PREAMBLE LIMITS CLAIM SCOPE

On Feb. 18, 2015, the Federal Circuit once again highlighted the importance of preamble in claim construction in Pacing Tech., LLC v. Garmin Int'l, Inc., No. 2014-1396 (Fed. Cir. Feb. 18, 2015).  In this case, Pacing Technologies appealed the district court's grant of summary judgment that Garmin's accused products did not infringe the asserted claims of the '843 patent.  Particularly, the parties disputed whether the asserted claims require the claimed devices to play back the pace information using a tempo, and whether the preamble to claim 25 is limiting.  In affirming the grant of summary judgment of non-infringement, the Federal Circuit concluded that the term "playback device" in claim 25 should be interpreted as "a device capable of playing audio, video, or a visible signal" and based on the preamble required "a system for providing a sensible output for setting the pace or rate of movement of a user in performing a repetitive motion activity."  According to the court, the term "user" in the preamble provided antecedent basis for that term in the body of the claim and with respect to the term "playback device," the specification compelled departure from the plain meaning of the term since the "Summary and Objects of the Invention" contained a clear and unmistakeable disavowal or disclaimer.  Full text of the opinion is available here.