Research Frontiers Incorporated v. E Ink Corporation et al

Filing 171

MEMORANDUM ORDER re 162 REPORT AND RECOMMENDATION is ADOPTED in all respects re claim construction. Signed by Judge Leonard P. Stark on 12/13/16. (ntl)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
RESEARCH FRONTIERS, INCORPORATED,
Plaintiff,

v.

C.A. No. 13-1231-LPS

E INK CORPORATION, E INK HOLDINGS
INC., SONY ELECTRONICS INC., SONY
CORPORATION, BARNES & NOBLE INC.,
BARNESANDNOBLE.COM LLC, and
AMAZON.COM INC.,
Defendants.
MEMORANDUM ORDER
WHEREAS, Magistrate Judge Burke issued a 48-page Report and Recommendation (D.I.
162) ("Report"), dated March 24, 2016, recommending that the Court adopt certain claim
constructions for disputed terms in U.S. Patent Nos. 5,463,491 (the "'491 Patent"); 6,606,185
(the '"185 Patent''); and 6,271,956 (the '"956 Patent") (the "patents-in-suit");
WHEREAS, on April 11, 2016, Plaintiff Research Frontiers, Incorporated ("Plaintiff')
objected to the Report (D.I. 164) ("Objections"), and specifically objected to the Report's·
constructions of the terms "light modulating unit comprising a suspension," "light valve
suspension," "light-modulating unit," "liquid light valve suspension," and "SPD film," arguing
that the constructions improperly limit the terms to embodiments that control light transmission
using a suspension of particles opening through particle alignment and closing through Brownian
movement (see, e.g., D.I. 164 at 2-3);
WHEREAS, on April 28, 2016, Defendants E Ink Corporation, E Ink Holdings Inc., Sony

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Electronics Inc., Sony Corporation, Barnes & Noble Inc., BarnesandNoble.com LLC, and
Amazon.com Inc. ("Defendants") responded to the Objections (D.I. 165), arguing that Judge
Burke properly construed the claims as being directed to "suspended particle devices" ("SPDs")
"and that the disputed claim limitations require (1) control of light transmission (2) via particle
alignment (to open) and Brownian movement (to close)" (D.I. 165 at 1-3);
WHEREAS, the Court has considered the parties' claim construction disputes addressed
in the Report de novo, see St. Clair Intellectual Prop. Consultants, Inc. v. Matsushita Elec.

Indus. Co., Ltd, 691 F. Supp. 2d 538, 541-42 (D. Del. 2010); 28 U.S.C. § 636(b)(l); Fed. R. Civ.
P. 72(b)(3);
NOW THEREFORE, IT IS HEREBY ORDERED that:
1.

Plaintiffs Objections (D.I. 164) are OVERRULED. Judge Burke's Report (D.I.

162) is ADOPTED in all respects.
2.

Plaintiff objects to Judge Burke's construction of "light modulating unit

comprising a suspension." Judge Burke construed the term as "a unit which controls light
transmission using a suspension of particles opening through particle alignment and closing
through Brownian movement." (D.I. 162 at 29) Plaintiff argues that Judge Burke should not
have limited the terms based on how the suspension functions, contending that the term should
be construed as "a unit comprising a suspension of light absorbing or reflecting particles that
changes its appearance when activated." (D.I. 164 at 3) The Report correctly rejected Plaintiffs
broad construction, noting that the patent defines "light modulating element" as encompassing
two different types of suspensions. (D.I. 162 at 26) (citing '185 patent at 1: 18-25) The patent
explains that, in the absence of an electrical field, the suspended particles block the transmission
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of light by assuming random positions through Brownian movement, and, in the presence of an
electrical field, the suspended particles become aligned in a way that allows light to pass through
the suspension. (Id.) (citing '185 patent at 1:26-40)
Plaintiff now raises a new argument that claim differentiation (between independent
claims 1 and 22 of the ' 18 5 patent) militates in favor of a broader construction of "light
modulating unit comprising a suspension." (D.I. 164 at 4) According to Plaintiff, Judge Burke's
construction of the disputed term is coextensive with his construction of the term "suspended
particle device" ("SPD"). (Id.) Plaintiff argues that claim 22 demonstrates that this cannot be
correct, because the patentee's use of the term "SPD" in that claim indicates that "[i]f the
patentee intended to restrict claim 1 to SPDs, he would have done so explicitly." (Id. at 4)
Although "other claims of the patent in question, both asserted and unasserted, can ... be
valuable sources of enlightenment as to the meaning of a claim term," Phillips v. A WH Corp.,
415 F.3d 1303, 1314 (Fed. Cir. 2005), the doctrine of claim differentiation "cannot alter a
definition that is otherwise clear from the claim language, description, and prosecution history,"
OJ Corp. v. Tekmar Co., 115 F.3d 1576, 1582 (Fed. Cir. 1997). Even assuming that Judge
Burke's construction gives similar or identical scope to the terms "SPD" and "light modulating
unit comprising a suspension," this fact would not alter the proper construction, given the clarity
with which the patent defines the disputed term (as discussed in the Report).
3.

Plaintiff argues that Judge Burke's construction of "light valve suspension" as "a

liquid suspension of particles opening through particle alignment and closing through Brownian
movement" improperly imports functional limitations from the specification into the claims.
(D.I. 164 at 8) To the contrary, the patent defines a "light valve suspension" as a liquid

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suspension of particles that operates to control the transmission of light, in the manner described
in Judge Burke's construction. (See D.I. 162 at 30-31; '185 patent at 1:26-43)
4.

Plaintiff objects to Judge Burke's construction of"light-modulating unit" as "a

unit which controls light transmission using a suspension of particles," arguing that this
construction improperly imports the limitation of "controlling light transmission" from the
specification into the claims, and thereby excludes electrophoretic displays ("EPDs") from the
scope of the claims. (D.I. 164 at 9) As the Report notes, however, the patentee overcame an
exami_ner' s rejection during the prosecution of the '491 patent by emphasizing the control of light
transmission. (D.I. 162 at 12-13) When a patentee "characterizes an aspect of his invention in a
specific manner to overcome prior art," the patentee disavows embodiments of the invention that
are inconsistent with that characterization. Purdue Pharma L.P. v. Endo Pharm., Inc., 438 F.3d
1123, 1136 (Fed. Cir. 2006). Such definitive statements constitute disavowal even when they are
not strictly necessary to overcome a prior art rejection. See Saffran v. Johnson & Johnson, 712
F.3d 549, 559 (Fed. Cir. 2013). Because the patentee unequivocally stated that the patented
devices control light transmission, Judge Burke was correct to include this limitation in his
construction of this term.
5.

Plaintiff argues that Judge Burke's construction of"liquid light valve suspension"

as "a liquid suspension of particles opening through particle alignment and closing through
Brownian movement" is improper because the patent assigns a broader definition to the term.
(D.I. 164 at 10) ,Although the Court agrees with Plaintiff that the patent specification defines a
"liquid light valve suspension" as a "'liquid suspending medium' in which a plurality of small
particles are dispersed" (id.; see also '491 patent at 2:53-55), Judge Burke is also correct th_at the

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patent and prosecution history unequivocally explain that the small particles open through
particle alignment and close through Brownian movement. (D.I. 162 at 21-24) Thus, the Report
is correct to include these limitations in its construction.
6.

Plaintiff argues that Judge Burke's construction of "SPD film" is incorrect

because it would exclude EPDs from the scope of the claims, which Plaintiff contends are a type
of suspended particle device. (D.I. 164 at 10) Given Judge Burke's thorough analysis of this
issue, and especially his discussion of the intrinsic evidence (D.I. 162 at 31-33), Plaintiffs
conclusory argument gives the Court no reason to reject his recommendation.
7.

Given the detailed reasoning provided in the Report, and given that the parties

have not raised any arguments that are not adequately addressed therein, the Court finds it
unnecessary to address Plaintiffs Objections any further.

HON. LE ~ARD P. STA
UNITED STATES DISTRICT JUDGE

December 13, 2016
Wilmington, Delaware

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