Motion for Summary Judgment of Invalidity Granted Due to Indefiniteness

CBT Flint Partners, LLC v. Return Path, Inc. et al., Case No. 1:07-cv-01822 (N.D. Ga. July 11, 2008) (Thrash, Jr., J.)

Claim 13 of U.S. Patent No. 6,587,550 includes a drafting error. The claim recites, in relevant part, that “the computer [is] programmed to detect analyze the electronic mail communication sent” (emphasis added). Defendants’ filed a motion for summary judgment of invalidity, arguing that the claim is indefinite. In particular, the Defendants contended that the claim is ambiguous because there are five reasonable ways to correct the error: (1) delete the word “detect,” (2) delete the word “analyze,” (3) add the word “and” between the words, (4) add the word “or” between the word, and (5) add the phrase “and/or” between the words. The Plaintiff argued that inserting the word “and” between the words “detect analyze” is the only reasonable correction.

District Court May Correct Drafting Error in Some Circumstances: The parties did not dispute that the claim has a drafting error. Thus, the question for the Court was whether it could correct the error. The Federal Circuit has explained that a district court can correct an error in a patent claim 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.” Novo Indus., L.P., v. Micro Molds Corp., 350 F.3d 1348, 1354 (Fed. Cir. 2003).

But Not Where the Court Must Guess at the Claim's Intended Meaning: Citing deposition testimony of a co-inventor who stated that “I think that maybe I meant detect and analyze or I meant detect and meant to delete analyze or I meant analyze and meant to delete detect,” Judge Thrash concluded that the Court had no authority to correct the error and granted the Defendants’ motion:

If the inventor and lawyer who drafted the patent is left to guess at what he meant, the Court is certainly in no better position. The appropriate correction is subject to reasonable debate based on consideration of the claim language and the specification. The prosecution history is silent as to what was intended. Following the clear mandate of Novo Industries, this Court is not authorized to correct the drafting error. Therefore, claim 13 is invalid for indefiniteness in its present form.