Thursday, March 25, 2010

What's in your preamble?

Judge Newman's dissent in Michael Marrin begins:

I respectfully dissent, for the court has misunderstood the law of “anticipation” and
has misapplied the rules of claim construction.

What's at issue is the impact of limitations in the preamble:

Precedent establishes that the preamble limits the claims when it distinguishes the
use of the claimed article from the prior art, see Vita-Mix Corp. v. Basic Holding, Inc., 581
F.3d 1317, 1323-24 (Fed. Cir. 2009), as well as when it contains language that is essential
to the description of the invention, see In re Bulloch, 604 F.2d 1362, 1365 (CCPA 1979)
(“The introductory claim language ‘stable color developer concentrate’ is more than a mere
statement of purpose; and that language is essential to particularly point out the invention
defined by the claims.”). The preamble limits the claimed invention if it is “necessary to give
life, meaning, and vitality to the claim.” Pitney Bowes, Inc. v. Hewlett-Packard Co., 182
F.3d 1298, 1305 (Fed. Cir. 1999); see also Catalina Mktg. Int’l, Inc. v.,
Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (same). Our predecessor court articulated the “life,
meaning, and vitality” standard in Kropa v. Robie, 187 F.2d 150, 152 (CCPA 1951),
borrowing this congenial phrase from the Seventh Circuit’s decision in Schram Glass
Manufacturing Co. v. Homer Brooke Glass Co., 249 F. 228, 232-33 (7th Cir. 1918). This
basic rule of claim construction has never been erased, and its utility in various situations
has reinforced its vitality.

And finally

The court’s holding today distorts long-standing rules of claim interpretation, by
requiring that distinctions between the invention and the prior art must be ignored when
they are presented in the introductory clause of the claim. The majority’s claim
construction, and the ruling of anticipation based on elimination of the limitations in the
preamble of the ’448 patent claims, are contrary to law and precedent. I respectfully


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