United States: Federal Circuit Finds Disclaimer Based On "Object Of Invention" Language

The Federal Circuit's recent decision in Pacing Technologies, LLC v. Garmin International, Inc. (No. 2014-1396) provides patent litigators with a new tool for claim construction arguments and may make patent prosecutors reconsider their drafting techniques. The Federal Circuit held that a patent specification's characterization of disclosed "objects of the invention"—a phrase commonly used by patent drafters—effected a disclaimer in claim scope.

The Asserted Patent

Pacing was asserting U.S. Patent No. 8,101,843 (the "'843 patent"), which is directed to "methods and systems for pacing users during activities that involve repeated motions, such as running, cycling, and swimming." Claim 25, the only asserted independent claim, provides:

A repetitive motion pacing system for pacing a user comprising:

a web site adapted to allowing the user to pre-select 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 Federal Circuit opinion)

Pacing accused Garmin's GPS fitness watches used by runners and cyclists of infringing the '843 patent. The accused devices display the intervals of a particular workout and count down the time a user intends to maintain a particular pace. The accused devices also display a user's actual pace in steps-per-minute. However, "[t]he devices do not play music or output a beat corresponding to the user's desired or actual pace."

The Trial Court's Claim Construction

The trial court held that the preamble of claim 25 constituted a claim limitation, and construed it as "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 trial court also construed the term "playback device" as "a device capable of playing audio, video, or a visible signal."

Garmin moved for summary judgment of non-infringement. In its summary judgment order, the trial court supplemented its construction of "playback device," holding that "[t]o be a playback device as envisioned in the patent, the device must play back the pace information." Based on its supplemental construction, the trial court granted Garmin summary judgment of non-infringement, reasoning that while "[t]he [accused] devices 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."

The Federal Circuit's Claim Construction

The issue on appeal was "whether the asserted claims require the claimed devices to play back the pace information using a tempo, such as the beat of a song or flashes of light," which turned on whether the preamble was limiting and the meaning of the term "repetitive motion pacing system" as recited in the preamble.

After affirming that the preamble constituted a claim limitation, the Federal Circuit held that the patentee disclaimed a repetitive motion pacing system that does not produce a sensible tempo. The Federal Circuit found disclaimer by analyzing a portion of the specification entitled "Summary and Objects of the Invention." In that section, the specification disclosed that "it is a principal object of the present invention to provide a computer-implemented, network-based system having a networked server, database, client computer, and input/output device for use by individuals engaged in repetitive motion activities. . . ." The specification then listed 18 additional features, each preceded by the phrase "it is another object of the present invention" or "it is still another object of the present invention." Immediately following those enumerated "objects of the invention," the specification stated that "[t]hose [19 enumerated 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 a sensible tempo." (emphasis added) The Federal Circuit held that the forgoing language clearly and unmistakably limited "the present invention" to a repetitive motion pacing system having a data storage and playback device that is adapted to producing a 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 (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.

(emphasis added)

Because Garmin's accused devices merely displayed the rate of a user's pace (e.g., 100 steps/min), the devices did not produce a sensible tempo and, therefore, did not infringe.

Takeaway

The key to this opinion is not necessarily the specification's use of the phrase "object of the present invention." Indeed, the Federal Circuit noted that the characterization of features as "an object" or "another object" or "a principal object" will not rise to the level of disclaimer. Rather, the specification characterized all of the enumerated "objects" as being accomplished using structure adapted to produce a sensible tempo. Accused infringers should be on the look out for patents that disclaim all "objects" of an invention that might constrain the interpretation of claims, while patent owners should take care in drafting to avoid unintentional limitations of this sort.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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