Intended Use Language in Claim Preamble Was Not a Claim Limitation
March 22, 2010
Last Month at the Federal Circuit - April 2010
Judges: Newman (dissenting), Bryson, Dyk (author)
[Appealed from: C.D. Cal., Judge Wu]
In Marrin v. Griffin, No. 09-1031 (Fed. Cir. Mar. 22, 2010), the Federal Circuit affirmed the district court’s finding of invalidity and held that “for permitting” language in the preamble of a claim was not a limitation because (1) it only added a statement of a purpose or an intended use for the invention, and (2) the patentee did not demonstrate clear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art.
Inventors Jeffrey and Claudia Griffin conceived of the idea of using a scratch-off label to mark beverage containers and cups so that attendees of a gathering or party could keep track of their beverage cups. The Griffins filed a patent application entitled “Scratch-Off Marking Label,” which issued as U.S. Patent No. 5,154,448 (“the ’448 patent”). The preamble of claim 1, which is representative of the four disputed claims, reads: “1. A scratch-off label for permitting a user to write thereon without the use of a marking implement, comprising: . . . .”
The district court granted SJ, finding the ’448 patent invalid under 35 U.S.C. § 102(b) as anticipated by several prior art references. The district court noted that the Griffins’ only basis for distinguishing the prior art was the preamble language. Based on its finding that the preamble language was not limiting, the district court found that the claims of the ’448 patent were anticipated. On appeal, the Griffins’ primary contention was that the district court improperly failed to treat the “for permitting” language in the preamble as a claim limitation.
The Federal Circuit affirmed the district court and held that the “for permitting” language of the preamble was not a claim limitation. The Court held that while clear reliance on a preamble during prosecution can distinguish a claimed invention from the prior art and render the preamble a claim limitation, in this case, the preamble language only added an intended use, namely, that the scratch-off layer may be used for writing. The Court held that for apparatus claims, such as those in the ’448 patent, patentability generally depends on the claimed structure rather than the use or purpose of that structure.
The Court also pointed to the prosecution history, which established that the Griffins did not consider the writing use for their claimed invention as patentably significant. The original patent application included a “writing means whereby a person can mark on the label without the need for a writing implement” in the body of the claim. The Griffins had amended the claim by removing the “writing means” language and expressly attested that it was not a claim limitation. In the Court’s view, the Griffins’ disclaimer supported the conclusion that the “for permitting” language in the preamble was not a claim limitation. Having determined that the preamble was not limiting, the Federal Circuit concluded that the ’448 patent was anticipated by several prior art references.
Judge Newman dissented, maintaining that it is incorrect to construe a claim so as to delete limitations stated in the claim—including the preamble clause—and then to find the claim anticipated as a result. According to Judge Newman, the preamble in this case was more than a mere statement of purpose or use, for the specification’s description of the invention and discussion of the prior art required the features set forth in the preamble, and the prosecution record confirmed the reliance on those features for patentability.
Summary authored by Armon B. Shahdadi, Esq.