What Can be Fixed with a Certificate of Correction?One of the more limited methods to address errors in an issued patent is via Certificate of Correction (COC). The COC is provided by 35 U.S.C. § 255. The statue provides that mistakes of a clerical or typographical nature, or of minor character may be corrected upon request. Such mistakes must have been made in good faith, and not constitute new matter or require reexamination; simple enough.But, what happens when a COC seems to embrace substantive change?Is the patent now invalid?Are intervening rights created?Is there any effect at all? Recently, in Multimedia Patent Trust v. The Walt Disney Company, et. al.,3-10-cv-00146 (SDCA), defendant Audiovox raised the affirmative defense of intervening rights based on an alleged broadening in a COC of U.S. Patent 5,227,878. Audiovox explained that they did not infringe the issued claims until claim 13 was changed by the COC. This change is reproduced below:13. An apparatus for decoding a compressed digital video signal, comprising:a means for receiving a compressed digital video bit stream; anda means responsive to a motion compensation type signal for selectively and adaptively performing motion compensated decoding of frames of the compressed digital video bit stream and fields of the compressed video bit stream. (underling showing COC changes)What if the Audiovox system did not compensate frames, but fields. The field feature was only added to claim 13 by the COC. In this situation, didn’t the claim scope broaden?  It would seem very likely that a change in function of means-plus-function claim 13 could at the very least change the corresponding structure of the specification — Such a change does not seem clerical or typographical in nature, or of a minor character as required by 35 U.S.C. § 255.This situation seems analogous to an intervening rights defense for patent reissue. In considering the issue, the court was simply considering the viability of the pleading, not the facts, and granted the plaintiff’s motion to strike the intervening rights defense. The court cited Lucent Techs. v. Microsoft Corp.,544 F. Supp. 2d 1080, 1102-04 (S.D. Cal. 2008) for the proposition that the doctrine of intervening rights applies to re-issued patents and does not extend to certificates of correction.The court is correct. The question here is not one of intervening rights, but validity of the COC.For a COC that was improvidently granted, the appropriate remedy is invalidation of the COC. In such cases the patent continues to read as it did prior to the issuance of the COC. Superior Fireplace Co. v. Majestic Products Co., 270 F.3d 1358 (Fed. Cir. 2001) Superior Fireplace held that if a certificate of correction broadens a claim, it is only valid if it corrects a “clerical or typographical” error that would have been clearly evident to one of skill in the art reading the intrinsic evidence. Id. at 1373 (“[W]e interpret § 255 to require that a broadening correction of a clerical or typographical error be allowed only where it is clearly evident from the specification, drawings, and prosecution history how the error should appropriately be corrected.”); id. at 1375 (“A mistake that, if corrected, would broaden the scope of a claim . . . cannot be a mistake of “minor character.”).While intervening rights is not a viable defense with respect to a COC, if Audiovox really did not infringe until after the COC, they might obtain relief by invalidating the COC.The Multimedia Patent Trust case was brought to my attention by the great Docket Navigator.

One of the more limited methods to address errors in an issued patent is via Certificate of Correction (COC). The COC is provided by 35 U.S.C. § 255. The statue provides that mistakes of a clerical or typographical nature, or of minor character may be corrected upon request. Such mistakes must have been made in good faith, and not constitute new matter or require reexamination; simple enough.

But, what happens when a COC seems to embrace substantive change?

Is the patent now invalid?

Are intervening rights created?

Is there any effect at all?

Recently, in Multimedia Patent Trust v. The Walt Disney Company, et. al.,3-10-cv-00146 (SDCA), defendant Audiovox raised the affirmative defense of intervening rights based on an alleged broadening in a COC of U.S. Patent 5,227,878. Audiovox explained that they did not infringe the issued claims until claim 13 was changed by the COC. This change is reproduced below:

13. An apparatus for decoding a compressed digital video signal, comprising:

a means for receiving a compressed digital video bit stream; and

a means responsive to a motion compensation type signal for selectively and adaptively performing motion compensated decoding of frames of the compressed digital video bit stream and fields of the compressed video bit stream. (underling showing COC changes)

What if the Audiovox system did not compensate frames, but fields. The field feature was only added to claim 13 by the COC. In this situation, didn’t the claim scope broaden?  It would seem very likely that a change in function of means-plus-function claim 13 could at the very least change the corresponding structure of the specification — Such a change does not seem clerical or typographical in nature, or of a minor character as required by 35 U.S.C. § 255.

This situation seems analogous to an intervening rights defense for patent reissue. 

In considering the issue, the court was simply considering the viability of the pleading, not the facts, and granted the plaintiff’s motion to strike the intervening rights defense. The court cited Lucent Techs. v. Microsoft Corp.,544 F. Supp. 2d 1080, 1102-04 (S.D. Cal. 2008) for the proposition that the doctrine of intervening rights applies to re-issued patents and does not extend to certificates of correction.

The court is correct. The question here is not one of intervening rights, but validity of the COC.

For a COC that was improvidently granted, the appropriate remedy is invalidation of the COC. In such cases the patent continues to read as it did prior to the issuance of the COC. Superior Fireplace Co. v. Majestic Products Co., 270 F.3d 1358 (Fed. Cir. 2001) Superior Fireplace held that if a certificate of correction broadens a claim, it is only valid if it corrects a “clerical or typographical” error that would have been clearly evident to one of skill in the art reading the intrinsic evidence. Id. at 1373 (“[W]e interpret § 255 to require that a broadening correction of a clerical or typographical error be allowed only where it is clearly evident from the specification, drawings, and prosecution history how the error should appropriately be corrected.”); id. at 1375 (“A mistake that, if corrected, would broaden the scope of a claim . . . cannot be a mistake of “minor character.”).

While intervening rights is not a viable defense with respect to a COC, if Audiovox really did not infringe until after the COC, they might obtain relief by invalidating the COC.

The Multimedia Patent Trust case was brought to my attention by the great Docket Navigator.