TAKEAWAY: Federal Circuit affirms a district court decision that a claim preamble does not limit the claim scope.
On August 1, 2017, the Federal Circuit in Georgetown Rail Equipment Company v. Holland L.P affirmed a district court decision that a claim preamble did not limit the claim scope. The district court determined that the defendant’s non-infringement position based on the language of the preamble was properly rejected. In claim construction, the district court found that although the preamble of the asserted claim (of U.S. Patent No. 7,616,329) included the phrase “mounted on a vehicle,” this phrase did not limit the claim scope. Holland’s system was found to infringe despite not having a processor located on the vehicle.
The Federal Circuit affirmed, agreeing with the district court in that the decision was consistent with the general rule that a preamble is not limiting unless, upon review of the entire patent, the preamble recited essential structure or steps of the invention. The Federal Circuit began by noting that the specification disclosed embodiments where the processor was not mounted on a vehicle. The preamble was therefore determined to merely highlight the primary intended use of the invention, and did not recite its essential structure. Thus, this case shows that the non-limiting preamble is alive and well.