Marrin v. Griffin, 599 F.3d 1290 (Fed. Cir. 2010) (DYK & Bryson; NEWMAN, dissenting) MarrinGriffin03222010
MAJOR ISSUES: claim preamble as limitation; anticipation; preamble as basis for distinguishing prior art; prosecution history; negative limitation
COMMENT. Claims typically have three parts: a preamble, a transition (such as “comprising”) and a body of limitations (elements). Whether the preamble limits a claim’s scope can be critical either in determining infringement or, as in this case, in assessing the claim’s validity over the prior art. In this case, the majority held a preamble not limiting when it stated an intended use and when, contrary to the patent owner’s argument, the preamble phrase was not relied upon during prosecution to distinguish the prior art. Dissenting, Judge Newman protests against any “presumption” that a use preamble is non-limiting.
1. SCRATCH-OFF LABEL. A patent concerned a “scratch-off” label. U.S. Pat. No. 5,154,448. USPatNo5154448 The label allowed persons to mark their beverage containers to keep track of them at parties. The patent’s claim recited “A scratch-off label for permitting a user to write thereon without the use of a marking implement, comprising …” (1) a colored “permanent base” and (2) a “coating of scratch-off non-transparent material” of a contrasting color.
2. In an infringement suit, a district court held that the preamble was not limiting and granted summary judgment that the patent’s claim was invalid for anticipation by at least eight prior art patents on “scratch-off” devices.
3. On appeal, the patent owner argued that the preamble was limiting and that the prior art “did not disclose the ability of a user of a scratch-off device to write without the use of a marking implement.” The Federal Circuit disagreed and, consequently, held that the claim was anticipated because at least one prior art reference showed all the claim limitations other than the writing-without-marking-implement preamble. The preamble was a statement of intended use. Such statements are “rarely treated as claim limitations.”
4. PROSECUTION HISTORY. The majority agreed that a preamble may be limiting if the patent owner clearly relied on it during prosecution to distinguish prior art. Here, however, the prosecution history showed that the inventors “did not consider the writing use for their claimed invention as being patentably significant.” The original claim lacked the disputed preamble, but contained a phrase indicating that scratching through the scratch-off layer revealed the permanent layer of contrasting color “thereby providing a writing means whereby a person can mark on the label without the need for a writing implement.” Proceeding pro se, the inventors revised the claim to delete the “thereby” phrase and add the preamble, explaining to the examiner that “writing means” was not an element of the invention.
Judge Newman disagreed with the majority’s treatment of the prosecution history. The inventors did argue that “no specific `writing means’ is required” but retained the inventive concept that the claimed label “accept[ed] writing without a particular marking instrument, and without preprinted information underneath.”
5. “PRESUMPTION AGAINST READING A STATEMENT OF PURPOSE” AS A LIMITATION: APPLICABLE EVEN THOUGH A CLAIM MAKES NO SENSE WITHOUT REFERENCE TO STRUCTURE IN PREAMBLE. The majority noted Judge Newman’s assertion that “the presumption against reading a statement of purpose in the preamble as a claim limitation” did not apply “because the body of the claim makes no sense without the preamble’s reference to a `label.’ ” It stressed that such was true in prior decisions holding preamble purpose statements not limiting. E.g., Intirtool, Ltd. v. Texar Corp., 369 F.3d 1289, 1296 (Fed. Cir. 2004). Thus, “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.”
CROSS REFERENCES. On preambles as limitations to claims, Chisum Patent Law Digest 2431; Chisum on Patents 8.06[d].