United States: Keeping Pace With Claim Construction Law: Preambles And Disclaimer Under Pacing Technologies

The Federal Circuit's decision in Pacing Technologies, LLC v. Garmin International, Inc., No. 2014-1396 (Fed. Cir. Feb. 18, 2015), addresses a core issue that arises whenever a practitioner drafts a patent application:  how broad will the resulting claims be?  Pacing Technologies examined this issue from two angles.  First, the Federal Circuit found the preamble of a claim to be limiting.  Second, the Federal Circuit found that statements in the specification describing how "objects" of the "present invention" would be accomplished created a disclaimer of claim scope.  On both scores, the Federal Circuit's opinion provides guidance for practitioners in drafting specifications and claims to achieve a desired claim breadth.

The asserted patent in Pacing Technologies was directed to methods and systems for pacing users (e.g., providing a tempo corresponding to a desired pace) during activities that involve repeated motions, such as running, cycling, and swimming.  The asserted claims recited "a data storage and playback device" that worked together with a "web site" and "communications device" to provide desired tempos to users.

The patent owner, Pacing Technologies, LLC, filed suit against Garmin International, Inc., alleging that certain fitness watches and microcomputers used by runners and bikers infringe the patent.  Users of such devices can design a workout at Garmin's website (e.g., identifying a series of intervals to which the user can assign a duration and target pace value), and download the workout to the watch or other fitness device.  The device then displays the intervals of a particular workout to the user during operation.

The district court construed the term "playback device" from the asserted independent claim as "a device capable of playing audio, video, or a visible signal."  Id., slip op. at 3 (citation omitted).  The district court also held that the claim's preamble is a limitation and construed it 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."  Id. (citation omitted).  In a separate order, the district court also held 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).  Based on these constructions, the district court granted summary judgment of noninfringement to Garmin, since the accused products were not "playback devices" under its construction.  The district court explained that, while the accused products "repeat back or display the pace input or selections," they "do not 'play' the target tempo or pace information . . . as audio, video, or visible signals."  Id. at 4 (citation omitted).

On appeal, the Federal Circuit initially noted that its review of the district court's claim constructions would be de novo in accordance with Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015), since only intrinsic evidence was at issue.  Applying a de novo review, the Federal Circuit first held that the preamble of the asserted independent claim was limiting.  The preamble, which recited "[a] repetitive motion pacing system for pacing a user," was deemed limiting because it provided antecedent basis for terms appearing in the body of the claim.  Pacing Techs., No. 2014-1396, slip op. at 5 (alteration in original).  Specifically, the preamble term "user" provided antecedent basis for the later recitation "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."  Id. (citation omitted).  Similarly, the preamble term "repetitive motion pacing system" provided antecedent basis for the term "repetitive motion pacing system" as recited in a dependent claim.  Id.

Next, the Federal Circuit addressed whether the claim term "repetitive motion pacing system for pacing a user" should be construed as requiring playback of pace information using a tempo.  As the court explained, while the plain and ordinary meaning of this term did not impose such a requirement, statements made in the specification mandated the requirement.  In particular, the patent's "Summary and Objects of the Invention" section described numerous "objects" of the invention.  Id. at 7.  The court noted that, while merely characterizing a feature as an "object" or "principal object" of the invention is not necessarily sufficient to constitute a disclaimer, the specification of the patent went further.  As the court explained, "[i]mmediately 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.'"  Id. at 8 (alterations in original) (citation omitted).  These words, according to the court, served to alert the reader that "the invention accomplishes all of its objects and features" with a system as claimed, including a repetitive motion pacing system that includes a data storage and playback device adapted to produce a sensible tempo.  Id.  Accordingly, the court found that the applicants' statements in the specification constituted a binding disclaimer of claim scope.

The Federal Circuit's holdings in Pacing Technologies highlight several issues that practitioners should take into account when drafting specifications and claims.  First, consider whether the applicant wishes for the preamble to be limiting.  In certain circumstances, it may be desirable to make the preamble limiting, whether for reasons of conciseness in the claims, placing the claims in a certain field of use, or another reason.  In other cases, having nonlimiting preambles may be desired for reasons of maximizing claim breadth.  In both instances, practitioners should note that if preamble terms provide antecedent basis for later limitations in a claim, such that they are necessary to understand the claims, they may be found limiting by a court.  Second, practitioners should be careful about using the phrases "present invention" or "principal object" of the invention in the specification.  As the Federal Circuit in Pacing Technologies found, such statements may serve to limit the claims even when the plain and ordinary meaning of claim terms connotes a broader meaning.  Indeed, as the Federal Circuit noted, if a disclaimer is found based on such statements in the specification, the disclaimer may be enforced even if it excludes an embodiment described elsewhere in the specification.

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