"Claims in pending applications receive their broadest reasonable interpretation during examination." In re Fought, 941 F.3d 1175, 1177 (Fed. Cir. 2019). Under that standard, claim terms are given their plain and ordinary meaning as understood by a person of ordinary skill in the art, unless that meaning is inconsistent with the specification.

It is clear what the antecedent is-namely, the phrase "a joist" in the preamble. It is a familiar role for preambles to provide antecedents for phrases in the body of the claim. See, e.g., In re Fought, 941 F.3d 1175, 1178 (Fed. Cir. 2019). That is just what "a joist"-and only "a joist"-does.

The Board correctly construed "emergency" to convey an intended use rather than a structural limitation. No arguments have been made to suggest what possible structural characteristics would differentiate an emergency water store and a non-emergency water store. See, e.g., In re Fought, 941 F.3d 1175, 1178-79 (Fed. Cir. 2019) (holding that the term "travel trailer" was a structural limitation of the claims rather than a statement of intended use because it described the towability and living area arrangement of a type of recreational vehicle). Indeed, Ms. Miller's counsel conceded in oral argument that "emergency" confers no structural characteristic at all.

"We have repeatedly held a preamble limiting when it serves as antecedent basis for a term appearing in the body of a claim." In re Fought , 941 F.3d 1175, 1178 (Fed. Cir. 2019) ; see also , e.g. , Bio-Rad Labs., Inc. v. 10X Genomics Inc. , 967 F.3d 1353, 1371 (Fed. Cir. 2020) (body's reliance on preamble for antecedent basis "is a strong indication that the preamble acts as a necessary component of the claimed invention" (internal quotation marks omitted)). SIMO concedes that part of the preamble is limiting but argues that some components in the group of listed structures, including the non-local calls database, should not be deemed limiting, because they are "unnecessary to perform the" functions specified after the preamble.

The Federal Circuit has “repeatedly held a preamble [is] limiting when it serves as antecedent basis for a term appearing in the body of a claim.”SIMO Holdings Inc. v. Hong Kong uCloudlink Network Tech. Ltd., 983 F.3d 1367, 1375 (Fed. Cir. 2021) (quoting In re Fought, 941 F.3d 1175, 1178 (Fed. Cir. 2019)). Because the preamble recites essential structure, is necessary to give life, meaning and vitality to the claim, and serves as antecedent basis for terms appearing in the body of the claim, the Court concludes that the preamble in claim 9 is limiting.

“The preamble may be construed as limiting ‘if it recites essential structure or steps, or if it is necessary to give life, meaning, and vitality to the claim.'” Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010) (quoting Catalina Mktg., 289 F.3d at 808). And the preamble may be limiting when “the claims ‘depend on it for antecedent basis,'” In re Fought, 941 F.3d 1175, 1178 (Fed. Cir. 2019) (quoting C.W. Zumbiel Co. v. Kappos, 702 F.3d 1371, 1385 (Fed. Cir. 2012)), or “the claim drafter uses the preamble to define the subject matter of the claim,” August Tech. Corp. v. Camtek, Ltd., 655 F.3d 1278, 1284 (Fed. Cir. 2011) (citing Allen Eng'g, 299 F.3d at 1346). Furthermore, “clear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art transforms the preamble into a claim limitation because such reliance indicates use of the preamble to define, in part, the claimed invention.” Catalina Mktg., 289 F.3d at 808-09 (citing Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1375 (Fed. Cir. 2001)).

One "guidepost" for determining limitation by preamble is when a preamble phrase serves as an antecedent basis for a term that later appears in the body of a claim. Id. Such dependence on a particular preamble phrase for antecedent basis may limit the scope of the claim, because it indicates reliance on both the preamble and the claim body. Id.; In re Fought, 941 F.3d 1175, 1178 (Fed. Cir. 2019) ("We have repeatedly held a preamble limiting when it serves as antecedent basis for a term appearing in the body of a claim."). And, if a court determines that a phrase in the preamble is limiting, that "does not necessarily convert the entire preamble into a limitation, particularly one that only states the intended use of the invention."

Rad Labs., Inc. v. 10X Genomics Inc., 967 F.3d 1353, 1371 (Fed. Cir. 2020) (quotation omitted); see also In re Fought, 941 F.3d 1175, 1178. “In patent law, it is widely understood that the recitation of the term ‘the' or ‘said' before a feature [in the body of the claim] indicates to a reader that the feature following these terms has been introduced prior in the claim language.

Defendant's argument relies heavily on authorities already presented by the parties and considered by the Court. (See D.I. 90 at 2-6 (citing Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354 (Fed. Cir. 2010); In Re Fought, 941 F.3d 1175 (Fed. Cir. 2019); Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801 (Fed. Cir. 2002))). --------

See, e.g., In re Fought, 941 F.3d 1175, 1178 (Fed. Cir. 2019) (internal citations and quotation marks omitted) ("Preamble language that merely states the purpose or intended use of an invention is generally not treated as limiting the scope of the claim. However, the preamble constitutes a limitation when the claim(s) depend on it for antecedent basis."); Arctic Cat Inc. v. GEP Power Prod., Inc., 919 F.3d 1320, 1328 (Fed. Cir. 2019) (internal citations and quotation marks omitted) ("We have long ruled that a preamble is not limiting where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.")).