Federal Circuit Says Patent Preamble Not Limiting
By Debbie Rosenbaum – Edited by Jad Mills
Marrin v. Griffin, Appeal 2009-1031 (Fed. Cir., Mar. 22, 2010)
On March 22, 2010, the Federal Circuit affirmed the district court’s summary judgment that U.S. Patent No. 5,154,448, which related to a beverage cup scratch-off label, was invalid because it was anticipated under 35 U.S.C. § 102(b).
Judge Dyk, writing for the majority held that the use recited in the preamble, namely that the scratch-off label was “for permitting a user to write thereon without the use of a marking implement.” was not to be treated as a claim limitation. In finding that this use statement in the preamble was not limiting, the court noted that “use descriptions such as this are rarely treated as claim limitations.” The court held that “the mere fact that a structural term in the preamble is part of the claim does not mean that the preamble’s statement of purpose or other description is also part of the claim.” Because the preamble was not limiting, the patent owner could not use it to distinguish the patent from the prior art, thus allowing the court to invalidate the patent under section 102(b).
Inventive Step and Patent Hawk both offer good overviews of the case. Patent Case Review provides a summary of the legal issues. Gary Odom of Patent Hawk argues that “Judge Newman got it right, which is to say that this nicely self-contained issue is ripe for en banc review. The inconsistent treatment of preambles begs for clarity.” (more…)