VIFOR (INTERNATIONAL) AG et al v. MYLAN LABORATORIES LTD.

Filing 168

OPINION filed. Signed by Chief Judge Freda L. Wolfson on 04/26/2021. (jdb)

*NOT FOR PUBLICATION*
UNITED STATES DISTRICT COURT
DISTRICT OF NEW JERSEY
VIFOR (INTERNATIONAL) AG and
AMERICAN REGENT, INC.,
Plaintiffs,

Civil Action No. 19-13955 (FLW)
OPINION

v.
MYLAN LABORATORIES LTD. and SANDOZ
INC.,
Defendants.

WOLFSON, Chief Judge:
Plaintiffs Vifor (International) AG (“Vifor”) and American Regent, Inc. (“American
Regent”) (collectively, “Plaintiffs”) seek judicial correction of claim 1 (the “Claim”) of United
States Patent No. 10,519,252 (“the ’252 patent”) to correct an alleged error. However, because I
find that any alleged error in the Claim is not clear and obvious from the face of the Patent, it
would be improper for the Court to exercise judicial correction. Accordingly, Plaintiffs’ Motion
is DENIED.
I.

BACKGROUND
This litigation arises out of Defendants Mylan Laboratories Ltd. (“Mylan”) and Sandoz

Inc.’s (“Sandoz”) (collectively “Defendants”) filing of an Abbreviated New Drug Application
(“ANDA”) with the Food and Drug Administration to market generic versions of Injectafer (ferric
carboxymaltose injection), an iron replacement product suggested for the treatment of iron
deficiency anemia (“IDA”) in adult patients. IDA is a condition that develops when stores of iron
in the body drop too low to support normal red blood cell production. Thereafter, Plaintiffs brought
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the instant patent infringement suit against Defendants, through Complaints filed on June 18, 2019
and August 2, 2019. 1
On October 9, 2020, Plaintiffs filed this Motion for Judicial Correction related to claim 1
of the ’252 patent, which discloses and claims iron (III) carboxymaltodextrin complexes and the
use of these complexes to treat IDA. (ECF No. 107.) As presently configured, claim 1 of the ’252
patent states:
1. An iron (III) carboxymaltodextrin complex wherein said iron
(III) carboxymaltodextrin complex comprises polynuclear iron
(III) hydroxide 4(R)-(poly-(1-4)-O-α-D-glucopyranosyl)-oxy
2(R),3(S),5(R),6-tetrahydroxy-hexanoate and has a weight
average molecular weight in the range of from 80 kDa to 400
kDa, and wherein said 4(R)-(poly-(1-4)-O-α-D-glucopyranosyl)oxy-2(R),3(S),5(R),6-tetrahydroxy-hexanoate is derived from
the oxidation of maltodextrin . . . .
(Declaration of William P. Deni, Jr., Esq. in Support of Motion for Judicial Correction (“Deni
Decl.”) Ex. 1, Claim 1) (emphasis added). Plaintiffs contend that claim 1 of the ’252 patent should
be corrected, because claim 1 contains an obvious error and the prosecution history supports
judicial correction.

Specifically, Plaintiffs explain that the “obvious” error relates to the

stereochemistry at carbon-3 of the hexinaoate unit, which is incorrectly written as “3(S),” rather
than “3(R).” (Pl. Moving Br., at 5.) Plaintiffs further explain that the “(R)” notation refers to the
“spatial arrangement of the substituents around carbons 2, 3, and 5 of the hexanoate, i.e., the
‘stereochemistry’ of those carbons.” (Pl. Moving Br., at 2) (citing Declaration of Brian M. Stoltz,
Ph.D. in Support of Motion for Judicial Correction (“Stoltz Decl.”) at ¶¶ 22-28.) According to
Plaintiffs, a person of ordinary skill in the art (“POSA”) would understand that the ’252 patent

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On February 6, 2020, the Court entered an Order consolidating the matters for discovery
purposes. Thereafter, on April 22, 2020 and April 23, 2020, Plaintiffs filed Amended Complaints
against Defendants.
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“repeatedly and consistently describes a synthetic reaction that results in the formation of a ligand,
poly-(1→4)-O-α-Dglucopyranosyl)-oxy-2(R),3(R),5(R),6-tetrahydroxyhexanoate, and a related
complex, polynuclear iron (III)-hydroxide 4(R)-(poly-(1→4)-O-α-D-glucopyranosyl)-oxy2(R),3(R),5(R),6-tetrahydroxyhexanoate.” (Id. at 5-6) (citing Stoltz Decl. at ¶¶ 40-46, 55; Deni
Decl. Ex. 1 at 5:27-9:9.) Moreover, Plaintiffs argue that the prosecution history supports judicial
correction, because the stereochemistry of the hexanoate unit in the complex and its ligand was
never specifically questioned or directly addressed during prosecution. (Id. at 9.) Accordingly,
Plaintiffs argue that when corrected, claim 1 of the ’252 patent would read:
1. An iron (III) carboxymaltodextrin complex wherein said iron
(III) carboxymaltodextrin complex comprises polynuclear iron
(III)-hydroxide 4(R)-(poly-(1→4)-O-α-D-glucopyranosyl)-oxy2(R),3(R),5(R),6-tetrahydroxy-hexanoate and has a weight
average molecular weight in the range of from 80 kDa to 400
kDa,
and
wherein
said
4(R)-(poly-(1→4)-O-α-Dglucopyranosyl)-oxy-2(R),3(R),5(R),6-tetrahydroxy-hexanoate
is derived from the oxidation of maltodextrin . . . .
(Pl. Moving Br., at 3-4) (emphasis added.)
In their opposition, Defendants argue that judicial correction is inappropriate because the
Claim, as written, makes sense, and the error is neither apparent nor obvious. (Def. Opp. Br., at
6.)

Defendants argue that a POSA would understand that the Claim, including the 3(S)

stereochemistry, is a compound that could exist and could be produced using the processes
disclosed in the patents. (Id.) (citing Declaration of Alexei Demchenko, Ph.D., in Opposition to
Plaintiffs’ Motion for Judicial Correction (“Demchenko Decl.”) at ¶¶ 46-64.) Further, Defendants
argue that even if the Court considers the prosecution history in this case, Plaintiffs’ actions and
conduct “demonstrate that that the alleged error is not facially apparent.” (Id. at 8.)
Plaintiffs filed a reply on November 13, 2020 (ECF No. 125), and in addition, the Court
considered numerous submissions filed by the parties, including letters filed by Plaintiffs on
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February 8, 2021 (ECF No. 153) and March 10, 2021 (ECF No. 164), and letters filed by
Defendants on February 10, 2021 (ECF No. 156) and March 2, 2021 (ECF No. 160.)
II.

LEGAL STANDARD
In a patent infringement suit, a court may properly interpret a patent to correct an obvious

error. I.T.S. Rubber Co. v. Essex Rubber Co., 272 U.S. 429, 441-42 (1926). Judicial correction is
not meant to be “in any real sense, a re-making of the claim; but is merely giving to it the meaning
which was intended by the applicant and understood by the examiner.” Id. at 442.
Judicial correction is proper “only if (1) the correction is not subject to reasonable debate
based on consideration of the claim language and the specification and (2) the prosecution history
does not suggest a different interpretation of the claims.” Novo Industries, L.P. v. Micro Molds
Corp., 350 F.3d 1348, 1354 (Fed. Cir. 2003). The error to be corrected “must be evident on the
face of the patent.” Fargo Elecs. v. Iris, Ltd., 287 Fed. Appx. 96, 102 (Fed Cir. 2008) (citing
Group One, Ltd. v. Hallmark Cards, Inc., 407 F.3d 1297, 1303 (Fed. Cir. 2005)). The court should
also consult the prosecution history, however, to determine whether only a single reasonable
correction exists. Id. Furthermore, in determining whether it has authority to correct the disputed
claims, the court “must consider any proposed correction ‘from the point of view of one skilled in
the art.’” CBT Flint Partners, LLC v. Return Path, Inc., 654 F.3d 1353, 1358 (Fed. Cir. 2011)
(quoting Ultimax Cement Mfg. Corp. v. CTS Cement Mfg. Corp., 587 F.3d 1339, 1353 (Fed. Cir.
2009)).
On a motion for judicial correction, courts “may not rewrite claims to correct material or
substantive errors.” Gilead Scis., Inc. v. Watson Lab’ys, Inc., No. 15-2350, 2016 WL 1690306, at
*2 (D.N.J. Apr. 26, 2016) (citing Ultimax, 587 F.3d at 1353 and Novo Industries, 350 F.3d at
1358). Similarly, “courts may not redraft claims, whether to make them operable or to sustain

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their validity.” Chef Am., Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1374 (Fed. Cir. 2004).
Indeed, the Federal Circuit has advised that judicial correction is a “narrow remedy to be used
sparingly.” Gilead Scis., Inc., 2016 WL 1690306, at *2. Therefore, “[judicial correction] is the
exception, not the rule, and should be employed only to correct an error that is so obvious that
there is no question as to the proper correction.” Id. (citing Novo Industries, 350 F.3d at 1358).
In accordance with Novo Industries, the Court must first determine whether the Claim
makes sense as written. Id. If the answer to that question is “no,” then the error is obvious on the
face of the patent and the inquiry continues. In that regard, the Court will then consider whether
there is a reasonable debate as to the proper correction and if the prosecution history supports
correction. See, e.g., CBT Flint, 654 F.3d at 1358 (where “district court was not required to guess
which meaning was intended in order to make sense of the patent claim,” the district court should
have corrected “detect analyze” to “detect and analyze”) (emphasis added); Ultimax, 587 F.3d at
1353 (correcting what the Federal Circuit called “an obvious typographical error” by inserting
comma between “f” and “cl” in chemical formula where it was undisputed that a person of ordinary
skill in the art knew that “(f cl)” “corresponds to no known mineral”); Lemelson v. Gen. Mills,
Inc., 968 F.2d 1202, 1203 (Fed. Cir. 1992) (adding “toy” in claim where patent was clearly directed
a toy trackway, rather than an actual trackway); ISCO Int’l, Inc. v. Conductus, Inc., 2003 WL
276250, at *4 (D. Del. Feb. 10, 2003) (deleting “planar” from term “planar amplifiers” where
parties agreed that term “planar amplifiers” is “senseless to any person skilled in the relevant art”)
(emphasis added).
On the other hand, if the Court determines that the Claim makes sense as written, then the
error is not obvious and judicial correction is inappropriate. See Grp. One, Ltd. v. Hallmark Cards,
Inc., 407 F.3d 1297, 1303 (Fed. Cir. 2005) (“The error here is not evident on the face of the patent.

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The prosecution history discloses that the missing language was required to be added by the
examiner as a condition for issuance, but one cannot discern what language is missing simply by
reading the patent. The district court does not have authority to correct the patent in such
circumstances.”).
III.

DISCUSSION
The Court first must ascertain whether the error claimed by Plaintiffs is even one that it has

the authority to correct, i.e., whether the correction Plaintiffs suggest is an “obvious minor
typographical and clerical error” in the scope of the Court’s authority or whether it is a “major
error.” Generally, both district courts and the United States Patent and Trademark Office
(“USPTO”) have the ability to correct errors in patents, but the scope of that power differs.
Pursuant to 35 U.S.C. § 255, the USPTO may correct through issuance of a certificate of
correction, “a mistake of a clerical or typographical nature, or of minor character ... if the correction
does not involve such changes in the patent as would constitute new matter or would require reexamination.” This authority “is not limited to obvious errors,” but in fact “extends even to
broadening corrections, so long as it is clearly evident from the specification, drawings, and
prosecution history how the error should appropriately be corrected.” Novo Indus., L.P., 350 F.3d
at 1356–57. The USPTO’s correction, however, applies only prospectively. See 35 U.S.C. § 255
(“Such patent, together with the certificate, shall have the same effect and operation in law on the
trial of actions for causes thereafter arising as if the same had been originally issued in such
corrected form.”); see also Novo Indus., 350 F.3d at 1356 (noting that Section 255 “deal[s] only
with the authority of the PTO to make prospectively effective corrections, and the PTO was given
no authority to correct the claims retroactively”).

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District courts, on the other hand, may apply corrections retroactively, but their authority
is limited to situations where (1) “the correction is not subject to reasonable debate based on
consideration of the claim language and the specification” and (2) “the prosecution history does
not suggest a different interpretation of the claims.” Novo Indus., 350 F.3d at 1357. Courts are
further limited to correcting “an obvious error in a patent claim,” CBT Flint Partners, LLC, 654
F.3d at 1358 (citing I.T.S. Rubber Co. v. Essex Rubber Co., 272 U.S. 429, 442 (1926)), that
involves only “minor typographical and clerical errors in patents.” Novo Indus., 350 F.3d at 1357.
“[M]ajor errors” on the other hand “are subject only to correction by the PTO.” Id. The court
must make the determination of the presence of an error—and any correction—“from the point of
view of one skilled in the art.” Id. (quoting Ultimax, 587 F.3d at 1353). Accordingly, “postissuance judicial corrections which have a retroactive effect must be carefully scrutinized.” Fujitsu
Limited v. Tellabs Operations, Inc., No. 08-3379, 2011 WL 1303358, at *12 (N.D.Ill. Mar. 31,
2011).
In order to grasp and conceptualize the potential error in claim 1 of the ’252 patent as it
relates to the stereochemistry at carbon-3 of the hexinaoate unit, it is necessary to understand some
of the fundamental rules and principles associated with stereochemistry.

At its core,

stereochemistry is a subdiscipline of chemistry that involves the study of the relative spatial
arrangement of atoms that form the structure of molecules. Plaintiffs’ expert, Brian M. Stoltz,
Ph.D., has provided the Court with the technical background to assess Plaintiffs’ claims of error
in the stereochemistry, and Defendants’ expert, Alexei Demchenko, Ph.D., has accepted Dr.
Stoltz’s explanation of the basics of stereochemistry. (Stoltz Decl. at ¶¶ 21-28; Demchenko Decl.
at ¶ 31.)

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Put simply, a carbon atom can bind to four different atoms. (Stoltz Decl. at ¶ 21.) In this
scenario, the four single bonds are not all within the same plane, and therefore, a chemist envisions
the carbon atom and its bonds in three dimensions. (Id.) It is the Court’s understanding, based on
Dr. Stoltz’s explanation, that chemists have developed unique nomenclature for designating the
spatial arrangement of atoms, called “stereochemistry,” around these asymmetrical carbons. (Id.
at ¶ 22.) One such nomenclature system, called the “Cahn-Ingold-Prelog rules,” assigns the
descriptors “(R)” or “(S)” to each asymmetrical carbon according to whether its configuration is
right- or left-handed. (Id.) Applying the Cahn-Ingold-Prelog rules, a person can determine
whether an asymmetrical carbon has (R) or (S) stereochemistry. (Id. at ¶ 23.) First, “the
substituents attached to the carbon are assigned a priority from 1 to 4.” (Id.) “A substituent with
a higher atomic number has priority over substituents with lower atomic numbers.” (Id.) An
atom’s “atomic number,” which can be found in the periodic table of elements, is the number of
protons in the atom. (Id. at ¶ 24.) For illustration, Dr. Stoltz explains that carbon has an atomic
number of 6; oxygen has an atomic number of 8; and hydrogen has an atomic number of 1. (Id.)
So it follows, when bonded to carbon, hydrogen has the lowest priority, since its atomic number
is 1, while oxygen has priority over carbon, because the atomic number of oxygen, which is 8, is
higher than that of carbon, which is 6. (Id. at ¶ 25.) Once the priorities are assigned, the molecules
are envisioned with the lowest priority substituent (e.g., hydrogen) behind the carbon. (Id. at ¶
27.) The other substituents are then numbered 1, 2, and 3 to reflect their priorities. (Id.) If the
priorities appear in order when rotating clockwise around the carbon, Cahn-Ingold-Prelog rules
dictate that the carbon has right-handed (R) stereochemistry. (Id.) If the substituents appear in
order when rotating counterclockwise, however, the carbon has left-handed (S) stereochemistry.

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(Id.) The parties agree that a POSA would be familiar with these rules for assigning priority and
determining R/S stereochemistry. (Id. at ¶ 28; Demchenko Decl. at ¶ 31.)
Applying the Cahn-Ingold-Prelog rules, Plaintiffs contend that a POSA would recognize
that the chemical name of the carbohydrate derived from the oxidation of maltodextrin recited in
claim 1 of the ’252 patent contains an obvious error in stereochemical nomenclature. (Stoltz Decl.
at ¶ 45.)

In that regard, Plaintiffs argue that a POSA would clearly recognize that the

stereochemistry designation at carbon-3 of the hexanoate was mistakenly written as (S), when it
should be (R) based on the bonds. (Id.) According to Dr. Stoltz, he was asked by Plaintiffs to
analyze the stereochemistry of the oxidized maltodextrin ligand of the ’252 patent, specifically
wherein “oxidation (a chemical process) occurs at the terminal aldehyde (-CHO).” (Id. at ¶ 41.)
According to Dr. Stoltz, “[w]hen glucose is oxidized at this position, the α-D-glucose ring opens,
and the carbon numbered as 1 is oxidized to form a carboxylic acid (-COOH). (Id.) Similarly,
when maltodextrin is oxidized at this position, the terminal α-D-glucose ring opens, and carbon-1
of the terminal α-D-glucose ring is oxidized to form a carboxylic acid.” (Id.) Applying the CahnIngold-Prelog rules for assigning priority, Dr. Stoltz opined that the asymmetric carbons of this
terminal hexanoic acid group, including the carbon-3 of the hexanoate, all have (R)
stereochemistry. (Id. at ¶¶ 42-43.) Therefore, while the name presently refers to “4(R)-(poly-(14)-O-α-D-glucopyranosyl)-oxy 2(R),3(S),5(R),6-tetrahydroxy-hexanoate,” one of ordinary skill in
the art would have understood it as: “4(R)-(poly-(1→4)-O-α-D-glucopyranosyl)-oxy2(R),3(R),5(R),6-tetrahydroxy-hexanoate.” (Id. at ¶ 45.)

In addition, a POSA would also

recognize that the chemical name of the iron (III) carboxymaltodextrin complex recited in claim 1
of the ’252 patent contains this same obvious error in stereochemical nomenclature. (Id. at ¶ 46.)

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While Defendants agree with the fundamental principles of stereochemistry recited by Dr.
Stoltz, they primarily take issue with Plaintiffs’ contention that a POSA reviewing claim 1 of the
’252 patent would recognize an obvious or apparent error. (Demchenko Decl. at ¶ 45.) According
to Dr. Demchenko, nothing in the language of the Claim, i.e., the chemical name itself, would
signal to a POSA that there was an error. (Id. at ¶ 46.) Therefore, Defendants contend that absent
“any red flag in the claimed chemical name or surrounding claim language, the POSA would have
no reason to draw the chemical structure or perform a detailed stereochemistry analysis,” like the
one performed by Dr. Stoltz. (Id. at ¶ 49.) In addition, Defendants clam that even if a POSA were
to investigate the stereochemistry of the recited compound in the Claim, there is no obvious error,
because the POSA would still need to draw the correct three-dimensional chemical structure to
start the stereochemistry analysis. (Id. at ¶¶ 65-67.)
In determining whether the Court can correct this potential error, I find it instructive to
compare the instant circumstances to similarly situated cases in which other courts found it
appropriate to exercise judicial correction. First, in Ultimax, the Federal Circuit corrected “a
possible drafting error in the ... patent [at issue], namely, that there should be a comma between
the symbols for fluorine and chlorine [in the patent].” 587 F.3d at 1352-53. The court explained,
“the claimed formula C9S3S3Ca(f cl)2 ‘corresponds to no known mineral,’ and ... one of ordinary
skill in the art would know that the formula should contain a comma.” Id. at 1353.
The Federal Circuit also corrected a similar typographical error in CBT Flint Partner,
where the claim at issue read, “the computer being programmed to detect analyze the electronic
mail communication sent by the sending party to determine whether or not the sending party is an
authorized sending party or an unauthorized sending party.” 654 F.3d at 1356. The district court
declined to correct the “detect analyze” mistake because it found there to be multiple possible

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solutions—deleting the word “detect,” deleting the word “analyze,” or adding the word “and.” Id.
at 1358. On appeal, the Federal Circuit, however, emphasized that “[a]lthough the district court
found that there are at least three alternatives that appear to be equally reasonable,” it “failed to
consider those alternatives from the point of view of one skilled in the art.” Id. Specifically, the
Federal Circuit noted the logical necessity of “analyzing” in conjunction with “detecting,” and
therefore, it held that the only reasonable solution to this grammatical mistake was to add the word
“and.” Id. at 1361. The court noted that the specification confirmed this to be a proper reading of
the claim. Id. at 1359. Therefore, correction was appropriate because the error was obvious as a
simple matter of grammar and common English construction, and there was only one logical
solution to correct the mistake.
Finally, in Senju Pharmaceuticals Co. v. Lupin Ltd., 162 F. Supp. 3d 405 (D.N.J. 2015),
the court corrected an erroneous citation to the wrong standard. In that case, the patent at issue
read “satisfies the preservative efficacy standard of US Pharmacopoeia as follows [various bacteria
strains and cell counts].” Id. at 421. Although the patent’s reference to “US Pharmacopoeia”
made sense in context to a lay person, the court found that the standards recited in fact reflected
the similar-but-distinct “preservative efficacy standard of EP-criteria B of the European
Pharmacopoeia.” Id. at 422. Thus, the court found this was an obvious error in light of other
patents at issue in the case and the prosecution history. Id. Indeed, the court noted that the other
patents referred to the European Pharmacopoeia standard, not the US Pharmacopoeia standard. Id.
Because the European Pharmacopoeia standard was the standard actually recited in the patent,
which was obvious to one of ordinary skill in the art, the court found the error obvious, and
appropriate for judicial correction. Id.

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Here, the circumstances in Ultimax, CBT Flint Partners, and Senju Pharmaceuticals are
conspicuously distinguishable from the instant patent.

Unlike those cases, which involved

typographical errors of such an obvious nature that the claim at issue was either unintelligible, or
the meaning was unknown to a POSA, the Claim, here, does not contain such an obvious error on
its face. See also Roche Diagnostics GMBH v. Enzo Biochem, Inc., No. 04-4046, 2017 WL
6988709, at *16 (S.D.N.Y. Oct. 2, 2017) (exercising judicial correction where the claim, as written,
was “nonsensical[]”); Pavo Solutions., LLC v. Kingston Tech. Co., No. 14-1352, 2018 WL
5099486, at *4 (C.D. Cal. Sept. 10, 2018) (granting correction where the “claim as written is not
simply nonsensical, but that it is contradicted when read in the context of the patent as a whole”).
Indeed, I am convinced by the fact that in order to uncover the error claimed by Plaintiffs, a POSA
cannot merely look at the Claim language, or the specification, and recognize an error. Rather, to
discover the potential error at issue, a POSA would have to engage in the stereochemistry analysis
referenced above, which effectively includes a tedious, multi-step analysis requiring the
manipulation of three dimensional molecular structures.
However, that is not to say that an error does not exist. I note my skepticism with
Defendants’ argument that a POSA would “recognize that the 3(S) stereoisomer could be
produced, albeit indirectly, when using the processes disclosed in the patents.” (Def. Opp. Br., at
5) (citing Demchenko Decl. at ¶¶ 61-62.) According to Defendants, “while a POSA would
understand that the claimed processes would result in the (R) stereoisomer, the POSA would also
understand that the particular chemicals disclosed in the ’252 patent specification could cause the
(R) stereoisomer to convert to the (S) stereoisomer via a process called epimerization.” (Id.)
(Emphasis added). Defendants’ insertion of the epimerization process, however, seemingly
contradicts the claim language, which makes no mention of epimerization. Nonetheless, because

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I find that the error is not clear and obvious (either to the Court or a POSA), this Court should not
be called on to provide the requested correction.
As the Federal Circuit highlighted in Novo Industries, L.P., 350 F.3d at 1356, “district
courts are authorized to correct patents for the purpose of giving effect to the claim language and
assuring that the patentee may protect the same scope of the claim as she intended to preserve.”
Guzik Tech. Enterprises, Inc. v. W. Digital Corp., No. 11-03786, 2013 WL 3934892, at *27 (N.D.
Cal. July 19, 2013) (denying a motion to correct based on a finding that the alleged error was more
akin to a major error rather than an “obvious minor typographical and clerical error”). “But where
the error is not obvious, where the clerical error in fact can or should broaden the scope of the
claim, the USPTO has the requisite expertise to engage in consideration of the correction.” Id.
Unlike the Court, the USPTO has the experience to examine the patent and to ascertain whether
the change that Plaintiffs propose conflicts with earlier or later granted patents or whether
scientifically, Plaintiffs’ proposed change is sound. Id. Thus, an error in fact may have occurred,
but that error and its proper substitute is not so obvious that a POSA easily could recognize it and
more importantly replace it. Because the Court cannot ascertain whether the correction Plaintiffs
offer maintains the proper scope of the claim, the USPTO is the proper entity to make this
determination. Id.
Based on the Court’s finding that any error proposed by Plaintiffs is not clear and obvious,
the Court need not consider the prosecution history in determining whether to exercise judicial
correction.

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IV.

CONCLUSION
Accordingly, based on the foregoing reasons, Plaintiffs’ Motion for Judicial Correction is

DENIED.

Dated: April 26, 2021

/s/ Freda L. Wolfson
Freda L. Wolfson
U.S. Chief District Judge

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