Marrin v. Griffin
599 F.3d 1290 (2010)
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Rule of Law:
Preamble language in a patent claim that merely states the purpose or intended use of an invention is generally not treated as a limitation on the scope of the claim, unless the patentee demonstrated clear reliance on the preamble during prosecution to distinguish the claimed invention from prior art.
Facts:
- In 1990, Jeffrey and Claudia Griffin conceived of the idea of using a scratch-off label to mark beverage containers so attendees of a gathering could keep track of their cups.
- The Griffins filed a patent application in 1991, which issued as the '448 patent for a 'Scratch-Off Marking Label.'
- Claim 1 of the patent begins with a preamble stating it is 'A scratch-off label for permitting a user to write thereon without the use of a marking implement...'
- The claim's body describes the structure: a permanent base with a colored side, and a contrasting scratch-off coating applied on top that obscures the base color.
- Michael Marrin's company, Upardi, Inc., entered into a license agreement with the Griffins to manufacture and sell products using the '448 patent.
- A dispute over payment obligations arose between the parties.
- Following the dispute, the Griffins terminated the license agreement with Upardi.
Procedural Posture:
- Michael Marrin and Etch-It, Inc. filed an action for declaratory relief against the Griffins in the U.S. District Court for the Central District of California, seeking a declaration that the '448 patent was invalid.
- The Griffins filed a separate suit against Marrin and his company in California state court for patent infringement.
- Marrin removed the Griffins' state court action to the U.S. District Court, where the two cases were consolidated.
- On cross-motions for summary judgment, the district court granted summary judgment for Marrin, ruling that the Griffins' '448 patent was invalid as anticipated.
- The Griffins, as appellants, appealed the district court's judgment to the United States Court of Appeals for the Federal Circuit, with Marrin et al. as appellees.
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Issue:
Does the preamble of a patent claim, which describes the intended use of an invention as 'for permitting a user to write thereon without the use of a marking implement,' constitute a legally binding limitation on the scope of the claim for the purposes of an anticipation analysis?
Opinions:
Majority - Dyk, Circuit Judge
No, the preamble does not constitute a legally binding limitation. Preamble language that merely states the purpose or intended use of an invention is generally not treated as limiting the scope of the claim. For apparatus claims, patentability depends on the claimed structure, not on the use or purpose of that structure. The Griffins failed to show clear reliance on the preamble during prosecution to distinguish their invention; in fact, they expressly stated that 'writing means' was not an element of their claims. Therefore, the preamble only added an intended use and does not limit the claim, which is anticipated by prior art that discloses the same physical structure.
Dissenting - Newman, Circuit Judge
Yes, the preamble does constitute a legally binding limitation. It is incorrect to construe a claim by deleting limitations stated in the preamble and then hold the claim anticipated by subject matter that is excluded by those very limitations. The preamble limits a claim when it is necessary to give 'life, meaning, and vitality' to the invention. The Griffins' invention is specifically a label for writing, which distinguishes it from prior art like lottery tickets where hidden information is merely revealed. The majority's excision of the very portion of the claim that distinguishes the invention from the prior art, only to invalidate the claim on the basis of that same art, is contrary to law.
Analysis:
This decision reinforces the prevailing view in patent law that statements of intended use in a preamble are presumptively non-limiting. It serves as a critical reminder to patent prosecutors that all essential features of an invention must be placed in the body of the claim to ensure they are considered limitations. The court's focus on the prosecution history establishes that an inventor's own statements disclaiming a feature as a limitation will be used against them in subsequent litigation. This case solidifies the high bar required to overcome the presumption, making it more difficult for patentees to rely on preamble language to distinguish their inventions from prior art.
