In PACING TECHNOLOGIES, LLC v. GARMIN INTERNATIONAL, INC., Appeal No. 2014-1396, the Federal Circuit held that a term in an independent claim’s preamble can limit the scope of the independent claim when the preamble term provides antecedent basis for that term in a dependent claim.

Pacing sued Garmin for patent infringement. The asserted independent claim’s preamble recites a “repetitive motion pacing system for pacing a user.”  The district court construed the preamble 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.” This construction limited the scope of the independent claim: the parties agreed this construction implicitly requires the system to play the pace information as a metronomic tempo, as described in the preferred embodiment. The district court granted summary judgment of noninfringement to Garmin, reasoning that the accused devices do not play the target tempo or pace information. Pacing appealed.

The Federal Circuit affirmed. The Federal Circuit held the preamble limits the scope of the claims because the term “repetitive motion pacing system” appeared in the body of a dependent claim. The Federal Circuit further determined this term requires the system to produce a tempo because of a clear and unmistakable statement of disavowal or disclaimer. Immediately following the enumeration of different objects of the invention, the specification states: “those [listed 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 Federal Circuit held there is no genuine dispute of material fact as to whether Garmin devices produce a sensible tempo.