Error to Construe Entire Preamble Merely Because a Portion Requires Construction

Author: Kelly S. Horn
Editor: Jeff T. Watson

In TomTom, Inc. v. Adolph, No. 14-1699 (Fed. Cir. June 19, 2015), the Federal Circuit reversed the district court’s claim construction holding that the district court erred in determining that it had to construe the entire preamble if it construed a portion of it.  The preamble of the asserted claim recites: “[a] method for generating and updating data for use in a destination tracking system of at least one mobile unit comprising….”

First, the Court held that the district court should not have construed the first part of the preamble, “method for generating and updating data” as a limitation because this portion of the preamble is not limiting and does not provide an antecedent basis for any of the claims.  In this case, the Court found that this portion of the preamble did not “give life, meaning, and vitality to the claim,” but rather states “a purpose or intended use” and employs “the standard pattern of such language.”

Second, the Federal Circuit held that while the second part of the preamble, “destination tracking system of at least one mobile unit,” was limiting, the district court improperly construed that part to mean that the mobile unit does not contain an initial map database because the prosecution history did not support such a broad disclaimer.  Rather, there was a disclaimer that the system does not require an initial map database.

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