United States Court of Appeals for the Federal Circuit
2008-1516
PARAGON SOLUTIONS, LLC,
Plaintiff-Appellant,
v.
TIMEX CORPORATION,
Defendant-Appellee.
James D. Liles, Porter, Wright, Morris & Arthur LLP, of Cincinnati, Ohio, argued
for plaintiff-appellant. With him on the brief was Bryan R. Faller, of Columbus, Ohio.
John R. Horvack, Jr., Carmody & Torrance LLP, of New Haven, Connecticut,
argued for defendant-appellee. With him on the brief was Fatima Lahnin.
Appealed from: United States District Court for the Southern District of Ohio
Judge Michael R. Barrett
United States Court of Appeals for the Federal Circuit
2008-1516
PARAGON SOLUTIONS, LLC,
Plaintiff-Appellant,
v.
TIMEX CORPORATION,
Defendant-Appellee.
Appeal from the United States District Court for the Southern District of Ohio in case no.
1:06-CV-677, Judge Michael R. Barrett.
__________________________
DECIDED: May 22, 2009
__________________________
Before BRYSON, LINN, and MOORE, Circuit Judges.
LINN, Circuit Judge.
Paragon Solutions, LLC (“Paragon”) appeals from a final judgment of
noninfringement in favor of Timex Corporation (“Timex”) in a suit alleging that certain
Timex products, including Timex’s Bodylink watches, infringed Paragon’s U.S. Patent
No. 6,736,759 (the “’759 patent”). Following claim construction, the parties stipulated
that the accused products did not infringe, and the district court entered the final
judgment of noninfringement on the stipulation. Paragon Solutions, LLC v. Timex Corp.,
No. 1:06-CV-677 (S.D. Ohio July 10, 2008) (“Final Judgment”); Paragon Solutions, LLC
v. Timex Corp., No. 1:06-CV-677 (S.D. Ohio Apr. 23, 2008) (“Claim Construction Op.”).
Because we conclude that the district court’s constructions of the claim terms “data
acquisition unit” and “display unit” were incorrect, and because we reject Timex’s
asserted alternative basis for affirmance based on the claim term “displaying real-time
data,” we vacate and remand.
I. BACKGROUND
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. Figures 1
and 3 are exemplary illustrations of the disclosed exercise monitoring system:
2008-1516 2
The ’759 patent has two independent claims, reproduced as follows, with
disputed portions emphasized:
1. An exercise monitoring system, comprising:
(a) a data acquisition unit comprising an electronic positioning device
and a physiological monitor, said data acquisition unit configured to
be worn by a subject performing a physical activity; and
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(b) a display unit configured for displaying real-time data provided by
said electronic positioning device and said physiological monitor,
said display unit separate from said data acquisition unit;
wherein said display unit is configured to be worn by the subject, worn
by someone other than the subject, or attached to an apparatus
associated with the physical activity being performed by the subject
so as to be visible to the subject while performing the physical
activity, and
further wherein said system is configured such that said display unit
displays real-time data comprising at least one of a subject’s
location, altitude, velocity, pace, and distance traveled.
29. An exercise monitoring system, comprising:
(a) an electronic positioning device configured to receive
electromagnetic signals from three or more sources so that said
monitoring system can determine at least one of a subject’s velocity
or pace, wherein said electronic positioning device is provided as
part of a data acquisition unit;
(b) a physiological monitor;
(c) a display unit configured to be worn by a user and for
simultaneously displaying real-time data provided by said electronic
positioning device and said physiological monitor, wherein said
display unit is separate from said electronic positioning device; and
(d) an alarm, wherein said alarm is activated when a subject’s velocity
or pace does not meet a predetermined target.
Id. col.27 l.66-col.28 l.16, col.30 ll.11-27 (emphases added).
Of particular relevance to this case are the structural relationships among the
electronic positioning device, the physiological monitor, and the display unit. As recited
in claim 1, the electronic positioning device and the physiological monitor are both part
of a data acquisition “unit.” Id. col.27 ll.66-67. The ’759 patent refers to the data
acquisition unit interchangeably as a “data acquisition component.” See id. col.3 ll.15-
16 (describing “data acquisition unit (or component)”). Likewise, the display unit is
referred to interchangeably as a “unit” and a “component.” Id. col.3 l.3 (describing “a
2008-1516 4
display unit (or component)”). Concerning the structure of the data acquisition unit, the
specification states that “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.” Id. col.8 ll.36-39. The claims and specification
also indicate that the data acquisition unit—including its component parts—and the
display unit are physically separate from each other. See, e.g., id. col.28 ll.5-6 (claiming
“said display unit separate from said data acquisition unit”) (emphasis added); id. col.3
ll.14-17 (“The electronic positioning device and the physiological monitor may be
provided as part of a user-wearable data acquisition unit (or component) which is
separate from the display unit.”) (emphasis added).
The structural relationships among the electronic positioning device, the
physiological monitor, and the display unit were also addressed during the prosecution
of the ’759 patent. Prior to its second amendment, claim 1 did not include the claim
term “data acquisition unit.” Instead, it recited:
1. (amended) An exercise monitoring system, comprising:
(a) an electronic positioning device;
(b) a physiological monitor, and
(c) a display unit configured for displaying data provided by said
electronic positioning device and said physiological monitor;
wherein said system is configured such that said display unit displays
at least one of a subject’s location, altitude, velocity, pace, and
distance traveled.
Defendant Timex Corporation’s Opening Claim Construction Statement, Doc. No. 21
Ex. 2 (“Doc. 21”), Part M, Paragon Solutions, LLC v. Timex Corp., No. 1:06-CV-677
(S.D. Ohio July 23, 2007) (J.A. 289). The examiner rejected claim 1 (amended) as
2008-1516 5
anticipated by U.S. Patent No. 6,013,007 (“Root”), which the examiner concluded
“disclose[d] an electronic positioning device, a physiological monitor, [and] a display
unit.” Doc. 21, Ex. 2-N (J.A. 295) (citations omitted).
In response, the applicants further amended claim 1 to recite:
1. (twice amended) An exercise monitoring system comprising:
(a) a data acquisition unit comprising an electronic positioning
device and [; (b)] a physiological monitor, said data acquisition
unit configured to be worn by a subject performing a physical
activity; and
(b[c]) a display unit configured for displaying real-time data provided
by said electronic positioning device and said physiological
monitor, said display unit separate from said data acquisition
unit;
wherein said display unit is configured to be worn by the subject, worn
by someone other than the subject, or attached to an apparatus
associated with the physical activity being performed by the
subject so as to be visible to the subject while performing the
physical activity, and
further wherein said system is configured such that said display unit
displays real-time data comprising at least one of a subject’s
location, altitude, velocity, pace, and distance traveled.
Doc. 21, Ex. 2-P (J.A. 310). The applicants also made similar amendments to
application claim 18—which ultimately issued as claim 29. Id. (J.A. 311).
Explaining the addition of the claim term “data acquisition unit” to claim 1, the
applicants remarked:
[C]laim 1 has been amended to require that the electronic positioning
device and physiological monitor are provided as a data acquisition unit
which is configured to be worn by a subject performing a physical activity.
Claim 1 has also been amended to require that the display unit is separate
from the data acquisition unit and is configured to display real-time
data. . . .
2008-1516 6
Similarly, independent claim 18 has been amended to specify that the
electronic positioning device is provided as part of a data acquisition unit
which is separate from the display unit. . . .
The Root patent describes a monitor for providing an athlete with
performance data. In contrast to the structure required by independent
claims 1 and 18, as amended herein, the monitor described in Root is a
unitary structure in which the data acquisition unit and the display screen
are provided as a single unit.
Id. (J.A. 307-08). The claims were allowed as amended. Doc. 21, Ex. 2-Q (J.A. 316). 1
Paragon alleged that various Timex products, 2 including Timex’s Bodylink
watches, infringed at least claims 1 and 29 of the ’759 patent. The parties stipulated
that “[t]he accused Timex products include at least three components: (1) a watch with a
display, (2) a GPS transceiver, and (3) a heart rate monitor.” Stipulation and Order of
Non-Infringement, Doc. No. 42 (“Stipulation”), ¶ 6, Paragon Solutions, LLC v. Timex
Corp., No. 1:06-CV-677 (S.D. Ohio July 10, 2008) (J.A. 525). The parties also
stipulated that, “[f]or all of the accused Timex products, the electronic positioning device
(GPS transceiver) and the physiological monitor (heart rate monitor) are located in
separate physical structures” and “data is separately provided by the physiological
monitor and the electronic positioning device to the display.” Stipulation ¶¶ 8, 9 (J.A.
526).
Additionally, as relevant to the limitation requiring that the “display unit displays
real-time data,” the parties stipulated that the accused Timex products operate as
follows:
The heart rate monitor measures the time between successive heart beats
to calculate an instant heart rate. The monitor averages the last four valid
1
After allowance but prior to issuance, the applicants further amended
Claim 29, but that amendment is not relevant to this appeal.
2
Paragon identified seven accused Timex products as exemplary: T59551,
T5C391, T5E671, T5F011, T5G311, T5J985, T59561, and T56311.
2008-1516 7
rates (valid defined as a rate between 30 and 240 and linearly related).
The average heart rate is wirelessly transmitted to the watch every two
seconds. The wireless transmission takes 0.06 [seconds] (sixty
milliseconds) to complete. Once the information is received by the watch,
there is an additional delay of approximately .1 - 1 second before the
watch will display the individual’s heart rate depending on the other
functions that the watch must complete first (e.g. updating the time or
date).
...
The GPS transceiver wirelessly transmits the speed of the unit and the
distance the unit has traveled since it was powered on every 3.57
seconds. The wireless transmission takes .25 seconds to complete. The
watch uses the information from the GPS transceiver to calculate speed
(based on an algorithmic smoothing of the GPS speed reported), average
speed (calculated based on the distance traveled reported by the GPS
and the time measured by the watch), pace (calculated based on distance
traveled over 17.85 seconds and then inverted), average pace (calculated
based on average speed and then inverted), and distance traveled
(calculated based on the difference between the GPS report of distance
traveled and whatever watch event has been selected—e.g. a split or start
of workout). Once the information is received by the watch, there is an
additional delay of approximately .1 to 1 second before the watch will
display the requested information depending on the other functions that
the watch must complete first (e.g. updating the time or date).
Id. ¶¶ 13-16 (J.A. 526-27).
Following briefing and a Markman hearing, the district court construed disputed
claim terms including “data acquisition unit,” “display unit,” and “displaying real-time
data.” Claim Construction Op. at 2-9. Relying on the doctrine of prosecution disclaimer,
the district court construed “data acquisition unit” as “one structure that includes the
electronic positioning device and the physiological monitor.” Id. at 5. The district court
construed “display unit” as “a unit for displaying real-time data provided by the data
acquisition unit.” Id. at 7. Finally, the district court construed “displaying real-time data”
as “displaying data substantially immediately without contextually meaningful delay so
that the information is displayed in a time frame experienced by people.” Id. at 9. The
2008-1516 8
parties stipulated to noninfringement, subject to Paragon’s right to appeal the district
court’s claim constructions. Stipulation ¶ 18 (J.A. 527-28); Final Judgment at 1.
The district court entered final judgment of noninfringement, and Paragon timely
appealed. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).
II. DISCUSSION
A. 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 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. Paragon disagrees, having argued to the district court that “data
acquisition unit” meant “an assemblage of inter-related components that unify the
function of acquiring data from an electronic positioning device and a physiological
2008-1516 9
monitor.” Id. at 2. On appeal, Paragon offers a slightly modified proposed construction:
“an assemblage of inter-related components that perform the function of acquiring data
from an electronic positioning device and a physiological monitor.” Reply Br. of Plaintiff-
Appellant Paragon Solutions, LLC at 29. Timex argues that the district court’s
construction was correct. The dispute between the parties thus reduces to the question
of whether the data acquisition unit must be a single structure, or whether it can be
made up of physically separate structures.
a. Claim Language
Each party argues that the claim language supports its construction. Timex
argues that the claims “are written in structural terms,” specifying a data acquisition unit
that is “separate from” the display unit. Br. of Appellee Timex Corp. at 31. Paragon
argues that claim 7, which depends from claim 6 and, in turn, claim 1, shows that the
data acquisition unit may be made up of separate structures. Claim 6 recites “[t]he
system of claim 1, wherein said electronic positioning device comprises a GPS device,
and further wherein said data acquisition unit further comprises a support member, and
said GPS device and said physiological monitor are provided on said support member.”
’759 patent col.28 ll.30-34. Thus, in claim 6, the “data acquisition unit” comprises a
support member for both a GPS device (the electronic positioning device) and a
physiological monitor. Claim 7 recites “[t]he system of claim 6, wherein said GPS
device and said physiological monitor are removably secured to said support member.”
Id. col.28 ll.35-37 (emphasis added). Because the GPS device and the physiological
monitor are each “removably secured” to the support member, it stands to reason that
they may be separate structures that are separately removable from the support
member. Thus, claim 7’s recitation of a “removably secured” electronic positioning
2008-1516 10
device and the physiological monitor suggests that the data acquisition unit may be
made up of separate physical structures.
Timex next argues that the recitation in claim 29 that “said electronic positioning
device is provided as part of a data acquisition unit” suggests that the data acquisition
unit must be a single structure that encompasses the electronic positioning device. ’759
patent col.30 ll.15-17 (emphasis added). Paragon counters by pointing out that,
although claim 29 recites that the electronic positioning system is part of the data
acquisition unit, by reciting “a physiological monitor” in a separate limitation, with no
mention of the “data acquisition unit,” it is apparent that the data acquisition unit may be
separate from and need not include the physiological monitor. Contrary to Timex’s
argument, it is our view that the recitation of a “data acquisition unit” in claim 29 casts
doubt on—rather than supports—the district court’s construction of data acquisition unit
as “one structure that includes the electronic positioning device and the physiological
monitor.” Claim Construction Op. at 5 (emphasis added).
From the foregoing, it can be appreciated that while 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).
2008-1516 11
b. Specification
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. As discussed above, the ’759 patent refers interchangeably
to the “data acquisition component” and the “data acquisition unit.” See id. col.3 ll.15-
16.
The drawings of the ’759 patent—in particular figure 1 and its associated text—
are also instructive. Figure 1, reproduced supra, depicts one embodiment of the
exercise monitoring system. Id. col.7 ll.30-32. In that figure, only three structures are
shown and described: an electronic positioning device, a physiological monitor, and a
display unit. Id. fig.1. Each structure is shown separate from each of the other
structures. Id. Figure 1 is consistent with and supports the conclusion that the
electronic positioning device and the physiological monitor may be separate structures.
Timex seeks to avoid the implications of figure 1 by arguing that the specification
discloses two separate embodiments, only one of which is claimed. Specifically, Timex
concedes that, in the configuration depicted in figures 1 and 2, “the electronic
positioning device is separate from the physiological monitor.” Br. of Appellee Timex
Corp. at 32. However, according to Timex, figures 3, 4, and 5 introduce a single-
structure data acquisition unit, and it is only this second embodiment—with a data
acquisition unit—that is claimed. Id. But in the section that appears between the
discussion of figures 2 and 3, the specification makes clear that the invention is not so
limited. See ’759 patent col.8 ll.6-8 (“An exercise monitoring system according to the
2008-1516 12
present invention may comprise a single structure, or may be subdivided into one or
more component structures.”); id. col.8 ll.36-40 (“[T]he data acquisition component of a
monitoring system according to the present invention may even comprise multiple
structures which are physically separate from each other.”). In light of this language, we
disagree with Timex that the structural configuration depicted in figure 1 is nothing more
than an unclaimed embodiment.
c. Prosecution History
The district court did not suggest that either the claim language or the
specification compelled a construction of “data acquisition unit” that was limited to a
single structure. Rather, the district court reasoned that the applicants’ statements
during prosecution in response to the Patent Office’s “notification of problems due to the
preexisting Root patent” 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. Specifically, the district court relied on the applicants’
amendment of claim 1 “to require that the electronic positioning device and
physiological monitor are provided as a ‘data acquisition unit,’” and on the applicants’
argument that the amendment overcame Root “by separating the data acquisition unit
from the display unit which in Root are apparently provided in a single unit.” Id. at 4.
We cannot agree with the district court’s interpretation of the prosecution history.
The examiner rejected claim 1 as anticipated by Root because Root disclosed an
electronic positioning device, a physiological monitor, and a display unit. Doc. 21, Ex.
2-N (J.A. 295). Root disclosed all three elements in a single structure. See, e.g., Root
fig.6. To overcome Root, the applicants amended the claims to separate out the display
unit from the remaining structure. The way that the applicants chose to express this
2008-1516 13
separation was to characterize the electronic positioning device and the physiological
monitor collectively as a “data acquisition unit,” then to add the limitation requiring that
the display unit be separate from the data acquisition unit. See ’759 patent col.27 ll.66-
67, col.28 ll.5-6; Doc. 21, Ex. 2-P (J.A. 308) (“[C]laim 1 has been amended to require
that the electronic positioning device and physiological monitor are provided as a data
acquisition unit . . . . Claim 1 has also been amended to require that the display unit is
separate from the data acquisition unit . . . .”). The applicants argued that this
amendment overcame Root, because “the monitor described in Root is a unitary
structure in which the data acquisition unit and the display screen are provided as a
single unit.” Doc. 21, Ex. 2-P (J.A. 308).
“[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, 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.
2008-1516 14
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
disagrees. Paragon argued to the district court that “a display unit” should be construed
as “an assemblage of inter-related components that unify the function of displaying data
from the electronic positioning device and the physiological monitor.” Id. at 5. On
appeal, Paragon argues that the district court’s construction was wrong in three
respects, each of which we address in turn.
First, 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. Claim 1 recites “a display unit configured for
displaying real-time data provided by said electronic positioning device and said
physiological monitor.” ’759 patent col.28 ll.3-5 (emphasis added). The claim
unambiguously states that the data provided to the display unit comes from both the
electronic positioning device and the physiological monitor. Likewise, the specification
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makes clear that the electronic positioning device and the physiological monitor may be
independently in communication with the display unit, to provide data used in the
display. See, e.g., id. col.3 ll.3-5 (disclosing “a display unit (or component) configured
for displaying data provided by the electronic positioning device and the physiological
monitor”); id. col.7 ll.32-34 (“The system of FIG. 1 generally comprises an electronic
positioning device 5 and a physiological monitor 6, both of which are in electrical
communication with a display unit 7.”); id. figs.1 & 2. Nothing identified by the parties in
the prosecution history undermines the conclusion that the display unit displays data
provided either independently or over a common transmission path from both the
electronic positioning device and the physiological monitor.
The district court’s construction combined the sources of data by incorrectly
substituting “data acquisition unit” for “said electronic positioning device and said
physiological monitor.” Because we have determined that the data acquisition unit may
be made up of multiple structures, it is important to make clear that the data displayed
by the display unit may be obtained from the claimed electronic positioning device and
the claimed physiological monitor either separately or over a common transmission
path.
Second, Paragon argues that “display unit” should not be limited to a single
structure, just as “data acquisition unit” should not be limited to a single structure.
Preliminarily, we note that there is nothing in the district court’s construction that would
appear to limit “display unit” to a single structure. The district court merely concluded
that the display unit must be a “unit”—which is the exact claim term. Moreover, there is
no reason why the word “unit” in the term “display unit” would be limited to a single
2008-1516 16
structure, when the patentee used the word “unit” in “data acquisition unit” to refer to
one or more structures. “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.
Finally, Paragon argues that “display unit” should not have been construed to
require “displaying real-time data,” because the claim recites merely that the display unit
is “configured for displaying real-time data.” ’759 patent col.28 l.3 (emphasis added).
Contrary to Paragon’s argument, the district court did not construe “display unit” to
require “displaying real-time data.” Rather, it construed “display unit” as “a unit for
displaying real-time data.” Claim Construction Op. at 7 (emphasis added). The district
court explained further that “‘for’ denotes a function for which the display unit is
configured.” Id. Paragon was therefore wrong to characterize the district court’s
construction as requiring the display unit to actually “display[] real-time data,” rather
than merely be configured to do so.
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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. As
an alternative basis for affirmance, Timex argues that this construction was incorrect
and that its products cannot infringe under the correct construction. Both before the
district court and on appeal, Timex argues that “displaying real-time data” means
“displaying the measured parameter at the given moment in time that the measurement
of the parameter occurs.” Id. at 8. Paragon argues that the district court’s construction
was correct and that Timex’s proposed construction would require instantaneous
display, which is not possible in practice.
a. Claim Language
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
2008-1516 18
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.
Second, claim 1 identifies five types of “real-time data,” at least one of which
must be displayed: “location, altitude, velocity, pace, and distance traveled.” Three of
these types of real-time data—location, altitude, and distance traveled—require the
electronic positioning device to receive three or more signals that enable the device to
calculate a position. See, e.g., ’759 patent col.3 ll.6-10 (“The electronic positioning
device is configured to receive electromagnetic signals from three or more sources so
that the monitoring system can determine at least one of a subject’s location, altitude,
velocity, pace, and distance traveled.”); id. col.6 ll.46-52 (“The electronic positioning
device uses electromagnetic signals from three or more sources in order to provide data
indicative of one or more of the subject’s location, altitude, velocity, pace and/or
distance traveled. By way of example, the electronic positioning component may
comprise a GPS device which utilizes signals from satellites of the Global Positioning
System . . . .”). Receiving and processing these signals necessarily takes a non-zero
amount of time. See, e.g., id. col.9 ll.27-28 (describing “processing of GPS signals in
order to determine the subject’s location”).
Moreover, the other two of the claimed types of real-time data—velocity and
pace—are calculations of the rate of movement. Because a rate of movement is simply
distance moved over time (or time over distance moved), calculation of a rate of
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movement necessarily requires the passage of a non-zero amount of time. More
particularly, calculation of a rate of movement requires sufficient time to have elapsed to
allow for a meaningful measurement. Similarly, in dependent claim 14, the
“physiological monitor comprises a heart rate monitor.” Id. col.28, ll.51-52. The
measurement of a heart rate necessarily requires the passage of time between at least
two heartbeats.
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.
b. Specification
Each of the parties relies heavily on the specification for its construction of “real
time.” Timex first points out that the specification is critical of prior art that does not
provide “instantaneous” feedback, because “[h]uman nature requires instantaneous
feedback for motivation and encouragement.” ’759 patent col.1 ll.29-30; see also id.
col.23 ll.50-52 (criticizing prior art because runner cannot determine “instantaneous
velocity”). Timex is correct that the specification criticizes the prior art as failing to
provide “instantaneous” feedback. However, taken in context, the specification’s
criticisms are targeted at systems that do not provide any feedback during the course of
the physical activity itself, so that the person engaged in the activity would have the
opportunity to modify his activity in response. Specifically, immediately following the
sentence concerning “instantaneous feedback for motivation and encouragement,” the
specification states:
2008-1516 20
[M]any athletes also do not know how to train effectively for maximal
improvement. For example, competitive runners may have difficulty
determining whether their pace on a particular day of training is too fast or
too slow.
Id. col.1 ll.31-36. The specification also includes a section entitled “Analytical and
Training Methods,” in which it describes in detail the use of the electronic monitoring
system—including various alarms—to allow the user to modify his or her activity in
response to data collected and displayed during the activity. See id. col.23 l.28-col.27
l.63. Thus, the 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.
Timex also relies on the specification’s references to providing data “at any given
moment.” See ’759 patent col.13 ll.4-8 (disclosing that “an individual can use the GPS
device of the monitoring system . . . in order to determine their velocity at any given
moment (e.g., in miles per hour), their pace at any given moment (e.g., in terms of
minutes per mile)”); id. col.13 ll.16-29 (disclosing that “a heart rate monitor device
incorporated into a monitoring system according to the present invention may display a
subject’s heart rate at any given moment”). The problem with Timex’s reliance on the
2008-1516 21
language “at any given moment” is that this language is no more or less clear than “real-
time.” The term “at any given moment” might mean literally instantaneously, or it might
allow for the passage of some amount of time. As the district court recognized, Timex’s
“given moment” language is therefore unhelpful in ascertaining the meaning of “real
time.”
In addition to the portions of the specification identified by the parties and the
district court, we note two additional aspects of the specification relevant to the
construction of “displaying real-time data.” First, the specification expressly states that
the invention can be practiced using commercially available technology. See ’759
patent col.12 ll.1-4 (“In order to provide the above-described functionality, the GPS
device utilized in embodiments of the present invention may employ conventional,
commercially-available components.”); id. col.14 ll.52-55 (“The oximeter device utilized
in embodiments of the present invention may employ commercially-available
components in order to provide the functionality described above.”). Plainly, the
commercial GPS technology available at the time of filing—November 9, 1999—was not
able to display data literally instantaneously. Thus, the fact that the specification
describes embodiments using commercially available products confirms that “displaying
real-time data” does not require instantaneous display.
Second, like the claims, the specification expressly describes measuring rate
data, which necessarily requires the passage of time. See, e.g., ’759 patent col.3 ll.6-10
(“The electronic positioning device is configured to receive electromagnetic signals from
three or more sources so that the monitoring system can determine at least one of a
subject’s location, altitude, velocity, pace, and distance traveled.”) (emphases added);
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id. col.3 ll.11-13 (“The physiological monitor may be chosen from the group consisting
of: an oximeter and a heart rate monitor.”) (emphasis added); id. col.22 ll.16-23
(describing a display unit with regions displaying “the subject’s heart rate (in beats per
minute)” and “the subject’s velocity (in miles per hour or kilometers per hour) or the
subject’s pace (e.g., in minutes per mile)”). In this respect, the specification again
confirms that that “displaying real-time data” must permit the passage of time required
to accurately measure the data that is to be displayed.
Paragon defends the district court’s construction by referring to a separate
portion of the specification—the only part of the specification in which the term “real-
time data” actually appears. That portion of the specification states that “[t]he systems
and methods of the present invention, for example, provide real-time data and feedback
useful to individuals performing a physical activity (such as athletes).” ’759 patent col.6
ll.39-41. According to Paragon, this sentence supports the district court’s construction
of real-time as “substantially immediately without contextually meaningful delay.” Claim
Construction Op. at 9. In essence, in the views of both Paragon and the district court,
the amount of delay that the system can impose and still be “displaying real-time data”
depends on the use to which the system is being put. Under the district court’s
construction, if the system is being used in a “context” in which the delay is
“meaningful,” then the “displaying real-time data” limitation is not met; if, however, the
system is being used in a “context” in which the delay is not “meaningful,” the display is
in “real-time” and the limitation is met. Thus, the district court offers as an example that,
“for a runner, [data must be displayed] presumably within the stride” to meet the
“displaying real-time data” limitation. Id. at 8.
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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
2008-1516 24
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”).
c. Prosecution History
Timex argues that the prosecution history supports its construction requiring
instantaneous display of data. Specifically, Timex argues that “the applicants stressed
the ‘real-time data’ limitation in their Remarks to overcome the Examiner’s rejections”
and “argued that the ‘real-time data’ limitation was supported by the specification,”
which “disparages non-instantaneous systems.” Br. of Appellee Timex Corp. at 58.
2008-1516 25
To the contrary, we conclude that the prosecution history offers further evidence
that “real-time,” as used in this case, does not mean instantaneous. After claims 1 and
18 were rejected as anticipated by Root, the applicants amended the claims to add the
“displaying real-time data” limitation. Doc. 21, Ex. 2-P (J.A. 310); id., Ex. 2-Q (J.A.
318). In their remarks, the applicants stated, “Furthermore, the personal computer
depicted in Fig. 7 of Root cannot be used to display real-time data, as required by claim
1. Rather, the personal computer in Fig. 7 of Root will merely display performance data
after the athlete has completed their activity.” Doc. 21, Ex. 2-P (J.A. 308). The
applicants similarly remarked that “Claim 18 also requires that the display unit display
real-time data acquired by the electronic positioning device.” Id. (J.A. 309). The
applicants’ remarks distinguishing Root therefore echo the criticism of the prior art in the
specification. In the applicants’ view, the invention is preferable because it does not
intentionally delay the display of data by storing it for later review after the athlete has
completed his or her activity (as in Root). Rather, in this invention, the data is displayed
without any intentional delay—i.e., in “real time.”
d. Extrinsic Evidence
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
2008-1516 26
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. See Rudolf F. Graf, Modern Dictionary of Electronics 627 (7th ed. 1999)
(including definition of “real time” as “The performance of a computation during the
actual time that the related physical process transpires in order that results of the
computations are useful in guiding the physical process”); id. (including definition of
“real-time operation” as “Data-processing technique in which information is utilized as
events occur and the information is generated, as opposed to batch processing at a
time unrelated to the time the information was generated”); IEEE 100: The Authoritative
Dictionary of IEEE Standards Terms (7th ed. 2000) (including definition of “real time”
related to “software” as “Pertaining to a system or mode of operation in which
computation is performed during the actual time that an external process occurs, in
order that the computation results can be used to control, monitor, or respond in a
timely manner to the external process. Contrast: batch.”); Steven M. Kaplan, Wiley
Electrical and Electronics Engineering Dictionary 639 (2004) (including definition of
“real-time” as “In computers, that which is processed, or otherwise acted upon, without
any delay.”); Harry Newton, Newton’s Telecom Dictionary 758 (22d ed. 2006) (“In data
processing or data communications, real time means the data is processed the moment
2008-1516 27
it enters a computer, as opposed to BATCH processing where the information enters
the system, is stored and is operated on [at] a later time.”).
For the foregoing reasons, we modify the district court’s construction of
“displaying real time data” to reflect that, while the data need not be displayed
instantaneously, it must be displayed without any intentional delay, taking into account
the processing limitations of the system and the time required to accurately measure the
data. We therefore construe “displaying real-time data,” as used in the claims of this
case, as “displaying data without intentional delay, given the processing limitations of
the system and the time required to accurately measure the data.”
B. Infringement
The district court entered judgment of noninfringement as a result of Paragon’s
stipulation that the accused Timex products did not infringe based on the district court’s
construction of disputed claim terms. Final Judgment at 1. 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].”).
As an alternative basis for affirmance, Timex argues that its accused products
cannot meet the “displaying real-time data” limitation under “any proper construction.”
Br. of Appellee Timex Corp. at 58. Specifically, Timex argues that the parties have
stipulated that, in the accused products, there is at least a 2.16-second delay in the
display of heart rate data and a 3.92-second delay in the display of speed, pace, or
distance. See Stipulation ¶ 16 (J.A. 527). Timex argues that this delay demonstrates
2008-1516 28
that the accused Timex products do not display data in real time, and that it is therefore
entitled to judgment of noninfringement as a matter of law.
As we have held, “displaying real-time data” in the claims of this case permits
some delay, but does not permit an intentional delay, given the processing limitations of
the system and the time required to accurately measure the data. The stipulation does
not make clear whether there is any intentional delay in the display of data in the
accused Timex products. To the contrary, the stipulation indicates that at least some
portion of the 2.16-second and 3.92-second delays are attributable to processing
limitations. See id. ¶ 13 (J.A. 526) (“The wireless transmission takes 0.06 (sixty
milliseconds) to complete.”); id. (“Once the information is received by the watch, there is
an additional delay of approximately .1 - 1 second before the watch will display the
individual’s heart rate depending on the other functions that the watch must complete
first (e.g. updating the time or date).”); id. ¶ 16 (J.A. 527) (“The wireless transmission
takes .25 seconds to complete.”); id. (“Once the information is received by the watch,
there is an additional delay of approximately .1 to 1 second before the watch will display
the requested information depending on the other functions that the watch must
complete first (e.g. updating the time or date).”) The stipulation also strongly suggests
that at least some part of the delay is attributable to the time required to accurately
measure the data—in particular, sampling of various rates. See id. ¶ 13 (J.A. 526)
(“The monitor averages the last four valid rates (valid defined as a rate between 30 and
240 and linearly related). The average heart rate is wirelessly transmitted to the watch
every two seconds.”); id. ¶ 16 (J.A. 527) (discussing calculation of pace as “based on
distance traveled over 17.85 seconds and then inverted”).
2008-1516 29
At oral argument, counsel for Timex argued for the first time that the accused
Timex products incorporate an intentional delay between the time at which data is
acquired, and the time at which it is displayed. See Oral Arg. at 28:54-29:10, available
at http://oralarguments.cafc.uscourts.gov/mp3/2008-1516.mp3 (“The Court: Are you
suggesting you have a built-in delay here? Timex: We do. . . . It’s an issue of battery.
Battery life. Maintaining battery life.”). Because the parties’ stipulation makes no
mention of any intentional delay between the time at which data is acquired and the
time at which it is displayed for the purpose of maintaining battery life, and because the
factual question of whether the accused products incorporate such an intentional delay
precludes us from concluding as a matter of law that Timex’s accused products do not
satisfy the “displaying real-time data” limitation, we reject Timex’s alternative basis for
affirmance.
III. CONCLUSION
For the foregoing reasons, we modify the district court’s claim constructions. As
used in the ’759 patent, “data acquisition unit” means “a structure or set of structures
that includes at least the electronic positioning device and the physiological monitor”;
“display unit” means “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”; and
“displaying real-time data” means “displaying data without intentional delay, given the
processing limitations of the system and the time required to accurately measure the
data.” Accordingly, we vacate the judgment of noninfringement and remand for further
proceedings consistent with this opinion.
VACATED AND REMANDED
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COSTS
Each party shall bear its own costs.
2008-1516 31