Federal Circuit Finds District Courts Can Correct Obvious Errors Without Certificate of Correction

In CBT Flint Partners, LLC v. Return Path, Inc., 99 USPQ2d 1610 (Fed. Cir. 2011), CBT Flint Partners, LLC (“CBT”) appealed the District Court for the Northern District of Georgia’s grant of summary judgment of invalidity of claim 13 of U.S. Patent 6,587,550 (“the ‘550 patent”).  CBT owns the ‘550 patent, as well as another patent, the ‘114 patent, which both relate to methods and systems for charging a fee for sending spam email to recipients.  In the preferred embodiment of the ‘550 patent, the invention is implemented as part of an Internet Service Provider (“ISP”).  When a sender attempts to send spam emails over the ISP network, the patented system determines whether this sender is an “authorized sending party,” i.e., a party who has agreed to pay a fee to the ISP.  If the sender is an authorized sending party, the ISP will forward its spam emails to the intended recipients.  If the sender is not an authorized sending party, the patented system will send a message to the sender, giving the sender the option to pay the fee and become an authorized sending party.  If the sender does not pay this fee, its spam emails will not be forwarded over the network.

In August 2007, CBT sued Return Path, Inc. and Cisco Ironport Systems, LLC (“the Defendants”), alleging infringement of both the ‘550 and ‘114 patents by the Defendants’ “Bonded Sender” system.  This system analyzes incoming emails to determine whether they came from an authorized computer and, if so, forwards them to their intended recipients.  CBT asserted infringement of claim 13 of the ‘550 patent, as well as infringement of ten claims of the ‘114 patent.

Failure to Seek Certificate Of Correction Prevents District Court from Making Corrections Not Evident On Face Of Patent

In Group One Ltd. v. Hallmark Cards, Inc., 04-1296 (Fed. Cir. May 16, 2005), the Federal Circuit reviewed the patentability of U.S. Patent No. 5,518,492 (the ’492 patent) and U.S. Patent No. 5,711,752 (the ’752 patent) which were found invalid at the District Court level for both procedural reasons and for obviousness.  With regard to the ’492 patent, the Federal Circuit reviewed the authority of the District Court to make corrections for printing errors caused by the United States Patent and Trademark Office (USPTO) but which were not corrected prior to bringing an action.  Specifically, in claim 1 of the ’492 patent, a phrase was added to the claim for purposes of patentability and was not printed on the issued patent.  It was uncontested that the error was correctable under 35 U.S.C. §254 as an error caused by the USPTO.  However, the patent owner had not filed for or obtained a certificate of correction at the time of trial.  The Federal Circuit held that, in certain cases where the error is “evident from the face of the patent,” the District Court has the authority to effect the change retroactively as was done in Hoffer v. Microsoft, et al., Civ. Case. No. 04-1103 (Fed. Cir. April 22, 2005).  However, unlike the situation in Hoffer, the error in claim 1 was not evident from the face of the patent such that the District Court correctly did not make the correction at trial.  As such, the claims as presented at trial were invalid.