CBT Flint Partners, LLC v. Return Path, Inc., No. 2010-1202, -1203 (Fed. Cir. Aug 10, 2011).
The district court granted the accused infringers’ motion for summary judgment of invalidity, holding the claim at issue indefinite under 35 U.S.C. § 112 ¶ 2. The district court also granted the accused infringers’ costs, including e-discovery costs, under 28 U.S.C. § 1920. The Federal Circuit reversed the district court’s ruling on indefiniteness, and vacated its ruling on costs.
The patent at issue claimed a method and system for charging a fee for sending unsolicited messages to email recipients. The relevant portion of the claim reads “… the apparatus comprising: a computer in communication with a network, the computer being programmed to detect analyze the electronic mail communication sent by the sending party” (emphasis added). The district court agreed that this claim contained a drafting error and determined there were at least three reasonable corrections to fix it. The district court held that in consideration of the claim language and specification, the appropriate correction was subject to reasonable debate; therefore, it was not authorized to correct the claim language.
On appeal, the Federal Circuit reversed the district court, ruling that because the claim contained an obvious and correctable error, and the construction was not subject to reasonable debate, it should not be held indefinite. The court held that the district court failed to consider the possible corrections as one skilled in the art and that in light of the claim and specification, “detection and analysis” would be encompassed in any of the three possible corrections.
A copy of the opinion can be found here.