Federal Circuit, January 13, 2014

The Federal Circuit holds, in suit for contempt of an injunction, a defendant does not waive their right to claim construction where there was no claim construction in the underlying infringement action. A preamble is likely a limiting where it recites structure or steps highlighted as important by specification and claim elements rely upon and derive antecedent basis from preamble.

In a suit for contempt of an injunction, Invalidity and non-infringement of the original product are not open to challenge, but the defendant may argue the newly accused product does not infringe. Further, the district court is bound by any prior claim construction. However, where there has been no claim construction in the underlying action, the court must construct disputed claim terms. Here, the defendant admitted infringement in the underlying action, and, therefore, the claims were never construed. Therefore, the defendant was entitled to a construction of disputed claim terms.

In this case, the defendant sought to limit the scope of the claims using limitations from the preamble. The Federal Circuit looked to 1) whether the preamble recites structure or steps highlighted as important by specification, and 2) whether claim elements rely upon and derive antecedent basis from preamble. If both are the case, the preamble is likely limiting.