Superior Fireplace Co. v. Majestic Products Co.
270 F.3d 1358 (2001)
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Rule of Law:
A certificate of correction under 35 U.S.C. § 255 cannot correct a mistake of 'minor character' if the correction broadens a patent claim. A broadening correction of a 'clerical or typographical' error is permissible only where the mistake and how it should be corrected are clearly evident from the intrinsic record, including the specification, drawings, and prosecution history.
Facts:
- Superior Fireplace Co. ('Superior') owns U.S. Patent No. 5,678,534 ('534 patent) for a gas fireplace technology.
- During the patent prosecution process, Superior submitted a proposed claim that originally recited a firebox with a singular 'rear wall'.
- Following a telephonic interview with Superior's representative to discuss prior art, a patent examiner issued an examiner's amendment that changed the claim language from 'rear wall' to 'rear walls'.
- The examiner's amendment explicitly reminded Superior that it could file its own amendment if the changes were unacceptable.
- Superior subsequently filed an amendment making over forty changes to the patent's specification, but it did not object to or seek to change the 'rear walls' term in the claim.
- The '534 patent officially issued on October 21, 1997, with the claim language containing the plural term 'rear walls'.
- After issuance, Superior submitted a 'Make-of-Record Letter' to note nine other errors in the patent, but this letter did not mention any error in the term 'rear walls'.
Procedural Posture:
- Superior Fireplace Co. sued Majestic Products Co. for patent infringement in the U.S. District Court for the Central District of California (a trial court).
- During the litigation, Superior obtained a certificate of correction from the U.S. Patent and Trademark Office (PTO) under 35 U.S.C. § 255, changing the term 'rear walls' to 'rear wall' in claim 1 of the patent.
- The parties filed cross-motions for summary judgment.
- The district court granted summary judgment for Majestic, ruling that the certificate of correction was invalid.
- Based on the original, uncorrected claim language, the district court found no infringement by Majestic's products.
- Superior, as the appellant, appealed the district court's judgment on the merits to the U.S. Court of Appeals for the Federal Circuit.
- Majestic, as the appellee, cross-appealed the district court's denial of its motion for attorney fees.
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Issue:
Does a certificate of correction issued under 35 U.S.C. § 255, which broadens the scope of a patent claim by changing 'rear walls' to 'rear wall', constitute a valid correction of a mistake of a 'clerical or typographical nature' or of 'minor character'?
Opinions:
Majority - Linn, Circuit Judge.
No, a certificate of correction that broadens a patent claim by changing 'rear walls' to 'rear wall' is not a valid correction under these circumstances. First, a mistake that broadens the scope of a patent claim is inherently significant and cannot be considered of 'minor character.' The scope of a patent claim is its essence, and any change that broadens it is a major alteration. Second, for a broadening correction to qualify as a 'clerical or typographical' error, the error and its appropriate correction must be clearly evident from the public record of the patent—the specification, drawings, and prosecution history. Here, the prosecution history suggested the change to 'rear walls' was an intentional amendment to overcome prior art, not an obvious mistake. Because the public could not discern from the record that 'rear walls' was an error that should be 'rear wall,' allowing the correction would undermine the public notice function of patents and circumvent the stricter requirements of the reissue statute, 35 U.S.C. § 251.
Dissent - Dyk, Circuit Judge,
Yes, the certificate of correction should be considered valid. The majority improperly reads an 'implicit, extra-textual requirement' into 35 U.S.C. § 255 that the error be apparent from the prosecution history. Congress included such a requirement in the adjacent § 254 (for PTO mistakes) but omitted it from § 255 (for applicant mistakes), indicating the omission was intentional. The patent's own written description, which refers to 'the firebox rear wall 15' in the singular, provides strong evidence that a single wall was intended and that 'rear walls' was a mistake. Furthermore, any public notice concerns are resolved by the rule that a certificate of correction only applies prospectively, meaning the public is protected from retroactive liability. The court should defer to the PTO's expertise in determining that a correctable typographical error occurred.
Analysis:
This decision significantly narrows the ability of patentees to correct errors that broaden claim scope using the relatively simple certificate of correction process under 35 U.S.C. § 255. By establishing that claim-broadening is never a 'minor' correction, the court creates a bright-line rule. Moreover, the requirement that a 'clerical or typographical' broadening error be 'clearly evident' from the intrinsic record prioritizes the public notice function of patents. This forces patentees with ambiguous or non-obvious broadening errors to use the more formal reissue process under § 251, which is subject to a two-year time limit and provides intervening rights to protect competitors who relied on the original claim scope.
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