Southwest Software, Inc. v. Harlequin Inc. mandates that a " certificate of correction is only effective for causes of action arising after it was issued." 226 F.3d 1280, 1294 (Fed. Cir. 2000). In Southwest Software, Southwest sued Harlequin for infringement on January 20, 1995.

See, e.g., Specialty Composites v. Cabot Corp., 845 F.2d 981, 987 (Fed. Cir. 1988) (noting that what is patented "is defined by the words in the claims if those claims are supported by the specification in the manner required by 35 U.S.C. § 112.") Ken argues that given claim construction, there is at least a genuine issue of material fact as to whether the certificate of correction that added "Japan" to the patent constituted a new matter to require a 1997 filing date. To determine whether the certificate of correction constituted new matter requires analysis of a recent Federal Circuit decision, Southwest Software v. Harlequin, Inc., 226 F.3d 1280 (Fed. Cir. 2000) recently decided. 1. Certificate of Corrections Under Southwest Software

35 U.S.C. § 255; see also 35 U.S.C. § 254. The Federal Circuit construed 35 U.S.C. § 254, which has the same language as § 255 regarding when it takes effect, in Southwest Software, Inc. v. Harlequin, Inc., 226 F.3d 1280 (Fed. Cir. 2000). The Southwest patentee sought to apply retroactively its certificate of correction by construing the language, "causes thereafter arising," as including all causes of action which arose after the patent's issue date.

Microsoft cites no case, however, in which the courts have applied prosecution laches to an alleged delay in seeking a certificate of correction. It points to Southwest Software, Inc. v. Harlequin, Inc., 226 F.3d 1280, 1296 (Fed. Cir. 2000) where the Federal Circuit observed that "it does not seem to us to be asking too much to expect a patentee to check a patent when it is issued in order to determine whether it contains any errors that require the issuance of a certificate of correction." The Federal Circuit made that observation, however, in holding that a certificate of correction does not have retroactive effect to causes of action arising before its issuance.

Section 254 is substantially similar in this respect. As we held in Southwest Software, Inc. v. Harlequin Inc., 226 F.3d 1280 (Fed. Cir. 2000), under sections 254 and 255, a "certificate of correction is only effective for causes of action arising after it was issued." Id. at 1294.

Id. at 1341-42. The dissent questions the need to construe § 255 in this manner, citing our holding in Southwest Software, Inc. v. Harlequin, Inc., 226 F.3d 1280, 56 USPQ2d 1161 (Fed. Cir. 2000). In Southwest, we held that a certificate of correction issued under § 254 is valid only for claims arising after the certificate issued.

A party that does not move for JMOL before the case is submitted to the jury cannot on appeal challenge the sufficiency of the evidence underlying presumed jury findings. See Southwest Software, Inc. v. Harlequin Inc., 226 F.3d 1280, 1290, 56 USPQ2d 1161, 1168 (Fed. Cir. 2000); Young Dental Mfg. Co. v. Q3 Special Prods., Inc., 112 F.3d 1137, 1141, 1142 UPSQ2d 1589, 1592 (Fed. Cir. 1997).

Celeritas Techs., Ltd. v. Rockwell Int'l Corp., 150 F.3d 1354, 1358, 47 USPQ2d 1516, 1519 (Fed. Cir. 1998). If a party fails to move for JMOL at the close of all the evidence, that party is precluded from later challenging the sufficiency of the evidence supporting the jury's factual findings. See Southwest Software, Inc. v. Harlequin Inc., 226 F.3d 1280, 1290, 56 USPQ2d 1161, 1168 (Fed. Cir. 2000). I. INFRINGEMENT

Defendant asserts that the certificate of correction should have no impact on this case because, under 35 U.S.C. § 254, a certificate of correction has no effect on causes of action instituted prior to the issuance of the certificate. Defendant maintains that the patent in suit must stand or fall without the correcting language, citing E.I. Du Pont De Nemours Co. v. MacDermid Printing Solutions, LLC, 525 F.3d 1353, 1362 (Fed. Cir. 2008), Novo Indus., L.P. v. Micro Molds Corp., 350 F.3d 1348, 1356 (Fed. Cir. 2003), and Southwest Software, Inc. v. Harlequin, Inc., 226 F.3d 1280, 1295-96 (Fed. Cir. 2000). Plaintiffs respond that Defendant has ignored the basic distinction between the commencement of a lawsuit and the accrual of a cause of action for infringement, citing STMicroelectronics, Inc. v. Motorola, Inc., 327 F. Supp. 2d 687, 700 (E.D. Tex. 2004) (holding that under Southwest Software the relevant inquiry is the date the cause of action arose, not when suit was filed).

(See Certificates of Correction, attached as Exh. A to Pl.'s Mem. in Opp. to Revised Mot. for Summ. J. No. 5.) It is clear that the certificates of correction, once issued, have prospective application. See 35 U.S.C. § 255; Southwest Software, Inc. v. Harlequin, Inc., 226 F.3d 1280, 1294 (Fed. Cir. 2000). Hypertech argues, however, that the corrected effective filing date does not apply retroactively in this lawsuit, which was filed before the certificates of correction were issued.