An Error in the Claim Must Be Apparent from the Claim; Not the Specification

Fargo Electronics Inc., v. Iris, Ltd., Inc., [2007-1523] (June 27, 2008) [PROST, Newman, Moore] NON-PRECEDENTIAL The Federal Circuit affirmed partial summary judgment of no contributory or induced infringement of claims 1 through 7, and invalidity of claims 8 through 15 of U.S. Patent No. 5,755,519.
SIGNIFICANCE: To correct an error in a claim, the correction must be apparent from the face of the patent; the specification is consulted to ensure the correction is consistent, not as the source of the correction
PRACTICE TIP: In arguing the claim is not ambiguous, don’t present more than one proposed construction.
BRIEF: LOF: A a determination that a claim is indefinite under 35 U.S.C. § 112, ¶ 2 is a question of law, reviewed without deference. At issue was the meaning of the limitation: “the second supports other than the”. The patentee presented two possible meanings for the language. The concluded that the claim contained an error, and rejected both of the proposed “constructions” because they required the addition or subtraction of claim terms. The district court relied upon Novo Industries, which held that a district court may only correct an error in a patent by interpretation of the patent “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.” The district court concluded that claim 8 was invalid as indefinite. The Federal Circuit agreed that absent correction, the was insolubly ambiguous and not amenable to construction. The Federal Circuit further found that the correction was not apparent from the face of the patent, and that the prosecution history should only be consulted to make sure that a correction is not inconsistent, and not as the source of the correction.