The U.S. Court of Appeals for the Federal Court has had a busy February and March, rendering more than 50 decisions in only the first half of this month. One decision, in particular, stands out for the patent application draftsperson: Pacing Technologies v. Garmin Intern., No. 2014-1396, 2015 WL 668828 (Fed. Cir. Feb. 18, 2015) . In Pacing, the Federal Circuit affirmed the district court’s grant of summary judgment that Garmin’s accused products do not infringe the asserted claims of Pacing’s U.S. Patent No. 8,101,843. Pacing’s patent is directed to a system for pacing a user and, more specifically, the patent describes a system for pacing users during activities that involve repeated motions, such as running, cycling and swimming. Preferably, the system provides the user with a tempo (for instance, the beat of a song, or flashes of light) corresponding to the user’s desired pace. Garmin’s accused products, the Garmin GPS fitness watches and microcomputers, used by runners and bikers, allow users to assign a duration and target pace value to certain workouts consisting of a series of intervals. The devices display the intervals of a particular workout during operation, for example, by counting down the time for which the user intends to maintain a particular pace. Patent Language To establish patent infringement, a patentee must establish by a preponderance of the evidence that an accused device infringes at least one valid claim of the asserted patent. In Pacing, claim 25 of the patent was representative and reads: 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. In short, the patentee had to prove that the Garmin GPS devices were at least (1) a repetitive motion pacing system; (2) including a web site to allow a user to select an activity and corresponding target tempo or target pace values; (3) a data storage and playback device; and (4) a communications device for transferring target-related data between the web site and data storage and playback device. The key, however, to any infringement determination is whether the claim terms, as properly construed, cover the accused system. What do the claim terms mean? The district court found noninfringement after ruling that the term “playback device” required that “the device must play back the pace information” and that the preamble limited the claim to “a system for providing a sensible output for setting the pace or rate of movement of a user in performing a repetitive motion activity.” Because, according to the district court, Garmin’s devices do not play the target tempo SERVING THE BENCH AND BAR SINCE 1888 Volume 253—NO. 56 wednesday, march 25, 2015 Garmin Decision Offers Insights On Patent Application Drafting Patent and Trademark Law Expert Analysis Robert C. Scheinfeld is the partner-in-charge of the New York office of Baker Botts and the head of its intellectual property group in New York. www. NYLJ.com By Robert C. Scheinfeld or pace information as audio, video or visible signals, the court granted summary judgment. Meaning of Terms On appeal, the Federal Circuit affirmed, but focused its attention on the meaning of the preamble language “repetitive motion pacing system” and whether a claim’s preamble should act as a component of, and effectively limit the scope of, the claimed invention. The court answered that question with a resounding yes. The test for deciding whether a preamble should be limiting is whether limitations in the body of the claim “rely upon and drive antecedent basis from the preamble” as opposed to a preamble that “merely stat[es] the purpose or intended use of an invention.” And, with regard to the claims at issue in Pacing, the preamble in claim 25 served as antecedent basis for the terms “user” and “repetitive motion pacing system.” Thus, each term was required to be met by the accused system. But what do these terms mean? The term “repetitive motion pacing system for pacing a user” does not, on its own, require the system to “pace the user by playing back the pace information using a tempo.” But in view of the patent’s specification and file history, this was, the court ruled, required. Indeed, claims are not construed in a vacuum, but are construed in light of the specification and file history; and terms are not given their ordinary meaning when the patentee either (1) acts as his or her own lexicographer or (2) clearly disavows claim scope.1 Importantly, while claims are typically not limited to the “preferred” embodiments set forth in a patent’s specification, if the inventor says in the specification something more, like for instance that the “present invention is [something]” or “a very important feature of the invention is [something],” then that something is typically required by the claims. Where that line is drawn is sometimes difficult to decipher and may depend on who is on the panel deciding a particular case. The safe bet, as a patentee, is to make clear that the embodiments you set forth in the specification are clearly presented merely as examples of the invention and not described solely as the invention itself. What doomed Pacing was not so much its claims but what it said in the patent’s specification, particularly that all the “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.” According to the Federal Circuit: 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. (Emphasis in original.) In response, Pacing had argued in part that one of its preferred embodiments would be excluded by the court’s construction and, therefore, it would be improper to exclude from coverage embodiments described in the patent’s specification. But, although “constructions that exclude the preferred embodiment are disfavored2 …where the patent describes multiple embodiments, every claim does not need to cover every embodiment.”3 As a result, the Federal Circuit affirmed, finding that the system of claim 25 “must be capable of producing a sensible tempo for pacing the user” and that Garmin’s accused devices, by merely displaying the rate of a user’s pace, does not produce a sensible tempo—and, consequently, does not infringe. In the end, a patent’s claims and a resulting infringement finding will need clear support from a patent’s specification. ••••••••••••••••••••••••••••• 1. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc); Thorner v. Sony Computer Entm’t Am., 669 F.3d 1362, 1365 (Fed. Cir. 2012). 2. Vitronics Corp. v. Conceptronic, 90 F.3d 1576, 1583 (Fed. Cir. 1996). 3. See Aug. Tech. Corp. v. Camtek, 655 F.3d 1278, 1285 (Fed. Cir. 2011). wednesday, march 25, 2015 Reprinted with permission from the March 25, 2015 edition of the NEW YORK LAW JOURNAL © 2015 ALM Media Properties, LLC. All rights reserved. Further duplication without permission is prohibited. For information, contact 877-257-3382 or [email protected] # 070-03-15-40 Claims are not construed in a vacuum, but are construed in light of the specification and file history.