by Dennis Crouch
In Pacing Tech v. Garmin, the Federal Circuit has affirmed a summary judgment of non-infringement — holding that Garmin’s fitness watches do not infringe U.S. Patent No. 8,101,843.
Although captioned as a decision on infringement, the defendants were able to shift the focus to claim construction. Here, the Federal Circuit found the claim-preamble limiting in such a way that avoids infringement.
One well-known secret of patent interpretation is that, a claim preamble will not be seen as limiting unless it “breathes life and meaning into the claim” In re Wertheim, 541 F.2d 257 (CCPA 1976). The rule here is essentially a particular application of the general thought that statements of the invention’s intended purpose are not limiting. Expanding upon Wertheim, however, the Federal Circuit has also ruled that the preamble can be limiting when elements in the preamble serve as an antecedent basis for limitations in the claim body. See Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332 (Fed. Cir. 2003).
The strategy used by some patent applicants is to include preamble terms that make the claim scope seem reasonable and well grounded, but with the hope that those limitations will not be given effect later in enforcement proceedings.
Here, the claim at issue is:
25. A repetitive motion pacing system for pacing a user comprising: . . .
a web site adapted to allowing the user to pre-select [activities]…
a data storage and playback device; and
a communication device adapted to transferring data [between the web site and data storage and playback device].
The ‘preamble’ of claim 25 is the portion coming before the word ‘comprising:’ i.e., ‘A repetitive motion pacing system for pacing a user.’ Although not used in the body of claim 25, the ‘repetitive motion pacing system’ phrase is found in the body of dependent claim 28 with the following clause: ‘wherein the repetitive motion pacing system can determine a geographic location of the data storage and playback device.’ Further, the preamble term ‘user’ was also relied upon in the body of claim 25.
Taking a whole-patent analysis approach, the Federal Circuit found the claim preamble limiting because the core terms served generally served an antecedent basis:
Because 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, we hold that the preamble to claim 25 is limiting.
After finding that the preamble requirement of a “repetitive motion pacing system” was limiting, the court then took the next step of giving meaning to the term through the construction process.
Object of Invention Disavows Scope: The patent application describes several ‘objects of the invention’ – all of which include ‘a repetitive motion pacing system for pacing a user that includes a data storage playback device adapted to produce a sensible tempo.’ The asserted claim 25 does not expressly state that the pacing system needs to ‘produce a sensible tempo’, but the Federal Circuit here found that the stated object of the invention represented ‘a clear and unmistakable disavowal’ of scope and requires that the term be interpreted to require the tempo. As the final step of the analysis, the court made the easy conclusion that – since Garmin’s accused devices do not produce a sensible tempo, they do not infringe.
Of interest, the patent does include several embodiment where there was no discussion of whether or not the tempo feature was included. In its decision, the Federal Circuit found those statements insufficient to overcome the object-of-the-invention statements. “Just because an embodiment does not expressly disclose a feature does not mean that embodiment excludes that feature.”
= = = = =
I. In my mind, the right decision is that the claim preamble should be limiting in this case — and in all cases. Claims need no extraneous elements but instead each claimed phrase should be included for a legally cognizable purpose and interpreted as such. Additional descriptions, statements of purpose, and the like are helpful, but belong in the specification unless they are intended to be limiting.
II. Here, the court took a statement-of-purpose from the specification and deemed it a clear disavowal of claim scope. That approach makes logical sense because it truly limits the claim to the subject matter that the inventor believed she had invented. However, my problem with the approach is that patent attorneys will walk away with the solution of avoiding any discussion of the purpose of the invention or else choose to provide discussion of purpose so full of caveats and exceptions so as to eliminate the potential for clarity in understanding the technological advance being disclosed.