After discussing a court's ability to rewrite patent claim language in view of the Federal Circuit's decision in Pavo Solutions v. Kingston Technology (Pavo Solutions, Part I), my post last week noted that there was more to the story, including the issue of whether a court could rewrite a patent's disclosure. Here are a few thoughts on that issue.
On
The "obvious" error for Tada's Embodiment 3 related to properties/characteristics of Embodiment 3 which appeared to be a "cut-and-paste" error from another embodiment in Tada and, thus, erroneously associated with Embodiment 3.
The Federal Circuit noted the standard for reviewing errors in disclosures:
The court in [In re Yale, 434 F.2d 666 (C.C.P.A. 1970)] held that where a prior art reference includes an obvious error of a typographical or similar nature that would be apparent to one of ordinary skill in the art who would mentally disregard the errant information as a misprint or mentally substitute it for the correct information, the errant information cannot be said to disclose subject matter.
Based on this standard, the Federal Circuit determined that errant cutting and pasting had occurred in Tada which would be apparent to one of ordinary skill in the art, so Tada's Embodiment 3 as written did not render Immervision's patent claims obvious because such information would be corrected or disregarded upon review.
Before further discussion, a few more interesting facts from the case are:
(1) In Yale, the prior art was a journal article containing an erroneous chemical formula, and the article's author had submitted a letter to the journal recognizing that the chemical formula was incorrect;
(2) Tada's
(3) Tada never tried to correct the information related to Embodiment 3 in the
(4) Immervision's expert spent 10-12 hours to determine what the problem was with Tada's Embodiment 3 as written; and
(5)
There is a distinction between the standard for rewriting claims (Pavo Solutions) and the standard for rewriting disclosures (
Both standards relate to correcting minor errors, such as typographical errors and the like, and are viewed from the perspective of one of ordinary skill in the art. However, the claim rewriting standard is stricter than the disclosure rewriting standard. For claims, they should be rewritten only if (1) the correction is not subject to reasonable debate based on consideration of the claim language and the specification and (2) the prosecution history does not suggest a different interpretation of the claims; and the error must be evident from the face of the patent. For disclosures, the standard is simply based on whether the error is one which would be apparent to one of ordinary skill in the art.
If the standard for claims from Pavo Solutions were applied in
Further, as
Finally, in the category of hypotheticals, what if Tada did not have a Japanese priority application, or what if the priority application were not incorporated by reference into the
Going forward, it will be interesting to see how often courts rewrite claims and/or disclosures in patents. If you are involved in litigation, it might be worth considering asking a court to rewrite the claims and/or disclosure if you think it would help your case.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
Mr
Tel: 703413 3000
Fax: 703413 2220
E-mail: caskey@oblon.com
URL: www.oblon.com
© Mondaq Ltd, 2022 - Tel. +44 (0)20 8544 8300 - http://www.mondaq.com, source