As the reader may (should) remember, basically there are two kinds of patent claims: article claims¹ and method or process claims. Article claims are comprised of multiple article limitations, and method claims are comprised of multiple steps or process limitations. Both types of limitations are fine but, just as we are abjured to mix milk and meat, so too we are directed – albeit by a different authority – not to mix article limitations and process steps in a single patent claim. Rembrandt Data Technologies, LP v. AOL LLC et al.
The patent claim in question was directed to a “data transmitting device” comprising: (1) first and second buffer means; (2) fractional encoding means; (3) trellis encoding means for trellis encoding² [frames]; and transmitting the trellis encoded frames.
The defendant moved for summary judgment of invalidity, asserting that the patent claim was “fatally flawed.” The plaintiff, accepting the undeniable, conceded that the claim contained an error and sought to invoke the Court’s power to correct an error in the patent. The plaintiff argued that “the error is so plain and known by anyone in the field there can be no question that the claim as written includes an obvious error” and that the claim element “transmitting the trellis encoded frames” should be edited to “a transmitter section for transmitting the trellis encoded frames.”
The defendants, as would be expected, argued that the proposed “correction” “would significantly alter the meaning of one element, changing it from a method step to an apparatus step.” They further argued that “there is no evidence to support Rembrandt’s assertion that a ‘typographical’³ error occurred.”
The Court sided with the defendants, noting that “Rembrandt has failed to demonstrate that the language at issue is anything other than what it submitted to the Patent and Trademark Office.”
THE LESSON TO BE LEARNED: There are article claims and there are method claims and never the twain shall meet.
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¹ For any nit-pickers amongst our readers, article claims include the more esoteric “product by process” and “composition of matter” subclasses.
² Whatever the heck that means.
³ “typographical,” was Rembrandt serious? This sort of argument could give trolls a bad name.