Preamble Describing Structure of Element Used with the Claimed Object Can Limit Claim Scope

Upholding the lower court’s summary judgment of non-infringement, the U.S. Court of Appeals for the Federal Circuit held that a claim preamble describing structural features of an element designed to be used with the claimed object limited the scope of the claim. The Court affirmed that when the structural features recited in a preamble are necessary in order to give meaning to limitations in the body of the claim itself, the preamble limits the claim. Bicon, Inc. and Diro, Inc., v. The Straumann Company and Institut Straumann AG. (Fed. Cir. Mar. 20, 2006) (Bryson, J.).

The patent holder Diro sued Straumann for patent infringement, joined by its licensee Bicon. The claim-in-suit was directed to a plastic cuff for use in dental implant procedures. The claimed cuff was designed to be used with an abutment member that is attached to a root member implanted in a patient’s jaw bone and which sticks above the patient’s gum line.