Federal Circuit Summary

Before Prost, Moore, and Reyna. Appeal from the Patent Trial and Appeal Board.

Summary: Omitting a transition phrase between the preamble and the body of a claim does not cause terms in the preamble to limit the scope of the claim.

Blizzard filed six petitions for inter partes review of patents owned by Acceleration Bay. Acceleration argued that certain terms found in the preambles of the claims (“game environment” and “information delivery service”) were claim limitations. Acceleration argued the terms provided structure for the remainder of the claims and were limiting because each claim had no transition phrase between the preamble and body. The Board disagreed, finding that the claim terms were non-limiting because they described intended uses for what was otherwise a structurally complete invention. Therefore, the terms did not impart any structure into the claims at issue.

The Federal Circuit affirmed. The Federal Circuit concluded that the terms were part of the preamble of the claims even though the claims lacked a transition phrase. The Federal Circuit explained that “Acceleration’s poor claim drafting will not be an excuse for it to infuse confusion into its claim scope” and “cautioned” patentees from similarly failing to include a transition. The Federal Circuit then held that the terms were non-limiting because they provided an intended use for an otherwise structurally complete invention.