The preamble of a patent claim is just as important as the rest of the claim. ARCTIC CAT v. GEP

The preamble of a patent claim is just as important as the rest of the claim. ARCTIC CAT v. GEP

A patent is a set of exclusive rights granted to the inventor of an invention that is deemed, new, useful and not obvious.  To be granted a patent in the United States an inventor must file a patent application with the United States Patent and Trademark Office.  The patent application will be reviewed by an examining attorney and if the invention described in the patent application meets all the criteria, the inventor will be granted a patent.  A patent grants its owner the exclusive right to make, use, sell and import the invention in the United States.

A patent application is a complex document that has several different sections.  All the sections must be properly filled out for a patent application to be granted, but the most important sections are the specification and the claims. The specification has several subsections that describe the invention, how the invention works, why the invention is new and how the invention solves a problem.  The claims of a patent describe what aspects of the invention an inventor is actually claiming.  If an aspect of the invention is described in the specification but not in the claim section then the patent does not cover that aspect of the invention.

The language used to write a United States patent claim may appear to be English, but it is a language unto itself.  Claims may include a preamble, a transitional phrase and then a set of limitations.  Each word and the order the words appear in a patent claim are immensely important and are often thoroughly debated by the inventor and the examining attorney during the patent application process.  A patent claim must be limited to the aspects of an invention which are not already public knowledge. If a patent claim is not limited enough, the patent can be invalidated even after it is granted.

A case which illustrates the importance of patent claim construction is ARCTIC CAT INC., v. GEP POWER PRODUCTS, INC., 2018-1520, 2018-1521 (C.A.F.C. 2019).  Arctic Cat Inc. owns U.S. Patent Nos. 7,072,188 and 7,420,822, which are both titled “Power Distribution Module for Personal Recreational Vehicle.” The ‘822 patent is a continuation from the ‘188 patent application. The patents describe an electrical-connection box having an array of receptacle openings that allow wires to be arranged and secured in various positions for distributing power to various electrical components, including components of a personal recreational vehicle. In July 2016, GEP Power Products, Inc. petitioned the Patent Trial and Appeal Board for inter partes reviews of the ’188 and ’822 patents under 35 U.S.C. §§ 311–19, challenging all claims as unpatentable for anticipation or obviousness under 35 U.S.C. §§ 102 and 103.  The Board determined that all claims of the ’188 and ’822 patents are unpatentable.

Arctic Cat appealed the Board’s decision to the Court of Appeals for the Federal Circuit on the grounds that the Board erred by (1) rejecting Arctic Cat’s submission of the full transcript of its inventor’s deposition, (2) construing various claim preambles as not stating limitations on the claimed inventions, and (3) finding U.S. Patent No. 6,850,421 (Boyd) to be prior art applicable against the ’188 and ’822 patents.

The Federal Circuit found that the Board did not abuse its discretion in rejecting the deposition-transcript submission; that the Board correctly held preamble references to a vehicle in the claims at issue not to be limiting; but that the Board improperly determined that the ‘421 patent by Boyd was prior art.  The Board’s decision was affirmed with respect to Arctic Cat’s ‘822 patent, but reversed in part with respect to the Arctic Cat’s ‘188 patent.

The Federal Circuit focused on the preamble of the patent claims in its decision.  The preamble comes at the beginning of a patent claim and is short and broad.  Preambles are generally not considered limiting.  Arctic Cat’s preambles referenced a “personal recreational vehicle” and therefore the invention was limited to uses that involve vehicles.   GEP found examples of prior art, a Patent No. 5,354,211 (Svette), which described the invention, but did not specifically note vehicles.   The Federal Circuit agreed that the prior art made the ‘822 patent obvious in light of Svette because the preamble use of “personal recreational vehicle” did not limit the ‘822 patent to just vehicles.  Had the patent included “personal recreational vehicle” in the body of the claim it is likely that the ‘822 patent would have been deemed valid.  Arctic Cat’s ‘188 patent was not invalidated because the Federal Circuit found that Boyd was not prior art for other reasons, however the Boyd patent would have presented the same problem.

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