Patent Drafting Mistakes Surface During Litigation
What happens when you fail to thoroughly proofread your patent applications? Well, the USPTO will certainly not correct your patent drafting mistakes, so you may end up with an issued patent riddled with errors. And don’t be surprised if the courts will publicly point out your mistakes should you decide to enforce such a patent. Case in point? A 2013 litigation between Every Penny Counts and Wells Fargo Bank. Every Penny Counts v. Wells Fargo Bank, 2014 U.S. Dist. LEXIS 28106 (M.D. Fl. 2014)
Every Penny sued Wells Fargo for infringement of U.S. Patent 8,025,217 directed to a method/system to create and distribute excess funds from consumer spending transactions. Claim 1 of the ‘217 patent is reproduced below, in part:
1. A system for accumulating credits from a customer account belonging to the customer and managed by an institution and placing the credits into a provider account,comprising:
an information processor; said information processor including a data store with data identifying the customer, the rounding determinant, the managed institution, and the account;
Wells Fargo argued that the term “the account” was indefinite due to an ambiguous antecedent reference. As seen in the bolded terms above, the preamble introduces “a customer account” and “a provider account,” but the information processor does something with “the account.” The Court agreed with Wells Fargo that the phrase “the account” lacked definiteness, but still concluded that the overall claim was not rendered indefinite due to the drafter’s oversight.
Could the drafters avoid public embarrassment if they used ClaimMaster on their claims prior to filing? We think so. When we run the claims of the ‘217 patent through the antecedent basis checking of ClaimMaster, the software identified a number of terms missing antecedent basis. Notably, ClaimMaster showed that the term “the account” had an ambiguous antecedent reference that required further review:
This is the exact same issue that was litigated in this case and it could’ve been easily averted with some proper proofreading.
Interestingly, the Court then went on to discuss other numerous typographical and other patent drafting mistakes riddled throughout the ‘217 specification. For example, the Court wrote:
The patent is infested with scrivener’s (and other) errors, and the prospect of a missing “s” fits comfortably within the patterns discernible in the patent. For example, the patent states, “The actual transfer . . . concludes with the [transfer of] funds to each listed PC (provider account) . . . .” “PC” is used nowhere else in the patent, and the patent later clarifies that “PA” is the intended acronym for “provider account(s).” But even the creation of the correct acronym, “PA,” is tardy – by the time the patent defines the acronym, the patent has already deployed either “provider account” or “provider accounts” four times and “PA” twelve times. And after the “PA” acronym is created, the patent no longer uses the acronym but uses “provider accounts.” In other examples of error, the patent bungles nearly every acronym, conflates “i.e.” and “e.g.,” and writes “invention invention,” “FIG. 7A” (not “FIG. 7” – no figure 7A exists), “FIG. 4B” (although Figure 4B exists, “FIG. 4C” is intended), step “8120” (not”120″), “2 $300.14” (not “$300.14”), “pa id” (not “paid”), “saving s,” and “piece s.” These errors – which say nothing of the drafter’s grammatical and syntactical incompetence and bemusing judgment – confirm that “account” lacking an “s” by mistake accords with the level of compositional adroitness and dexterity that pervades the patent.
At least some of these patent drafting mistakes, such as incorrect acronym definitions, could’ve been picked up by ClaimMaster prior to filing. But, in general, this case shows that if the patent owner doesn’t take care to proofread its patents, then the courts will not assign much value to the patent either. So you are better off taking time to proofread your patent application before it issues into a patent and undergoes public scrutiny during litigation.
If you’d like to try out ClaimMaster on your patent documents, download the free 30-day trial from here.