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Judge Cote Rules Claim Preamble is Limiting and Not So “Elastic” as to Be Indefinite

On August 4, 2017, District Judge Denise Cote issued a claim construction order that held the preamble of claim 1 of Lumos Technology Co., Ltd.'s ("Lumos") U.S. Patent No. 8,746,906 ("the '906 patent") is limiting and that a person of ordinary skill would know what "elastic material" means, and thus the relative phrase does not render claim 5 indefinite.

The preamble of claim 1 of the '906 patent is as follows: "A light source module for macro photography, the light source being configured for connecting to a lens of an image capturing apparatus and bearing against a plane surface to capture the image of the plane surface, the light source module comprising:"

Lumos took the view that the preamble is not limiting, but the Court agreed with JEDMED that the preamble is necessary to give meaning to the patent's claims in three respects.  First, the body of claim 1 recites a barrel for connecting to "the lens." The Court recognized that the preamble provides the antecedent basis for this term. Second, the body of claim 1 describes the front of the barrel as having contact pads "for contacting with the plane surface." The Court found that the preamble explains that the referenced "contact" is the act of the barrel of the light source "bearing against" the plane surface. Third, the body of claim 1 describes a light source module as having a barrel with a rear portion "for connecting to" the lens. The Court found that the preamble explains that the rear of the barrel is to be "configured for connecting to a lens of an image capturing apparatus."

The parties also disputed whether the term "elastic material" in claim 5 is indefinite. Claim 5 provides: "The light source module as claim 1, wherein the contact pads are made of elastic material." The Court noted that under Federal Circuit precedent, relative terms and terms of degree are not inherently indefinite. The key question is whether the claims inform a skilled reader with reasonable certainty about the scope of the invention. Here, the Court ruled that "elastic material" provides sufficient guidance to those skilled in the art.

Case: Lumos Tech. Co. v. Jedmed Instrument Co., No. 16-cv-6939(DLC), 2017 U.S. Dist. LEXIS 123561 (S.D.N.Y. Aug. 04, 2017). The patent in suit is U.S. Patent No. 8,746,906.