296, 78 L.Ed.2d 17 (1983), that [w]here Congress includes particular language in one section of a statute but omits it in another section of the same Act, it is generally presumed that Congress acts intentionally and purposely in the disparate inclusion or exclusion. See also Duncan v. Walker, 533 U.S. 167, 121 S.Ct. One of these limitations contains a mistake, but the claim does not indicate which is mistaken. It must be remembered that at the time the complaint was filed, the claims included the rear walls limitation and no request had been filed with the PTO to correct the claim under either 254 or 255. Indeed, it is perfectly clear that Congress did not intend to require in section 255 that mistakes be evident from the prosecution history. at 1010. The district court, accordingly, did not need to address any additional requirements of 255, such as whether the alleged mistake was not the fault of the Patent and Trademark Office and whether a showing ha[d] been made that such mistake occurred in good faith. 35 U.S.C. The parties also discuss Brandt, Inc. v. Crane, 558 F.Supp. Superior draws attention to the district court's statement that the PTO must have concluded that the error was of a minor character. Opinion, 92 F.Supp.2d at 1009-10. Superior then argues that the questionnaire shows that statement to be false. We now review the district court's summary judgment decision that the alleged rear walls mistake was not of a clerical or typographical nature. Co., 92 F.Supp.2d 1001 (C.D.Cal.2000) (judgment). According to Superior, prior to the March 6 interview the examiner edited the claim in question and faxed to Superior the edited claim. Given the importance of this APA issue and its prominence in light of the Supreme Court's decision in Dickinson v. Zurko, 527 U.S. 150, 119 S.Ct. 2478, 2482, 150 L.Ed.2d 632 (2001) (stating that we interpret the words in their context and with a view to their place in the overall statutory scheme) (internal quotations omitted); Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 1383, 49 USPQ2d 1144, 1147 (Fed.Cir.1998) (statutory interpretation is a holistic endeavor that requires consideration of a statutory scheme in its entirety). 254, which applies only to the correction of mistakes made by the PTO. Thus, the prosecution history supports the view that the change from rear wall to rear walls was inadvertent and was a clerical or typographical mistake.3 Certainly, Majestic has not presented clear and convincing evidence that this was not a mistake, much less clear and convincing evidence that the PTO made an error in issuing the certificate of correction. Superior concludes therefrom that 255 should not be interpreted to require the correction of the mistake to be evident from the specification, drawings, and prosecution history. It was not in the prosecution history, and the facsimile itself does not contain any indication of who prepared it or who made the hand written notes on it. Vectra Fitness, 162 F.3d at 1384, 49 USPQ2d at 1148 (Moreover, an additional consideration also weighs against the interpretation of the statutory scheme[, involving 251 and 253,] for which Vectra argues. Even under the majority's statutory interpretation, there is ample evidence in the patent and its prosecution history here to support the conclusion that such a mistake occurred, and certainly no clear and convincing evidence that it did not. Thus, the requested correction of the alleged mistake was not apparent from the specification, drawings, and prosecution history. 2120, 2124-25, 150 L.Ed.2d 251 (2001). Crating & Packing, Inc., 731 F.2d 818, 829-30, 221 USPQ 568, 576-77 (Fed.Cir.1984) (discussing the intervening rights of 252). This claim initially recited rear wall in the firebox limitation. 535, 43 Stat. The first question and answer affirm that the change requested would not constitute new matter or require reexamination. The second question and answer affirm that the change requested would not materially affect the scope or meaning of the claims allowed. The third question and answer affirm that the patent should read as shown in the certificate of correction.. Because that limitation refers to rear wall in the singular, with the definite article the, it does not agree with the earlier reference to rear walls in the plural. We review a district court's grant of summary judgment de novo, reapplying the standard applicable at the district court. Superior is challenging the exclusion of two documents. Regarding the second branch, allowing correction of a mistake of minor character, the district court followed the Third Circuit in holding as a matter of law that the statute does not authorize a broadening of the claims. Id. Majestic cross appeals the finding that this was not an exceptional case and the decision not to award attorney fees. 282 (Supp. at 1011. Accordingly, the district court determined that there was no infringement under the DOE. Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1574, 37 USPQ2d 1626, 1631 (Fed.Cir.1996) (When considering issues which are not unique to our jurisdiction we defer to the law of the regional circuit.). The district court refused to admit the facsimile for lack of foundation. at 1010. The court's analysis of this second branch involved exclusively legal determinations that were reviewed without deference. Superior also seeks review of the district court's: (1) exclusion of a declaration by Superior's patent attorney and a facsimile alleged to be part of the prosecution history of the 534 patent; and (2) denial of a motion to amend judgment or for reconsideration based on the allegedly new evidence of an examiner's questionnaire. This might be explained by the court's determination that the Administrative Procedure Act (APA) applied. 82-1979, at 27 (1952), reprinted in U.S.C.C.A.N. 255 and 37 C.F.R. 251 and 252. This indicates that simply making corrected claims applicable only to after-arising causes of action is in itself insufficient to provide the requisite public notice. I agree with the majority that when interpreting a statute we should interpret the words in their context and with a view to their place in the overall statutory scheme Tyler v. Cain, 533 U.S. 656, 121 S.Ct. A reader of the patent might well conclude, given the structural similarity described above, that sheet 11 and rear wall 15 together correspond to the rear walls limitation. 255, the district court followed the PTO's own precedent and required that, [a]bsent very unique and unusual circumstances, a clerical or typographical error should be manifest from the contents of the file of the patent sought to be corrected. Opinion, 92 F.Supp.2d at 1008 (citing In re Arnott, 19 USPQ2d 1049, 1053, 1991 WL 326548 (Comm'r Patents & Trademarks 1991)). We address these in turn. As stated earlier, the district court denied the motion, stating that even if obtained with due diligence, [the questionnaire] does not add any new or different information from what was already known from the Certificate of Correction. Denial of Reconsideration, slip op. The district court found, and it is not disputed on appeal, that both parties agreed that the accused devices do not contain more than one rear wall and that there can be no literal infringement if the claim is construed to require two or more rear walls. As we recently said in Winbond Electronics Corp. v. International Trade Commission, 262 F.3d 1363, 1371, 60 USPQ2d 1029, 1034 (Fed.Cir.2001), [t]he Patent Act accords each patent a presumption of validity A Certificate of Correction extends that presumption to the corrected document. While the majority purports to apply this standard, in fact it pays little or no actual deference to the PTO's determination that a qualifying clerical or typographical mistake occurred. Second, 251 precludes a patentee from applying for a broadening reissue more than two years after a patent has issued. On the record in this case, the district court did not clearly err in finding that this was not an exceptional case and did not abuse its discretion in denying Majestic's motion for attorneys' fees. Upon viewing such a misspelling, there is no doubt that a mistake, indeed a clerical or typographical mistake, has occurred. However, we vacate and remand, for proceedings consistent with this opinion, the district court's finding that this is not an exceptional case and its decision not to award Majestic attorney fees. Cf. 44-45. Regarding placement, sheet 11 is placed toward the rear of the firebox, being spaced rearwardly from the burner housing 2. 534 patent, Figure 2 and col. 3, ll. 50-62 and col. 4, ll. The parties dispute whether a 255 clerical or typographical mistake may ever encompass a mistake that, upon correction, would broaden a claim. Those cases hardly suggest that we should read entirely new clauses into a statute because we think that that approach better fits the overall design. V 1999) (A patent shall be presumed valid.); Am. We believe that 251 and 252 are of particular relevance in the statutory scheme, since they deal explicitly with post-issuance amendments that may broaden claim scope. Our task specifically concerns whether a mistake, the correction of which would broaden a claim, can be corrected under 255 and, if so, under what conditions. Minor is commonly defined as lesser in importance [or] seriousness The American Heritage College Dictionary 869 (3d ed.1993). Consequently, the 534 patent issued with the term rear walls on October 21, 1997. After the patent issued, Superior identified another nine errors and, on August 28, 1998, submitted a Make-of-Record Letter noting these errors. For the reasons articulated below, we find no abuse of discretion. In such circumstances, given the highly deferential abuse-of-discretion standard of review under which we review the district court's finding regarding attorneys' fees, a remand is quite unnecessary. First, as shown in Figure 2 from the 534 patent, included below, a reflective sheet 11 is provided behind the flame 8 and artificial log F, thus increasing the apparent depth of the fireplace for a better visual appearance. For the following two reasons, we hold that the district court did not abuse its discretion in finding that the declaration was inadmissible hearsay. The Make-of-Record Letter did not list any amendments to the claim term rear walls.. 28 U.S.C. We are mindful that our interpretation of 255 must not frustrate Congress' objectives in 251 and 252. The same presumption applies to certificates of correction. The district court, without oral argument and without issuing an opinion, concluded, [a]fter careful consideration, that the instant case is not an exceptional case as contemplated by the statute, and denied the motion. This is evident from the district court's holding that the corrected claim is null and void for the purposes of this case and all future cases, subject to the present appeal. Gas fireplaces are generally considered to be attractive and desirable commercial products. The district court presumed that the PTO had come to these conclusions and proceeded to find that such conclusions were in error. The phrase clerical or typographical nature is not explicitly defined in 255, so we first look to the plain meaning and common understanding of the phrase. Opinion, 92 F.Supp.2d at 1009. The district court further found that Superior had not offered one shred of evidence, ha[d] cited to no authority, presented no facts, and ha[d] made virtually no argument to support recovery under the doctrine of equivalents (DOE). The issue on which the majority invalidates the certificate of correction is an issue of first impression, and is certainly a close one (even if one assumes that the majority is correct). 252. This document was proffered as an exhibit to a declaration of Nelson, an attorney at the same firm as Marantidis. It seems highly unlikely that Congress intended to require that the prosecution history disclose the applicant's own mistakes. 3.District Court's Section 255 Decision. Such a broadening correction would leave the public without effective notice, without the constraint of a two-year time bar, and without the hope of intervening rights. 2505, 91 L.Ed.2d 202 (1986). 2394, 2420. The subjective intent of the inventor when he used a particular term is of little or no probative weight in determining the scope of a claim (except as documented in the prosecution history). Markman v. Westview Instruments, Inc., 52 F.3d 967, 985, 34 USPQ2d 1321, 1334 (Fed.Cir.1995). We need not address that question, however, because, as explained later in this opinion, under any of the standards, we would reach the same result and would affirm the district court's decision. But the examiner's amendment also added, at the same time, to the same claim, the claim limitation a rear room air plenum between the rear wall of the firebox 534 patent, col. 6, ll. We also affirm the district court's evidentiary preclusions and denial of Superior's motion to amend judgment or for reconsideration. We hold that a mistake in a claim the correction of which broadens the scope of coverage of that claim and is not clearly evident from the specification, drawings, and prosecution history is not a mistake of a clerical or typographical nature subject to correction under 35 U.S.C. Superior appeals the invalidity holding, the evidentiary refusals, and the denial of its motion to amend judgment or for reconsideration. I agree with the majority that the PTO's action in granting the certificate of correction is entitled to a presumption of validity that must be overcome with clear and convincing evidence. 301-307, or issued after a reissue pursuant to 35 U.S.C. Majestic submitted a motion for attorney fees under 35 U.S.C. It would be inconsistent with that objective to interpret 255 to allow a patentee to broaden a claim due to the correction of a clerical or typographical mistake that the public could not discern from the public file and for which the public therefore had no effective notice. Superior Fireplace Co. v. Majestic Prods. 11-24. This interpretation is further reinforced by the fact that there is no limitation in the claims of the 534 patent which clearly corresponds to the sheet 11; the only possible corresponding limitation is the rear walls limitation of uncorrected claim 1. This result is indistinguishable, for practical purposes, from the fundamental effect of a successful direct validity challenge to a claim. at 2482 (we interpret the words in their context and with a view to their place in the overall statutory scheme) (internal quotations omitted); Fanning, Phillips & Molnar, 160 F.3d at 721 (We also consider not only the bare meaning of the word[s] but also [their] placement and purpose in the statutory scheme.) (internal quotations omitted). Because Southwest requires that the certificate of correction be treated as valid only for acts occurring after the certificate issues, the public's reliance on the public record is protected, regardless of whether the mistake is evident in the original prosecution history. The dispute in this appeal focuses on the emphasized term rear walls, in the firebox limitation above. See Vectra Fitness, 162 F.3d at 1384, 49 USPQ2d at 1148 (interpreting 253 in light of 251, so as to ensure that the notice function of 251 was not frustrated, stating that after the two-year window for broadening reissues, the public should be able to rely on the scope of non-disclaimed claims). The Court concluded in Russello v. United States, 464 U.S. 16, 23, 104 S.Ct. SUPERIOR FIREPLACE COMPANY, Plaintiff-Appellant, v. The MAJESTIC PRODUCTS COMPANY and Vermont Castings, Inc., Defendants-Cross Appellants. I disagree with the majority that the district court should be required to make findings and establish a record to allow our review of its denial of defendant's motion for attorneys' fees. That inference is buttressed by the fact that Superior did not object to the change, even though the examiner's amendment itself reminded Superior of its right to do so. The presumption of validity and the clear and convincing evidence standard were crafted, in part, because we recognized that we cannot know exactly what occurred during prosecution, and we appropriately assume that the PTO has done its job properly, absent clear and convincing evidence to the contrary. From this, the majority draws an inference that the amendment was made in a deliberate attempt by the applicant to overcome prior art and was not a clerical or typographical error. Co. v. Allen Group, Inc., 917 F.2d 538, 543, 16 USPQ2d 1622, 1626 (Fed.Cir.1990) (providing a similar list). 3-4 (uncorrected claim 1). 756, 78 L.Ed.2d 549 (1984) (Courts are not authorized to rewrite a statute because they might deem its effects susceptible of improvement.). Applied Materials, Inc. v. Advanced Semiconductor Materials Am., Inc., 98 F.3d 1563, 1569, 40 USPQ2d 1481, 1485 (Fed.Cir.1996) (The presumption of validity is based on the presumption of administrative correctness of actions of the agency charged with examination of patentability.), cert. The public is entitled to rely upon the public record of a patent in determining the scope of the patent's claims.). The parties also dispute whether a 255 clerical or typographical mistake, the correction of which would broaden a claim, must be evident from the public record. On the other hand, the interpretation that there is only one rear wall is suggested by the fact that the written description defines reference numeral 11 in Figure 2 as a reflective sheet and defines reference numeral 15 as a rear wall of the firebox. at 1008-09. Second, we reject Superior's argument that the statement falls under the exception for statements against interest. In conclusion, the claim limitation in question is itself syntactically correct and on its face raises no question of a mistake. 5,678,534 (534 patent) is invalid and that the uncorrected 534 patent is not infringed by Majestic Products Co. and Vermont Castings, Inc. (collectively, Majestic). Section 254 is, of course, part of the statutory context we must consider in interpreting 255. As explained above, we find the clear and convincing standard apposite to certificates correcting the language of a claim. The questionnaire is a form, and the substantive content consists of six boxes that are checked, three indicating questions requiring a response from an examiner, and three more indicating the yes/no answers provided by the examiner.
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