Did you know that your claim preamble is more likely to be limiting when you’re dealing with a method claim versus an apparatus claim? In Cochlear Bone Anchored v. Oticon Medical AB, Cochlear’s claim recited a hearing aid apparatus “for rehabilitation of unilateral hearing loss” in the preamble. Cochlear was challenged at inter partes review (IPR) where Patent Trial and Appeal Board (PTAB) found the preamble term “for rehabilitation of unilateral hearing loss” did not limit the scope of the claims. The U.S. Court of Appeals for the Federal Circuit upheld the Board’s ruling, expressly finding that the statement of intended use is not limiting because the preamble did not furnish additional structure that was recited in the body of the claims, and provided no antecedent basis for any of the limitations in the body of the claim. Primarily, the court found that the term “rehabilitation of unilateral hearing loss” was not suggestive of a particular type of hearing aid having a specific type of structure. The intended use of rehabilitating unilateral hearing loss can be considered to describe the use of hearing aids conventionally and not any specific type of hearing aid.
Looking at a method claim in Eli Lilly and Co. v. Teva Pharmaceuticals, Teva’s claims recited “a method for reducing of or treating” a symptom in an individual. The claims further recited that the method comprises an “effective amount” of a particular compound in the body of the claims. In this IPR, the PTAB found that the preambles are limiting to the extent that the recitation of intended use gave breadth and light, and therefore meaning, to the claimed “effective amount”. That is, the court found that preambles can limit the scope of the claims when the claims would not read on, for example, the performance of the same method step to treat other conditions.
The Federal Circuit further found that because method claims are ultimately directed to what the method does, statements of intended use in method claims can be limiting even if the statement of intended use is in the preamble. Here, Teva’s intended use for treating a headache as recited in the preamble includes clearly denotes that the claim is a method for treating symptoms “in an individual”—i.e., an individual who is suffering from those symptoms—by administering “to the individual” an “effective amount” to treat those symptoms. In the court’s opinion, “Axiomatically, without an individual experiencing vasomotor symptoms, there would be no effective amount that could be used to treat the nonexistent symptoms.” Thus, the preamble term “individual” is part of the statement of intended purpose—for “treating at least one vasomotor symptom in an individual”—the entirety of which provides antecedent basis for the later claim term “administering to the individual.” Therefore, the preamble’s intended use for treating an individual also provided antecedent basis for the positively recited steps of administering treatment to the individual such that the intended use of the preamble would limit the scope of the claims.
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