Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in Pavo Solutions LLC v. Kingston Tech. Co., No. 2021-1834 (June 3, 2022), affirming a district court’s judgment of willful infringement.
Pavo sued Kingston for infringement of a patent directed to a flash memory device with a rotating cover. During claim construction, Pavo asked the district court to “correct” the following claim phrase: “the hinge protuberance on the case for pivoting the case with respect to the flash memory main body, . . . .” Pavo argued that the second use of “case” in both independent claims was an obvious clerical error, which the district court could fix by changing it to “cover.” Kingston argued that the district court could not change structural claim terms without improperly changing the scope of the claim. The district court disagreed, concluding “that the error was ‘evident from the face of the patent’ because ‘[t]he case is described as part of the main body, so it is not possible for it to rotate with respect to the body.’” At trial, Kingston was found liable for willful infringement, resulting in a damages award of more than $7 million to Pavo. Kingston appealed.
The Federal Circuit affirmed. The Court explained that correction of a patent claim is appropriate “‘only if (1) correction is not subject to reasonable debate based on consideration of the claim language and the specification and (2) the prosecution history does not suggest a different interpretation of the claims.’” The Court noted that, here, the claim language uses the term “case” twice—the second time as part of the body about which it rotates, which is impossible. Moreover, the specification describes the cover, not the case, as pivoting relative to the main body, which includes the case. Finally, statements in the prosecution history were consistent with the second use of “cover” being a mistake. Accordingly, distinguishing this case from the facts in Chef America, Inc. v. Lamb-Weston, Inc., the Court held the district court properly corrected the claim. The Court also rejected Kingston’s separate challenge to the judgment of willful infringement and award of enhanced damages, holding “reliance on an obvious minor clerical error in the claim language is not a defense to willful infringement.”