Affirming the district court’s summary judgment of non-infringement, the agreed with the district court that the preamble of the claim-at-issue was a limitation which required a system that provided a “sensible output for setting the pace or rate of movement of a user in performing a repetitive motion activity” and that the term “playback device” required a device “capable of playing audio, video, or visible signal.”  The preamble was limiting because limitations in the body of the claim (i.e., “user” and “repetitive motion pacing system”) rely upon and derive antecedent basis from the preamble.  The court further held that the “repetitive motion pacing system” required a playback device that provided a sensible tempo due to a “clear and unmistakable statement of disavowal or disclaimer” in the specification.  The specification listed 19 examples of “objects” of the invention followed by a statement that such objects are accomplished by “a repetitive motion pacing system that includes . . . a data storage and playback device adapted to producing the sensible tempo.”  While the characterization of features as being “objects” of the invention will not always rise to the level of a disclaimer, the further statement describing how such objects are achieved using certain features “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.”  The fact that the patent specification described another embodiment that did not require producing a sensible tempo was insufficient to overcome this disclaimer. 

Pacing Technologies, LLC v. Garmin International, Inc., Case No. 2014-1396 (February 18, 2015); Opinion by: Moore, joined by Lourie and Reyna; Appealed From: District Court for the Southern District of California, Benitez, J. Read the full opinion here.

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