Neev v. Abbott Medical Optics Inc. et al
Filing
146
MARKMAN OPINION. Signed by Judge Robert B. Kugler on 3/26/2012. (lih)
NOT FOR PUBLICATION
(Doc. Nos. 121)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
____________________________________
:
JOSEPH NEEV,
:
:
Plaintiff,
:
Civil No. 09-146 (RBK)
:
v.
:
MARKMAN OPINION
:
ABBOTT MEDICAL OPTICS, INC. and :
RAINFOREST ACQUISITION, INC.,
:
:
Defendants.
:
____________________________________:
KUGLER, United States District Judge
Presently before the Court are motions for claim construction on U.S. Patent No.
6,482,199 (filed Aug. 2, 2000) (“the ‘199 Patent”) by Plaintiff Dr. Joseph Neev (“Plaintiff”) and
Defendant Abbott Medical Optics, Inc. (“Defendant”). On March 6, 2012, the Court held a
hearing pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996) (“Markman
hearing”). There, and in their briefing prior to the hearing, the parties presented proposed
constructions concerning up to nineteen claim terms. For the reasons set forth below, the Court
adopts Defendant’s construction of “target region” and “target material.” The Court adopts
Plaintiff’s constructions of all other disputed claim terms. For claim terms as to which the
parties do not dispute the proper construction, the Court adopts the parties’ agreed-upon
constructions. Finally, the Court denies Defendant’s motion to strike.
I. Background
A.
Procedural History
1
Plaintiff is the owner and sole inventor listed on the ‘199 Patent, which is embodied in,
among other forms, a laser used in LASIK® corrective vision procedures. Plaintiff alleges that
Defendant infringed the ‘199 Patent and Plaintiff accordingly seeks damages, an injunction, and
attorney’s fees and costs. Compl. ¶¶ 13-14.
Plaintiff filed suit against Defendant pursuant to 35 U.S.C. § 281 et seq., claiming that
Defendant has infringed seven independent claims and twenty nine additional dependent claims
of the ‘199 Patent.1 (Pls.’ Opening Claim Construction Br. 1). Plaintiff states that Defendant’s
sale of the IntraLase FS device, which is used for LASIK® eye surgery, directly infringes these
claims in the ‘199 Patent. (Id.) Defendant responds that the ‘199 Patent is either invalid and/or
will not be infringed by Lupin’s ANDA Products.
Defendant furthermore asserted counterclaims against Plaintiffs, seeking declaratory
judgment that Plaintiff’s ‘199 Patent is invalid and/or that Defendant’s products do not infringe
Plaintiff’s patent. (Def. Answer & Countercls. ¶¶ 1-11).
B.
Brief Description of the Product at Issue
At issue in this case is the construction of terms contained in the claims of the ‘199 Patent
that are allegedly being infringed by a surgical laser developed and distributed by Defendant.
The core of the invention in the ‘199 Patent is a method for modifying materials, such as bodily
tissues, using pulsed laser bursts at short and frequent intervals. (Pl. Opening Claim
Construction Br. 5-6). Plaintiff’s invention claims novelty because it improves on the prior
pulsed laser systems by reducing the collateral damage caused by the pulsed laser system to
tissues surrounding the target area. Id. Plaintiff’s method of achieving this more precise
modification of the target area was through utilizing repeated laser pulses to continually modify
1
Specifically, Plaintiff asserts that Defendant has infringed claims 1, 2, 5-7, 10-15, 20-25, 27, 28, 30, 34, 50-54, 61,
67, 71, 77, 80-83, 85, and 86 of the ‘199 Patent.
2
the target area and then allowing the residual heat, or thermal energy, in the area to dissipate.
Id.2 As discussed below, the disputed terms primarily concern the character and utilization of the
laser to achieve the claimed result.
C.
Procedural History
On March 5, 2009, Plaintiff filed a Complaint alleging that Defendant infringed the ‘199
Patent. On April 6, 2009, Defendant filed an answer and counterclaims. On July 24, 2009,
Defendant filed its first request for ex parte reexamination with the United States Patent and
Trademark Office (“PTO”). This first request for reexamination focused on two pieces of prior
art, arguing that when viewed in a new light, these pieces created a substantial new question
regarding patentability. The PTO disagreed and rejected Defendant’s application for a
reexamination. On October 28, 2009, Defendant filed a second request for reexamination, citing
one piece of prior art that it had cited in the initial reexamination application as well as three
other pieces of prior art not previously cited. The request for reexamination was granted by the
PTO in December of 2009.
In Defendant’s request for reexamination, Defendant argued that there was a substantial
question of patentability with regard to independent claim 1 and its dependent claim 2 of the
‘199 Patent and that these claims should be invalidated as anticipated and/or obvious in light of
the prior art. On October 26, 2010, the PTO issued a reexamination certificate that affirmed, as
amended, the patentability of claims 1 to 4 of the ‘199 Patent. See 7826th Reexamination
Certificate, U.S. Patent 6,482,199 C1. In addition, the PTO allowed additional new claims 17
through 86 of the ‘199 Patent.3
2
The Abstract of the ‘199 Patent states that the patented product is “[a] method and apparatus . . . for fast precise
material processing and modification which minimizes collateral damage.” The invention claims to achieve this
result by “[u]tilizing optimized, pulsed electromagnetic energy parameters.” (Abstract, ‘199 Patent).
3
The PTO did not reexamine the patentability of claims 5 through 16 of the ‘199 Patent.
3
II.
Legal Standard for Claim Construction
To prove patent infringement, a plaintiff must demonstrate that the accused device or
method contains all the limitations of the claimed invention. Johnson Worldwide Assocs., Inc.
v. Zebco Corp., 175 F.3d 985, 988 (Fed. Cir. 1995). As a prerequisite to the ultimate disposition,
however, a court must determine as a matter of law the meaning and the scope of the disputed
patent's claims. (Id.). Claim construction is a question of law; therefore, it is “[t]he duty of the
trial judge . . . to determine the meaning of the claims at issue.” Exxon Chem. Patents, Inc. v.
Lubrizoil Corp., 64 F.3d 1553, 1555 (Fed. Cir. 1995).
The scope of a patented invention is defined by the enumerated claims that comprise the
patent. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005). Absent an express intent
to impart a novel meaning, the words of a claim are given their "ordinary and customary
meaning," which is defined as "the meaning that the term would have to a person of ordinary
skill in the art in question at the time of the invention." Id. at 1312-13 (citations omitted). The
court must adopt the perspective of one who "read[s] the words used in the patent documents
with an understanding of their meaning in the field, and [who has] knowledge of any special
meaning and usage in the field." Id.
Intrinsic evidence, which consists of materials within the patent itself, including the
claims, the specification, and the prosecution history, is the key initial component of claim
construction. Id. at 1314. Claim construction begins with intrinsic evidence—“[f]irst and
foremost . . . the language of the claims themselves,” since the claim language is chosen by the
inventor to distinctly claim the subject matter of the invention. ACTV, Inc. v. Walt Disney Co.,
346 F.3d 1082, 1088 (Fed. Cir. 2003). “Because the claim language is chosen by the patentee to
4
particularly point out and distinctly claim the subject matter of the invention, the claim terms
chosen by the patentee carry a presumption that they mean what they say and have the ordinary
meaning that would be attributed to those words by persons skilled in the relevant art.” Id.
(internal citations omitted).
Furthermore, the specification can "act[] as a dictionary when it expressly defines terms
used in the claims or when it defines terms by implication." Vitronics Corp. v. Conceptronic,
Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). It is also "entirely appropriate for a court, when
conducting claim construction, to rely heavily on the written description for guidance as to the
meaning of the claims." Phillips, 415 F.3d at 1317.
Secondarily, a court may draw on extrinsic evidence regarding "relevant scientific
principles, the meaning of technical terms, and the state of the art." Id. Extrinsic evidence
derives from sources outside the patent and prosecution history, such as expert testimony,
dictionaries, or treatises, and although it may be useful, "it is unlikely to result in a reliable
interpretation of patent claim scope unless considered in the context of the intrinsic evidence."
Id. at 1319. Moreover, the Federal Circuit has cautioned that "the use of the dictionary may
extend patent protection beyond what should properly be afforded by the inventor's patent." Id.
at 1322.
III.
Terms for Which All Parties Agree that the Court Should Adopt a Construction
The following subsections present claim terms that the parties agree require construction.
Subsection A presents terms for which the parties agree on the proper construction, and
Subsection B presents terms for which the parties disagree on the proper construction. Because
all parties agree that the terms identified in these subsections require construction, these terms
5
are properly considered “at issue” in this litigation and the Court will adopt constructions of
these terms.
A.
Terms for Which There Is Both Agreement that the Court Should Adopt a Construction,
and Agreement by Both Parties as to the Construction the Court Should Adopt.
Plaintiff and Defendant have agreed on the construction of the terms “[modification]
threshold volumetric power density,” “power density threshold for material ablation,” “deposited
volumetric power density,” “power densities within the region targeted for modification,”
“commutative ablation,” “absorption characteristic of the material . . . at the target region,”
“absorption of the target region,” “scattering characteristic of the material at the target region,”
and “scattering of the target region.” Both Plaintiff and Defendant urge the Court to adopt the
agreed-upon constructions. These claim terms appear in claims 1, 5, 80-83, 85, and 86 of the
‘199 Patent. Pl. Opening Br. 10. Plaintiff asserts that Defendant has infringed all of these
claims, among other claims of the ‘199 Patent.
Given the role these five terms play in the Patents at issue in this case, the Court will
construe the terms. Further, because Plaintiff and Defendant agree on a set of constructions, the
Court will adopt the agreed-upon constructions. These constructions are reflected in the
following table. (Pls.’ Opening Claim Construction Br. 10).
Table 1
Claim Term
“[modification]
threshold
volumetric power
density”
“power density
threshold for
material ablation”
“deposited
Claim(s) in Which
Term Appears
1, 80-83
Agreed-Upon Construction
“The minimum energy per unit time per unit
volume necessary for material modification.”
5
1, 80-83
“Deposited energy per unit time per unit
6
volumetric power
density”
“power densities
within the region
targeted for
modification”
“commutative
ablation”
“absorption
characteristic of
the material . . . at
the target region”
“absorption of the
target region”
“scattering
characteristic of
the material at the
target region”
“scattering of the
target region”
B.
volume.”
5
5
“The combined effect of successive ablation.”
1, 80-83
“A characteristic of the target material that
determines the absorption of the
electromagnetic energy by the target material at
the target region.”
85, 86
1, 80-83
“A characteristic of the target material that
determines the scattering of the electromagnetic
energy by the target material at the target
region.”
85, 86
Terms for Which There is Agreement that the Court Should Adopt a Construction, but
Where Plaintiffs and Defendants Present Competing Constructions:
Plaintiff and Defendant dispute the construction of several claim terms in the ‘199 Patent.
See Joint Claim Construction and Prehearing Statement, Ex. A. “[I]t is the court’s duty to
resolve . . . a fundamental dispute regarding the scope of a claim term . . . .” O2 Micro Int'l Ltd.
v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008). Because each party
presents a different proposed construction of these fifteen claim terms, and both Plaintiff and
Defendant agree that the Court should adopt constructions (albeit different constructions) of each
term, the Court finds that there is a “fundamental dispute” concerning these terms. Accordingly,
the Court construes each term as set forth below. The parties’ proposed constructions for each
disputed claim term are listed in Table 2 below.
7
Table 2
#
Claim term
1
“operating the
source and
manipulating the
beam parameters”
“manipulating beam
parameters”
2
“manipulating
parameters of the
beam”
“adjusting
characteristics of the
electromagnetic
radiation beam”
“varying at least one
of the following
beam
parameters”
“interaction energy
transients”
Recited in or
Required by
Claims4
1, 2, 20, 21,
22, 23, 25, 27,
28, 30, 34, 5054, 61, 67, 71,
77, 80-83
1, 2, 20, 21,
22, 23, 25, 27,
28, 30, 34, 5054, 61, 67, 71,
77, 80-83
5, 6, 7, 10-15
Plaintiff
Defendant
Operating the source
and setting or adjusting
the beam parameters
prior to or during the
operation of the source.
Setting or adjusting the
beam parameters prior
to or during the
operation of the source.
Varying the wavelength,
energy, power, spot size,
focal volume, duration, or
repetition rate of an
electromagnetic beam
while irradiating the
target material.
Energy transients in the
target material that are
created by interaction of
electromagnetic
radiation with the target
material.
A temporary state of
matter, other than plasma,
that is initiated by the
interaction of
electromagnetic beam
energy with the target.
85, 86
1, 2, 20-25,
27, 28, 30, 34,
50-54, 61, 67,
71, 77, 80-83
1, 2, 20-25,
27, 28, 30, 34,
50-54, 61, 67,
71, 77, 80-83,
85, 86
Interaction energy
transients would
normally include plasma,
but in the application for
the patent, Neev
disclaimed plasma from
4
Independent claims are listed in bold typeface, whereas dependent claims are listed in regular
typeface.
8
3
4
5
“preparing the target
region of the target
material by spatially
or temporally
varying at
least one of an
absorption
characteristic of the
material or a
scattering
characteristic of the
material at the target
region”
“operating the
source at a pulse
repetition rate
greater than 0.1
pulses per second
until a target volume
in the target region
has been modified”
“allowing interaction
energy transients
caused by the
electromagnetic
pulses to
substantially
decay so that
material
modification is
effected”
1, 2, 20-25,
27, 28, 30, 34,
50-54, 61, 67,
71, 77
“allow interaction
energy transients
caused by the pulsed
electromagnetic
radiation beam to
decay sufficiently
such that the
material can be
modified”
85, 86
interaction energy
transient.
Altering the absorption
Changing the absorption
or scattering
or scattering
characteristic of the
characteristics of the
target region of the
target region by
target material in time or introducing a substance,
space, prior to
such as a doping agent.
irradiating the region
with the electromagnetic
pulses.
1, 2, 20-25,
27, 28, 30, 34,
50-54, 61, 67,
71, 77, 80-83
Operating the source at
a pulse repetition rate
greater than 0.1 pulses
per second until a target
volume in the target
region has been
modified.
1, 2, 20-25,
27, 28, 30, 34,
50-54, 61, 67,
71, 77, 80-83
Allowing energy
transients in the target
material that are created
by interaction of
electromagnetic
radiation with the target
material and caused by
the electromagnetic
pulses incident on the
target material to
substantially decay such
that the material is
modified.
Allow energy transients
in the target material
that are created by
interaction of
electromagnetic
radiation with the target
material and caused by
the electromagnetic
pulses incident on the
target material to
9
Firing multiple
electromagnetic pulses at
a rate greater than one
pulse every ten seconds
at the same target region
until a desired volume
within that target region
has been modified.
Allow(ing) the decay, via
the passage of time, of an
interaction energy
transient, caused by the
delivery of a single
electromagnetic pulse to
the target region, prior to
subsequent irradiation, so
that the material is
modified.
6
“cumulative residual
thermal energy left
in the material by a
pulse train”
5-7, 10-15
substantially decay such
that the material can be
modified.
Remaining accumulated
thermal energy left in
the target material by a
pulse train.
“Thermal energy” means
energy from the
electromagnetic radiation
that was converted to
heat energy resulting in a
temperature increase.
A “pulse train” is the
delivery of multiple
exposures of EM
radiation to the same
target region in the target
material.
“Cumulative residual
thermal energy left in the
material by a pulse train”
refers to the residual
thermal energy that
builds up at a particular
target region in the target
material after multiple
exposures of EM
radiation by the pulse
train each depositing a
certain amount of
residual thermal energy.
The ‘199 Patent is structured with two major independent claims, claims 1 and 5, from
which the majority of the 86 claims depend. Independent claims 1 and 5 claim a method of
operating a laser to achieve the desired material modification and ablation. Claims 79 through
83 are also independent method claims for operating a laser. Claims 84 through 86 are
independent claims directed to an apparatus for performing the method, rather than the method
itself, and were added during the reexamination proceedings.
10
Claim 1 and its numerous dependent claims are the major claims at issue in this case.
Claim 1 consists of a preamble and five separate elements. The claim is directed to a method of
using a pulsed laser to modify a target material in a controlled and variable speed manner. The
claim recites five elements that are necessary to achieving this result. Element (a) requires
providing a source for the pulsed laser. Element (b), which was added during reexamination,
requires the preparation of the target material in a particular manner. Element (c) requires the
operation of the laser source and adjusting the parameters until the material is able to be
modified. Element (d) describes a pause between pulses to allow the energy to decay and the
material to be modified. Element (e) requires the pulse to be operated at a rate of greater than
one pulse every 10 seconds until the target material has been modified. Several of the claim
terms in the preamble of Claim 1 and each of its five elements are at issue in this case.
The disputed claim terms will each be discussed in turn below.
1. “operating the source and manipulating the beam parameters,” “manipulating beam
parameters,” “manipulating parameters of the beam,” “adjusting characteristics of the
electromagnetic radiation beam,” and “varying at least one of the following beam
parameters”
Plaintiff’s and Defendant’s claim construction dispute regarding these terms centers
around the relevant time period during which the laser beam must be adjusted. Plaintiff’s
construction allows for the beam to be adjusted “prior to or during the operation of the source,”
whereas Defendant’s construction requires the beam to be adjusted “while irradiating the target
material.” Defendant notes that several portions of the specification discuss the adjustment of
the beam settings in conjunction with the operation of the laser pulse source. Def. br. at 17-19
(citing, inter alia, ‘199 Patent at col.7 ll.39-58, col.8 ll.24-37, col.9 ll.21-35). Defendant argues
11
that because “the specification teaches monitoring the amount of material being ablated and
using this information to reduce the laser repetition rate,” the specification envisions adjustment
of the laser pulse rate simultaneously with the operation of the laser source. Def. br. at 19.
Plaintiff counters that while the beam parameters may be varied during operation, the
specification never requires that the laser beam parameters be varied during operation of the
source. Pl. br. at 10.
The Court adopts Plaintiff’s construction of these claim terms. The ‘199 Patent
specification provides that “[p]referably, at least one characteristic of the material to be ablated is
first determined and then a pulse [or pulse rate] of the directed energy is defined.” ‘199 Patent,
col.6 ll.7-9, 60-65 (emphasis added). The specification further provides that the desired ablation
“may be accomplished using . . . a single pulse.” Id. col.9 ll.19-20. These portions of the
specification assume that the beam parameters may be adjusted prior to operation of the laser
source. Therefore, Plaintiff’s construction of the claim terms as “setting or adjusting the beam
parameters prior to or during the operation of the source” clarifies the meaning of the terms in a
manner supported by the specification.
2. “interaction energy transients”
The parties’ central dispute regarding this claim term focuses on whether the term
includes plasma within its purview. Defendant argues that Plaintiff previously disclaimed
plasma from the scope of the patent during prosecution in order to distinguish Plaintiff’s
invention from prior art. Defendant cites to the prosecution history of the ‘199 Patent, during
which the examiner purportedly understood the ‘199 Patent to distinguish between the
“interaction energy transients” of the ‘199 Patent and the “plasma” disclosed in a previously
issued patent, U.S. Patent No. 5,720,894 (filed Jan. 11, 1996) (“the ‘894 Patent”), issued to Neev
12
et al. Def. br. at 26 (citing Def. Ex. C. at 2). Plaintiff responds that while the patent examiner
may have understood there to be such a distinction, Plaintiff’s silence in the face of the
examiner’s statement does not constitute a disavowal of claim scope. Pl. br. at 16.
The Federal Circuit has held that “silence regarding statements made by the examiner
during prosecution, without more, cannot amount to a ‘clear and unmistakable disavowal’ of
claim scope.’” Salazar v. Procter & Gamble Co., 414 F.3d 1342, 1345 (Fed. Cir. 2005).
Furthermore, the term “plasma” is specifically cited in the claims added during reexamination,
including Claim 21. ‘199 Patent Reex. Cert. col.2 ll.56-59. Therefore, the Court adopts
Plaintiff’s construction of “interaction energy transients” as “energy transients in the target
material that are created by interaction of electromagnetic radiation with the target material.”
3. “preparing the target region of the target material by spatially or temporally varying at
least one of an absorption characteristic of the material or a scattering characteristic of the
material at the target region”
The parties disagree as to the method of preparing the target region of the material to be
modified or ablated. Defendant’s construction proposes that the claim term be construed as
“changing the absorption or scattering characteristics of the target region by introducing a
substance, such as a doping agent.” Def. br. at 22 (emphasis added). Plaintiff argues that this
limitation of the claim term is not proper, as the target material could be modified by mechanical
means that do not require the introduction of a chemical substance. Pl. br. at 14. For the reasons
below, the Court adopts Plaintiff’s construction.
Defendant argues that their construction is proper since the specification does not support
a method of preparing the target material through a means other than through introduction of
chemical substances. Plaintiff cites to several portions of the patent specification that describe
13
different embodiments for preparation of the target material. Id. (citing ‘199 Patent at col.19
ll.41-53, col.20 ll.7-12, col.40 ll.46-55, col.41 ll.40-48, col.42 ll.24-43, col.45 ll.22-29).
However, none of these examples provide for preparation of the material through mechanical
means, as Plaintiff’s proposed construction seeks to encompass. Moreover, both Plaintiff, as
well as Plaintiff’s patent prosecution counsel in the reexamination proceedings, stated during
deposition that they could not point to any portion of the specification that describes using a
mechanical means for modifying the target material.5
Where “[a]ll the descriptions of the invention” in a patent specification concern one
particular embodiment, it is proper to limit a claim to that embodiment. See Hologic, Inc. v.
SenoRx, Inc. 639 F.3d 1329, 1335 (Fed. Cir. 2011) (finding that the “specification ma[de] clear
what the inventors contemplated as their invention” because of the similarity between the
examples provided in the specification). Defendant argues that its construction of the claim term
as “changing the absorption or scattering characteristics of the target region by introducing a
substance, such as a doping agent,” would be consistent with the specification, which only
provides examples of chemical means of modifying the target material.
Plaintiff responds that claims 57 and 58, which depend from independent claim 1,
provide examples “wherein preparing the target region of the target material” may be
accomplished via mechanical means. Specifically, claim 57 teaches that the target material can
be prepared by “creating compression zones with the target region,” and claim 58 teaches that
the target material can be prepared by “changing a density of the target material at the target
5
Plaintiff argues that Defendant’s use of Plaintiff’s reexamination counsel’s deposition
testimony is not proper because Defendant has not qualified Plaintiff’s reexamination counsel as
an expert such that his opinion on claim construction is admissible. Pl. resp. br. at 13 n.5. The
Court finds that Plaintiff’s counsel’s testimony is admissible as a party admission under Federal
Rule of Evidence 801(d)(2)(B), and that Plaintiff is bound by the representations of his counsel.
14
region.” ‘199 Patent at col.5 ll.32-43. The Court agrees with Plaintiff that claims 57 and 58
recite means of preparation that include mechanical means. Defendant argues in response that
claims 57 and 58 are not supported by the specification, and therefore must be limited by the
specification.6 While it is true that ambiguous language in a claim term may be limited when all
the examples in the specification concern one specific embodiment, see Hologic, 639 F.3d at
1335, the duty of the Court while construing the terms is to “[f]irst . . . look to the words of the
claims themselves . . . to define the scope of the patented invention.” Vitronics, 90 F.3d at 1582.
Therefore, since claims 57 and 58 of the ‘199 Patent specifically describe mechanical means of
modifying the target material, it would be improper for this Court to limit the claim terms
beyond their plain meaning by adopting Defendant’s construction. Accordingly, this Court
adopts Plaintiff’s construction of the claim term as “altering the absorption or scattering
characteristic of the target region of the target material in time or space, prior to irradiating the
region with the electromagnetic pulses.”
4. “operating the source at a pulse repetition rate greater than 0.1 pulses per second until a
target volume in the target region has been modified”
The parties’ dispute about this claim term focuses on whether the operation of the laser
source requires “firing multiple electromagnetic pulses,” as Defendant claims, or whether the
method of operating the laser source may involve only one pulse, as Plaintiff claims. In support
6
Defendant argues alternatively that the Court should adopt their claim construction as to this
term because means of modifying the target material envisioned by claims 57 and 58 are not
supported by the specification, and are therefore invalid for lack of written description and/or
enablement under 35 U.S.C. § 112. While this Court’s findings regarding the specification’s
teachings are not necessarily inconsistent with Defendant’s allegations, see discussion supra Part
III.B.3, the Court’s duty during a Markman hearing is limited to construction of the claim terms.
Allegations regarding the validity of patent claims are to be raised and argued at a later time.
Therefore, the Court does not reach the merits of Defendant’s invalidity claim for lack of written
description as to claims 57 and 58.
15
of Defendant’s construction, Defendant refers to a portion of the specification in which Plaintiff
stated,
The inventor recognized that the deposition of a large number of pulses within a
short time duration, which corresponds to high pulse repetition rate, is only
possible because of the condition which the present invention imposes on the
interaction, namely, that most of the energy deposited by a single pulse will be
removed by the ablation products ejected from the material due to the action of
the very same pulse.
‘199 Patent, 21:35-43 (emphasis added). Defendant argues that this explanation of the invention
makes sense only if understood as teaching that more than one pulse must be fired at the target
region to achieve the desired ablative effect. Def. br. at 28-29.
Plaintiff responds that the claim term itself requires operation of the laser source only
“until a target volume in the target region has been modified.” Pl. resp. br. at 18. Plaintiff
argues further that nowhere in the patent specification is there an explicit requirement that more
than one pulse be used to modify the target material.
Indeed, the specification explicitly states that the desired modification can be
accomplished “using either a single pulse, or a plurality of pulses, as desired.” ‘199 Patent col.9
ll.19-20 (emphasis added). Based on the clear language of the specification, therefore, the Court
adopts Plaintiff’s construction of the claim term as “operating the source at a pulse repetition rate
greater than 0.1 pulses per second until a target volume in the target region has been modified.”
5. “allowing interaction energy transients caused by the electromagnetic pulses to
substantially decay so that material modification is effected” and “allow interaction
energy transients caused by the pulsed electromagnetic radiation beam to decay
sufficiently such that the material can be modified”
The main dispute regarding these claim terms focuses on whether Defendant’s proposed
construction, which includes the limitations that the material modification be “caused by the
16
delivery of a single electromagnetic prior to subsequent irradiation.” Def. resp. br. at 13. The
parties disagree about the purpose of the ‘199 Patent’s instruction that interaction energy
transients be allowed to “substantially decay” during the operation of the laser source.
Defendant asserts that the claim term should be construed as teaching that the requisite decay
causes the material modification. Plaintiff argues that, to the contrary, the interaction energy
transient decay does not cause the material modification, but rather minimizes collateral damage
to the target material. Pl. br. at 18.
The specification teaches that the requisite decay period exists to prevent subsequent
pulses from interacting with previous pulses and to allow for controlled material modification.
‘199 Patent col.40 ll.13-24, col.44 ll.10-16. The specification further clarifies that collateral
damage is minimized by allowing the interaction energy transients to decay prior to sending any
further pulses to the target area. Id. Therefore, the Court adopts Plaintiff’s construction, which
avoids importing limitations not present in the claims or the specification of the ‘199 Patent.
Finally, Defendant’s construction of these claim terms focuses on the requirement that
material modification be caused by multiple laser pulses. Def. br. at 13-14. Defendant argues
that Plaintiff’s argument in Plaintiff’s brief is an admission that material modification requires
multiple pulses. Id. at 14 (citing Pl. br. at 6 (“Neev understood that multiple pulse interactions
occurring through the irradiation of pulses of any duration on the target results in the
accumulation over time of energy transients . . .”) (emphasis added)). However, as discussed
above, the specification explicitly contemplates that a single pulse could be delivered to the
target area to achieve material modification. See discussion supra part III.B.6. Therefore,
Defendant’s construction imposes a limitation on the claims of the ‘199 Patent that is not proper
17
in this case. Accordingly, the Court adopts Plaintiff’s proposed constructions of these claim
terms set forth in Table 2 above.
6. “cumulative residual thermal energy left in the material by a pulse train”
The parties’ dispute over this claim term centers around whether a “pulse train” requires
the delivery of multiple pulses, as Defendant contends, or whether it could be satisfied by the
delivery of a single pulse, as Plaintiff contends. Because, as discussed above, the specification
explicitly contemplates that a single pulse could be delivered to the target area, see discussion
supra part III.B.6, the Court adopts Plaintiff’s construction of the term as meaning “remaining
accumulated thermal energy left in the target material by a pulse train.”
IV. Terms for which Defendant Seeks Construction, but Where Plaintiff Contends that No
Construction Is Necessary
Plaintiff and Defendant disagree about whether nine claim terms need to be construed by
this Court.
A.
Terms that Defendant Argues Require Construction, but Where Plaintiffs Argue that No
Construction Is Necessary:
Several of the terms listed in the table below are part of the preambles of their
respective claims. For these terms, Plaintiff and Defendant dispute whether each term limits the
meaning of its respective claim. As to each of these terms, Plaintiff argues that “to the extent the
Court determines it is limiting, this term should be construed [using the identical language of the
claim term].” (Pl. Opening Claim Construction Brief). However, Plaintiff principally argues
that construction of these terms is unnecessary, and ask that the Court decline to construe them.
The Federal Circuit has held that “[w]hen the parties present a fundamental dispute regarding the
18
scope of a claim term, it is the court's duty to resolve it.” O2 Micro, 521 F.3d at 1362.
Therefore, the Court construes the claim terms as set forth below.
Table 3
Claim term
“controlled,
variable rate
material
modification”
“highly
controllable,
variable rate
material removal”
“target material”
“target region”
“material removal
by a continuously
emitting,
continuous wave
(CW) beam of
electromagnetic
radiation”
Recited in
or Required
by Claims
1, 2, 20-25,
27, 28,
30, 34, 5054, 61, 67,
71, 77, 80-83
5, 6, 7, 10-15
Defendant’s Proposed
Construction
1, 2, 5, 6, 7,
10, 11, 12,
13, 14, 15,
20-25, 27,
28, 30, 34,
50-52, 53,
54, 61, 67,
71, 77, 8083, 85, 86
1, 2, 20-25,
27, 28, 30,
34, 50, 51,
52, 53, 54,
61, 67, 71,
77, 80- 83,
85, 86
5-7, 10-15
The entire object targeted for
modification (e.g. tooth, cornea).
Neev depo. at
114:13–115:2.
Kinder depo. at
58:21–60:24.
The specific, fixed location in the
target material that is intended for
modification by the
electromagnetic beam.
Neev depo. at
115:24–116:1.
Kinder depo. at
58:21–60:24.
This term limits the scope of the
claims, even when found in the
preamble. This refers to material
removal by a beam of
electromagnetic radiation that
operates without any intervening
period of zero power as it
interacts with the material.
‘199 patent at, e.g.,
col. 11:8-13:61,
13:10-37, 49: 4257:40
See also Serial No.
09/632,199, Resp. to
Office Action, April
12, 2002, at 5-7.
This term limits the scope of the
claims, even when found in the
preamble. This refers to a process
by which material is modified or
removed at a variable rate by
manipulating the beam
parameters while irradiating the
target material.
19
Supporting
Evidence Cited by
Defendant
199 Patent at 33:2340:24, 42:59-45:33.
Neev depo. at
113:16–114:3.
Kinder depo. at
32:17–21.
“continuously
emitted
electromagnetic
radiation”
“redistributing the
beam in time and
space to form at
least one modified
beam comprising a
plurality of pulses”
5-7, 10-15
“plasma”
21, 22, 25,
80
5-7, 10-15
Continuous EM radiation without
any intervening period of zero
power
The ’199 patent at,
for example, col. 49,
ll. 5-16
and 27-41.
Partitioning the continuous wave ‘199 patent at, e.g.,
beam to separate physical
col. 11:8-13:61,
locations in the material for
13:10-37, 49:
specific time periods with each
42-57:40
period creating a “pulse effect” in See also Serial No.
the “modified beam” at that
09/632,199, Resp. to
physical location, without
Office Action, April
changing the characteristics of the 12,
continuous wave beam of
2002, at 5-7.
electromagnetic radiation.
A state of matter similar to a gas
[None identified]
in which a certain portion of the
particles is ionized.
1. “controlled, variable rate material modification” and “highly controllable, variable rate
material removal”
The Court construes the above terms using the identical language found in the claim
term, respectively as, “controlled, variable rate material modification” and “highly controllable,
variable rate material removal.” These terms are found in the preambles to the independent
claims of the ‘199 Patent. Defendant argues that even though these terms are present in the
preambles of the relevant claims, these terms limit the scope of the claims. Defendant’s
proposed construction for these terms include the limitation that the “material is modified or
removed at a variable rate by manipulating the beam parameters while irradiating the target
material.”
Language in the preamble of a claim should be construed to limit a claim if the claim
preamble is “necessary to give life, meaning, and vitality” to the claim. Pitney Bowes, Inc. v.
Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). In this case, Defendant’s proposed
construction of the claim terms is not necessary because language from Defendant’s proposed
20
construction is present in element (d) of Claim 1. ‘199 Patent Reex. Cert. at col.1, ll.53-57
(“allowing interaction energy transients caused by the electromagnetic pulses to substantially
decay so that material modification is effected permitting the controlled, variable rate material
modification”).
“District courts are not (and should not be) required to construe every limitation present
in a patent's asserted claims.” O2 Micro, 521 F.3d at 1362. Defendant’s proposed construction
of these claim terms are not “necessary to give life, meaning, and vitality” to the above claim
terms, which are found in the relevant claims’ preambles. Therefore, the Court declines to
impose the suggested limitations on these claim terms.
2. “target material” and “target region”
Defendant argues that these terms need to be construed to specify the precise nature of
the area being targeted. Def. br. at 20. Plaintiff responds that the terms do not need to be
construed, as the claim term language is clear and unambiguous.
Element (b) of Claim 1 of the ‘199 Patent, an element that was added during
reexamination, requires “preparing the target region of the target material by spatially or
temporally varying at least one of an absorption characteristic of the material or a scattering
characteristic of the material at the target region.” Defendant argues that because both of the
terms “target material” and “target region” are present in the same element of the claim, they
must refer to different areas of the object being targeted.
Defendant’s proposed construction of “target material” refers to “the entire object
targeted for modification (e.g., tooth, cornea),” whereas “target region” is limited to “the
specific, fixed location in the target material that is intended for modification by the
electromagnetic beam. This distinction is confirmed by language in the patent specification that
21
refers to targeting a “desired location within the three-dimensional space of the target region
while substantially sparing adjacent regions of the target material from any collateral damage.”
‘199 Patent at 10:67-11:7 (emphasis added). Plaintiff’s counsel during the reexamination
proceeding specifically confirmed this understanding during his deposition. Def. Ex. K, Kinder
Dep. Tr. 60:16-24. Therefore, to assist in clarification of the claim terms, this Court adopts
Defendant’s proposed constructions of these claim terms.
3. “material removal by a continuously emitting, continuous wave (CW) beam of
electromagnetic radiation” and “continuously emitted electromagnetic radiation”
Defendant argues that these terms, present in Claim 5 of the ‘199 Patent, must be
construed with the requirement that the laser beam have no “intervening period of zero power”
during its operation. While the first claim term at issue, “material removal by a continuously
emitting, continuous wave (CW) beam of electromagnetic radiation,” appears in the preamble of
Claim 5, the second claim term at issue, “continuously emitted electromagnetic radiation,”
appears in element (a) of the body of the claim. Language in a preamble to a claim need not be
construed unless it is “necessary to give life, meaning, and vitality” to the claim. Poly-America,
L.P. v. GSE Lining Tech., Inc., 383 F.3d 1303, 1309 (Fed. Cir. 2004). Construing the claim term
in the preamble of Claim 5 would be redundant, and therefore unnecessary, in this case.
Accordingly, the Court need only consider construing the claim term in the actual body of Claim
5, namely the claim term “continuously emitted electromagnetic radiation”.
Defendant argues that its proposed construction should be adopted to clarify the nature of
the “continuous” laser beam taught in Claim 5. Defendant cites to two portions of the
specification in support of its construction that the continuous beam described in the ‘199 Patent
has no “intervening period of zero power.” Def. br. at 10 (citing ’199 Patent at col. 49, ll. 5-16
22
and 27-41). However, nowhere in either of these two passages does the specification include the
express language that there must be an “intervening period of zero power.” Insofar as such a
limitation may be present in Claim 5 and its dependent claims, the claim language need not be
added to. Therefore, the Court adopts Plaintiff’s construction of the term “continuously emitted
electromagnetic radiation” as “continuously emitted electromagnetic radiation.”
4.
“redistributing the beam in time and space to form at least one modified beam
comprising a plurality of pulses”
Defendant argues that this claim term, also present in Claim 5, must be construed to
require the creation of a “pulse effect” in a modified beam, such that the beam remains a
“continuous wave beam.” Def. br. at 12. In effect, Defendant’s construction states that the
modified beam is pulsed “in effect” but in actuality never ceases to continuously emit
electromagnetic radiation. Defendant cites to portions of the prosecution history in which
Plaintiff allegedly sought to distinguish between the prior art, including the ‘894 Patent, which
contains examples of pulsed laser beams. Plaintiff previously represented to the patent examiner
that,
There are fundamental differences between the Neev, et al. ‘894 patent system
and the invention of the present application. The beam characteristics . . . are not
changed in the invention of the present application as they are in the Neev, et al.
‘894 patent. In the invention of the present application, the spatial location of the
beam at the target is changed in time to manipulate the distribution of the constant
beam output at a specific place on the target, so the beam itself is never affected,
only its location on the target tissue is changed. The Neev, et al. ‘894 patent does
not teach or even contemplate the use of a continuous wave source, let alone such
a manipulation of the continuous wave beam.
Def. Ex. F at 6. Plaintiff responds that while Plaintiff may have made this statement
during the prosecution history of the ‘199 Patent, finally issued claim language trumps
erroneous statements made in the course of patent prosecution. Pl. resp. br. at 6 (citing
23
Biotec Biologische Naturverpackungen GmbH v. Biocorp. Inc., 249 F.3d 1341, 1348
(Fed. Cir. 2001)).
The Court adopts Plaintiff’s construction of this claim term, because to adopt
Defendant’s proposed construction would be to impose a limitation on the claim, based on the
prosecution history, that contradicts the language of the claims that were actually issued. The
specification of the ‘199 Patent discloses examples of a “redistributed beam” wherein a beamswitching device7 takes a continuously-emitting beam and “rapidly switch[es] out a portion of
the electromagnetic beam so that a pre-determined time during [the resultant pulse] can be
precisely selected.” ‘199 Patent, col. 50 ll.16-25; see id. col. 52 ll.21-32 (emphasis added).
Moreover, to adopt Defendant’s construction would be to exclude the possibility of exercising
Claim 7, which depends from Claim 5 and includes the examples of the beam-switching devices
described in the ‘199 Patent specification. Id. col. 78 ll.54-62. Defendant’s construction would
impose limitations on Claim 5 that are contradicted by the express language of the claim and the
working examples disclosed in the specification. Therefore, the Court adopts Plaintiff’s
construction of the claim term as “redistributing the beam in time and space to form at least one
modified beam comprising a plurality of pulses.”
5. “plasma”
The parties dispute whether the claim term “plasma” needs to be construed. Plaintiff
argues that it does not, whereas Defendant argues that construction would help the jury to
understand the meaning of the term. Defendant cites to the Wikipedia entry for a definition of
“plasma” as “a state of matter similar to a gas in which a certain portion of the particles is
ionized.” Def. br. at 28 (citing Wikipedia, http://en.wikipedia.org/wiki/Plasma_(physics) (last
7
Examples of such beam switching devices are Kerr cells and Pockels cells. See ‘199 Patent at
50:16-24 (describing the operation of the Kerr and Pockels cells).
24
visited Feb. 16, 2012)). Because Defendant does not cite to any further authority in support of
this proposed claim construction, the Court relies on the language of the patent itself and
construes the term as “plasma.”
V. MOTION TO STRIKE
Under Rule 12(f), a party may move to strike from a pleading “an insufficient defense or
any redundant, immaterial, impertinent, or scandalous matter.” A court has “considerable
discretion” in deciding a Rule 12(f) motion. Tonka Corp. v. Rose Art Indus., Inc., 836 F. Supp.
200, 217 (D.N.J. 1993). However, motions to strike are disfavored and usually will be denied
“unless the allegations have no possible relation to the controversy and may cause prejudice to
one of the parties, or if the allegations confuse the issues in the case.” River Road Dev. Corp. v.
Carlson Corp. Ne., No. 89-7037, 1990 WL 69085, at *3 (E.D. Pa. May 23, 1990).
A.
Defendant’s Motion to Strike
Defendant moves to strike two portions of Plaintiff’s Opening Markman Brief under
Federal Rule of Civil Procedure 12(f).8 Defendant argues that these portions are inadmissible as
irrelevant evidence under Federal Rule of Evidence (“FRE”) 402 or as hearsay under FRE 802.
Plaintiff maintains that the paragraphs are relevant and that they are admissible either because
they are not hearsay or because they are admissible under an exception to the hearsay rule. The
Court agrees with Plaintiff that the challenged portions of Plaintiff’s brief are relevant to the
matter of claim construction and are furthermore not hearsay. Accordingly, the Court denies
Defendant’s motion to strike.
Sections II(A) and II(C) of Plaintiff’s Opening Markman Brief are part of the
“Background” section of Plaintiff’s brief and are respectively titled, “The State of the Art at the
8
Specifically, Defendant requests that the Court strike Section II(A) and Section II(C) from
Plaintiff’s Opening Markman Brief. Def. Reply br. at 4.
25
Time of Dr. Neev’s Invention” and “Dr. Neev’s Invention.” Section II(A), citing to the ‘199
Patent specification for support, contains several assertions regarding the extent of known
research in the field at the time of Plaintiff’s invention. For example, Plaintiff states, “[a]t the
time of the invention, research in this field was directed to enhancing material removal by
increasing the power of the electromagnetic energy or by increasing the intensity of individual
pulses of electromagnetic energy.” Pl. Opening Markman br. at 4. Plaintiff further states that “at
the time of the invention, there was a need for a material modification regime that minimized
collateral damage and maximized precision.” Id.
Section II(C) concerns Plaintiff’s state of mind at the time of his invention. For example,
Plaintiff states that he “recognized that ultrashort pulse laser systems provided improved
precision in material and biological tissue modification.” Id. at 5. The section further states that
Plaintiff “sought to develop a method for material modification that allows the use of not only
ultrashort pulse systems, but also systems that have pulse durations of up to several milliseconds
long, while still maintaining the improved precision afforded by the ultrashort pulse laser
system.” Id. at 5-6.
Defendant argues that these and other statements in Section II(A) and II(C) are irrelevant
to the issue of claim construction and should be stricken. Defendant alternatively argues that if
the Court finds that the challenged passages are relevant to the resolution of the claim
construction hearing, the Court nonetheless should strike the passages as hearsay under FRE 802.
At the outset, the Court finds that the challenged statements pass the simple threshold test
for relevant evidence under FRE 401. Rule 401 states that “[e]vidence is relevant if: (a) it has
any tendency to make a fact more or less probable than it would be without the evidence; and (b)
the fact is of consequence in determining the action.” (Emphasis added). The Federal Circuit
26
has held that when construing patent claims, a “court starts the decisionmaking process by
reviewing the same resources as would [the person of ordinary skill in the art], viz. the patent
specification and the prosecution history.” Phillips v. AWH Corp., 415 F.3d 1303, 1312-1313
(Fed. Cir. 2005). The state of the art at the time of the invention is relevant to claim
construction. V-Formation, Inc. v. Benetton Group SpA, 401 F.3d 1307, 1310 (Fed. Cir. 2005).
Thus, the challenged portions of Plaintiff’s brief, which relate to Plaintiff’s skill in the art and the
state of the art at the time of Plaintiff’s invention, are clearly relevant.
Defendant next argues that the statements constitute impermissible hearsay under FRE
802 because the statements concern the novelty of Plaintiff’s invention, and because Plaintiff
attempts to use the statements to prove the truth of the matter asserted (novelty). Plaintiff
counters that the statements made in Section II(A) were not made to prove the truth of the matter
asserted, but rather to show their effect on a person of ordinary skill in the art. The Court agrees
with Plaintiff. Statements in a reference offered for their effect on one of ordinary skill in the art
are not hearsay. Abbott Labs v. Diamedix Corp., 969 F. Supp. 1064, 1066 n.1 (N.D. Ill. 1997).
The Court finds that Plaintiff’s discussion of the state of the art at the time of Plaintiff’s
invention relates to the effect that ongoing research would have had on a person of ordinary skill
in the art. Therefore, these statements are not hearsay.
Furthermore, to the extent that the statements in the challenged sections do not relate to
Plaintiff’s state of mind, the statements are admissible as legally-operative facts. Statements in a
patent have legal consequence, and therefore comprise legally operative facts which are not
hearsay. United States v. Tyler, 281 F.3d 84, 98 (3d Cir. 2002) (“The hearsay rule excludes
verbal acts, statements which themselves affect the legal rights of the parties or are
circumstances bearing on conduct affecting their rights.”). Accordingly, any references to
27
statements in the specification that rely on the legal significance of the issued patent are
admissible.
As noted above, motions to strike are disfavored and usually will be denied “unless the
allegations have no possible relation to the controversy and may cause prejudice to one of the
parties, or if the allegations confuse the issues in the case.” River Road Dev. Corp., 1990 WL
69085, at *3. The Court finds that the statements in the challenged sections are both relevant to
the Court’s claim construction and are not being used for the truth of the matter asserted.
Therefore, the Court denies Defendant’s motion to strike.
VI. CONCLUSION
For the above reasons, the Court adopts Defendant’s construction of “target region” and
“target material.” As specified above, the Court adopts Plaintiff’s constructions of all other
disputed claim terms. For claim terms as to which the parties do not dispute the proper
construction, the Court adopts the parties’ agreed-upon constructions. Finally, the Court
DENIES Defendant’s motion to strike. An appropriate order shall issue.
Date: 3/26/12
/s/ Robert B. Kugler
ROBERT B. KUGLER
United States District Judge
28
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