Free Motion Fitness, Inc. v. Cybex International, Inc.

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United States Court of Appeals for the Federal Circuit

05-1006

FREE MOTION FITNESS, INC.
(formerly known as Ground Zero Design Corporation),

Plaintiff-Appellant,

v.

CYBEX INTERNATIONAL, INC.,

Defendant-Appellee.

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FREE MOTION FITNESS, INC.
(formerly known as Ground Zero Design Corporation),

Plaintiff-Appellant,

v.

THE NAUTILUS GROUP, INC. (formerly known as Direct Focus, Inc.)
and NAUTILUS HUMAN PERFORMANCE SYSTEMS, INC.,

Defendants-Appellees.

Larry R. Laycock, Workman Nydegger, of Salt Lake City, Utah, argued for plaintiff-
appellant. With him on the brief were Thomas R. Vuksinick and David R. Todd.

Casey K. McGarvey, Berman & Savage, P.C., of Salt Lake City, Utah, argued for
defendant-appellee Cybex International, Inc. With him on the brief was E. Scott Savage.

Paul T. Meiklejohn, Dorsey & Whitney LLP, of Seattle, Washington, argued for
defendants-appellees The Nautilus Group, Inc., et al. With him on the brief was David M.
Jacobson.

Appealed from: United States District Court for the District of Utah

Senior Judge Bruce S. Jenkins
 United States Court of Appeals for the Federal Circuit

05-1006

FREE MOTION FITNESS, INC.,
(formerly known as Ground Zero Design Corporation),

Plaintiff-Appellant,

v.

CYBEX INTERNATIONAL, INC.,

Defendant-Appellee.

-----------------------------------------------------------------------------------------------

FREE MOTION FITNESS, INC.
(formerly known as Ground Zero Design Corporation),

Plaintiff-Appellant,

v.

THE NAUTILUS GROUP, INC. (formerly known as Direct Focus, Inc.)
and NAUTILUS HUMAN PERFORMANCE SYSTEMS, INC.,

Defendants-Appellees.

___________________________

DECIDED: September 16, 2005
___________________________

Before RADER, DYK, and PROST, Circuit Judges.

Opinion for the court filed by Circuit Judge DYK. Dissenting opinion filed by Circuit
Judge PROST.

DYK, Circuit Judge.
 Free Motion Fitness, Inc. (formerly known as Ground Zero Design Corporation)

(“Free Motion”) appeals from the judgment of the United States District Court for the

District of Utah holding that Cybex International, Inc. (“Cybex”) and The Nautilus Group,

Inc. (formerly known as Direct Focus, Inc.) and Nautilus Human Performance Systems,

Inc. (collectively “Nautilus”) did not infringe the claims of United States Patent Nos.

6,238,323 B1 (the “’323 patent”) and 6,458,061 B2 (the “’061 patent). Free Motion

Fitness, Inc. v. Cybex Int’l, Inc., Nos. 01-CV-152 and 02-CV-122, slip op. at 2-3 (D. Utah

Aug. 31, 2004); Free Motion Fitness, Inc. v. Cybex Int’l, Inc., Nos. 01-CV-152 and 02-

CV-122, slip op. at 7 (D. Utah Aug. 10, 2004) (hereinafter Summary Judgment Order).

We vacate the judgment of the district court and remand for a determination of literal

infringement and infringement under the doctrine of equivalents under the correct claim

construction. In this connection, we also set aside the district court’s holding that

prosecution history estoppel limits the scope of equivalents.

BACKGROUND

Free Motion is the assignee of the ’323 and ’061 patents. The patents claim an

exercise apparatus comprising a resistance assembly, two adjustable extension arms

that pivot on an axis substantially parallel to the axis of rotation of a pulley at the end of

each arm, and a cable linking the resistance assembly to the arms. Claim 1 of the ’061

patent is representative of the claims of both patents and reads:

1. An exercise apparatus, comprising:
a resistance assembly;
a cable linking a first extension arm and a second extension arm to the
resistance assembly, wherein the cable includes a first strand and a
second strand;
the first extension arm includes a first end pivotally supported adjacent the
resistance assembly at a first pivot point rotating about a first axis and
a free second end from which the first strand of the cable extends for

05-1006 2
 engagement by a user, the first end of the first extension arm further
including a pulley having an axis of rotation offset from the first pivot
point and rotating about an axis substantially parallel to the first axis;
the second extension arm includes a first end pivotally supported adjacent
the resistance assembly at a second pivot point rotating about a
second axis and a free second end from which the first strand of the
cable extends for engagement by a user, the first end of the second
extension arm further including a pulley having an axis of rotation
offset from the second pivot point and rotating about an axis
substantially parallel to the second axis.

’061 patent, col. 7, l. 63–col. 8, l. 16 (emphases added).1 The extension arms comprise

both the extended portion of each arm and the locking pivot or swivel assembly at the

end of each arm (what the district court called the “casting”) that permits the arms of the

preferred embodiment of the invention to pivot up-and-down (like the lever on a slot

machine). The preferred embodiment of the invention uses a single cable to link the

resistance assembly with the arms.

Figures 6 and 7 of the ’061 patent depict the preferred embodiment of the

invention. Figure 6 shows the resistance assembly, the proximal ends of the arms, and

the cable linking the two arms. The first and second pivot points are numbered 174,

while the first and second extension arms are numbered 112 and 114. Figure 7 is a

close-up of the proximal end of the first extension arm where it attaches to the

resistance assembly. First extension arm 112 pivots on an axis substantially parallel to

the axis of rotation of pulley 184, which is located at the first end of the first extension

arm.

1
The other independent and dependent claims of the patents contain
limitations that are nearly identical and need not be discussed separately.

05-1006 3
 Cybex and Nautilus sell exercise machines that are alleged to be similar to those

described in the patents. However, unlike the patented devices, the arms of the Cybex

and Nautilus machines are attached to the resistance assembly of the machine such

that they pivot in two different planes. Thus, the castings of the Cybex machine permit

each arm to rotate like a doorknob at the pivot point nearest the resistance assembly

and like the arms of a slot machine at the next pivot point away from the resistance

assembly. The Cybex machine also uses two cables to link the resistance assembly to

the arms rather than the one as in the patents’ preferred embodiments. The castings of

the Nautilus machine permit each arm to pivot side-to-side (like a door) at the pivot point

nearest the resistance assembly and like the arms of a slot machine at the next pivot

point away from the resistance assembly.

05-1006 4
 On December 3, 2001, Free Motion filed suit against Cybex for infringement of

the claims of the ’323 patent. On September 26, 2002, Free Motion filed suit against

Nautilus for infringement of the claims of the ’323 patent. Free Motion subsequently

amended its complaints to add an additional claim for infringement of the claims of the

’061 patent and the district court consolidated the two cases. On December 30, 2003,

the district court construed various claim terms. It also granted partial summary

judgment of non-infringement of claim 1 of the ’061 patent based upon its claim

constructions. On January 28, 2004, and February 4, 2004, Nautilus and Cybex,

respectively, filed motions for complete summary judgment as to non-infringement.

Those motions were granted by the district court on May 7, 2004. The district court first

found the other asserted claims of the ’061 and ’323 patents were not literally infringed

because “each of the limitations of Claim 1 of the ‘061 Patent are present, either

expressly or by incorporation by reference, in all of [those] claims.” Summary Judgment

Order at 4.

The district court also ruled that a narrowing amendment made during

prosecution of the ’323 patent estopped Free Motion from asserting equivalence to a

device having extension arms with axes of rotation transverse to the axes of rotation of

the pulleys at the end of the extension arms. The court held that the estoppel applied to

both patents because the ’061 patent is a continuation of the ’323 patent. The court

subsequently dismissed with prejudice Free Motion’s complaints against Cybex and

Nautilus, and dismissed without prejudice Cybex’s and Nautilus’s counterclaims of

invalidity against Free Motion. Free motion appeals. We have jurisdiction pursuant to

28 U.S.C. § 1295(a)(1).

05-1006 5
 DISCUSSION

We review both the district court’s grant of summary judgment and its claim

constructions without deference. Howmedica Osteonics Corp. v. Tranquil Prospects,

Ltd., 401 F.3d 1367, 1370-71 (Fed. Cir. 2005). We also review the prosecution history

estoppel limitation on the doctrine of equivalents without deference. Bus. Objects, S.A.

v. Microstrategy, Inc., 393 F.3d 1366, 1372 (Fed. Cir. 2005).

In construing the claims we follow our recent decision in Phillips v. AWH Corp.,

415 F.3d 1303 (Fed. Cir. 2005) (en banc).

The district court’s grant of summary judgment of non-infringement rests on a

finding that several claim limitations were not met in the accused devices. As to each of

these we conclude that the district court erred.

I

The addition of unclaimed elements does not typically defeat infringement when

a patent uses an open transitional phrase such as “comprising.” Crystal Semiconductor

Corp. v. Tritech Microelectronics Int’l, Inc., 246 F.3d 1336, 1348 (Fed. Cir. 2001) (“In the

parlance of patent law, the transition ‘comprising’ creates a presumption that the recited

elements are only a part of the device, that the claim does not exclude additional,

unrecited elements.”). That is essentially what the district court did here under the guise

of construing the claims.

The district court found that the “first pivot point” limitation was not met by either

of the accused devices. The district court held “that the first pivot point is construed as

an expression of location, specifically the first pivot point is chronologically the first point

that pivots on the end of the extension arm where the arm is supported by the frame”

05-1006 6
and therefore held that “the term describes the first chronological point about which the

arm turns.” Free Motion Fitness, Inc. v. Cybex Int’l, Inc., Nos. 01-CV-152 and 02-CV-

122, slip op. at 13 (D. Utah Dec. 30, 2003) (emphasis in original) (hereinafter

Memorandum Opinion). It appears that the district court construed “first” pivot point to

mean the pivot point spatially nearest the resistance assembly. Based on this

construction, the district court concluded that the asserted claims were not infringed.

Summary Judgment Order at 4-5.

On appeal, the accused infringers make no effort to defend the district court’s

construction of the word “first.” Cybex agrees that the word “first” in the claims identifies

only the location of attachment of the first arm as opposed to the location of attachment

of the second arm, and has nothing to do with the relative position of multiple pivot

points on a single arm. Nautilus appears to agree.

The parties’ concession concerning the meaning of the word “first” is well taken.

As we have previously held, “[t]he use of the terms ‘first’ and ‘second’ is a common

patent-law convention to distinguish between repeated instances of an element or

limitation.” 3M Innovative Props. Co. v. Avery Dennison Corp., 350 F.3d 1365, 1371

(Fed. Cir. 2003). In this case, the claims include two arms, and the claims’ use of the

terms “first pivot point” and “second pivot point” distinguishes the pivot point on the “first

extension arm” from the pivot point on the “second extension arm.” “First” does not

denote spatial location, that is, it does not suggest where on the “first extension arm” or

the “second extension arm” the pivot points are located. The correct construction of the

word “first” merely associates the first pivot point with the first extension arm, and thus

does not support the district court’s judgment that the accused devices do not infringe.

05-1006 7
 II

The district court also held that the pivot point on each arm (as described in the

claims) must be “adjacent the resistance assembly.” Summary Judgment Order at 5.

The district court construed the word “adjacent” to mean “that objects may or may not

be in contact, but are not adjacent to each other where there is another object between

them.” Memorandum Opinion at 12-13. The district court reasoned that under this

definition of adjacent the claimed pivot points must be the pivot points closest to the

resistance assembly. Since the claimed pivot points (those acting like a slot machine

lever) were separated from the resistance assembly by another object (the other pivot

point), the district court concluded that the accused devices did not infringe.

The question is whether or not the district court properly construed the term

“adjacent.” There is no suggestion here that intrinsic evidence defines the term or that

the term adjacent has a specialized meaning in the relevant art. Phillips, 415 F.3d at

1314. Under these circumstances, the parties and the district court looked to

dictionaries for definitions of the word adjacent for assistance in determining the term’s

meaning to one skilled in the art.

Our en banc decision in Phillips clarified the appropriate use of dictionaries in

claim construction, rejecting the view that dictionary definitions govern unless

contradicted by intrinsic evidence. Phillips, 415 F.3d at 1320. Nonetheless Phillips

confirms that courts may “‘rely on dictionary definitions when construing claim terms’”

and that “[d]ictionaries . . . are often useful to assist in understanding the commonly

understood meaning of words.” Id. at 1322 (quoting Vitronics Corp. v. Conceptronic,

Inc., 90 F.3d 1576, 1584 n.6 (Fed. Cir. 1996)). The court must ensure that any reliance

05-1006 8
on dictionaries accords with the intrinsic evidence: the claims themselves, the

specification, and the prosecution history. Id. at 1314. Under Phillips, the rule that “a

court will give a claim term the full range of its ordinary meaning,” Rexnord Corp. v.

Laitram Corp., 274 F.3d 1336, 1342 (Fed. Cir. 2001), does not mean that the term will

presumptively receive its broadest dictionary definition or the aggregate of multiple

dictionary definitions, Phillips, 415 F.3d at 1320-1322. Rather, in those circumstances

where reference to dictionaries is appropriate, the task is to scrutinize the intrinsic

evidence in order to determine the most appropriate definition. Id. at 1322-23, 1324.2

Webster’s Third New International Dictionary provides several different definitions

of “adjacent,” two of which are possibilities here. One definition is “not distant” and the

other is “relatively near and having nothing of the same kind intervening.”3 The

specification here is most consistent with defining adjacent to mean “not distant.” We

find nothing in the intrinsic record suggesting a concern with intervening pivot points or

excluding an additional pivot point between the “first pivot point” and the resistance

assembly, particularly given that a “pivot point” and a “resistance assembly” are not

2
“[A] judge who encounters a claim term while reading a patent might
consult a general purpose or specialized dictionary to begin to understand the meaning
of the term, before reviewing the remainder of the patent to determine how the patentee
has used the term.” Phillips, 415 F.3d at 1324.
3
The full definition defines adjacent as

1a : not distant or far off . . . : nearby but not touching . . . b : relatively
near and having nothing of the same kind intervening : having a common
border: ABUTTING, TOUCHING : living nearby or sitting or standing
relatively near or close together . . . c : immediately preceding or following
with nothing of the same kind intervening.

Webster’s Third New International Dictionary of the English Language Unabridged 26
(2002).

05-1006 9
items of the “same kind”. Renishaw PLC v. Marposs Societa’ Per Azioni, 158 F.3d

1243, 1250 (Fed. Cir. 1998) (“[W]here there are several common meanings for a claim

term, the patent disclosure serves to point away from the improper meanings and

toward the proper meaning.”). The specification thus suggests that “adjacent” simply

means “not distant.”4 Indeed, Nautilus and Cybex appeared to agree before the district

court that adjacent means “near.” (J.A. at 682, 2392, 2395.) Under this definition the

district court’s judgment of non-infringement is not supported because the pivot points of

the accused devices are not distant from the resistance assembly.

III

Nautilus, relying on other language in the claims, argues that the claimed pivot

point must be the pivot point closest to the resistance assembly. Nautilus specifically

argues that the claim terms “support” and “end” require that construction because a

pivot point not closest to the resistance assembly cannot support the entire arm and

cannot be located at the end of the arm. Cybex appears to support this argument as

well. The district court apparently did not rely on this argument in granting summary

judgment of non-infringement. We discern nothing in the use of the word “support”

suggesting that the arm must be entirely supported by the claimed pivot point. We also

disagree that the term “end” requires that the claimed pivot point be nearest the

4
Nautilus argues that we should construe “adjacent” with an eye toward
preserving the validity of the claims. It urges that construing adjacent to mean “near”
would render the claim indefinite because the accused device is not large and a pivot
point at the far end of the arm is still near. We reject Nautilus’s argument because a
court may only construe claims to preserve their validity when “‘after applying all the
available tools of claim construction . . . the claim is still ambiguous.’” Phillips, 415 F.3d
at 1327 (citing Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 911 (Fed. Cir.
2004)). The claim in this case is not ambiguous.

05-1006 10
resistance assembly. The district court construed “end” to mean “the portion having

length, not limited to the terminus.” Memorandum Opinion at 12. No party challenges

this construction. These terms require nothing more than that the pivot point be located

at the end portion of the arm and contribute to supporting the arm.5

IV

Finally, the district court held that the term “a cable linking” in the claims is limited

to only a single cable. Id. at 7-8. This issue is not pertinent to alleged infringement by

the Nautilus machine. But under this construction the district court held that the Cybex

device does not infringe because it “has multiple cables rather than a single cable which

links that [sic] arms to the resistance assembly.” Id. at 14. The district court reached

this construction by pointing to the patents’ numerous references to a single cable (“a

cable linking” and “the cable”) and inferring from the patents’ use of the plural in other

instances “that if the patent intended more than one cable, it would have expressly

indicated that by using a plural term.” Id. at 7-8.6

5
Cybex also relies on “the” as supporting a claim construction limited to
only one pivot point on each arm. As discussed below, the articles “a” and “the” do not
suggest singularity. Nothing in the patent overcomes the presumption that these terms
mean one or more.
6
The district court also found that various corrections made to the ’061
patent evinced an intent to claim an apparatus having only a single cable. The district
court wrote:

The Court observes that on October 1, 2002, a certificate of correction
was filed with the United States Patent and Trademark Office (“USPTO”)
regarding the ‘061 patent. The Correction substituted certain words for
other words in the patent. Among the twelve corrections made:
‘apparatuses’ was changed to ‘apparatus;’ and ‘arm’ was changed to
‘arms.’ These two corrections changed the pluralized term to the singular
term and vice versa respectively. It can be inferred, therefore, that if the

05-1006 11
 At oral argument Cybex admitted that the legal meaning of the term “a” suggests

that the claim term “a linking cable” normally should be interpreted to mean one or more

cables. That is correct. “‘[A]’ or ‘an’ in patent parlance carries the meaning of ‘one or

more’ in open-ended claims containing the transitional phrase ‘comprising.’” KCJ Corp.

v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000). This convention is

overcome only when “the claim is specific as to the number of elements” or “when the

patentee evinces a clear intent to . . . limit the article.” Id. Cybex argues that here the

presumption is overcome because the specification describes the cable as a “single

cable.” We disagree. The references to a single cable in the specification are found in

the description of the preferred embodiments, and do not evince a clear intent by the

patentee to limit the article to the singular. RF Del., Inc. v. Pac. Keystone Techs., Inc.,

326 F.3d 1255, 1263 (Fed. Cir. 2003) (“[W]hen a claim term is expressed in general

descriptive words, it typically will not be limited to a numerical range that may appear in

the written description as referring to a preferred embodiment or in other, narrower

claims.”); Renishaw, 158 F.3d at 1248 (reciting the familiar maxim that “one may not

read a limitation into a claim from the written description”).

We also reject Cybex’s argument that use of the word “the” in connection with the

word “cable” later in the claim shows that the earlier reference to “a” denotes singularity.

Like the words “a” and “an,” the word “the” is afforded the same presumptive meaning of

“one or more” when used with the transitional phrase “comprising.” See AbTox, Inc. v.

patent intended more than one cable, it would have expressly indicated
that by using a plural term.

Memorandum Opinion at 7-8. That inference is not warranted.

05-1006 12
Exitron Corp., 122 F.3d 1019, 1023 (Fed. Cir. 1997) (“[P]atent claim parlance also

recognizes that an article can carry the meaning of ‘one or more,’ for example in a claim

using the transitional phrase ‘comprising.’”).

The construction that claim 1 is not limited to a single cable is also supported by

the doctrine of claim differentiation. Both patents contain dependent claims limited to

devices having only one cable. Claim 2 of the ’323 patent claims “[t]he exercise

apparatus according to claim 1, wherein the cable consists essentially of a single cable.”

’323 patent, col. 8, ll. 26-27. So too claim 7 of the ‘061 patent requires a “single cable.”

’061 patent, col. 8, ll. 39-53. The doctrine of claim differentiation “create[s] a

presumption that each claim in a patent has a different scope.” Comark

Communications, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998). The

difference in meaning and scope between claims is presumed to be significant “[t]o the

extent that the absence of such difference in meaning and scope would make a claim

superfluous.” Tandon Corp. v. United States Int’l Trade Comm’n, 831 F.2d 1017, 1023

(Fed. Cir. 1987). Here, dependent claims limiting the claim to a single cable confirm

that the independent claims may encompass more than one cable.

Cybex relies on Insituform Technologies, Inc. v. Cat Contracting, Inc., 99 F.3d

1098 (Fed. Cir. 1996) for the opposite proposition. Insituform Techs., Inc. v. Cat

Contracting, Inc., 99 F.3d 1098 (Fed. Cir. 1996). Insituform involved a method of

impregnating an absorbent layer of material in a tube with resin by applying a vacuum

through the wall of the tube using a cup. Id. at 1104. The claimed method specifically

described moving the cup to a location farther down the tube as the resin moved

through the tube. Id. We construed “a cup” and “the cup” as singular because the

05-1006 13
claims, specification, and file history all supported that construction. Id. at 1105-06.

That is not the situation before us in this case, where the claims and specification point

in the opposite direction.

Therefore, we hold that “a cable linking” means “one or more cables linking.”

Under the correct claim construction the fact that the Cybex device has more than one

cable does not show non-infringement.7

V

Given changes in the claim construction, we need not address the overall

availability of the doctrine of equivalents. We do address, however, one aspect of the

district court’s doctrine of equivalents analysis because the district court seemed to find

a disclaimer of claim scope that could be equally applicable to literal and equivalent

infringement. Pall Corp. v. PTI Techs. Inc., 259 F.3d 1383, 1392 (Fed. Cir. 2001),

vacated on other grounds, PTI Techs, Inc. v. Pall Corp. Techs., Inc., 535 U.S. 1109

(2002) (“Even where the ordinary meaning of the claim is clear, it is well-established

that ‘the prosecution history limits the interpretation of claim terms so as to exclude any

interpretation that was disclaimed during prosecution.’”) (quoting Southwall Techs., Inc.

v. Cardinal IG Co., 54 F.3d 1570, 1576 (Fed. Cir. 1995)). The district court held that

Free Motion was estopped from claiming infringement under the doctrine of equivalents

because, during prosecution of the ’323 patent, the district court found that Free Motion

disclaimed a device wherein the axes of rotation of the guide pulleys and extension

7
Cybex also appears to argue that its machine does not infringe because
neither cable of the Cybex machine links the extension arms to the resistance
assembly. This argument relies on an overly restrictive construction of “linking” and is
rejected.

05-1006 14
arms were perpendicular. Summary Judgment Order at 6. The district court held that

the disclaimer applied to both patents because the ’061 patent is a continuation of the

’323 patent. Id. at 6 n.3. During prosecution the examiner rejected the pending claims,

as he found that they were anticipated by Fitzpatrick. The Fitzpatrick patent discloses

an exercise device wherein the axes of rotation of the adjustable arms are transverse to

the axes of rotation of the pulleys. U.S. Patent No. 4,826,157 (issued May 2, 1989).

This orientation can be best understood by reference to Figure 3 of Fitzpatrick. Arms 35

are mounted in sleeves 34 such that they rotate on an axis of rotation transverse to

guide pulleys 37.

05-1006 15
 Free Motion overcame the rejection to the prior art Fitzpatrick patent by

amending the claims to include a “rotating about an axis substantially parallel to the

second axis” limitation and made the following argument in connection with the

amendment:

The undesirable forces created by the transverse orientation of the
pulley 38 disclosed by Fitzpatrick is [sic] in direct contrast with the claimed
invention where the axes of the respective pulleys are is [sic] substantially
parallel to the axes of rotation of the extension arms. The claimed
assembly provides for virtually no variation in cable tension when the
extension arms are selectively rotated.

(J.A. at 3109.) The district court concluded that Free Motion was estopped to assert

infringement by a device that—although including extension arms with axes of rotation

substantially parallel to the pulleys—also has the undesirable features of Fitzpatrick.

Basic patent law holds that a party may not avoid infringement of a patent claim using

an open transitional phrase, such as comprising, by adding additional elements. Crystal

Semiconductor, 246 F.3d at 1348. The presence of an undesirable prior art feature in

addition to the elements recited in the claim, even when the undesirability of that feature

formed the basis of an amendment and argument overcoming a rejection during

prosecution, does not limit the claim unless there is a clear and unmistakable disclaimer

of claim scope. Here, there is no such disclaimer. The “comprising” language allows

additional features. The disclaimer, if there was one, only applied to the “claimed

assembly,” not unclaimed features added to the patented device.

CONCLUSION

We vacate the district court’s grant of summary judgment of non-infringement

and remand for a determination of literal infringement and infringement under the

doctrine of equivalents under the correct claim construction. In this connection, we

05-1006 16
disapprove the district court’s holding that prosecution history estoppel limits the scope

of equivalents. Cybex and Nautilus are free, of course, to reinstate their counterclaims

upon remand.8

COSTS

No costs.

VACATED AND REMANDED

8
Cybex invites us to hold the patents invalid as obvious. This issue is not
ripe for decision and is not properly before this court because a cross-appeal was not
filed. Typeright Keyboard Corp. v. Microsoft Corp., 374 F.3d 1151, 1157 n.4 (Fed. Cir.
2004) (“[W]here the appellee urges invalidity as a new ground on which to support a
judgment of non-infringement . . . a cross-appeal is necessary since a judgment of
invalidity is broader than a judgment of non-infringement.”).

05-1006 17
 United States Court of Appeals for the Federal Circuit

05-1006

FREE MOTION FITNESS, INC.
(formerly known as Ground Zero Design Corporation),

Plaintiff-Appellant,

v.

CYBEX INTERNATIONAL, INC.,

Defendant-Appellee.

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FREE MOTION FITNESS, INC.
(formerly known as Ground Zero Design Corporation),

Plaintiff-Appellant,

v.

THE NAUTILUS GROUP, INC. (formerly known as Direct Focus, Inc.)
and NAUTILUS HUMAN PERFORMANCE SYSTEMS, INC.,

Defendants-Appellees.

PROST, Circuit Judge, dissenting.

I respectfully disagree with several aspects of the majority’s claim construction in

this case. I would affirm the decision of the district court, because I agree with its

constructions of “first pivot point” (as I understand that construction), “adjacent,” and “a

cable linking.”

With respect to the “first pivot point,” I believe the majority has been misled by

Free Motion’s characterization of the district court’s claim construction. Although the
district court’s opinion is admittedly somewhat unclear on this point, I do not share the

majority’s belief that the district court relied on the word “first” to denote spatial location,

rather than to distinguish the pivot point on the “first extension arm” from the one on the

“second extension arm.” Such a holding would obviously have been incorrect. I fully

agree with the majority that “first” and “second” are used in claim 1 according to the

“common patent-law convention to distinguish between repeated instances of an

element or limitation,” 3M Innovative Properties Co. v. Avery Dennison Corp., 350 F.3d

1365, 1371 (Fed. Cir. 2003), but I think the district court understood this, too.1 Free

Motion has portrayed the district court’s holding in a different way in order to set up an

easy target to attack on appeal. As Cybex argues, identifying the “first pivot point” as

“the first in location among a series of pivot points” “was not the district court’s ruling,

and [Free Motion]’s argument against it is meaningless.”

An alternative reading of the district court’s construction is consistent with the

conventional use of “first” and “second.” Specifically, I understand the court to have

concluded, based on the context of the claim and the written description, that the

position of the first and second pivot points was limited. The court’s coincidental use of

the word “first” to describe that particular position (“first chronological point about which

the arm turns”) understandably caused some confusion over whether the court correctly

interpreted the word “first” in the claim. But I read the district court’s holding as not

based on the word “first”; its interpretation applies equally to the “second pivot point,”

such that it would have been entirely consistent (and somewhat redundant) for the court

1
Like the majority, I confine my discussion to claim 1 of the ’061 patent.
See ante at 3, n.1. Free Motion does not present any additional arguments in its appeal
regarding the other asserted claims.

05-1006 2
to have inserted “and the second pivot point is chronologically the first point that pivots

on the end of the second extension arm where the arm is supported by the frame.”

Several pieces of intrinsic evidence support this construction. The specification

places the “first pivot point” where the first end of the first extension arm is “pivotally

supported adjacent the resistance assembly.” Where there are multiple pivot points,

only the pivot point nearest the resistance assembly can pivotally support the entire

arm. Moreover, as discussed in more detail below, “adjacent” should be construed as

“relatively near and having nothing of the same kind intervening.” With that construction

in mind, the context of the claim makes it indisputably clear that the first and second

pivot points are, as the district court held, “on the end of the extension arm where the

arm is supported by the frame.” Even if the majority’s interpretation of the district court’s

claim construction is correct, I would still affirm the judgment of noninfringement based

on my belief that the claim context and written description restrict the “first pivot point”

and “second pivot point” to particular locations.

I also think the district court properly selected the appropriate dictionary definition

of “adjacent.”2 As the majority states, a claim term does not “presumptively receive its

broadest dictionary definition or the aggregate of multiple dictionary definitions[.]” Ante

at 9. When I “scrutinize the intrinsic evidence in order to determine the most

appropriate definition[,]” id., I find nothing that supports a meaning as broad as “not

distant.” I only find support for “relatively near and having nothing of the same kind

intervening.” Nothing in the specification describes a pivot point that has another pivot

2
In this case, the parties only advocate constructions of “adjacent” based
on dictionary definitions.

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point between it and the resistance assembly as “adjacent” to the assembly. Such a

disclosure would be necessary to convince me that the broader definition should apply.

Moreover, the narrower definition appears more consistent with ordinary English

usage. For example, Connecticut is near New Jersey, but one does not describe them

as “adjacent.” A part of another state, New York, lies in between. One also normally

refers to contiguous squares on a checkerboard as “adjacent” to each other, but the

space two squares away is not considered “adjacent,” even though it is relatively “near.”

The majority’s reasoning appears to start with the broadest definition and consult

the written description only to see if that definition is narrowed, rather than determining

whether the specification discloses anything broader than the narrow definition. Phillips

v. AWH Corp. explains:

The problem is that if the district court starts with the broad dictionary
definition in every case and fails to fully appreciate how the specification
implicitly limits that definition, the error will systematically cause the
construction of the claim to be unduly expansive. The risk of systematic
overbreadth is greatly reduced if the court instead focuses at the outset on
how the patentee used the claim term in the claims, specification, and
prosecution history, rather than starting with a broad definition and
whittling it down.

415 F.3d 1303, 1321 (Fed. Cir. 2005) (en banc). The majority’s approach, in my view,

does not attempt to determine what the inventor actually invented, but rather takes the

broadest available abstract meaning of a claim term that is not explicitly rejected by the

specification. This approach allows the claim scope to extend beyond what the

inventor’s written description and claims show to be his actual invention. Free Motion’s

inventor came up with a specific structure that he described and claimed. By deviating

from the meaning of “adjacent” that is most closely aligned with all the examples in the

specification, the majority awards him more than he actually invented and claimed.

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 As the accused products lack a “first pivot point” and “second pivot point” that are

“adjacent the resistance assembly,” I would affirm the district court’s judgment of

noninfringement. Such a decision would not require interpreting the “cable” term.

For the record, though, I do not share the majority’s desire to overrule the district

court’s interpretation of that term. The majority relies on Cybex’s admission that “a” or

“an” typically means “one or more” in an open-ended “comprising” claim. Ante at 12.

However, it should be noted that Cybex’s counsel was only acknowledging our

precedent on the use of indefinite articles. He did not go so far as to “suggest[] that the

claim term ‘a linking cable’ normally should be interpreted to mean one or more cables.”

Id. Counsel made no concession about the claim language at issue here, which

includes the word “linking”; the ’061 patent claims “a cable linking” the arms and the

resistance assembly. A cable that is only one of several would not “link” these things

because other cables would also form part of the connection. “A cable linking” means

that the cable is linking the specific things that follow in the claim text. That is, it must

be attached to each of those things.

Additionally, the majority is simply wrong to state that the written description

supports a multi-cable construction. There are no references to any structure with

multiple “cables linking” the arms to the resistance assembly. In fact, the written

description states that both disclosed embodiments of the invention employ “a single

cable.” ’061 patent, col. 3, ll. 11-13, 39-41 (“functional lift exercise” embodiment); col. 5,

ll. 47-48 (“cable crossover exercise” embodiment) (emphasis added). The patent does

not suggest that multiple cables could “link” the arms to the resistance assembly. The

disclosure of “a single cable” in each embodiment and the requirement of this cable

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“linking” the arms to the resistance assembly distinguishes this case from the precedent

cited by the majority, in which “a” or “the” was presumed to mean “one or more” when

used in a “comprising” claim. See KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351,

1355-57 (Fed. Cir. 2000); AbTox, Inc. v. Exitron Corp., 122 F.3d 1019, 1023-24 (Fed.

Cir. 1997). This case is more like Insituform Technologies, Inc. v. Cat Contracting, Inc.,

in which this court construed “a cup” and “the cup” as singular when a plural

construction was inconsistent with the claim context and “neither the specification nor

the drawings disclose[d] more than one cup.” 99 F.3d 1098, 1105-06 (Fed. Cir. 1996);

see also N. Am. Vaccine, Inc. v. Am. Cyanamid, 7 F.3d 1571, 1575-76 (Fed. Cir. 1993)

(construing “a . . . linkage to a terminal portion of the polysaccharide without significant

crosslinking” as singular because “there is no indication in the patent specification that

the inventors here intended [the article ‘a’] to have other than its normal singular

meaning” and “[a]ll references to polysaccharide linkages speak of a linkage, not

multiple linkages”).

I would also affirm the district court’s application of prosecution history estoppel

on the basis provided by that court. The court specifically held that “Free Motion is

estopped from asserting that [the] perpendicular orientation [of the axes of rotation in

the accused devices] is equivalent to the ‘substantially parallel’ element of the patents-

in-suit.” I agree with that determination, as far as it goes. Under my view of the “pivot

point” and “adjacent” issues, it goes far enough to affirm the judgment of

noninfringement, and therefore I express no opinion on the majority’s disclaimer-of-

scope analysis.

For these reasons, I respectfully dissent.

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