Federal Circuit No. 2014-1396

In Pacing Technologies, LLC v. Garmin International, Inc., the Federal Circuit affirmed the district court's grant of summary judgment of noninfringement, reasoning that the preamble of the asserted claim limited the claim scope and the asserted patent’s specification included a disavowal requiring departure from the plain meaning of the phrase “repetitive motion pacing system.”.

The accused Garmin products are GPS fitness watches that allow users to design workouts using the Garmin Connect website. The accused products display a user’s actual pace during an activity, but do not play music or output a tempo corresponding to the user’s desired or actual pace.

The claim at issue is directed to “a repetitive motion pacing system for pacing a user” comprising “a playback device” that the district court construed as “a device capable of playing audio, video, or a visible signal.” Both parties characterized the court’s construction of the term “playback device” as implicitly requiring the devices to play the pace information as a metronomic .tempo.

The Federal Circuit first held that the preamble of the claim is limiting because “[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.” Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003). The panel stated that the preamble was limiting here because the term “user in the preamble provides antecedent basis for the term “user” in the body and was also necessary to understand the positive limitations in the body of the claim.

In construing the meaning of the phrase “a repetitive motion pacing system for pacing a user” as recited in the preamble, the Federal Circuit acknowledged that the plain and ordinary meaning did not require the system to pace the user by playing back pace information using a temp. However, the Federal Circuit went on to find that the specification included a clear and unmistakable disavowal that required departure from the plain and ordinary meaning.

The panel noted that the specification described nineteen “objects of the present invention,” but these statement alone were not found to constitute a disclaimer or disavowal. However, the panel pointed out that the patentee went further by adding the following paragraph subsequent to the enumerated 19 objects:

“[t]hose [listed 19 objects] and other objects and features of the 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.” (emphasis added)

The Federal Circuit stated that these words acted as a disclaimer by clearly and unmistakably limiting “the present invention” to a repetitive motion pacing system comprising a playback device adapted to producing a sensible tempo. According to the Federal Circuit, this language was not merely describing another object of the invention, but was instead a statement that the invention accomplishes all of its objects and features with a repetitive motion pacing system in which the playback device produces a sensible tempo. Thus, the Federal Circuit held that Garmin’s accused devices were not within the scope of the claim at issue because the accused devices did not produce a sensible tempo.