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ARTICLE · 01 JULY 2005

A Patent Office Printing Error can Invalidate a Patent

McDermott Will & Emery
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The U.S. Court of Appeals for the Federal Circuit recently affirmed a judgment of invalidity due to claim indefiniteness where necessary claim language was omitted during the printing of the patent by the U.S. Patent and Trademark Office (USPTO).

United StatesIntellectual Property
Elaine Heal
Elaine Heal
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The U.S. Court of Appeals for the Federal Circuit recently affirmed a judgment of invalidity due to claim indefiniteness where necessary claim language was omitted during the printing of the patent by the U.S. Patent and Trademark Office (USPTO). Group One Ltd. v. Hallmark Cards, Inc, Case Nos. 04-1296, -1297 (Fed. Cir. May 16, 2005) (Whipple, C.J.).

The two patents at issue are directed to a ribbon curling device and method of curling ribbon. In the claims of one of the patents at issue, language was omitted as a result of a patent office error, rendering the claims indefinite as printed. While the prosecution history disclosed that the missing language was required as a condition for allowance, the specific missing language could not be determined from reading the patent. The plaintiff obtained a jury award of about $9 million. Subsequently, the district court found that one of the patents was invalid for indefiniteness due to the USPTO printing error and the district court could

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