Holding: Judicial correction of a patent claim is permitted only when the error is evident to a skilled artisan, the correction is the sole reasonable interpretation, and the prosecution history does not point to a different meaning.
Canatex owns US Patent No. 10,794,122, which claims a device for oil and gas wells that includes a lower part and an upper part. The lower part can be disconnected from the upper part if the lower part gets stuck in a drilled hole, allowing the upper part to be retracted and the lower part to be retrieved later. Canatex accused Wellmatics of infringement, and Wellmatics challenged the validity of the ‘122 Patent, arguing that claim 1 was indefinite for lack of antecedent basis.
Claim 1 of the ’122 Patent describes a releasable connection tool with two parts: a first part that includes a connection profile, and a second part that houses a releasable engagement profile, a locking piston, and related fluid‑pressure components. The engagement profile of the second part is designed to grip the connection profile of the first part and, when the piston moves to a release position, to expand radially to disengage. However, claim 1 recites that in the release position, the releasable engagement profile expands rapidly “to release the connection profile of the second part.”
Canatex argued that the phrase reciting “the connection profile of the second part” would be seen by a relevant artisan as a clear error, and that the intended wording was “the connection profile of the first part.” This same error also appeared in the Abstract of the ‘122 Patent and twice in the written description. The district court rejected this argument, ruling claim 1 to be invalid for indefiniteness.
The Federal Circuit reversed the district court’s decision, holding that it is evident that the claim included an error and, based on intrinsic evidence, a relevant artisan would recognize that the only reasonable correction would be for the claim to recite “the connection profile of the first part.”
Judicial correction of claim wording is permitted only under a very high standard. The error must be evident from the face of the patent and obvious to a person of skill in the art. The correction may not be subject to reasonable debate when considering the claim language and the specification, and the prosecution history cannot suggest a different interpretation of the claims. Additionally, a court is allowed to correct obvious minor typographical and clerical errors in patents. The basis for allowing correction relies on the fact that the notice function of the patent system is still satisfied when a person of ordinary skill in the art is constructively aware of the meaning of the patent despite the error.
Canatex was entitled to judicial correction of the ‘122 Patent in this case because the error in the claim stating the “second part” rather than the “first part” would be obvious to a relevant artisan. The phrase requires an antecedent, but no “connection profile of the second part” had been introduced in the claim before the instance in question. Additionally, in the context of the rest of claim 1, it does not make sense to release a “connection profile of the second part” as the second part is described as having a releasable engagement profile that is able to engage the connection profile of the first part. The specification also makes clear that the claim meant to state “first part” rather than “second part.” The specification uses the term “connection profile 16” and the reference numeral 16 in the drawings points to a component of the first part and not to a component of the second part.
The Federal Circuit also determined that the only reasonable correction is to change “second part” to “first part” when considering the claim language as a whole. It is clear from the claim language that the radial expansion of the releasable engagement profile of the second part is meant to release the connection profile of the first part. There is no connection profile for the second part shown in the drawings or described in the specification. Moreover, nothing in the prosecution history precluded correction.
Federal Circuit Precedential 
Leave a comment