Digest of H-W Tech., L.C. v. Overstock.com, Inc.

Case: H-W Tech., L.C. v. Overstock.com, Inc., No. 2014-1054, -1055 (Fed. Cir. July 11, 2014) (precedential). On appeal from N.D. Tex. Before Prost and O’Malley.

Procedural Posture: Plaintiff appealed district court order granting summary judgment in favor of defendant. CAFC affirmed.

  • Claim Construction: The district court did not err in construing the meaning of “user of said phone” and “said user” as “a consumer operating the IP Phone” because the construction is supported by the claims, the specification, and the extrinsic evidence.
  • Correction of Claim: The district court did not err in concluding that plaintiff could not assert the original or corrected versions of claim 9. The printed patent omitted a material limitation, and plaintiff filed suit before the issuance of the certificate of correction. The district court did not err in refusing to correct the claim because the error was not evident on the face of the patent and evidence of error in the prosecution history alone is not sufficient for the district court to make the correction. The district court was also correct in refusing to consider the certificate of correction because it is only effective for causes of action arising after its issuance. Plaintiff cannot assert the uncorrected version of the claim when the material omission is not evident on the face of the patent.
  • Invalidity: The CAFC struck the district court’s conclusion of claim invalidity. As the corrected claim 9 has not yet been litigated, it has not been held invalid.
  • Indefiniteness: The district court did not err in holding claim 17 invalid for indefiniteness. Plaintiff conceded that an affirmation of district court’s claim construction would mean that claim 17 is indefinite. The CAFC affirmed the district court’s holding that that the claim is indefinite for combining two classes of invention, thus making it unclear when infringement occurs.

Hui Li