Federal Circuit Finds Disclaimer in “Present Invention” Language
By Michael Bonella // March 11, 2015
In Pacing Techs., LLC v. Garmin Int’l, Inc. and Garmin USA, Inc., No. 2014-1396 (February 18, 2015 Fed. Cir.). the Federal Circuit upheld a disclaimer finding based on a statement that the all of the objects and features of the “ present invention” are accomplished by certain structure. Pacing Technologies’ patent listed a “principal object” of the present invention and eighteen additional features that were each described as an “object of the present invention.” The Federal Circuit explained that such “object of the invention” language will not always rise to the disclaimer level and where a patentee includes a long list of different objects of the invention it is unlikely that an inventor intended each claim to be limited to all of the objects. But here the Federal Circuit found a disclaimer because the patentee “went further” and “included additional language that constitute[d] an unmistakable disclaimer when considered in the context of the patent as a whole.” In particular, immediately after listing the objects of the “present invention,” the patentee stated that all of the objects “and other objects and features of the present invention are accomplished, as embodied and fully described herein, by a repetitive motion pacing system that includes . . . a data storage and playback device adapted to producing the sensible tempo.” According to the Federal Circuit, this language “alert[ed] the reader that the invention accomplishes all of its objects and features” with a repetitive motion pacing system that includes a data storage and playback device adapted to produce a sensible tempo” and the patentee limited the claims based on this language.