In my first post about Pavo Solutions v. Kingston Technology a few weeks ago, I noted that the Federal Circuit rewrote claim language in the asserted patent by changing the claim element "for pivoting" from case to cover. The claim element in question read as follows:
...at least one hinge hole receiving the hinge protuberance on the case for pivoting the [[case/cover]] with respect to the flash memory main body...
So instead of the claim requiring the case to pivot per its plain language, the Federal Circuit rewrote the claim to require the cover to pivot.
Not only did the Federal Circuit affirm infringement based on the rewritten claim language, but it also affirmed that defendant Kingston willfully infringed the patent. Kingston argued that “it could not have formed the requisite intent to support a willfulness finding because it did not infringe the claims as originally written and because it could not have anticipated that a court would later correct the claims.” (Emphasis added). But its argument fell on deaf appellate ears.
The Federal Circuit held that “reliance on an obvious minor clerical error in the claim language is not a defense to willful infringement,” reasoning that “judicial correction does not re-make the claim; rather, it gives effect to its obvious meaning. [Citation omitted]. An obvious minor clerical error, by definition, does not mask that meaning, so Kingston cannot hide behind the error to escape the jury’s verdict.”
But does this reasoning and conclusion hold up under scrutiny?
In its decision, the Federal Circuit referred one time to the Supreme Court’s decision in Halo Elecs., Inc. v. Pulse Elecs., Inc., 579 U.S. 93, 105 (2016), citing Halo for the proposition that “culpability is generally measured against the knowledge of the actor at the time of the challenged conduct.” Indeed, the focus in Halo was on the patent infringer’s culpable behavior. But punishment based on willful infringement was not draconian; it was reserved for egregious misconduct:
Section 284 allows district courts to punish the full range of culpable behavior. Yet none of this is to say that enhanced damages must follow a finding of egregious misconduct. As with any exercise of discretion, courts should continue to take into account the particular circumstances of each case in deciding whether to award damages, and in what amount. Section 284 permits district courts to exercise their discretion in a manner free from the inelastic constraints of the Seagate test. Consistent with nearly two centuries of enhanced damages under patent law, however, such punishment should generally be reserved for egregious cases typified by willful misconduct.
Were Kingston’s actions really “egregious misconduct” in this case?
Interestingly, when discussing Safeco Ins. Co. of America v. Burr, 551 U. S. 47 (2007), the Halo court stated that “[n]othing in Safeco suggests that we should look to facts that the defendant neither knew nor had reason to know at the time he acted [footnote omitted].” Halo specifically noted that, in Safeco, “the defendant had not recklessly violated the Fair Credit Reporting Act because the defendant’s interpretation had a foundation in the statutory text and the defendant lacked the benefit of guidance from the courts of appeals or the Federal Trade Commission that might have warned it away from the view it took [internal quotations omitted].”
Couldn’t the same be said for Kingston here? Remember Kingston’s argument: “it could not have formed the requisite intent to support a willfulness finding because it did not infringe the claims as originally written and because it could not have anticipated that a court would later correct the claims.”
Couldn’t it be said that “[defendant Kingston] had not recklessly violated the [patent claim] because the defendant’s interpretation had a foundation in the [claim language] and the defendant lacked the benefit of guidance from the courts … that might have warned it away from the view it took,” so nothing “suggests that we should look to facts that the defendant neither knew nor had reason to know at the time he acted”?
To be sure, a counterargument is that Kingston had “reason to know” because the error in claim language was obvious. But given that “the name of the game is the claim” (Former Federal Circuit Chief Judge Giles Rich), and given claim construction canons cautioning against importing limitations from the file history and specification into the claims, can it really be said that Kingston had “reason to know” that the claim language was erroneous and would necessarily be rewritten?
Another counterargument is that the Federal Circuit presumably reviewed the case under an abuse of discretion standard, so affirmance of the district court’s decision is not particularly noteworthy. Despite this review standard, however, isn’t the apparent breadth of the Federal Circuit’s holding (“reliance on an obvious minor clerical error in the claim language is not a defense to willful infringement”) problematic? How is one truly supposed to “know or have reason to know” when claim language will be rewritten because it contains an “obvious error,” as opposed to when claim language will not be rewritten because it would improperly import limitations into the claims?
Hence, obtaining a crystal ball (or at least a Magic 8 ball for those in the U.S.) may be a good first step before sitting down to write a patent opinion going forward.