Federal Circuit Finds Preamble Limiting When It Supplies the Claim’s Structure

In SIMO Holdings Inc., v. Hong Kong uCloudlink Network Technology LTD, No. 19-2411 (Fed. Cir. Jan. 5, 2021), the Federal Circuit reversed a district court’s summary judgment order on infringement on claim construction grounds.

SIMO’s patented invention allows users to reduce roaming charges on their phones when traveling abroad. Claim 8’s preamble described a variety of structures, including a “non-local calls database.” SIMO agreed that part of the preamble limits the claim but argued that the “non-local calls database” phrase does not. The Federal Circuit disagreed. It explained that even if the language is in the preamble, a view the Court questioned, the language is still limiting because it supplies the claim’s structure. The Court acknowledged that this construction excludes some embodiments but explained that the claim’s language outweighed the specification’s countervailing evidence. Since the accused product did not include a non-local calls database, the Court held that uCloudlink’s product does not infringe.