Pacing Technologies, LLC v. Garmin International, Inc. ( 2015 )

United States Court of Appeals
for the Federal Circuit
______________________
PACING TECHNOLOGIES, LLC,
Plaintiff-Appellant
v.
GARMIN INTERNATIONAL, INC.,
GARMIN USA, INC.,
Defendants-Appellees
______________________
2014-1396
______________________
Appeal from the United States District Court for the
Southern District of California in No. 3:12-cv-01067-BEN-
JLB, Judge Roger T. Benitez.
______________________
Decided: February 18, 2015
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VICTOR MORRIS WIGMAN, Blank Rome LLP, Washing-
ton, DC, argued for plaintiff-appellant. Also represented
by PAUL MARK HONIGBERG, BRIAN WM. HIGGINS, CHARLES
R. WOLFE, JR., NICHOLAS M. NYEMAH.
NICHOLAS P. GROOMBRIDGE, Paul, Weiss, Rifkind,
Wharton & Garrison LLP, New York, NY, argued for
defendant-appellees. Also represented by JENNIFER H.
WU, JENNY CHIA CHENG WU.
______________________
2 PACING TECHNOLOGIES, LLC v. GARMIN INTERNATIONAL, INC.
Before LOURIE, MOORE, and REYNA, Circuit Judges.
MOORE, Circuit Judge.
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.
BACKGROUND
The ’843 patent is directed to methods and systems
for pacing users during activities that involve repeated
motions, such as running, cycling, and swimming. ’843
patent col. 1 ll. 16–22. The preferred embodiment of the
’843 patent describes a method for aiding a user’s pacing
by providing the user with a tempo (for example, the beat
of a song or flashes of light) corresponding to the user’s
desired pace. Id. col. 9 ll. 4–9, col. 11 ll. 7–13.
Pacing alleges that Garmin GPS fitness watches and
microcomputers used by runners and bikers infringe the
’843 patent. The Garmin Connect website allows users to
design and transfer workouts to the Garmin devices.
Workouts consist of a series of intervals to which the user
can assign a duration and target pace value. The devices
display the intervals of a particular workout during
operation, for example, by counting down the time for
which the user intends to maintain a particular pace. The
devices may also display the user’s actual pace, e.g., 50 to
70 spm, or steps per minute. The devices do not play
music or output a beat corresponding to the user’s desired
or actual pace.
Claim 25 of the ’843 patent, the only asserted inde-
pendent claim, reads as follows (emphases added):
A repetitive motion pacing system for pacing a user
comprising:
PACING TECHNOLOGIES, LLC v. GARMIN INTERNATIONAL, INC. 3
a web site adapted to allowing the user to pre-
select 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 corre-
sponding to the activity;
a data storage and playback device; and
a communications device adapted to transferring
data related to the pre-selected activity or the tar-
get tempo or the target pace values between the
web site and the data storage and playback device.
The district court construed the term “playback de-
vice” as “a device capable of playing audio, video, or a
visible signal.” Pacing Techs., LLC v. Garmin Int’l, Inc.,
977 F. Supp. 2d 1013, 1021 (S.D. Cal. 2013). The district
court also held that the preamble to claim 25 is a limita-
tion and construed it to mean “a system for providing a
sensible output for setting the pace or rate of movement of
a user in performing a repetitive motion activity.” Id. at
1021–24. This construction did not address whether the
repetitive motion pacing system was required to play back
the pace information using a tempo.
Garmin moved for summary judgment of nonin-
fringement, contending that the accused devices are not
“playback devices” under the district court’s construction.
Pacing argued that the accused devices are “playback
devices” because they “play” workout information to the
user, which can include the user’s target and actual pace.
To resolve this dispute, the district court supplemented
its construction of “playback device” in the summary
judgment order, holding that “[t]o be a playback device as
envisioned in the patent, the device must play back the
pace information.” Pacing Techs., LLC v. Garmin Int’l,
Inc., C.A. No. 12-CV-01067-BEN-JLB, at *9 (S.D. Cal.
Mar. 3, 2014), ECF No. 178. The court relied on the use
of the term in the context of the specification and on its
4 PACING TECHNOLOGIES, LLC v. GARMIN INTERNATIONAL, INC.
earlier decision that the preamble to claim 25 is limiting.
Id. at 8–9. The court granted summary judgment of
noninfringement to Garmin, reasoning that while “[t]he
[accused] devices repeat back or display the pace input or
selections,” they “do not ‘play’ the target tempo or pace
information . . . as audio, video, or visible signals.” Id. at
9–10. Both parties characterize the court’s construction of
the term “playback device” as implicitly requiring the
devices to play the pace information as a metronomic
tempo, as described in the preferred embodiment of the
’843 patent. Pacing appeals. We have jurisdiction under
28 U.S.C. § 1295(a)(1).
DISCUSSION
“[W]hen the district court reviews only evidence in-
trinsic to the patent (the patent claims and specification[],
along with the patent’s prosecution history), the judge’s
determination will amount solely to a determination of
law, and the Court of Appeals will review that construc-
tion de novo.” Teva Pharm. USA Inc. v. Sandoz, Inc., 135
S. Ct. 831, 841 (2015) (italics omitted). Because the only
evidence at issue on appeal and presented to the district
court in this claim construction was intrinsic, our review
of the constructions is de novo. We review a grant of
summary judgment from a court in the Ninth Circuit de
novo. Genentech, Inc. v. Amgen, Inc., 289 F.3d 761, 767
(Fed. Cir. 2002).
I. Claim Construction
On appeal, the parties dispute whether the asserted
claims require the claimed devices to play back the pace
information using a tempo, such as the beat of a song or
flashes of light. This dispute turns on whether the pre-
amble to claim 25 is limiting and on the construction of a
“repetitive motion pacing system” as recited in the pre-
amble.
PACING TECHNOLOGIES, LLC v. GARMIN INTERNATIONAL, INC. 5
We hold that the preamble to claim 25, which reads
“[a] repetitive motion pacing system for pacing a us-
er . . . ,” 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 pream-
ble 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 pre-
select 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). The term
“repetitive motion pacing system” in the preamble of
claim 25 similarly provides antecedent basis for the term
“repetitive motion pacing system” recited as a positive
limitation in the body of claim 28, which depends from
claim 25. Claim 28 of the ’843 patent reads: “[t]he repeti-
tive motion pacing system of claim 25, wherein the repeti-
tive motion pacing system can determine a geographic
location of the data storage and playback device.” ’843
patent col. 19 ll. 46–48. 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.
The plain and ordinary meaning of the phrase “repeti-
tive 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. However, claim
6 PACING TECHNOLOGIES, LLC v. GARMIN INTERNATIONAL, INC.
terms are construed in light of the specification and
prosecution history, not in isolation. See Phillips v. AWH
Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). The
specification and prosecution history compel departure
from the plain meaning in only two instances: lexicogra-
phy 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 lexicog-
rapher, 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.
2001).
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
PACING TECHNOLOGIES, LLC v. GARMIN INTERNATIONAL, INC. 7
disclaimer when the patent repeatedly disparaged an
embodiment as “antiquated,” having “inherent inadequa-
cies,” 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). Like-
wise, we have used disclaimer to limit a claim element to
a feature of the preferred embodiment when the specifica-
tion 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, data-
base, client computer, and input/output device for use by
individuals engaged in repetitive motion activities . . . .”
’843 patent col. 3 ll. 9–13. It then lists 18 additional
features, each time preceding the feature with the phrase
“[i]t is another object of the present invention” or “[i]t is
still another object of the present invention.” Id. col. 3 ll.
9 – col. 4 ll. 52. This is a common practice in patent
drafting. Many times, the patent drafter will cast certain
features as “an object of the present invention,” and often
those “objects of the present invention” correspond to
features recited in the claims. That is the case here, as
many of the different “objects of the present invention”
disclosed in the ’843 patent are recited as features in one
or more independent or dependent claims. The character-
ization of a feature as “an object” or “another object,” or
8 PACING TECHNOLOGIES, LLC v. GARMIN INTERNATIONAL, INC.
even as a “principal object,” will not always rise to the
level of disclaimer. In this case, where the patent in-
cludes a long list of different “objects of the present inven-
tion” that correspond to features positively recited in one
or more claims, it seems unlikely that the inventor in-
tended for each claim to be limited to all of the many
objects of the invention. However, the ’843 patent goes
further, and includes additional language that constitutes
unmistakable disclaimer when considered in the context
of the patent as a whole. Immediately following the
enumeration of the different objects of the present inven-
tion, the ’843 patent states that “[t]hose [listed 19 objects]
and other objects and features of the present 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.” Id. col. 4 ll. 53–67. 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 enumer-
ated 19 and all others) with a repetitive motion pacing
system that includes a data storage and playback device
adapted to produce a sensible tempo. In the context of
this patent, this clearly and unmistakably limits “the
present invention” to a repetitive motion pacing system
having a data storage and playback device that is adapted
to producing a sensible tempo.
Pacing argues that a “repetitive motion pacing system
for pacing a user” cannot be limited to devices that pro-
duce a sensible tempo because the ’843 patent discloses an
embodiment of a repetitive motion pacing system where
the playback device does not need to produce a sensible
tempo. Pacing points to the specification’s description of a
repetitive motion pacing system having a playback device
that plays video landscapes to a user who is, for example,
running on a treadmill, with the video “automatically
PACING TECHNOLOGIES, LLC v. GARMIN INTERNATIONAL, INC. 9
calibrated to match the speed of the user’s . . . pace,” to
simulate the user running through the actual landscape.
’843 patent col. 16 ll. 51–61. Pacing argues that if the
claim is construed to limit the invention to a repetitive
motion pacing device adapted to producing a sensible
tempo, this particular embodiment will not be covered.
Pacing argues that for this reason, we should reject the
construction.
We disagree for two reasons. First, it is not clear that
our construction excludes this embodiment. Our con-
struction requires the repetitive motion pacing system to
produce a sensible tempo, but it does not exclude addi-
tional features, such as outputting video matching a
user’s pace. Moreover, the description of the embodiment
that Pacing points to does not, as Pacing argues, exclude
the production of a sensible tempo as required by the
construction. Just because an embodiment does not
expressly disclose a feature does not mean that embodi-
ment excludes that feature. Second, even if Pacing is
correct that this embodiment does not play a sensible
tempo and therefore would be excluded under our con-
struction, this is not a reason to ignore the specification’s
clear and unmistakable disavowal. It is true that con-
structions 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.” The plain language requires
the system to pace the user. We conclude that the system
10 PACING TECHNOLOGIES, LLC v. GARMIN INTERNATIONAL, INC.
of claim 25 must be capable of producing a sensible tempo
for pacing the user.
II. Infringement
We hold that there is no genuine dispute of material
fact as to whether the Garmin devices produce a sensible
tempo. Merely displaying the rate of a user’s pace—for
example, displaying “100 steps per minute”—does not
produce a sensible tempo. Garmin’s accused devices are
therefore not repetitive motion pacing devices. We affirm
the district court’s grant of summary judgment of nonin-
fringement of the ’843 patent.
AFFIRMED