Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075 (2009)
`91 U.S.P.Q.2d 1082
`
`
`
`KeyCite Yellow Flag - Negative Treatment
` Distinguished by Compressor Products Intern. LLC v. Graco, Inc.,
`S.D.Tex., November 19, 2013
`566 F.3d 1075
`United States Court of Appeals,
`Federal Circuit.
`
`PARAGON SOLUTIONS, LLC, Plaintiff–Appellant,
`v.
`TIMEX CORPORATION, Defendant–Appellee.
`
`No. 2008–1516.
`|
`May 22, 2009.
`
`Synopsis
`Background: Owner of patent disclosing an exercise
`monitoring system brought infringement action against
`competitor. Following claim construction, the United
`States District Court for the Southern District of
`Ohio, Michael R. Barrett, J., entered final judgment of
`noninfringement on the parties stipulation. Patent owner
`appealed.
`
`Holdings: The Court of Appeals, Linn, Circuit Judge, held
`that:
`
`[1] term “data acquisition unit” meant a structure or set
`of structures including at least the electronic positioning
`device and the physiological monitor;
`
`[2] term “display unit” meant 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] term “displaying real-time data” meant displaying data
`without intentional delay, given the processing limitations
`of the system and the time required to accurately measure
`the data; and
`
`[4]
`
`[4] fact question precluded judgment of noninfringement
`as a matter of law.
`
` © 2017 Thomson Reuters. No claim to original U.S. Government Works.
`
`1
`
`Vacated and remanded.
`
`West Headnotes (16)
`
`[1]
`
`[2]
`
`[3]
`
`Patents
`De novo review in general
`Patent claim construction is an issue of law
`that a court of appeals reviews de novo.
`
`Cases that cite this headnote
`
`Patents
`State of the art
`Court of appeals determines the ordinary and
`customary meaning of undefined patent 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..
`
`10 Cases that cite this headnote
`
`Patents
`Multiple sources for construction
`Patents
`Extrinsic Evidence
`In construing a patent claim term, a 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.
`
`7 Cases that cite this headnote
`
`Patents
`Measuring, testing, and indicating
`devices
`Term “data acquisition unit,” in patent
`disclosing an exercise monitoring system,
`meant a structure or set of structures including
`
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`

`Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075 (2009)
`91 U.S.P.Q.2d 1082
`
`[5]
`
`[6]
`
`[7]
`
`at least the electronic positioning device and
`the physiological monitor.
`
`Cases that cite this headnote
`
`Patents
`Particular patents and claims
`Owners of patent disclosing an exercise
`monitoring system clearly and unmistakably
`disavowed
`a
`single
`structure
`that
`encompassed an electronic positioning device,
`a physiological monitor, and a display unit,
`but did not clearly and unmistakably disavow
`a monitoring system with more than two
`structures, during patent prosecution, so as
`to limit the meaning of the “data acquisition
`unit” claim term, by amending claims to
`require a separate data acquisition unit and
`display unit, and by remarking that this
`distinguished the “unitary structure” of the
`prior art patent.
`
`1 Cases that cite this headnote
`
`Patents
`Rejection and Amendment of Claims;
` Prosecution History
`A patentee may limit the meaning of a claim
`term by making a clear and unmistakable
`disavowal of scope during prosecution.
`
`1 Cases that cite this headnote
`
`Patents
`Measuring, testing, and indicating
`devices
`Term “display unit,” in patent disclosing
`an exercise monitoring system, meant 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.
`
`5 Cases that cite this headnote
`
`[8]
`
`Patents
`
`Construction of Particular Claims as
`Affected by Other Claims
`In construing patent claim terms, a court
`applies 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.
`
`21 Cases that cite this headnote
`
`Patents
`Measuring, testing, and indicating
`devices
`Term “displaying real-time data,” in patent
`disclosing an exercise monitoring system,
`meant displaying data without intentional
`delay, given the processing limitations of the
`system and the time required to accurately
`measure the data.
`
`8 Cases that cite this headnote
`
`Patents
`Products or devices
`Apparatus patent claims cover what a device
`is, not what a device does.
`
`8 Cases that cite this headnote
`
`Patents
`In general; comparison with patent
`claims
`Absent an express limitation to the contrary,
`any use of a device that meets all of the
`limitations of an apparatus patent claim
`written in structural terms infringes that
`apparatus claim.
`
`12 Cases that cite this headnote
`
`[9]
`
`[10]
`
`[11]
`
`[12]
`
`Patents
`In general; comparison with patent
`claims
`Construing a non-functional patent term in an
`apparatus claim in a way that makes direct
`
` © 2017 Thomson Reuters. No claim to original U.S. Government Works.
`
`2
`
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`Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075 (2009)
`91 U.S.P.Q.2d 1082
`
`[13]
`
`[14]
`
`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.
`
`9 Cases that cite this headnote
`
`Patents
`Dictionaries, encyclopedias, treatises, and
`other reference works
`Dictionaries and treatises can be useful in
`patent 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
`terms.
`
`4 Cases that cite this headnote
`
`Patents
`Judgment as a matter of law
`Factual question of whether accused products
`incorporated an intentional delay between
`the time at which data was acquired and
`the time at which it was displayed, so
`as to not meet “displaying real-time data”
`limitation of patent disclosing an exercise
`monitoring system precluded judgment of
`noninfringement as a matter of
`law
`in
`infringement action.
`
`6 Cases that cite this headnote
`
`[15]
`
`Patents
`In general; utility
`US Patent 6,013,007. Cited as Prior Art.
`
`1 Cases that cite this headnote
`
`[16]
`
`Patents
`In general; utility
`US Patent 6,736,759. Construed.
`
`Cases that cite this headnote
`
`Attorneys and Law Firms
`
`*1077 James D. Liles, Porter, Wright, Morris & Arthur
`LLP, of Cincinnati, OH, argued for plaintiff-appellant.
`With him on the brief was Bryan R. Faller, of Columbus,
`OH.
`
`John R. Horvack, Jr., Carmody & Torrance LLP, of New
`Haven, CT, argued for defendant-appellee. With him on
`the brief was Fatima Lahnin.
`
`Before BRYSON, LINN, and MOORE, Circuit Judges.
`
`Opinion
`
`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. *1078 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
`
` © 2017 Thomson Reuters. No claim to original U.S. Government Works.
`
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`Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075 (2009)
`91 U.S.P.Q.2d 1082
`
`“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:
`
`FIG. 1
`
`*1079
`
`FIG. 3
`
`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
`
`(b) a display unit configured for displaying real-
`time data provided by said electronic positioning
`device and said physiological monitor, *1080 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
`
` © 2017 Thomson Reuters. No claim to original U.S. Government Works.
`
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`Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075 (2009)
`91 U.S.P.Q.2d 1082
`
`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:
`
`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).
`
`(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;
`
`the electronic
`The structural relationships among
`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:
`
`(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 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
`
`(amended) An exercise monitoring
`1.
`comprising:
`
`system,
`
`(a) an electronic positioning device;
`
`(b) a physiological monitor, and
`
`*1081 (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, 2007 WL 5271272 (S.D.Ohio July
`23, 2007) (J.A. 289). The examiner rejected claim 1
`(amended) as 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
`
` © 2017 Thomson Reuters. No claim to original U.S. Government Works.
`
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`Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075 (2009)
`91 U.S.P.Q.2d 1082
`
`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....
`
`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
`
`*1082 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
`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
`
` © 2017 Thomson Reuters. No claim to original U.S. Government Works.
`
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`

`Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075 (2009)
`91 U.S.P.Q.2d 1082
`
`(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).
`
`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).
`
`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.” *1083 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 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.
`
`judgment of
`final
`entered
`court
`The district
`noninfringement, and Paragon timely appealed. We have
`jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).
`
`II. DISCUSSION
`
`A. Claim Construction
`
`[3]
`[2]
`[1]
` 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
`
`1. “data acquisition unit”
`
`[4]
` 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 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 *1084 both a GPS device (the electronic positioning
`
` © 2017 Thomson Reuters. No claim to original U.S. Government Works.
`
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`Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075 (2009)
`91 U.S.P.Q.2d 1082
`
`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 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).
`
`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
`*1085 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 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
`
` © 2017 Thomson Reuters. No claim to original U.S. Government Works.
`
`8
`
`IPR2018-00294
`Apple Inc. EX1023 Page 8
`
`

`

`Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075 (2009)
`91 U.S.P.Q.2d 1082
`
`depicted in figure 1 is nothing more than an unclaimed
`embodiment.
`
`c. Prosecution History
`
`[5]
` 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 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).
`
`[6]
` “[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 *1086 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.
`
`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 un