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May 25, 2009


In the American regime, claim construction is an intricate art form. At times, a claim construer must ponder context in view of other claims, and read the entrails of prosecution history to divine meaning. Herein, real-time isn't instantaneous, it has realistic slack. And, as always, singular may be plural unless proscribed.

Paragon Solutions v. Timex (CAFC 2008-1516) precedential

Paragon tried clocking Timex with 6,736,759.

The '759 patent discloses an exercise monitoring system. '759 patent col.2 ll.66-67. The claimed monitoring system includes a "data acquisition unit," which itself includes both an "electronic positioning device" and a "physiological monitor." Id. col.27 ll.66-67. When the user wears the system during exercise, the electronic positioning device--one embodiment of which is a GPS device--tracks "at least one of" the user's "location, altitude, velocity, pace, [or] distance traveled." Id. col.3 ll.8-10. The physiological monitor retrieves "physiological data" from a user during exercise, namely, blood oxygen level or heart rate. Id. col.3 ll.11-13, 40, 50-51. Data from both the electronic positioning system and the physiological monitor are provided to a "display unit," which displays data to the user in "real-time." Id. col.28 ll.3-5, 13-14.

Of particular relevance to this case are the structural relationships among the electronic positioning device, the physiological monitor, and the display unit.

Case law on claim construction -

Claim construction is an issue of law, Markman v. Westview Instruments, Inc., 52 F.3d 967, 970-71 (Fed. Cir. 1995) (en banc), that we review de novo, Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998) (en banc). We determine the ordinary and customary meaning of undefined claim terms as understood by a person of ordinary skill in the art at the time of the invention, using the methodology in Phillips v. AWH Corp., 415 F.3d 1303, 1312-19 (Fed. Cir. 2005) (en banc). "[T]he court looks to those sources available to the public that show what a person of skill in the art would have understood disputed claim language to mean. Those sources include the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art." Id. at 1314 (internal quotation marks and citations omitted).

1. "data acquisition unit"

The issue was whether a 'unit' could be multiple structures. The district court thought singular. The CAFC, willing to even recognize 'a' as possibly plural, did so with 'unit.'

The district court construed "data acquisition unit" to mean "one structure that includes the electronic positioning device and the physiological monitor." Claim Construction Op. at 5.

[W]hile the claim term "unit" might suggest that the data acquisition unit is a single structure, the separate recitation of a physiological monitor in claim 29 and the recitation of "removably secured" elements in claim 7 can be read to suggest persuasively that the data acquisition unit may be multiple structures. We turn next to the specification. See Phillips, 415 F.3d at 1315 ("The claims, of course, do not stand alone. Rather, they are part of a fully integrated written instrument, consisting principally of a specification that concludes with the claims. For that reason, claims must be read in view of the specification, of which they are a part.") (citations and internal quotation marks omitted).

In the specification, Paragon's proposed construction finds strong support in one key sentence:

Of course, the data acquisition component of a monitoring system according to the present invention may even comprise multiple structures which are physically separate from each other.

'759 patent col.8 ll.36-39.

[T]he district court reasoned that the applicants' statements during prosecution... resulted in a clear and unmistakable disavowal of "the concept of an assemblage of inter-related parts and embrace[d] a single structure unit concept." Claim Construction Op. at 5.

The CAFC did not agree.

"[A] patentee may limit the meaning of a claim term by making a clear and unmistakable disavowal of scope during prosecution." Cohesive Techs., Inc. v. Waters Corp., 543 F.3d 1351, 1361 (Fed. Cir. 2008) (quoting Computer Docking Station Corp. v. Dell, Inc., 519 F.3d 1366, 1374 (Fed. Cir. 2008)). By amending the claims to require a separate data acquisition unit and display unit, and by remarking that this distinguished the "unitary structure" of Root [a prior art reference overcame during prosecution], the applicants clearly and unmistakably disavowed a single structure that encompassed an electronic positioning device, a physiological monitor, and a display unit. The claimed exercise monitoring system must be at least two structures. However, there is nothing in the amendment or the applicants' comments that clearly and unmistakably disavows a monitoring system with more than two structures. Thus, there was no clear and unmistakable disavowal of a "data acquisition unit" made up of physically separate structures.

We conclude that, read in light of the specification, the claim term "data acquisition unit" is not limited to a single structure but may comprise multiple physically separate structures, and that the applicants did not make a clear and unmistakable disavowal of multiple physically separate structures during prosecution. We therefore construe "data acquisition unit" as used in the '759 patent as "a structure or set of structures that includes at least the electronic positioning device and the physiological monitor."

2. "display unit"

The district court construed "display unit" to mean "a unit for displaying real-time data provided by the data acquisition unit." Claim Construction Op. at 7.

Paragon argues that the district court was wrong to construe "display unit" as displaying data "provided by the data acquisition unit." Rather, Paragon argues, the claim language permits the data to be provided by the individual components of the data acquisition unit--namely, the electronic positioning device and the physiological monitor. We agree with Paragon.

Then came the déjà vu issue of whether unit was necessarily singular.

"We apply a 'presumption that the same terms appearing in different portions of the claims should be given the same meaning unless it is clear from the specification and prosecution history that the terms have different meanings at different portions of the claims.'" PODS, Inc. v. Porta Stor, Inc., 484 F.3d 1359, 1366 (Fed. Cir. 2007) (quoting Fin Control Sys. Pty., Ltd. v. OAM, Inc., 265 F.3d 1311, 1318 (Fed. Cir. 2001)); see also, e.g., Phillips, 415 F.3d at 1314 ("Because claim terms are normally used consistently throughout the patent, the usage of a term in one claim can often illuminate the meaning of the same term in other claims."). The parties have identified nothing in the claims, the specification, or the prosecution history that would suggest that "unit" in "display unit" means anything different from "unit" in "data acquisition unit." The claimed "display unit" may therefore be multiple structures.

In sum, we modify the district court's construction of "display unit" and construe "display unit" as used in the '759 patent as "a structure or set of structures, separate from the data acquisition unit, for displaying real-time data provided by both the electronic positioning device and the physiological monitor independently or over a common transmission path."

3. "displaying real-time data"

The district court construed "displaying real-time data" to mean "displaying data substantially immediately without contextually meaningful delay so that the information is displayed in a time frame experienced by people." Claim Construction Op. at 9.

Some savvy technically existential thought experiment by the CAFC panel led to the essence of "real-time."

Although not addressed by the district court or the parties, we find important aspects of the claim language itself to provide at least some insight into the meaning of "real-time." Specifically, claim 1 recites that the "display unit configured for displaying real-time data" is "separate from [the] data acquisition unit" that includes the electronic positioning device and the physiological monitor that provide the data. '759 patent col.28 ll.3-6. Thus, when the claimed system is in operation, the displayed data must first be acquired by the electronic positioning device and the physiological monitor and then transmitted to the display unit for display. Even assuming that this transmission happens at the speed of light, it still takes a non-zero amount of time. Thus, what the claims describe as "displaying real-time data" cannot possibly mean displaying data literally instantaneously, because the claims themselves require a transmission that necessarily takes some time, however minute that might be.

Thus, from the claim language alone, it is clear that in this case "real-time" cannot mean instantaneous, and must permit at least some amount of time to pass to allow for both the processing limitations of the system and the time required to accurately measure the data that is to be displayed.

[T]he specification's criticism of prior art as not providing "instantaneous" feedback cannot be read as suggesting that the patented invention displays data literally instantaneously. Rather, the criticism of prior art is more appropriately read to distinguish the invention's "real-time" display from prior art methods that stored data for review only after the activity was complete, so that the user could not make modifications during the course of the activity. Thus, the specification supports a construction of "real-time" in this case that precludes intentionally delaying the display of data by storing it for later review. The specification's references to "instantaneous" feedback do not preclude some delay to allow for the processing limitations of the system and the time required to accurately measure the data that is to be displayed.

There was other specification support to distinguish between instantaneous and real-time.

Then a poignant observation about the nature of the claims.

The problem with construing "displaying real-time data" as used in the claims of the '759 patent to preclude "contextually meaningful delay" is that such a construction injects a use limitation into a claim written in structural terms. "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb, Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990). If the district court's construction were correct, then the same apparatus might infringe when used in one activity, but not infringe when used in another. For example, consider a device that had a delay of thirty seconds between the time at which it calculated a user's velocity and the time that it displayed it. A thirty-second delay might be insignificant in some contexts--including "walking," "climbing," and "snowshoeing," all of which are listed in the specification as activities for which the patented invention is suitable. '759 patent col.4 ll.52, 54. By contrast, a thirty-second delay in determining velocity would be highly significant in other contexts--for example, short- and middle-distance running or skiing. See id. col.4 l.53. Moreover, the wide variety of contexts disclosed as suitable uses for the claimed exercise monitoring system would render it nearly impossible to determine in advance whether the delay in a particular system would be sufficient to avoid infringement. See, e.g., id. col.4 l.53 (listing "flying" as suitable physical activity); id. col.4 l.53 (listing "singing" as suitable physical activity); id. col.5 ll.38-39 (describing use of invention to monitor activity of "horses and camels"); id. col.7 ll.27-28 (describing use of invention for "rehabilitating an injured animal"). See also, e.g., Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1311 (Fed. Cir. 1999). (discussing importance of public notice function in claim construction). Absent an express limitation to the contrary, any use of a device that meets all of the limitations of an apparatus claim written in structural terms infringes that apparatus claim. See, e.g., Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002) (holding that "a patent grants the right to exclude others from making, using, selling, offering to sale, or importing the claimed apparatus or composition for any use of that apparatus or composition" (emphasis added)); see also Roberts v. Ryer, 91 U.S. 150, 157 (1875) ("The inventor of a machine is entitled to the benefit of all the uses to which it can be put, no matter whether he had conceived the idea of the use or not."). Construing a non-functional term in an apparatus claim in a way that makes direct infringement turn on the use to which an accused apparatus is later put confuses rather than clarifies, frustrates the ability of both the patentee and potential infringers to ascertain the propriety of particular activities, and is inconsistent with the notice function central to the patent system. See, e.g. PSC Computer Prods., Inc. v. Foxconn Int'l, Inc., 355 F.3d 1353, 1361 (Fed. Cir. 2004) (emphasizing "the important public notice function of patents--the mechanism whereby the public learns which innovations are the subjects of the claimed invention, and which are in the public domain"); see also Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008) (emphasizing that claim language should "provide a clear-cut indication of the scope of subject matter embraced by the claim" and noting "that the patent drafter is in the best position to resolve the ambiguity in the patent claims").

The CAFC shied from the district court's reaching for a dictionary.

The district court relied heavily on extrinsic evidence--namely, a dictionary definition--in construing "displaying real-time data." Specifically, the district court relied on a Microsoft Computer Dictionary, which defined "real time" as "[o]f or relating to a time frame imposed by external constraints." Claim Construction Op. at 9 (quoting Microsoft Computer Dictionary 375 (4th ed. 1999)).

We have made clear that "dictionaries and treatises can be useful in claim construction," particularly insofar as they help the court "to better understand the underlying technology and the way in which one of skill in the art might use the claim terms." Phillips, 415 F.3d at 1318. However, we find the dictionary definition relied on by the district court too vague to be of significant help in resolving the dispute in this case. The cited definition sheds no light on whether "real-time" means "instantaneous" or, if not, how much of a delay is permissible.

Moreover, we note that definitions of "real-time" in other technical dictionaries suggest that a real-time process cannot involve intentional delay or storage for later processing.

The dénouement -

[I]n this invention, the data is displayed without any intentional delay--i.e., in "real time."

Claim construction rebound means remand.

Because we have modified the constructions of "data acquisition unit" and "display unit," we vacate the district court's judgment of noninfringement. See, e.g., Howmedica Osteonics Corp. v. Wright Med. Tech., Inc., 540 F.3d 1337, 1339 (Fed. Cir. 2008) ("Because we conclude that the construction of [a] claim term was incorrect, we cannot sustain the stipulated judgment [of noninfringement].").

Vacated and remanded.

Posted by Patent Hawk at May 25, 2009 2:12 PM | Claim Construction


"displaying real-time data"

The ing should have tipped them off. Why people simply cannot resist the urge to mix stat classes I will never understand.

Posted by: 6 at May 26, 2009 12:58 AM

Did no judge or law clerk understand the meaning of "real-time?" They surely did not at the trial level.

Real-time simply means that the system must repond by a hard deadline -- for example, if the deadline is 10 milliseconds, the system must respond in 10 milliseconds (no more, no less) or it has failed. PHOSITA knows this, and unless there's a new definition in the spec or claims -- Timex loses.

It doesn't mean fast or really fast or simultaneous -- it means predictable...regardless of system load.

From the excerpts in the case, the description of the Timex product is the very definition of real-time (i.e., there's a nice recitation of each delay).

Posted by: anon at May 26, 2009 4:15 AM

6, read the claim.

I'd understand it if you called it a 112, para 6 claim element.

But "a display unit configured for displaying [data provided from another device]" is undeniably structure.

Seriously, what do you want? "A display coupled to ..."?

Posted by: anon at May 26, 2009 4:25 AM

"urge to mix stat classes"

Hogwash. There is nothing wrong with functional limitations in a structure claim.

Subject matter rejections under 101 for mixing statutory classes are the new Kool Aid over at the post-apocalypse (post-Dudas) PTO. The rationale goes something like: 101 says process, machine, manufacture, OR composition of matter, therefore applicant is limited to only one. No one considered that a logical "OR" is satisfied when one or more of the conditions are present.

Its all kind of funny especially in view of the language of 35 USC 100(b)that apparently nobody bothered to read. ("100(b) The term "process" means process, art, or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.") Of course we all KNOW 6 never read it. I guess when making examination policy the leaders at the PTO cannot be relied upon to consider the ridiculousness of putting out the marching orders for these kind of specious pro forma rejections.

Posted by: Just sayin' at May 28, 2009 9:48 PM


Hmmm, seems we stole that language from the CAFC Sayin. And the CCPA before them. Lyell.

"Its all kind of funny especially in view of the language of 35 USC 100(b)that apparently nobody bothered to read. ("100(b) The term "process" means process, art, or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.") Of course we all KNOW 6 never read it."

What does that have to do with apparatus, product, and composition claims which contain stand alone step limitations? Nothing. And I read that section a long time before you even came to these boards.

FYI Sayin, this has nothing to do with us caring about the form of the claim so much as we care about the problems which that form causes in many instances throughout prosecution and litigation. You have a product claim which reads:

A apparatus comprising:

Part A.
Part B.
Forming part C.
Irradiating a workpeice.

(We see this horse sht all the time now)

This claim should read

An apparatus comprising:

Part A
Part B
Part C
wherein the [insert specific portion of this apparatus] is configured to perform an irradiation on a workpiece.

But let's look at the piece of sht at the top. Let's further assume that they don't have written desc. to amend it properly so even if they want to come to the light they're fed. Now wtf does the irradiation have to do with the apparatus? Does the step of forming part C mean that part C must remain? Could it be removed/incinerated? How do you determine infringement? Is the claim infringed when the accused possesses parts a and b together as an apparatus but there is no irradiation performed? Is the claim infringed when the accused has parts a and b together with c? Is the claim infringed when the accused has parts a and b together, forms part C, destroys part C, then irradiates a workpeice?

What about prosecution? I have an apparatus comprising ABC, but it doesn't say anything about irradiating a workpeice. Do I have a 102? What about if I have AB, but no C. Do I have a 102? What about if I have an ABC and another reference that shows an ABD performing an irradiation. Should I now be substituting in method steps into an apparatus claim analysis? Which rejection is proper? 102? 103? I'll tell you what I should do. I should 103 it and slap them with 101 for making me have to figure out this horse sht in the first place instead of simply writing wtf the apparatus is.

What's even more ironic is that the "law", which you love to ascribe religiously to, has held this since time immemoral. The CAFC case was just an affirmation of what was the law since the beginning. Yet, you don't think it should be the law.

Even so, anon was right, I didn't read the whole limitation in context and it appears to be a functional limitation describing how the display unit is configured. I had thought that this was yet another of thousands of invalid apparatus and product claims reciting stand alone method steps. Found one of those over on 1201tuesday just yesterday. A real shame a prosecutor would ruin a perfectly good claim by not drafting it properly.

Posted by: 6000 at May 29, 2009 9:02 AM

Your job 6 is not to rewrite the spec as you'd like to see it, but to prosecute it as it is filed within the constraints of the law.

But then who ever accused you or many others at the PTO of actually being able to do your freakin' job (with a generous number of exceptions - thankfully).

Posted by: Just sayin' at June 1, 2009 12:52 AM

By the way 6, as John Darling and I have tried to point out to you, you are a freakin idiot and will probably remain so for the remainder of your career since you so consistently fail to "get it." What I mean is that you don't have a clue, but you don't even realize you don't have a clue.

You are clearly the product of an outcome based education and hiring program.

Posted by: Just sayin' at June 1, 2009 12:55 AM

"Your job 6 is not to rewrite the spec as you'd like to see it, but to prosecute it as it is filed within the constraints of the law."

Who ever said that it was? You're out of your gourd.

"By the way 6, as John Darling and I have tried to point out to you, you are a freakin idiot and will probably remain so for the remainder of your career since you so consistently fail to "get it.""

Fail to get what? A clue? About what? That you'll get eviscerated by me when we argue irl? Trust me, I get it very well thanks. I have more than a clue about that, I have evidence of you and yours falling nearly every single day.

What you fail to "get" is that all the hogwash you love to rely on, and mischaracterisations of what I say which you love to poke fun at aren't going to mean squat when I'm right there in person to point out your blunders.

Posted by: 6000 at June 1, 2009 11:09 AM

I'm sorry, but was the above supposed to constitute some kind of a response?

It was the blogosphere equivalent of "I know you are but what am I..." If you think that merely by being contrarian and confrontational, e.g. "...aren't going to mean squat when I right there in person to point out your blunders."... you are somehow honing your skills, you are sadly mistaken.

I don't think someone who thinks that atoms fall out of wires is going to be eviscerating anyone or pointing out anyone's blunders.

Now get back to that BigGulp you little scamp.

Posted by: Just sayin& at June 1, 2009 5:53 PM

"Fail to get what? A clue? About what?"


But seriously, if you read the next sentence (which is that long thing with words in it) you would find the following: "you don't have a clue, but you don't even realize you don't have a clue."

You fail to get that you don't "get" a lot of things like that atoms don't fall out of wires for one notable example.

6 is evidence of the perils of dumbed down outcome based education and non-merit based hiring practices. Possibly a great addition to the Supreme Court someday (gak).

Posted by: Just sayin' at June 1, 2009 5:59 PM