CAFC Reverses Indefiniteness Ruling Since Claims Meet 'Demanding' Standard for Judicial Correction

"Canatex's U.S. Patent No. 10,794,122, titled "Releasable Connection for a Downhole Tool String," contains a phrase that reads "the connection profile of the second part," which appears in all the independent claims, and should have read "the connection profile of the first part," according to Canatex. The error also appears in the Abstract and twice in the written description. Canatex asked the district first to construe the phrase to reflect the correct meaning, but the district court refused, ultimately agreeing with the defendants, Wellmatics LLC, et. al., that the claims were invalid for indefiniteness."

"According to the district court, the error was neither plainly evident or easy to correct, and the "'pervasiveness of the error' in both the claims and the specification suggested that the error 'was an intentional drafting choice and not an error at all.'""

""It is evident that the claim contains an error and that a relevant artisan would recognize that there is only one correction that is reasonable given the intrinsic evidence." - CAFC Opinion"

"In a footnote to the CAFC opinion, the panel also noted that Canatex attempted to have the claims corrected with the U.S. Patent and Trademark Office (USPTO), but the Office "denied Canatex's proposed correction in March 2025, stating without elaboration that the 'corrections requested [sought] to change the scope of the patented claims.'""

Canatex's U.S. Patent No. 10,794,122 includes the phrase "the connection profile of the second part" in all independent claims, which Canatex contends should read "the connection profile of the first part." The erroneous phrase also appears in the Abstract and twice in the specification. Canatex asked the district court to construe the phrase to the asserted meaning, but the district court declined and held the claims indefinite, reasoning the error was not plainly evident, not easily correctable, and possibly intentional given its pervasiveness. The USPTO denied a proposed correction, stating the requested changes would alter claim scope. On appeal, the Federal Circuit reversed, concluding the claim plainly contained an error and that a skilled artisan would recognize only one reasonable correction from the intrinsic record.

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