Take care when drafting preambles and summaries in U.S. patent applications. The Federal Circuit recently reminded practitioners of the pitfalls in these areas in the recently decided Pacing Technologies, LLC v. Garmin International, Inc. ("Pacing"). In Pacing the Federal Circuit affirmed a district court's grant of summary judgment of noninfringement to Garmin based on a finding that terms in the preamble were elements of the claim, and that the specification included specific language which narrowed the interpretation of those claim elements from the preamble.
Claim 25 of U.S. Patent No. 8,101,843 ("the '843 patent"), the only asserted independent claim, recited (emphasis added in Federal Court decision):
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.
In its holding, the Federal Circuit concluded that the term "playback device" in claim 25 of the '843 patent should be interpreted as "a device capable of playing audio, video, or a visible signal" and further, based on the language of the preamble 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." Slip op. at 8.
The Federal Circuit started its de Novo analysis noting that, although preamble language that merely stated the purpose of an invention was generally not treated as limiting claim scope, "[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." Slip op. at 5 (citing Eaton Corp. v. Rockwell Int'l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003)). In this case, the term "user" in the preamble provided antecedent basis for that term in the body of claim 25 and "repetitive motion pacing system" in the body of dependent claim 28. The court held that the preamble of claim 25 is limiting "because the preamble terms 'user' and 'repetitive motion pacing system' provide antecedent basis for and are necessary to understand positive limitations in the body of the claims in the '843 patent." Slip op. at 5. The primary upshot of this portion of the holding was to find that "repetitive motion pacing system" must be interpreted as a positive recitation of claim 25, and thus to infringe claim 25 an accused device would necessarily require such a feature. Slip op. at 5.
It is in the interpretation of the term "repetitive motion pacing system" and its interrelation with the term "playback device," that the Federal Circuit ended the patentee's hopes of a successful outcome. In considering the claims terms, the court noted that while "[t]he plain and ordinary meaning of the phrase 'repetition motion pacing system for pacing a user' does not require the claimed system to pace the user by playing back the pace information using a tempo, . . . claim terms are construed in light of the specification and prosecution history, not in isolation." Slip op. at 5-6 (citingPhillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc.)).
In considering these intrinsic sources of the inventor's intent, and thus, the proper construction of claim terms, the court noted that "[t]he specification and prosecution history compel departure from the plain and ordinary meaning in only two instances: lexicography and disavowal." Slip op. at 6 (citing Thorner v. Sony Computer Entm't Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)).
Here, with respect to the construction of the term "playback device", the court held that the '843 patent's specification compelled departure from the plain meaning in this case, because the "Summary and Objects of the Invention" contained a clear and unmistakable disavowal or disclaimer. Slip op. at 7. Specifically, the '843 patent recited 19 "objects of the present invention." 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." However, the court went on to note that while it seems unlikely that the inventor intended for each claim to be limited to all of the many of the objects of the invention, the '843 patent went further, and included additional language that constituted unmistakable disclaimer when considered in the context of the patent as a whole.
In particular, the court pointed to a passage immediately following the enumeration of the objects of the invention, which 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." '843 Patent, col. 4, lines 53-64 (emphasis added).
The court held that "[w]ith 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) . . . . 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." Slip op. at 8. Although the inclusion of a list of "objects" did not, in itself, limit the scope of the claims, the phrasing of what accomplished those "objects," namely "a repetitive motion pacing system that includes...a data storage and playback device adapted to producing the sensible tempo," did limit the scope of the claims and ultimately doomed Pacing Technologies' claim of infringement against Garmin.
This decision highlights the unfortunate consequence of poor claim drafting technique meeting a once common practice now largely relegated to the dustbin of history. Current practice in patent application drafting tends to eschew the use of "objects of the invention" to say nothing of the use of the word "invention" at all. Certainly, one would be wise to refrain from using any such overarching and limiting statements in the specification regarding the "objects of the invention." The prudent attorney, following this Federal Circuit decision in Pacing, may also consider including a positive disclaimer statement in the specification that any claimed embodiment of the invention does not necessarily include all of the "objects" or "embodiments" of the disclosure. So too, it is the better claim drafting practice to keep the preamble short and not to rely on it for antecedent basis, particularly for elements only first appearing in dependent claims lest you unintentionally inject an element into the claim.