Should Preambles “Count” – The Debate Continues

On September 13th, the Fed. Cir. reversed a summary determination of non-infringement which turned on the question of whether or not to give weight to a term that appeared only in the preamble of a claim to a prostate treatment involving laser ablation. American Med. Systems, Inc. and Laserscope v. Biolitec, Inc., 2009-1323 (Fed. Cir. Sept. 13, 2010) (link at the bottom of post). The district court found that the recitation that the method was one for “photoselective vaporization of tissue” in the preamble effectively limited the claim to wavelengths of light that were highly absorbed by tissue but not by the water used in the procedure. The infringer was using a higher wavelength, and the district court found that this did not meet the “photoselective vaporization” limitation.

The majority of the Fed. Cir. panel disagreed, stating that “most importantly, the descriptor ‘photoselective’ does not embody an essential component of the invention… [but] is simply a descriptive name for the invention that is fully set forth in the bodies of the claims… nothing in the claim language suggests that the term ‘photoselective’ further limits [the wavelengths recited in the apparatus claims].” The panel referred to “photoselective vaporization” as a “label for the overall invention, and not a limitation on the claims.” The majority found that the denigration of the prior art “does not rise to the level of a disclaimer of wavelengths [disclosed to be preferable by patentee].”

In a vigorous dissent, Judge Dyk noted: “Over the years our court has struggled to make sense of when a preamble should be construed as limiting…[and] we have not succeeded in articulating a clear and simple rule…. It seems to me that a rule recognizing that all preambles are limiting would make better sense and would better serve the interests of all concerned.” On the facts, Judge Dyk would have found the term in question limiting, if only on the basis that patentee committed “patent profanity” (as Tom Irving has referred to it) by including statements in the specification that “the wavelength used according to the present invention for BPH treatment [accomplishes photoselective vaporization].” Judge Dyk noted that “we have repeatedly held that the use of words ‘the present invention’ can be read to limit the invention to what is described as such…. by adding this terminology [in a CIP] during the prosecution of the ‘764 patent, the patentee conceded that the term gave life, meaning and vitality to the claims.”

This somewhat sarcastic reference to the oft-quoted and nearly poetic legal standard from Pitney Bowes (or is it older?) aside, a global rule that preambles always are claim limitations would conflict with the maxim that statements of intended use in preambles (or anywhere else) are not limiting. A rule that they are limitations would convert all those claims that begin: “A composition for treating condition x comprising ingredients a, b and c “ into process claims. On second thought, since there are a scattering of decisions finding that statements of intended use in preambles ARE limiting (see In re Watanabe, 315 F.2d 924), maybe it is time for patent prep/pros folks to simply STOP WRITING PREAMBLES.

At the very least, a take-away from this decision should be that anything you put in a preamble should be tested to see if it should either be put into the body of the claim or be tossed. For now, I think that the best articulation of the standard is in, inter alia, Eaton Corp. v. Rockwell Internat’l Corp., 01-1633 (Fed. Cir. 2007): “When limitations in the body of the claim rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention.” This is pretty close to a requirement for a finding of specific intent by the drafter to use the preamble as a limitation.

09-1323 09-13-10

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