Federal Circuit Disregards Claim Preamble in Holding Claim Invalid as Anticipated

On Monday, the Federal Circuit continued the confusion surrounding the law on how to interpret the preamble of a claim.  The court decided, in a 2-1 decision, that the preamble of the claim in Marrin v. Griffin was not entitled to any patentable weight.  The court’s opinion and the dissent are full of conflicting case citations as to whether the preamble should ever be entitled to patentable weight.

The patent at issue in the case, 5,154,448, related to using a scratch-off label to mark beverage containers and cups so that attendees of a gathering or party could keep track of their beverage cups.  The claim at issue read as follows:

1. A scratch-off label for permitting a user to write thereon without the use of a marking implement, comprising:

a permanent base having a colored near side which is normally visible to the user and having a far side; and

a coating of scratch-off non-transparent material having a color which contrasts with the color of the near side of the permanent base, which coating is applied directly onto the near side of the permanent base with sufficient thickness so as to obscure the color of the permanent base, and which when scratched off reveals the color of the near side of the permanent base.

It was apparently not disputed by the parties that the claim limitations in the body of the claim were shown in the prior art.  The key aspect of the invention was that the label permitted the user to write on the label without the use of a writing implement.  For example, the user could use a fingernail, coin, keys, or the like to mark the label thereby distinguishing the drink from those of others.

In the original application as filed, claim 1 read as follows:

1. A scratch off marking label, comprising:

(a) a layer of scratch off non-transparent coating, and;

(b) a permanent base layer of such color so as to contrast with said scratch off coating;

(c) said scratch off coating being applied directly onto said permanent layer of contrasting color, whereby upon scratching through of said scratch off coating reveals the contrasting color of said permanent layer in legible lines, thereby providing a writing means whereby a person can mark on the label without the need for a writing implement.

After the claim was allowed, the applicant filed an amendment to change the claim to the one that issued.  There is a disagreement between the majority opinion and the dissent as to the purpose of this amendment.  The majority indicates that the applicant argued that “writing means” is not an element of the claim and was therefore canceled.  The dissent argued that the applicant merely indicated that no specific writing means was required.  In reality, the applicant may have been trying to avoid a “means-plus-function” claim interpretation by removing the “means” limitation.

In any event, the majority of the court affirmed the claim’s invalidity as being anticipated by the prior art.  The court held that the preamble merely stated a “purpose or intended use” of the invention.  The dissent, by contrast, argued that the preamble should be given patentable weight because it breathed “life and meaning” into the claim.  Both opinions cited a great deal of Federal Circuit and Court of Customs and Patent Appeals precedent to support its position.

So, who is right?  The answer, of course, is that the side for invalidating the claims garnered the 2 necessary votes.  Thus, the outcome of the case.

What Should the Patentee Have Done?

This case is another in a long line of recent Federal Circuit cases that instruct patent applicants how to write better patent applications and claims.  This application was apparently prosecuted pro se.  As they say, the applicant got what it paid for.

Due to confusion as to claim preamble interpretation, the safer route is to include all claim limitations in the body of the claim.  One wonders whether there is any point including anything in the preamble other than “an apparatus,” “a device,” “a method,” or perhaps in this case “a label.”

I don’t know whether this invention is obvious or not as they issue was not before the court.  The specification is rather skimpy on details.  The patentee’s best option would have been to bring the invention to a patent attorney who could have written a more substantial application.

There are, of course, numerous ways that the claim could have been written that would have satisfied the court’s problem in this case.  By working with the claim in the patent, one option that might have worked is:

1. A label comprising:

a permanent base having a colored near side which is normally visible to the user and having a far side; and

a coating of non-transparent material having a color which contrasts with the color of the near side of the permanent base, which coating is applied directly onto the near side of the permanent base with sufficient thickness so as to obscure the color of the permanent base, and which coating may be scratched off without a marking implement to reveal the color of the near side of the permanent base.

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3 Responses to “Federal Circuit Disregards Claim Preamble in Holding Claim Invalid as Anticipated”

  1. JOLT Digest » Marrin v. Griffin | Harvard Journal of Law & Technology Says:

    [...] Inventive Step and Patent Hawk both offer good overviews of the case. Patent Case Review provides a summary of the legal issues.  Gary Odom of Patent Hawk argues that “Judge Newman got it right, which is to say that this nicely self-contained issue is ripe for en banc review. The inconsistent treatment of preambles begs for clarity.” [...]

  2. Andrew Young Says:

    Nice blog.

    Thanks,

  3. How to Assert the Patentable Weight of a Claim Preamble » Lilly Foreman Says:

    [...] Federal Circuit Disregards Claim The court decided, in a 2-1 decision, that the preamble of the claim in Marrin v. Griffin was not entitled to any patentable weight. The court’s opinion and the dissent are full … [...]

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