Polar Electro Oy v. Suunto Oy et al
Filing
394
MEMORANDUM DECISION AND ORDER CONSTRUING CLAIMSPURSUANT TO MARKMAN HEARING -denying 207 Motion for Claim Construction; granting in part and denying in part 209 Motion to Determine Markman Issues. See Order for details. Signed by Judge Clark Waddoups on 12/11/19. (jmr)
IN THE UNITED STATES DISTRICT COURT
DISTRICT OF UTAH
POLAR ELECTRO OY,
MEMORANDUM DECISION
AND ORDER CONSTRUING CLAIMS
PURSUANT TO MARKMAN HEARING
Plaintiff,
v.
SUUNTO OY, AMER SPORTS WINTER &
OUTDOOR d/b/a/ SUUNTO USA, and
FIRSTBEAT TECHNOLOGIES OY,
Case No. 1:17-cv-0139 CW
Judge Clark Waddoups
Defendants.
INTRODUCTION
Plaintiff 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 patent.
On May 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).1 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.
BACKGROUND
The two 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.
The ‘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 reexaminations 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.
1
When referring to a page number in the record, the court references the ECF page
numbering at the top of the page and not the numbering at the bottom of a document or the appendix
numbering provided by the parties.
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The 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.
ANALYSIS
“The 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).
I.
‘346 PATENT TERMS DISPUTED BY THE PARTIES.
The following are the terms in dispute for the ‘346 patent, and the court’s construction of the
terms.
A.
Term 1:
Forming groups of data pulses (Claim 1)
Polar 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
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binary coding when distinguishing prior art during the patent prosecution.
A 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
citation omitted).
In this 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 timeinterval 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 interval.
‘346 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:
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[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 timeinterval 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 Gorman
reference.
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.
Although 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 be uniform.
The court concludes Term 1 may be understood according to its plain meaning and that no
construction is necessary.
B.
Term 2:
A first time interval (Claims 1, 8, 9, and 10)
Polar 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
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between the first and second identification pulses.” Id.
As 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).
In this 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 Specification states:
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 identification pulses.”
C.
Term 3:
By means of sensing said first time interval (Claim 1)
Polar contends this is a method claim step that explains how the claimed method identifies
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groups of pulses by sensing a time interval. Joint Claim Chart, at 7 (ECF No. 250). Suunto contends
the term is to be construed as a means-plus-function under 35 U.S.C. § 112, ¶ 6. Id. According to
Suunto, the structure is “a receiver” and the function is “sensing a first time interval.” Id.
When determining if a claim element constitutes a means-plus-function term, “[t]he use of
the term ‘means’ triggers a rebuttable presumption that § 112, ¶ 6 governs the construction of the
claim term.” Robert Bosch, LLC v. Snap-On Inc., 769 F.3d 1094, 1097 (Fed. Cir. 2014) (citation
omitted). If “the claim language does not recite the term ‘means,’ [courts] presume that the
limitation” is not a means plus function. Id. (citation omitted).
Here, the term does use “means” but the complete phrase is “by means of.” With respect to
that phrase, the Federal Circuit has stated:
We are unaware of any precedent stating that the presumption is
triggered by a claim’s use of the expression “by means of.” In the
past we have applied the presumption when a claim uses the word
“means” as a noun in the claim: a “means” for doing something. We
have not done so for the phrase “by means of.”
Id. at 1098 99. Accordingly, a presumption does not exist that this is a means plus function term.
Claim 1 is a “method comprising the steps of.” The claim then list five steps. Paragraph 1(d)
identifies a receiver and paragraph 1(e) explains how the data is processed once it is received. ‘346
patent, col. 1:65, 2:1 4 (ECF No. 205-9). It shows how the elements are connected together and
“describe[s] how these components perform the claimed functions.” Media Rights Techs., Inc. v.
Capital One Fin. Corp., 800 F.3d 1366, 1372 (Fed. Cir. 2015). Under such circumstances, this is
not a means plus function, and the court concludes the term needs no construction.
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II.
‘227 PATENT TERMS DISPUTED BY THE PARTIES.
The following are the terms in dispute for the ‘227 patent, and the court’s construction of
the terms.
A.
Term 4:
Substantially linear dependent on the heart rate parameter
(Claims 5, 6, 21, and 22)
Polar contends Term 4 needs no construction because it is understood according to its plain
meaning. Joint Claim Chart, at 2 (ECF No. 250). Defendants contend the term means, “within a
10% range of variation with respect to exact linear dependence between heart rate and energy
consumption.” Id.
In the “Brief Description of the Invention,” the preferred embodiments are discussed.
Afterwards, the Specification states, “[i]n the above-described embodiments the expression
substantially linear refers to dependences that are within a 10% range of variation in either direction
with respect to linear dependence.” ‘227 patent, col. 2:63 66 (ECF No. 205-1). The question is
whether Polar intended to act as its own lexicographer when it specified this range.
In Thorner v. Sony Computer Entertainment America LLC, 669 F.3d 1362, 1365 (Fed. Cir.
2012), the Court stated to be “its own lexicographer, a patentee must clearly set forth a definition of
the disputed claim term other than its plain and ordinary meaning.” (Quotations and citation
omitted). It is not enough for the patentee to use a word in the same manner in all of the
embodiments. Id. (citations omitted). Examples of clear lexicography include saying “this term
means . . .” or “the term is defined as . . . .” Id. at 1366 (citations omitted). In other words, it is an
exacting standard that requires “clearly set[ting] forth a definition” and “clearly express[ing] an
intent to define the term.” GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed.
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Cir. 2014) (citation omitted).
As stated above, a court must be careful not to “impermissibly import[] limitations from the
specification,” Alloc, Inc., 342 F.3d at 1370 (citation omitted), unless “the specification consistently
emphasizes a particular feature of the invention, such that the very nature of the claim requires the
feature.” Id.; Praxair, Inc., 543 F.3d at 1324.
Firstbeat offers Epcon Gas Systems, Inc. v. Bauer Compressors, Inc., 279 F.3d 1022 (Fed.
Cir. 2002), as an example of the Federal Circuit imposing a numerical limitation with respect to the
word “substantially.” In Epcon, the Court noted that “substantially” had two different uses within
the patent. One “denote[d] language of approximation.” Id. at 1031. The other “signifie[d]
language of magnitude.” Id. With respect to the one signifying magnitude, the Court found the
prosecution history added a numerical limitation. Id. In other words, that limitation was not derived
from the language itself.
In this case, “substantially” is used to denote an approximation and not a magnitude. The
10% variation range is mentioned once in the patent and refers to the variation range in the preferred
embodiments. Although used in the preferred embodiments, the 10% range is not required by the
very nature of the claim. There must be an approximate linear correlation between a person’s heart
rate and energy consumption, but there is nothing necessitating the 10% variation range.
Moreover, Polar did not show a clear intent to act as its own lexicographer. Had Polar stated
“substantially linear” refers to a 10% range of variation, then such language may have signaled a
specific definition and intent. Polar, however, did not state that. Instead, Polar stated, “[i]n the
above-described embodiments, the expression substantially linear refers to . . . .” ‘227 patent, col.
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2:63 64 (ECF No. 205-7).
The introductory phrase limits the reference to the specified
embodiments. Thus, taken as a whole, the court concludes Polar used the 10% range in the
embodiments, but did not manifest a clear intent to use that definition to limit claim language.
The court also concludes, however, that the term may not be understood according to its plain
meaning. It construes the term to mean “Approximate linear correlation between heart rate and
energy consumption.”
B.
Term 5:
a maximal oxygen uptake (Claims 5, 6, 21, and 22)
Polar contends Term 5 means “a value associated with a person corresponding to maximal
oxygen uptake that describes the person’s physical performance at a maximum heart rate associated
with the person.” Joint Claim Chart, at 2 (ECF No. 250). Defendants contend the term means “A
person’s maximum value of oxygen uptake measured during maximum performance on the bases
of the breathing gases.” Id. (emphasis added).
Similar to Term 1, Defendants assert their construction is required due to a disclaimer made
by Polar during the reexaminations of the ‘227 patent. Again, “[s]uch argument-based disavowals
will be found . . . only if they constitute clear and unmistakable surrenders of subject matter.” Cordis
Corp., 511 F.3d at 1177 (citations omitted). “Moreover, the scope of such a disavowal will depend
on the nature of the argument made by the patentee,” and any construction must be “congruent with
the scope of the surrender.” Id. (quotations and citation omitted).
Following the first request for reexamination of the ‘227 patent, the examiner stated his
reasons for patentability and/or confirmation of the claims. The examiner found the following:
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Lubell teaches that actual submaximal oxygen uptake is calculated at
regular intervals (e.g., one minute) and that this parameter is used to
calculate caloric consumption during training. Lubell’s intent
therefore is not to extrapolate the energy consumption values from
previously charted regression lines, but rather to measure the
subject’s fitness automatically based upon measured parameters. As
such, it would appear that Lubell actually teaches away from this
proposed combination . . . .
Statement of Reasons, at 7 (ECF No. 205-6) (internal citations omitted).
These reasons show
Polar’s patent was distinguished over the prior art because the prior art focused on measurements
of submaximal oxygen uptake, whereas Polar’s patent did not.
During the second reexamination, the examiner stated his reasons for patentability and or
confirmation of the claims. Specifically, the examiner stated, “[e]ach of the independent claims
now specifies that the person’s physical performance is described using ‘maximal’ oxygen uptake.”
Statement of Reasons, at 7 (ECF No. 205-7). With respect to the “energy consumption reference
value,” further language was added to clarify what it is:
[The] maximum value of the energy consumption associated with the
person, the maximum value of energy consumption representing a
value of energy consumption that is associated with the person and
corresponds to a maximum heart rate associated with the person.
Id. The examiner noted “Jimenez provides an indication of maximum oxygen uptake, which is
correlated with a fitness factor for the subject, but this is not used to obtain an energy consumption
reference value.” Id. Jimenez also “uses consumed oxygen as a parameter, but never specifies that
the value is taken when maximal oxygen uptake occurs.” Id. Moreover, “[t]he only maximum used
by Jimenez is to determine the fitness factor.” Id. The examiner concluded, “Jimenez is not seen
to teach the use of maximal oxygen uptake to obtain an energy consumption reference value, as
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required by all of the amended independent claims.” Id.
The focus of these statements is on the correlation between maximal oxygen uptake and
energy consumption. It is not on measuring the maximal oxygen uptake, nor on measuring it through
breathing gases.
During the third reexamination, “[t]he patentability of the claims 2–15 and 17–46 [were]
confirmed. Claims 1 and 16 were previously cancelled. New claims 47–52 [were] added and
determined to be patentable.” ‘227 patent, Re-exam Cert. C3, col. 1:15 18 (ECF No. 205-8). In the
Statement of Reasons, the examiner stated the following:
Regarding independent claim 5 and 6 and their respective dependent
claims, the prior art of record does not teach a method for assessing
a person’s energy consumption during exercise that includes a
maximum energy consumption reference value being obtained for the
person from maximal oxygen uptake and corresponding to a
maximum heart rate associated with the person in combination with
assessing the person’s energy consumption using a measured heart
rate parameter of the person and the maximum value of energy
consumption and a lower value of energy consumption.
Statement of Reasons, at 7 8 (ECF No. 205-8) (emphasis added). The only reference to “measured”
in the statement refers to the heart rate parameter. This is unremarkable, because the claim language
itself states the person’s heart rate information is to be measured during exercise, but the person’s
energy consumption reference value is “obtained” from different parameters, including maximal
oxygen uptake. ‘227 patent, Re-exam Cert. C2, col. 1:29 35 (ECF No. 205-3). Similarly, for
Claims 21 and 22, the examiner used “measured” only when referring to the heart rate parameter.
Statement of Reasons, at 8 (ECF No. 205-8).
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In reaching these conclusions, the examiner quoted from the following language in Polar’s
response:
[N]othing in Cooper suggests that subjects participating in the Cooper
test use a meter to indicate when the respective maximum value of
energy consumption or their corresponding maximum heart rate have
been reached, but rather only that the subjects rely on their subjective
physical and mental sensations just prior to becoming excessively
exhausted.
Id. (quoting Polar July 6, 2016 Response, at 9 (ECF No. 205 8 at 53)). The examiner then stated,
Therefore, while Cooper emphasizes recording the maximum O2
consumption due to its correlation to physical fitness, the maximum
O2 consumption is not correlated with maximum heart rate but rather
physical exhaustion.
Id. (citation omitted). Although Polar did use the word “meter” when it was distinguishing prior art,
when placed in context, meter does not mean “measured.” Instead, it means that it is based on an
objective determination of maximal oxygen uptake as opposed to relying upon a person’s subjective
determination just prior to reaching maximum levels. This conclusion is supported by the
Specification wherein Polar states the following:
The maximum value 104C of the oxygen uptake is measured during
maximum performance on the basis of the breathing gases. It is also
possible to form the maximum value 104C by assessment by means
of a neural network model.
‘227 patent, col. 5:36 41 (ECF No. 205-1). Nothing in Polar’s disclaimer was so clear and
unmistakable to give up all but measured maximum oxygen uptake during exercise based on
breathing gases.
Moreover, the doctrine of claim differentiation also factors into the court’s analysis. Under
this doctrine, “each claim in a patent is presumptively different in scope.” Ecolab Inc. v. Paraclipse,
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Inc., 285 F.3d 1362, 1375 (Fed. Cir. 2002) (quotations and citation omitted). As such, “the presence
of a dependent claim that adds a particular limitation raises a presumption that the limitation in
question is not found in the independent claim.” Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d
898, 910 (Fed. Cir. 2004) (citation omitted).
This “presumption can be overcome if the
circumstances suggest a different explanation, or if the evidence favoring a different claim
construction is strong.” Id.
Here, Claim 17 and Claim 18 are both dependent on Claim 21. Claim 17 refers to “the
maximal oxygen uptake that is measured in an exercise corresponding to the maximum hear rate.”
‘227 patent, Re-exam Cert. C2, col. 2:16 17 (ECF No. 205-3) (emphasis omitted). In contrast,
Claim 18 refers to “the maximal oxygen uptake obtained by means of a neural network.” Id. col.
2:21-22 (emphasis omitted). These claims have remained essentially unchanged through each
reexamination, despite being under review, and are in harmony with the Specification recognizing
both measured values based on breathing gases and other objective values obtained by means of a
neural network. ‘227 patent, col. 5:36 41 (ECF No. 205-1). Had “metered” meant “measured,” it
would have been illogical for the patent examiner to allow dependent claim 18 to continue. Claim
differentiation therefore argues against importing “measured” as a limitation.
Finally, even though Polar inserted that the values had to be “associated” with the person
whose energy consumption is being determined, an objective value derived from a neural network
is still “associated” with that person. For each of these reasons, the court concludes the limitations
of “measured” and “breathing gases” are improper. The court construes Term 5 to mean “An
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objectively determined maximum oxygen consumption associated with a person during the person’s
physical performance at maximum heart rate.”
C.
Term 6:
Energy consumption reference value (Claims 3, 5, 6, 19, 21, 22,
33, 39, 51, and 52)
Polar contends Term 6 requires no construction because “[t]he claim language explains” the
term “corresponds to ‘a maximum value of energy consumption associated with the person’ which
the claim language also explains ‘represent[s] a value of energy consumption that is associated with
the person and corresponds to a maximum heart rate associated with the person.’” Joint Claim
Chart, at 3 (ECF No. 250). Defendants contend the term means, “A measured energy consumption
reference value.” Id. (emphasis added).
With respect to the term “measured” the same analysis for Term 5 applies to Term 6.
Accordingly, adding “measured” is not an appropriate limitation. Based on the intrinsic evidence
and oral argument, however, the court concludes the term should be construed for clarification
purposes. The court’s construction of Term 6 is “A maximum value of energy consumption
associated with a person during exercise that corresponds to the maximum heart rate associated with
the same person.”
D.
Term 7:
a measuring means for measuring a person’s heart rate (Claims
21 and 22)
Polar contends Term 7 “in not in means-plus-function format.” Joint Claim Chart, at 3 (ECF
No. 250). It asserts “‘[m]easuring’ connotes a structure for measuring the recited information.” Id.
“To the extent,” however, “that any construction beyond plain meaning is sought,” Polar contends
“it means the structures in the specification for measuring including optical and electrical
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electrodes.” Id. at 4. Polar further asserts the structures includes pressure sensors. Mem. in Opp’n,
at 15 (ECF No. 244) (citing ‘227 patent, col. 4:35-36). In contrast, Firstbeat contends this is a means
plus function term, where the structure is “limited to the ‘Electrodes’ 500A and 500B” and the
function is “measuring a heart rate.” Joint Claim Chart, at 3 (ECF No. 250). Suunto does not seek
construction of this term.
As stated above, “[t]he use of the word ‘means’ to describe a claim limitation gives rise to
a presumption that the inventor used the term advisedly to invoke the statutory mandates for meansplus-function clauses.” Masco Corp. v. United States, 303 F.3d 1316, 1326 (Fed. Cir. 2002)
(quotations and citations omitted). “Measuring” is not a noun. It is an adjective that describes or
modifies a noun or it is a verb. Whether “measuring” may help denote a structure depends on the
word with which it is coupled. For example, if the phrase were a “measuring stick,” a structure
would be present. A “measuring means for measuring,” however, does not impart the structure.
Moreover, during the claim construction hearing, Polar stated “[i]f the 112, paragraph 6 analysis is
applied and the claim is given its scope that’s provided by the specification, Polar would not have
a problem with that.” Hearing Tr., at 88 (ECF No. 283). Because Polar has not overcome the
presumption, the court concludes Term 7 is a means plus function term.
The next step is to determine what the structure and function are for this term. This “is a
two-step process” where “[t]he court must first identify the claimed function.” Williamson v. Citrix
Online, LLC, 792 F.3d 1339, 1351 (Fed. Cir. 2015) (citation omitted). Next, “the court must
determine what structure, if any, disclosed in the specification corresponds to the claimed function.”
Id. “If the patentee fails to disclose adequate corresponding structure, the claim is indefinite.” Id.
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at 1352 (citation omitted).
In this case, the term itself sets forth the function: measuring a heart rate. That is the function
of this term. With respect to the structure or structures that perform that function, the Specification
states the following:
The transmitter electrode belt measures heart rate information by
means for measuring heart rate information 500A to 500B. The
measuring means are, for instance, electrodes which the heart rate
monitor comprises at least two but they may be more. From the
electrodes 500A to 500B the heart rate signal is applied to an ECG
preamplifier 502 . . . .
‘227 patent, col. 9:25 30 (ECF No. 205-1). The Specification also explains that the electrode belt
is one type of heart monitor that is “fitted around the user’s chest measuring the heart rate by means
of two or more electrodes.” Id. col. 4:7 9. It also explains that heart monitors are “not restricted to
any particular . . . type.” Id. col. 4:5 6. Thus, it can be “a wrist-worn monitor which operates
without the electrode belt to be fitted around the chest measuring the heart rate information from
the vessel pressure or optically.” Id. col. 4:33 36. Stated differently, the Specification indicates the
structures that measure the heart rate also include pressure sensors and optical sensors.
Firstbeat contends, however, it should only be electrodes as used in column 9, and to do
otherwise conflates “measuring means for measuring” and “heart rate monitor.” Although pressure
sensors and optical sensors may be part of the heart rate monitor, they are not the structure of the
heart rate monitor. As stated above, the heart rate monitor can be in the form of a transmitter
electrode belt, a wrist-worn monitor, and so forth. In contrast, the pressure and optical sensors are
what measure in the same manner that electrodes also are what measure. Accordingly, the court
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concludes “The structures for performing the function are electrodes, pressure sensors, and optical
sensors.”
D.
Term 8:
A calculating unit for calculating (Claims 21 and 22)
Polar contends Term 8 may be understood according to its plain meaning, and that it is not
in a means-plus-function format. Joint Claim Chart, at 4 (ECF No. 250). Polar further contends
“‘calculating unit’ connotes a structure for calculating. This is evident in the language itself which
states that the calculating unit does calculating. The claim language thus recites a unit that
calculates.” Id. In supplemental briefing, Polar stated that, to the extent the term requires
construction, it should be construed to mean “a computer or electronic component configured to
calculate.” Polar Supp. Brief, at 10 (ECF No. 369).
Firstbeat contends Term 8 “is a means plus function term.” Joint Claim Chart, at 4 (ECF No.
250). In the Joint Claim Chart, Firstbeat asserted, the structures is “limited to ‘central processor
524,’” and the function is “calculating an assessment of the person’s energy consumption.” Id. In
supplemental briefing, Firstbeat notes that “unit for” is a nonce word per MPEP § 2181, and
therefore is akin to using the word “means.” Firstbeat Supp. Brief, at 4 5 (ECF No. 376). Firstbeat
then contends the ‘227 patent fails to disclose a structure for the “calculating unit,” so the claims fail.
Id. at 10 12. Alternatively, if the court finds a structure is present, Firstbeat contends the structure
“in claim 21 is a central processing unit (CPU) programmed to perform both of the algorithms in
formulae (4) and (5) of the ‘227 patent.” Id. at 14.
In Polar’s supplemental briefing, it cited to a number of patents that use the term “calculating
unit for calculating.” Despite such usage, a case has not been presented that discusses how the term
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has been construed. Polar contends “the term has been widely used for decades and therefore
informs those skilled in the art about the scope of the invention with reasonable certainty.” Polar’s
Supp. Brief, at 12 (ECF No. 369).
“The standard is whether the words of the claim are understood by person of ordinary skill
in the art to have a sufficiently definite meaning as the name for structure.” Williamson, 792 F.3d
at 1349 (citation omitted). Because the court lacks sufficient information about whether “calculating
unit for calculating” has a known meaning to one skilled in the art, the court requests Polar and
Firstbeat to provide expert evidence on that issue. The court reserves ruling on Term 8 until after
that evidence is received.
E.
Term 9:
Assessing the person’s energy consumption (Claim 5)
Polar contends Term 9 may be understood according to its plain meaning. Joint Claim Chart,
at 5 (ECF No. 250). Polar asserts “[t]he ‘227 patent and the claim language explain that the heart
rate measuring arrangement assesses the person’s energy consumption during exercise using
calculating parameters, which include: heart rate parameters and the energy consumption reference
value.” Id. Firstbeat contends the term means “analyzing the person’s energy consumption using
mathematical algorithms.” Id. (emphasis added). Suunto does not seek construction of the term.
“Analyzing” connotes something different than “assessing.” Analyzing is to study or inspect.
It signifies a higher degree of examination than assessing. Assessing may be an approximation, such
as assessing the value of property, or it may be establishing a fixed amount, such as assessing a fine.
Accordingly, the court finds that construction will help clarify the term.
Immediately following the claim term, the claim states the person’s energy consumption is
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assessed “during exercise from a plurality of calculating parameters.” ‘227 patent, Re-exam Cert.
C2, col. 2:23 25 (ECF No. 205-3). The patent further explains what the calculating parameters
include. These are separate concepts that fall outside of the term at hand. Based on the language
that follows Term 9, the court limits its construction so that it is not construing the claim beyond the
scope of the specified term. The court construes Term 9 simply to mean “Determining a person’s
energy consumption.”
F.
Term 10:
Assessment of the person’s energy consumption (Claims 21 and
22)
Terms 9 and 10 are largely the same, and the analysis for Term 8 applies to Term 9. The
court therefore construes Term 9 to mean, “A determination of the person’s energy consumption.”
CONCLUSION AND BRIEFING SCHEDULE
For the reasons stated above, the court GRANTS IN PART and DENIES IN PART Polar’s
Motion to Determine Markman Issues (ECF No. 209). The court DENIES Suunto’s Cross Motion
for Claim Construction (ECF No. 207). The court’s claim construction is set forth above for all
claim terms except “calculating unit for calculating” (Term 8). The court reserves ruling on Term
8 until after it receives expert evidence as to whether the meaning of Term 8 is known to one skilled
in the art. Polar and Firstbeat shall simultaneously provide expert evidence on or before January
24, 2020. Although the court has set forth its claims construction for all other terms, until the court
issues its ruling on Term 8, the deadlines for other expert discovery and non-LPR 6.2 summary
judgment motions are not triggered. See Scheduling Order, at 5 (ECF No. 386).
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SO ORDERED this 11th day of December, 2019.
BY THE COURT:
____________________________________
Clark Waddoups
United States District Judge
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