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Specification and Disavowal During Prosecution Limit Claim Scope

May 22, 2009

Decision icon Decision

Last Month at the Federal Circuit - June 2009

Judges: Bryson, Linn (author), Moore

[Appealed from: S.D. Ohio, Judge Barrett]

In Paragon Solutions, LLC v. Timex Corp., No. 08-1516 (Fed. Cir. May 22, 2009), the Federal Circuit vacated and remanded the district court’s final judgment of noninfringement based on the parties’ stipulation following claim construction. The Court concluded that the district court’s construction of the claim terms “data acquisition unit” and “display unit” were incorrect.

Paragon Solutions, LLC (“Paragon”) owns U.S. Patent No. 6,736,759 (“the ’759 patent”), which is directed to an exercise monitoring system. Claim 1 requires (1) a data acquisition unit comprising an electronic positioning device and a physiological monitor; and (2) a display unit configured for displaying real-time data provided by the electronic positioning device and the physiological monitor, the display unit separate from the data acquisition unit. During prosecution, claim 1 was amended to require that the electronic positioning device and physiological monitor be provided as a data acquisition unit, and also to require that the display unit be separate from the data acquisition unit and be configured to display real-time data.

The parties stipulated that the accused Timex Corporation’s (“Timex”) products include at least three components: (1) a watch with a display, (2) a GPS transceiver, and (3) a heart rate monitor. The parties also stipulated that the electronic positioning device (GPS transceiver) and the physiological monitor (heart rate monitor) are located in separate physical structures and data are separately provided by the physiological monitor and the electronic positioning device to the display.

Relying on the doctrine of prosecution disclaimer, the district court construed “data acquisition unit” to mean “one structure that includes the electronic positioning device and the physiological monitor.” The district court construed “display unit” to mean “a unit for displaying real-time data provided by the data acquisition unit.” Finally, the district court construed “displaying real-time data” as “displaying data substantially immediately without contextually meaningful delay so that the information is displayed in a time frame experienced by people.” The parties stipulated to noninfringement, subject to Paragon’s right to appeal the claim construction. The district court entered final judgment of noninfringement and Paragon timely appealed.

On appeal, the parties disputed whether the “data acquisition unit” must be a single structure or whether it can be made up of physically separate structures. From the language of the claims depending on claim 1, the Federal Circuit found that the “data acquisition unit” comprises a support member for both a GPS device (the electronic positioning device) and a physiological monitor. Because the GPS device and the physiological monitor are “removably secured” to a support member, the Court concluded that they are separate structures that are separately removable from the support member, which suggests that the data acquisition unit may be made up of separate physical structures. 

Turning to the specification, the Court found support for Paragon’s proposed construction both in the drawings and the text. In Figure 1, for example, an electronic positioning device, a physiological monitor, and a display unit are shown separate from each of the other structures. The Court disagreed with Timex that the structural configuration depicted in Figure 1 is nothing more than an unclaimed embodiment.

The Court next considered the prosecution history. The Court noted that by amending the claims to require a separate data acquisition unit and display unit, and by remarking that this distinguished the “unitary structure” of the prior art, the applicants clearly and unmistakably disavowed a single structure that encompassed an electronic positioning device, a physiological monitor, and a display unit. The Court found that this disavowal of scope meant that the claimed exercise monitoring system must be at least two structures, but it did not require a “data acquisition unit” made up of physically separate structures.

With respect to the term “display unit,” Paragon argued on appeal that the district court’s construction was wrong in three respects. First, Paragon argued that the “display unit” should be construed as displaying data provided by the individual components of the data acquisition unit. The Court, looking at the claim language, the specification, and its construction of “data acquisition unit,” agreed with Paragon that the data displayed by the display unit may be obtained from the claimed electronic positioning device and the claimed physiological monitor either separately or over a common transmission path. Second, Paragon argued that “display unit” should not be limited to a single structure, just as “data acquisition unit” is not limited to a single structure. The Court, applying the presumption that the same terms appearing in different portions of the claims should be given the same meaning unless it is clear from the specification and prosecution history that the terms have different meanings at different portions of the claims, construed that “display unit” may be comprised of multiple structures as well. Third, Paragon argued that the “display unit” should not have been construed to require “displaying real-time data.” The Court disagreed that the district court’s construction requires the display unit to actually display real-time data. Rather, the Court found that the district court construed “display unit” as “a unit for displaying real-time data” and that the word “for” denotes a function for which the display unit is configured.

Accordingly, the Federal Circuit modified the district court’s construction of “display unit” to mean “a structure or set of structures, separate from the data acquisition unit, for displaying real-time data provided by both the electronic positioning device and the physiological monitor independently or over a common transmission path.” Slip op. at 18.

As an alternative basis for affirmance, Timex argued that the district court’s construction of “displaying real-time data” was incorrect and that its products cannot infringe under the correct construction. Timex argued that “displaying real-time data” means “displaying the measured parameter at the given moment in time that the measurement of the parameter occurs.” Paragon argued that Timex’s proposed construction would require instantaneous display, which is not possible in practice.

For the meaning of the term “real-time,” the Court first looked to the claim language. The Court found that data transmission, the required receiving and processing of signals for data such as location altitude and distance traveled, as well as the calculation of data, such as pace and velocity, all require a nonzero amount of time, so “displaying real-time data” cannot possibly mean displaying data instantaneously.

The Court then turned to the specification, which criticized the prior art for failing to provide instantaneous feedback. In the Court’s view, the specification’s criticisms are targeted at systems that do not provide any feedback during the course of the physical activity itself and provide stored data for review only after the activity is completed. The Court found the phrase “at any given moment” as used in the specification unhelpful in ascertaining the meaning of “real-time.” The Court further noted that the specification expressly states that the invention can be practiced using commercially available GPS technology, which at the time of filing was not able to display data instantaneously. Finally, the Court noted references in the specification to types of data, such as velocity, pace, and heart rate, which must permit the passage of time to accurately measure the data to be displayed.

The Court, however, took issue with the district court’s construction of “real-time” as “substantially immediately without contextually meaningful delay.” The Court found that this construction “injects a use limitation into a claim written in structural terms.” Id. at 24. As an example, the Court noted that a thirty-second delay might be insignificant in some contexts, such as climbing, but highly significant in other contexts, such as skiing. In the Court’s view, “[c]onstruing a non-functional term in an apparatus claim in a way that makes direct infringement turn on the use to which an accused apparatus is later put confuses rather than clarifies, frustrates the ability of both the patentee and potential infringers to ascertain the propriety of particular activities, and is inconsistent with the notice function central to the patent system.” Id. at 25. The Court found further evidence in the prosecution history that “real-time” does not mean instantaneous because the applicant distinguished the prior art as “merely display[ing] performance data after the athlete has completed their activity.” Id. at 26. Finally, the Court relied on various technical disclosures as extrinsic evidence and concluded that “displaying real-time data” means “displaying data without intentional delay, given the processing limitations of the system and the time required to accurately measure the data.”

Turning to the issue of infringement, the Court rejected Timex’s argument that its accused products cannot meet the “displaying real-time data” limitation under “any proper construction” because its products incorporate an intentional delay. Because Timex mentioned the intentional delay for the first time at oral argument, the Court concluded that the factual question of whether the accused products incorporate such an intentional delay precluded the Court from concluding as a matter of law that Timex’s products do not infringe. Accordingly, the Court vacated the judgment of noninfringement and remanded for further proceedings.

Summary authored by Sulay D. Jhaveri, Ph.D., student associate at Finnegan.