Court Could Not Correct a Claim Where PTO's Error Was Not Evident from the Patent; Patentee Could Not Assert Uncorrected Claim

H-W Tech., L.C. v. Overstock.com, Inc., 758 F.3d 1329 (Fed. Cir. July 11, 2014) (PROST and O'Malley) (N.D. Tex.: Fish) (1 of 5 stars)

Federal Circuit affirms indefiniteness judgment on one claim and unenforceability judgment on another but modifies it to eliminate reference to an unasserted claim.

Claim Construction: The term "user of said phone" was properly limited to a person, not a "thing," because the claims referred to user contact and payment information (which are not items a thing would have), and the specification equated users with consumers and described the user touching the screen with a finger. A single general-purpose dictionary definition of "user" that included a "thing" could not overcome this intrinsic evidence.

Corrected Claim: The original patent included a claim in which the PTO inadvertently omitted a limitation. The district court properly refused to correct that error because it "was not evident from the face of the patent." The claim read coherently without the limitation, the specification suggested the limitation was optional, and, although some claims contained it, this did not suggest it had to be in all claims. It did not matter that the error was clear on the face of the prosecution history because one could not discern the missing language by reading the patent alone.

The district court also properly declined to consider a certificate of correction fixing the error under section 254 because it issued only after the suit was filed. The patentee was not permitted to assert the uncorrected version of the claim either. "When, as here, a claim issues that omits a material limitation, and such omission is not evident on the face of the patent, the patentee cannot assert that claim until it has been corrected by the PTO. To hold otherwise would potentially permit patentees to assert claims that they never asked for nor rightly attained." Slip op. at 9. So judgment against the patentee was affirmed on this claim, although it was modified to clarify that the corrected claim was not invalidated.

Indefiniteness: Under the construction of "user," another claim was invalid for mixing method and apparatus steps. The claim was to software for performing a search with certain steps, but included the limitations "wherein said user completes" and "selects," which, as in IPXL and Katz, made it unclear when infringement would occur.