Rotatable Tech. v. Motorola Mobility: Claim Preamble Held Limiting Based on Prosecution History

Category: Claim Construction   
By: Christian Hannon, Contributor 
TitleRotatable Tech. v. Motorola Mobility, No. 2014-1042 (Fed. Cir. June 27, 2014)(non-precedential).
IssueRotatable appeals, among other things, that the preamble term “selectively rotating” is not a claim limitation and that, if the term is a claim limitation, the distrcit court erred in its construction of the term.
Rotatable Tech. at *4.
HoldingBecause the intrinsic record emphasizes the importance of “selectively rotating” and because the prosecution history shows that the patentee relied on the term “selectively rotating” to distinguish the claimed invention from prior art, the district court correctly determined that “selectively rotating” is a claim limitation.
Id. at *2.
Procedural HistoryRotatable appeals the district court’s determination that [selectively rotating] is a claim limitation and that the term means “rotating a computer display window such that any angle of orientation may be chosen.”
Rotatable Tech. at *4.
Legal Reasoning (O'Malley, Taranto, and Hughes)
Standard of Review / Applicable LawWhether a preamble limits a claimed invention is a question of law that we review de novo. A preamble may limit the invention if it “recites essential structure or steps, or if it is ‘necessary to give life, meaning and vitality’ to the claim.” When reciting additional structure “underscored as important by the specification, the preamble may operate as a claim limitation.” Moreover, “clear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art transforms the preamble into a claim limitation.”
Rotatable Tech. at *3 (internal citations omitted).
Preamble at IssueThe preambles of claims 9 and 14 of the ’978 patent recite “selectively rotating a computer display window.”
Id. at *4.
Numerous References to Limitation in Specification May Provide Support“Selectively rotating” limits the claimed invention. The specification is replete with references to “selectively rotating,” underscoring the importance of the feature to the claimed invention. For example, the ’978 patent’s title, abstract, background of the invention, summary of the invention, description of the drawings, detailed description, and all independent claims recite “selectively rotating.”
Rotatable Tech. at *4 (internal citations omitted).
Prosecution History May Implicate Preamble Langauage as a Claim LimitationFurther, the prosecution history shows “clear reliance on the preamble” to distinguish the claimed invention from the prior art. The Examiner rejected claims 9 and 14 as obvious in view of U.S. Patent Nos. 6,016,145 (Horvitz) and 5,956,043 (Jensen) because “Horvitz discloses a way to rotate a window and Jensen discloses a way to coplanar rotate a window defined pixel region.” In response, the patentee asserted [the instant application was different because it was claimed to selectively rotate]. Later, on appeal to the Board of Patent Appeals and Interferences, the patentee repeated the same argument, this time including quotation marks around the phrase “selectively rotated.” In light of the foregoing, we affirm the district court’s determination that “selectively rotating” is a claim limitation.
Id. at *4-5 (internal citations omitted, text added).
Thus, we affirm the district court’s construction of “selectively rotating.”
Rotatable Tech. at *5.
 Image Attribution Statement: Cesar Cardoso, “Mostrando a tela colorida e o thumbboard QWERTY,” available under a Creative Commons Attribution 2.0 Generic license, http://commons.wikimedia.org/wiki/File:Motorola_A630.jpg (image edited)(last visited Aug. 15, 2014).
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