Failure to Seek Certificate Of Correction Prevents District Court from Making Corrections Not Evident On Face Of Patent

In Group One Ltd. v. Hallmark Cards, Inc., 04-1296 (Fed. Cir. May 16, 2005), the Federal Circuit reviewed the patentability of U.S. Patent No. 5,518,492 (the ‘492 patent) and U.S. Patent No. 5,711,752 (the ‘752 patent) which were found invalid at the District Court level for both procedural reasons and for obviousness.  With regard to the ‘492 patent, the Federal Circuit reviewed the authority of the District Court to make corrections for printing errors caused by the United States Patent and Trademark Office (USPTO) but which were not corrected prior to bringing an action.  Specifically, in claim 1 of the ‘492 patent, a phrase was added to the claim for purposes of patentability and was not printed on the issued patent.  It was uncontested that the error was correctable under 35 U.S.C. §254 as an error caused by the USPTO.  However, the patent owner had not filed for or obtained a certificate of correction at the time of trial.  The Federal Circuit held that, in certain cases where the error is “evident from the face of the patent,” the District Court has the authority to effect the change retroactively as was done in Hoffer v. Microsoft, et al., Civ. Case. No. 04-1103 (Fed. Cir. April 22, 2005).  However, unlike the situation in Hoffer, the error in claim 1 was not evident from the face of the patent such that the District Court correctly did not make the correction at trial.  As such, the claims as presented at trial were invalid.

In regards to the ‘752 patent, the Federal Circuit upheld the patentability of the claims since the conflicting evidence of obviousness supported the jury’s non-obviousness verdict.  Moreover, the Federal Circuit held the ‘752 patent enforceable over various technical and procedural defects.  Specifically, the Federal Circuit held that, while the patent owner had failed to pay a maintenance fee, the patent owner’s petition to pay maintenance fees, which was not granted until after the close of evidence at trial, did not render the patent invalid since the late payment was retroactive under 35 U.S.C. §41(c)(1) and did not affect the enforceability of the claims.   Lastly, the Federal Circuit held that the terminal disclaimer signed by the inventors and filed in the ‘752 patent was effective since, while the patent was assigned by the inventors at the time the terminal disclaimer was filed, the assignment was not recorded at the USPTO and 37 CFR 1.321 only requires a signature where there is an assignee of record.

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