August, 29th, 2017

By Patrick D. Duplessis

In the recent holding in Georgetown Rail v. Holland (Fed. Cir. August 1, 2017), the Federal Circuit again addressed the question of whether a patent claim preamble is limiting.

A patent claim typically includes three parts: (i) the preamble; (ii) the transition term; and (iii) the body.

The preamble is an introductory phrase that provides context for the claim. The transition phrase (e.g., “comprising,” “consisting of,” etc.) signals a transition from the preamble to the body. The body recites the elements or steps of the claimed invention.

The scope of a patent claim is limited by the elements recited in the body. In contrast, the preamble generally does not limit the scope of the claim. There are exceptions to this general rule, though. The preamble may be limiting if: (i) it recites essential structure or steps; (ii) it provides antecedent basis for an element recited in the body of the claim; (iii) the applicant used the preamble to distinguish over prior art during prosecution; and/or (iv) it “breathes life” into the claim.

In Georgetown Rail, the plaintiff’s infringement case turned on whether the preamble of claim 16 of U.S. Patent No. 7,616,329 was limiting.

Claim 16 of the ‘329 patent recites, in relevant part:

A system for inspecting a railroad track bed, including the railroad track, to be mounted on a vehicle for movement along the railroad track, the system comprising:

at least one light generator positioned adjacent the railroad track . . . ;

at least one optical receiver positioned adjacent the railroad track . . . ; and

at least one processor for analyzing the plurality of images and determining one or more physical characteristics of the said portion of the railroad track bed . . . .

The defendant’s accused system included “at least one light generator” and “at least one optical receiver” “mounted on a vehicle for movement along [a] railroad track” as recited in claim 16. However, the processor of the accused system was located back at the defendant’s office. The defendant argued that there could be no infringement of claim 16 because only a portion of the accused system was “mounted on a vehicle” as recited in the preamble.

The Federal Circuit sided with the plaintiff and held that claim 16 of the ‘329 patent does not require that the entire “system” be “mounted on a vehicle” as recited in the preamble. That is, the Federal Circuit held that the preamble of claim 16 is not limiting.

The court found that, in the context of the entire patent, it was apparent that the phrase “mounted on a vehicle for movement along the railroad track” was only meant to describe an intended use of the claimed invention, and thus it was not meant to limit the scope of the claimed system. Further, the court found nothing in the specification or prosecution history of the ‘329 patent that stated or suggested that the plaintiff intended for the preamble of claim 16 to be limiting.

The plaintiff benefited from the fact that the specification specifically noted that the processing “can be performed by another computer system” other than one located on the inspection vehicle. The Court cited this disclosure to support its conclusion that the location of the system was not an essential feature of the claimed invention.

Takeaways

When drafting the preamble of a patent claim, make it short and simple to avoid ambiguity as to whether the preamble is intended to limit the scope of the claim.

The specification of patent application can be drafted to resolve any ambiguity as to whether a preamble is intended to limit the scope of a claim.

During prosecution of patent application, avoid discussing the preamble to the extent possible. Rely exclusively on elements in the body of the claim when distinguishing over prior art.

WHIPgroup is leading counsel for U.S. and international technology companies. We specialize in patent and trademark law.

© 2017 Whitmyer IP Group, Stamford, Connecticut.

© Copyright 2018 Whitmyer IP Group