H-W Technology, L.C. v. Overstock.com, Inc.


Docket Nos. 2013-1054, -1055

PROST, O’MALLEY
July 11, 2014

Brief Summary: DC decision not to consider certificate of correction was correct because error was not evident “from the face of the patent” and “error in the prosecution history alone is insufficient to allow the district court to correct the error.” Indefiniteness decision also affirmed because claim includes two statutory classes of invention, apparatus (“The system of claim 2”) and method (“and the user uses the input means”).

Summary: H-W appealed from DC holding that claims 9 and 17 of its US 7,525,955 related to a smartphone application were invalid. H-W filed suit in March 2012 and was later informed by Overstock that claim 9 “was missing a limitation.” H-W later obtained a certificate of correction and submitted it to the DC, but this was after the SJ and claim constructions briefings were completed. A few months later, the DC construed the claims and granted SJ that claims 9 and 17 were indefinite. Regarding the correction to claim 9, the opinion explained “[a] district court can correct a patent only if, among other things, ‘the error is evident from the face of the patent’” (Grp. One, Ltd., FC 2005) which was not the situation here since “[n]othing in the claim language indicates that the limitation was missing” (“Although other claims do contain the missing limitation, the inclusion of that limitation in one claim does not necessitate, or even fairly indicate, that the limitation should be included in all other claims.” SRI Int’l, FC 1985). H-W attempted to argue the limitation “is clearly in the specification” but the FC panel determined the specification only described the same as “optional” (“The optional nature of such service negates any argument that such a limitation in the cliam is implied as necessary to the invention.”) It was also explained that while “[t]he parties appear to agree that the PTO’s error is clear on the face of the prosecution history…this court has already deemed evidence of error in the prosecution history alone is insufficient to allow the district court to correct the error.” And, according to 35 USC § 254, “[t]he certificate of correction is only effective for causes of action arising after it was issued”; the DC was therefore determined to be correct not to consider it. The DC invalidated claim 17 as indefinite because it included apparatus (“The system of claim 2”) and method (“and the user uses the input means”) as in IPXL Holdings (FC 2005) (“Because the claim recits both a system and the method for using that system, it does not apprise a person of ordinary skill in the art of its scope, and it is invalid under section 112, paragraph 2.”; see also In re Katz (FC 2011).

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