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Joseph J. Farnan: Terms in Preamble Require No Construction


District Judge Joseph J. Farnan Jr. recently issued a claim construction decision notable for its refusal to construe several claim terms. In the underlying dispute over a liquid-crystal display patent, the parties requested construction of the terms “display apparatus” and, in relevant part, “providing a predetermined variation with viewing angle of light transmission.” Citing a variety of infirmities, the Court declined to construe the terms.

According to the Court, the “display apparatus” term appears only in the preamble, and thus cannot constitute a limitation:

“[T]he terse preamble simply refers to a ‘display apparatus,’ which, in the Court’s view, is nothing more than a statement of the general field of the claim. Indeed, the word ‘display’ is not relied upon later in the claim to describe the details of the invention, which, in and of itself, provides further corroboration for the Court’s conclusion that the preamble is not a limitation.”

The “predetermined variation” phrase suffered a similar fate, but for opposite reasons: rather than lacking sufficient explanation in the specification, as above, the phrase instead had sufficient explanatory support to refute defendants’ proposed construction:

“Pairing a description of a specific, concrete use of the invention with a generalized description of the invention, the specification thus uses an example in the usual way to clarify the broader concept. . . . [T]his language, rather than being dispensable boilerplate, represents the standard mode of using an example to convey an idea. The Court will not punish the patentees for attempting to make their specification more accessible in this manner.”

Because plaintiff’s proposed construction altered the claim language “only slightly,” the Court declined to construe the claim phrase.

Honeywell Int’l Inc. v. Nikon Corp., C.A. No. 04-1337-JJF (D. Del. Dec. 9, 2008) (Farnan, J.).

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