United States District Court, W.D. Virginia, Charlottesville Division
Hon. Glen E. Conrad Chief United States District Judge Smart
Wearable Technologies Inc. ("Smart Wearable") filed
this action against Microsoft Corporation
("Microsoft"), alleging that Microsoft has
infringed Claim 8 of U.S. Patent No. 6, 997, 882 ("the
'882 Patent"). Microsoft has moved to dismiss the
case under Rule 12(b)(6) of the Federal Rules of Civil
Procedure, based on a printing error in Claim 8. Microsoft
argues that the printing error cannot be corrected by the
court, and that it renders the patent claim invalid under 35
U.S.C. § 112. For the reasons set forth below, the court
finds Microsoft's arguments premature at this stage of
the proceedings. Accordingly, the motion to dismiss will be
Wearable is the owner of the '882 Patent, titled
"6-DOF Subject Monitoring Device and Method, "
which was issued by the United States Patent and Trademark
Office ("USPTO") on February 14, 2006. The patent
"relates to systems and methods of monitoring a subject
using acquired six degree-of-freedom ("6-DOF") data
regarding the subject as well as acquired physiological data
of the subject." Compl. ¶ 6, Docket No. 1.
"Specifically, certain claims of the '882 Patent
disclose the use of an acceleration module to obtain 6-DOF
data descriptive of the movement of a subject." IcL
"The 6-DOF data is synchronized with obtained
physiological data, such as the sensed, detected, or measured
heart rate of the subject, " and [t]he synchronized
6-DOF and physiological data is then displayed."
Wearable contends that Microsoft has infringed the '882
Patent by making and selling items that "practice one or
more claims of the '882 Patent." Id. at
¶ 11. In particular, Smart Wearable alleges that
Microsoft's "Band 1" and "Band 2"
products "infringe at least claim 8 of the '882
Patent." Id. at ¶ 12.
recites "a method of monitoring a subject during a
monitoring period, " which is comprised of seven
"steps, " lettered (a) through (g). Compl. Ex. A at
28, Docket No. 1-1. The original version of the claim
contains a printing error by the USPTO. Step (b) of Claim 8
(b) acquiring from the acceleration module attached at step
(a) acceleration signals representing the accelerations of
the body-segment relative to each of the x, y, and z-axes of
an anatomical reference frame;
Pi's Br. in Opp'n Ex. A at 3, Docket No. 20-2.
However, the underlined language is missing from the original
version of the claim.
on the printing error, Microsoft moved to dismiss the patent
infringement action under Rule 12(b)(6) of the Federal Rules
of Civil Procedure. The court held a hearing on the motion on
December 15, 2016. The motion has been fully briefed and is
ripe for review.
12(b)(6) motion tests the sufficiency of the plaintiffs
complaint, which must contain "a short and plain
statement of the claim showing that the pleader is entitled
to relief." Fed.R.Civ.P. 8(a); see also Presley v.
City of Charlottesville, 464 F.3d 480, 483 (4th Cir.
2006). When deciding a motion to dismiss under this rule,
"the reviewing court must determine whether the
complaint alleges sufficient facts 'to raise a right to
relief above the speculative level' and 'to state a
claim to relief that is plausible on its face.'"
Goldfarb v. Mayor & City Council of Baltimore, 791
F.3d 500, 508 (4th Cir. 2015) (quoting Bell Atl. Corp. v.
Twombly, 550 U.S. 544, 555, 570 (2007)). In so doing,
the court must accept as true all well-pleaded allegations
and draw all reasonable factual inferences in the plaintiffs
favor. Id. "While no absolute bar exists, a
motion to dismiss under Rule 12(b)(6) does not typically
resolve the applicability of defenses to a well-pled
claim." Goldfarb, 791 F.3d at 508 (citing
Tobey v. Jones, 706 F.3d 379, 387 (4th Cir. 2013)).
moving to dismiss the instant action under Rule 12(b)(6),
Microsoft seeks a determination regarding the validity of
Claim 8 of the '882 Patent, as it was originally issued
by the USPTO. Smart Wearable argues that the printing error
in step (b) of Claim 8 cannot be corrected by the court, and
that the uncorrected claim is invalid under 35 U.S.C. §
112. During the hearing on the pending motion, the court
questioned whether a Rule 12(b)(6) motion is the appropriate
vehicle for resolving these issues. Upon review of applicable
caselaw, the court concludes that neither issue can be
decided at this stage of the proceedings.
Judicial Correction of Claim Terms
is well-settled law that, in a patent infringement suit, a
district court may correct an obvious error in a patent
claim." CBT Flint Partners, LLC v. Return Path,
Inc.,654 F.3d 1353, 1358 (Fed. Cir. 2011) (citing
I.T.S. Rubber Co. v. Essex Rubber Co.,272 U.S. 429,
442 (1926)). In Novo Industries, L.P. v. Micro Molds
Corp.. 350 F.3d 1348 (Fed. Cir. 2003), the United States
Court of Appeals for the Federal Circuit held that "[a]
district court can correct a patent 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." 350 F.3d at 1357. The
Court declined to make the proposed corrections to the claim
at issue in that case, since the corrections were