In CBT Flint Partners, LLC v. Return Path, Inc., No. 2010-1202, -1203 (Fed. Cir. August 10, 2011), CBT appealed a district court’s judgment that a claim was invalid as indefinite. The claim was for an apparatus comprising a network computer “programmed to detect analyze the electronic mail communication sent by the sending party to determine whether or not the sending party is an authorized sending party or an unauthorized sending party.” (Authorized senders were those who had agreed to pay to send spam over an Internet Service Provider’s network.) The district court recognized the error as an “obvious” claim drafting error that the Supreme Court, in I.T.S. Rubber Co. v. Essex Rubber Co., 272 U.S. 429, 442 (1926), had long ago held was in a court’s power to correct. However, there were three potential corrections: delete “detect” (“programmed to detect analyze the electronic mail communication”), delete “analyze” (“programmed to detect analyze the electronic mail communication”), or insert “and” between the two (“programmed to detect and analyze the electronic mail communication”). The district court believed that the Federal Circuit decision in Novo Industries L.P. v. Micro Molds Corp., 350 F.3d 1348 (Fed. Cir. 2003) forbade it from correcting the error because choosing between the three options required guesswork as to which the drafter had intended.
The Federal Circuit reversed. Whether “analyze” or “detect” was omitted or “and” inserted between the two, the claim’s meaning was unchanged. Per the Federal Circuit, the following step “to determine” already required the computer to both detect and analyze. In other words, the detect analyze language was superfluous, and CBT could have avoided the issue by careful claim drafting. Claim 13, a plump 117 words:
13. An apparatus for determining whether a sending party sending an electronic mail communication directed to an intended receiving party is an authorized sending party, the apparatus comprising:
a computer in communication with a network, the computer being programmed to detect analyze the electronic mail communication sent by the sending party to determine whether or not the sending party is an authorized sending party or an unauthorized sending party, and wherein authorized sending parties are parties for whom an agreement to pay an advertising fee in return for allowing an electronic mail communication sent by the sending party to be forwarded over the network to an electronic mail address associated with the intended receiving party has been made.
could have been a svelte 28 words:
13. An apparatus comprising a computer programmed to determine whether a party has agreed to pay an advertising fee to have an electronic mail communication forwarded over a network.
The patentee paid the cost for those extra 89 words during litigation.