Preamble Not Limiting in This Case (Despite Being Added in OA Response)

PatentLawPic271Symantec Corp. v. Computer Associates (Fed. Cir. 2008)

The district court granted summary judgment of non-infringement to the defendant CA. On appeal, considers preamble claim construction and also examines the defense of laches, inequitable conduct, and inventorship.

This is the third time that the antivirus patent at issue has been seen by the CAFC. In a prior appeal, Symantec was a defendant. After seeing the light, Symantec purchased the patent and continued a pending lawsuit against CA — this time as the plaintiff.

Preamble Limitation: The asserted claim preamble begins as follows: “In a system for transferring digital data for storage in a computer storage medium, a method of screening the data as it is being transferred.” The question on appeal is whether the preamble limits the claim to coverage of screening that occurs only “as [the data] is being transfered.” 

The CAFC found that the preamble term not limiting because the term does not recite “essential structure or steps” nor does is it “necessary to give life, meaning, and vitality” to the claim. One guidepost for ascribing meaning to a claim preamble is a prosecution history of argument based on the preamble. Here, although the preamble term had been added during prosecution, the court found no evidence that the term had its “own independent significance” or that the applicant demonstrated “clear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art.” (Quoting Catalina Marketing, 289 F.3d 801 (Fed. Cir. 2002)).

[I]t is assumed that the preamble language is duplicative of the language found in the body of the claims or merely provides context for the claims, absent any indication to the contrary in the claims, the specification or the prosecution history.

Consequently the preamble term is given no effect. Claim construction reversed and the non-infringement decision vacated in Symantec’s favor. (Based on the new claim construction, validity must also be reconsidered).

Laches: The CAFC dismissed the defendant’s laches claim. Here, the court noted that that laches for delaying litigation is considered on a product-by-product bases and thus the delay is restarted when a defendant substantially changes its product line.

Inventorship: In a cross-appeal, a Mr. Levin asserted that he was a co-inventor to the asserted patent. As a matter of law, a co-inventor’s self-interested testimony is not sufficient to prove inventorship — rather, the inventor must provide corroborating evidence (that is sufficient to prove inventorship by a clear and convincing standard under a rule of reason). Here, Levin proved that he had a meeting with listed inventor and also that the listed inventor lacked proof that he invented a claimed portion. On appeal, the CAFC affirmed that this evidence was not sufficient to prove Levin’s inventorship and that the evidence regarding the listed inventor’s contribution was irrelevant.

Note: My former firm McDonnell Boehnen continues to represent Symantec in this matter.

27 thoughts on “Preamble Not Limiting in This Case (Despite Being Added in OA Response)

  1. Sorry #6K, once again, certainty is the hobgoblin of little minds. Not surprising to see you and Mooney in the same camp where it comes to the scourges of little minds. If patent law was so certain trained monkeys could do it. I hope that’s not the kind of job you want #6K.

    If you looked at my example above, you might find that use of the term “the” before the first recitation of “digital data” in the body of the claim, e.g. “causing a quantity of *the* digital data…” would clearly bring the term “digital data” recited in line one of the claim, e.g. the preamble, into relevance.

    Second, not sure the relevance of going final, however the applicant clearly relying on the preamble during prosecution might look something like this:”Applicant contends that the invention of claim 1 distinguishes over Jones since Jones fails to teach or suggest a system for scanning digital data while the data is being transferred, e.g. prior to storage”

    As for taking deep breaths, thanks for the recommendation, but smelling foul odors is just not my thing. But you keep right on.

    Glad you aren’t out there in the field designing airplanes or something…

  2. “”Absent clear reliance on the preamble in the prosecution history,”

    ^No cave, it’s stuff like this that MM is referring to as being WORTHLESS. According to this, if the applicant “clearly relies on the preamble” then apparently I get to go non-final on his next OA (should one be required) because of why again? How am I supposed to judge when he’s going to feel like relying on it? Maybe he does it after final?

    “or in situations where it is necessary to provide antecedent basis for the body of the claim”

    So, does it have to be needed to provide antecedent basis for the entire body of the claim? Just what are they referring to here? Any portion of the body of the claim? All of the body of the claim? Care to enlighten us mere mortals who lack your cave-dwelling prowess interpreting bs?

    Than, let’s top the cake off with “the preamble “generally is not limiting.” “”

    Oh, so it’s generally not limiting? But sometimes it is? Sometimes it should f over an “infringer” and sometimes it shouldn’t? This isn’t obviousness, it’s just a complete coin toss in the air, a decision apparently to be decided upon a whim.

    Give us people with a brain a break caveman, when clear guidance is given we’ll take it. Until then, just bury your head in the sand or take a big deep breath of the aroma coming from that big pile.

    And don’t get started on me being in my own little world, I know how to “play by the rules” of this particular branch of bslaw. That is completely 100% irrelevant to the discussion at hand.

  3. Worthless?

    I think that little gem is the answer to all your questions about preambles Mooney, and is far, far more useful than anything you’ve ever submitted on this website . If you’re so smart, why aren’t you on the CAFC?

    You’re worthless.

  4. “An interesting thing about this decision is that while the preamble arguably does not give life to the claim, this is only because the interpretation of “storage” was badly construed (twice).”

    Agreed, PatentObserver. It’s the crappy claim construction that led to this crappy case and (in part) it’s the crappy preamble case law that led to the crappy claim construction. On top of it all, it’s simply a crappy claim that was poorly drafted and then poorly examined.

    I haven’t read all the papers filed in the preceding lower court cases but I would imagine that the preamble, for all its meaninglessless, was taken into consideration when this claim was construed. The idea that the terms in the “body” of the claim could or should be understood by one skilled in the art WITHOUT recognizing that the method relates to “a system for transferring digital data for storage in a computer storage medium” is preposterous.

  5. “Absent clear reliance on the preamble in the prosecution history, or in situations where it is necessary to provide antecedent basis for the body of the claim, the preamble “generally is not limiting.” ”

    Worthless.

  6. 1. In a system for transferring digital data for storage in a computer storage medium, a method of screening the CMAdd digital CMAdd data *as it is being transferred* and automatically inhibiting the storage of screened CMAdd portions of the digital CMAdd data containing at least one CMAdd of a plurality of CMAdd predefined sequence*s*, CMAdd the method CMAdd comprising CMDel the steps of CMDel:

    causing a quantity of CMAdd the CMAdd digital data resident on a source storage medium to be transferred to a computer system having a destination storage medium;

    receiving and screening the transferred digital data prior to storage on the destination storage medium to determine if at least one of CMDel a CMDel CMAdd the CMAdd plurality of predefined sequences are present in the digital data received; and

    in response to said screening step:

    a) automatically causing the screened digital data to be stored on said destination storage medium if none of the plurality of predefined sequences are present, and

    (b) automatically inhibiting the screened digital data from being stored on said destination storage medium if at least one predefined sequence is resent.

    With the appropriate remarks, I wonder if the above amendment would have precipitated a different result…

  7. An interesting thing about this decision is that while the preamble arguably does not give life to the claim, this is only because the interpretation of “storage” was badly construed (twice). A more reasonable view is that storage just means storage, in which case the preamble *is* necessary to give life to the claim.

    Note that this patent discloses a byte-by-byte scanner that looks at each byte after it is received before it gets stored. Virus scanners don’t work that way any more, they store the entire file before looking at the data, then delete the file if it is infected.

    Hilgraeve was successful at getting the concept of accessibility into the single word “storage” which is completely bogus. Only because of this extremely broad reading of storage does the preamble become meaningless.

  8. And fyi, mooney is talking about page 9 because he’s referring to what the court did in this case, not the general rules to determining if the preamble gets weight. Also, I have to say, it seems a bit fishy what they did in this case.

  9. Nah Cave, doesn’t always work that way. Can sometimes no doubt, but not always. Even a quick example shows where you can have multiple things in the preamble and only have one of the limitations providing antecedent basis for something in the body. So what then? Does the whole preamble get weight? What if you then are including structural features in a method claim, apparatus features in a product claim etc etc. they still don’t get weight. People do that ALL the time.

  10. Let me go one better, here is the direct quote from page 8:

    “Absent clear reliance on the preamble in the prosecution history, or in situations where it is necessary to provide antecedent basis for the body of the claim, the preamble “generally is not limiting.” ”

    Therefore if you want the preamble to have weight make sure that it forms antecedent basis for terms that are used in the body of the claim. Period.

  11. Sorry Mooney, page 8 is the key to resolving your angst not page 9. No wonder you are so off track (of course it doesn’t explain all the other times you are off track – or maybe it does).

    While you are perennially stuck on the wrong page, let me spell it out for you. If the preamble contains claim terms, then its in. If not then its out.

    As far as I can tell, all the hoo haa notwithstanding, none of the preamble terms appear in the claims in the above referenced case.

  12. “It’s things like that which bring into sharp focus of the flawed nature of caselaw binding precedent.”

    That is the most insightful indictment of our centuries of Anglo-American common law jurisprudence I’ve ever read.

    Bravo, e#6k!!!!!!!

    LOL

  13. Personally I would think that it would be in the public’s interest to have a system that does not rely on a caselaw test and instead either explicitly includes the preamble or doesn’t for purposes of limiting the claim. I.e. I believe the courts erred in judging that there is a “test” for determining if the preamble is relavant or not, they either are (they are just another limitation), or they are not (they provide context, a function which is notably not precluded by the claim referring back to it for structure, breathing life, etc) and the claim simply fails to claim anything of sufficient structure. So the situtation is, cry more you wrote a limitation now live with it, or Cry more, add some structure.

    Also cave, just because patent professionals can cipher their way through the basic test nearly always doesn’t mean that the everyman can, nor that he would even know of the test. It’s things like that which bring into sharp focus of the flawed nature of caselaw binding precedent.

  14. Have to go with Malcolm on this one. Patent claims need clarity. Rules that allow some claim language to be disregarded sometimes (preambles, whereins, wherebys, doctrine of equivalents) blur the boundary of the public domain. Why not simply make the applicant live with whatever claim language is chosen?

    For an interesting read, see the recent AIPLA journal article argued that the special exception for preambles should be abolished in light of Phillips.

  15. “There is a rather simple test that has been articulated many times with regard to the preamble.”

    Maybe Dennis can whip out one of his nifty graphs showing how frequently the application of that “simple” test is misapplied by district court judges.

    “Most of the more deft prosecutors, apparently not you, know what it is already”

    All of the deft prosecutors I know agree that it can be very difficult to determine with certainty whether a term in a preamble is a limitation. Perhaps by “simple” you meant “inane.”

    I read the case. Page 9 is much more illuminating that page 8, frankly. But I am not saying here that the CAFC construed the claim incorrectly. What I am saying is that preamble case law is a bad joke because instead of a clear rule that hurts nobody (i.e., “terms in the preamble are limiting”) we have a “simple” rule that confounds everybody. Oh, excuse me, I mean everybody except you, CaveMan.

    Let’s look at the “test” as set forth in Catalina Marketing. There, the court said “[I]t is assumed that the preamble language is duplicative of the language found in the body of the claims or merely provides context for the claims, absent ***any indication*** to the contrary in the claims”.

    Surely it is the case that the use of **different** language in the preamble is the clearest “indication” that the language is not “duplicative”. So the Presumption of Preamble Duplicity should go out the door at the point. The irony, of course, is that the use of identical language in the preamble and claim body is often used to argue that the preamble is “breathing life” into the claim!

    As for the bit about “merely providing context for the claim” I respectfully submit that beyond “A method” or “A composition”, nobody has any idea what it means for a preamble term to “merely provide a context” for the claim.

  16. “like porn – I’ll Just know it when I see it”

    I thought the quote was “obscenity” is known when seen.

  17. “In a system for transferring digital data for storage in a computer storage medium, a method of screening the data as it is being transferred and…”

    What is “it”? I think that you need to provide a reasonable theory of how “it” is something other than a pronoun replacing “the data” in that part of the sentence before you can begin to argue that “it” is indefinite.

  18. Well, Peter, looking to Sitrick v Dreamworks and other recent cases, we may expect that on the *fourth* appeal (after judgment of infringement), 35 usc 112 will be argued and the CAFC will hold the claim invalid at least for the reasons that you’ve stated …

  19. I agree with Malcolm that the CAFC came to the wrong conclusion. From the opinion, I understand that the phrase was changed from “during storage” to “as it is being transferred.” You must ask yourself…”why was this done?” Any reasonable person would conclude that the phrase was added to more clearly define the time at which the data is analyzed, as opposed to the time when the data was stored. I haven’t looked into the prior art, but I’m sure there was cited prior art directed to analyzing stored data, but not data as it is transferred. Also, what is “it”? I say the claim is indefinite.

  20. Once again, Mooney, in your cynicism, you’ve missed the entire train, which I suspect left years ago. The saddest joke is that we have to continue to endure your glib commentary.

    There is a rather simple test that has been articulated many times with regard to the preamble. Most of the more deft prosecutors, apparently not you, know what it is already – so I won’t repeat it here. While not specifically articulated, you may find page 8 of the opinion very informative. I suggest you try reading it since you clearly didn’t.

    I’m also pretty sure the CAFC knows a whole lot more about what they’re doing than you. They probably know a whole lot more about what you’re doing than you.

  21. What is the specific MOL that the CAFC used to decide “a co-inventor’s self-interested testimony is not sufficient to prove inventorship — rather, the inventor must provide corroborating evidence”?

  22. Dear Malcolm,

    Here’s the thing: It’s all so “flexible,” like porn – I’ll Just know it when I see it, or like obviousness, I’ll Just know it when I see it, or like “whether a preamble is meaningful to claim scope,” I’ll Just know it when I see it – Geesch, I’ll Just know when Lady Justice is truthfully “blind” or “peeking”(ø¿ð) through her blindfold Just a bit to render a “loaded opinion” for whatever reason she may have in mind at the time.

    Ouh ooh, if you can’t trust Lady Justice, or our elected Congress officials or our executives & PTO leaders, Just who can you trust?, eh?

    I known, We the People can trust honorable international globalized companies, companies like Cisco Systems, Inc., to be truthful. Well, maybe not, I guess not, surely not, are-you-nuts? of course not.

    I know, “In God We Trust,” or does that conflict with one or another branch of government dogma?

  23. I’ve said it before and I’ll say it again: preamble case law is one of the CAFC’s saddest jokes and this case now stands as the poster child.

    The CAFC’s test for whether a preamble is meaningful to claim scope is to … determine whether the preamble is meaningful to claim scope.

    Thanks, CAFC. Thank you all so very very much.

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