Thursday, October 22, 2015

Error in Describing Chain of Priority, Addressed Via Certificate of Correction, Does Not Render Asserted Patents Invalid

The court denied defendant's motion to dismiss plaintiff's claims for infringement of five patents-in-suit due to errors in the chain of priority addressed with a certificate of correction. "[Defendant] moves to dismiss [plaintiff's] claims of infringement . . . on the ground that due to errors during the application process in describing the chain of priority for these patents, each is now invalid as a matter of law. . . . According to [defendant] . . . a certificate of correction under [35 U.S.C. § 255] cannot be used to correct a defective chain of priority in a continuation application. . . . While neither party cites any binding authority that squarely addresses this issue, I am persuaded that [plaintiff] has the better argument. [Defendant's] position is based on a hypertechnical reading of sections 120 and 255 that ignores longstanding PTO practice as well as the case law that exists concerning the interaction between the two statutes. . . . [Defendant] argues that section 255 cannot be used to fix section 120 mistakes because 'certificates of correction apply only to patents, not applications.' [Defendant] cites no authority for this argument, and I have not found any. . . . [T]he PTO has allowed patentees to use section 255 certificates of correction to correct section 120 priority chains since at least as early as 1976."

Word to Info, Inc. v. Google, Inc., 3-15-cv-03486 (CAND October 19, 2015, Order) (Orrick, J.)

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