Court Cites Objects of Invention in Claim Construction

24 February 2015 PharmaPatents Blog

Pacing Technologies, LLC v. Garmin International, Inc. is one of those Federal Circuit decisions that may send patent practitioners running to their files to double-check the phrasing used in their patent applications. Not only did the court decide that the preamble of a claim was limiting, it held that a relatively common patent drafting technique effected a clear and unmistakable disclaimer of broader claim scope.

The Patent at Issue

The patent at issue was Pacing’s U.S. Patent 8,101,843, described as being “directed to methods and systems for pacing users during activities that involve repeated motions, such as running, cycling, and swimming.” Claim 25 was the only claim at issue:

A repetitive motion pacing system for pacing a user comprising:
a web site adapted to allowing the user to preselect 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.

 (emphasis added in the Federal Circuit decision)

According to the Federal Circuit decision, the “preferred embodiment” of the patent relates to “a method for aiding a user’s pacing 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 accused Garmin devices can be used with the Garmin Connect website to design workouts consisting of “a series of intervals to which the user can assign a duration and target pace value” that can be transferred to the devices such that the devices display the intervals and the user’s actual pace. However, the Garmin devices do not play music or output a beat corresponding to the user’s desired or actual pace.

The District Court’s Claim Construction

The district court held that the preamble of claim 25 was limiting, and required “a system for providing a sensible output for setting the pace or rate of movement of a user in performing a repetitive motion activity.” The court construed the term “playback device” as “a device capable of playing audio, video, or a visible signal” that “play[s] back pace information.”  The parties agreed that under the district court’s claim construction, the device must “play the pace information as a metronomic tempo, as described in the preferred embodiment of the ’843 patent.”

The Federal Circuit Decision

The Federal Circuit decision was authored by Judge Moore and joined by Judges Lourie and Reyna.

The parties raised two claim construction issues on appeal: (i) is the preamble of claim 25 limiting and (ii) does the pacing system have to play back the pace information using a tempo. Since the district court’s claim construction was based only on intrinsic evidence, the Federal Circuit undertook a de novo review.

On the first issue, the Federal Circuit found that the preamble was limiting because it provides antecedent basis for subsequent claim language:

(i) the preamble’s recitation of “a user” provides antecedent basis for “the user” in the next clause.

(ii) the preamble provides antecedent basis for dependent claim 28, which recites

The 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.

Yes, the preamble technically provides antecedent basis for this claim language, but is it really “necessary to understand positive limitations in the body of [the] claims”?

Turning to the playback issue, the Federal Circuit found that the specification contained “a clear and unmistakable statement of disavowal or disclaimer” in the section entitled “Summary and Objects of the Invention.” In particular, the court noted that the section enumerated nineteen “objects” of the invention, and concluded:

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.

The court reasoned:

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.

In reaching this conclusion, the court noted that including a list of “objects” is “a common practice in patent drafting,” and would “not always rise to the level of disclaimer.” Rather, it was the phrasing of the sentence quoted above that was found to limit the scope of the claims.

Is This the Right Analysis?

On its face, the scope of claim 25 is very broad. It does not require anything of the data storage and playback device, other than that it be able to receive “data related to the pre-selected activity or the target tempo or the target pace values.” Is it better for the court to reach into the specification to further define the device, or should the court have construed the claim more broadly and let Pacing defend its patentability?

While not discussed in the Federal Circuit decision, claim 26 recites that the “repetitive motion pacing system … further compris[es] an output device for outputting at least some of the data such that it is sensible to the user.” Does claim differentiation support a broader construction of claim 25?

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