United States District Court, D. Utah
MEMORANDUM DECISION AND ORDER CONSTRUING CLAIMS
PURSUANT TO MARKMAN HEARING
Waddoups, United States District Judge.
Polar Electro Oy (“Polar”) owns a patent that
addresses interference-tolerant transmission of heartbeat
signals (the ‘346 patent) and another patent that
addresses determining a person's energy consumption
during exercise (the ‘227 patent). Polar asserts that
Suunto Oy and Amer Sports Winter & Outdoor (collectively
“Suunto Oy”) have infringed both patents and that
Firstbeat Technologies Oy has infringed the ‘227
8, 2018, the court held a hearing pursuant to Markman v.
Westview Instruments, Inc., 52 F.3d 967 (Fed.
Cir. 1995), aff'd, 517 U.S. 370 (1996), to
construe disputed claim terms. The court determined during
the hearing that the issue was premature, and reserved ruling
on the matter. Hearing Tr., at 114, 116 (ECF No.
283). On December 5, 2019, the court held a
hearing to address various matters and notified the parties
of its proposed claim construction based on a review of the
record, oral argument, and additional briefing. This
memorandum decision now sets forth the court's claim
construction for all terms except “calculating unit for
calculating.” Expert evidence as to what one skilled in
the art knows is needed for the remaining term.
patents at issue are U.S. Patent No. 5, 611, 346 and U.S.
Patent No. 6, 537, 227. The ‘346 patent focuses on
“coding a pulse signal . . . in such a way that it is
possible to pick up the correct signals” even in an
environment where there is interference. ‘346 patent,
col. 1:45 46 (ECF No. 205-9). The patent is now expired, but
Polar filed its infringement action prior to its expiration.
‘227 patent focuses on an improved method for
determining a person's energy consumption during exercise
that “take[s] into account that a fit person performs a
larger amount of work at a given heart rate level than an
unfit person, ” and that energy consumption is thereby
impacted. ‘227 patent, col. 1:42 45 (ECF No. 205-1).
The ‘227 patent has undergone three re-examinations
that modified the original claims. The claims from the second
reexamination are at issue in this memorandum decision. The
third reexamination confirmed the patentability of those
claims and added new claims, ‘227 patent, Re-exam Cert.
C3, col. 1:15 19 (ECF No. 205-4), but the prosecution history
from each of the reexaminations is relevant to this case.
parties filed a Joint Claim Construction Chart (ECF No. 250)
on March 9, 2018. The chart reflects the terms in dispute,
which the court addresses below.
purpose of claim construction is to ‘determine the
meaning and scope of the patent claims asserted to be
infringed.'” 02 Micro Int'l, Ltd. v. Beyond
Innovation Tech. Co., 521 F.3d 1351, 1360 (Fed. Cir.
2008) (quoting Markman, 52 F.3d at 976) (alteration
omitted). Disputes about the meaning and scope of a claim
must be resolved by the court, not the jury. See Id.
A court “must begin with the words of the claims
themselves.” Amgen Inc. v. Hoechst Marion Roussel,
Inc., 457 F.3d 1293, 1301 (Fed Cir. 2006) (citation
omitted). The court then construes a term based on its
ordinary and customary meaning to one skilled in the art
“at the time of the invention.” Phillips v.
AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005). A court
views the term “in the context of the entire patent,
including the specification, ” as well as the
prosecution history. Amgen Inc., 457 F.3d at 1301
(quotations and citations omitted). When needed, a court also
may use extrinsic evidence to determine the meaning of a
term. Id. (citations omitted).
‘346 PATENT TERMS DISPUTED BY THE
following are the terms in dispute for the ‘346 patent,
and the court's construction of the terms.
Term 1:Forming groups of data pulses (Claim 1)
contends Term 1 needs no construction. Joint Claim Chart, at
7 (ECF No. 250). Suunto contends the term means
“forming uniform groups of data pulses from an
analog signal.” Id. (emphasis added).
According to Suunto, an analog signal is required because
Polar disclaimed binary coding when distinguishing prior art
during the patent prosecution.
patent “applicant can make a binding disavowal of claim
scope in the course of prosecuting the patent, through
arguments made to distinguish prior art references.”
Cordis Corp. v. Medtronic Ave, Inc., 511 F.3d 1157,
1177 (Fed. Cir. 2008). “Such argument-based disavowals
will be found, however, only if they constitute clear and
unmistakable surrenders of subject matter.”
Id. (citations omitted). Additionally, “the
scope of such a disavowal will depend on the nature of the
argument made by the patentee.” Id. Thus,
“even in the case of an unequivocal disavowal of claim
scope, the court must construe the claim congruent with the
scope of the surrender.” Id. (quotations and
case, Polar distinguished the Gorman patent (U.S. Patent No.
5, 400, 794) to overcome claim rejection. The first paragraph
of its disclaimer states:
The Gorman reference uses a digital binary identification
sequence. The present invention employs
time-interval coding of both the heartbeat data
per se and the identification pulses. Such
time-interval coding is not taught or suggested by the Gorman
reference. In the Gorman reference, every binary bit of the
identification must be received, i.e., every bit of
the identification sequence has some meaning. In the
present invention, it is only necessary to receive the peaks
of the identification signals defining the time
Patent Prosecution History, at 13 14 (ECF No. 205-11)
(underlining in original, italics added). A person's
heart beat necessarily is based on an analog signal
initially, although it may be converted to digital
thereafter. Polar separately specified that the patent's
“identification pulses” are analog in order to
distinguish Gorman because Gorman taught a digital binary
identification sequence. The second paragraph of the
disclaimer further details its scope:
[R]egarding the Examiner's comments on the various binary
sequences, as contained in paragraph 7 of the Office Action,
Applicants note that these binary sequences are constrained
to have discrete numbers of “zero” bits
between the “one” bits. Not only is the
identification process with the presently claimed
invention time-interval coded (as opposed to binary), it can
inherently have an infinite and continuous
number of possible time intervals to identify the
transmitter to the receiver. This is to be contrasted with
the Gorman reference wherein the binary “ones”
must inherently be separated by a finite and
discrete number of binary “zeros.”
Applicants therefore respectfully submit that the
time-interval coded identification pulses defined in
the amended claims cannot fairly be said to read upon the
8-bit binary identification codes of the
Id. at 14 (underlining in original, italics added).
Based on the above, the court concludes Polar expressly
limited the patent's identification pulses to be only
analog signals and not binary.
a clear disclaimer exists with respect to the
“identification pulses, ” that term is not before
the court. Instead, the term at issue is “groups of
data pulses.” As detailed in the Specification, not all
data pulses are identification pulses. See e.g.,
‘346 patent, col. 3:26 44, 4:46 66 (ECF No. 205-9).
Polar only distinguished Gorman based on the identification
pulses. The court therefore concludes that it would be
improper to apply the analog-signal disclaimer to all other
data pulses in the patent. Moreover, neither the disclaimer
nor the patent requires all of the groups of data pulses to
court concludes Term 1 may be understood according to its
plain meaning and that no construction is necessary.
Term 2:A first time interval (Claims 1, 8, 9, and
contends Term 2 needs no construction. Its plain meaning is
an interval of time. Joint Claim Chart, at 7 (ECF No. 250).
Suunto contends the term means “a predetermined time
period between the first and second identification
stated above, the Federal Circuit has said “that claims
must be read in view of the specification, of which they are
a part.” Praxair, Inc. v. ATMI, Inc., 543 F.3d
1306, 1324 (Fed. Cir. 2008) (quotations and citations
omitted). A patent's specification “is the single
best guide to the meaning of a disputed term.”
Id. (quotations and citations omitted).
Nevertheless, a court must be careful not to
“impermissibly import limitations from the
specification.” Alloc, Inc. v. Int'l Trade
Comm'n, 342 F.3d 1361, 1370 (Fed. Cir. 2003)
(citation omitted). When the specification consistently
emphasizes a particular feature of the invention, such that
the very nature of the claim requires the feature, it is
permissible to read that feature into a claim. Id.;
Praxair, Inc., 543 F.3d at 1324 (citations omitted).
case, the Specification consistently states there must be a
specific time period between the first and second
identification pulses so that the receiver identifies the
particular transmission. See e.g. ‘346 patent,
col. 1:50 55, 4:55-59 (ECF No. 205-9). This is something
required by the very nature of the claim. Indeed, the
The only essential thing is that the time interval between
the two identification pulses contained in the transmission
corresponds to the specific time interval determined
for each transmitter-receiver.
Id. col. 5:42 45. This indicates the time interval
must be “specific.” Using the language from the
patent itself, the court construes the term to mean “A
specific time period between the first and second
Term 3: By means of sensing said first time ...