March 2015
A Patent Claim Can Be Construed to Include All of the Objectives of the Invention Listed in the Specification
| Judges: Lourie, Moore (author), Reyna |
| [Appealed from S.D. Cal., Judge Benitez] |
In Pacing Technologies, LLC v. Garmin International, Inc., No. 14-1396 (Fed. Cir. Feb. 18, 2015), the Federal Circuit affirmed the district court’s grant of SJ of noninfringement.
Pacing Technologies, LLC (“Pacing”) owns U.S. Patent No. 8,101,843 (“the ’843 patent”), which is directed to methods and systems for pacing users during activities involving repeated motions, e.g., running. Pacing sued Garmin International, Inc. and Garmin USA, Inc. (collectively “Garmin”) for infringement of the ’843 patent. Garmin operates a website that allows users to design and transfer workouts to Garmin devices, which then display the intervals of a particular workout and the user’s actual pace. Pacing alleged that the Garmin devices infringed claim 25 of the ’843 patent.
The district court determined that the preamble to claim 25 of the ’843 patent, “a repetitive motion pacing system for pacing a user,” is a limitation, and construed the preamble to mean “a system for providing a sensible output for setting the pace or rate of movement of a user in performing a repetitive motion activity.” Slip op. at 3 (quoting Pacing Techs., LLC v. Garmin Int’l, Inc., 977 F. Supp. 2d 1013, 1021-24 (S.D. Cal. 2013)). The district court also construed the claim term “playback device” as “a device capable of playing audio, video, or a visible signal.” Id. (quoting Pacing Techs., 977 F. Supp. 2d at 1021). Garmin then moved for SJ of noninfringement, contending that the accused devices were not “playback devices” falling under the district court’s construction, and Pacing countered that they were because they “play” workout information to the user. The district court supplemented its construction in the SJ order, holding that “[t]o be a playback device as envisioned in the patent, the device must play back the pace information.” Id. (alteration in original) (citation omitted). The district court held that the displaying of the pace input by Garmin’s accused devices did not constitute “‘play[ing]’ the target tempo or pace information . . . as audio, video, or visible signals.” Id. at 4 (citation omitted). Accordingly, the district court granted Garmin’s request for SJ of noninfringement. Pacing appealed.
“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.’” Slip op. at 7 (quoting Regents of Univ. of Minn. v. AGA Med. Corp., 717 F.3d 929, 936 (Fed. Cir. 2013)) (internal quotation marks omitted).
On appeal, the Federal Circuit noted that the parties’ dispute—whether the asserted claims required the claimed devices to play back the pace information using a tempo—turned on whether the preamble to claim 25 was limiting, which the Court found that it was. The Court explained that “[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.” Id. at 5 (quoting Eaton Corp v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003)). The Court found that the term “user” in the preamble of claim 25 provided antecedent basis for the term “user” in the body of the claim. The Court also found that the phrase “repetitive motion pacing system” was recited as a positive limitation in the body of claim 28, which depends from claim 25. Since both preamble terms provide antecedent basis for and are necessary to understand positive limitations in the body of claims in the ’843 patent, the Court held that the preamble to claim 25 was limiting.
The Court then held that the phrase “repetitive motion pacing system for pacing a user,” as recited in the preamble, requires the claimed system to pace the user by playing back the pace information using a tempo. The Court acknowledged that the plain meaning of that phrase does not require the system to play back the pace information using a tempo, but the Court found a statement of disavowal or disclaimer in the specification. In particular, the Court noted that in a section of the specification, entitled “Summary and Objects of the Invention,” the ’843 patent lists nineteen features, with each feature being cast as “an object of the present invention.” Id. at 7. Immediately after the listing of the different objects of the present invention, “the ’843 patent states ‘[t]hat those [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. at 8 (alterations in original) (quoting ’843 patent col. 4 ll. 53-67). The Court held that the aforementioned statements constituted a disclaimer, which required the invention to accomplish all of the nineteen objects or features enumerated in that section of the specification. Accordingly, the Court construed the “repetitive motion pacing system” of claim 25 to require a capability of producing a sensible tempo for pacing the user.
The Court also disagreed with Pacing that a “repetitive motion pacing system for pacing a user” excludes an embodiment that does not require producing a sensible tempo. To support its assertion, Pacing cited an embodiment where a repetitive motion pacing system plays a landscape video to a user running on a treadmill, with the video calibrated to match the speed of the user’s pace. The Court first noted that just because an embodiment does not expressly disclose a feature does not mean that embodiment excludes that feature. Therefore, while the embodiment cited by Pacing did not require producing a sensible tempo, it also did not exclude such a feature. The Court then noted that when a patent describes multiple embodiments, as in the ’843 patent, every claim of the patent does not need to cover every embodiment. The Court noted that this is especially true for the ’843 patent, where the plain language of claim 25 required the system to pace the user and did not cover the cited embodiment, and that the preamble of claim 25 differed from the preambles of the other seven independent claims of the ’843 patent.
The Court thus affirmed the district court’s grant of SJ of noninfringement of the ’843 patent.
