The Federal Circuit Breathes More Life Into Claim Preambles

By Stephen B. Schott

Claim preambles are given little weight in claim interpretation, which is seemingly incongruous with the amount of scrutiny courts give to all the other words in patent claims. But the Federal Circuit recently breathed just a little more life into preambles in Pacing Technologies, Inc. v. Garmin International, Inc.

The decision focused on US patent 8,101,843 claim 25:

• A repetitive motion pacing system for pacing a user comprising:
• a web site adapted to allowing the user to pre-select from a set of user-selectable activity types an activity they wish to perform and entering one or more target tempo or target pace values corresponding to the activity;
• a data storage and playback devices; and
• a communications device adapted to transferring data related to the pre-selected activity or the target tempo or the target pace values between the web site and the data storage and playback device.

In explaining its decision, the Federal Circuit repeatedly referred to claim 25’s preamble, pointing out how certain preamble terms affect the meaning of terms later in the claims.

Claim 25’s preamble uses two terms, “user” and “repetitive motion pacing system” that are then referred back to in subsequent claim elements. The Federal Circuit pointed out that this construction made claim 25’s preamble language so important to the entirety of the patent as to render it a “necessary component of the claimed invention,” and therefore “limiting.”

Does this case elevate the importance of claim preambles, and, if so, will it change the way that practitioners structure them? It’s hard to know if the import of preambles is now elevated or whether this case will stand by itself, but in either case, practitioners would be wise to craft preambles with care.

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