The district court found the asserted patent was invalid under 102(b) as anticipated by several patents. The district court did not treat the asserted claims’ preamble as a limitation because the preamble only was an intended use and the patentee did not demonstrate a clear reliance on the preamble during prosecution. With this claim construction, the district court found several patents that anticipated the structures in the asserted claims. The patentee appealed and the Federal Circuit affirmed.
The patentee conceived of the idea of 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. Figs from Patent 5154448 are shown below. A user could scratch their name on the label to identify their can or cup.
Claim 1 of the patent, which is representative of the four disputed claims, reads as follows: (Bold added)
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.
The Griffins acknowledge that the prior art disclosed scratch-off devices. However, the Griffins contend that the prior art did not disclose the ability of a user of a scratch-off device to write without the use of a marking implement, which was disclosed in the preamble to the claims of the ’448 patent.The Federal Circuit agreed with the district court ruling “that the “for permitting” language in the preamble was not a claim limitation based on its findings that (1) the preamble language added in the amendment only added a statement of a purpose or an intended use for the invention, and (2) the patentee did not demonstrate clear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art. Marrin, 2008 U.S. Dist. LEXIS, at *2, 7.”
For apparatus claims, such as those in the ’448 patent, generally patentability “depends on the claimed structure, not on the use or purpose of that structure.” Catalina Marketing Int’l v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002).The court compares the asserted Griffins claim with US 4241943 (Malinovitz) a card for showing parking times that has a similar structure (scratch off to reveal underlying layer). See US 4241943 (Malinovitz) fig 1 below.
Below is the "feature” chart the court used to anticipate Griffins with Malinovitz.
The court found the patent invalid as anticipated.
Judge Newman, in the dissent, offers reasons that the preable’s intended use should be a limitation for an apparatus claim.
Precedent establishes that the preamble limits the claims when it distinguishes the use of the claimed article from the prior art, see Vita-Mix Corp. v. Basic Holding, Inc., 581 F.3d 1317, 1323-24 (Fed. Cir. 2009), as well as when it contains language that is essential to the description of the invention, see In re Bulloch, 604 F.2d 1362, 1365 (CCPA 1979)
Practice pointers – An apparatus claim must be distinguished from the prior art apparatuses by a difference in structure, not intended use or purpose. An option might be to include a combination of structures including the end product. For example in this case, the combination of scratch off label and a beverage can or cup could have been claimed.
In addition, a dependent apparatus claim could have been added with the user’s scratch off mark on the label that identifies the user. This may have differentiated the claim over the prior art parking ticket or prior art scratch off lottery card where the scratch off reveals underlying marks in the base layer. Note that this dependent claim would be harder to enforce against the manufacturer for inducement to infringe or contributory infringement.
If you wish to claim a new use for a known device/apparatus, a method claim should be used. In this case, method claims could have been added. Note, that is much more difficult to enforce a method claim where the consumer is an actor (e.g., a consumer scratches his name in the label on the beer can”). The manufacturer of the can/scratch off label could be held liable for inducement to infringe or contributory infringement, but this is more difficult to enforce.
Opinion http://www.cafc.uscourts.gov/opinions/09-1031.pdf
Related Cases
Catalina Marketing Int’l v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002).
Vita-Mix Corp. v. Basic Holding, Inc., No. 08-1479 (Fed. Cir. Sept. 16, 2009) http://caselaw.lp.findlaw.com/data2/circs/fed/081479p.pdf
