Even If Phrase Was In the Preamble, it is a Claim Limitation that was Not Met

In Simo Holdings Inc. v. Hong Kong Ucloudlink Network Technology Ltd., [2019-2411] (January 5, 2021) the Federal Circuit reversed the district court’s final judgment of $8,230,654 for infringement of claim 8 of U.S. Patent No. 9,736,689, on apparatuses and methods that allow individuals to reduce roaming charges on cellular networks, rejecting the district court’s claim construction.

At issue was whether claim 8 required a a “non-local calls database.” The Federal Circuit noted that the language at issue follows, rather than precedes, the word “comprising,” which is one of the transition words that typically mark the end of the preamble, with what follows constituting the body of the claim. The Federal Circuit said that the placement of the language suggests that it is part of the body of the claim, a characterization that, if accepted, would place its limiting character beyond dispute. However. the parties treated the language at issue as part of the preamble, treating only the succeeding six paragraphs as the body of the claim. But even under that characterization, the Federal Circuit concluded, the language at issue is limiting. By supplying the only structure for the claimed apparatus, the Federal Circuit said that the preamble language supplies “essential structure,” and the body does not define “a structurally complete invention”—which are two key reasons for preamble language to be deemed limiting. Further supporting its conclusion that the “preamble” was limiting, the Federal Circuit noted thatthe opening language of the preamble provided an antecedent basis for terms in the body of the claim.

Simo argued that even if some parts of the preamble are limiting, some components, including the disputed “non-local calls database”, should not be deemed limiting, because they are “unnecessary to perform the functions specified after the preamble. However, the Federal Circuit declined to parse the preamble in that way where the preamble supplies the only structure of the claimed device and the disputed language does not merely identify an intended use or functional property but is “intertwined with the rest of the preamble.”

The Federal Circuit rejected the district court’s conclusion that claim 8 does not require a “non-local calls database.” The determinative issue was the phrase “a plurality of memory, processors, programs, communication circuitry, authentication data stored on a subscribed identify module (SIM) card and/or in memory and non-local calls database.” The Federal Circuit said that the district court treated the word “and” near the end of the phrase as meaning “and/or,” incorrectly concluding that “a plurality of” requires only “at least two” members selected from the entire list of identified items (memory, processors, etc.). The Federal Circuit said instead. “a plurality of” requires at least two of each of the listed items in the phrase at issue in claim 8.

Having concluded that the a non-local calls database was a required element, the finding of infringement should be reversed, and summary judgment of non-infringement should be granted.

Federal Circuit explains when you can ignore the words before the “:”

In Shoes by Firebug LLC v. Stride Rite Children’s Group, [2019-1622, 2019-1623] (June 25, 2020), the Federal Circuit affirmed the PTAB’s determination that the challenged claims of U.S. Patent Nos. 8,992,038 and 9,301,574, directed to illumination systems for footwear, were obvious.

The most interesting part of the case is one that made no difference to the outcome: when a preamble limits a claim and when it doesn’t. A preamble limits a claim if it recites essential structure or steps, or if it is necessary to give life, meaning, and vitality to the claim. Conversely, a preamble is not limiting where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.

The body of claim 1 of the ’038 patent recites a structurally complete invention, and therefore the preamble’s recitation of an “internally illuminated textile footwear” is merely an intended purpose that does not limit the claims. A preamble is not limiting ‘where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention. Unlike claim 1 of the ’038 patent, claim 1 of the ’574 patent does not reintroduce “footwear” in the body of the claim but instead relies on the instance of “footwear” introduced in the preamble for “antecedent basis.”

But it makes no difference: Although the Board did not construe the preamble as limiting, the prior “suggests using a woven, porous material in a light diffusing, internally illuminated part of footwear,” making the claims of both patents obvious.

Small differences in working can make a big difference in interpretation; decide whether you want the preamble to be a limitation and word the application and specification accodingly.