TAKEAWAY: Carefully word a claim’s preamble and avoid statements summarizing the invention. The preamble can be limiting where its terms provide antecedent basis for terms used in the body of the claim and its dependent claims and the specification indicates a limitation to the invention. Statements summarizing the invention can be viewed as a disavowal of claim scope.
In Pacing Technologies, LLC v. Garmin Int’l, Inc. (Feb. 18, 2015), the Federal Circuit affirmed a district court claim construction that resulted in summary judgment of noninfringement. The appeals court held that the preamble’s “repetitive motion pacing system for pacing a user” limited the claim. To support its interpretation, the court found that “user” and “repetitive motion pacing system” appeared in the body of the claim and its dependent claims. The court then examined the specification, which contained a section titled “Summary and Objects of the Invention.” That section listed numerous “objects of the invention,” which also appeared as claim features. Following those “objects,” the specification section included a summary statement that those objects are accomplished “by a repetitive motion pacing system that includes . . . a data storage and playback device adapted to produce a sensible tempo.” The court stated that these words alert the reader that the invention accomplished all of the objects with such a system and was therefore limited to that system. The Federal Circuit therefore not only gave weight to the preamble but also found the summary statement to be a disavowal of claim scope, so that the claim required a data storage and playback device adapted to produce a sensible tempo. The accused system was found to lack such a sensible tempo.