03/04/2015

Pacing Tech. v. Garmin Int’l: Disavowal in Claim Construction of “repetitive motion pacing system.“


Category: Claim Construction 
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor  
 
TitlePacing Tech., LLC v. Garmin Int'l, Inc., No. 2014-1396 (Fed. Cir. Feb. 18, 2015).
IssueOn appeal, the parties dispute whether the asserted claims require the claimed devices to play back the pace information using a tempo, such as the beat of a song or flashes of light. This dispute turns on whether the preamble to claim 25 is limiting and on the construction of a “repetitive motion pacing system” as recited in the preamble.
Pacing Tech., LLC, at *4.
HoldingWe hold that the preamble to claim 25, which reads “[a] repetitive motion pacing system for pacing a user...,” is limiting [because the preamble terms “user” and “repetitive motion pacing system” limit the claims, and the embodiments discussed in the specification disavow an interpretation beyond that which is disclosed].
Id. at *5 (text added).
 
 
 
Procedural HistoryPacing Technologies, LLC (Pacing) appeals from the district court’s grant of summary judgment that Garmin International, Inc.’s and Garmin USA, Inc.’s (collectively, Garmin) accused products do not infringe the asserted claims of Pacing’s U.S. Patent No. 8,101,843
Pacing Tech., LLC, at *2.
 
 
Legal Reasoning (Lourie, MOORE, Reyna)
Background
Claim at issueClaim 25 of the ’843 patent, the only asserted independent claim, reads as follows (emphases added):

A repetitive motion pacing system for pacing a user comprising:

a web site adapted to allowing the user to pre-select from a set of user-selectable activity types an activity they wish to perform and entering one or more target tempo or target pace values corresponding to the activity;

a data storage and playback device; and

a communications device adapted to transferring data related to the pre-selected activity or the target tempo or the target pace values between the web site and the data storage and playback device.

Pacing Tech., LLC, at *2-3.
Legal Standard, Preambles“Preamble language that merely states the purpose or intended use of an invention is generally not treated as limiting the scope of the claim.” Bicon, Inc. v. Straumann Co., 441 F.3d 945, 952 (Fed. Cir. 2006). However, “[w]hen 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).
Id. at *5.
Legal Standard, disavowalWe have found disavowal or disclaimer based on clear and unmistakable statements by the patentee that limit the claims, such as “the present invention includes . . .” or “the present invention is . . . ” or “all embodiments of the present invention are . . . .” See, e.g., Regents of Univ. of Minn. v. AGA Med. Corp., 717 F.3d 929, 936 (Fed. Cir. 2013); Honeywell Int’l, Inc. v. ITT Indus., Inc., 452 F.3d 1312, 1316–19 (Fed. Cir. 2006); SciMed Life Sys., Inc., 242 F.3d at 1343–44. We have found disclaimer when the specification indicated that, for “successful manufacture,” a particular step was “require[d].” Andersen Corp. v. Fiber Composites, LLC, 474 F.3d 1361, 1367 (Fed. Cir. 2007). We have found disclaimer when the specification indicated that the invention operated by “pushing (as opposed to pulling) forces,” and then characterized the “pushing forces” as “an important feature of the present invention.” SafeTCare Mfg., Inc. v. Tele-Made, Inc., 497 F.3d 1262, 1269–70 (Fed. Cir. 2007). We also have found disclaimer when the patent repeatedly disparaged an embodiment as “antiquated,” having “inherent inadequa- cies,” and then detailed the “deficiencies [that] make it difficult” to use. Chi. Bd. Options Exch., Inc. v. Int’l Sec. Exch., LLC, 677 F.3d 1361, 1372 (Fed. Cir. 2012). Like- wise, we have used disclaimer to limit a claim element to a feature of the preferred embodiment when the specifica- tion described that feature as a “very important feature . . . in an aspect of the present invention,” and disparaged alternatives to that feature. Inpro II Licensing, S.A.R.L. v. T-Mobile USA Inc., 450 F.3d 1350, 1354–55 (Fed. Cir. 2008). When a patentee “describes the features of the ‘present invention’ as a whole,” he alerts the reader that “this description limits the scope of the invention.” AGA Med. Corp., 717 F.3d at 936.
Id. at *6-7.
Analysis
Preamble limiting in this instanceThe term “user” in the preamble of claim 25 provides antecedent basis for the term “user” in the body of that claim. The body of claim 25 recites “a web site adapted to allowing the user to pre- select from a set of user-selectable activity types an activity they wish to perform and entering one or more target tempo or target pace values corresponding to the activity.” [...] The term “repetitive motion pacing system” in the preamble of claim 25 similarly provides antecedent basis for the term “repetitive motion pacing system” recited as a positive limitation in the body of claim 28, which depends from claim 25. Claim 28 of the ’843 patent reads: “[t]he repetitive motion pacing system of claim 25, wherein the repetitive motion pacing system can determine a geographic location of the data storage and playback device.” ’843 patent col. 19 ll. 46–48. Because the preamble terms “user” and “repetitive motion pacing system” provide antecedent basis for and are necessary to understand positive limitations in the body of claims in the ’843 patent, we hold that the preamble to claim 25 is limiting.
Pacing Tech., LLC, at *5 (some internal citations omitted).
Disavowal of interpretation broader than disclosed embodimentsHere, the specification similarly contains a clear and unmistakable statement of disavowal or disclaimer. In a section entitled “Summary and Objects of the Invention,” the ’843 patent states that “it is a principal object of the present invention to provide a computer-implemented, network-based system having a networked server, data- base, client computer, and input/output device for use by individuals engaged in repetitive motion activities . . . .” ’843 patent col. 3 ll. 9–13. It then lists 18 additional features, each time preceding the feature with the phrase “[i]t is another object of the present invention” or “[i]t is still another object of the present invention.” Id. col. 3 ll. 9 – col. 4 ll. 52. This is a common practice in patent drafting. Many times, the patent drafter will cast certain features as “an object of the present invention,” and often those “objects of the present invention” correspond to features recited in the claims. That is the case here, as many of the different “objects of the present invention” disclosed in the ’843 patent are recited as features in one or more independent or dependent claims. The characterization of a feature as “an object” or “another object,” or even as a “principal object,” will not always rise to the level of disclaimer. In this case, where the patent includes a long list of different “objects of the present invention” that correspond to features positively recited in one or more claims, it seems unlikely that the inventor intended for each claim to be limited to all of the many objects of the invention. However, the ’843 patent goes further, and includes additional language that constitutes unmistakable disclaimer when considered in the context of the patent as a whole. Immediately following the enumeration of the different objects of the present invention, the ’843 patent states that “[t]hose [listed 19 objects] and other objects and features of the present invention are accomplished, as embodied and fully described herein, by a repetitive motion pacing system that includes . . . a data storage and playback device adapted to producing the sensible tempo.” Id. col. 4 ll. 53–67. With these words, the patentee does not describe yet another object of the invention—he alerts the reader that the invention accomplishes all of its objects and features (the enumerated 19 and all others) with a repetitive motion pacing system that includes a data storage and playback device adapted to produce a sensible tempo. In the context of this patent, this clearly and unmistakably limits “the present invention” to a repetitive motion pacing system having a data storage and playback device that is adapted to producing a sensible tempo.
Id. at *7-8.
Conclusion
We hold that there is no genuine dispute of material fact as to whether the Garmin devices produce a sensible tempo. Merely displaying the rate of a user’s pace—for example, displaying “100 steps per minute”—does not produce a sensible tempo. Garmin’s accused devices are therefore not repetitive motion pacing devices. We affirm the district court’s grant of summary judgment of nonin- fringement of the ’843 patent.
Pacing Tech., LLC, at *10.
 
 
 
 
 
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