Court Declines to Enforce Patent Claim with Uncorrected Error

In a May 12, 2015 ruling, Judge Laura Taylor Swain granted summary judgment partially dismissing the plaintiff’s infringement action because the asserted claims in the patent-in-suit had an uncorrected error that was not evident from the face of the patent. The patent-in-suit issued with a clause that should have been added to one of the claims omitted from the as-issued patent. Judge Swain first found that the error “is not evident from the face of the patent, because the phrase from which it was omitted in [the claim at issue] makes grammatical sense and does not have obvious missing information. Moreover, there is no information on the face of the patent that would alert a reader to any missing limitation.” The Court further found that the omitted phrase was material because it had been added during prosecution specifically to avoid prior art. The Court concluded “that the undisputed material facts direct the conclusion that [the claim at issue in the patent-in-suit] was issued with an omitted material limitation, and that the error is not evident on the face of the patent. Therefore, the uncorrected independent patent claim cannot be asserted in this litigation,” nor can the dependent claims that depend from it.