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Pacing Technologies, LLC v. Garmin International, Inc.

Court of Appeals for the Federal Circuit
778 F.3d 1021 (2015)
ELI5:

Rule of Law:

A patentee disavows claim scope when the specification makes a clear and unmistakable statement limiting the invention as a whole, such as by explicitly stating what features accomplish the objects of the 'present invention'.


Facts:

  • Pacing Technologies, LLC (Pacing) owns U.S. Patent No. 8,101,843, which is directed to methods and systems for pacing users during repetitive motion activities like running or cycling.
  • The patent's preferred embodiment describes providing a user with a tempo, such as a song's beat or flashing lights, corresponding to a desired pace.
  • The patent's specification includes a section stating that the 'objects and features of the present invention are accomplished... by a repetitive motion pacing system that includes... a data storage and playback device adapted to producing the sensible tempo.'
  • Garmin International, Inc. (Garmin) manufactures GPS fitness watches and microcomputers used by runners and bikers.
  • Garmin's devices allow users to set target pace values for workouts and display the user's actual pace numerically on the screen (e.g., '50 to 70 spm' or steps per minute).
  • The Garmin devices do not play music or output a metronomic beat or other sensible tempo to the user.

Procedural Posture:

  • Pacing Technologies, LLC sued Garmin International, Inc. in the U.S. District Court for the Southern District of California for patent infringement.
  • The district court construed the claim term 'playback device' and held that the preamble to claim 25 was limiting.
  • Garmin moved for summary judgment of noninfringement.
  • In its summary judgment order, the district court supplemented its claim construction, holding that the device must 'play back the pace information' as audio, video, or a visible signal.
  • The district court granted Garmin's motion for summary judgment of noninfringement.
  • Pacing Technologies, LLC, as appellant, appealed the district court's judgment to the U.S. Court of Appeals for the Federal Circuit.

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Issue:

Does the specification of U.S. Patent No. 8,101,843, by stating that the 'objects and features of the present invention are accomplished' by a system that produces a 'sensible tempo,' disavow claim scope and limit the term 'repetitive motion pacing system' to a device capable of producing such a tempo?


Opinions:

Majority - Moore, Circuit Judge

Yes. The patent's specification disavows claim scope, limiting the invention to a system that produces a sensible tempo. The patentee made a clear and unmistakable statement that the objects of the 'present invention are accomplished' by a system that includes a device 'adapted to producing the sensible tempo.' This language acts as a disclaimer that limits the scope of the invention as a whole. While claim constructions that exclude disclosed embodiments are disfavored, this principle does not override a clear disavowal, especially where a patent describes multiple embodiments and not every claim must cover every one. Because Garmin's devices only display numerical pace data and do not produce a 'sensible tempo,' they do not infringe the patent as it is properly construed.



Analysis:

This decision reinforces the high-stakes nature of language used in a patent's specification under the doctrine of disavowal. It serves as a strong precedent and cautionary tale for patent drafters, illustrating that specific phrases like 'the present invention is accomplished by...' can be interpreted as a binding limitation on all claims, not just a description of a preferred embodiment. The ruling clarifies that a clear statement of disavowal can trump the general canon of claim construction that seeks to avoid invalidating disclosed embodiments, thereby prioritizing the public notice function of the specification over the patentee's potential intent to cover all described versions of the invention.

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