DCT
3:12-cv-01067
Pacing Tech LLC v. Garmin Intl Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Pacing Technologies, LLC (Delaware)
- Defendant: Garmin International, Inc. and Garmin USA, Inc. (Kansas)
- Plaintiff’s Counsel: Blank Rome LLP
- Case Identification: 3:12-cv-01067, S.D. Cal., 07/26/2012
- Venue Allegations: Plaintiff alleges venue is proper in the Southern District of California because Defendants conduct business in the district, including selling products through national retailers located there and making the Garmin Connect web service available to residents.
- Core Dispute: Plaintiff alleges that Defendant’s fitness devices (Forerunner, Edge, Swim) and associated software (Garmin Connect, Garmin Fit) infringe a patent related to systems for pacing repetitive motion activities.
- Technical Context: The technology involves integrated systems of portable electronic devices and networked services that provide users with customized pacing information during athletic activities such as running, swimming, or cycling.
- Key Procedural History: This filing is a First Amended Complaint. The complaint notes that the asserted patent is a continuation of an earlier application which issued as U.S. Pat. No. 7,825,319, establishing an earlier priority date. Plaintiff also alleges that it marks its own competing product, the PaceDJ application, with the patent number, which may be relevant to questions of notice and willfulness.
Case Timeline
| Date | Event |
|---|---|
| 2005-10-06 | '843 Patent Priority Date |
| 2011-07-XX | Plaintiff launches PaceDJ application |
| 2011-10-XX | Defendant announces Forerunner 910XT |
| 2011-10-XX | Defendant announces Garmin Fit app |
| 2012-01-24 | U.S. Patent No. 8,101,843 Issues |
| 2012-07-26 | First Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 8,101,843, System and Method for Pacing Repetitive Motion Activities, issued January 24, 2012 (Compl. ¶11).
The Invention Explained
- Problem Addressed: The patent describes a need for an improved method of pacing individuals during activities like running or cycling, beyond what was offered by simple metronomes or basic music players. Specifically, it identifies a need for a networked system that can provide customized pacing using a large, updatable catalog of media files and user-specific data ('843 Patent, col. 2:37-45).
- The Patented Solution: The invention is a computer-implemented system where a user's portable device communicates with a networked server. The server maintains user profiles and a database of data files (e.g., music). The system can select, modify (e.g., alter the tempo of a song), and provide these files to the user's device to help them maintain a target pace during their activity, potentially using GPS data to inform the process ('843 Patent, Abstract; Fig. 1).
- Technical Importance: The technology combines server-side user profiles, a media database, and a user's portable device to deliver a dynamic and personalized pacing experience, an advancement over standalone devices with static content ('843 Patent, col. 2:48-61).
Key Claims at a Glance
- The complaint alleges infringement of "one or more claims" without specifying them (Compl. ¶26). Based on the infringement theory, the system claims appear most relevant. Independent claim 1 is representative:
- Independent Claim 1: A pacing system comprising:
- storage means for storing a tempo or a pace value corresponding to at least one pre-selected activity type and for storing at least one data file having information for producing a tempo or a pace signal in a form that is audible or visible;
- selection means for selecting the at least one data file based on the tempo or pace value;
- output means responsive to the selection means for playing the at least one data file to produce the signal; and
- connection means for transferring the at least one data file to or from the storage means.
- The complaint appears to reserve the right to assert other independent and dependent claims.
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities include Garmin's portable GPS-enabled fitness devices (e.g., "Forerunner," "Swim," and "Edge" product lines), the "Garmin Connect" web service, and the "Garmin Fit" smartphone application (Compl. ¶18).
Functionality and Market Context
- The complaint alleges that the accused devices are used to track fitness metrics such as speed, distance, and pace (Compl. ¶19).
- The Garmin Connect web service is described as a platform that allows users to create and edit workout information, including "pacing information," which can then be transferred to a Garmin device (Compl. ¶36).
- This combination of a web service and a portable device allows a user to define a workout on a server and then use a portable device to execute that workout, which forms the basis of the infringement allegation (Compl. ¶36-¶37).
- The complaint alleges these products are central to Garmin's business in the fitness market (Compl. ¶16, ¶18).
- Visual Evidence: No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
'843 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| storage means for storing a tempo or a pace value corresponding to at least one pre-selected activity type and for storing at least one data file... | The Garmin Connect website allows users to create and store "workout information, including pacing information." The accused Garmin devices (e.g., Forerunner, Edge) store this workout information transferred from the website. | ¶36 | col. 7:35-44 |
| selection means for selecting the at least one data file based on the tempo or pace value | The system allows a user, via the Garmin Connect web service, to "pre-select and designate activities and a target pace or tempo," which is then used to create workout information that is transferred to the portable device. | ¶13, ¶36 | col. 5:4-8 |
| output means responsive to the selection means for playing the at least one data file to produce the signal | The accused Garmin devices "output workout information to users" and "measure users' performance during workouts," which is used for "pacing and other purposes." | ¶37 | col. 9:5-11 |
| connection means for transferring the at least one data file to or from the storage means | Users transfer the workout information from the Garmin Connect website to a personal GPS device using "communications devices, such as the USB ANT Stick or USB cable." | ¶36, ¶39 | col. 5:20-24 |
- Identified Points of Contention:
- Scope Questions: A central question may be whether the term "data file having information for producing a tempo or a pace signal" reads on the accused functionality. The patent specification heavily emphasizes using music files and their tempo (beats per minute) as the pacing signal ('843 Patent, col. 9:8-20). The complaint alleges Garmin's system uses "pacing information," but does not specify if this is music-based or numerical data (e.g., displaying a target pace of "8:00 min/mile"). This potential distinction between music-tempo-based pacing and numerical-data-based pacing could be a key issue.
- Technical Questions: Claim 1 recites "means-plus-function" limitations (e.g., "selection means"). Infringement will require that the accused Garmin system performs the identical function and uses a structure that is the same as or equivalent to the structure disclosed in the patent's specification. The court will have to determine what structure the patent discloses for the "selection means" and whether the Garmin Connect feature for manually creating a workout plan is structurally equivalent.
V. Key Claim Terms for Construction
The Term: "data file having information for producing a tempo or a pace signal"
Context and Importance: The definition of this term is critical to the scope of the patent. The dispute will likely center on whether this term is limited to media files (like music) that have an inherent tempo, or if it is broad enough to cover workout-parameter files that contain numerical targets for a user to follow. Practitioners may focus on this term because the patent's specification repeatedly discusses music tempo modification, while the accused products are widely known for displaying numerical performance data.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent claims the signal can be "audible or visible," which could encompass a visual display of a numerical pace target ('843 Patent, cl. 1). The specification also refers to downloading "music or other audio, video, or text data files," which could arguably include a text-based workout file ('843 Patent, col. 8:15-16).
- Evidence for a Narrower Interpretation: The specification's detailed description is overwhelmingly focused on music. It discusses "tempo-modified musical piece[s]" ('843 Patent, col. 2:14), "beats per minute (BPM) or tempo of the music" ('843 Patent, col. 9:9-10), and discloses a system that "cross-references... a song database" ('843 Patent, col. 14:1-10). This context may support an interpretation limited to media files.
The Term: "selection means for selecting the at least one data file"
Context and Importance: As a means-plus-function term, its scope is not its literal meaning but is defined by the corresponding structure disclosed in the patent. The infringement analysis will depend on whether Garmin's system for a user to build a workout on a website is structurally equivalent to the "selection means" described in the patent.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent describes a user interacting with a web site to "select music having a comparable BPM," which involves user choice ('843 Patent, col. 11:65-12:1).
- Evidence for a Narrower Interpretation: The patent also describes a more automated structure, such as a "software subsystem for automatically selecting the at least one data file" ('843 Patent, col. 18:60-62) and a system that "cross-references user profile data... with the song database to identify songs that match" ('843 Patent, col. 14:1-5). This suggests an automated or semi-automated matching process, which may differ from a user manually creating a workout from scratch.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement, stating that Garmin provides customers with instructions via quick start manuals, owner's manuals, FAQs, and tutorial videos on its website (Compl. ¶39). These materials allegedly instruct and encourage users to create custom workouts with pacing information on the Garmin Connect website and transfer them to their devices in a manner that infringes the '843 Patent (Compl. ¶39).
- Willful Infringement: The complaint alleges both pre- and post-suit willfulness. Pre-suit knowledge is alleged based on Garmin's "due diligence" in its own patent prosecution and, more specifically, on its alleged knowledge of Plaintiff's competing PaceDJ app, which is allegedly marked with the '843 patent number on its associated website (Compl. ¶25-¶26, ¶29). Post-suit knowledge is alleged from the date of service of the original complaint (Compl. ¶35).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the patent's claims, which are heavily supported by descriptions of modifying and playing music tempo, be construed to cover the accused Garmin system, which primarily appears to use and display numerical performance data as its "pacing signal"?
- A second key issue will be one of structural equivalence under the means-plus-function framework: is the accused system, where a user manually defines workout parameters on a website, structurally equivalent to the "selection means" disclosed in the patent, which appears to describe a system for automatically cross-referencing user data with a song database to select matching music files?
- A central evidentiary question for damages will relate to notice and willfulness: did Garmin have pre-suit knowledge of the '843 patent through its awareness of the competing, and allegedly marked, PaceDJ product, or did knowledge only attach upon service of the lawsuit?