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Southwest Software, Inc. v. Harlequin Inc. , No. 99-1213, 1214, 2000 WL 1335754 (Fed. Cir., Sept. 18, 2000).




Whether a certificate of correction issued by the PTO is effective in causes of action arising prior to the date on which the certificate was issued.


No. According to the correct statutory interpretation of 35 U.S.C. 254, a certificate of correction is only effective for causes of action that arise after the PTO has issued the certificate of correction.


Southwest Software, Inc. ("Southwest") is the assignee of U.S. Patent No. B1 5,170,257 (the "'257" patent) and U.S. Patent No. 5,245,443 (the "'443" patent), on methods and apparatuses for automatically calibrating "halftone output images" to enhance the quality of computer-printed images. Calibration ensures that the "gray values" requested by a computer program are identical to the "gray values" that are actually produced, thereby insuring that the printed image is identical to the image on the computer screen. Southwest sued Harlequin Inc., Harlequin Ltd., and ECRM Trust (collectively "Harlequin"), claiming that Harlequin's products ScriptWorks Version 3.3-Revision 6 (Revision 6) and ScriptWorks Version 3.3-Revision 7 (Revision 7) infringed the '257 patent and the '443 patent. Revision 6 contained a built-in calibration feature in its image processing software, while Revision 7 had "defeatured" the automatic selection feature in response to the onset of this litigation. Instead, the Revision 7 software required operators to manually select the proper calibration set.

The United States District Court for the Western District of Texas entered judgment upon a jury verdict finding that Revision 6 but not Revision 7 directly infringed Southwest's patents as well as inducing and contributing to infringement by others. The district court then denied Harlequin's motions for Judgment as a Matter of Law ("JMOL") in which Harlequin claimed that neither version of the Scriptworks software infringed claim 1 of the '257 patent and that the '257 patent was invalid. The district court did grant Harlequin's motion for JMOL, finding that claim 11 of the '257 patent and claim 10 of the '443 patent were not infringed.

Southwest cross-appealed the district court's grant of a JMOL. The Federal Circuit vacated the JMOL and remanded the issue of claim construction, citing the district court's failure to construe the relevant limitation on these claims.

Harlequin and ECRM appealed both of their denied motions for JMOL. The Federal Circuit ruled the district court's denial of JMOL on the issue of infringement by Revisions 6 and 7 was appropriate, but the lower court had erroneously denied a JMOL on the issue of the validity of the '257 patent. The Federal Circuit found that the '257 patent, as originally issued, lacked a Program Printout Appendix. Due to an error by the PTO, this Appendix had not been included in the final patent, leaving the patent potentially invalid for failure to meet the enabling requirement under 35 U.S.C. 112, para. 1 of describing the best mode of practicing the invention. To correct this error, the PTO later issued a certificate of correction pursuant to a request by Southwest under 35 U.S.C. 254. 254 provides that a patent including a certificate of correction will have the same legal effect "for causes thereafter arising" as if the originally issued patent had been issued in its corrected form. However, the PTO issued this certificate following Southwest's suit against Harlequin. The Federal Circuit noted that the question of when a certificate of correction takes effect with respect to a cause of action regarding the defected material was an issue of first impression. The Court construed the statutory language of 35 U.S.C. 254 to determine when certificates of correction should take effect.

The Federal Circuit held that material added by the certificate of correction could not be given effect in a lawsuit initiated prior to issue of the certificate because a certificate of correction is only effective in lawsuits that arise after the certificate has been issued. The Federal Circuit, therefore, remanded the issue of invalidity to the district court, with the instructions that the district court must determine if the '257 patent, in the absence of the Program Printout Appendix, is invalid for failing to satisfy the best mode and enabling requirements of 35 U.S.C. 112, para. 1.


Prepared by the liibulletin-patent Editorial Board.

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