Precedential Patent Cases From the Federal Circuit in the Past Week
Pacing - The Circuit affirmsthe district court's grant of summary judgment of noninfringement, holding that a claim preamble can be limiting if it provides antecedent basis for and is necessary to understand limitations in the body of the claims. The Circuit also holds that characterizing claimed features as "objects of the invention" can constitute disclaimer of the plain meaning of a claim term when considered in the context of the patent as a whole.
Pacing Technologies, LLC v. Garmin Int'l, Inc., Fed Cir. Case 2014-1396 (February 18, 2015)
Pacing appeals the district court's grant of summary judgment that Garmin's accused products ( fitness watches and microcomputers used by runners and cyclists) do not infringe the asserted claims. The patent in suit is directed to methods and systems for pacing users during repetitive activities, such as running, cycling, and swimming, by providing the user with a tempo (for example, the beat of a song or flashes of light) corresponding to the user's desired pace.
The Garmin website allows users to design and transfer workouts to the accused Garmin devices, and the user can assign these workouts a target pace value. The devices may display the user's actual pace, e.g., 50 to 70 spm, but do not play music or output a beat corresponding to the user's desired or actual pace.
The only asserted independent claim reads as follows (emphases added):
25. A repetitive motion pacing system for pacing a user comprising:
a web site adapted to allowing the user to preselect [activities]…;
a data storage and playback device; and
a communications device adapted to transferring data [between the web site and data storage and playback device].
Pacing argued that the accused devices are "playback devices" because they "play" workout information to the user, which can include the user's target and actual pace. The district court construed the term "playback device" as "a device capable of playing audio, video, or a visible signal," held that the preamble to the claim is a limitation, and granted Garmin summary judgment of noninfringement.
The Panel's Review is De Novo
The panel first notes that when the district court considers only intrinsic evidence, as it did here, the Circuit will review that construction de novo.
The preamble should be given weight as a claim limitation
The panel holds that the preamble to the claim, which reads "[a] repetitive motion pacing system for pacing a user. . . . ," is limiting. 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, when 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. In the claim at issue, the panel holds that the preamble is limiting because it provides antecedent basis for and is necessary to understand positive limitations in the body of the claims. The panel next gives meaning to the preamble terms through the claim construction process.
The "Objects of the Invention" Can Disclaim Plain Meaning
The plain and ordinary meaning of the phrase "repetitive motion pacing system for pacing a user" does not require the claimed system to pace the user by playing back the pace information using a tempo. However, claim terms are construed in light of the specification and prosecution history, not in isolation. The panel reviews the instances in which the specification and prosecution history compel departure from the plain meaning: lexicography and disavowal, and notes that the standards for finding lexicography and disavowal are "exacting." To act as a lexicographer, a patentee must "clearly set forth a definition of the disputed claim term" and "clearly express an intent to define the term." Similarly, disavowal requires that "the specification [or prosecution history] make clear that the invention does not include a particular feature."
Here, the specification contains a clear and unmistakable statement of disavowal or disclaimer. The patent recites 19 "objects of the present invention," all of which correspond to various features in the claims. The characterization of a feature as "an 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 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 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." 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 with a system that includes a device adapted to produce a sensible tempo. In the context of this patent, this clearly and unmistakably limits "the present invention" to a system having a playback device that is adapted to producing a sensible tempo.
Pacing argues that there is no disavowal because the patent discloses an embodiment where the playback device does not need to produce a sensible tempo, and argues that if the claim is construed to limit the invention to those producing a sensible tempo, this particular embodiment will not be covered. The panel disagrees because (1) it is not clear that the construction excludes this embodiment, and (2) while constructions that exclude the preferred embodiment are disfavored, every claim does not need to cover every embodiment.
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, and the panel affirms the district court's grant of summary judgment of noninfringement.
Comment: The panel makes clear that characterization of a feature as "an object" will not always rise to the level of disclaimer, and that the inclusion of a list of different "objects of the invention" that correspond to claim features does not mean that any claimed embodiment of the invention necessarily includes all of the objects of the invention. Nevertheless, if "objects of the invention" are recited, it would be prudent to also include a disclaimer that any claimed embodiment of the invention does not necessarily include all of the objects or embodiments of the invention.