The patent describes a plastic cuff that is designed to preserve a space around a dental implant so that when a dental crown is placed on top of the implant, the base of the crown can fit beneath the patient’s gum line.

 Claim 5 was asserted.

An emergence cuff member for use in preserving the interdental papilla during the procedure of placing an abutment on a root member implanted in the alveolar bone of a patient in which
    [a] the abutment has a frusto-spherical basal surface portion and
    [b] a conical surface portion having a selected height extending therefrom comprising
    [c] a generally annular member formed of biocompatible synthetic plastic having first and second ends,
    [d] a bore extending from the first to the second ends,
    [e] the bore having a taper generally matching that of the conical surface portion of the abutment,
    [f] the larger end of the bore being at the first end,
    [g] the outer surface of the annular member forming a feathered edge with the bore at the first end of the annular member,
    [h] the distance between the first and second ends being less than the height of the conical surface,
    [i] the diameter of the cuff member increasing in the direction going from the first end to the second end, and
    [j] a radially inwardly extending flexible lip formed at the first end of the cuff member.

After construing the claim, the district court granted summary judgment of noninfringement to Straumann on several grounds. First, the court concluded that the lengthy preamble of claim 5 (the portion from the beginning of the claim through part [b]) is an integral part of the claim and limits the claim. The court then held that one of the limitations in the preamble—an abutment having a frusto-spherical basal surface portion—is not satisfied by either of the accused devices.

The district court also ruled that parts [e], [h], and [i] were not met.

Diro tried to broaden the scope of claim 5, but the courts wouldn't have it - the claim is exceedingly narrow in its specificity.

The purpose of a patent claim is to define the precise scope of a claimed invention, thereby “giv[ing] notice both to the examiner at the U.S. Patent and Trademark Office during prosecution, and to the public at large, including potential competitors, after the patent has issued.” Johnson & Johnston Assocs. Inc. v. R.E. Serv. Co., 285 F.3d 1046, 1052 (Fed. Cir. 2002) (en banc). Allowing a patentee to argue that physical structures and characteristics specifically described in a claim are merely superfluous would render the scope of the patent ambiguous, leaving examiners and the public to guess about which claim language the drafter deems necessary to his claimed invention and which language is merely superfluous, nonlimiting elaboration. For that reason, claims are interpreted with an eye toward giving effect to all terms in the claim. See, e.g., Elekta Instrument S.A. v. O.U.R. Scientific Int’l, Inc., 214 F.3d 1302, 1305, 1307 (Fed. Cir. 2000); Unique Concepts, Inc. v. Brown, 939 F.2d 1558, 1563 (Fed. Cir. 1991) (“When the language of a claim is clear, as here, and a different interpretation would render meaningless express claim limitations, we do not resort to speculative interpretation based on claims not granted.”); In re Danly, 263 F.2d 844, 847 (CCPA 1959).

While it is true that preamble language is often treated as nonlimiting in nature, it is not unusual for this court to treat preamble language as limiting, as it is in this case. Preamble language that merely states the purpose or intended use of an invention is generally not treated as limiting the scope of the claim. See Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003); Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997). However, we have stated that there is no “litmus test” for determining whether preamble language is limiting. Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002). To the contrary, we have stated that “whether to treat a preamble as a claim limitation is determined on the facts of each case in light of the claim as a whole and the invention described in the patent.” Storage Tech. Corp. v. Cisco Sys., Inc., 329 F.3d 823, 831 (Fed. Cir. 2003).

If the body of the claim “sets out the complete invention,” the preamble is not ordinarily treated as limiting the scope of the claim. Schumer v. Lab. Computer Sys., Inc., 308 F.3d 1304, 1310 (Fed. Cir. 2002). However, the preamble is regarded as limiting if it recites essential structure that is important to the invention or necessary to give meaning to the claim. NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282, 1305-06 (Fed. Cir. 2005), cert. denied, 74 U.S.L.W. 3421 (U.S. Jan. 23, 2006); SanDisk Corp. v. Memorex Prods., Inc., 415 F.3d 1278, 1284 n.2 (Fed. Cir. 2005), cert. denied, 126 S. Ct. 829 (2005). That is, if the claim drafter “chooses to use both the preamble and the body to define the subject matter of the claimed invention, the invention so defined, and not some other, is the one the patent protects.” Bell Commc’ns Research, Inc. v. Vitalink Commc’ns Corp., 55 F.3d 615, 620 (Fed. Cir. 1995) (emphasis in original). Moreover, when the limitations in the body of the claim “rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention.” Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003).

In sum, the effect of adopting Diro’s proposed claim construction would be to read limitations [a], [b], [e], and [h] out of the claim. Not only would that be contrary to the principle that claim language should not treated as meaningless, but it would be contrary to the specification, which describes the features of the claimed abutment in detail, not only in the description of the preferred embodiments, but in the background and summary of the invention portions of the specification as well.

Noninfringement affirmed.

My prosecution experience has been that the smoothest prosecution sailing is had by limiting the preamble to a sketch of purpose, putting all the substance in the claim body. Stuffing the preamble is a formula for generating confusion.