IP Update, Vol. 14, No. 6, June 2011 - Part 2

Edited by Paul Devinsky and Rita Weeks

Patents / Claim Construction

For Infringement Purposes, Preamble Can Define a Limiting Environment Rather than a Claim Limitation

By Ryan N. Phelan

The U. S. Court of Appeals for the Federal Circuit has explained that terms of a patent claim preamble can define a limiting "environment." Such terms of the limiting environment may be performed or met by third parties, setting the stage for infringement by parties accused of practicing the limitations of the claim body. Advanced Software Design Corp. v. Fiserv, Inc., Case Nos. 09-1585, 10-1011 (Fed. Cir., June 2, 2011) (Bryson, J.).

Advanced Software Design and Fiserv offer competing products that generally work by encrypting selected information on a check, e.g., the name of the payee or the amount to be paid, and printing the encrypted information on the check. The information is later used to validate whether the check is legitimate rather than fraudulent or forged.