Can You Rely on the Printed Claim Terms in an Issued Patent?
The short answer is no, as Microsoft found out on January 31, 2017, in Smart Wearable Technologies Inc. v. Microsoft Corp. 1 The complaint accuses Microsoft Corporation (Microsoft) of infringing a patent owned by Smart Wearable Technologies (Smart) for personal fitness tracker designs that detect the movement of the human body and combine it with other collected data, such as a detected heart rate, which will display on a device.
The Smart patent claim contained a printing error that left out the end of a sentence of the patent claim being asserted. The U.S. Patent and Trademark Office (USPTO) printed the claim as “acceleration signals representing the accelerations of the body-segment relative to each of the x, y, and z-axes of an”; but Smart said the claim should have ended with “anatomical reference frame.”
Smart asked for a correction to the patent in 2006, and as of the July 2016 filing date of its suit, the patent had not been updated. However, in November 2016, the USPTO corrected the typo.
“Microsoft argues that the printing error cannot be corrected by the court, and that it renders the patent claim invalid.”
Chief U.S. District Judge Glen E. Conrad said that district courts are allowed to correct obvious typographical errors in patent claims, given that the interpretation of the claim and the error isn’t controversial.
Chief Judge Conrad further stated that the court must decline to make the change if the edit would be “substantively significant” and would require “guesswork,” and ruled that is the situation in the Smart v. Microsoft suit. He also ruled that dismissing the suit for a procedural flaw under Rule 12(b)(6) for failure to state a claim wouldn’t be appropriate because the record and the merits of the case still needs to be fleshed out.
The lessons learned from this pending matter are:
it is important to proof read an issued patent for accuracy, and
you may not be able to rely merely on the printed claims that issue from the USPTO without looking into the file history.
It will be interesting to see if the USPTO delay in correcting an error that has been brought to their attention will adversely affect Smart’s enforcement of the patent. Time will tell.
This alert was written by Ajay A. Jagtiani in the Intellectual Property & Technology practice group at Miles & Stockbridge.
1 16-cv-00047, at the U.S. District Court for the Western District of Virginia
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