Claim Construction: Indefinite or Clerical Error?

"Canatex Completion Solutions owns U.S. Patent No. 10,794,122. This patent covers a releasable connection device for a downhole tool string used during downhole operations in oil and gas wells. The device has two parts locked together. In circumstances where the further downhole (first) part of the device has gotten stuck, the operator can disconnect the two parts of the device, leaving the further downhole (first) part in the well while pulling the upper (second) part to the surface."

"The district court agreed with Defendants that the claims were indefinite, ruling that "the error" identified by Canatex "is not evident from the face of the patent and the correction to the claim is not as simple as [Canatex] makes it seem." In fact, the court ruled this "error" "was an intentional drafting choice and not an error at all." The court further concluded that Canatex's failure to seek correction from the USPTO pursuant to 35 U.S.C. § 255, which expressly permits the USPTO to correct certain clerical, typographical, and minor errors, suggested that the error is neither minor nor evident on the face of the patent."

Canatex Completion Solutions owns U.S. Patent No. 10,794,122, which covers a releasable connection device for a downhole tool string. The device comprises two parts that can be disconnected so a stuck lower part remains while the upper part is retrieved. Canatex accused several defendants of infringing the patent. The disputed claim phrase was "the connection profile of the part." Defendants argued the claims were indefinite for lack of antecedent basis. Canatex argued the phrase contained an evident error and proposed an intended wording. The district court found the claims indefinite, concluded the alleged error was not evident and was an intentional drafting choice, and noted Canatex did not seek correction under 35 U.S.C. § 255.

Read at Intellectual Property Law Blog