United States Court of Appeals
for the Federal Circuit
__________________________
CBT FLINT PARTNERS, LLC,
Plaintiff-Appellant,
v.
RETURN PATH, INC.,
Defendant-Cross Appellant,
and
CISCO IRONPORT SYSTEMS, LLC,
Defendant-Cross Appellant.
__________________________
2010-1202, -1203
__________________________
Appeal from the United States District Court for the
Northern District of Georgia in Case No. 07-CV-1822,
Judge Thomas W. Thrash, Jr.
____________________________
Decided: August 10, 2011
____________________________
DARYL L. JOSEFFER, King & Spalding LLP, of Wash-
ington, DC, argued for plaintiff-appellant. With him on
the brief were BRUCE W. BABER, ALAN SHANE NICHOLS
and NATASHA H. MOFFITT, of Atlanta, Georgia.
LOUIS NORWOOD JAMESON, Duane Morris, LLP, of At-
lanta, Georgia, argued for defendants-cross appellants.
CBT FLINT v. RETURN PATH 2
With him on the brief were MATTHEW C. GAUDET and
LEAH J. POYNTER. Of counsel on the brief was KENNETH
L. BRESSLER, Blank Rome LLP, of New York, New York.
__________________________
Before LOURIE, BRYSON, and LINN, Circuit Judges.
LOURIE, Circuit Judge.
CBT Flint Partners, LLC (“CBT”) appeals from the fi-
nal judgment of the United States District Court for the
Northern District of Georgia. The court granted summary
judgment of invalidity of claim 13 of U.S. Patent
6,587,550 (“the ’550 patent”), holding it indefinite under
35 U.S.C. § 112, ¶ 2. CBT Flint Partners, LLC. v. Return
Path, Inc., No. 1:07-CV-1822, Dkt. No. 203 (N.D. Ga. July
11, 2008) (“Summary Judgment Op.”). The district court
then denied defendants Cisco Ironport Systems, LLC and
Return Path, Inc.’s (“Cisco’s”) request for attorney fees but
awarded Cisco costs, including e-discovery costs, under 28
U.S.C. § 1920. CBT also appeals the district court’s
decision to award e-discovery costs to Cisco, and Cisco
cross-appeals the district court’s denial of its request for
attorney fees. Because we conclude that the district court
had authority to correct the supposed error found in claim
13 of the ’550 patent, we reverse the district court’s sum-
mary judgment of invalidity. We construe that claim
according to its clear and apparent meaning, and remand
to the district court for further proceedings. We also
vacate the district court’s orders on costs and deny the
cross-appeal.
BACKGROUND
CBT owns the ’550 patent as well as U.S. Patent
6,192,114 (the “’114 patent”), both relating to methods
and systems for charging a fee for sending unsolicited and
unwanted e-mail, generally known as “spam,” to e-mail
3 CBT FLINT v. RETURN PATH
recipients. Figure 1 of the ’550 patent illustrates a
network on which the patented system may be employed.
In the preferred embodiment, the invention is imple-
mented as part of the Internet Service Provider (“ISP”).
When a sending party (1) sends a spam message to an
intended receiving party (8), the patented system in the
ISP (5) determines whether the sender of the e-mail is an
authorized sending party, i.e., someone who has agreed to
pay a fee in return for allowing its spam e-mail to be
forwarded over the network, and, if authorized, will
forward the spam e-mail to the receiving party. On the
other hand, if the sending party is not an authorized
party, the system sends a message to the sending party
with an option to pay a fee and have the spam message
forwarded to the recipient. Claim 13 of the ’550 patent,
the only claim at issue in this appeal, is reproduced below:
13. An apparatus for determining whether a
sending party sending an electronic mail commu-
nication directed to an intended receiving party is
an authorized sending party, the apparatus com-
prising:
a computer in communication with a network, the
computer being programmed to detect analyze the
CBT FLINT v. RETURN PATH 4
electronic mail communication sent by the send-
ing party to determine whether or not the sending
party is an authorized sending party or an unau-
thorized sending party, and wherein authorized
sending parties are parties for whom an agree-
ment to pay an advertising fee in return for allow-
ing an electronic mail communication sent by the
sending party to be forwarded over the network to
an electronic mail address associated with the in-
tended receiving party has been made.
’550 patent claim 13 (emphasis added).
In August 2007, CBT sued Cisco and Return Path in
the Northern District of Georgia, alleging infringement of
the ’550 and ’114 patents by use of their “Bonded Sender”
system. The accused system was developed by Cisco, but
later sold to Return Path. CBT asserted ten claims of the
’114 patent and claim 13 of the ’550 patent. The accused
system analyzes each incoming e-mail message to deter-
mine whether the e-mail came from an authorized com-
puter, and, if so, forwards it. The accused system does not
have any mechanism to allow e-mail from unauthorized
computers to be forwarded to the recipient if the unau-
thorized sending party is willing to pay a fee.
The court issued a claim construction order on July
10, 2008, CBT Flint Partners, LLC. v. Return Path, Inc.,
No. 1:07-CV-1822, Dkt. No. 202 (N.D. Ga. July 10, 2008),
and the next day, it granted summary judgment of inva-
lidity of claim 13 of the ’550 patent. The district court
agreed with the parties that claim 13 contained a “draft-
ing error” where the claim recites “the computer being
programmed to detect analyze the electronic mail commu-
nication.” Summary Judgment Op. at 3. The court
determined that there were at least three reasonable and
possible corrections to rectify that drafting error: (1)
5 CBT FLINT v. RETURN PATH
delete the word “detect,” (2) delete the word “analyze,” or
(3) add the word “and” between the words “detect” and
“analyze.” Id. at 4. The court held that on consideration
of the claim language and specification, the appropriate
correction is subject to reasonable debate. Id. It noted
that one of the inventors, who had also prosecuted the
’550 patent application at the United States Patent and
Trademark Office (“PTO”), himself testified that he could
have meant to draft the claim in any one of the three
ways listed. Id. The district court therefore concluded
that, under our holding in Novo Industries L.P. v. Micro
Molds Corp., 350 F.3d 1348, 1354 (Fed. Cir. 2003), it was
not authorized to correct the so-called drafting error in
claim 13, thereby rendering it invalid for indefiniteness.
Id. at 5.
Following the court’s claim construction, the parties
stipulated to noninfringement of all asserted claims of the
’114 patent, and the court entered final judgment based
on the parties’ stipulation as well as its finding of invalid-
ity of claim 13 of the ’550 patent. CBT Flint Partners,
LLC. v. Return Path, Inc., No. 1:07-CV-1822, Dkt. No. 219
(N.D. Ga. Oct. 8, 2008).
Cisco moved for a finding of an exceptional case and
an award of attorney fees. Cisco also submitted its bill of
costs. In December 2008, the court awarded Cisco costs,
including e-discovery costs, but denied Cisco’s motion for
declaration of an exceptional case and its request for
attorney fees. CBT Flint Partners, LLC. v. Return Path,
Inc., No. 1:07-CV-1822, Dkt. No. 258 (N.D. Ga. Dec. 30,
2009).
In denying Cisco’s motion for a ruling that this was an
exceptional case, the district court held that although
CBT had exercised poor legal judgment in pursuing the
action, there was no clear and convincing evidence that
CBT FLINT v. RETURN PATH 6
the pre-filing investigation “was so pathetic as [to] justify
an inference of [subjective] bad faith.” Id. at 6. It also
noted instances of CBT’s litigation misconduct, for which
the court had previously sanctioned CBT, and found
CBT’s claim to be “objectively baseless.” Id. at 8-9.
However, the court held that CBT’s actions had only
demonstrated “stubborn recklessness” and not the subjec-
tive bad faith that the district court believed was required
under our case law for a finding of an exceptional case.
Id. at 8-9 (citing Brooks Furniture Mfg., lnc. v. Dutailier
Int’l, Inc., 393 F.3d 1378, 1381 (Fed. Cir. 2005)).
The district court granted Cisco costs under 28 U.S.C.
§ 1920, including e-discovery costs related to collecting,
searching, identifying, and producing electronic docu-
ments from IronPort’s computers in response to CBT’s
discovery requests. It determined that those services “are
the 21st Century equivalent of making copies,” and consti-
tute recoverable costs. Id. at 11.
CBT now appeals the district court’s summary judg-
ment of invalidity of claim 13 of the ’550 patent and the
court’s award of costs to Cisco. It does not appeal the
court’s claim construction of the ’114 patent that resulted
in the stipulated judgment of noninfringement of that
patent. Cisco cross-appeals the district court’s denial of
its motion for designation as an exceptional case and
attorney fees. We have jurisdiction pursuant to
28 U.S.C. § 1295(a)(1).
DISCUSSION
We review de novo the district court’s grant of sum-
mary judgment, drawing all reasonable inferences in
favor of the nonmovant. Anderson v. Liberty Lobby, Inc.,
477 U.S. 242, 255 (1986). Summary judgment is appro-
priate “if the pleadings, the discovery and disclosure
materials on file, and any affidavits show that there is no
7 CBT FLINT v. RETURN PATH
genuine issue as to any material fact and that the movant
is entitled to judgment as a matter of law.” Fed. R. Civ. P.
56(c).
CBT argues that the district court focused on the
wrong question regarding indefiniteness in determining
whether there are multiple reasonable corrections that
can be made to the claim. Instead, CBT argues, the
question that determines indefiniteness is whether the
claim would have the same meaning under all reasonable
formulations, such that the public was on clear notice of
the claim’s scope. CBT contends that the meaning and
scope of claim 13 remains the same regardless which
correction is adopted. It contends that all three possible
corrections require the system to “detect and analyze” an
e-mail so as to “determine whether or not the sending
party is an authorized sending party.” And even if the
district court’s approach was correct, CBT continues,
there is only one reasonable correction in the context of
the claim and specification, viz., the addition of the word
“and” between the words “detect” and “analyze.” Accord-
ing to CBT, that is so because both detection and analysis
of an e-mail are necessary “to determine whether or not
the sending party is an authorized sending party or an
unauthorized sending party.” CBT further argues that
the district court erred in relying primarily on inventor
testimony to invalidate an issued claim—a practice that,
according to CBT, this court has previously rejected.
Cisco responds that the district court correctly con-
cluded that under Novo Industries, it lacked statutory
authority to correct an error in claim 13, given that at
least three possible corrections seemed reasonable. It
argues that our holding in that case makes it clear that if
there is a debate about the correction, then only the PTO
can make that change. Cisco contends that CBT’s incon-
sistent arguments on appeal—that one correction is more
CBT FLINT v. RETURN PATH 8
reasonable than the other two, while all three have the
same meaning—demonstrate that multiple reasonable
corrections are possible and that the court properly re-
jected CBT’s invitation to randomly select one of the
three. According to Cisco, claim construction must take
place only after any correction of the claim, and the
district court did not have the authority to make such a
correction here. Thus, Cisco contends, it would be inap-
propriate for a court to construe claim scope in determin-
ing an appropriate correction. Even if the court were
entitled to look to claim scope, Cisco argues, a change in
language necessarily results in a different claim scope;
each of the three possible corrections covers distinct
subject matter, thereby barring the district court and this
court from selecting any one correction over the other two.
We agree with CBT that claim 13 of the ’550 patent is
not indefinite, and we do so ultimately by holding that
there is an obvious and correctable error in the claim, the
construction of which is not subject to reasonable debate.
Claim construction is an issue of law, Markman v. West-
view Instruments, Inc., 52 F.3d 967, 977-78 (Fed. Cir.
1995) (en banc), which we review de novo, Cybor Corp. v.
FAS Techs., Inc., 138 F.3d 1448, 1454-55 (Fed. Cir. 1998)
(en banc). Although the claims of a patent define the
invention that the patentee is entitled to exclude others
from practicing, we must read the claims “in view of the
specification, of which they are a part.” Phillips v. AWH
Corp., 415 F.3d 1303, 1312-15 (Fed. Cir. 2005) (en banc).
If the court determines that a claim is not “amenable to
construction,” then the claim is invalid as indefinite under
35 U.S.C. § 112, ¶ 2. Honeywell Int’l, Inc. v. Int’l Trade
Comm’n, 341 F.3d 1332, 1338 (Fed. Cir. 2003) (quoting
Exxon Research & Eng'g Co. v. United States, 265 F.3d
1371, 1375 (Fed. Cir. 2001)).
9 CBT FLINT v. RETURN PATH
It is well-settled law that, in a patent infringement
suit, a district court may correct an obvious error in a
patent claim. I.T.S. Rubber Co. v. Essex Rubber Co., 272
U.S. 429, 442 (1926) (“Essex”). In Novo Industries, we
held that “[a] district court can correct a patent only if (1)
the correction is not subject to reasonable debate based on
consideration of the claim language and the specification
and (2) the prosecution history does not suggest a differ-
ent interpretation of the claims.” 350 F.3d at 1357. We
concluded that the enactment of 35 U.S.C. §§ 254 and 255
did not overrule Essex or deny authority to the district
courts to correct a claim in appropriate circumstances. Id.
at 1356. In Novo Industries, we declined to make the
proposed corrections to the claim at issue because those
corrections were substantively significant and required
guesswork as to what was intended by the patentee in
order to make sense of the patent claim. Id. at 1357.
More recently, on the other hand, in Ultimax Cement
Manufacturing Corp. v. CTS Cement Manufacturing
Corp., we found authority for the district court to correct a
claim by adding a comma between the symbols for fluo-
rine and chlorine. 587 F.3d 1339, 1353 (Fed. Cir. 2009).
We concluded that one of ordinary skill in the art would
know that the formula should contain a comma. Id.
Thus, we emphasized that in deciding whether it had
authority to correct a claim, a district court must consider
any proposed correction “from the point of view of one
skilled in the art.” Id.
Accordingly, we first conclude that the district court
erred in this case by holding that it was not authorized to
“correct” the supposed “detect analyze” error in claim 13
of the ’550 patent. Although the district court found that
there are “at least three alternatives that appear to be
equally reasonable,” Summary Judgment Op. at 4, as in
Ultimax, the court here failed to consider those alterna-
CBT FLINT v. RETURN PATH 10
tives from the point of view of one skilled in the art.
Specifically, the district court failed to recognize that the
claim contained an obvious error, which is confirmed by
the fact that a person of skill in the art would find the
claim to have the same scope and meaning under each of
the three possible meanings that the court found reason-
able. We conclude that it does, and therefore that the
district court had the requisite authority to make a cor-
rection to claim 13 of the ’550 patent. In doing so, we
reject Cisco’s argument that correction of a claim must
precede claim construction. Any correction of a claim has
to be consistent with the invention “described in the
specification and drawings of the original patent.” Essex,
272 U.S. at 444; see also Ultimax, 587 F.3d at 1353
(“Claim definiteness is analyzed not in a vacuum, but
always in light of the teachings of the prior art and of the
particular application disclosure as it would be inter-
preted by one possessing the ordinary level of skill in the
pertinent art.”). A court therefore must consider how a
potential correction would impact the scope of a claim and
if the inventor is entitled to the resulting claim scope
based on the written description of the patent.
The disputed phrase of claim 13 reads: “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.” ’550 patent
claim 13. We will parse that phrase in light of the three
possible meanings considered by the district court and
then construe the contested language. First, if the word
“detect” were deleted—the district court’s first reasonable
and possible interpretation—the claim would require that
the computer be programmed to analyze the e-mail. In
order to analyze an e-mail, the system would necessarily
have to first detect the e-mail. Thus, the scope of claim
11 CBT FLINT v. RETURN PATH
13, if construed or corrected in this manner, would require
that an e-mail be detected and analyzed.
The second reasonable and possible interpretation
that the district court considered was to delete the word
“analyze.” That would require that the computer be
programmed to detect the e-mail, and then “determine
whether or not the sending party is an authorized sending
party or an unauthorized sending party.” But that de-
termining step must include some form of analysis of the
e-mail. Merely detecting an e-mail does not determine
whether the user is an authorized sending party. The
specification explains that “the ISP server analyzes the
destination address and source address to determine
whether the source address is on a list of authorized
source addresses associated with the destination address.”
’550 patent col.2 ll.41-44. Therefore, even under that
interpretation, the scope of claim 13 would require that
an e-mail be detected and analyzed.
The final reasonable and possible meaning that the
district court considered was to add the word “and” be-
tween the words “detect” and “analyze.” The addition of
the word “and” corrects an obvious error. The appropri-
ateness of that correction is confirmed by the fact that the
specification indicates that is the proper meaning of the
claim. It also results in the same claim scope as for the
first two possible interpretations, requiring that the
computer be programmed to detect an e-mail and to
analyze it in order to determine whether the sender is
authorized. This interpretation explicitly reflects the
reasonable scope of the claim. Because each of the three
proposed reasonable interpretations would result in the
same claim scope, requiring that the computer be pro-
grammed to “detect and analyze” the e-mail, a person of
skill in the art would readily know that the meaning of
the claim requires insertion of the word “and” between the
CBT FLINT v. RETURN PATH 12
words “detect” and “analyze.” Moreover, there is suffi-
cient support in the specification for such a reading of the
claim. A portion of figure 2 of the ’550 patent, which
demonstrates the method of the claimed invention, is
reproduced below:
As can be seen, in the disclosed embodiment, the server
first performs the step of decoding the e-mail addresses of
sending and receiving parties. That step necessarily
detects the e-mail message. In the next step, one of
analysis, it compares the e-mail address to the authorized
list available. Likewise, the written description supports
a two-step “detect and analyze” reading of claim 13. See
’550 patent col.4 ll.8-14 (stating that the computer de-
13 CBT FLINT v. RETURN PATH
codes the datagram and then compares the source address
with the authorized sender list).
Thus, the district court was not required to guess
which meaning was intended in order to make sense out
of the patent claim, nor is one of skill in the art. Novo,
350 F.3d at 1357; see also Essex, 272 U.S. at 443 (“This is
not in any real sense, a re-making of the claim; but is
merely giving to it the meaning which was intended by
the applicant and understood by the examiner.”).
The district court erred in its heavy reliance on one
portion of inventor testimony. Daniel Santos, who prose-
cuted the ’550 patent and is also a co-inventor on the ’550
patent, testified that he was not sure what he meant by
the claim language “detect analyze.” That led the district
court to decide that the appropriate meaning of claim 13
was subject to reasonable debate. Summary Judgment
Op. at 4 (“If the inventor and lawyer who drafted the
patent is left to guess at what he meant, the Court is
certainly in no better position.”). Although we agree that
the testimony of a person of skill in the art may be rele-
vant to a court’s decision on the meaning of a claim,
Ultimax, 587 F.3d at 1352-53, we do not agree with the
district court’s interpretation of Santos’s testimony.
Santos’s confused statements that the district court relied
on merely related to his recollection of how he intended to
draft the claim. Moreover, the court ignored Santos’s
testimony that the meaning of claim 13 would be the
same under any of the three proposed interpretations, and
that detection as well as analysis are both necessary to
determine whether the sending party was authorized.
J.A. 439. We therefore conclude that Santos’s testimony
supports CBT’s proposed reading of claim 13, requiring
that the computer be programmed to “detect and analyze”
the e-mail.
CBT FLINT v. RETURN PATH 14
We accordingly reverse the district court’s summary
judgment of invalidity of claim 13 of the ’550 patent. In
light of our disposition, Cisco was not a prevailing party
and we therefore vacate the district court’s rulings on
costs and we deny the cross-appeal. We remand to the
district court for further proceedings consistent with this
opinion.
CONCLUSION
We have considered Cisco’s remaining arguments and
do not find them persuasive. Accordingly, the judgment of
the district court is
REVERSED IN PART, VACATED IN PART, AND
REMANDED.
COSTS
Costs to CBT.