All Things Newz
Law \ Legal

Hiding Behind Clerical Errors – Lessons From Pavo Solutions Versus Kingston Technology Company – Patent

A patent confers on its owner the right to exclude others from
practicing the invention claimed in the patent. In the United
States, infringement becomes willful when the infringing activity
is carried out deliberately and intentionally with prior knowledge
of the patent (see Power Lift, Inc. v. Lang Tools, Inc., 227
U.S.P.Q. 435, 438 (Fed. Cir. 1985).

Recently, the US Court of Appeals for the Federal Circuit issued
a decision in an ongoing dispute between Pavo Solutions, LLC
(“Pavo”) and Kingston Technology Company, Inc.
(“Kingston”) (Pavo Solutions, LLC v. Kingston Technology
Company, Inc.
, CAFC, June 3, 2022), which addresses the
questions of a) whether a district court can amend an evident
clerical error in a patent; and b) whether the district court can
find that there was willful infringement after correction of the
clerical error is made and as a result thereof.

US Patent no. 6,926,544 (“the ‘544 Patent”) was
assigned to Pavo in 2015, from CATR Co. (“CATR”). The
‘544 patent is directed to “[a] flash memory apparatus
having a single body type rotary cover.” (id, 2).
Fig. 2 clearly illustrates the claimed flash memory apparatus:


On August 22, 2014, CATR Co. (“CATR”), prior to
assigning the ‘544 Patent to Pavo, sued Kingston alleging
infringement of that patent. On assignment, Pavo replaced CATR as
the plaintiff.

During the proceedings, the district court judicially corrected
the language of claim 1 so as to read: “pivoting the
cover with respect to the flash memory main body,”
rather than “pivoting the case with respect to the
flash memory main body”, in accordance with support from the
patent specification (emphasis added). During trial the jury found
that Kingston willfully infringed the ‘544 Patent and awarded
damages to Pavo.

In its appeal, Kingston argued that the district court erred
when it judicially corrected the claim. Furthermore, Kingston
argued that it could not have willfully infringed the ‘544
Patent, because Kingston reasonably relied on the fact that it did
not infringe the claims of the ‘544 Patent, as originally
written i.e. before judicial correction.

In its decision, the Federal Circuit held that the district
court aptly corrected an obvious minor clerical error in the
claims. The court explained that correction of a clerical error in
a claim is appropriate “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.”
(id. 7). Furthermore, in determining a particular
correction to be appropriate, the court “must consider how a
potential correction would impact the scope of a claim and if the
inventor is entitled to the resulting claim scope based on the
written description of the patent.” (id., 7-8).

In its analysis the court determined that the error in the claim
was clear from the full context of the claim language and the
support provided by the specification. Therefore, the judicial
correction was “merely giving to it the meaning which was
intended by the applicant and understood by the examiner.”
(id., 13). The court next determined that the prosecution
history did not suggest a different interpretation of the claim,
since the Applicant, the Examiner and the courts were consistent
with understanding the scope of the invention recited in the

Based on its conclusion that the district court acted correctly
in correcting the clerical error recited in the claim, the court
further determined that Kingston had willfully infringed the
patent. The court explained that Kingston could not rely on
“an obvious minor clerical error in the claim language”
as a defense to willful infringement. (id., 16). The court
explained that it based its reasoning behind this determination on
the fact that “[a]n obvious minor clerical definition, does
not mask the meaning” of the claim and therefore Kingston
could not “hide behind the error to escape the jury’s
verdict”. (id. 16).

A couple of takeaways come out of this decision.

First, and as mundane and ‘obvious’ as this sounds,
mindfulness and proofreading are essential skills for patent
attorneys. Ensuring that a claim actually recites what is intended
is essential to ensure that the client receives the patent that he
thought he was paying for. Kingston was unfortunate that despite
the claim error being relatively minor, so as to be entered by the
court, it constituted enough of a change so as to work against
them. However, other court decisions emphasize the implications of
what can occur when a clerical error results in an opposite outcome
in which there is no infringement (see for example, CBT Flint Partners, LLC v. Return Path,

Second, an infringement analysis should take into consideration
the claim language and any possible clerical errors, especially to
avoid the risk of a claim of willful infringement. Erring on the
side of caution in this matter can be the difference between no
infringement, infringement and willful infringement. In the current
situation, had Kingston sought an infringement opinion from a
patent attorney that erred on the side of caution and did not rely
on a clerical error in the claims, Kingston may have not been
liable for willful infringement or perhaps may have avoided
infringement action altogether.

In conclusion, this case emphasizes the fact that a patent
attorney and his clients live and die by the pen and the reliance
on the recited scope of the claims of a patent. Therefore, as
patent attorneys there is a fiduciary duty to ensure that a claim
actually recites the intended scope to ensure a high-quality work
product when drafting a patent application. Additionally, a patent
attorney should err on the side of caution when providing a client
with guidance in a potential infringement situation and avoid
relying on errors in a patent when assuring the client that they
are not infringing the patent.

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.

Source link

Related posts

Constitution Amendment Bill No. 19, 2022 And Swift Administration Of Justice In Nigeria: A Commentary. – Constitutional & Administrative Law

Buyer Beware – No Escape For Successful Resolution Applicants – Contracts and Commercial Law

FERC Proposes To Greatly Expand A Favorite Enforcement Tool—the “Duty Of Candor” Rule—Across Its Jurisdictional Footprint – Oil, Gas & Electricity