Pavo Solutions LLC v. Kingston Technology Company, Inc., Appeal No. 2021-1834 (Fed. Cir. June 3, 2022)
In our Case of the Week, the Court of Appeals for the Federal Circuit affirmed a $7M compensatory damages award and, in doing so, dealt with questions of when a district court can correct errors in patent claims, whether a defendant can willfully infringe a patent that has been judicially corrected, when to exclude expert testimony, and when an issue has been preserved for appeal.
In its claim construction order, the district court agreed with plaintiff Pavo that the claim phrase “pivoting the case with respect to the flash memory main body” included a clerical error, saying “case” where it should have said “cover.” Kingston appealed this judicial correction to the claim term. The Federal Circuit noted that a district court can judicially correct typographic and clerical errors in claim language when: (1) the error is obvious, minor, and evident on the face of the patent; (2) the correction is not subject to reasonable debate based on consideration of the claim language and the specification; and (3) the prosecution history does not suggest a different interpretation of the claims. The Federal Circuit began by reading the claim language to determine that the error was indeed obvious on its face. Next, despite Kingston’s arguments to the contrary, the Federal Circuit determined the error was a minor, typographical one, and therefore correctable. Kingston argued that the error could not be a minor typographical error because correcting it changed the structure of the patented invention. The Federal Circuit disagreed; the correction did not change the structure of the claimed invention but only fixed claim language that simply did not make sense on its face. And regardless, Federal Circuit and Supreme Court precedent confirmed that district courts could issue structure-altering corrections (for example, altering a chemical formula, inserting the word “toy” into a preamble reciting a “trackway” so that it read “trackway toy,” and correcting “upper edge” to “rear upper edge”), which were still considered only minor, typographical or clerical corrections. Next, because Kingston’s alternative correction would have resulted in the same claim scope as the district court’s correction, the district court’s correction was not “reasonably debatable.” Finally, the prosecution history supported using “cover” instead of “case” because despite the claim language, the applicant, examiner, Patent Trial and Appeals Board (during inter partes review of the patent-in-suit), and Federal Circuit (in previously reviewing that inter partes review) all used “cover” instead of “case.”
The jury had found that Kingston willfully infringed Pavo’s patent, and Pavo introduced expert testimony to help determine damages. Kingston appealed the willful infringement finding—on the grounds that it could not have the requisite intent to infringe a patent that was subsequently corrected—and the inclusion of Pavo’s expert testimony. The Federal Circuit held that because judicial correction does not change the “metes and bounds” of a patent claim, but rather “gives effect to its obvious meaning,” it cannot shield a defendant from a finding of willfulness. (The Federal Circuit also noted that because culpability is measured at the time of the challenged conduct, any correction after the challenged conduct occurred would be immaterial to assessing willfulness.) The Federal Circuit also found the district court did not abuse its discretion by allowing Pavo’s expert testimony on damages.
Kingston had raised two other issues on appeal but failed to raise either in its post-trial motion for judgement as a matter of law. Because Kingston did not raise either issue with the district court in a post-trial motion, Kingston failed to preserve the issues for appeal, and the Federal Circuit did not review either one, reminding the parties “that a position not presented in the tribunal under review will not be considered on appeal in the absence of exceptional circumstances.” For one of the waived issues, instead of arguing the issue in its post-trial motion, Kingston “reserved its right to move for judgment as a matter of law” on the issue, but never did, which was not enough to preserve the issue for appeal.
The opinion can be found here.
By Tyler Hall
ALSO THIS WEEK
ClearOne Inc. v. Shure Acquisition Holdings, Inc., Appeal No. 2021-1517 (Fed. Cir. 2022)
In an inter partes review appeal, the Federal Circuit affirmed the Patent Trial and Appeal Board’s decision that a proposed substitute claim was not indefinite and affirmed the Board’s denial of appellant/petitioner ClearOne’s request to file a motion for sanctions. The patent at issue concerned arrays of microphones for fitting into drop ceiling grids, and ClearOne argued that the term “arranged in a self-similar configuration” was indefinite. The Court agreed with the Board that the intrinsic evidence informed skilled artisans about the scope of the invention with reasonable certainty, and that its finding that the term had a well-understood meaning was supported by substantial extrinsic evidence. The Court found that disclosures in the written description like “self-similar or fractal-like” and “self-similar or repeating” equated self-similar configurations with fractal-like or repeating configurations, rather than juxtaposing them and creating ambiguity. The Court also criticized ClearOne’s arguments as essentially listing possible alternative interpretations of the term in isolation, which was insufficient to show indefiniteness.
ClearOne had also requested leave to file a motion for sanctions, arguing that patentee Shure had asserted material prior art in its own petition for post-grant review of another patent, and that Shure had violated its duty of candor by failing to disclose that art in the IPR. Observing that “[t]he Board’s regulations do not obligate it to allow the filing of a sanctions motion, let alone sanction a party,” the Federal Circuit found that the Board’s decision was not an abuse of discretion. While the Board had found that the prior art was cumulative of references already asserted by ClearOne, the Court found that it need not reach that issue, because the Board’s rationale that ClearOne’s motion was a “thinly veiled attempt at a second bite at the apple” that would result in inefficient duplicate proceedings was sufficient to establish that the Board had not abused its discretion. Accordingly, the Court affirmed the Board’s final written decision.
The opinion can be found here.
By Jason Wrubleski