Intellectual Property Law

Preamble not limiting when duplicative of claim limitations and not added to overcome rejection

By McKee, Voorhees & Sease, P.L.C.

In a recent decision, the Federal Circuit held that a district court erred in its construction of several claim terms in a patent, and as a result, vacated the district court's summary judgment of noninfringement and no invalidity.  The court affirmed the district court's decisions regarding several other issues, including laches, inequitable conduct, and inventorship.

One of the claim terms at issue was in the preamble of the claims.  The court noted that "if [the preamble term] is reasonably susceptible to being construed to be merely duplicative of the limitations in the body of the claim (and was not clearly added to overcome a rejection), we do not construe it to be a separate limitation."

More detail of Symantec Corp. v. Computer Assocs. Int'l, Inc. after the jump.

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Full post as published by FileWrapper on April 16, 2008 (boomark / email).