TOMTOM, INC. v. ADOLPH (Fed. Cir. 2015) (P) – A portion of a claim preamble being a limitation does not require the entire preamble to be a limitation

by Steve Driskill | Jun 19, 2015 | [sub] preamble, Claim Interpretation

The fact that a portion of a claim preamble may be interpreted as a constituting a limitation does not require that the entire preamble constitute a limitation. Here, for example, the preamble “method for [a] generating and updating data for use in [b] a destination...

PACING TECHNOLOGIES, LLC v. GARMIN INTERNATIONAL, INC. (Fed. Cir. 2015) (P) – A claim preamble can be limiting even when it only breathes life into a dependent claim

by Steve Driskill | Feb 18, 2015 | [sub] preamble, Claim Interpretation

A claim preamble can be limiting of that claim even when it only breathes life into another claim dependent thereon. Here, for example, a “repetitive motion pacing system” as recited in the preamble of an independent claim was found to be limiting of that independent...

ROTATABLE TECHNOLOGIES LLC v. MOTOROLA MOBILITY LLC (Fed. Cir. 2014) (NP) – Specification and prosecution history may transform preamble into a limitation

by Steve Driskill | Jun 27, 2014 | [sub] preamble, Claim Interpretation

“A preamble may limit the claimed invention if it recites additional structure or steps that the specification underscores as important, or if it is clearly relied on during prosecution to distinguish the claimed invention from the prior art.” Background / Facts: The...

NOVATEK, INC. v. THE SOLLAMI COMPANY (Fed. Cir. 2014) (NP) – Preamble limitations

by Steve Driskill | Mar 26, 2014 | [sub] preamble, Claim Interpretation

Limitations in the body of the claim that rely upon and derive antecedent basis from the preamble may render the preamble a necessary component of the claimed invention. A claim drafter should therefore take care to avoid, as here, converting the entire preamble into...

PIGGY PUSHERS, LLC v. SKIDDERS FOOTWEAR, INC. (Fed. Cir. 2013) (NP) – Preamble limitations

by Steve Driskill | Nov 8, 2013 | [sub] preamble, Claim Interpretation

A particular preamble may be deemed to be limiting if, when the elements recited in the body of the claims are combined as claimed, the result must itself be the type of device recited in the preamble. Background / Facts: The patent being asserted here is directed to...

TEXTRON INNOVATIONS INC. v. AMERICAN EUROCOPTER CORP. (Fed. Cir. 2012) (NP) – Preamble limitations & DOE disavowal

by Steve Driskill | Sep 7, 2012 | [sub] doctrine of equivalents, [sub] preamble, Claim Interpretation

If “the body of the claim fully and intrinsically sets forth the complete invention, including all of its limitations, and the preamble offers no distinct definition of any of the claimed invention’s limitations, but rather merely states, for example, the purpose or...