## United States Court of Appeals for the Federal Circuit

05-1006

FREE MOTION FITNESS, INC. (formerly known as Ground Ze ro Design Corporation), Plaintiff-Appellant,

v. CYBEX INTERNATIONAL, INC., Defendant-Appellee.

------------------------------------------------------------------------------ -------------- FREE MOTION FITNESS, INC. (formerly known as Ground Ze ro Design Corporation), Plaintiff-Appellant,

v. THE NAUTILUS GROUP, INC. (forme rly known as Direct Focus, Inc.) and NAUTILUS HUMAN PERFORMANCE SYSTEMS, INC., Defendants-Appellees.

Larry R. Laycock , Workman Nydegger, of Salt Lake City, Utah, argued for plaintiffappellant. With him on the brief were Thomas R. Vuksinick and David R. Todd

. Casey K. McGarvey , Berman & Savage, P.C., of Sa lt Lake City, Utah, argued for defendant-appellee Cybex International, In c. With him on the brief was E. Scott Savage

. Paul T. Meiklejohn , Dorsey & Whitney LLP, of Se attle, Washington, argued for defendants-appellees The Na utilus Group, Inc., et al. With him on the brief was David M. Jacobson

. Appealed from: United States Distr ict Court for the District of Utah Senior Judge Bruce S. Jenkins

## United States Court of Appeals for the Federal Circuit

05-1006 FREE MOTION FITNESS, INC., (formerly known as Ground Zero Design Corporation), Plaintiff-Appellant,

v. CYBEX INTERNATIONAL, INC., Defendant-Appellee.

----------------------------------------------------------------------------------------------- FREE MOTION FITNESS, INC. (formerly known as Ground Zero Design Corporation), Plaintiff-Appellant,

v. THE NAUTILUS GROUP, INC. (forme rly known as Direct Focus, Inc.) and NAUTILUS HUMAN PERFORMANCE SYSTEMS, INC., Defendants-Appellees.

___________________________ DECIDED: September 16, 2005

___________________________ Before RADER, DYK, and PROST, Circuit Judges

. Opinion for the court filed by Circuit Judge DYK. Dissenting opinion filed by Circuit Judge PROST. DYK, Circuit Judge

.Free Motion Fitness, Inc. (formerly k nown as Ground Zero Design Corporation) (“Free Motion”) appeals from the judgment of the United Stat es District Court for the District of Utah holding that Cybex International, Inc. (“Cybex”) and The Nautilus Group, Inc. (formerly known as Direct Focus, In c.) and Nautilus Human Performance Systems, Inc. (collectively “Nautilus”) did not infringe the claims of United States Patent Nos. 6,238,323 B1 (the “’323 patent”) and 6, 458,061 B2 (the “’061 patent). Free Motion Fitness, Inc. v. Cybex Int’l, Inc. , Nos. 01-CV-152 and 02-CV-122, slip op. at 2-3 (D. Utah Aug. 31, 2004); Free Motion Fitness, Inc. v. Cybex Int’l, Inc. , Nos. 01-CV-152 and 02- CV-122, slip op. at 7 (D. Ut ah Aug. 10, 2004) (hereinafter Summary Judgment Order ). We vacate the judgment of the district c ourt and remand for a dete rmination of literal infringement and infringement under the doctrine of equival ents under the correct claim construction. In this connection, we also set aside the district court’s holding that prosecution history estoppel lim its the scope of equivalents. BACKGROUND Free Motion is the assignee of the ’323 and ’061 patents. The patents claim an exercise apparatus comprising a resistance assembly, two adjustable extension arms that pivot on an axis substantially parallel to t he axis of rotation of a pulley at the end of each arm, and a cable linking the resistance assembly to the arms. Claim 1 of the ’061 patent is representative of the claims of both patents and reads: 1. An exercise apparatus, comprising: a resistance assembly; a cable linking a first extension arm and a second extension arm to the resistance assembly, wherein the cable includes a first strand and a second strand; the first extension arm includes a first end pivotally supported adjacent the resistance assembly at a first pivot point rotating about a first axis and a free second end from which the firs t strand of the cable extends for

05-1006 2engagement by a user, the first end of the first extension arm further including a pulley having an axis of ro tation offset from the first pivot point and rotating about an axis substantially parallel to the first axis; the second extension arm includes a first end pivotally supported adjacent the resistance assembly at a se cond pivot point rotating about a second axis and a free second end from which the first strand of the cable extends for engagement by a us er, the first end of the second extension arm further including a pu lley having an axis of rotation offset from the second pivot point and rotating about an axis substantially parallel to the second axis. ’061 patent, col. 7, l. 63–col . 8, l. 16 (emphases added). 1 The extension arms comprise both the extended portion of each arm and the lo cking pivot or swivel assembly at the end of each arm (what the district court called the “casting”) that permi ts the arms of the preferred embodiment of the invention to pivot up-and-down (like the lever on a slot machine). The preferred embodiment of the invention uses a single cable to link the resistance assembly with the arms. Figures 6 and 7 of the ’061 patent depict the pref erred embodiment of the invention. Figure 6 shows the resistance a ssembly, the proximal ends of the arms, and the cable linking the two arms. The firs t and second pivot points are numbered 174, while the first and second extension arms are numbered 112 and 114. Figure 7 is a close-up of the proximal end of the first extension arm where it attaches to the resistance assembly. First extension arm 112 pivots on an axis substantially parallel to the axis of rotation of pulley 184, which is lo cated at the first end of the first extension

arm.

1 The other independent and dependent clai ms of the patents contain limitations that are near ly identical and need not be discussed separately.

05-1006 3Cybex and Nautilus sell exercise machines that are alleged to be similar to those described in the patents. However, unlike the patented devices, the arms of the Cybex and Nautilus machines are attached to the re sistance assembly of the machine such that they pivot in two different planes. T hus, the castings of t he Cybex machine permit each arm to rotate like a doorknob at the pi vot point nearest the resistance assembly and like the arms of a slot machine at the next pivot point away from the resistance assembly. The Cybex machine also uses two cables to link the resistance assembly to the arms rather than the one as in the patents’ preferred em bodiments. The castings of the Nautilus machine permit each arm to pivot side-to-side (like a door) at the pivot point nearest the resistance assembly and like the a rms of a slot machine at the next pivot point away from the resistance assembly.

05-1006 4On December 3, 2001, Free Motion filed suit against Cybex for infringement of the claims of the ’323 patent. On Septem ber 26, 2002, Free Motion filed suit against Nautilus for infringement of the claims of the ’323 patent. Free Motion subsequently amended its complaints to add an additional claim for infringement of the claims of the ’061 patent and the district court consolidated the two cases. On December 30, 2003, the district court construed various clai m terms. It also granted partial summary judgment of non-infringement of claim 1 of the ’061 patent based upon its claim constructions. On January 28, 2004, and February 4, 2004, Nautilus and Cybex, respectively, filed motions for complete summary judgment as to non-infringement. Those motions were granted by t he district court on May 7, 2004. The district court first found the other asserted claims of the ’061 and ’323 patents were not literally infringed because “each of the limitations of Claim 1 of the ‘061 Patent are present, either expressly or by incorporation by refe rence, in all of [those] claims.” Summary Judgment Order at 4. The district court also ruled t hat a narrowing amendment made during prosecution of the ’323 pat ent estopped Free Motion from asserting equivalence to a device having extension arms with axes of rota tion transverse to the axes of rotation of the pulleys at the end of the extension arms. The court held that the estoppel applied to both patents because the ’061 patent is a continuation of the ’323 patent. The court subsequently dismissed with prejudice Free Motion’s complaints against Cybex and Nautilus, and dismissed without prejudice Cybex’s and Naut ilus’s counterclaims of invalidity against Free Motion. Free motion appeals. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

05-1006 5DISCUSSION We review both the district court’s grant of summary j udgment and its claim constructions without deference. Howmedica Osteonics Corp. v. Tranquil Prospects, Ltd. , 401 F.3d 1367, 1370-71 (Fed. Cir. 2005). We also review the prosecution history estoppel limitation on the doctrine of equivalents without deference. Bus. Objects, S.A. v. Microstrategy, Inc. , 393 F.3d 1366, 1372 (Fed. Cir. 2005). In construing the claims we follow our recent decision in Phillips v. AWH Corp. , 415 F.3d 1303 (Fed. Cir. 2005) (en banc). The district court’s grant of summary judgment of non-infr ingement rests on a finding that several claim limitations were not met in the accused devices. As to each of these we conclude that the district court erred. I The addition of unclaimed elements does not typically defeat infringement when a patent uses an open trans itional phrase such as “comprising.” Crystal Semiconductor Corp. v. Tritech Microelectronics Int’l, Inc. , 246 F.3d 1336, 1348 (Fed. Cir. 2001) (“In the parlance of patent law, the transition ‘comprising’ creates a presumption that the recited elements are only a part of the device, t hat the claim does not exclude additional, unrecited elements.”). That is essentially what the district court did here under the guise of construing the claims. The district court found that the “first pivot point” limit ation was not met by either of the accused devices. The di strict court held “that the first pivot point is construed as an expression of location, specif ically the first pivot point is chronologically the first point that pivots on the end of the extension arm where the arm is supported by the frame”

05-1006 6and therefore held that “the term describes t he first chronological point about which the arm turns.” Free Motion Fitness, Inc. v. Cybex Int’l, Inc. , Nos. 01-CV-152 and 02-CV122, slip op. at 13 (D. Ut ah Dec. 30, 2003) (emphasis in original) (hereinafter Memorandum Opinion ). It appears that the di strict court construed “first” pivot point to mean the pivot point spatially nearest t he resistance assembly. Based on this construction, the district court concluded that the asserted claims were not infringed. Summary Judgment Order at 4-5. On appeal, the accused infringers make no effort to defend the district court’s construction of the word “first.” Cybex agrees t hat the word “first” in the claims identifies only the location of attachment of the first arm as opposed to the location of attachment of the second arm, and has not hing to do with the relative position of multiple pivot points on a single arm. Nautilus appears to agree. The parties’ concession concerning the meani ng of the word “first ” is well taken. As we have previously held, “[t]he use of the terms ‘first’ and ‘second’ is a common patent-law convention to distinguish bet ween repeated instances of an element or limitation.” 3M Innovative Props. Co. v. Avery Dennison Corp. , 350 F.3d 1365, 1371 (Fed. Cir. 2003). In this case, the claims include two arms, and the claims’ use of the terms “first pivot point” and “s econd pivot point” distinguishes the pivot point on the “first

ex tension arm” from the pivot point on the “second ex tension arm.” “First” does not denote spatial location, that is, it does not suggest where on the “first ex tension arm” or the “second ex tension arm” the pi vot points are located. The correct construction of the word “first” merely associates the first pivo t point with the first ex tension arm, and thus does not support the district court’s judgment that the accused devices do not infringe.

05-1006 7II The district court also held that the pivot point on each arm (as described in the claims) must be “adjacent t he resistance assembly.” Summary Judgment Order at 5. The district court construed t he word “adjacent” to mean “that objects may or may not be in contact, but are not adjacent to each ot her where there is another object between them.” Memorandum Opinion at 12-13. The district court reasoned that under this definition of adjacent the clai med pivot points must be the pivot points closest to the resistance assembly. Since the claimed pi vot points (those acting like a slot machine lever) were separated from the resistance a ssembly by another object (the other pivot point), the district court concluded that the accused devices did not infringe. The question is whether or not the di strict court properly construed the term “adjacent.” There is no sugges tion here that intrinsic evidenc e defines the term or that the term adjacent has a specialized meaning in the relevant art. Phillips , 415 F.3d at 1314. Under these circumstances, the parti es and the district court looked to dictionaries for definitions of the word adj acent for assistance in determining the term’s meaning to one skilled in the art. Our en banc decision in Phillips clarified the appropriate use of dictionaries in claim construction, rejecting the view that dictionary defin itions govern unless contradicted by intrinsic evidence. Phillips , 415 F.3d at 1320. Nonetheless Phillips confirms that courts may “‘rely on dictionar y definitions when construing claim terms’” and that “[d]ictionaries . . . are often useful to assist in understanding the commonly understood meaning of words.” Id. at 1322 (quoting Vitronics Corp. v. Conceptronic, Inc. , 90 F.3d 1576, 1584 n.6 (Fed. Cir. 1996)). T he court must ensure that any reliance

05-1006 8on dictionaries accords with the intrinsic evidence: the claims themselves, the specification, and the pr osecution history. Id. at 1314. Under Phillips , the rule that “a court will give a claim term the fu ll range of its or dinary meaning,” Rexnord Corp. v. Laitram Corp. , 274 F.3d 1336, 1342 (Fed. Cir. 2001), does not mean that the term will presumptively receive its broadest dictionary definition or the aggr egate of multiple dictionary definitions, Phillips , 415 F.3d at 1320-1322. Rather, in those circumstances where reference to dictionaries is appropriate , the task is to scrut inize the intrinsic evidence in order to determine t he most appropriate definition. Id. at 1322-23, 1324. 2
Webster’s Third New International Dictionar y provides several different definitions of “adjacent,” two of which are possibilities here. One definition is “not distant” and the other is “relatively near and having not hing of the same kind intervening.” 3 T h e specification here is most cons istent with defining adjacent to mean “not distant.” We find nothing in the intrinsic record suggesti ng a concern with interv ening pivot points or excluding an additional pivot point between the “first pivot point” and the resistance assembly, particularly given that a “pivot point” and a “resistance assembly” are not

2 “[A] judge who encounters a claim term while reading a patent might consult a general purpose or specialized dict ionary to begin to understand the meaning of the term, before reviewing the remainder of the patent to determine how the patentee has used the term.” Phillips , 415 F.3d at 1324.

3 The full definition defines adjacent as 1a : not distant or far off . . . : nearby but not touching . . . b : relatively near and having nothing of the same kind intervening : having a common border: ABUTTING, TOUCHING : living nearby or sitting or standing relatively near or close together . . . c : immediately preceding or following with nothing of the same kind intervening. Webster’s Third New International Dictionary of the English Language Unabridged 26 (2002).

05-1006 9items of the “same kind”. Renishaw PLC v. Marposs Societa’ Per Azioni , 158 F.3d 1243, 1250 (Fed. Cir. 1998) (“[W] here there are several common meanings for a claim term, the patent disclosure serves to poi nt away from the improper meanings and toward the proper meaning.”). The specificat ion thus suggests that “adjacent” simply means “not distant.” 4 Indeed, Nautilus and Cybex appeared to agree before the district court that adjacent means “near.” (J.A. at 682, 2392, 2395.) Under this definition the district court’s judgment of non-infringement is not support ed because the pivot points of the accused devices are not distant from the resistance assembly.
III Nautilus, relying on other language in the claims, argues that the claimed pivot point must be the pivot point closest to the resistance assembly. Nautilus specifically argues that the claim terms “support” and “end” require that construction because a pivot point not closest to the resistance assembly cannot support the entire arm and cannot be located at the end of the arm. Cybex appears to support this argument as well. The district court apparently did not rely on this argument in granting summary judgment of non-infringement. We discern nothing in the use of the word “support” suggesting that the arm must be entirely supported by the claimed pivot point. We also disagree that the term “end” requires that the claimed pivot point be nearest the

4 Nautilus argues that we should cons true “adjacent” with an eye toward preserving the validity of the claims. It ur ges that construing adjacent to mean “near” would render the claim indefinite because the accused device is not large and a pivot point at the far end of the a rm is still near. We reject Nautilus’s argument because a court may only construe claims to preserve their validity when “‘after applying all the available tools of claim construction . . . the claim is still ambiguous.’” Phillips , 415 F.3d at 1327 (citing Liebel-Flarsheim Co. v. Medrad, Inc. , 358 F.3d 898, 911 (Fed. Cir. 2004)). The claim in this case is not ambiguous.

05-1006 10resistance assembly. The district court construed “end” to mean “the portion having length, not limited to the terminus.” Memorandum Opinion at 12. No party challenges this construction. These terms require nothi ng more than that the pivot point be located at the end portion of the arm and contribute to supporting the arm. 5
IV Finally, the district court held that the term “a cable linking” in the claims is limited to only a single cable. Id. at 7-8. This issue is not per tinent to alleged infringement by the Nautilus machine. But under this construc tion the district cour t held that the Cybex device does not infringe because it “has multiple cables rather than a single cable which links that [sic] arms to the resistance assembly.” Id. at 14. The district court reached this construction by pointing to the patents’ numerous references to a single cable (“a cable linking” and “the cable”) and inferring from the patents’ use of t he plural in other instances “that if the patent intended more than one cable, it would have expressly indicated that by using a plural term.” Id. at 7-8. 6

5 Cybex also relies on “the” as suppor ting a claim construction limited to only one pivot point on each arm. As discuss ed below, the articles “a” and “the” do not suggest singularity. Nothing in the patent ov ercomes the presumpti on that these terms mean one or more.

6 The district court also found that various corrections made to the ’061 patent evinced an intent to claim an apparatus having only a single cable. The district court wrote: The Court observes that on October 1, 2002, a certificat e of correction was filed with the United States Patent and Trademark Office (“USPTO”) regarding the ‘061 patent. The Correct ion substituted certain words for other words in the patent. Among the twelve corrections made: ‘apparatuses’ was changed to ‘appar atus;’ and ‘arm’ was changed to ‘arms.’ These two corrections changed the pluralized term to the singular term and vice versa respectively. It can be inferred, therefor e, that if the

05-1006 11At oral argument Cybex adm itted that the legal meaning of the term “a” suggests that the claim term “a linking cable” normally should be interpreted to mean one or more cables. That is correct. “‘[A]’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in open-ended claims containing the transitional phrase ‘comprising.’” KCJ Corp. v. Kinetic Concepts, Inc. , 223 F.3d 1351, 1356 (Fed. Cir. 2000) . This convention is overcome only when “the claim is specific as to the number of el ements” or “when the patentee evinces a clear intent to . . . limit the article.” Id. Cybex argues that here the presumption is overcome bec ause the specification describes the cable as a “single cable.” We disagree. The references to a single cable in the spec ification are found in the description of the prefe rred embodiments, and do not evince a clear intent by the patentee to limit the article to the singular. RF Del., Inc. v. Pac. Keystone Techs., Inc. , 326 F.3d 1255, 1263 (Fed. Cir. 2003) (“[W]hen a cl aim term is expressed in general descriptive words, it typica lly will not be limited to a numer ical range that may appear in the written description as referring to a pr eferred embodiment or in other, narrower claims.”); Renishaw , 158 F.3d at 1248 (reciting the fam iliar maxim that “one may not read a limitation into a claim fr om the written description”). We also reject Cybex’s argument that us e of the word “the” in connection with the word “cable” later in the claim shows that t he earlier reference to “a” denotes singularity. Like the words “a” and “an,” t he word “the” is afforded the same presumptive meaning of “one or more” when used with the tr ansitional phrase “comprising.” See AbTox, Inc. v.

patent intended more than one cable, it would have expressly indicated that by using a plural term. Memorandum Opinion at 7-8. That inference is not warranted.

05-1006 12Exitron Corp. , 122 F.3d 1019, 1023 (Fed. Cir. 1997) (“[ P]atent claim parlance also recognizes that an article can carry the meaning of ‘one or more,’ for example in a claim using the transitional phr ase ‘comprising.’”). The construction that claim 1 is not limit ed to a single cable is also supported by the doctrine of claim differentiation. Bo th patents contain dependent claims limited to devices having only one cable. Claim 2 of the ’323 patent clai ms “[t]he ex ercise apparatus according to claim 1, wherein the cabl e consists essentially of a single cable.” ’323 patent, col. 8, ll. 26-27. So too claim 7 of the ‘061 patent requires a “single cable.” ’061 patent, col. 8, ll. 39-53. The doctrine of claim di fferentiation “create[s] a presumption that each claim in a patent has a different scope.” Comark Communications, Inc. v. Harris Corp. , 156 F.3d 1182, 1187 (Fed. Cir. 1998). The difference in meaning and scope between claims is presumed to be significant “[t]o the extent that the absence of such differ ence in meaning and scope would make a claim superfluous.” Tandon Corp. v. United States Int’l Trade Comm’n , 831 F.2d 1017, 1023 (Fed. Cir. 1987). Here, dependent claims limiti ng the claim to a single cable confirm that the independent claims may encompass more than one cable. Cybex relies on Insituform Technologies, Inc. v. Cat Contracting, Inc. , 99 F.3d 1098 (Fed. Cir. 1996) for the opposite proposition. Insituform Techs., Inc. v. Cat Contracting, Inc. , 99 F.3d 1098 (Fed. Cir. 1996). Insituform involved a method of impregnating an absorbent layer of material in a tube with resin by applying a vacuum through the wall of the tube using a cup. Id. at 1104. The claimed method specifically described moving the cup to a location fa rther down the tube as the resin moved through the tube. Id. We construed “a cup” and “the cup” as singular because the

05-1006 13claims, specification, and file histor y all supported that construction. Id. at 1105-06. That is not the situation befor e us in this case, where the claims and specification point in the opposite direction. Therefore, we hold that “a cable linking” means “one or more cables linking.” Under the correct claim construction the fact that the Cybex device has more than one cable does not show non-infringement. 7
V Given changes in the claim construc tion, we need not address the overall availability of the doctrine of equivalents. We do address, however, one aspect of the district court’s doctrine of equivalents analysi s because the district court seemed to find a disclaimer of claim scope that could be equally applicable to literal and equivalent infringement. Pall Corp. v. PTI Techs. Inc. , 259 F.3d 1383, 1392 (Fed. Cir. 2001), vacated on other grounds , PTI Techs, Inc. v. Pall Corp. Techs., Inc. , 535 U.S. 1109 (2002) (“Even where the ordinary meaning of t he claim is clear, it is well-established that ‘the prosecution history lim its the interpretation of claim terms so as to exclude any interpretation that was disclaim ed during prosecution.’”) (quoting Southwall Techs., Inc. v. Cardinal IG Co. , 54 F.3d 1570, 1576 (Fed. Cir. 1995)). The district court held that Free Motion was estopped from claiming infr ingement under the doctr ine of equivalents because, during prosecution of the ’323 patent, the district c ourt found that Free Motion disclaimed a device wherein the axes of rotation of the guide pulleys and extension

7 Cybex also appears to argue that its machine does not infringe because neither cable of the Cybex machine links the extension arms to the resistance assembly. This argument relies on an overly re strictive construction of “linking” and is rejected.

05-1006 14arms were perpendicular. Summary Judgment Order at 6. The district court held that the disclaimer applied to both patents because the ’061 patent is a continuation of the ’323 patent. Id. at 6 n.3. During pros ecution the examiner rejected the pending claims, as he found that they were anticipated by Fi tzpatrick. The Fitzpatrick patent discloses an exercise device wherein the axes of rotati on of the adjustable arms are transverse to the axes of rotation of the pulleys. U. S. Patent No. 4,826,157 (issued May 2, 1989). This orientation can be best under stood by reference to Figure 3 of Fitzpatrick. Arms 35 are mounted in sleeves 34 such that they ro tate on an axis of ro tation transverse to guide pulleys 37.

05-1006 15Free Motion overcame the rejection to the prior art Fitzpatrick patent by amending the claims to include a “rotating about an axis substantially parallel to the second axis” limitation and made the follo wing argument in connection with the amendment: The undesirable forces created by t he transverse orientation of the pulley 38 disclosed by Fitzpatrick is [sic] in direct contrast with the claimed invention where the axes of the respec tive pulleys are is [sic] substantially parallel to the axes of rotation of the extension arms. The claimed assembly provides for virtually no va riation in cable tension when the extension arms are selectively rotated. (J.A. at 3109.) The district court concluded that Free Motion was estopped to assert infringement by a device that —although including extension arms with axes of rotation substantially parallel to the pulleys—also has the undesirable features of Fitzpatrick. Basic patent law holds that a party may not avoid infringement of a patent claim using an open transitional phrase, such as comp rising, by adding additional elements. Crystal Semiconductor , 246 F.3d at 1348. The presence of an undesirable prior art feature in addition to the elements recited in the claim, even when the undesirab ility of that feature formed the basis of an am endment and argument overcoming a rejection during prosecution, does not limit t he claim unless there is a clear and unmistakable disclaimer of claim scope. Here, there is no such di sclaimer. The “comprising” language allows additional features. The disclaimer, if t here was one, only applied to the “claimed assembly,” not unclaimed featur es added to the patented device. CONCLUSION We vacate the district court’s grant of summary judgment of non-infringement and remand for a determinati on of literal infringement and infringement under the doctrine of equivalents under t he correct claim construction. In this connection, we

05-1006 16disapprove the district court’s holding that prosecution history es toppel limits the scope of equivalents. Cybex and Naut ilus are free, of course, to reinstate their counterclaims upon remand. 8
COSTS No costs. VACATED AND REMANDED

8 Cybex invites us to hold the patents in valid as obvious. This issue is not ripe for decision and is not properly before th is court because a cross-appeal was not filed. Typeright Keyboard Corp. v. Microsoft Corp. , 374 F.3d 1151, 1157 n.4 (Fed. Cir. 2004) (“[W]here the appellee urges invalidit y as a new ground on which to support a judgment of non-infringement . . . a cross-appeal is necessary since a judgment of invalidity is broader than a j udgment of non-infringement.”).

05-1006 17

## United States Court of Appeals for the Federal Circuit

05-1006

FREE MOTION FITNESS, INC. (formerly known as Ground Zero Design Corporation), Plaintiff-Appellant,

v. CYBEX INTERNATIONAL, INC., Defendant-Appellee.

-------------------------------------------------------------------------------------------
FREE MOTION FITNESS, INC. (formerly known as Ground Zero Design Corporation), Plaintiff-Appellant,

v. THE NAUTILUS GROUP, INC. (forme rly known as Direct Focus, Inc.) and NAUTILUS HUMAN PERFORMANCE SYSTEMS, INC., Defendants-Appellees.

PROST, Circuit Judge , dissenting. I respectfully disagree with several aspects of the majority’s claim construction in this case. I would affirm the decision of the district court, because I agree with its constructions of “first pivot point” (as I under stand that construction), “adjacent,” and “a cable linking.” With respect to the “first pivot point,” I believe the majority has been misled by Free Motion’s characterization of the district court’s claim construction. Although thedistrict court’s opinion is admittedly somew hat unclear on this point, I do not share the majority’s belief that the district court relied on the word “first” to denote spatial location, rather than to distinguish the pivot point on t he “first ex tension arm” from the one on the “second extension arm.” Such a holding woul d obviously have been incorrect. I fully agree with the majority that “first” and “sec ond” are used in claim 1 according to the “common patent-law convention to disti nguish between repeated instances of an element or limitation,” 3M Innovative Properties Co . v. Avery Dennison Corp. , 350 F.3d 1365, 1371 (Fed. Cir. 2003), but I think t he district court understood this, too. 1 F r e e Motion has portrayed the district court’s holding in a different way in order to set up an easy target to attack on appeal. As Cybex argues , identifying the “first pivot point” as “the first in location among a series of pivot poi nts” “was not the district court’s ruling, and [Free Motion]’s argument against it is meaningless.” An alternative reading of the district cour t’s construction is consistent with the conventional use of “first” and “second.” Specifically, I understand the court to have concluded, based on the context of the clai m and the written description, that the position of the first and second pivot points was limited. The court’s coincidental use of the word “first” to describe that particular position (“first chronol ogical point about which the arm turns”) understandably caused some conf usion over whether the court correctly interpreted the word “first” in the claim. But I read the district court’s holding as not based on the word “first”; its interpretation applies equally to the “second pivot point,” such that it would have been entirely consis tent (and somewhat redundant) for the court

1 Like the majority, I confine my discu ssion to claim 1 of the ’061 patent. See ante at 3, n.1. Free Motion does not pres ent any additional argum ents in its appeal regarding the other asserted claims.

05-1006 2to have inserted “and the second pivot point is chronologically the first point that pivots on the end of the second extension arm where the arm is supported by the frame.” Several pieces of intrinsic evidence suppor t this construction. The specification places the “first pivot point” where the first end of the first extensi on arm is “pivotally supported adjacent the resistance assembly.” Where there are mult iple pivot points, only the pivot point nearest the resistance a ssembly can pivotally support the entire arm. Moreover, as discussed in more det ail below, “adjacent” should be construed as “relatively near and having nothing of the same kind intervening.” With that construction in mind, the context of the claim makes it indisputably clear that the first and second pivot points are, as the dist rict court held, “on the end of the extension arm where the arm is supported by the frame.” Even if the majo rity’s interpretation of the district court’s claim construction is correct, I would still affirm the judgment of noninfringement based on my belief that the claim context and written de scription restrict the “first pivot point” and “second pivot point” to particular locations. I also think the district court properly se lected the appropriate di ctionary definition of “adjacent.” 2 As the majority states, a claim te rm does not “presumptively receive its broadest dictionary definition or the aggregate of multiple dictionary definitions[.]” Ante at 9. When I “scrutinize the intrinsic evidence in order to determine the most appropriate definition[,]” id. , I find nothing that supports a meaning as broad as “not distant.” I only find support for “relatively near and having nothing of the same kind intervening.” Nothing in the specificat ion describes a pivot point that has another pivot

2 In this case, the parties only advoc ate constructions of “adjacent” based on dictionary definitions.

05-1006 3point between it and the resistance assembly as “adjacent” to the assembly. Such a disclosure would be necessary to convince me that the broader definition should apply. Moreover, the narrower definition appears mo re consistent with ordinary English usage. For example, Connecticut is near New Jersey, but one does not describe them as “adjacent.” A part of anot her state, New York, lies in between. One also normally refers to contiguous squares on a checker board as “adjacent” to each other, but the space two squares away is not considered “adjac ent,” even though it is relatively “near.” The majority’s reasoning appears to star t with the broadest def inition and consult the written description only to s ee if that definition is narro wed, rather than determining whether the specification di scloses anything broader than the narrow definition. Phillips v. AWH Corp. explains: The problem is that if the district court starts with the broad dictionary definition in every case and fails to fully appreciate how the specification implicitly limits that definition, the error will systematically cause the construction of the claim to be undul y expansive. The risk of systematic overbreadth is greatly reduc ed if the court instead focuses at the outset on how the patentee used the claim term in the claims, specification, and prosecution history, rather than starting with a broad definition and whittling it down. 415 F.3d 1303, 1321 (Fed. Cir. 2005) (en banc). The majority’s approach, in my view, does not attempt to determine what the inventor actually invented, but rather takes the broadest available abstract meaning of a claim te rm that is not explicitly rejected by the specification. This approach allows t he claim scope to extend beyond what the inventor’s written description and claims show to be his actual invention. Free Motion’s inventor came up with a specific structure that he described and clai med. By deviating from the meaning of “adjacent” that is most closely aligned with all the examples in the specification, the majority awards him more than he actually invented and claimed.

05-1006 4As the accused products lack a “first pi vot point” and “second pivot point” that are “adjacent the resistance assembly,” I woul d affirm the district court’s judgment of noninfringement. Such a decision would not r equire interpreting the “cable” term. For the record, though, I do not share the majo rity’s desire to overrule the district court’s interpretation of that term. The ma jority relies on Cybex’s admission that “a” or “an” typically means “one or more” in an open-ended “comprising” claim. Ante at 12. However, it should be noted that Cybex’s counsel was only acknowledging our precedent on the use of i ndefinite articles. He did not go so far as to “suggest[] that the claim term ‘a linking cable’ normally should be in terpreted to mean one or more cables.” Id. Counsel made no concession about t he claim language at issue here, which includes the word “linking”; the ’061 patent claims “a cable linking” the arms and the resistance assembly. A cable that is only one of several would not “link” these things because other cables would also form part of the connection. “A cable linking” means that the cable is linking the spec ific things that follow in the claim tex t. That is, it must be attached to each of those things. Additionally, the majority is simply wr ong to state that the written description supports a multi-cable construction. Ther e are no references to any structure with multiple “cables linking” the arms to the resistance assembly. In fact, the written description states that bot h disclosed embodiments of t he invention employ “a single cable.” ’061 patent, col. 3, ll. 11-13, 39-41 (“f unctional lift exercise” embodiment); col. 5, ll. 47-48 (“cable crossover exercise” embodi ment) (emphasis added). The patent does not suggest that multiple cables could “link” the arms to the resistance assembly. The disclosure of “a single cable” in each em bodiment and the requirement of this cable

05-1006 5“linking” the arms to the resi stance assembly distinguishes this case from the precedent cited by the majority, in which “a” or “the” was presumed to mean “one or more” when used in a “comprising” claim. See KCJ Corp. v. Kinetic Concepts, Inc. , 223 F.3d 1351, 1355-57 (Fed. Cir. 2000); AbTox, Inc. v. Exitron Corp. , 122 F.3d 1019, 1023-24 (Fed. Cir. 1997). This case is more like Insituform Technologies, Inc. v. Cat Contracting, Inc. , in which this court construed “a cup” and “the cup” as singular when a plural construction was inconsistent with the claim context and “nei ther the specification nor the drawings disclose[d] mo re than one cup.” 99 F.3d 1098, 1105-06 (Fed. Cir. 1996); see also N. Am. Vaccine, Inc. v. Am. Cyanamid , 7 F.3d 1571, 1575-76 (Fed. Cir. 1993) (construing “a . . . linkage to a terminal por tion of the polysacchari de without significant crosslinking” as singular because “there is no indication in the patent specification that the inventors here intended [the article ‘a’] to have other than its normal singular meaning” and “[a]ll references to polysacc haride linkages speak of a linkage, not multiple linkages”). I would also affirm the district court’s application of prosecut ion history estoppel on the basis provided by that court. The c ourt specifically held that “Free Motion is estopped from asserting that [t he] perpendicular orientation [of the axes of rotation in the accused devices] is equivalent to the ‘s ubstantially parallel’ el ement of the patentsin-suit.” I agree with that determination, as fa r as it goes. Under my view of the “pivot point” and “adjacent” issues, it goes far enough to affirm the judgment of noninfringement, and therefore I express no opinion on the majority’s disclaimer-ofscope analysis. For these reasons, I respectfully dissent.

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