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With respect to patent claim construction, the United States Court of Appeals for the Federal Circuit has 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." The Court has found disclaimer when the specification indicated that, for "successful manufacture," a particular step was required. The Court has 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. The Court has also found disclaimer when the patent repeatedly disparaged an embodiment as antiquated, having inherent inadequacies, and then detailed the deficiencies that make it difficult to use. Likewise, the Court has used disclaimer to limit a claim element to a feature of the preferred embodiment when the specification described that feature as a "very important feature. in an aspect of the present invention," and disparaged alternatives to that feature. 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.
Pacing Technologies, LLC (Pacing) owned the U.S. Patent No. 8,101,843, which was directed to methods and systems for pacing users during activities that involved repeated motions. Claim 25 of the ‘843 patent stipulated that it was a repetitive motion pacing system for pacing a user comprising a web site adapted to allowing the user to pre-select from a set of user-selectable activity and a data storage and a playback device. Pacing alleged that Garmin International, Inc.'s and Garmin USA, Inc.'s GPS fitness watches and microcomputers infringed the ‘843 patent. The district court construed the term "playback device" as "a device capable of playing audio, video, or a visible signal." Garmin moved for summary judgment of noninfringement, contending that the accused devices were not “playback devices” under the district court’s construction, which the district court granted. According to the district court, while the accused devices repeated back or displayed the pace input or selections, they did not play the target tempo or pace information as audio, video, or visible signals. Pacing appealed.
Did the accused devices of Garmin infringe Pacing’s patent?
The Court first noted that the preamble to claim 25, which read “a repetitive motion pacing system for pacing a user," was limiting. According to the Court, the specification contained a clear and unmistakable statement of disavowal or disclaimer; the patent required the system to be capable of producing a sensible tempo for pacing the user. Because there was no genuine dispute of material fact as to whether the accused devices produced a sensible tempo, the accused devices were therefore not repetitive motion pacing devices and did not infringe the patent in suit. The district court properly granted summary judgment of noninfringement.