Wednesday, February 18, 2015

CAFC affirms SD Cal in Pacing Technologies

The outcome:

Pacing Technologies, LLC (Pacing) appeals from the
district court’s grant of summary judgment that Garmin
International, Inc.’s and Garmin USA, Inc.’s (collectively,
Garmin) accused products do not infringe the asserted
claims of Pacing’s U.S. Patent No. 8,101,843. We affirm.

**Interpretation of preamble language was at issue here:

We hold that the preamble to claim 25, which reads
“[a] repetitive motion pacing system for pacing a user
. . . ,” is limiting. “Preamble language that merely
states the purpose or intended use of an invention is
generally not treated as limiting the scope of the claim.”
Bicon, Inc. v. Straumann Co., 441 F.3d 945, 952 (Fed. Cir.
2006). However, “[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).
That is the case here. The term “user” in the preamble
of claim 25 provides antecedent basis for the term
“user” in the body of that claim. The body of claim 25
recites “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.” Id. col. 19 ll. 29–32 (emphasis added).

Of patentee as lexicographer:

The specification and prosecution history compel departure
from the plain meaning in only two instances: lexicography
and disavowal. Thorner v. Sony Computer Entm’t
Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). The
standards for finding lexicography and disavowal are
“exacting.” GE Lighting Solutions, LLC v. AgiLight, Inc.,
750 F.3d 1304, 1309 (Fed. Cir. 2014). To act as a lexicographer,
a patentee must “clearly set forth a definition of
the disputed claim term” and “clearly express an intent to
define the term.” Thorner, 669 F.3d at 1365. Similarly,
disavowal requires that “the specification [or prosecution
history] make[] clear that the invention does not include a
particular feature.” SciMed Life Sys. Inc. v. Advanced
Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir.

We have found disavowal or disclaimer based on clear
and unmistakable statements by the patentee that limit
the claims, such as “the present invention includes . . .” or
“the present invention is . . . ” or “all embodiments of the
present invention are . . . .” See, e.g., Regents of Univ. of
Minn. v. AGA Med. Corp., 717 F.3d 929, 936 (Fed. Cir.
2013); Honeywell Int’l, Inc. v. ITT Indus., Inc., 452 F.3d
1312, 1316–19 (Fed. Cir. 2006); SciMed Life Sys., Inc., 242
F.3d at 1343–44. We have found disclaimer when the
specification indicated that, for “successful manufacture,”
a particular step was “require[d].” Andersen Corp. v.
Fiber Composites, LLC, 474 F.3d 1361, 1367 (Fed. Cir.
2007). We have found disclaimer when the specification
indicated that the invention operated by “pushing (as
opposed to pulling) forces,” and then characterized the
“pushing forces” as “an important feature of the present
invention.” SafeTCare Mfg., Inc. v. Tele-Made, Inc., 497
F.3d 1262, 1269–70 (Fed. Cir. 2007). We also have found
disclaimer when the patent repeatedly disparaged an
embodiment as “antiquated,” having “inherent inadequacies,”
and then detailed the “deficiencies [that] make it
difficult” to use. Chi. Bd. Options Exch., Inc. v. Int’l Sec.
Exch., LLC, 677 F.3d 1361, 1372 (Fed. Cir. 2012). Likewise,
we have used disclaimer to limit a claim element to
a feature of the preferred embodiment when the specification
described that feature as a “very important feature
. . . in an aspect of the present invention,” and disparaged
alternatives to that feature. Inpro II Licensing, S.A.R.L.
v. T-Mobile USA Inc., 450 F.3d 1350, 1354–55 (Fed. Cir.
2008). When a patentee “describes the features of the
‘present invention’ as a whole,” he alerts the reader that
“this description limits the scope of the invention.” AGA
Med. Corp., 717 F.3d at 936.

Here, the specification similarly contains a clear and
unmistakable statement of disavowal or disclaimer. In a
section entitled “Summary and Objects of the Invention,”
the ’843 patent states that “it is a principal object of the
present invention to provide a computer-implemented,
network-based system having a networked server, database,
client computer, and input/output device for use by
individuals engaged in repetitive motion activities . . . .”
’843 patent col. 3 ll. 9–13.

**Of embodiments:

It is true that constructions
that exclude the preferred embodiment are
disfavored. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d
1576, 1583 (Fed. Cir. 1996). However, in a case such as
this, where the patent describes multiple embodiments,
every claim does not need to cover every embodiment. See
Aug. Tech. Corp. v. Camtek, Ltd., 655 F.3d 1278, 1285
(Fed. Cir. 2011). This is particularly true where the plain
language of a limitation of the claim does not appear to
cover that embodiment. The preamble of claim 25 differs
from the preambles of the other seven independent
claims. Claim 25 requires a “repetitive motion pacing
system for pacing a user.”


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