Issue 153 | January 28, 2004
Novo Industries , L.P. v. Micro Molds Corp. et al.
 At issue in Novo Industries , L.P. v. Micro Molds Corp. et al., Nos. 03-1230, -1249 (Fed. Cir. Dec. 5, 2003), was the uncommon question of whether and when a district court has the authority to correct errors in the claims of a patent by interpretation of the patent, where no certificate of correction was issued. The Federal Circuit held a district court could do so “only if (1) the correction is not subject to reasonable debate based on consideration of the claim language and the specification and (2) the prosecution history does not suggest a different interpretation of the claims.”

The ’578 patent in suit issued with an error in claim 19, which included the words “a rotatable with” that did not appear anywhere of the original application. The parties agreed that claim 13 included an error. At no time prior to suit did Novo ever seek or obtain a certificate of correction.

Prior to enactment of Section 255 (providing for correction), the Supreme Court held that, in a patent infringement suit, courts could properly interpret a patent to correct an obvious error. I.T.S. Rubber Co. v. Essex Rubber Co., 272 U.S. 429 (1926). Nothing in the enactment of either section 255 or 254 suggested that Congress intended to overrule Essex or to deny limited correction authority to the district courts. In fact, analysis of sections 255 and 254 themselves suggest that they were not intended to address the authority of the district courts to correct patents by construction where no certificate of correction has been issued by the PTO. Those sections pertain to the authority of the PTO to make prospectively effective corrections, and the PTO was given no authority to correct the claims retroactively.

However, a district court’s authority to correct errors is not limitless:
“[W]e conclude that Congress intended to preserve the authority of the district courts to correct errors, [but] we do not think that Congress intended that the district courts have the authority to correct any and all errors that the PTO would be authorized to correct under sections 254 and 255.
In support, the Court cited the fact that sections 254 and 255, in contrast to 35 U.S.C. § 256 (correction of inventorship), do not give the district courts the same authority as the PTO. Whereas section 256 expressly provides that a district court may order correction of the patent on notice and hearing, sections 254 and 255 do not provide for action by a district court.

Second, the authority of the PTO to make corrections under section 255, is not limited to obvious errors. Rather, it extends even to broadening corrections, so long as “it is clearly evident from the specification, drawings, and prosecution history how the error should appropriately be corrected.” Id.

Third, where the error is not evident from the face of the patent itself, as it was in Essex, the PTO must bring its expertise to bear and consider whether such a correction is appropriate.

Finally, to allow the district court to correct such errors would effectively write the nonretroactivity provisions out of sections 254 and 255. The district court always would apply its own corrections retroactively in the action before it, unlike certificates of correction issued by the PTO, which apply only in actions brought after the certificate of correction is issued.

Although the Court concluded that district court could correct only Essex-type errors (not subject to reasonable debate and not inconsistent with the prosecution history), it nonetheless held that the instant case did not fall within the ambit of the district court’s authority, for the nature of the error was not apparent from the face of the patent. The circumstances surrounding the interpretation of the error were such that , in order to make sense out of the patent, the district court was required to guess as to what was intended – a step “beyond its authority.” Accordingly, the Federal Circuit held claim 13 of the ’578 patent invalid for indefiniteness.

Finally, the Court upheld the denial of a sanctions award under Rule 38, because Novo’s position in the case was determined to be “far from frivolous.”

To discuss this topic further, please feel free to contact the author, Michael R. Dzwonczyk, (mdzwonczyk@sughrue.com), at Sughrue Mion, PLLC in Washington DC., USA.

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