Intellectual Property Law

Preamble held not limiting because body of claim sets forth complete invention

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

In a recent decision, the Federal Circuit reversed a decision of the United States District Court for the District of Massachusetts. The district court had granted summary judgment of noninfringement to the defendant finding that the defendant's accused device did not perform a function found only in the preambles of the asserted claims.

The Federal Circuit held that the disputed preamble term did not limit the asserted claims, and therefore, reversed and remanded the case for further findings.  Specifically, the court noted there was no suggestion in the prosecution history that the preamble was limiting, the preamble did not provide any antecedent basis for terms in the body of the claim (even though one element used "the" in the body of the claim), and the preamble did not define an essential component of the invention, such that the body of the claim defined the complete invention.  Based on these factors, the preamble was not a limitation of the claim, and the summary judgment of noninfringement was reversed.

Judge Dyk dissented, and invited the court to take the issue of preambles en banc to create a bright-line rule that preambles are always limiting, rather than relying on the context of each patent.

More concerning Am. Med. Sys., Inc. v. Biolitec, Inc. after the jump.

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Full post as published by FileWrapper on September 20, 2010 (boomark / email).