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Claim Preambles as Limitations- the Saga Continues

February 25, 2015
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The preamble of a patent claim normally recites some purpose or objective, but is generally not considered to limit the scope of the claim unless it "breaths life and meaning into the claim." There are a number of ways that the preamble can take on patentable weight, including by serving as the antecedent basis for a limitation in the body of the claim.

In Pacing Tech v. Garmin, the Federal Circuit added a new wrinkle to the analysis of whether a preamble can serve as a claim limitation. Pacing Techs. sued Garmin asserting infringement of U.S. Patent No. 8,101,843. The independent claim at issue recites a preamble of "[a] repetitive motion pacing system for pacing a user." The body of the independent claim does not further incorporate the "repetitive motion pacing system," although the term "user" is repeated. Further, a separate, dependent claim does recite "the repetitive motion pacing system."

The Federal Circuit determined that the repetition of the term "user" and recitation of the "repetitive motion pacing system" in a separate claim were sufficient to render the preamble of the independent claim a limitation. As a result, the court determined that practicing the independent claim was deemed to require repetitive motion pacing, and Garmin's accused product did not infringe the asserted claims.

The decision increases the circumstances under which a claim preamble can be considered limiting. As a result, it may become easier to limit the scope of a claim based on the stated intended purpose or object contained in the preamble.

The full opinion is available here.


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