Recent reminder on unnecessary limitations in claim drafting Stefano John / NAIP Education & Training Group , European Patent Attorney
A recently issued US CAFC (Court of Appeal of Federal Circuit) case, Pacing Tech v. Garmin, has reminded US patent practitioners of the perils of drafting too many unnecessary limitations in US claims.
The case involved a US granted patent that dealt with fitness pacing systems (US 8,101,843) and Pacing Tech (PT) alleged that Garmin’s fitness watches infringed some claims, including claim 25. Claim 25 was the following:
“ A repetitive motion pacing system for pacing a user comprising:
a web site adapted to allowing the user to[do something particular to the invention];
a data storage and playback device; and
a communications device adapted to transferring data … between the web site and the data storage and playback device.”
The details of the case do not matter much because what is interesting in this case was the preamble – A (repetitive motion pacing system) (for pacing a user). Normally a preamble is not seen as a limitation on construction of patent scope in US practice unless it “breathes life and meaning into the claim” In re Wertheim, 541 F.2d 257 (CCPA 1976). In this case however, the Judge found that, because both of the limitations in the preamble were antecedent basis for other limitations of the claim, they should both be found to be limiting (Eaton Corp. v.Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003)). In detail, the limitation of the “user” was antecedent to the same “user” in the main body of claim 25, while the “repetitive motion pacing system” limitation was antecedent to the pacing system being described in claim 28. Claim 28 of the ’843 patent reads: “[t]he repetitive motion pacing system of claim 25, wherein the repetitive motion pacing system can determine a geographic location of the data storage and playback device.”
This created a problem for the patent owner as it limited his claim scope on construction.
The patent application describes at several points the ‘objects of the invention’ and these all include ‘a repetitive motion pacing system for pacing a user that includes a data storage playback device adapted to produce a sensible tempo.’ Hence, the CAFC held that proper construction of the preamble of the claim was limited to a repetitive motion pacing system which produces a sensible tempo. As Garmin’s allegedly infringing fitness watches did not produce a sensible tempo, they do not infringe and so the proprietor lost the case.
This must be particularly galling for PT because it is clear that the claim was not intended to be so particularly limited by the feature of the production of a sensible tempo. The patent proprietor indeed argued so and pointed to the fact that some of the embodiments described in the patent specification did not comprise the feature of producing a sensible tempo. The CAFC judge held however that lack of an explicit disclosure of said feature does not mean that embodiment excludes that feature and that the object of the invention explicit inclusion of production of a sensible tempo outweighed the embodiments’ lack of explicit disclosure.
In this case was the preamble necessary with the above limitations? It is not immediately clear why it was, and thus an important conclusion to take from this case is to draft your claims with the least amount of limitations necessary present, specifically in the preamble. It is important to note how this reflects US claiming practice, and how the preamble is necessary in a Jepson style claim in other patent granting jurisprudences (like the classical European 2-part form). Thus it is important to remember to draft claims and assess the necessary limitations according to the specific patent system in which it is to be granted. One size claim does not fit all patent systems!
A second important conclusion to note is that careful attention to how the specification is drafted. In this case, the judge seems to have picked up many instances where an additional feature (production of a sensible tempo) was associated with the object of the invention. This seems careless drafting, particularly because in many cases an easier solution would have been to add it as a preferred version if its inclusion was necessary. For example, the object of the invention could include “a repetitive motion pacing system for pacing a user, preferably/particularly a system that includes a data storage playback device adapted to produce a sensible tempo”. By adding the preferably/particularly qualification, one is explicitly not limiting the entire scope to it and yet including it as a perfect fall-back position in case it were necessary. Some may accuse the above proposed manner of drafting as introducing ambiguity. Even if that were the case, it should be remembered that had the object of the invention in the above case been ambiguous, it is very likely that the judge would have then relied on the embodiments featured in the patent specification for his claim construction and come to a conclusion more amenable to the patent proprietor anyway.
Author:
Stefano John, European Patent Attorney
Experiences：
European Patent Attorney, Bryers
Trainee European Patent Attorney, Bugnion SpA
Trainee European Patent Attorney, Notabartolo & Gervasi
Internship, EPO
