Addressing the issue of whether a term in a preamble may be a material limitation to a claim, the U.S. Court of Appeals for the Federal Circuit vacated a contempt order that was issued for violation of a settlement agreement because, based on a preamble limitation, the device in question could not be reasonably found to literally infringe the subject patent. Bass Pro Trademarks, LLC v. Cabela’s, Inc., Case No. 06-1276 (Fed. Cir., Apr. 6, 2007) (Newman, J.).
In a prior patent infringement suit, Bass Pro obtained a favorable settlement agreement from Cabela’s in which Cabela’s admitted infringement of Bass Pro’s combination vest and pivotable seat member claimed in U.S. Patent. No. 5,620,227 (the ’227 patent). In the consent judgment, Cabela’s agreed to be permanently enjoined from the unauthorized making, using, selling or inducing others to use the inventions claimed in the ’227 patent. Two years later, Cabela’s began selling an "EZ Chair Combo," a folding seat held by back-pack type straps and having a fabric panel at the wearer’s back. Bass Pro alleged that the fabric panel constituted a "garment that integrated a rigid seat into it" and moved the district court to find Cabela’s in contempt for violation of the consent judgment. The district court granted the contempt motion, noting that Bass Pro "claims are not limited to a traditional vest" as described in the specification, but only required a vest comprising a dorsal member and shoulder support means. Furthermore, because the term "vest" appeared only in the claim preamble, the district court found that term "vest" was not a substantive claim limitation.
Cabela’s appealed, arguing that during the prosecution of the ’227 patent, Bass Pro amended the preamble to recite a "vest," rather than a "garment" as originally claimed and argued that the invention was distinguished over the prior art because it was a unique combination of a vest and pivotable seat, in contrast to a garment that only covered the user’s back. Accordingly, Cabela’s argued that since Bass Pro had to rely on the term "vest" to procure its patent, the district court erred in holding that "vest" was not a substantial claim limitation. The Federal Court agreed, held the recited "vest" was a "material" element of the claim and vacated the contempt order, along with the accompanying sanctions.
Practice Note: When prosecuting patents, it is generally wise to attempt to maintain the broadest claim scope possible when amending claims and presenting arguments to overcome prior art references. Prosecution history can provide valuable ammunition for limiting the scope of a patent.
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