It’s What You Claim, Not What You Meant to Claim, That Counts

On February 7, 2014, Magistrate Thynge issued a report and recommendation in  Magnetar Technologies Corp. v Six Flags Theme Parks, Inc., 07-127-LPS-MPT (D.Del) that among other things found Claim 3 of U.S. Patent No. 5,277,125 invalid for indefiniteness.  Claim 3 states:

The problem is that Claim 3 specifies a track, but then calls for magnet assemblies between said tracks.  The inventor testitifed that he knew what it meant:

But it did not say what he meant.  This is reminsecent of Chef America v. Lamb Weston, 358 F.3d 1371 (Fed. Cir. 2004) where the claim “heating to” rather than “heating at” 450° proved fatal to the patent.

There were serveral possible fixes, none of which were made.  Precisely because there were serveral fixes, Magistrate Thynge found that correction would be subject to reasonable debate, so that Court was unable to correct the error under Novo Indus., L.P. v. Micro Molds Corp., 350 F.3d 1348, 1354 (Fed. Cir. 2003).  The Magistrate granted summary judgment that claim 3 of the ‘125 patent is invalid for indefiniteness under 35 U.S.C. § 112, Paragraph ¶2.

Even of the District Court does not adopt this part of the Magistrate’s recommendation, at a minimum the less than precise language of claim 3 wasted time and resources of the patentee.  Words of a patent claim are critical, and everyone connected with the patent is responsible for making sure it is correct.