## United States Court of Appeals for the Federal Circuit

2008-1516 PARAGON SOLUTIONS, LLC, Plaintiff-Appellant,

v. TIMEX CORPORATION, Defendant-Appellee.

James D. Liles , Porter, Wright, Morris & ArthurLLP, of Cincinnati, Ohio, argued for plaintiff-appellant. Wi th him on the brief was Bryan R. Faller , of Columbus, Ohio. John R. Horvack, Jr. , Carmody & Torrance LLP, of New Haven, Connecticut, argued for defendant-appellee. Wi th him on the brief was Fatima Lahnin

. Appealed from: United States District C ourt for the Southern District of Ohio Judge Michael R. Barrett

## United States Court of Appeals for the Federal Circuit

2008-1516 PARAGON SOLUTIONS, LLC, Plaintiff-Appellant,

v. TIMEX CORPORATION, Defendant-Appellee.

Appeal from the United States Dis trict Court for the Southern District of Ohio in case no. 1:06-CV-677, Judge Michael R. Barrett.

__________________________ DECIDED: May 22, 2009

__________________________ Before BRYSON, LINN, and MOORE, Circuit Judges

. LINN, Circuit Judge

. Paragon Solutions, LLC (“Paragon”) appea ls from a final judgment of noninfringement in favor of Timex Corporati on (“Timex”) in a suit alleging that certain Timex products, including Time x’s Bodylink watches, infri nged 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 noninfringementon the stipulation. 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 t he district court’s constructions of the claim terms “dataacquisition unit” and “display unit” were incorrect, and because we reject Timex’s asserted alternative basis for affirmance bas ed on the claim term “displaying real-time data,” we vacate and remand. I. BACKGROUND The ’759 patent discloses an exercise m onitoring 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 wear s the system during exercise, the electronic positioning device—one embodiment of which is a GPS device—tracks “at least one of” the user’s “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 an d the physiological monitor ar e 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 t he disclosed exercise monitoring system:

2008-1516 2The ’759 patent has two independent claims, reproduced as follows, with disputed portions emphasized: 1. An exercise monitoring system, comprising: (a) a data acquisition unitcomprising an electronic positioning device and a physiological monitor , said data acquisition unit configured to be worn by a subject performing a physical activity; and

2008-1516 3(b) a display unitconfigured for displaying real-time dataprovided by said electronic positioning device and said physiological monitor, said display unit separate from said data acquisition unit; wherein said display unit is confi gured to be worn by the subject, worn by someone other than the subject, or attached to an apparatus associated with the physi cal activity being perf ormed by the subject so as to be visible to the s ubject while performing the physical activity, and further wherein said syst em is configured such that said display unit displays real-time datacomprising at least one of a subject’s location, altitude, velocity, pace, and distance traveled. 29. An exercise monitoring system, comprising: (a) an electronic positioning device configured to receive electromagnetic signals from three or more sources so that said monitoring system can determine at l east one of a subject’s velocity or pace, wherein said electronic pos itioning device is provided as part of a data acquisition unit ; (b) a physiological monitor; (c) a display unitconfigured to be worn by a user and for simultaneously displaying real-time dataprovided by said electronic positioning device and said ph ysiological monitor, wherein said display unit is separate from sa id 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 devic e 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 co mponent)”). Likewise, the display unit is referred to interchangeably as a “unit” and a “component.” Id. col.3 l.3 (describing “a

2008-1516 4display 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 fr om each other.” Id. col.8 ll.36-39. The claims and specification also indicate that the dat a acquisition unit—including its 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 acquisiti on 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.”) (em phasis added). The structural relationships among t he electronic positioning device, the physiological monitor, and the display unit we re also addressed during the prosecution of the ’759 patent. Prior to its second am endment, claim 1 did not include the claim term “data acquisition unit.” Instead, it recited: 1. (amended) An exercise monitoring system, comprising: (a) an electronic positioning device; (b) a physiological monitor, and (c) a display unit configured for di splaying 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 Constructi on Statement, Doc. No. 21 Ex. 2 (“ Doc. 21 ”), Part M, Paragon Solutions, LLC v. Timex Corp. , No. 1:06-CV-677 (S.D. Ohio July 23, 2007) (J.A. 289). Th e examiner rejected claim 1 (amended) as

2008-1516 5anticipated by U.S. Pat ent No. 6,013,007 (“Root”), whic h the examiner concluded “disclose[d] an electronic posit ioning device, a physiological monitor, [and] a display unit.” Doc. 21 , Ex. 2-N (J.A. 295) (cit ations omitted). In response, the applicants further amended claim 1 to recite: 1. (twice amended) An exercisemonitoring system comprising: (a) a data acquisition unit comprising an electronic positioning device and [; (b)] a physiological 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 confi gured 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 tothe subject while performing the physical activity, and further wherein said system is configured such t hat 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 applicant s also made similar amendments to application claim 18—which ultima tely 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 di splay unit is separate from the data acquisiti on unit and is configured to display real-time data. . . .

2008-1516 6Similarly, independent claim 18 has been amended to specify that the electronic positioning device is provi ded as part of a dat a acquisition unit which is separate from the display unit. . . . The Root patent describes a monito r for providing an athlete with performance data. In contrast to the structure required by independent claims 1 and 18, as amended herein, t he monitor described in Root is a unitary structure in whic h the data acquisit ion unit and t he 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 Paragon alleged that va rious 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 heartrate 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 Ti mex products, the electronic positioning device (GPS transceiver) and the physiological moni tor (heart rate moni tor) 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 thatthe “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

1 After allowance but prior to iss uance, the applicants further amended Claim 29, but that amendment is not relevant to this appeal. 2Paragon identified seven accused Time x products as exemplary: T59551, T5C391, T5E671, T5F011, T5G 311, T5J985, T59561, and T56311.

2008-1516 7rates (valid defined as a rate betw een 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 approxim ately .1 - 1 second before the watch will display the individua l’s heart rate depending on the other functions that the watch must comple te 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 sinc e it was power ed on every 3.57 seconds. The wireless transmission take s .25 seconds to complete. The watch uses the information from the GPS transceiver to calculate speed (based on an algorithmic smoothing of the GPS s peed reported), average speed (calculated based on the dist ance 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 (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 appr oximately .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). Id. ¶¶ 13-16 (J.A. 526-27). Following briefing and a Markman hearing, the district court construed disputed claim terms including “data ac quisition unit,” “display unit,” and “displaying real-time data.” Claim Construction Op. at 2-9. Relying on the doct rine of prosecution disclaimer, the district court construed “data acquisiti on unit” as “one struct ure that includes the electronic positioning device and the physiological monitor.” Id. at 5. The district court construed “display unit” as “a unit for disp laying 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 immediatel y without contextually meaningful delay so that the information is displayed in a time frame experi enced by people.” Id. at 9. The

2008-1516 8parties stipulated to noninfringement, subject to Paragon’s right toappeal the district court’s claim constructions. Stipulation ¶ 18 (J.A. 527-28); Final Judgmentat 1. The district court entered final judgmentof noninfringement, and Paragon timely appealed. We have jurisdiction pu rsuant to 28 U.S.C. § 1295(a)(1). II. DISCUSSION A. Claim Construction 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 sources available to the public that show what a person of skill in the art would have understood disputed claim language to mean. Those sour ces include the words of the claims themselves, the remainder of the specification, the pros ecution history, and extrinsic evidence concerning re levant scientific principles , the meaning of technical terms, and the state of the art.” Id. at 1314 (internal quotation marks and citations omitted). 1. “data acquisition unit” The district court construed “data acquisi tion unit” to mean “ one structure that includes the electronic positioning de vice and the physiological monitor.” Claim Construction Op. at 5. Paragon disagr ees, having argued to the di strict court that “data acquisition unit” meant “an assemblage of inter-related components that unify the function of acquiring data from an electroni c positioning device and a physiological

2008-1516 9monitor.” Id. at 2. On appeal, Paragon offers a sl ightly modified proposed construction: “an assemblage of inter-related components that perform the function of acquiring data from an electronic positioning device and a physi ological monitor.” R eply Br. of PlaintiffAppellant Paragon Solutions, LLC at 29. Timex argues that t he 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 structur e, or whether it can be made up of physically separate structures. a. Claim Language Each party argues that the claim languag e supports its construction. Timex argues that the claims “are written in stru ctural terms,” specifying a data acquisition unit that is “separate from” the di splay 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 m ade up of separate structures . Claim 6 recites “[t]he system of claim 1, wherein sa id electronic positioning dev ice comprises a GPS device, and further wherein said data acquisition unit further comprises a support member, and said GPS device and said physi ological 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 both a GPS device (the electronic positioning device) and a physiological monitor. Clai m 7 recites “[t]he system of claim 6, wherein said GPS device and said physiol ogical 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 ar e separately removable from the support member. Thus, claim 7’s recitation of a “removably secured” electronic positioning

2008-1516 10device and the physiological monitor sugges ts that the data acquisition unit may be made up of separate physi cal structures. Timex next argues that the recitation in claim 29 that “said el ectronic positioning device is provided as partof a data acquisition unit” sugges ts that the data acquisition unit must be a single structure that encompasse s 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 electroni c positioning system is part of the data acquisition unit, by reciting “a physiological monitor” in a separat e limitation, with no mention of the “data acquisition unit,” it is apparent that the data acquisition unit may be separate from and need notinclude the physiological monito r. Contrary to Timex’s argument, it is our view that the recitation of a “data acqui sition 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 t he 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 reci tation of “removably se cured” elements in claim 7 can be read to suggest persuasivel y 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. Ra ther, they are part of a fully integrated written instrument, consisting principally of a specification that concludes with the claims. For that reason, claimsmust be read in view of the specification, of which they are a part.”) (citations and intern al quotation marks omitted).

2008-1516 11b. Specification In the specification, Pa ragon’s proposed construction fi nds strong support in one key sentence: Of course, the data acquisition co mponent of a monitoring system according to the present invention ma y even comprise multiple structures which are physically separate from each other. ’759 patent col.8 ll.36-39. As discussed ab ove, 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 figur e, only three structures are shown and described: an electronic positioni ng device, a physiological monitor, and a display unit. Id. fig.1. Each structure is show n separate from each of the other
structures. Id. Figure 1 is consistent with a nd supports the conclusion that the electronic positioning device an d the physiological monitor may be separate structures. Timex seeks to avoid the implications of figure 1 by arguing t hat the specification discloses two separate embodiments, only one of which is claimed. Specifically, Timex concedes that, in the configuration depi cted in figures 1 and 2, “the electronic positioning device is separate from the physiological monito r.” Br. of Appellee Timex Corp. at 32. However, according to Time x, figures 3, 4, and 5 introduce a singlestructure data acquisition unit, and it is on ly 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, th e specification makes clear t hat the invention is not so limited. See ’759 patent col.8 ll.6-8 (“An exercise monitori ng system according to the

2008-1516 12present invention may comprise a single st ructure, or may be subdivided into one or more component structures.”); id. col.8 ll.36-40 (“[T]he data ac quisition component of a monitoring system according to the presentinvention may even comprise multiple structures which are physically separate from each other.”). In light of this language, we disagree with Timex that the stru ctural configuration depicted in figure 1 is nothing more than an unclaimed embodiment. c. Prosecution History The district court did not suggest t hat either the claim language or the specification compelled a construction of “data acquisiti on unit” that was limited to a single structure. Rather, the district c ourt reasoned that the applicants’ statements during prosecution in response to the Patent Office’s “notific ation of problems due to the preexisting Rootpatent” resulted in a clear and unmi stakable disavowal of “the concept of an assemblage of inter-related parts and embr ace[d] a single structure unit concept.” Claim Construction Op. at 5. Specifically, the distri ct court relied on the applicants’ amendment of claim 1 “to require that the electronic positio ning device and physiological monitor are prov ided as a ‘data acquisition un it,’” and on the applicants’ argument that the amendment overcame Root“by separating the da ta acquisition unit from the display unit which in Rootare apparently provided in a single unit.” Id. at 4. We cannot agree with the district court’s inte rpretation of the prosecution history. The examiner rejected claim 1 as antic ipated by Root because Root disclosed an electronic positioning device, a physiol ogical monitor, and a display unit. Doc. 21 , Ex. 2-N (J.A. 295). Root disclosed all thr ee elements in a si ngle structure. See, e.g. , Root fig.6. To overcome Root, the applicants amended the claims to s eparate out the display unit from the remaining structure. The wa y that the applicants c hose to express this

2008-1516 13separation was to characterize the electr onic positioning device and the physiological monitor collectively as a “data acquisition uni t,” then to add the limi tation requiring that the display unit be separate fr om 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 moni tor described in Root is a unitary structure in which the data acquisition uni t and the display screen are provided as a single unit.” Doc. 21 , Ex. 2-P (J.A. 308). “[A] patentee may limit the meaning of a claim term by making a clear and unmistakable disavowal of sco pe 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 th e claims to require a separate data acquisition unit and disp lay unit, and by remarking that this distinguished the “unitary st ructure” of Root, the applic ants clearly and unmistakably disavowed a single structure that encompassed an electron ic 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 clear ly 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.

2008-1516 14We conclude that, read in light of t he specification, t he 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 physica lly separate structures during prosecution. We therefore construe “data acquisition unit” as used in t he ’759 patent as “a structure or set of structures that includes at least the electronic positioni ng device and the physiological monitor.” 2. “display unit” The district court construed “display unit” to mean “a unit for displaying real-time data provided by the data acquisition unit.” Claim Construction Op. at 7. Paragon disagrees. Paragon argued to the district court that “a disp lay unit” should be construed as “an assemblage of inter-related components that unify the function of displaying data from the electronic positioning devic e and the physiolog ical monitor.” Id. at 5. On appeal, Paragon argues that t he district court’s construction was wrong in three respects, each of which we address in turn. First, Paragon argues that the district court was wrong to construe “display unit” as displaying data “provided by the data acqui sition unit.” Rather, Paragon argues, the claim language permits the data to be provided bythe individual components of the data acquisition unit—namely, the electronic positioning device and the physiological monitor. We agree with Para gon. Claim 1 recites “a display unit configured for displaying real-time data provided by said electronic positioning device and said physiological monitor .” ’759 patent col.28 ll.3-5 (emphasis added). The claim unambiguously states that the data provided to the display unit comes from both the electronic positioning device an d the physiological monitor. Likewise, the specification

2008-1516 15makes clear that the electronic positioning device and the physiological monitor may be independently in communication with the disp lay unit, to provide data used in the display. See, e.g. , id. col.3 ll.3-5 (disclosing “a disp lay unit (or component) configured for displaying data provided by the electr onic positioning device and the physiological monitor”); id. col.7 ll.32-34 (“The system of FIG. 1 generally comprises an electronic positioning device 5 and a physiological monitor 6 , both of which are in electrical communication with a display unit 7 .”); id. figs.1 & 2. Nothing i dentified by the parties in the prosecution history undermines the conclusi on that the display unit displays data provided either independently or over a common transmission path from both the electronic positioning device and the physiological monitor. The district court’s construction combined the sources of data by incorrectly substituting “data acquisition unit” for “s aid electronic positioning device and said physiological monitor.” Because we have de termined that the data acquisition unit may be made up of multiple structures, it is important to make clear that the data displayed by the display unit may be obtained from th e claimed electronic pos itioning device and the claimed physiological monitor either separately or over a common transmission path. Second, Paragon argues that “display unit” should not be limited to a single structure, just as “data ac quisition unit” should not be limit ed to a single structure. Preliminarily, we note that there is nothing in the district court’s construction that would appear to limit “display unit” to a single struct ure. The district court merely concluded that the display unit must be a “unit”—which is the exact claim term. Moreover, there is no reason why the word “unit” in the term “display unit” would be limited to a single

2008-1516 16structure, when the pat entee used the word “unit” in “data acquisition unit” to refer to one or more structures. “We apply a ‘pre sumption that the same terms appearing in different portions of the claims should be giv en the same meaning unle ss it is clear from the specification and prosec ution history that the terms have different meanings at different portions of the claims.’” PODS, Inc. v. Porta Stor, Inc. , 484 F.3d 1359, 1366 (Fed. Cir. 2007) (quoting Fin Control Sys. Pty ., Ltd. v. OAM, Inc. , 265 F.3d 1311, 1318 (Fed. Cir. 2001)); see also, e.g. , Phillips , 415 F.3d at 1314 (“Because claim terms are normally used consistently throughout the pat ent, the usage of a term in one claim can often illuminate the meaning of the same term in other claims.”). The parties have identified nothing in the claims, the specification, or the pr osecution history that would suggest that “unit” in “display unit” means anything different fr om “unit” in “data acquisition unit.” The claimed “display unit” may therefore be multiple structures. Finally, Paragon argues that “display unit” should not have been construed to require “displaying real-time data,” because the claim recites merely that the display unit is “ configured fordisplaying real-time data.” ’759 patent col.28 l.3 (emphasis added). Contrary to Paragon’s argument, the district court did not construe “display unit” to require “displaying real-time data.” Rather, it construed “display unit” as “a unit for displaying real-time data.” Claim Construction Op. at 7 (emphasis added). The district court explained further that “‘for’ denotes a function for which the display unit is configured.” Id. Paragon was therefore wrong to ch aracterize the district court’s construction as requiring the display unit to actually “display[] real-time data,” rather than merely be configured to do so.

2008-1516 17In sum, we modify the district court’s construction of “display unit” and construe “display unit” as used in t he ’759 patent as “a structure or set of structures, separate from the data acquisition un it, for displaying real-time data provided by both the electronic positioning device and the physi ological monitor independently or over a common transmission path.” 3. “displaying real-time data” The district court construed “displaying re al-time data” to mean “displaying data substantially immediately without contextually meaningful del ay so that the information is displayed in a time fr ame experienced by people.” Claim Construction Op. at 9. As an alternative basis for affirmance, Timex ar gues that this construction was incorrect and that its products cannot infringe under the correct construction. Both before the district court and on appeal, Timex argues that “displaying real-time data” means “displaying the measured paramet er at the given moment in time that the measurement of the parameter occurs.” Id. at 8. Paragon argues that t he district court’s construction was correct and that Time x’s proposed construction would require instantaneous display, which is not possible in practice. a. Claim Language Although not addressed by the district c ourt or the parties, we find important aspects of the claim language itse lf to provide at least some insight into the meaning of “real-time.” Specifically, claim 1 recites t hat the “display unit configured for displaying real-time data” is “separate fr om [the] data acquisition unit” that includes the electronic positioning device and the physiological m onitor that provide the data. ’759 patent col.28 ll.3-6. Thus, when the claimed system is in operation, t he displayed data must first be acquired by the electronic positioning device and the physiological monitor and

2008-1516 18then transmitted to the display unit for display. Even assuming that this transmission happens at the speed of light, it still takes a non-zero amount of time. Thus, what the claims describe as “displaying real-time da ta” cannot possibly mean displaying data literally instantaneously, because the claims themselves require a transmission that necessarily takes some time, however minute that might be. Second, claim 1 identifies five types of“real-time data,” at least one of which must be displayed: “location, altitude, veloci ty, pace, and distance traveled.” Three of these types of real-time data—location, al titude, and distance traveled—require the electronic positioning device to receive three or more signals thatenable the device to calculate a position. See, e.g. , ’759 patent col.3 ll.6-10 (“The electronic positioning device is configured to receive electromagneticsignals from three or more sources so that the monitoring system c an determine at least one of a s ubject’s location, altitude, velocity, pace, and distance traveled.”); id. col.6 ll.46-52 (“The electronic positioning device uses electromagnetic signals from three or more sources in order to provide data indicative of one or more of the subject’s location, altitude, velocity, pace and/or distance traveled. By way of example, the electronic positioning component may comprise a GPS device which utilizes signal s from satellites of the Global Positioning System . . . .”). Receiving and processing these signals necessarily takes a non-zero amount of time. See, e.g. , id. col.9 ll.27-28 (describing “p rocessing of GPS signals in order to determine the subject’s location”). Moreover, the other two ofthe claimed types of r eal-time data—velocity and pace—are calculations of the ra te of movement. Because a rate of movement is simply distance moved over time (or time over distance moved), calculation of a rate of

2008-1516 19movement necessarily requires the passage of a non-zero amount of time. More particularly, calculation of a rate of movem ent requires sufficient time to have elapsed to allow for a meaningful measurement. Similarly, in dependent claim 14, the “physiological monitor comprises a heart rate monitor.” Id. col.28, ll.51-52. The measurement of a heart rate necessarily requires the passage of time between at least two heartbeats. Thus, from the claim language alone, it isclear that in this case “real-time” cannot mean instantaneous, and must permit at least some amount of time to pass to allow for both the processing limitations of t he system and the time required to accurately measure the data t hat is to be displayed. b. Specification Each of the parties relies heavily on the s pecification for its construction of “real time.” Timex first points out t hat the specification is critical of prior art that does not provide “instantaneous” feedback, because “[ h]uman nature requires instantaneous feedback for motivation and encouragemen t.” ’759 patent col.1 ll.29-30; see also id. col.23 ll.50-52 (criticizing prior art bec ause runner cannot determine “instantaneous velocity”). Timex is correct that the specification criticiz es the prior art as failing to provide “instantaneous” feedback. However, taken in context, the specification’s criticisms are targeted at syst ems that do not provide any feedback during the course of the physical activity itself, so that the person engaged in the activity would have the opportunity to modify his activity in respons e. Specifically, immediately following the sentence concerning “inst antaneous feedback for motivati on and encouragement,” the specification states:

2008-1516 20[M]any athletes also do not know how to train effectively for maximal improvement. For example, com petitive runners may have difficulty determining whether their pace on a particular day of training is too fast or too slow. Id. col.1 ll.31-36. The specif ication also includes a sect ion entitled “Analytical and Training Methods,” in which it describes in detail the use of the electronic monitoring system—including various alarms—to allow the user to modify his or her activity in response to data collected and di splayed during the activity. See id. col.23 l.28-col.27 l.63. Thus, the specification’s criticism ofprior art as not pr oviding “instantaneous” feedback cannot be read as suggesting thatthe patented invention displays data literally instantaneously. Rather, the criticism of prior art is more appropriately read to distinguish the inventi on’s “real-time” display from prio r art methods that stored data for review only after the activity was complete, so that the user could not make modifications during the course of the acti vity. Thus, the specification supports a construction of “real-time” in th is case that precludes intent ionally delaying the display of data by storing it for later review. The specification’s references to “instantaneous” feedback do not preclude some delay to allow for the proc essing limitations of the system and the time required to accurately m easure the data that is to be displayed. Timex also relies on the specification’s re ferences to providing data “at any given moment.” See ’759 patent col.13 ll.4-8 (disclosing that “an i ndividual can use the GPS device of the monitoring system . . . in order to determine their ve locity at any given moment (e.g., in miles per hour), their pace at any given moment (e.g., in terms of minutes per mile)”); id. col.13 ll.16-29 (discl osing that “a heart rate monitor device incorporated into a monitoring system accord ing to the present invention may display a subject’s heart rate at any given moment”). The problem with Timex’s reliance on the

2008-1516 21language “at any given moment” is that this language is no more or less clear than “realtime.” The term “at any given moment” might mean literally instantaneously, or it might allow for the passage of some amount of time. As the district court recognized, Timex’s “given moment” language is therefore unhelpful in ascertaining the meaning of “real time.”In addition to the portions of the specif ication identified by the parties and the district court, we note two additional aspects of the specificatio n relevant to the construction of “displaying real-time data.” Fi rst, the specification expressly states that the invention can be practiced using commercially available technology. See ’759 patent col.12 ll.1-4 (“In orderto provide the above-descr ibed functionality, the GPS device utilized in embodiments of the pres ent invention may employ conventional, commercially-available components.”); id. col.14 ll.52-55 (“The ox imeter device utilized in embodiments of the present invention may employ commercially-available components in order to provide the functi onality described above.”). Plainly, the commercial GPS technology available at the time of filing—November 9, 1999—was not able to display data literally instantaneously. Thus, the fa ct that the specification describes embodiments using commercially avai lable products confirms that “displaying real-time data” does not requi re instantaneous display. Second, like the claims, the specificati on expressly describes measuring rate data, which necessarily requires the passage of time. See, e.g. , ’759 patent col.3 ll.6-10 (“The electronic positioning device is config ured to receive electromagnetic signals from three or more sources so that the monito ring system can determi ne at least one of a subject’s location, altitude, velocity , pace , and distance traveled.”) (emphases added);

2008-1516 22id. col.3 ll.11-13 (“The physiological monitor may be chosen from the group consisting of: an oximeter and a heart rate monitor.”) (emphasis added); id. col.22 ll.16-23 (describing a display unit with regions displaying “the subjec t’s heart rate (in beats per minute)” and “the subject’s velocity (in miles per hour or kilometers per hour) or the subject’s pace (e.g., in minutes per mile)”). In this respect, th e specification again confirms that that “displaying real-time dat a” must permit the passage of time required to accurately measure the dat a that is to be displayed. Paragon defends the district court’s cons truction by referring to a separate portion of the specification—t he only part of the specificat ion in which the term “realtime data” actually appears. That portion ofthe specification stat es that “[t]he systems and methods of the present inve ntion, for example, provi de real-time data and feedback useful to individuals performi ng a physical activity (such as athletes).” ’759 patent col.6 ll.39-41. According to Paragon, this sentence supports t he district court’s construction of real-time as “substantiallyimmediately without context ually meaningful delay.” Claim Construction Op. at 9. In essence, in the views of both Paragon and t he district court, the amount of delay that t he system can impose and still be “displaying real-time data” depends on the use to which the system is being put. Under the district court’s construction, if the system is being used in a “context” in which the delay is “meaningful,” then the “displaying real-time dat a” limitation is not met; if, however, the system is being used in a “context” in which the delay is not “meaningf ul,” the display is in “real-time” and the limitation is met. Thus, the district court offers as an example that, “for a runner, [data must be displayed] pr esumably within the stride” to meet the “displaying real-time data” limitation. Id. at 8.

2008-1516 23The problem with construing “displaying real -time data” as used in the claims of the ’759 patent to preclude “contextually meaningful delay” is that such a construction injects a use limitation into a claim written in structural te rms. “[A]pparatus claims cover what a device is , not what a device does .” Hewlett-Packard Co. v. Bausch & Lomb, Inc. , 909 F.2d 1464, 1468 (Fed. Cir. 1990). If the district court’s construction were correct, then the same apparatus might infr inge when used in one activity, but not infringe when used in another. Fo r example, consider a device that had a delay of thirty seconds between the time at which it calculated a user’s velocity and the time that it displayed it. A thirty-second delay might be insignificant in some contexts—including “walking,” “climbing,” and “snowshoeing,” all ofwhich are listed in the specification as activities for which the patented invention is suitable. ’759 patent col.4 ll.52, 54. By contrast, a thirty-second delay in determining velocity would be highly significant in other contexts—for example, short- and middle-distance running or skiing. See id. col.4 l.53. Moreover, the wide variety of contexts disclosed as suitable uses for the claimed exercise monitoring system would render it nearly impossi ble to determine in advance whether the delay in a parti cular system would be sufficientto avoid infringement. See,
e.g. , id. col.4 l.53 (listing “flying” as suitable physical activity); id. col.4 l.53 (listing “singing” as suitable physical activity); id. col.5 ll.38-39 (describing use of invention to monitor activity of “horses and camels”); id. col.7 ll.27-28 (describi ng use of invention for “rehabilitating an inju red animal”). See also, e.g. , Pitney Bowes, Inc. v. Hewlett-Packard Co. , 182 F.3d 1298, 1311 (Fed. Cir. 1999). (di scussing importance of public notice function in claim construction). Absentan express limitation to the contrary, anyuse of a device that meets all of the limitations of an apparatus clai m written in structural terms

2008-1516 24infringes that apparatus claim. See, e.g. , Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc. , 289 F.3d 801, 809 (Fed. Cir. 2002) (holding that “a pat ent grants the right to exclude others from making, usi ng, selling, offering to sale , or importing the claimed apparatus or composition for any use of that apparatus or composition” (emphasis added)); see also Roberts v. Ryer , 91 U.S. 150, 157 (1875) (“The inventor of a machine is entitled to the benef it of all the uses to which it can be put, no matter whether he had conceived the idea of the use or not.”). Construing a non-functional term in an apparatus claim in a way that makes directinfringement 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 in fringers to ascertain the propri ety of particular activities, and is inconsistent with the notice function central to the patent system. See, e.g. PSC Computer Prods., Inc. v. Foxconn Int’l, Inc. , 355 F.3d 1353, 1361 (Fed. Cir. 2004) (emphasizing “the important public notice fu nction of patents—the mechanism whereby the public learns which innova tions are the subjects of t he claimed invention, and which are in the public domain”); see also Halliburton Energy Se rvs., Inc. v. M-I LLC , 514 F.3d1244, 1255 (Fed. Cir. 2008) (emphasizing that claim language should “provide a clearcut indication of the scope of subject matter embraced by the claim” and noting “that the patent drafter is in the best pos ition to resolve the ambiguityin the patent claims”). c. Prosecution History Timex argues that the pros ecution history supports its construction requiring instantaneous display of data. Specifically, Timex argues that “the applicants stressed the ‘real-time data’ limit ation in their Remarks to overco me the Examiner’s rejections” and “argued that the ‘real-time data’ limitation was support ed by the specification,” which “disparages non-instantaneous systems. ” Br. of Appellee Timex Corp. at 58.

2008-1516 25To the contrary, we conclude that the pr osecution history offers further evidence that “real-time,” as used in this case, does not mean instantaneous. After claims 1 and 18 were rejected as anticipated by Root, th e applicants amended the claims to add the “displaying real-time data” limitation. Doc. 21 , Ex. 2-P (J.A. 310); id. , Ex. 2-Q (J.A. 318). In their remarks, the applicants stated, “Furthe rmore, the personal computer depicted in Fig. 7 of R oot cannot be used to display real-t ime data, as required by claim 1. Rather, the personal com puter in Fig. 7 of Root will merely display performance data after the athlete has completed their activity.” Doc. 21 , Ex. 2-P (J.A. 308). The applicants similarly remarked that “Claim 18 al so requires that the display unit display real-time data acquired by the electronic positioning device.” Id. (J.A. 309). The applicants’ remarks disti nguishing Root therefore echo the criticism of the prior art in the specification. In the applic ants’ view, the invention is preferable because it does not intentionally delay the display of data by stor ing it for later review after the athlete has completed his or her activity (as in Root). Ra ther, in this invention, the data is displayed without any intentional delay—i .e., in “real time.” d. Extrinsic Evidence The district court relied heavily on extr insic evidence—namely, a dictionary definition—in construing “display ing real-time data.” Specifica lly, the district court relied on a Microsoft Computer Dictio nary, which defined “real time ” as “[o]f or relating to a time frame imposed by external constraints.” Claim Construction Op. at 9 (quoting Microsoft Computer Dictionary375 (4th ed. 1999)). We have made clear that “dictionaries a nd treatises can be useful in claim construction,” particularly insofar as t hey help the court “to better understand the underlying technology and the way in which one of skill in the art might use the claim

2008-1516 26terms.” Phillips , 415 F.3d at 1318. However, we find the dictionary definition relied on by the district court too vague to be of signif icant help in resolving the dispute in this case. The cited definition sheds no light on whether “real-time” means “instantaneous” or, if not, how much of a delay is permissible. Moreover, we note that definit ions of “real-time” in ot her technical dictionaries suggest that a real-time process cannot invo lve intentional delay or storage for later processing. See Rudolf F. Graf, Modern Dictionary of Electronics 627 (7th ed. 1999) (including definition of “real time” as “T he performance of a computation during the actual time that the relat ed physical process transpires in order that results of the computations are useful in guiding the physical process”); id. (including definition of “real-time operation” as “Dat a-processing technique in which information is utilized as events occur and the information is generated, as opposed to batch processing at a time unrelated to the time the information was generated”); IEEE 100: The Authoritative Dictionary of IEEE Standards Terms(7th ed. 2000) (including definition of “real time” related to “software” as “Pertaining to a system or mode of operation in which computation is performed during the actual time that an external process occurs, in order that the comput ation results can be used to contro l, monitor, or respond in a timely manner to the external process. Contrast: batch.”); Steven M. Kaplan, Wiley Electrical and Electroni cs Engineering Dictionary639 (2004) (includi ng definition of “real-time” as “In computers, that which is processed, or otherwise acted upon, without any delay.”); Harry Newton, Newton’s Telecom Dictionary758 (22d ed. 2006) (“In data processing or data communications, real ti me means the data is processed the moment

2008-1516 27it enters a computer, as opposed to BATCH processing where the information enters the system, is stored and is oper ated on [at] a later time.”). For the foregoing reasons, we modify t he district court’s construction of “displaying real time data” to reflect that, while the data need not be displayed instantaneously, it must be disp layed without any intentional delay, taking into account the processing limitations of the system and t he time required to accurately measure the data. We therefore construe “displaying real-time data,” as used in the claims of this case, as “displaying data without intentional delay, given the proce ssing limitations of the system and the time required to accurately measure the data.” B. Infringement The district court entered judgment of non infringement as a result of Paragon’s stipulation that the accused Ti mex products did not infringe based on the district court’s construction of disputed claim terms. Final Judgmentat 1. Because we have modified the constructions of “data acquisition unit” and “display unit,” we vacate the district court’s judgment of noninfringement. See, e.g. , Howmedica Osteonics Corp. v. Wright Med. Tech., Inc. , 540 F.3d 1337, 1339 (Fed. Cir. 2008) (“B ecause we conclude that the construction of [a] claim term was incorrect, we cannot sustain the stipulated judgment [of noninfringement].”). As an alternative basis for affirmance, Ti mex argues that its accused products cannot meet the “displaying re al-time data” limitation under “ any proper construction.” Br. of Appellee Timex Corp. at58. Specifically, Timex ar gues that the parties have stipulated that, in the accused products, ther e is at least a 2.16-second delay in the display of heart rate data and a 3.92-second del ay in the display of speed, pace, or distance. See Stipulation ¶ 16 (J.A. 527). Timex argues that this delay demonstrates

2008-1516 28that the accused Timex products do not display data in real time, and that it is therefore entitled to judgment of noninfri ngement as a matter of law. As we have held, “displaying real-time data” in the claims of this case permits some delay, but does not permit an intentional delay, given the proc essing limitations of the system and the time required to accuratelymeasure the data. The stipulation does not make clear whether there is any intent ional delay in the display of data in the accused Timex products. To the contrary, t he stipulation indicates that at least some portion of the 2.16-second and 3.92-second delays are attributable to processing limitations. See id. ¶ 13 (J.A. 526) (“The wireless transmission takes 0.06 (sixty milliseconds) to complete.”); id. (“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 th e time or date).”); id. ¶ 16 (J.A. 527) (“The wireless transmission takes .25 seconds to complete.”); id. (“Once the information is received by the watch, there is an additional delay ofapproximately .1 to 1 sec ond before the watch will display the requested information depending on the ot her functions that the watch must complete first (e.g. up dating the time or date).”) The stipulation also strongly suggests that at least some part of the delay is attr ibutable to the time required to accurately measure the data—in particular, sampling of various rates. See id. ¶ 13 (J.A. 526) (“The monitor averages the last four valid ra tes (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.”); id. ¶ 16 (J.A. 527) (discussing calc ulation of pace as “based on distance traveled over 17.85 se conds and then inverted”).

2008-1516 29At oral argument, counsel for Timex argue d for the first time that the accused Timex products incorporate an intentional delaybetween the time at which data is acquired, and the time at which it is displayed. See Oral Arg. at 28:54-29:10, available at http://oralarguments.cafc.uscourts.gov /mp3/2008-1516.mp3 (“The Court: Are you suggesting you have a built-in dela y here? Timex: We do. . . . It’s an issue of battery. Battery life. Maintaining battery life.”). Because the parties’ stipulation makes no mention of any intentional delay between the time at which data is acquired and the time at which it is displayed for the purpose of maintaining battery life, and because the factual question of whether t he accused products incorporat e such an intentional delay precludes us from concluding as a matter oflaw that Timex’s accused products do not satisfy the “displaying real-tim e data” limitation, we reject Timex’s alternative basis for affirmance. III. CONCLUSION For the foregoing reasons, we modify the di strict court’s claim constructions. As used in the ’759 patent, “data acquisition unit” means “a structure or set of structures that includes at least the electronic positi oning device and the physiological monitor”; “display unit” means “a struct ure or set of structures, separ ate from the data acquisition unit, for displaying real-time data provided byboth the electronic positioning device and the physiological monitor independently orover a common transmission path”; and “displaying real-time data” means “display ing data without intenti onal delay, given the processing limitations of t he system and the time required to accurately measure the data.” Accordingly, we vacate the judgmentof noninfringement and remand for further proceedings consistent with this opinion. VACATED AND REMANDED

2008-1516 302008-1516 31 COSTS Each party shall bear its own costs.