-infringement. minimum, ap- must, “at a bare fringement admits, of sec- text majority As the device ... accused ply the claims error be require not tion 255 does a reasonable there is and conclude history. It prosecution apparent infringement”). finding of for a basis the statute an to read into not our task CONCLUSION requirement,” ante “implicit, extra-textual repre- it we believe at because alleged correction of Because the Supreme Court policy. As the good a claim sents § 255 broadened mistake under Bennett, 531 U.S. noted Artuz speci- clearly from evident and was (2000) L.Ed.2d 121 S.Ct. history, fication, drawings,
1379 “[wjhatever policy these and other posely merits disparate inclusion or exclu- have, arguments may it province is not the sion.” Walker, See also Duncan v. 533 of 167, this Court to rewrite the 2120, statute U.S. 121 2124-25, S.Ct. 150 (2001). accommodate them.” See also Badaracco L.Ed.2d 251 There is nothing here Commissioner, v. 886, 398, 464 U.S. 104 to overcome that presumption, and the 766, (1984) (“Courts S.Ct. 78 549 legislative L.Ed.2d history of the Act 1952 is silent are not authorized to a rewrite statute the reason for the textual difference in they might because deem its effects sus- two sections. S.Rep. 82-1979, No. at ceptible (1952), of improvement.”). 27 Indeed, it reprinted is U.S.C.C.A.N. perfectly clear Congress that did not in- tend to require in section 255 that mis- The majority states that reading into
takes be evident from the his- section 255 an extra-textual requirement tory. that mistakes be evident prosecu admits, history tion majority
As the
Congress
consistent
explic-
with the “overall
statutory scheme,”
itly imposed
requirement
§§
such
articulated in
in section
251-
“[wjhenever
256.I
agree
majority
254. Section 254
states that
that when
interpreting
a statute
patent,
mistake
we
“interpret
incurred
should
through
the ivords in their
fault of the
context and with
Office,
and
a view
Patent
Trademark
to their place in the overall
clearly
statutory
by
disclosed
the records
of
Cain,
Tyler
scheme”
v.
Office,
533
U.S.
121
may
Director
issue a certificate
2478, 2482,
S.Ct.
(2001),
150 L.Ed.2d
(Em-
of
correction-”
35 U.S.C.
and that
added.).
we should “consider not only the
phasis
Because such language is
bare meaning of the word[s] but also
absent from
section
inference is
placement
[their]
purpose
the statu
inescapable
Congress
did not intend
tory scheme,” Fanning, Phillips & Mol
impose
requirement
such a
in section
West,
(Fed.Cir.
nar v.
255. Section 255 was enacted in
at
1998). However, Tyler
Fanning,
very
same time section 254
re-
Phillips & Molnar discuss how to inter
enacted, and both
appear
sections
in the
pret
individual,
the meaning of an
ambigu
82-593,
Patent Act of
Pub.L. No.
ous word that appears in the text of a
Stat. 792.1
circumstances,
Under such
statute. Those cases hardly suggest that
Supreme Court
made
has
clear that a sec-
entirely
should read
new clauses into a
tion that omits language appearing in a
statute because we think that
ap
companion section should not be construed
proach better fits the
design.
overall
to include the language. The Court con-
States,
cluded in
Russello
United
Even under the majority’s interpreta-
16, 23,
U.S.
tion,
S.Ct.
mistakes occurring acts only for re- is rection valid Congress intended unlikely that ly issues. history disclose certificate of correction after the prosecution quire cer- If a mistake that the requires mistakes. own Because Southwest applicant’s un- and went as valid applicant by the be treated made tificate of correction were (as oc- apparently PTO occurring the certificate after only detected for acts appear not here), often it would public on the issues, curred reliance public’s history. prosecution of whether regardless protected, is record original pros- in the is evident the mistake prosecu that the majority’s concern The history. ecution mis notice give must history tion is entitled public time two-year “[t]he take because bar majority cites record of public rely upon the broadening reissue under obtaining a patent’s scope of determining no similar time notes that 251 and section Fit claims,” (quoting Vectra at 1369 ante un- broadening certificates applies limit 1379, ness, Corp., v. TNWK Inc. But Ante 1371-72. at der section (Fed.Cir. 1144, 1148 1383, USPQ2d require- imposing support this does not majority ex 1998)), misplaced. is applicant’s an 255 that ment in section 255, unlike that section concern presses evident mistakes be protec no 252, its face on provides section the certificate of history. event In inter liability for infringement tion from August on was issued correction here (and However, recently we vening rights. original years two after less than of correc a certificate correctly) held 21,1997. patent issued October after arising claims only for valid tion is this, we should Finally, areas such as issued, language of as the the certificate guess the PTO. The to second reluctant be clear. Southwest the statute makes Soft court, PTO, courts or district Inc., 226 F.3d ware, Harlequin Inc. v. whether position to know in the best (Fed. USPQ2d 1280, 1294, 56 error has oc or clerical Cir.2000).2 example of a offered the We validity presumption curred. The claim that was single awith patent issuing standard convincing evidence the clear and mistake, and stated to a due clearly invalid crafted, recog part, because were that: exactly what cannot know nized that we certificate of issues a PTO Until ap and we during prosecution, occurred ap- ..., would such correction PTO has done that the propriately assume and reason- public, invalid to pear and convinc clear job properly, its absent justified in would be competitors able contrary. Applied Ma ing evidence accordingly. In affairs conducting their terials, Advanced Semiconductor Inc. v. case, is invalid the claim where such a Am., Inc., Materials cor- the certificate its face without (“The (Fed.Cir.1996) result rection, illogical as an it us strikes on the validity based presumption holder, the cer- once to allow the administrative correctness presumption issued, to sue has of correction tificate with ex charged agency actions of activities that infringer for alleged denied, cert. patentability.”), amination of the cer- the issuance occurred before 137 L.Ed.2d 117 S.Ct. 520 U.S. tificate of correction. section 255. issued under well to certificates issued involved certificates 2. While Southwest equally holding applies its under section *22 (1997). The presumption ap- same The written description stated: “[i]n the plies to certificates of correction. preferred As we invention, the firebox form recently said Winbond Electronics added). rear wall (emphases 15-” '534 Commission, Corp. v. International Trade patent, col. 11. 11-12. By using the 1363, 1371, article, definite the patentee clearly indi- (Fed.Cir.2001), “[t]he Patent Act ac- cated that preferred embodiment of cords each patent presumption of validi- invention included a having firebox a sin- ty.... A Certificate of extends Correction gle rear wall. We have held that a claim presumption to the corrected docu- construction that not encompass does majority ment.” While the purports to preferred embodiment is “rarely, ever, standard, in apply this it pays fact little or correct and require would highly persua- no deference actual to PTO’s determi- sive evidentiary support.” Vitronics Corp. nation that a qualifying clerical or typo- v. Conceptronic, 1576, 1583, graphical mistake occurred. USPQ2d 1573, (Fed.Cir.1996). So too a claim which is
Even written exclude majority’s under the statutory in- preferred likely embodiment is terpretation, there is be ample evidence in an error. patent prosecution and its history here to support the conclusion such a mistake majority The notes that the examiner’s occurred, certainly no clear and con- changed amendment “rear wall” to “rear
vincing evidence that it did not. In the after a telephonic walls” interview between course of prosecution, Superior submitted Superior’s representative and the examin- an adding amendment a claim that eventu- er to prior this, discuss art. From ally matured into claim 1 of the pat- '534 majority draws an inference that ent. It claimed a fireplace that included a amendment was made in a deliberate at- housing and “a firebox within the housing tempt by the applicant to prior overcome wall, comprising a top ioall and rear side art and was not a clerical or typographical ” added.) (Emphasis walls.... On March error. But the examiner’s amendment telephone after a interview be- added, time, also at the same to the same tween the examiner Superior’s repre- claim, the claim limitation “a rear room air 6, 1997, sentative on March prior which plenum between the rear toall of the fire- ” discussed, art was “rear changed wall” was (Em- .... box patent, '534 col. 11. 3-4 “rear walls” the claim an examin- added.). phasis majority hypothesizes er’s amendment. Accordingly, patent that this language an error. Ante at originally 21, 1997, issued on October 1374. But simply there is no reason to claiming a fireplace that included a hous- believe that the “rear wall” reference was ing and “a within firebox housing com- error, opposed to the “rear walls” wall, prising top rear walls and side event, In any reference. the existence of ” .... patent, walls '534 col. 11. 44-45 these sharply argues inconsistencies added.). (Emphasis The PTO issued a against majority’s inference aof delib- correction, certificate of pursuant sec- Thus, change. erate histo- tion August changing ry supports the change view that the from “rear walls” to “rear wall.” “rear wall” to “rear walls” was inadvertent itself strongly supports and was a clerical typographical mis- validity of the certificate of Certainly, correction. Majestic take.3 has pre- Majestic present Because did not clear and not reach the issue whether the mistake convincing evidence that the mistake was not was "of minor character” under section 255. nature, clerical or I would erred clearly court the district and that convincing evidence clear and
sented mistake, failing to so find. much less clear anot this was made an that the PTO convincing evidence in not negligent have been may correc- certifícate issuing the error in filing before reviewing carefully tion. cry a far action, negligence is but *23 that the district holds the court Finally, in the sin failure involved gross Masjes- denying summarily in court erred in which by majority cited gle case fur- fees without attorneys’ for tic’s motion Fed. under imposed were sanctions ma- disagree I explanation. ther Ro Eng’g, Inc. v. 11. See View R.Civ.P. should be court the district jority that 981, Inc., 982- Sys., botic Vision establish a findings and make to required (Fed.Cir. 1179, 1180-82 84, USPQ2d of its denial review allow our to record imposition 2000) court’s (affirming district attorneys’ fees. for motion defendant’s filed an had patentee where of sanctions already are overworked courts District having without counterclaim infringement In their add to burden. not we need infringer’s products, accused seen the Touch, Mechanical Inc. v. Electro Carroll “that it had Inc., patentee admitted where Systems, (Fed.Cir.1993), counterclaims”). al- USPQ2d for its no factual basis factual no court issued “district though the states, a case in “this is not majority ‘excep- anwas [it] whether findings as to a denial of compels record ... which the court’s case’,” affirmed district we tional is fees,” but neither attorney ante at motion for infringer’s the accused denial of compels us record in which the this a case provid- the record fees because attorneys’ In circum- attorneys’ fees. such grant us to review the for basis ed a sufficient stances, deferential abuse- given highly is true decision. same court’s district under of review standard of-discretion here. finding court’s the district review which we invali- majority on which The issue fees, is a remand attorneys’ regarding is an of correction certificate dates the in this unnecessary. the record On quite certainly a impression, first issue of clearly not err case, did district court (even assumes if one close one exceptional not an that this finding in correct). Majestic has also majority its discretion not did abuse case and evidentiary claim, an less much made no attorneys’ Majestic’s motion for denying original filed the showing, In Cam- faith. fees. action bad infringement Nutrients, Products, Ltd. Penn bridge which the cases on that none of I note 1050-51, USPQ2d for its conclusion majority relies (Fed.Cir.1992), affirmed 1580-81 an compelled are involved judicial findings attorneys’ fees court’s denial the district under reviewed attorneys’ fee award that: explained have As we of discretion standard. abuse prevailing awards case of [i]n before, findings on the a remand stated ‘exceptional ... infringers accused fees, ac- its “with question attorneys’ faith those bad normally are cases’ judi- of additional expenditure companying in- fraud or involving or those litigation thought be case cial resources patentee.... equitable conduct taken and lightly step is a completed, infringer] bears the Thus, [the accused cases limited to should be one that paten- establishing that [the
burden by the must be taken action which further in bad faith litigation pursued tee] district court or which appellate defer to the discretion of the district court deny way court has no motion for open attorneys’ to it to affirm or fees. reverse the district court’s action under reasons, For these I respectfully dissent. Touch, review.” Carroll 15 F.3d at Here, at 1845. we should notes simply expect a asking too much to to be us Thus, wall.” “15” is a “firebox rear bered it is is- a to check when patentee proposition the accept were to even one it con- whether in order to determine sued signals “the” that use of the definite article the issuance require tains errors rear only single “firebox presence the correction”). por- These of a .certificate 15,” nothing phrase in that wall there history appear to the prosecution tions of being charac- sheet from precludes change the from possibility dispel firebox claim an terized as additional a mistake. “rear walls” was “rear wall” to contrary, the written rear wall. To the conclusion, claim limitation In above, noted drawing, and description syntactically correct question sheet itself support the characterization on its question face raises no of a mistake. thus cannot be mistake of “minor charac- claim, The rest of the other claims and ter.” Accordingly, based plain on the the written description and drawings do meaning of statutory language, in-we not make it clearly evident that “rear terpret “a mistake ...of minor character” walls” limitation is a mistake and should to exclude mistakes that broaden a claim. have Furthermore, been “rear wall.” In the limitation, relevant claim the cor- prosecution history provides compelling (sin- rected claim recites only “rear wall” evidence that “rear walls” was the correct gular), whereas the Thus, uncorrected claim phrase. re- requested correction of cited “rear (plural). walls” alleged apparent mistake was not district from held, specification, court drawings, prosecu- does not dispute, history. tion alleged is, mistake the corrected claim is broader than therefore, not a clerical or typographical claim, uncorrected if both are properly § mistake correctable under 255. Were construed accordance with our case law. apply we to review, APA’s standard of Brandt, Citing which is not controlling on agree we would with the district court that court, Superior invites compare us to the PTO’s decision that the change to the corrected claim not to the uncorrected “rear walls” was of a clerical typograph- or claim but to that to,” which “agreed ical nature correctable under 255 was an “intended,” by patentee and the exam- abuse Opinion, discretion.2 92 iner. Superior asserts that the examiner F.Supp.2d at 1009. and the patentee both understood that the required only single wall, rear 5. Review “Minor Character” that this govern intent should analysis. our begin We by interpreting the phrase “minor Again, character.” We decline Superior’s invita aas matter of statutory interpretation, we tion and refer to our own case law. “No review the district interpretation court’s inquiry subjective as to the intent without Adang, deference. Barton v. applicant or PTO is appropriate or even USPQ2d 1128, possible in the context of a infringe (Fed.Cir.1998). phrase This is not explic ment subjective suit. The intent of the itly statute, defined and so begin