In CBT Flint Partners, LLC v. Return Path, Inc., Nos. 2010-1202, -1203, 2011 WL 3487023 (Fed. Cir. Aug. 10, 2011) a Federal Circuit panel (Lourie, Bryson, and Linn) provided further guidance as to when a district court may correct so-called “obvious” errors in an issued patent. The court had previously held that “[a] district court can correct a patent 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.” Novo Industries, L.P. v. Micro Molds Corp., 350 F.3d 1348, 1357 (Fed. Cir. 2003). In reversing, the Federal Circuit essentially held that the subject of “reasonable debate” is not as to whether or not there are different possible corrections, but rather, the meaning of any different possible corrections.
The case was on appeal from the U.S. District Court for the Northern District of Georgia, where U.S. Patent No. 6,587,550 was held indefinite under 35 U.S.C. § 112, ¶ 2 because claim 13 had a typo for which there were multiple possible corrections. Claim 13 is a method claim relating to detecting, at the ISP level, incoming spam e-mail messages, and either charging the sender a fee to send the message on to the intended recipient or rejecting the message. As issued, the claim said, among other things, “the computer being programmed to detect analyze the electronic mail communication.” (emphasis added). Further muddying the issue was the fact that a co-inventor—who also prosecuted the application—couldn’t recall which of the possible corrections was originally intended. The district court interpreted the Federal Circuit’s guidance in Novo Industries literally and held that because there were at least three possible ways to correct the typo, there was therefore “reasonable debate” and the correction was not “obvious.”
The Federal Circuit reversed the district court’s holding and remanded to the district court. The Federal Circuit held that under any of the three possible corrections for the typographical error, the claim had essentially the same meaning. CBT Flint Partners, LLC, 2011 WL 3487023 at *4. The court distinguished its previous decision by pointing out that “[i]n Novo Industries, we declined to make the proposed corrections to the claim at issue because those corrections were substantively significant and required guesswork as to what was intended by the patentee in order to make sense of the patent claim.” Id. In so doing, the Federal Circuit has effectively given a bit more elbow room for a district court to be able to correct “obvious” errors in issued patents.