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 tracking system of at least one mobile unit” was found to include as a limitation the [b] destination tracking system because the mobile unit provides antecedent basis to other language found in the body of the claim, but not to include as a limitation the [a] generating language simply because it was also part of the preamble. “That the phrase in the preamble … provides a necessary structure for claim 1 does not necessarily convert the entire preamble into a limitation, particularly one that only states the intended use of the invention.” This would be a good case to consult and cite in response to an Examiner’s interpretation of the entire preamble as limiting in view of only a subset of elements providing antecedent basis for language in the claim body.
Background / Facts: The patent being asserted here is directed to providing a mobile unit with current, and continuously updated, accurate road network, route, and traffic information. The preamble of claim 1 recites “[a] method for generating and updating data for use in a destination tracking system of at least one mobile unit comprising … .” The parties do not dispute that the phrase “destination tracking system of at least one mobile unit” is limiting because the claims do not concern just any “mobile unit,” but rather “generating and updating data for use in a destination tracking system of at least one mobile unit.”
Issue(s): Whether, because the preamble phrase “at least one mobile unit” provides antecedent basis for the later use of the terms “said mobile unit” and “the mobile unit” in the body of the claim, the entire preamble including the “generating” language constitutes a limitation.
Holding(s): No. “[T]he [district] court erred in determining that it had to construe the entire preamble if it construed a portion of it. [] That the phrase in the preamble ‘destination tracking system of at least one mobile unit’ provides a necessary structure for claim 1 does not necessarily convert the entire preamble into a limitation, particularly one that only states the intended use of the invention. Thus, the generating language is not limiting and does not provide an antecedent basis for any of the claims. Rather, it is language stating a purpose or intended use and employs the standard pattern of such language: the words ‘a method for a purpose or intended use comprising,’ followed by the body of the claim, in which the claim limitations describing the invention are recited.”