Fed. Cir. Allows Narrow Judicial Patent Correction

This Federal Circuit opinion analyzes the “very demanding standard” of judicial correction of erroneous wording of a patent claim.

Background

Canatex Completion Solutions owns U.S. Patent No. 10,794,122. This patent covers a releasable connection device for a downhole tool string used during downhole operations in oil and gas wells. The device has two parts locked together. In circumstances where the further downhole (first) part of the device has gotten stuck, the operator can disconnect the two parts of the device, leaving the further downhole (first) part in the well while pulling the upper (second) part to the surface.

Canatex accused Wellmatics, LLC, GR Energy Services, LLC, GR Energy Services Management, LP, GR Energy Services Operating GP, LLC, and GR Wireline, L.P. (collectively, “Defendants”) of infringing the ’122 patent in the District Court for the Southern District of Texas. In response, Defendants challenged the ’122 patent’s validity. The claimed phrase at issue was “the connection profile of the second part.” Defendants argued the claims that included this phrase were indefinite for lack of an antecedent basis, while Canatex argued the phrase contains an evident error and that the intended meaning was “the connection profile of the first part.”

The district court agreed with Defendants that the claims were indefinite, ruling that “the error” identified by Canatex “is not evident from the face of the patent and the correction to the claim is not as simple as [Canatex] makes it seem.” In fact, the court ruled this “error” “was an intentional drafting choice and not an error at all.” The court further concluded that Canatex’s failure to seek correction from the USPTO pursuant to 35 U.S.C. § 255, which expressly permits the USPTO to correct certain clerical, typographical, and minor errors, suggested that the error is neither minor nor evident on the face of the patent.

Canatex appealed to the Federal Circuit, challenging as legally erroneous the district court’s determinations that (i) no error in the claim phrase at issue was evident on its face of the patent and (ii) there was no unique evident correction.

Issues

1. Whether it is evident on the face of the ’122 patent that the claim language at issue contains an error.
2. Whether Canatex’s correction of “second” to “first” is the unique correction that captures the claim scope a reasonable relevant reader would understand was meant based on the claim language and specification.

Holdings

1. Yes. It is evident on the face of the ’122 patent that the claim language at issue contains an error.
2. Yes. The correction of “second” to “first” is the unique correction that captures the claim scope a reasonable relevant reader would understand was meant based on the claim language and specification.

Reasoning

1. Error evident on the face of the ’122 patent. The Federal Circuit reasoned that a relevant artisan would immediately see that, as written, there is an error in the claim. The phrase at issue plainly requires an antecedent (“the connection profile of the second part”), but no “connection profile of the second part” is previously recited in the claim. In addition, the Federal Circuit reasoned that the reference to a nowhere-identified “connection profile of the second part” “makes no sense” given the claim language. Further, the Federal Circuit reasoned this error was evident in view of the patent specification. Regarding Canatex’s failure to seek correction from the USPTO, the Federal Circuit distinguished between a correction made by the PTO under § 255, which is only made as prospective (i.e., going forwards), and a judicial correction, which determines the meaning the claim has always had.
2. The unique correction. The Federal Circuit reasoned that the only reasonable correction was to change “second” to “first” in the claim language. This was what the claim language as a whole required. Further, the specification showed that the patentee plainly meant the connection profile of the first part. Nothing in the prosecution history suggested otherwise. The Federal Circuit rejected Defendants’ arguments that there are other reasonable corrections, reasoning that Defendants’ alternative corrections were either unavailing or inconsistent with the claim’s meaning.

Conclusion

The Federal Circuit reversed and remanded. The Federal Circuit concluded that it is evident the claim contains an error and that a relevant artisan would recognize that there is only one correction that is reasonable given the intrinsic evidence. Although the Federal Circuit recognized a judicial correction to claim language in this case, this opinion nevertheless highlights “the very demanding standards for judicial correction of a claim term” and that such corrections are only “proper in narrow circumstances.”