Preambling Your Way to Anticipation

Preambling Your Way to AnticipationBoesen v. Garmin International, No. 2010–1488 (Fed. Cir. Dec. 15, 2011) (Chief Judge Rader, Circuit Judges Linn and Moore) (nonprecedential) (per curiam)

In patents, one word can make all the difference. For example, in drafting patent claims, patent attorneys nearly always use the word “comprising” at the end of the preamble, like this:

A method of entering data on a touch screen display, the method comprising: invoking a computer program in which user input is sought; invoking an input area, including a plurality of data input fields; invoking a graphical keyboard area incapable of user termination independent of termination of the input area, the graphical keyboard area having a plurality of keys on the display; selecting keys on the keyboard to provide the desired input; and automatically terminating the graphical keyboard area after the desired input is received in the input area.

That’s the first claim of Boesen’s patent, and the word “comprising” proved to be its undoing.

Boesen’s patent essentially claims a keyboard that appears on a screen for a user to enter data and can’t be cleared until the user completes the entry. In this suit, Boesen sued Garmin and Tom-Tom. He sued Apple on this patent around the same time as this suit.

You might be wondering if Boesen is one of those patent trolls you hear about. Well, the Niro firm handled the suits. (Ray Niro’s name is literally in the electronic encyclopedia under the definition of “patent troll.” ) ’Nuff said.

Anyway, Apple settled. Garmin and Tom-Tom didn’t. They won summary judgment of invalidity instead, which shows that fighting can pay off.

Boesen had to handle this appeal himself. The trial court found that an old Acura navigation system anticipated his patent. There wasn’t any dispute about whether the Acura system had a touch keyboard that stayed on the screen until input was complete.

Boesen argued that the Acura system actually had too much functionality. It seems that you could optionally use a mechanical joystick on the side of the device to enter input. Boesen’s argument was that his claim required keyboard input only.

Boesen’s problem is that word “comprising.” In a preamble, the word “comprising” is “open,” which means the scope of the claim includes more things than just what’s described in the claim. For example, if a method claim “comprises” steps 1, 2, and 3, and I perform steps 1, 2, 3, and 4, I still infringe. Patent attorneys normally use the word “comprising” so that you can’t design around a patent by adding more features. But that openness is the proverbial two-edged sword.

The Acura system had everything in Boesen’s claims, plus some extra stuff. Because the claims used “comprising,” the extra stuff was irrelevant.

And that’s why the Federal Circuit affirmed summary judgment of invalidity.

It’s a short opinion if you’d like to read it.

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