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IP Alert: Federal Circuit Reaffirms Claim Preambles May Not Be Limiting

April 1, 2019

On March 26, in Arctic Cat Inc. v. GEP Power Products, Inc., the Federal Circuit rejected an argument that intended use statements in claim preambles were limitations on those claims. In so doing, the Federal Circuit reaffirmed the principle that claim preambles sometimes may be given no weight in claim construction. This decision provides guidance for patent applicants who seek to rely on intended use statements contained in the preambles of claims. Because the practice in many other countries differs somewhat, this decision is of particular interest to Fitch Even patent prosecution clients who are filing applications in the United States based on a priority application drafted elsewhere.

GEP challenged two patents owned by Arctic Cat via inter partes review at the USPTO. Both patents related to electrical distribution systems intended for snowmobiles and similar small recreational vehicles. Two sets of claims included preambles with the language “personal recreational vehicle,” indicating that a potential use of the claimed subject matter was in a personal recreational vehicle. Neither set of claims, however, recited any other parts of a personal recreational vehicle, such as, for example, a motor or a chassis. The claims did not refer to a vehicle beyond the preamble.

GEP’s challenge to these claims was based on prior art references that described electrical distribution systems. Although the prior art references included a general reference to vehicles, none of them disclosed personal recreational vehicles. Arctic Cat therefore argued that the references did not disclose all the limitations of the claims, based on the lack of this disclosure of personal recreational vehicles. The USPTO, however, agreed with GEP and invalidated these claims.

On appeal, the Federal Circuit affirmed this part of the USPTO’s decision. The court observed the general rule that “a preamble is not limiting ‘where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.’” For one set of claims, the court held that the preamble’s recitation of “[a] power distribution module for a personal recreational vehicle” merely identified an intended use for the claimed power distribution module and therefore did not require a personal recreational vehicle. The court further found that the electrical components specified in the claims themselves constituted a structurally complete invention.

The court reached the same conclusion for the other set of claims, in which the preamble recited “[a] personal recreational vehicle comprising. . . .” The court found that the electrical components specified in the claims themselves again constituted a structurally complete invention, and the claims did not refer to the vehicle stated in the preamble. The court also observed that the specification disclosed nothing about any claimed vehicle beyond the general idea that the electrical components could be used in a power distribution module.

For these reasons, even though the claim preambles included the language “personal recreational vehicle,” prior art references could be applied that did not disclose a personal recreational vehicle. Based on this conclusion, the court affirmed the invalidity of one of the patents. For the second patent, the court disqualified as prior art one of the references that the USPTO used to invalidate the claims. The court remanded the proceedings for this patent for reconsideration of invalidity with the disqualified reference removed from consideration.

Note that the outcome likely would have been different if the claim specified something that relied on the preamble. For example, instead of “A personal recreational vehicle comprising [an electrical system],” the claim might have read “A personal recreational vehicle including a chassis, a light, and an electrical system powering said light, said electrical system comprising. . . .” The reasoning in the Arctic Cat decision suggests that this alternative language, which is expressly tied to the claim preamble, might more likely result in the preamble being deemed limiting.

This decision provides guidance for applicants during the application drafting and prosecution process. It shows that intended use statements included in the preamble of a claim may not limit that claim and may leave it vulnerable to challenge from a broader range of prior art than might be otherwise expected. Applicants may therefore prefer to avoid routinely including such intended use statements in the preambles of claims or, at minimum, take care when doing so. Applicants may also prefer to include desired limitations expressly in the body of the claim or in dependent claims.

This guidance is likely to be useful for applications originating outside of the U.S. Such applications are often pursued in the U.S, either as a national phase entry of a PCT application or as a U.S. application claiming priority to a non-U.S. application. In many countries, intended use statements may be routinely recited in the preamble of a claim and may constitute limitations on the claim. Accordingly, claims should be reviewed when pursued in the U.S., and applicants should consider appropriate amendments at that time.

For more information on this case, please contact Fitch Even partner Rudy I. Kratz, author of this alert.
 

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