Running On Empty – Patent Drafting Danger

8.7.15

Patent drafting is as much an art as it is a science. After all, while courts have general rules for interpreting patents — such as the rule that preamble language doesn’t limit a patent’s claims — exceptions exist. And these exceptions can lead to unwelcome results for patentees. Such was the situation in Pacing Technologies, LLC v. Garmin Technologies, Inc.

The starting line

Pacing Technologies holds a patent that covers methods and systems for pacing users during activities that involve repeated motions, such as running. The patent’s “preferred embodiment” for the invention describes a method for aiding pacing by providing the user with a tempo — for example, the beat of a song or flashes of light — that correspond to the user’s desired pace. The relevant patent claim refers to, among other components, a “playback device.”

Pacing sued Garmin Technologies for infringement. Garmin’s website allows users to design and transfer workouts to Garmin devices. Workouts consist of a series of intervals to which the user can assign a duration and target pace. The devices display the intervals for a particular workout during operation but don’t play music or produce a beat corresponding to pace.

The infringement claim was dismissed. The trial court reasoned that, while Garmin’s devices repeat back or display pace, the devices don’t play the target tempo or pace information as audio, video or visible signals. Pacing appealed.

Claim held back

On appeal, the parties disputed whether the patent language required the claimed devices to play back the pacing information via a tempo. The U.S. Court of Appeals for the Federal Circuit determined that the dispute turned on whether the preamble to the relevant patent claim limited that claim’s scope and on the meaning of the preamble term “repetitive motion pacing system.”

The appeals court held that the preamble — “a repetitive motion pacing system for pacing a user” — did limit the claim. It acknowledged that preamble language that merely states the purpose or intended use of an invention generally isn’t treated as limiting the claim’s scope. But if the preamble language is necessary to understand the claims that follow, the language is considered limiting.

The court found that that was the case here. The terms “user” and “repetitive motion pacing system” in the preamble provided “antecedent basis” for the same terms as used in the body of the claim. In other words, the preamble terms were necessary to understand limitations in the body.

Final results

The appellate court noted that the plain and ordinary meaning of the phrase “repetitive motion pacing system for pacing a user” doesn’t require the claimed invention to pace the user by playing back the pace information using a tempo. It pointed out, though, that claim terms are interpreted in light of the patent’s specification and prosecution history. Here, the history requires a departure from the plain meaning in two instances, known as lexicography and disavowal.

Lexicography occurs only when a patentee clearly sets forth a definition of the disputed claim term and expresses an intent to define the term. Disavowal requires that the specification or prosecution history make clear that the invention doesn’t include a particular feature.

The specification here listed 19 features of the invention, each preceded with a phrase indicating the feature was “another object of the present invention.” The court found that it contained a clear and unmistakable statement of disavowal or disclaimer of the plain and ordinary meaning of the phrase “repetitive motion pacing system for pacing a user.” Although characterizing a feature as “an object,” “another object” or even “a principal object” won’t always rise to the level of a disclaimer, Pacing’s patent went further.

The patent stated that all of the features were accomplished by a “repetitive motion pacing system that includes … [a] playback device adapted to producing the sensible tempo.” The court concluded that this clearly and unmistakably limited “the present invention” to a system capable of producing tempo to pace the user. Garmin’s didn’t produce pacing tempo and, thus, didn’t infringe.

On the right track

As the appellate court observed, it’s common patent drafting practice to cast features as “an object of the present invention.” The court’s holding illustrates that such an approach could prove dangerous and lead to a finding of a disavowal that overrides a term’s intended meaning.