Worlds Inc (WDDD)

[MarkmanRunup]

A Little History and Precedent

When Worlds filed for their first patent on Nov 12, 1996, the concept of an Application Data Sheet did not even exist. So Worlds followed the law as it existed at that time under 37 CFR 1.53 and 37 CFR 1.57: They paid their fees. They included drawings, a specification, claims, and an abstract. They also filed the following transmittal letter (since an ADS didn’t exist as previous stated):



Notice in their transmittal letter, they explicitly disclosed:

This application claims priority from each of the following Application Nos./filing dates: 60/020,296 / June 24, 1996

Receiving a proper filing receipt from the PTO is hit and miss — especially back then when the PTO was more of a pen and paper affair. Sometimes the filing receipt will contain exactly what you sent in (such as the proper claim to the priority of the provisional application), and sometimes they don’t reflect what you sent in. An application can be filled out perfectly, but sometimes the PTO messes up.

The PTO messed up in this case. When Worlds realized that the PTO hadn’t filed their patent as they originally requested, they notified the PTO of the error. Here’s the correction letter they sent over 13 years ago (before the patent was even issued):



Even after this request, the official filing did not include the claim to priority as originally filed, nor as corrected.

Activision is claiming that since the official patent was not adjusted for this clerical error, the patent chain cannot claim priority to the original provisional application. This brings up the question: Can the Court correct this clerical error? From precedent, it appears the Court does have the power to correct such errors.

Using excerpts from Mobile Hi-Tech Wheels v. CIA Wheel Group, notice:

With respect to utility patents, a district court has the power to correct minor typographical and clerical errors. See I.T.S. Rubber Co. v. Essex Rubber Co., 272 U.S. 429, 47 S.Ct. 136, 71 L.Ed. 335 (1926); Novo Indus. L.P. v. Micro Molds Corp., 350 F.3d 1348, 1357 (Fed.Cir.2003).[5] The Federal Circuit has limited a district court's power to correct a utility patent to situations where "(1) the correction is not subject to reasonable debate based on consideration of the claim language and specification and (2) the prosecution history does not suggest a different interpretation of the claims."

First, it must be determined whether the inconsistency between Worlds' filing and the issued patent was clerical error. Clearly, the claim of priority was contained in their transmittal letter, but wasn’t contained in the filing receipt they received from the PTO. This is shown by Worlds pointing out the error and requesting a corrected filing receipt. Therefore, the threshold issue of whether this was a clerical error is clearly met.

Having established that there was a clerical error, the Court must apply the two prongs of the Novo to determine whether the error may be corrected. Novo, 350 F.3d at 1357.

Subject to reasonable debate?

Under the first prong of the Novo test, the Court must examine whether "the correction is not subject to reasonable debate." 350 F.3d at 1357.

The inconsistency is only subject to one reasonable correction. Either the claim of priority to the provisional application that Worlds originally filed (and later requested) is correct or it is not. There’s no reasonable debate as to what the correction should be. The one and only potential correction is to include the priority date as originally filed. Therefore, the correction is not subject to reasonable debate.

Just because Worlds has now obtained certificates of correction from the PTO, does not suggest that there might have been “a different interpretation”. In other words, Defendant’s can’t use the fact that Worlds obtained certificates of correction to assert that the correction is subject to reasonable debate.

Defendant's argument lacks merit for two reasons. First, under Southwest, any subsequent certificates of correction cannot be considered. Although neither Southwest nor Novo expressly prohibited the Court from examining requests for certificates of correction, consideration of the certificates would contradict the Federal Circuit's rationale for not considering requests for correction.

Second, even if the Court considered Plaintiff's requests for certificates of correction, these requests do not establish that the correction is subject to a reasonable debate. Instead, Plaintiffs inconsistent requests for correction merely reflect Plaintiffs inartful trial strategy.

Prosecution history suggests a different interpretation?

The second, prong of Novo requires the Court to examine whether "the prosecution history does not suggest a different interpretation of the claims." Novo, 350 F.3d at 1357.

Worlds’ patent prosecution history is unambiguous in that their entire patent chain would have contained the reference to the provisional application but for the PTO’s error. Therefore, correction of the chain to include the corrected reference to the provisional application is proper under Novo.

It is possible that Defendant's argument that the Court failed to examine the prosecution history stems from Defendant's disagreement over the Court's treatment of Plaintiffs requests for certificates of correction. However, as discussed above, even if the applications are considered, the Court finds that the applications do not suggest a different interpretation.

Bottom line:

The Court should find, just as precedent has shown:

The Federal Circuit … observ[ed] that "a patent should not be invalidated based on an obvious administrative error."