Pacing Technologies, LLC v. Gramin International, Inc. et al.

Docket No. 2014-1396

February 18, 2015

Brief Summary: Preamble determined to be a claim limitation; “clear and unmistakable statement of disavowel or disclaimer” found in the “Summary and Objects of the Invention”.

Summary: Pacing appealed DC grant of SJ to Garmin that it does not infringe US 8,101,843 directed to “methods and systems for pacing users during activities that invlve repeated motions, such as running, cycling, and swimming.” The claims require a “playback device” which the DC construed to mean “a device capable of playing audio, video, or a visible signal.” The DC also held the preamble to be a limitation meaning “a system for providing a sensible output for setting the pace or rate of movement of a user in performing a repetitive motion activity”, explaining that “[t]o be a playback device as envisioned in the patent, the device must play back the pace information.” SJ was granted to Garmin because its devices were found not to “ play’ the target tempo or pace information…as audio, video, or visible signals.” The dispute turned on whether the preamble was actually limiting and the FC panel held that it was “[b]ecause the preamble terms ‘user’ and ‘repetitive motion pacing system’ provide antecedent basis for and are necessary to understand positive limitations in the body of claims in the ‘843 patent” (Bicon, FC 2006; Eaton Corp., FC 2003). The opinion explained that although “[t]he plain and ordinary meaning of the phrase ‘reptitive 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” (Phillips, FC 2005). The plain meaning of claim terms “compel departure from the plain meaning in two instances: lexicography and disavowel” (Thorner, FC 2012; GE Lighting Solutions, FC 2014; ScieMed, FC 2001). Here, the panel concluded “the specification…contains a clear and unmistakable statement of disavowel or disclaimer” in the “Summary and Objects of the Invention” which lists 19 “objects of the invention” and then states “[t]hose [listed 19 objects]…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” (“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 others) with a repetitive motion pacing system that includes a data storage and playback device adapted to produce a sensible tempo…this clearly and unmistakably limits ‘the present invention’.”) Pacing argued this was improper because one of its embodiments would be excluded from the claims (Vitronics, FC 1996) but the FC disagreed (additional features are not excluded and even if those were excluded, “this is not a reason to ignore the specification’s clear and unmistakable disavowel”). The DC grant of SJ was therefore affirmed.

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