Paragon v. Timex: Claims with Contextual Limitations

Paragon Solutions v. Timex (Fed. Cir. 2009) pic-37.jpg

Paragon’s patent covers a GPS/physiologic exercise monitoring system that displays realtime calculated values such as heartrate, altitude, velocity. The components of the invention are divided between a data acquisition unit and a display unit. After an unfavorable claim construction, Paragon stipulated to a non-infringement judgment. On appeal, the Federal Circuit vacated judgment – finding that the district court had improperly construed the terms.

Disavowal of Claim Scope : The district court concluded that the claimed “data acquisition unit” must be a single structure encompassing both GPS and physiologic sensors. That ruling was critical because the accused device (Timex Biolink) physically separates the GPS and physiologic monitors. Although the claim language did not limit the acquisition unit to a single physical device, the district court found that Paragon had disavowed that scope

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when it amended the claims to require that the acquisition unit be separate from the display unit.

On appeal, the Federal Circuit agreed that the patentee had clearly disavowed a single structure. However the court could not find a reason that the amendment would limit the acquisition unit to a single device.

We conclude that, read in light of the specification, the claim term “data

acquisition unit” is not limited to a single structure but may comprise multiple physically separate str

uctures, and that the applicants did not make a clear and unmistakable disavowal of multiple physically separate structures during prosecution.

Parallel Construction: In construing claims, courts presume that a term in one claim will hold its meaning throughout the claims. That presumption is overcome when “it is clear from the specification and prosecution history that the terms have different meanings at different portions of the claims.” Here, because the claimed “acquisition unit” can be multiple structures, the Federal Circuit found that the claimed “display unit” may also include multiple structures.

Real Time Data: The district court interpreted the claimed “real time” display of data as contextual. For some activities – such as mountain climbing – a thirty second delay may well be “real time.” However, for ot

her activities, a thirty second delay would not be considered real time.

On appeal, the Federal Circuit held that this context-dependent definition is not proper in an apparatus claim. “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard v. Bausch & Lomb, 909 F.2d 1464, 1468 (Fed. Cir. 1990).

Absent an express limitation to the contrary, any use of a device that meets all of the limitations of an apparatus claim written in structural terms infringes that apparatus claim. … Construing a non-functional term in an apparatus claim in a way that makes direct infringement turn on the use to which an accused apparatus is later put confuses rather than clarifies, frustrates the ability of both the patentee and potential infringers to ascertain the propriety of particular activities, and is inconsistent with the notice function central to the patent system.

Consequently, the Federal Circuit modified the construction of “displaying real-time data,” to be “displaying data without intentional delay, given the processing limitations of the system and the time required to accurately measure the data.”

Based on these modifications to the claim construction, the Federal Circuit vacated the finding of non-infringement and remanded for further proceedings. I wonder — if the specification had clearly indicated that the definition of “real-time” could shift depending on the type of use, would the claim then be held invalid as indefinite under 35 USC 112.

Notes:

  • This case could potentially have an impact on pharmaceutical composition claims that include limitations such as “a physiologically sufficient amount.” Of course, whether a drug is “physiological sufficient” will often depend upon the individual patient and that patient’s particular situation at that time.
  • There are two major difference between the Paragon situation and my hypothetical compound claim. First, the real-time display capability in Paragon was seen as a structural limitation while the “physiologically sufficient” amount could be seen as a functional limitation. This difference is important because the Federal Circuit expressly limited its holding to the construction of “non-functional term[s].” However, that distinction is slight because it is unclear what the court meant by “non-functional.” (I.e., “a non-functional term” could be a purely aesthetic limitation; it could be a means-plus-function term; it could be a term that defines the purpose of a particular structure; etc.) A second distinction is that Paragon’s claim is an apparatus claim not a compound claim. Neither of these distinctions appear compelling.

27 thoughts on “Paragon v. Timex: Claims with Contextual Limitations

  1. Noise, my point is the one it always is: any “harmonisation” which is a compromise (FtF + grace period, for example) will make things worse than they are now, on both sides of the Atlantic. Sometimes “splitting the difference” makes things worse for everybody. If you can’t sign up to our system, then try to ignore ours and just get on with optimising yours in your own way. I just happen to think you would be better off adopting ours. I keep saying it too, so I get reactions from which I can learn.

    In any case, it seems that patent “reform” is dead now, for at least another year, so for the foreseeable future there isn’t any alternative to optimising what you’ve got. Good.

    Not sure who “Typhoid Mary” was, but if you asert that I’m a carrier, and spreading the virus, you may be on to something.

    Bloom thinks that the new ferocity of use of the “restriction requirement” inside the USPTO owes nothing at all to the way the EPO works. Well, I don’t know who’s right, but I note what he says. Maybe if we should all of us ask Occam, he would say that both of our purported explanations is probably contributing to a cumulative effect on present PTO behaviour.

  2. “All goes to show how frustrating and dangerous for American patent lawyers is the virulent and alarming “harmonisation” virus that is currently on the rampage.”

    But MaxDrei, you are the Typhoid Mary of this “harmonisation” Oh-how-great-the-EPO-is virus. It smacks a bit pretentious for you to be proclaiming the danger of the rampage here.

  3. “From the discussion on restriction I suspect that the PTO is once again borrowing from the EPO (notorious for permitting ‘only one independent claim). … All goes to show how frustrating and dangerous for American patent lawyers is the virulent and alarming ‘harmonisation’ virus that is currently on the rampage.”

    Max, I think you’re giving the PTO way too much credit. I think there’s an old saying that goes something like “Never attribute to malice that which can be adequately explained by incompetence.” The restriction practice that is “whined” of above has nothing to do with harmonization policy, and little to do with the existing law, either.

  4. From the discussion on restriction I suspect that the PTO is once again borrowing from the EPO (notorious for permitting “only one independent claim”). In the EPO, an invention is defined by technical features. Every different combination of technical features (independent claim) is a different invention. Unless of course all those independent claims are using different words to say the same thing, in which case that very multiplication is obfuscation, deliberately to blur the meaning. Either way: the multiplicity of independent claims in the same category (method, apparatus, product) has to go. Then we know what the invention is. Then we can rapidly 101, 102 and 103 it.

    Of corse, ROW has some countervailing cultural features, that US law lacks, to soften the brutality of that concept of clarity. There’s the unassailable and peaceful co-existence of method and apparatus claims, being different aspects of the same inventive concept XYZ (the steps of X-ing, Y-ing and Z-ing, as opposed to means for X-ing, Y-ing and Z-ing). Then there’s Article 69 EPC and the Protocol, to deliver the required wiggle room in claim interpretation when there’s infringement (like in Chef America, for example).

    All goes to show how frustrating and dangerous for American patent lawyers is the virulent and alarming “harmonisation” virus that is currently on the rampage.

  5. I think Prof. Crouch’s question regarding indefiniteness is similar to what the Fed Circuit addressed in Orthokinetics v Safety Travel Chairs, which many of us may have encountered in the Merges / Duffy textbook. The claim recited an element “dimensioned as to be insertable through the space between the doorframe of an automobile and one of the seats thereof.” The lower court held the claim indefinite because a third party could not tell whether his or her chair infringes without testing it on all possible cars; i.e., the claim scope depended on the car in which the device was used. The Federal Circuit reversed, holding that the claim was as definite as the subject matter permits.

  6. Paul “They are paying all these costs for all these unecessary divisionals yet [typically] getting no real benefit from them”

    As 6 says, you don’t have to file the divisionals if the claims aren’t of any value.

    “The only ones getting financially cheated by those tens of thousands of unnecessary added attorney fees, filing fees, issuance fees and patent maintenance fees annually are the stockholders and senior managers of the subject companies”

    O! How I would hate to be one of them!

  7. @6 “An experienced eye should be able to tell you what apps will be restricted.”

    These days, it is any application with more than one independent claim.

  8. After years of AIPLA and other efforts to reduce excessive inappropriate multiple restriction requirements, the futility of objecting, and the difficulty of even getting a petition against the restrictions decided in time, I have come to the conclusion that the reason this problem does not get seriously addressed is an unholy alliance of mutual self-interest. All these unnecessary inappropriate restrictions proliferate tens of thousands of additional patent applications with the same specifications, which both reduces work and financially benefits both the restricting examiners and the attorneys. It also benefits the PTO with lots more fees. It also rewards corporate patent counsuls who are rewarded by raw bean count total numbers of issued patents and/or “newly” filed applcations by clueless upper management.
    The only ones getting financially cheated by those tens of thousands of unnecessary added attorney fees, filing fees, issuance fees and patent maintenance fees annually are the stockholders and senior managers of the subject companies. They are paying all these costs for all these unecessary divisionals yet [typically] getting no real benefit from them,* yet are rarely even ethically so advised!
    [Small inventors who simply cannot afford all their forced divisionals have to give up claim coverage, but that does not seem to be of much general concern either.]

    *[The prior benefit of divisionals to effectively extend patent terms died with the 6/9/95 statutory change of patent terms.]

  9. 1. I don’t know if you heard or not, but there’s this certain provision in the patent laws…

    Nobody makes you file div’s. You can stop anytime you like.

    2. Not until the statute changes. btw, they’re just interpreting the statute “the way it was intended”, just like you guys like us to not bring 102 concerns up into 101 even though “new” is in 101. If you would really like us to, we could take the statute at its word and simply assert that any two inventions were independent and distinct, not even giving you the benefit of some contrived nuances. I’ve yet to see many claims that were genuinely dependent on any other claim for its existence. I’ve yet to see two claims that weren’t distinct, save a few that get objected to for undue multiplicity. You’re getting the benefit here, trust me. If everyone and their grandma files a petition then you might see some concern on the part of the PTO.

    “examination efficiency rather than to increase the number of separate applications that applicants must file to have all embodiments of the claims examined”

    You don’t need to increase efficiency by 10% if you can cut the work you need to do in half. And that is what goes on quite often. Which would you rather do? Increase your efficiency by 10% or cut the work to be done in half? Note that sometimes the work is cut into even less than half, so I’m giving you the the benefit in this analysis.

    The bottom line is, you seem to just be whiners like MM said. You’re whining because you would like to get more than your money’s worth by either sticking very dissimilar inventions together in one app, or wording your invention(s) in such a way that it becomes dissimilar inventions. Or, you’re whining because you’re stupd and are genuinely surprised when a valid restriction issues on your claims. Sorry that’s life.

    I really don’t know what you guys are going on about anyway. In my art it has been standard practice to divide nearly every single app up (90% of apps at least), usually right down the middle. We’ve been a heavy restricting workgroup since way before I got here. The good attorneys either a. plan for it and draft their claims so as to prevent it or b. expect it. It isn’t like it is ever some kind of big surprise that you got a restriction. An experienced eye should be able to tell you what apps will be restricted. Any they are wrong on will simply be the ones where the examiner was generous and didn’t restrict or was too stupd to know how to restrict. Bonus for you.

    Don’t act like you don’t know specifically what you’re getting in to when you’re drafting initial claims.

  10. “In any event, I’ll ask them if they have any indication whether or not restriction no’s have gone up over the last few years and if they have any immediate explanation and tell you about it.”

    Thank you, 6. Yes, many examiners will only examine one independent claim these days.

    (You can go back to sleep now, Malcolm.)

  11. “I would like the Directors to publicly discuss why restriction/election requirements are apparently being issued in approximately twice as many applications as four years ago?”

    *Yawn*

    Thanks for derailing the thread, whiners.

  12. Re restriction practice, I have similar questions:
    1) Why are (some) examiners restricting examination to a single embodiment? (I suspect what others have mentioned–increasing counts–and also do not blame examiners for responding to the incentives in place, but those incentives should be changed to increase examination efficiency rather than to increase the number of separate applications that applicants must file to have all embodiments of the claims examined).

    2) Will the PTO ever apply PCT unity of invention standards to PCT claims, or will it continue to apply US-style restriction practice while continuing to assert that that is proper practice? My understanding is that it is not, and it sometimes appears that the PTO stonewalls discussions on this issue. (As illustrated, for example, by saying that it isn’t necessarily appropriate to discuss individual applications in public (I’m sure most agree, but that basically is where the discussion ends) and saying it must not be a problem because they “haven’t gotten many calls.” Of course they haven’t–who is going to annoy the examiner by trying to go over their head when these petitions are rarely granted anyway? Nice problem solving, PTO–the “problem” is shoved under the table, and then the PTO is allegedly puzzled as to why practitioners keep mentioning it.

    Also, it would be great to hear that the PTO is reconsidering the count system, but I guess that’s been suggested for at least–what? 10 years?–and probably will never happen.

  13. “I would like the Directors to publicly discuss why restriction/election requirements are apparently being issued in approximately twice as many applications as four years ago? Are applicants claiming their inventions differently (or is this just a way for the Patent Office to reduce their workload since their attempt to limit continuations failed)?”

    Here’s the thing though, I don’t think they give two crps about the number of restrictions going out so long as they aren’t getting a whole sht ton of calls. So I doubt they could speak on that because they don’t know anything about it. What I can tell you however is that with the introduction of the academy restrictions probably became more widespread amongst the newbies because they had specific training in them and were told to use them. (even if half of the newbies still don’t understand half of restriction practice, it is probably many more than would have used to). Likewise there was restriction training for the corps as a whole probably a year and a half ago. When examiners know how and why to use them they’re used more often.

    The reason I say this is because I still know many examiners who do not send out many restrictions because they don’t know how. If the training never took place, that number would be higher.

    Also, I can’t say anything definite on it, but it does seem the steady increase is no’s of claims over the years would indicate that there is likely also an increase in applications claiming restrictable subject matter.

    In any event, I’ll ask them if they have any indication whether or not restriction no’s have gone up over the last few years and if they have any immediate explanation and tell you about it. I’m not going to just tell them to discuss it publicly since it isn’t necessarily anyone’s business what goes on in individual applications. There is no program, like 2nd pair of eyes, to discuss, they’d merely be discussing what goes on in a select group of apps. That doesn’t really strike me as something all that important to do, but I might mention to them also that I’d had some concern expressed to me about the restriction numbers and attorneys might appreciate hearing something about it.

    Alright 2600.

  14. town hall meeting: Or is it a symptom of the incentives the USPTO gives its examiners?

    If you evaluated based on your counts, wouldn’t this help better your evaluation (and thus pay and advancement)?

    (Note: I do not blame examiners for rationally responding to management policy).

  15. 6 — I would like the Directors to publicly discuss why restriction/election requirements are apparently being issued in approximately twice as many applications as four years ago? Are applicants claiming their inventions differently (or is this just a way for the Patent Office to reduce their workload since their attempt to limit continuations failed)?

  16. “What do you want me to ask about it 2600?”

    I want to know if it is going to happen any time soon.

    I’m four months away from GS-13 so it could effect me sooner than later.

  17. I wonder if they disclosed an embodiment in which the acquisition unit was two devices… if not, why doesn’t ATI v. BMW invalidate the claim for enablement, or GENTRY invalidate the claim for written description? Note: I think both of those lines of cases are wrong-headed, but they are on the books so why are they used so selectively?

  18. “what is *up* with abusing reqts for election of species to knock-out embodiments / claim limitations that examiners don’t want to search on? is this now a part of ex. boot camp?

    i ask because, in the past two months, i have seen several instances where an examiner’s identified species and subspecies did not encompass all of the species clearly and separately disclosed in the spec and claims. in one really egregious instance, the examiner’s listing of electable species completely excluded the preferred embodiment to which two independent claims were directed.”

    From what you said that seems to be more of an issue with the examiner not properly designating species as opposed to him abusing the restriction req. That would be a sign that he probably missed some limitations or embodiments or how they all match up together rather than them intentionally trying to knock out embodiments or species.

    What do you want me to ask about it 2600?

  19. “what is *up* with abusing reqts for election of species to knock-out embodiments / claim limitations that examiners don’t want to search on? is this now a part of ex. boot camp?

    i ask because, in the past two months, i have seen several instances where an examiner’s identified species and subspecies did not encompass all of the species clearly and separately disclosed in the spec and claims. in one really egregious instance, the examiner’s listing of electable species completely excluded the preferred embodiment to which two independent claims were directed.”

    From what you said that seems to be more of an issue with the examiner not properly designating species as opposed to him abusing the restriction req. That would be a sign that he probably missed some limitations or embodiments or how they all match up together rather than them intentionally trying to knock out embodiments or species.

    What do you want me to ask about it 2600?

  20. “I’m going to a town hall meeting with the directors. If you have any concerns you would like to be brought before them I will relay them. Meeting is in a week. You have 4 days to send long responses to examiner6k@yahoo.com

    I went to a town hall meeting with Doll in January and he and Budens both said were some discussions about an accelerated sig program. You should ask about that.

  21. Frequent Runner,
    I recommend that you try a Garmin. I have a 305 and it only loses the satellite signal in very thick woods.

  22. Dennis: “There are two major difference between the Paragon situation and my hypothetical compound claim…. First, the real-time display capability in Paragon was seen as a structural limitation while the “physiologically sufficient” amount could be seen as a functional limitation… Neither of these distinctions appear compelling.”

    I think the reason this first distinction does not appear compelling is that you are comparing apples and oranges to a certain extent.

    Let’s take your hypothetical claim to “A composition comprising a phsysiologically amount of drug X.” [I'll ignore the fact that such a claim would never be relied on by a serious pharma patentee without more concrete dependent claims] You write that “the ‘physiologically sufficient’ amount could be seen as a functional limitation.” But such a construction is exactly what the case teaches against: “construing a non-functional term in an apparatus claim in a way that makes direct infringement turn on the use to which an accused apparatus is later put confuses rather than clarifies.” In other words, the proper construction for such a claim would be one that captures ALL physiologically relevant amounts of the drug, i.e., the lowest concentration of drug capable of achieving the desired effect in a relevant subject.

    The compelling distinction between your hypothetical composition claim and the technology here is that the technology here is concerned with *time*, which is always a dangerous limitation to deal with in composition claims. Consider, for example, a claim to a composition “comprising a stabilizing agent in an amount sufficient to stabilize the composition.” Absent a clear definition of “stabilize” or “stabilizing agent”, this claim covers just about anything because the conditions under which an agent could be considered to be stabilizing are nearly infinite.

    “I wonder — if the specification had clearly indicated that the definition of “real-time” could shift depending on the type of use, would the claim then be held invalid as indefinite under 35 USC 112.”

    Possibly. As a practical matter, I think it would depend on whether the limitation “mattered,” i.e., was the limitation relied on consistently during prosecution, is the only difference between the prior art cited during litigation and the claim alleged to be the “real time”, etc.

    I think the real value of this case is to remind those who draft apparatus claims to focus on the structure and not on the function of the structure. If Paragon’s claims had been drafted properly, Paragon might not have to be wasting so much of its money in court. On other hand, if its apparatus claim had been drafted properly, its invalidity as anticipated or obvious might become painfully clear.

  23. Aside from the legal issues, I own the TIMEX device shown in the picture and it is a horrible product. You can only run in clear spaces such as tracks to keep connection to GPS satellites. I’ve lost connections merely by running under a single tree branch. Needless to say, I was very disappointed in it. However, the watch itself is a decent product.

  24. 6,

    briefly,

    what is *up* with abusing reqts for election of species to knock-out embodiments / claim limitations that examiners don’t want to search on? is this now a part of ex. boot camp?

    i ask because, in the past two months, i have seen several instances where an examiner’s identified species and subspecies did not encompass all of the species clearly and separately disclosed in the spec and claims. in one really egregious instance, the examiner’s listing of electable species completely excluded the preferred embodiment to which two independent claims were directed.

    has anyone else recently seen this happen?

  25. Real time = system (or subsystem) will respond within specified amount of time (e.g., 10 milliseconds +/- 1 msec or whatever). The time is in the design documents for the product.

    It is a hard deadline — if you are too slow or too fast = system failure by definition.

    Real time does NOT mean “fast enough” or “barely perceptible delay.”

    PHOSITA knows this, and unless there’s patentee played lexicographer, Timex loses.

  26. I’m going to a town hall meeting with the directors. If you have any concerns you would like to be brought before them I will relay them. Meeting is in a week. You have 4 days to send long responses to examiner6k@yahoo.com

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