Claim Interpretation And Use of “Whereby” Clause to Limit Scope of Recited Function, And Allows Minor Corrections of Issued Patents During Litigation

Steven Hoffer is an independent inventor and owns U.S. patent no. 5,799,151, which is directed to an interactive trade network by which users interactively post information in regard to discrete and indexed economic topics.  The indexed topics are posted on a host computer, and the users are able to interact with each other directly.  Mr. Hoffer asserted that Microsoft Corp. and others infringed claim 21 of U.S. patent no. 5,799,151 due to their use of the Universal Description Discovery and Integration (UDDI) system.  The UDDI system does not use interactive messaging and instead requires posting of the individual messages.  However, since claim 21 does not specifically recite the use of interactive messaging except in a whereby clause, Mr. Hoffer believed that the whereby clause did not limit the claim to interactive messaging.

In the first part of its ruling, the District Court held that the recitation of interactive messaging in the whereby clause limited the scope of claim 21 to require interactive messaging, and relied upon statements in the specification to support its position.  Citing the Summary of the Invention, the District Court found that removing the interactive messaging requirement recited in the whereby clause would be contrary to the fundamental invention.  On appeal, the Federal Circuit agreed with the District Court’s use of the whereby clause.  Specifically, while the general rule is that “whereby” clauses do not limit the scope of the claim where the clause merely recites an intended result, if the clause expresses a necessary function performed by the recited invention, the necessary function required in the whereby clause will become a claim limitation.  As such, the UDDI system did not infringe claim 21 literally or under the doctrine of equivalents since the UDDI system lacks the recited interactive messaging.

In the second part of its ruling, the District Court had held claim 22 invalid for improper dependency and stated that the District Court lacked the power to allow correction of the claim after filing of the lawsuit even though the error was incurred by the United States Patent and Trademark Office and was corrected using a Certificate of Correction after filing of the lawsuit.  On appeal, the Federal Circuit reversed the District Court and held that the District Court has the power to correct typographical errors and that such errors do not automatically render claim 22 invalid for indefiniteness if the error is plain from the prosecution history.  According to the Federal Circuit, absent evidence of prejudice to the defendants or evidence that the patent owner delayed obtaining the Certificate of Correction to deceive the defendants, the District Court has the power to correct the patent since “a patent should not be invalidated based upon an obvious administrative error.”  Hoffer v. Microsoft, et al., Civ. Case. No. 04-1103 (Fed. Cir. April 22, 2005).


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