Patents

Does the Preamble Constitute a Limitation of the Claim?

On September 13th, the United States Court of Appeals for the Federal Circuit decided American Medical Systems, Inc. v. Biolitec, Inc., which involved an important issue in patent claim interpretation: when does the preamble of a patent claim constitute a limitation of that claim?

For the uninitiated, a patent claim defines the scope of protection conferred by the patent and is usually divided into three separate parts: a preamble, a transitional phrase, and a body.  The preamble comes first and is often used to describe the environment in which the invention resides, to describe a field of intended use, and/or to provide antecedent basis for (i.e., to introduce) one or more terms in the claim body.  As an example, a representative claim from the patent involved in American Medical Systems is shown below with its preamble underlined and in boldface:

31.        A method for photoselective vaporization of tissue, comprising:

delivering laser radiation to a treatment area on the tissue, the laser radiation having a wavelength and having irradiance in the treatment area sufficient to cause vaporization of a substantially greater volume of tissue than a volume of residual coagulated tissue caused by the laser radiation, wherein the delivered laser radiation has an average irradiance in the treatment area greater than 10 kiloWatts/cm2 in a spot size at least 0.05 mm2.

In this case, the majority found that the above preamble phrase “photoselective vaporization of tissue” did not constitute a limitation of the claim.  The majority found it significant that the preamble: (1) merely describes the invention set forth in the body of the claim; (2) was not used to overcome prior art; and (3) was not necessary to provide antecedent basis for the term “tissue” (even though it was used for this purpose).

Before announcing its decision, the Court reviewed the case law in this area and summarized the general guidelines for determining whether a preamble constitutes a claim limitation:

1.         Generally, a preamble does not limit a claim

2.         Whether a preamble limits a claim is determined based on the facts of each case in light of the claim as a whole and the invention described in the patent

3.         A preamble phrase will limit a claim where the phrase: (a) recites essential structure or steps; (b) is necessary to give “life, meaning, and vitality” to the claim; or (c) was added during prosecution to overcome prior art

4.         A preamble phrase will not limit a claim where: (a) the deletion of the phrase does not affect the structure or steps of the claimed invention; (b) the phrase is duplicative of the limitations in the claim body; or (c) the phrase is merely descriptive

As readily argued by the dissent, these guidelines will be difficult to apply in some cases, and this entire body of law should probably be reviewed by the Court en banc.  Until then, however, patent applicants and their attorneys must carefully consider the implications of these guidelines when drafting patent claims or conducting non-infringement or invalidity investigations.

For more information, please visit: http://www.patentlyo.com/patent/2010/09/construction-of-preamble.html?cid=6a00d8341c588553ef0133f42c583f970b

Andrew Haynes

About Andrew Haynes

Andrew Haynes concentrates his practice on intellectual property matters with a focus on patent and trademark prosecution. He is registered to practice before the U.S. Patent and Trademark Office. Andrew’s practice includes drafting and prosecuting domestic and foreign patent applications that cover a wide range of industries, including those in the mechanical, electrical, software, and business method fields. He also regularly conducts freedom-to-practice, invalidity, and infringement investigations, and has experience counseling clients on a variety of intellectual property matters.

Discussion

No comments yet.

Leave a comment

Your email address will not be published. Required fields are marked *

Welcome to the MVA IP Law Blog!

Moore & Van Allen’s IP Law Blog covers hot topics in U.S. and international intellectual property law and provides insight into critical litigation, legislative, regulatory and policy developments. In today’s highly competitive and rapidly developing business climate, technological advancements and the protection of intellectual property rights are paramount concerns common to companies, universities, and individuals operating in nearly every industry.

Connect to Recent Authors

  • Matt Witsil:  View Matt Witsil's Bio View Matt Witsil's LinkedIn profile
  • Emmett Weindruch: View Emmett Weindruch's Bio View Emmett Weindruch's LinkedIn profile
  • Todd Taylor:  View Todd Taylor's Bio View Todd Taylor's LinkedIn profile
  • John Slaughter:  View John Slaughter's Bio View John Slaughter's LinkedIn profile
  • Nick Russell:  View Nick Russell's Bio
  • Ellen Rubel:  View Ellen Rubel's Bio View Ellen Rubel's LinkedIn profile
  • Esther Queen:  View Esther Queen's Bio View Esther Queen's LinkedIn profile
  • Steve Phillips:  View Steve Phillip's Bio View Steve Phillip's LinkedIn profile
  • Chuck Moore:  View Chuck Moore's Bio View Chuck Moore's LinkedIn profile
  • Mark Wilson:  View Mark Wilson's Bio View Mark Wilson's LinkedIn profile
  • Chris Knors:  View Chris Knors' Bio View Chris Knors' LinkedIn profile
  • Jeff Gray:  View Jeff Gray's Bio View Jeff Gray's LinkedIn profile
  • Andy Gerschutz:  View Andy Gerschutz's Bio View Andy Gerschutz's LinkedIn profile
  • Jim Edwards:  View Jim Edwards' Bio View Jim Edwards' LinkedIn profile

  • Subscribe to Blog via Email

    Follow MVA

    Facebooktwitterlinkedinrss

    Blog Topics

    Archives


    Our IP Practice

    Moore & Van Allen is located in the Research Triangle and Charlotte, North Carolina – two emerging hubs in the areas of biotech and energy. Moore & Van Allen’s intellectual property lawyers are highly-skilled and innovative in their approach to assisting clients in using patents, trademarks, copyrights, trade secrets and technology to achieve their business objectives.

    Our “business focused” team combines legal know-how with the technical proficiency and industry experience necessary to navigate our clients through matters in areas as diverse as nuclear power, navigation systems, microprocessor design, pollution control, pharmaceuticals, semi-conductor manufacturing, food processing, telecommunications, internet applications, computer software, business methods and consumer products.

    We offer a full range of patent, trademark, and copyright services, and our team is equipped with IP litigators with substantial state, federal, and international experience. To benefit and best serve our clients, we leverage our ongoing working relationships with highly qualified intellectual property practitioners and agents in virtually every country in the world. Read More About Our Practice and Meet the MVA IP Team.

    Disclaimer

    No Attorney-Client Relationship Created by Use of this Website: Neither your receipt of information from this website, nor your use of this website to contact Moore & Van Allen or one of its attorneys creates an attorney-client relationship between you and Moore & Van Allen. As a matter of policy, Moore & Van Allen does not accept a new client without first investigating for possible conflicts of interests and obtaining a signed engagement letter. (Moore & Van Allen may, for example, already represent another party involved in your matter.) Accordingly, you should not use this website to provide confidential information about a legal matter of yours to Moore & Van Allen.


    No Legal Advice Intended: This website includes information about legal issues and legal developments. Such materials are for informational purposes only and may not reflect the most current legal developments. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. You should contact an attorney for advice on specific legal problems. (Read All)