Breathing Preambles and Patent Ambiguity

Georgetown Rail v. Holland (Fed. Cir. 2017)

In a prior post, I noted that the Federal Circuit initially released this appellate decision under seal but requested that the parties show cause as to why it should remain under seal.  After receiving no objection from the parties, the court has now unsealed the decision.

The case centers on Georgetown’s U.S. Patent No. 7,616,329 which covers a method for inspection of railroad tie-plates and particularly includes automating the examination of misaligned tie plates. 

In 2012 Union Pacific set up a head-to-head challenge between Georgetown and Holland.  Holland got the business then Georgetown sued Holland for patent infringement.  A jury awarded $1.5 million in lost profit damages, and the judge then enhanced the damages by an additional $1 million and awarded a permanent injunction against infringing the patent.

The most important part of the decision is likely the claim construction – particularly the court’s interpretation of the preamble as not limiting.

In relevant parts, Claim 1 of the patent calls for:

1. A system for inspecting a railroad track bed, including the railroad track, to be mounted on a vehicle for movement along the railroad track, the system comprising:

at least one light generator positioned adjacent the railroad track …;

at least one optical receiver positioned adjacent the railroad track …; and

at least one processor for analyzing the plurality of images wherein [the processor uses a particular algorithm]

A lay reading of the claim appears that we have a a three part system ((1) a light; (2) a sensor; and (3) a processor), and the system is “mounted on a vehicle.”

The infringement problem here is that the defendant just the sensing in the field, but then takes the file back to the home office for processing.  Thus, only part of the system is mounted to a vehicle. On appeal here, the Federal Circuit sided with the patentee with a broad clam construction – holding that the claim does not require mounting of the processor.

A patent claim is usually divisible into three distinct portions, the preamble; the transition phrase, and the body.

ClaimElements

The preamble is ordinarily seen as an introductory phrase to set the stage, but not actually spelling out or defining any of the actual elements of the invention.  The transition phrase – most commonly “comprising” — signals that the body is coming next.  Finally, the body itself is the heart of a patent claim because it spells out the scope of the invention – its metes and bounds.

Claim preambles though are an oddity of claim construction.  They ordinarily do  not limit claim scope, but sometimes do.  If the preamble merely recites a purpose or intended use, then it is not limiting.

However, a preamble may be limiting if: “it recites essential structure or steps”; claims “depend[] on a particular disputed preamble phrase for antecedent basis”; the preamble “is essential to understand limitations or terms in the claim body”; the preamble “recit[es] additional structure or steps underscored as important by the specification”; or there was “clear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art.”

Slip opinion, quoting Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801 (Fed. Cir. 2002).  The court also likes to talk about how the preamble is limiting when it “breathes life and meaning into the claim.” See In re Wertheim, 541 F.2d 257 (CCPA 1976).

BreathingLifeOf course, it is a fairly difficult proposition to know when a preamble providing the breath of life – perhaps akin to knowing when a claim is improperly abstract.  The court has generally accepted that the test is not straightforward. It requires review of the “entire patent” as well as the prosecution history to understand what was “actually invented and intended to encompass by the claim.”  Slip op. See also Applied Materials, Inc. v. Advanced Semiconductor Materials Am., Inc., 98 F.3d 1563, 1572−73 (Fed. Cir. 1996) (whether the preamble constitutes a limitation “is determined on the facts of each case in light of the overall form of the claim, and the invention as described in the specification and illuminated in the prosecution history”); Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010) (“there is no simple test” for understanding the import of the preamble, but “we have set forth some general principles to guide th[e] inquiry”).

Here, the court looked to the “context of the entire patent” to reach the conclusion that the “mounted on a vehicle” statement does not provide any structural limitation to the claim scope but instead “is meant to describe the principle intended use of the invention.”  However, the specification notes that the processing “can be performed by another computer system” other than one located on the inspection vehicle.  According to the court, this is a suggestion that the location of the processor is not essential to the invention itself.

During prosecution, the patentee also told the examiner that the analyzing and determining steps occur “along the railroad track bed.”  However, the court found those non-limiting because the purpose of the statement was not to overcome prior art involving a distributed processing approach.  “Ambiguous statements made during prosecution, especially those that do not directly distinguish the element claimed as essential for purposes of finding a limitation in the preamble, ‘cannot fairly limit the characteristics of the claim term.’ Grober v. Mako Prods., Inc., 686 F.3d 1335 (Fed. Cir. 2012).

The problem with this entire approach.  Patentees who want clear-cut claim scope use short nonce preambles so that there is never any question about what is or is not limiting.  In my experience, lengthy preambles are instead used strategically to provide ambiguity into the claim scope to make it easier to later argue alternatively for broader or narrower claim scope depending upon situation during litigation.

During prosecution, the examiner should expressly state that “the examiner considers the preamble non-limiting” except in the few cases where preamble is seen as limiting.  However, even this express approach will leave ambiguity as to whether a court will see the preamble as limiting because of the difference between Broadest-Reasonable-Interpretation (BRI) used by the courts and Actual Claim Construction (ACC) used by the courts.

42 thoughts on “Breathing Preambles and Patent Ambiguity

  1. Let me advance another (related) topic for discussion here.

    Given that it is understood that the Office uses a reading of the claims that very well likely NOT be proper to a true understanding of the claim language*** ( thus, THIS is what actually generates the disconnect of :

    During prosecution, the examiner should expressly state that “the examiner considers the preamble non-limiting” except in the few cases where preamble is seen as limiting. However, even this express approach will leave ambiguity as to whether a court will see the preamble as limiting because of the difference between Broadest-Reasonable-Interpretation (BRI) used by the courts and Actual Claim Construction (ACC) used by the courts.

    Why not instead limit the use of BRI to ONLY a first action on the merits? Make the Office then hew to the proper merit level of claim terms that WILL thenceforth control?

    This would satisfy BOTH the reason for having BRI in the first place, as well as make it so that BOTH sides have a reason to hew to a proper shortest examination.

    ALL too often, with no “check” on the reasonableness of BRI (which thus becomes BU(nreasonable)I, an applicant must either play (albeit suitably diminished) RCE gravy train game, or push to the Appeal path before getting an examination worthy of being called an examination.

    As it is, the tendency to push for abbreviated examination is merely an Office weapon to extract more funds from applicants.

    ***There is only one side “punished” when the Office takes a one-sided OVER reading of claim terms. I “get” that such is an aim to force “more clear” language into claims on terms that MAY (critically here, note that this is ONLY a “MAY”), be unclear. But why on earth should this “power” exist in any round of examination beyond the first?

    This does dovetail with past suggestions from me to have the words of the examiner have more meaning – and would directly answer the caveat produced by Prof. Crouch in his last paragraph.

    Of what possible harm would there be of using Actual Claim Construction in all Office Actions after the first action on the merits?

    1. eeks – busted close italics tag – only the third paragraph should be in italics.

  2. Part I of Judge Dyk’s dissent in American Medical Systems, Inc. v. Biolitec, Inc., 618 F. 3d 1354 (Fed. Cir. 2010) seems like a good idea, at least going forward. Judge Dyk favors “a rule recognizing that all preambles are limiting.”

    I think that if the court made that rule in an en banc decision, it might be unfair to patentees who drafted claims with preambles that aren’t “nonce” preambles, but who did so with a reasonable expectation that the preambles wouldn’t be read as claim limitations. It would be unfair to retroactively narrow those patentees’ claims because of a change in precedent. Aside from that, I think the proposal makes good sense.

    Here’s the Biolitec decision with Judge Dyk’s dissent. link to scholar.google.com

    1. It would be unfair to retroactively narrow those patentees’ claims because of a change in precedent.

      On the flip side, it’s no less “unfair” for the CAFC to be generating case law that could very well have the effect of eliminating limitations from preambles where the claim drafter had intended those limitations to have effect (to avoid prior art, for instance) but “didn’t go far enough” for the contemporary version of the doctrine.

      I’d still like to see a single instance of the CAFC doing what the panel did here: i.e., ignoring a structural (non-purposeful) limitation to a system claim, where the preamble provides antecedent basis for terms in the body of the claim.

      This case could cause serious problems for a lot of patentees down the line.

      1. On the flip side, it’s no less “unfair” for the CAFC to be generating case law that could very well have the effect of eliminating limitations from preambles where the claim drafter had intended those limitations to have effect

        Do you have any evidence whatsoever – here or elsewhere of such a thing?

      2. Right. I suppose all changes to precedent are unfair to some greater or lesser degree to people who reasonably relied on the previous state of affairs.

        I’d still like to see a single instance of the CAFC doing what the panel did here: i.e., ignoring a structural (non-purposeful) limitation to a system claim, where the preamble provides antecedent basis for terms in the body of the claim.

        Interesting. I don’t know of any examples. I wonder if others do.

  3. Would I really be saving anyone any time if I gave the BRI on every element in my office actions? Isn’t scope a question of law for the judges discretion anyway? Regardless of my questions, the state of the office is that when I go to my preappeal brief conference and tell my reviewers that I consider a clearly limiting preamble as “non-limiting”, I will be writing a second non-final or an allowance.

  4. Question: why on earth would a claim drafter drop the phrase “to be mounted on a vehicle for movement along the railroad track” into the preamble if (1) the claim wasn’t intended to be limited by that phrase and (2) the term “railroad track” first shows up in the preamble and is subsequently referred to in the body of the claim and (3) a mounted version is expressly described as a variant embodiment in the spec.

    Seems like a pretty amateur move. Not clever. Just silly. I think the panel here just took a “doctrine” that was already dubious and rendered it completely useless.

    Down below a commenter states: the preamble here is NOT a breath of life because of some ‘objective physical structure’.

    The preamble isn’t a breath of life because the panel said it wasn’t. That’s accurate.

    The idea that you can describe a “system” with a structural limitation in the preamble — not a “purpose” — and have that structural limitation completely eliminated from the claim for purposes of finding infringement (!!) is, well, shocking and repulsive. The only way to see that result is positive is to understand that the prior art will be.

    Q: How established was it prior to this case that some structural limitions in a preamble “breathe life and meaning” and other structural limitations don’t? Because the bit about the “railroad track” in the preamble is necessary for antecedent basis. That’s another way of saying that the phrase “the railroad track” in the claim is indefinite without the preamble. So the preamble in this claim is breathing life and meaning into the claim. But I guess the panel is saying they can pick and choose now between different structures in the preamble? Absolutely c r a z y.

    1. Edited for clarity. I should have written:

      “The only way to see that result as a positive result is to understand that the claim becomes more susceptible to invalidation under 102/103.”

      I am very curious about how many cases prior to this case held that a structural limitation in a preamble wasn’t limiting in a claim where an aspect of that structure also appears in the claim body. This case has the potential to create a lot of problems for patentees.

      What if the body of the claim recited, in addition to “the railroad track”, a limitation “wherein the vehicle is configured to travel on the railroad track.” Under this panel’s reasoning, even that limitation would seemingly be insufficient for the preamble to carry weight.

      Probably worth taking en banc because this is a travesty.

    2. “the claim wasn’t intended to be limited by that phrase”

      If you prefer, you can consider it “limited by” that phrase to things which are “to be” mounted. Which is practically anything.

      “Seems like a pretty amateur move.”

      That sht happens literally every day, thousands of times a day. I literally had one attorney tell me that he feels sorry for all the bullsht drafting we have to put up with on first picking up cases just this past week. And another attorney that told me that he felt like strangling someone because they put “the” instead of “a” thus introducing some measure of actual uncertainty as to what was being referred to in the claim. And he did not seem to be being hyperbolic.

      1. That sht happens literally every day, thousands of times a day.

        That’s because there are a lot of amateurs out there.

        If you prefer, you can consider it “limited by” that phrase to things which are “to be” mounted. Which is practically anything.

        Pretty sure that “systems comprising remote servers” aren’t encompassed by “systems to be mountable on vehicles” unless the term “remote” in that context includes something five feet away. In any event, had the claim been construed in that matter, it would haven’t captured the infringer here.

        Look at it another way. You claim “a complete system for processing phone calls, the complete system to be contained inside a single small building, comprising …”. This case would have us believe that, absent any other “containment” limitation in the body of the claim, the claim would cover a phone receiver in California connected remotely to a data processing center in New York which is connected to a printer on a train in Florida. Seems more than a little bit silly to have this kind of “doctrine” fouling up the system. What’s the point of it, other than to create confusion about the scope of claims across the entire universe of art fields?

    3. One way to perhaps parse the claim is that light generator and optical receiver are positioned adjacent to the track, but the processor’s location isn’t specified. Why should it matter where the processor is since it can be operated anywhere? Does mounting it on a truck make it work any differently?

      1. Anon, the location of the server is really important here because it is operated by somebody other than the accused infringer. The only thing new in the claim appears to be algorithm. That algorithm is being implemented by a third, independent party. That third-party operates in the UK.

        So I sent my payroll service up in the UK to do accounting services for customers worldwide. Customers send me their data, I send them their spreadsheets and papers to be filed with the local authorities. The algorithms I use in the UK are patented – but in the United States.

        How is it that my customers use of my service infringes? I do not get it. But these are pretty much the facts in this case.

        1. really important here because it is operated by somebody other than the accused infringer.

          That should not matter, now should it, Ned?

          What this does point out is NOT an infirmity with processes that may be distributed (and please note that the execution of software is NOT the only process that may be distributed.

          Rather, this points out an infirmity with the current view of who an infringer may be.

          The direct parallel to the Lemley notion (as he championed in the AIA) of “it takes a village to invent” is the necessary realization that it may take a village to infringe.

          One of the reasons for lack of clarity in claims is the forced single entity infringer patent profanity that exists today.

          Quibbling about the optionality afforded by more than nonce preambles (and seeking – one way or the other – to enforce a strict in-or-out view, thus limiting flexibility in claim drafting) takes a DISTANT back seat to other items that would serve to make claims more clear.

  5. The real problem in this case is that the processing, the only thing new, was conducted outside the US on data gathered in the US.

    1. Ned I would express the “real” problem more broadly than that.

      Let’s assume that the patent owner’s algorithm was not only new but clever/inventive, that the solution to the technical problem defined in the claim in suit is very valuable, and that the party accused of infringement derived from the patent owner the algorithm accused to infringe.

      The over-riding objective of the court is to do justice. The court can’t sit on the fence: it has to come down on one side or the other.

      So its “problem”, in reality, is how to reconcile Binding Precedent and legal certainty with doing justice between the parties

      Whether co-incidentally or not, the UK Supreme Court was faced with more or less the same “problem” in a very recent case, in which it has just handed down a landmark decision, a decision which K&S identifies:

      link to kilburnstrode.com

      as the “biggest infringement case for 12 years”

      1. Well Max, I have not yet fully figured out what the right answer is here, but what I see is that the UK service provider may be providing customers calculation services for data according to the patented algorithm where the customers may be located in more than one country. It seems to me that the patent infringement should not be based upon the location of the customer accessing the service, but on the location of the service.

        If the UK service is an integral part of the infringement of the patent in the United States that I would suggest that that UK service firm could be named as a codefendant. How would you think the UK government would react if a service provider was haled into court in United States for providing service to a customer in the United States based upon an U. S. patent were the only thing new was the service and that was conducted entirely in the UK?

        We had a similar controversy recently about whether the ITC could exclude importations of data. They tried to, but I think the Federal Circuit said, “Nonsense.”

        1. Ned, if I correctly understand the facts here, the railroad and its owner are in the USA, and the measuring is done in the USA. The only thing done outside the USA is the processing of the data, by somebody I am paying to do that for me.

          In this day and age it seems bizarre, to suggest that I don’t infringe in the USA merely because I have gone to the trouble to arrange for my data to be processed outside the USA.

          What am I missing here?

          1. Max, no doubt that you are right. The violation is the “making” of the entire patented combination in the US by the final act of receiving the processed information back.

    2. To me this illustrates a problem about software patents where the location of processing of software is no longer on the user’s computer, but could be based on the cloud, and the cloud can be anywhere.

        1. Thanks, Max.

          Still not convinced though.

          The UK case was had peculiar facts in that the entire system was under control of one party. I am not so sure that would apply if the gambling system were completely independent and simply operated through the Internet.

          Imagine one trying to issue an injunction against the independent party in Antigua simply because UK gamblers used its service.

  6. Repeat a preamble limitation in the body of the claim if you want it to have meaning in the claim.

  7. Reminds me of when my law school professor introduced this topic in my patent law class: The preamble of the claim doesn’t matter, except of course when it does.

  8. “Here, the court looked to the “context of the entire patent” to reach the conclusion that the “mounted on a vehicle” statement does not provide any structural limitation to the claim scope but instead “is meant to describe the principle intended use of the invention.” ”

    Entirely correct.

    1. Would this then be better tied to possession? Does “intended use” ever cross over into the realm of “not intended, thus not possessed?”

      Or does it indeed cross over, but since “use of” does not constrain a claim that is not a method claim, that the particular “use of” just does not matter?

      I invent a screwdriver. I do not need to possess all possible uses to which that screwdriver may eventually be put to use (and is one reason why 35 USC 100(b) is written the way that it is written).

      1. I literally did not understand any of the questions you asked.

        This case isn’t about possession nor do I see any reason to discuss such at all. Issues like this could hypothetically cause a WD possession problem of course, but I’ve heard nothing about that in this instance.

        1. Chillax bro,

          Notwithstanding the fact that your second paragraph contradicts your first, yes, 6, I know that this case is “not about” WD possession.

          I was remarking that an assertion by a patentee is taken for what is asserted. For example, if a patentee states that “X” is prior art (even when it factually is not), then the assertion MAKES it prior art (for the patentee).

          I merely put forth for discussion (on a blog, not a legal dissertation) an assertion by a patentee may also have effect vis a vis possession.

  9. I agree with DC that this is the wrong result, pretty much no matter how you cut it. In addition to the procedural band-aid that Dennis suggests, another solution to the “preamble problem” is to treat the preamble like every other part of the claim. One would expect the maximalists to demand this as a matter of principle because the preamble is undoubtedly a part of the claim “as a whole.”

    But the problem of when and whether to ignore certain language in claims for one reason or another remains. There are great reasons to ignore statements of intended use in a claim when performing certain analyses (e.g., patentability of a composition in view of the prior art, or infringement of a composition claim). But such statements might still be relevant (critical, even) to understanding the meaning of other terms in the claim and they shouldn’t be ignored during construction.

    But none of that is relevant here. This was a structural limitation to the claimed system, not a statement of purpose. It distinguishes the claimed “invention” from other embodiments described in the specification. Absent any clear evidence that the Examiner was Examining something other than the entire claim (including the preamble), the reference in the prosecution history to “along the railroad track bed” should have been more than enough to establish “reliance” on the language in the claim.

    the specification notes that the processing “can be performed by another computer system” other than one located on the inspection vehicle. According to the court, this is a suggestion that the location of the processor is not essential to the invention itself.

    Hilarious. Well, it’s been true for a long, long, long time that you can separate the instruments doing the data gathering from the instruments doing the processing. There’s nothing at all invented there. What the heck was the “invention itself” anyway? Oh right: automating a logical task using a prior art programmable computer that was created for the purpose of automating logical tasks. Very creative stuff. Hugely creative. Just the most creative idea ever really.

    1. “to be mounted on a vehicle for movement along the railroad track”

      Nah, no “structural limitation” generally follows “hur dur to be”. This would have been all but ignored even if not in the preamble. As long as the system could be mounted on a vehicle (which pretty much any system could be) then it’s included, thus the limitation is barely limiting at all.

      “To be” limitations just aren’t much.

      1. “To be” limitations

        Is there any language in the opinion that addresses this “to be” language directly? You’re suggesting that if the phrase “to be” was omitted then suddenly the result flips? Did the panel say that?

        1. “Is there any language in the opinion that addresses this “to be” language directly? You’re suggesting that if the phrase “to be” was omitted then suddenly the result flips? Did the panel say that?”

          Doubt it.

          It might. Myself, I would make them put it in the body, but bare min take out the to be.

          No.

    2. One would expect the maximalists to demand this as a matter of principle“Your “maximalists” do not have such a black/white view of the world, Malcolm. Ever hear of Jepson claims?

      For someone who chooses to talk about that group so much, you seem to not really understand them.

      1. Just so we’re clear here: the term “claims as a whole” in 103 applies to all sections of the patent statute only when you say so? Is that how it works?

        Because you’ve been shrieking about “claims as a whole” for a long, long, long time as if it’s the most sacred edict on the planet.

        But now you’re saying that that “claims as a whole” really means “claims as a whole except the preamble.” And of course you’ve got the Congressional record on that, right?

        C’mon. I mean, I’m not surprised that you’d spin like a top when called out on this but really now.

        1. Because you’ve been shrieking about “claims as a whole” for a long, long, long time as if it’s the most sacred edict on the planet.

          LOL – you mischaracterize. I have been merely stating – all along – that it applies where it applies.

          YOU on the other hand seek to apply it selectively, and always in a way that hurts patentees.

          The cognitive dissonance of your anti-patent views, while you profess to be in the business of obtaining patents for clients, is quite evident.

          Seek help.

    3. Malcolm even (especially) gets this wrong:

      I agree with DC that this is the wrong result, pretty much no matter how you cut it.

      Nowhere is that view even remotely advanced.

      Malcolm really cannot help himself but take a view that is most nearly always against the patent holder.

      The cognitive dissonance is breathtaking.

      The most negative view in the piece above: “The problem with this entire approach. sounds more in a distaste of optionality afforded the writing of claims.

      But that in no way indicates “DC… this is the wrong result, pretty much no matter how you cut it.”

  10. DC Of course, it is a fairly difficult proposition to know when a preamble providing the breath of life – perhaps akin to knowing when a claim is improperly abstract.

    Oh, give it a rest, Dennis. In most cases it’s not difficult at all.

    1. LOL – I think claim construction doctrine is more difficult than the abstract idea at this point. Folks don’t complain about claim construction though b/c it is entirely within the hands of the scrivener to draft the claim language whereas the abstract idea doctrine is not.

      1. Learning enough about “claim construction doctrine” or all the case law views on “abstract” so that you can get a B (or higher) on a test is one thing.

        But most claims are not that difficult to interpret after a quick review of the dependent claims and the spec and the pros history. They become difficult when they are put into the fire during litigation usually because the patentee is trying to achieve something beyond what was originally intended (and I’m pretty sure that’s what happened here). Then all the contradictions in the case law being amplified, and a poorly chosen word in an opinion turns into a million dollar battle.

        Cases like this, of course, don’t help at all because (arguably) it’s a close case and the result is driven by random weirdness in the law with respect to preambles.

    2. I agree with Malcolm here.

      It’s just not all that “tricky.”

      1. …but the humorous thing about this not being that tricky is that Malcolm gets it wrong – the preamble here is NOT a “breathe of life” because of some “objective physical structure” angle.

        That’s just not a part of the analysis.

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