Recent Federal Circuit Decision Spotlights the Differences in USPTO Certificates of Correction and Judicial Correction

The recent Federal Circuit decision in Canatex Completion Solutions, Inc. v. Wellmatics, LLC, No. 2024-1466 (Fed. Cir. Nov. 12, 2025), spotlights how, when reviewing the same issue, the Federal Circuit and the U.S. Patent and Trademark Office may apply different standards and arrive at different conclusions.

Background: Canatex asserted infringement U.S. Patent No. 10,794,122 (“the ’122 patent”), titled “Releasable Connection for a Down-hole Tool String.”  The ’122 patent claims a device used in oil and gas wells. Independent claim 1 of the ’122 patent, which is representative, recites in part:

1. A releasable connection for a downhole tool string, comprising

a first part comprising an external connection profile; and

a second part comprising: …

…

a locking piston positioned within an internal cavity of the second part, the locking piston configured to move axially along the second part between a locking position that directly constrains the releasable engagement profile into engagement with the connection profile of the first part and a release position that permits the releasable engagement profile to expand radially to release the connection profile of the second part …

Wellmatics argued that the asserted claims are invalid for indefiniteness because the claim term “the connection profile of the second part” lacks an antecedent basis. Canatex, 2. Canatex countered that the court should correct the claim to read “the connection profile of the first part” because the language at issue is a “an evident error with an evident correction.” Id., 7. Wellmatics disagreed, pointing out that the alleged “error” is found throughout the patent, including in all three independent claims, the abstract, and the specification.

District Court Decision: The district court (U.S. District Court for the Southern District of Texas) agreed with Wellmatics that the asserted claims are invalid as indefinite based on the “pervasiveness of the error” and the possibility of other interpretations (e.g., eliminating the lack of antecedent basis by reading the claim as “a connection profile of the second part”). Therefore, the district court declined to make Canatex’s proposed correction. Id., 8. Canatex then appealed the decision to the Federal Circuit.

USPTO – Certificate of Correction: While Canatex’s Federal Circuit appeal was pending, Canatex submitted an eleven-page request for a Certificate of Correction at the USPTO. Under 37 C.F.R. § 1.323, a Certificate of Correction necessitated by an applicant’s mistake may only issue under the following circumstances:

• The mistake for which correction is sought is “(1) of a clerical nature, (2) of a typographical nature, or (3) a mistake of minor character”; and
• “The correction must not involve changes which would: (1) constitute new matter or (2) require reexamination.” 37 C.F.R. § 1.323 (citing In re Arnott,19 USPQ2d 1049, 1052 (Comm’r Pat. 1991)).

The USPTO denied Canatex’s request for correction under 37 C.F.R. § 1.323 because “the requested corrections are more than a clerical or typographical mistake, as demonstrated by the eleven-page explanation” and because “the corrections requested seek to change the scope of the patented claims.”   Supervisory Patent Examiner Response – Return for Certificate of Correction, U.S. Patent Application No. 15/690,324 (March 25, 2025).

Federal Circuit – Judicial Correction: The Federal Circuit reached a different conclusion than the district court and the USPTO. The Federal Circuit explained that judicial correction is permitted if certain elements are satisfied. Canatex, 10-11. First, “the error must be ‘evident from the face of the patent.’” Id., 11 (citations and quotations omitted). Second, “the correction is not subject to reasonable debate based on consideration of the claim language and the specification and … the prosecution history does not suggest a different interpretation of the claims.’” Id. (citations and quotations omitted).

Reviewing the claim language, specification, and prosecution history, the Federal Circuit found the error in the claim language to be “simple and ‘minor’ as a textual matter.” Id., 12.  As such, the Federal Circuit concluded “that the correction of ‘second’ to ‘first’ is the unique correction that captures the claim scope a reasonable relevant reader would understand was meant based on the claim language and specification.” Id., 17. The Federal Circuit therefore reversed the district court’s claim construction and remanded the case for further proceedings.

This is notable because of the differing outcomes. Patent-holders seeking certificates of correction should review these carefully and discuss with counsel.