In Smith v.Orbcomm. Inc. [2:14-CV-666 (E.D. Tex. 2015), Judge Gilstrap invalidated as indefinite two claims of U.S. Patent No. 6,611,686 on a system of remotely tracking vehicles and cargo, rejecting the patent owner’s argument that the claims contained a typographical error that the court had the authority to correct in view of the patent owner’s alternative construction for the erroneous claim language.

The patent owner argued that the phrase “inputs to be controlled” in claims 15 and 48 contain an obvious typographical error that the court should correct to “inputs to be monitored,” explaining that the language arose from errors apparent in the prosecution.  In the alternative, the patent owner proffered an interpretation for the claims as written.

The found that the phrase “said inputs to be controlled” lacks antecedent basis in claim 15
and 48.  The district court found that in view of the patent owner’s alternate construction, this language could not be regarded as an obvious typographical error.  Furthermore the court noted the patent owner’s failure to obtain a Certificate of Correction.finding the patent owner’s arguments and actions show that correction is subject to reasonable debate. and thus not correctable by the court..  In addition, the court found that the error was not evident from the face of the patent, another requirement for the court to make the correction.

While FRCP 8(d)(2) allows pleading in the alternative, the court found the patent owner’s inconsistent position on claim construction prevented the correction that it sought, concluding thatt “Plaintiff cannot have it both ways.”