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 claim because it provided antecedent basis for the “repetitive motion pacing system” recited as a positive limitation in one of the dependent claims. When a preamble term “provide[s] antecedent basis for and [is] necessary to understand positive limitations in the body of claims in the [] patent, we hold that the preamble to [that] claim [] is limiting.” It may therefore be best to avoid reciting positive limitations of any dependent claim in the independent claim preamble.
Background / Facts: The patent being asserted here is directed to methods and systems for pacing users during activities that involve repeated motions, such as running, cycling, and swimming, by providing the user with a tempo (for example, the beat of a song or flashes of light) corresponding to the user’s desired pace. The asserted independent claim 25 is directed to “[a] repetitive motion pacing system for pacing a user” that comprises various components. The district court interpreted a “repetitive motion pacing system” as requiring the claimed device to play back the pace information using a tempo, which the accused device does not do.
Issue(s): Whether the “repetitive motion pacing system” recited in the preamble of claim 25 is limiting on the interpretation of claim 25.
Holding(s): Yes. “The term ‘repetitive motion pacing system’ in the preamble of claim 25 similarly provides antecedent basis for the term ‘repetitive motion pacing system’ recited as a positive limitation in the body of claim 28, which depends from claim 25. Claim 28 of the [] patent reads: ‘[t]he repetitive motion pacing system of claim 25, wherein the repetitive motion pacing system can determine a geographic location of the data storage and playback device.’” Accordingly, because the preamble term “repetitive motion pacing system” provides “antecedent basis for and [is] necessary to understand positive limitations in the body of claims in the [] patent, we hold that the preamble to claim 25 is limiting.”