Application Drafting Dangers Highlighted By Pacing Technologies v. Garmin International

The general rule is that a patent claim's preamble does not limit the claim unless the preamble breathes life and meaning into the claim.  The Federal Circuit's recent decision in Pacing Techs. v. Garmin Int'l, No. 2014-1396 (Feb. 18, 2015) highlights some application drafting choices that, under post-issuance scrutiny, resulted in limitations being read into an independent claim.  Considering lessons of this case when drafting U.S. patent applications and when interpreting issued claims with respect to possible infringement can help practitioners write better applications and make better arguments during litigation or other post-issuance activity.

Federal Circuit Decision:  Claim 25 of U.S. Pat. No. 8,101,843, the only independent claim asserted by Pacing Technologies, recites in its preamble a "repetitive motion pacing system for pacing a user."  The term "repetitive motion pacing system" is not present in the body of claim 25, but the Federal Circuit