Global Tech Led, LLC v. Hilumz International Corp. et al

Filing 120

OPINION AND ORDER accepting in part Plaintiffs' proposed construction of claims 1, 14, and 18 of the at-issue patent and rejecting Defendants' proposed construction. See Opinion and Order for the Court's construction of the disputed terms. Signed by Judge John E. Steele on 5/23/2017. (KP)

UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
FORT MYERS DIVISION

GLOBAL TECH LED, LLC, a
Florida limited liability
company,
Plaintiff,
v.

Case No: 2:15-cv-553-FtM-29CM

HILUMZ INTERNATIONAL CORP.,
a
Georgia
corporation,
HILUMZ,
LLC,
a
Georgia
limited liability company,
and HILUMZ USA, LLC, a
Georgia limited liability
company,
Defendants/Third
Party Plaintiffs
JEFFREY J. NEWMAN and GARY
K. MART,
Third Party Defendants.

OPINION AND ORDER
This matter comes before the Court on the parties’ respective
Claim Construction Briefs (Docs. ## 82, 83) filed on September 13,
2016.

Both sides filed Responses (Docs. #84, 85) on September 27,

2016.

A Joint Pre-Hearing Statement (Doc. #90) was filed on

November

1,

2016,

and

the

Court

held

a

“Markman”

1

claim

construction hearing on January 19, 2017.

1

Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996).

I.
This case involves a patent infringement dispute between two
business

partners-turned-competitors

in

emitting diode (LED) lighting industry.

the

retrofit

light

In recent years, LED

bulbs have become popular because they have a much longer lifespan
than traditional incandescent bulbs, and the light they emit
produces significantly less heat.

The circuits that provide

electrical current to LED bulbs do, however, produce a considerable
amount of heat.

This has motivated companies that manufacture LED

bulbs to create – and seek patent protection for – apparatuses
that both house the bulb and allow the heat generated by the
circuitry to be dispersed efficiently.
Plaintiff Global Tech LED, LLC is one such company.

Global

Tech is the assignee of the ownership rights to United States
Patent No. 9,091,424 (the ‘424 Patent), entitled “LED Light Bulb,” 2
which comprises a retrofit LED apparatus 3 made up of: a screw
connector, which is configured to be screwed into a receiving
socket of an electric light fixture; a bracket, which is physically
attached to the screw connector; and a housing, which is rotatably

2

Global Tech was assigned all rights to the ‘424 Patent by Gary
K. Mart (Mart) and Jeffrey J. Newman (Newman), who are managing
members of Global Tech and the inventors of the apparatus
encompassed by the ‘424 Patent. Mart and Newman are also thirdparty defendants in this case, however, for purposes of this Order,
the Court will collectively refer to Global Tech, Mart, and Newman
as “Plaintiffs.”

3

The apparatus is “retrofit” because it is designed to replace
conventional bulbs within lighting assemblies with horizontallyoriented receptacles, like certain streetlights.
- 2 -

coupled to the bracket, and which includes one or more LED units
for generating light and one or more electrically powered cooling
devices to remove heat from the vicinity of the LED units.
#1-1, p. 2.)

(Doc.

This design allows the face of the housing – along

with the back-attached fan (or “heat sink”) – to be rotated
“orthogonally” (ninety degrees) from the receptacle’s connector
base.

This, in turn, enables the heat generated by the circuitry

to be dispelled advantageously away from the LED units, thereby
preserving the life of those units.
Plaintiffs contend that this rotatable feature constitutes
the “true innovation” of the ‘424 Patent and is being infringed by
a retrofit LED apparatus (the Retrofit Kit) invented by Defendants
HiLumz International Corp., HiLumz, LLC, and HiLumz USA, LLC
(collectively, Defendants).

On September 15, 2015, Global Tech

filed a Complaint (Doc. #1) accusing Defendants of “making, using
selling, or offering for sale” one or more lighting products that
infringe the claims the ‘424 Patent, either literally or under the
doctrine

of

equivalents. 4

(Id.

¶

36.)

The

Complaint

seeks

injunctive relief and money damages for Defendants’ willful direct
and indirect patent infringement, in violation of 35 U.S.C. § 271.

4

Defendants are also alleged to have “induced infringement of
claims of at least the ‘424 Patent by having one or more of [their]
distributors and other entities use, sell or offer for sale the
Accused Products and others substantially identical to the Accused
Products with knowledge of the ‘424 Patent.”
(Doc. #1, ¶ 37.)
These allegations are based on a prior version of the Retrofit Kit
and are not relevant to the Court’s construction of the ‘424
Patent.
- 3 -

Defendants do not dispute that the Retrofit Kit similarly
allows the LED unit face, with its own attached heat sink, to be
rotated orthogonally for efficient heat dispersal.

They contend,

however, that the Retrofit Kit cannot support an infringement claim
because the apparatus contains no “screw connector” component,
that is, no connector piece that can be screwed into an electrical
socket and through which electricity travels to power the LED
units.

Rather, their product contains a hose clamp that attaches

to the outside of the electrical socket and which conveys no power
to the units.

Plaintiffs maintain that the “screw connector”

described in independent claims 1, 14, and 18 of the ‘424 Patent
is not required to draw power from the electrical socket.

It is

this “screw connector” term that the Court has been asked to
construe.
II.
A.

Patent Infringement Overview and the Role of Patent Claims
The patent laws permit any person who “invents or discovers

any new and useful process, machine, manufacture, or composition
of matter, or any new and useful improvement thereof, [to] obtain
a patent therefor.”

35 U.S.C. § 101.

Once obtained, a patent

essentially provides notice that the invention described therein
belongs to another and cannot be made, used, or sold without the
patentee’s permission.

Anyone who does so infringes the patent,

entitling the patentee to bring a civil action for infringement.
Id. §§ 271(a), 281; see also Markman, 517 U.S. at 374 (“[P]atent

- 4 -

lawsuits

charge

what

is

known

as

infringement

and

rest

on

allegations that the defendant without authority made, used or
sold the patented invention, within the United States during the
term of the patent therefor.” (internal alterations and citation
omitted)).
An application is required to obtain a patent.
111(a)(1).

Each

application

must

contain

35 U.S.C. §

certain

material,

including a specification, one or more drawings, and an inventor’s
oath or declaration.
115).

Id. § 111(a)(2) (citing id. §§ 112, 113,

“The specification shall contain a written description of

the invention, and of the manner and process of making and using
it . . . and shall set forth the best mode contemplated by the
inventor or joint inventor of carrying out the invention.”
112(a).

Id. §

Moreover, and important here, “[t]he specification shall

conclude with one or more claims particularly pointing out and
distinctly claiming the subject matter which the inventor . . .
regards as the invention.”

Id. § 112(b).

These claims “define[] the scope of the patentee's rights.”
Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 835 (2015)
(quoting Markman, 517 U.S. at 372); see also e.g., Innova/Pure
Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111,
1115 (Fed. Cir. 2004) (“It is a bedrock principle of patent law
that the claims of a patent define the invention to which the
patentee

is

entitled

the

right

to

exclude.”).

Practically

speaking, the claims “function[] to forbid not only exact copies

- 5 -

of an invention, but [also] products that go to ‘the heart of an
invention but avoid[] the literal language of the claim by making
a noncritical change.”

Markman, 517 U.S. at 373-74 (quotation

omitted).
Because

it

is

the

claims

that

define

and

protect

the

patentee’s rights, “[v]ictory in an infringement suit [first]
requires

a

finding

that

the

patent

infringer's product or process.”

claim

covers

the

alleged

Id. at 374 (citations omitted).

This “in turn necessitates a determination of what the words in
the claim mean.”

Id.; see also Interactive Gift Exp., Inc. v.

Compuserve Inc., 256 F.3d 1323, 1330 (Fed. Cir. 2001) (“A finding
of

noninfringement

requires

a

two-step

analytical

approach.

First, the claims of the patent must be construed to determine
their scope.

Second, a determination must be made as to whether

the

construed

properly

claims

read

on

the

accused

device.”

(citing Carroll Touch, Inc. v. Electro Mech. Sys., Inc., 15 F.3d
1573, 1576 (Fed. Cir. 1993))).
Determining what disputed words in a claim mean is a process
known as claim construction.

The claim construction process often

culminates in a “Markman hearing” at which the parties defend their
respective constructions before the Court. 5

“‘[T]he construction

of a patent, including terms of art within its claim,’ is not for
a jury but ‘exclusively’ for ‘the court’ to determine[,] . . .

5

Naturally, claim construction is not required for claim terms
whose meaning is undisputed. Perfect Web Techs., Inc. v. InfoUSA,
Inc., 587 F.3d 1324, 1332 (Fed. Cir. 2009).
- 6 -

even where the construction of a term of art has ‘evidentiary
underpinnings.’”

Teva Pharm., 135 S. Ct. at 835 (quoting Markman,

517 U.S. at 372, 390).

In essence, the district court determines

“the metes and bounds of the claims that define the patent right
. . . as set forth in the patent documents.”

Lighting Ballast

Control LLC v. Philips Elecs. N. Am. Corp., 744 F.3d 1272, 1285
(Fed. Cir. 2014) (en banc), abrogated by Teva Pharm., 135 S. Ct.
831.

The inquiry “is an objective one” under which the court

“seeks to accord a claim the meaning it would have to a person of
ordinary

skill

in

the

art

at

the

time

of

the

invention.”

Innova/Pure Water, 381 F.3d at 1116 (citations omitted).
B.

Claim Construction Principles
The seminal case of Phillips v. AWH Corp. sets forth the

applicable standard for construing disputed patent claims:
In some cases, the ordinary meaning of claim
language as understood by a person of skill in
the art may be readily apparent even to lay
judges, and claim construction in such cases
involves little more than the application of
the widely accepted meaning of commonly
understood words. In such circumstances,
general purpose dictionaries may be helpful.
In many cases that give rise to litigation,
however,
determining
the
ordinary
and
customary meaning of the claim requires
examination of terms that have a particular
meaning in a field of art. Because the meaning
of a claim term as understood by persons of
skill in the art is often not immediately
apparent, and because patentees frequently use
terms idiosyncratically, the 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.

- 7 -

415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (internal citations
omitted).
These

evidentiary

“sources”

categories: intrinsic and extrinsic.

fall

into

two

general

In construing disputed claim

terms, a court must first consider “the intrinsic evidence of
record,

i.e.,

specification

the
and,

patent
if

in

itself,

including

evidence,

the

the

claims,

prosecution

the

history.”

Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.
Cir. 1996) (citing Markman v. Westview Instruments, Inc., 52 F.3d
967, 979 (Fed. Cir. 1996) (en banc)).

“[I]ntrinsic evidence is

the most significant source of the legally operative meaning of
disputed claim language.”
not equal.”
The

Id.

But “[a]ll intrinsic evidence is

Interactive Gift, 256 F.3d at 1331.

language

intrinsic evidence.

used

in

the

claims

tops

the

hierarchy

of

Digital Biometrics, Inc. v. Identix, Inc.,

149 F.3d 1335, 1344 (Fed. Cir. 1998) (“Even within the intrinsic
evidence, however, there is a hierarchy of analytical tools.
actual words of the claim are the controlling focus.”).

The

It is

with that language a court must start, and on that language a court
must remain focused throughout the construction process, “for it
is that language that the patentee chose to use to ‘particularly
point

out

and

distinctly

claim

the

patentee regards as his invention.’”

subject

matter

which

the

Interactive Gift, 256 F.3d

at 1331(internal alterations omitted) (quoting 35 U.S.C. § 112, ¶
2); see also Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d

- 8 -

1298, 1305 (Fed. Cir. 1999) (“The starting point for any claim
construction must be the claims themselves.”).

While the court

primarily focuses on the language used in the specific claims whose
construction is at issue, the court may also appropriately consider
the language used in the patent’s other claims.

Phillips, 415

F.3d at 1314 (“Other claims of the patent in question . . . can
also be valuable sources of enlightenment as to the meaning of a
claim term.”).
Next,

the

court

reviews

the

Interactive Gift, 256 F.3d at 1331.

patent’s

specification.

Given that the specification

is required to “contain a written description of the invention,
and of the manner and process of making and using it,” 35 U.S.C.
§ 112(a), it “is always highly relevant to the claim construction
analysis. Usually, it is dispositive; it is the single best guide
to the meaning of a disputed term.”

Vitronics, 90 F.3d at 1582.

“The written description is considered, in particular to determine
if the patentee acted as his own lexicographer, as our law permits,
and ascribed a certain meaning to those claim terms.

If not, the

ordinary meaning, to one skilled in the art, of the claim language
controls.”

Digital Biometrics, 149 F.3d at 1344.

At the bottom of the intrinsic evidence hierarchy lies the
patent’s prosecution history, which the court may appropriately
consider if it is a part of the record.
F.3d at 1331.

Interactive Gift, 256

This “consists of the complete record of the

proceedings before the [Patent and Trademark Office (PTO)] and

- 9 -

includes the prior art cited during the examination of the patent.”
Phillips, 415 F.3d at 1317.

The prosecution history presents

probative insight into “how the PTO and the inventor understood
the patent,” and often reveals “whether the inventor limited the
invention in the course of prosecution, making the claim scope
narrower than it otherwise would be.” 6

Id.; see also Chimie v.

PPG Indus., Inc., 402 F.3d 1371, 1384 (Fed. Cir. 2005) (“The
purpose of consulting the prosecution history in construing a claim
is to ‘exclude any interpretation that was disclaimed during
prosecution.’” (quoting ZMI Corp. v. Cardiac Resuscitator Corp.,
844

F.2d

1576,

1580

(Fed.

Cir.

1988))).

By

consulting

the

prosecution history, the court can “ensure[] that claims are not
construed one way in order to obtain their allowance and in a
different way against accused infringers.”

Chimie, 402 F.3d at

1384 (citation omitted).
“[I]f after consideration of the intrinsic evidence there
remains

doubt

as

to

the

exact

meaning

of

the

claim

terms,

consideration of extrinsic evidence may be necessary to determine
the proper construction.”

Digital Biometrics, 149 F.3d at 1344.

Appropriate sources include “expert testimony, dictionaries, and
treatises.”

Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358, 1361

6

At the same time, because the prosecution history conveys “an
ongoing negotiation between the PTO and the applicant, rather than
the final product of that negotiation, it often lacks the clarity
of the specification and thus is less useful for claim construction
purposes.” Phillips, 415 F.3d at 1317.
- 10 -

(Fed. Cir. 2014); see also Markman, 52 F.3d at 980.

Although the

extrinsic evidence “can shed useful light on the relevant art”
Vanderlande Indus. Nederland BV v. I.T.C., 366 F.3d 1311, 1318
(Fed. Cir. 2004), it should always be “considered in the context
of the intrinsic evidence.” Phillips, 415 F.3d at 1319.
to

consider

extrinsic

evidence

district court’s discretion.

ultimately

rests

Whether

within

the

Id.

This Court now applies these principles to construe the claims
at issue here.
III.
The parties dispute the meaning of “screw connector” as used
in claims 1, 14, and 18 of the ‘424 Patent.

Defendants contend

that “screw connector” should be construed as “power connector,”
i.e., a connector that actually draws power from the receiving
socket – something Defendants’ Retrofit Kit does not do.
acknowledging

the

absence

of

any

express

claim

While

language

so

requiring, Defendants believe this construction is supported by
the

‘424

history.

Patent’s

specification

and

the

relevant

prosecution

Accordingly, Defendants propose replacing the language

in claim 1 about the screw connector being “a male screw base,
which supports the bracket and housing when [the LED] bulb is
screwed

into

the

receiving

socket”

with:

“wherein

connector draws power from the receiving socket.” 7

7

the

screw

(Doc. #90-1.)

Defendants’ proposed constructions for claims 14 and 18 similarly
include “draw power” limitations.
- 11 -

Plaintiffs
connector”

is

believe
needed.

no

construction

Given

that

the

of

the

claim

term

language

“screw
never

mentions drawing or conveying power, “a person of ordinary skill
in the art” would – according to Plaintiffs - construe the term
“screw connector” as an apparatus that “supports the retrofit light
and allows the light to be turned 90° from the receptacle.”
#82, p. 11.)

(Doc.

In response to Defendants’ proposed construction,

however, Plaintiffs have proposed a counter construction that
rewrites much of the disputed portions of claims 1, 14, and 18.
As to claim 1 specifically, Plaintiffs propose to construe “screw
connector” as “a structure that allows the receiving socket of an
electric light fixture to physically support the retrofit light
emanating diodes (LED), where the LED is coupled to the electric
light fixture by a turning or twisting motion, but the structure
is not required to have threads nor is it required to provide power
to the LED.”

(Doc. #90-1.)

The specific construction question currently before the Court
– and on which the Court held a Markman hearing on January 19,
2017 - is thus whether a “screw connector” is required to be a
“power connector.” 8

To construe the term “screw connector,” the

Court begins, as Phillips dictates, with the specific language
used in claims 1, 14, and 18 and then, if needed, looks to the

8

Defendants previously proposed adding text to this section
requiring the screw connector to have “external screw threads” and
the receiving socket to have “internal screw threads.” (Doc. #68,
p. 4.) That proposal was later withdrawn. (Doc. #83, p. 7 n.3.)
- 12 -

language found in other claims of the ‘424 Patent.
Court

will

consider

prosecution history.

the

‘424

Patent’s

Next, the

specification

and

Finally, and only if necessary, the Court

will turn to any applicable extrinsic evidence.
A.

Claim 1
1)

The Words of the Claim

Claim 1 defines the screw connector as an apparatus “for
screwing the retrofit light emitting diode (LED) bulb into a
receiving socket of an electric light fixture,” which receiving
socket is “for supporting the retrofit light emitting diode (LED)
bulb.”

(Doc. #1-1, p. 24.)

The “electrically powered cooling

device” component limits the screw connector to one that is “a
male screw base” and then returns to function by requiring that
the screw connector “support[] the bracket and housing when the
retrofit [LED bulb] is screwed into the receiving socket.”

(Id.)

The language of claim 1 is thus couched in “support” terms
and does not explicitly require the screw connector to draw power
from the receiving socket.
contained

in

a

patent

Where a particular limitation is not

claim,

the

limitation is not meant to be there.

court

is

to

presume

such

See McCarty v. Lehigh Val R

Co, 160 U.S. 110, 116 (1895) (courts are not to “read into a claim
an element which is not present”); see also Renishaw PLC v. Marposs
Societa' per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998) (“[T]he
resulting claim interpretation must, in the end, accord with the
words chosen by the patentee to stake out the boundary of the

- 13 -

claimed property.” (citation omitted)).

Accordingly, the most

important piece of intrinsic evidence – the words used in claim 1
itself

–

undercuts

Defendants’

contention

that

the

“screw

connector” component of the invention embodied in the ‘424 Patent
must be a “power connector.”
2)

Claim Differentiation

Defendants’
undermined

by

proposed

the

construction

doctrine

of

claim

is

also

significantly

differentiation.

This

doctrine teaches that where a patent contains multiple claims,
“each claim is a separate statement of the patented invention” and
is presumed to have “a purpose that is separate and distinct from
the remaining claims.”

In re Tanaka, 640 F.3d 1246, 1250 (Fed.

Cir. 2011); see also, e.g., Wenger Mfg., Inc. v. Coating Mach.
Sys., Inc., 239 F.3d 1225, 1233 (Fed. Cir. 2001) (“Under the
doctrine of claim differentiation, each claim in a patent is
presumptively

different

in

scope.”).

In

other

words,

when

construing patent claims, a court is guided by the presumption
that each claim accomplishes something different, so to speak,
than the other claims.
Furthermore, where a patent contains claims that depend from
(the “dependent claims”) other claims (the “independent claims”),
a court should hesitate to read a specific limitation contained in
a

dependent

claim

into

an

independent

claim.

Indeed,

“the

presence of a dependent claim that adds a particular limitation
raises a presumption that the limitation in question is not found

- 14 -

in the independent claim.” 9

Liebel-Flarsheim Co. v. Medrad, Inc.,

358 F.3d 898, 910 (Fed. Cir. 2004); see also Innova/Pure Water,
381 F.3d at 1123 (“[T]he doctrine of claim differentiation normally
means that limitations stated in dependent claims are not to be
read into the independent claim from which they depend.” (quotation
omitted)).

The presumption against reading a limitation from one

claim into another “is especially strong when the limitation in
dispute is the only meaningful difference between an independent
and dependent claim.”

SunRace Roots Enter. Co. v. SRAM Corp., 336

F.3d 1298, 1303 (Fed. Cir. 2003).
The presumption is rebuttable, however, and “can be overcome
if the circumstances suggest a different explanation, or if the
evidence

favoring

a

different

claim

Liebel-Flarsheim, 358 F.3d at 910.

construction

is

strong.”

In some cases, for example,

“a contrary construction [may be] required by the specification or
prosecution history.”

Hill-Rom Servs., Inc. v. Stryker Corp., 755

F.3d 1367, 1374 (Fed. Cir. 2014) (citation omitted).
Here, dependent claim 11 of the ‘424 Patent encompasses “[t]he
retrofit LED bulb of claim 1, wherein the screw connector is a
power connector electronically coupled to the one or more LED

9

Dependent claims are, by their very nature, narrower than the
independent claims from which they depend.
Intendis GMBH v.
Glenmark Pharm. Inc., USA, 822 F.3d 1355, 1365 (Fed. Cir. 2016).
Because dependent claims are “presumed valid” even if they depend
from an independent claim that is later declared invalid, 35 U.S.C.
§ 282(a), the inclusion of one or more dependent claims affords
the patentee an additional – albeit more limited - measure of
protection against infringement.
- 15 -

units.”

Because this dependent claim contains an express power

connector limitation, the Court presumes that the screw connector
described in claim 1 is not a power connector.

See Liebel-

Flarsheim, 358 F.3d at 910 (observing that “[t]he juxtaposition of
independent claims lacking any reference to a pressure jacket with
dependent

claims

that

add[ed]

a

pressure

jacket

limitation

provide[d] strong support for [the] argument that the independent
claims were not intended to require the presence of a pressure
jacket”).

That presumption is especially strong, since the only

feature differentiating the invention described in dependent claim
11

from

that

described

in

independent

claim

1

is

the

power

connector requirement; there would be no reason to include claim
11 if the screw connector in claim 1 were already required to be
a power connector. 10

SunRace Roots, 336 F.3d at 1303; see also

Saunders Grp., Inc. v. Comfortrac, Inc., 492 F.3d 1326, 1331 (Fed.
Cir. 2007) (“Given that claim 6 adds the pressure activated seal
limitation to claim 1, the doctrine of claim differentiation
supports the inference that claim 1 encompasses cylinders without
pressure activated seals.

Otherwise, claim 6 would add nothing

to claim 1 and the two would cover identical subject matter.”).

10

Defendants have advanced no explanation for why claim 11
contains an express power limitation, but claim 1 does not. See
Liebel-Flarsheim, 358 F.3d at 910 (finding unrebutted the
presumption that the patentee did not intend for an independent
claim to include a pressure jacket limitation where the defendant
“offered no alternative explanation for why the ‘pressure jacket’
limitation is found in the dependent claims but not in the
corresponding independent claims”).
- 16 -

Consequently, the Court cannot interpret claim 1 as including a
power limitation for the screw connector component unless the ‘424
Patent’s specification or prosecution history sufficiently rebuts
the

especially

strong

presumption

that

the

“screw

connector”

described in claim 1 need not be a “power connector.”
Servs., 755 F.3d at 1374.
piece

of

intrinsic

Hill-Rom

As the Court now discusses, neither

evidence

adequately

supports

Defendants’

connector

necessarily

proposed construction.
3)

The ‘424 Patent’s Specification

Defendants

contend

that

a

power

constitutes part of the “LED Bulb” invention because it is the
only specific type of connector discussed and depicted in the ‘424
Patent’s specification.

Plaintiffs disagree, arguing that a power

connector simply represents the “preferred embodiment” of their
invention.
The patent laws require that the specification “set forth the
best

mode

contemplated

by

the

carrying out the invention.”

inventor

or

joint

35 U.S.C. § 112(a).

inventor

of

“[C]ompliance

with the best mode requirement requires disclosing the inventor's
preferred embodiment of the claimed invention.”
Schein

Pharm.,

(citations

Inc.,

omitted).

301

F.3d

Here,

it

1306,
is

1316

Bayer AG v.

(Fed.

undisputed

Cir.

that

a

2002)
“power

connector” is the “best mode” (i.e. the “preferred embodiment”) of
the screw connector described in claim 1 of the ‘424 Patent.
question is whether it is the required mode/embodiment.

- 17 -

The

The Court cannot conclude that it is.

The Federal Circuit

has “expressly rejected the contention” - raised by Defendants
here - “that if a patent describes only a single embodiment, the
claims of the patent must be construed as being limited to that
embodiment.”
cases).
a

patent

Liebel-Flarsheim,

358

F.3d

at

906

(collecting

The only time an enumerated embodiment may be read into
claim

is

if

there

has

been

a

disavowal

of

patent

protection for an apparatus that does not include the embodiment.
Hill-Rom Servs., 755 F.3d at 1372.

Disavowal “requires that the

specification or prosecution history make clear that the invention
does not include a particular feature or is clearly limited to a
particular form of the invention.”

Id. (quotations omitted).

A

patentee must “demonstrate[] a clear intention to [so] limit the
claim scope [by] using ‘words or expressions of manifest exclusion
or restriction.’”

Liebel-Flarsheim, 358 F.3d at 906 (quoting

Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1327 (Fed.
Cir. 2002)).

Statements in the specification indicating that the

invention embodied in the patent “requires” a certain feature or
describing the feature as “very important” may be sufficient to
“disavow” other embodiments.

Hill-Rom Servs., 755 F.3d at 1372.

Defendants have not pointed to any such affirmative disavowal
language demonstrating a clear intent on Plaintiffs’ part to limit
the scope of claim 1 to screw connectors that are also power

- 18 -

connectors. 11

Without

such

language,

the

fact

that

a

power

connector is the sole type of connector contemplated throughout
the specification cannot rebut the strong presumption created by
the doctrine of claim differentiation that a “screw connector”
need not be a “power connector.” 12

Hill-Rom Servs., 755 F.3d at

1373 (the fact that the patent did not disclose any alternative
embodiment using a wireless datalink did not require a finding
that the patented invention required use of a cable datalink where
there was no actual “language in the specification or prosecution
history

suggesting

that

the

wired

connection

is

important,

11

To the contrary, the last sentence of the specification states
that it is “intended that the protection granted hereon be limited
only by the definition contained in the appended claims and
equivalents thereof” – which definition does not contain any power
limitation. (Doc. #1-1, p. 24.)
12

Defendants also argue that the screw connector must be construed
as a power connector because Plaintiffs did not invent any other
type of connector or power source (Doc. #83, p. 11-12), and
because, without a power connector, the apparatus described in the
‘424 Patent is “inoperable.” (Doc. #85, p. 6.) As to the first
point, the Court is unaware of any requirement that a patentee
invent every component comprising the invention for which he
obtains his patent.
Defendants’ inoperability argument is
similarly misguided. Plaintiffs are not advancing a construction
that prevents the screw connector from being a power connector,
but rather, one under which the screw connector does not have to
be a power connector. See Cordis Corp. v. Medtronic Ave, Inc.,
511 F.3d 1157, 1174 (Fed. Cir. 2008) (observing that courts should
be highly skeptical of “a construction that would render all
embodiments of a claimed invention inoperable, not a construction
that might cover some inoperable embodiments” (emphases added)).
In any event, “inoperability in itself does not doom [a particular]
construction.” AIA Eng'g Ltd. v. Magotteaux Int'l S/A, 657 F.3d
1264, 1278 (Fed. Cir. 2011) (quotation omitted); cf. Saunders, 492
F.3d at 1335 (that a patent may be rendered invalid by a particular
construction “cannot be used as a basis for adopting a narrow
construction of the claims” that is not otherwise supported).
- 19 -

essential,

necessary,

or

the

‘present

invention’”);

Liebel-

Flarsheim, 358 F.3d at 906 (that every embodiment described in the
specification

included

a

pressure

jacket

component

was

insufficient to rebut the claim differentiation presumption where
there was no “clear disavowal of embodiments lacking a pressure
jacket” or any language “disclaim[ing] the use of the invention in
the absence of a pressure jacket”).
4)

Prosecution History

Defendants also argue that the relevant prosecution history
reveals that Plaintiffs intended for “screw connector” to mean
“power connector” in claim 1 of the ‘424 Patent or, at the very
least,

that

Plaintiffs

are

bound

by

such

limitation.

Specifically, Defendants point to the prosecution history of U.S.
Patent No. 8,989,304 (the ‘304 Patent), which is the “parent”
patent of the at-issue ‘424 Patent.
during

the

prosecution

of

the

According to Defendants,
‘304

Patent,

Plaintiffs

unambiguously disclaimed coverage for any screw connector that
does not draw power from the receiving socket – coverage they
cannot now reclaim in a different, but related, patent. 13
#83, pp. 12-15.)

(Doc.

In other words, Defendants believe the doctrine

of prosecution disclaimer (or prosecution history estoppel) bars

13

The LED bulb claimed in the ‘304 patent comprises, inter alia,
a connector that “is a male screw base, which supports the bracket
and housing when screwed into a female electrical socket, which
provides power to the [sic] at least one light emitting diode (LED)
unit.” (Doc. #71-2, p. 25.)
- 20 -

Plaintiffs from arguing that the screw connector component in the
‘424 Patent need not be a power connector.
Defendants also invoke a single line from the prosecution
history of the ‘424 Patent stating that, in the interest of
expedition, “the claims of the instant case have been amended to
include limitations consistent with the companion case in scope.”
(Doc. #68-2, p. 111.)

Because “the companion case” (the ‘304

Patent) includes a power limitation in the definition of “screw
connector,” Defendants believe this “limitations consistent with”
sentence serves to import the power requirement into the ‘424
Patent.

The Court now addresses – and ultimately rejects – both

contentions.
a)

Prosecution Disclaimer - the ‘304 Patent

The prosecution disclaimer doctrine “preclude[s] patentees
from recapturing through claim interpretation specific meanings
disclaimed during prosecution” and is “a fundamental precept in .
. . claim construction jurisprudence.”

Omega Eng'g, Inc., v.

Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003) (citations
omitted).

“However, while the prosecution history can inform

whether the inventor limited the claim scope in the course of
prosecution, it often produces ambiguities created by ongoing
negotiations between the inventor and the PTO. Therefore, the
doctrine of prosecution disclaimer only applies to unambiguous
disavowals.”

Grober v. Mako Prods., Inc., 686 F.3d 1335, 1341

(Fed. Cir. 2012).

- 21 -

“[C]lear and unmistakable” is the disavowal standard.
Eng’g, 334 F.3d at 1325.

Omega

“[W]here the patentee has unequivocally

disavowed a certain meaning to obtain his patent, the doctrine of
prosecution disclaimer attaches and narrows the ordinary meaning
of the claim congruent with the scope of the surrender.”

Shire

Dev., LLC v. Watson Pharm., Inc., 787 F.3d 1359, 1364–65 (Fed.
Cir. 2015) (quoting Omega Eng’g, 334 F.3d at at 1324).

In

contrast,

to

“prosecution

statements

too

vague

or

ambiguous

qualify as a disavowal of claim scope” do not suffice under the
doctrine.

Omega Eng’g, 334 F.3d at 1325.

Defendants contend that, during the prosecution of the parent
‘304 Patent, Plaintiffs clearly and unmistakably disclaimed patent
coverage for “any connector that is not a connector that provides
power to the unit when screwed into a receiving electrical socket”
and, as a result, are now estopped from arguing that the child
‘424 Patent encompasses connectors that are not power connectors.
(Doc.

#68,

pp.

9-10.)

Defendants

premise

this

argument

on

Plaintiffs’ response (the Response) (Doc. #68-3) to the PTO’s
rejection of certain claims of the ‘304 patent based, at least in
part, on prior art (the Prior Art). 14
Plaintiffs acknowledge that “the ‘draw power’ limitation was
added during the prosecution of the ‘304 Patent (along with other

14

While the Patent Laws do not explicitly define “prior art,”
Section 102 indicates that “prior art” exists where another patent
already encompasses the novel aspect of the claimed invention. 35
U.S.C. § 102(a).
- 22 -

limitations).” (Doc. #82, p. 9.)
prosecution

history

of

the

They argue, however, that the

parent

‘304

Patent

should

not

be

considered in construing claim 1 of the child ‘424 Patent, since
the language of claim 1 of the ‘424 Patent differs in several
respects

from

importantly,

its
it

counterpart

lacks

the

in

the

‘304

“ultimately

Patent.

superfluous”

limitation found in claim 1 of the ‘304 Patent.

Most
power

(Doc. #82, p. 9.)

Plaintiffs are correct that “the prosecution of one claim
term in a parent application will generally not limit different
claim language in a continuation application.”

Invitrogen Corp.

v. Clontech Labs., Inc., 429 F.3d 1052, 1078 (Fed. Cir. 2005); see
also ResQNet.com, Inc. v. Lansa, Inc., 346 F.3d 1374, 1383 (Fed.
Cir. 2003) (“Although a parent patent's prosecution history may
inform the claim construction of its descendent, the [at-issue
parent] patent's prosecution history is irrelevant to the meaning
of this limitation because the two patents do not share the same
claim language.”).
But so too are Defendants correct that an exception to this
“different language” rule exists when the patentee submitted “an
amendment to a related limitation in the parent application [that]
distinguishe[d] prior art and thereby specifically disclaim[ed] a
later (though differently worded) limitation in the continuation
application.”

Invitrogen, 429 F.3d at 1078.

In such case, “an

applicant cannot recapture claim scope that was surrendered or

- 23 -

disclaimed” during prosecution of the parent application.

Hakim

v. Cannon Avent Grp., PLC, 479 F.3d 1313, 1317 (Fed. Cir. 2007).
For that exception to apply, however, the prior disclaimer
must have been “directed to the scope of the invention as a whole,
not [merely to] a particular claim.”

Regents of Univ. of Minn.

v. AGA Med. Corp., 717 F.3d 929, 943 n.8 (Fed. Cir. 2013).

When,

in contrast, “the purported disclaimers are directed to specific
claim

terms

that

have

been

omitted

or

materially

altered

in

subsequent applications (rather than to the invention itself),
those disclaimers do not apply” to the subsequent applications.
Saunders, 492 F.3d at 1333 (rejecting the defendants’ attempt to
apply the prosecution disclaimer doctrine to child patent lacking
the explicit “pressure activated seal” limitation found in the
parent patent where “the alleged disclaimer distinguishing the
prior art focused on a particular claim limitation . . . and was
not directed to the invention as a whole”).
That is the situation here.

Even assuming that the language

in the Response clearly and unmistakably constitutes a disclaimer
of screw connectors that do not draw power from the receiving
socket (a proposition that, in fact, is undercut by the prosecution

- 24 -

history for the ‘304 Patent 15), any such disclaimer was directed
only to claim 1, not to the ‘304 Patent’s “LED Light Bulb”
invention as a whole.

Accordingly, the ‘304’ Patent’s prosecution

history cannot serve to rebut the presumption against construing
“screw connector” as “power connector” created by the doctrine of
claim differentiation.
b)

Claim Limitation “Importation” - the ‘424 Patent

Defendants also contend that construing “screw connector” as
including a power requirement is supported by a sentence in the
prosecution history of the ‘424 Patent stating that “the claims of
the

instant

case

have

been

amended

to

include

limitations

consistent with the companion case in scope,” i.e., the ‘304
Patent.

(Doc. #68-2, p. 111.)

The Court disagrees.

Immediately

following that sentence, the prosecution history clarifies that
claims 1, 14, and 18 of the ‘424 Patent have been amended for the
purpose of emphasizing certain characteristics – none of which

15

In the Response, counsel maintained that the claims were being
amended to expedite prosecution, and that “the existing
limitations [were] believed to be distinguishable from known prior
art.” (Doc. #68-3, p. 36.) In particular, the Response observes
that “[t]he use of the bracket and an ability to angle the bracket
is significant for the [invention embodied in the ‘304 Patent]”
and asserts that “[k]nown prior art[] was not intended to be used
in the same context or configuration.” (Id. p. 9.) Specifically
as to the PTO’s rejection of claim 1, the Response asserts that
the Prior Art is already distinguishable because it does not
disclose the claimed limitation of a rotatable connector structure
present in claim 1 of the ‘304 Patent; there is – notably - no
mention of any power requirement.
(Id. pp. 18-19.)
Though
electric coupling is discussed in relation to independent claim 6
of the ‘304 Patent, dependent claim 6 of the ‘424 Patent is not at
issue here (and is markedly different from claim 6 of the ‘304
Patent).
- 25 -

deal

with

power.

Thus,

rather

than

support

Defendants’

importation position, this isolated sentence epitomizes the kind
of “ambiguities [that are] created by ongoing negotiations between
the inventor and the PTO,” the existence of which counsel against
using prosecution disclaimer to rebut the presumption created
under the doctrine of claim differentiation in a case like this.
Grober, 686 F.3d at 1341.
Because

the

Court

concludes

that

the

“screw

connector”

component described in claim 1 is not required to draw power from
the

receiving

construction. 16

socket,

the

Court

The Court will

rejects

Defendants

instead construe

proposed

claim 1, in

relevant part, as follows: “A retrofit light emitting diode (LED)
bulb comprising: a screw connector for screwing the retrofit light
emitting diode (LED) bulb into a receiving socket of an electric
light fixture for supporting the retrofit light emitting diode
(LED) bulb; . . . wherein the screw connector is a male screw base,
which supports the bracket and housing when the retrofit light
emitting diode (LED) bulb is screwed into the receiving socket,
and wherein the screw connector may or may not draw power from the
receiving socket.”

16

The Court, in the exercise of its discretion, does not find it
necessary to consider extrinsic evidence to reach this conclusion.
- 26 -

B)

Claim 14 and Claim 18
Defendants similarly seek to have the Court read a power

limitation into the term “screw connector” found in independent
claims 14 and 18 of the ‘424 Patent.
The pertinent portion of claims 14 and 18 state, respectively,
that the patentees are claiming: “A light emitting diode (LED)
apparatus comprising: a screw connector configured to be screwed
into a receiving socket of an electric light fixture for supporting
the

retrofit

light

emitting

diode

(LED)

bulb,”

and

“A

light

emitting diode (LED) apparatus comprising: a screw connector for
screwing

a

retrofit

light

emitting

diode

(LED)

bulb

into

a

receiving socket of an electric light fixture, wherein physical
dimensions of the screw connector conform with one of the following
standards:

GU24, GU10, E11, E12, E17, E26, MR16 and MR11.”

(Doc.

#1-1. P. 25.)
For all of the reasons just discussed, the Court finds that
the “screw connector” component described in claims 14 and 18 is
not required to draw power from the receiving socket.

The Court

will thus construe those two claims, in relevant part, as follows:
•

Claim 14: “A light emitting diode (LED) apparatus
comprising: a screw connector configured to be screwed
into a receiving socket of an electric light fixture for
supporting the retrofit light emitting diode (LED) bulb,
which connector may or may not draw power from the
receiving socket; . . . .”

•

Claim 18: “A light emitting diode (LED) apparatus
comprising: a screw connector for screwing a retrofit
light emitting diode (LED) bulb into a receiving socket
of an electric light fixture, which connector may or may
not draw power from the receiving socket, and wherein
- 27 -

physical dimensions of the screw connector conform with
one of the following standards: GU24, GU10, E11, E12,
E17, E26, MR16 and MR11; . . . .”
Accordingly, it is hereby
ORDERED:
The Court construes the relevant portions of claims 1, 14,
and 18 of the ‘424 Patent as follows:
1)
Claim 1: “A retrofit light emitting diode (LED) bulb
comprising: a screw connector for screwing the retrofit light
emitting diode (LED) bulb into a receiving socket of an electric
light fixture for supporting the retrofit light emitting diode
(LED) bulb; . . . wherein the screw connector is a male screw base,
which supports the bracket and housing when the retrofit light
emitting diode (LED) bulb is screwed into the receiving socket,
and wherein the screw connector may or may not draw power from the
receiving socket.”
2)
Claim 14: “A light emitting diode (LED) apparatus
comprising: a screw connector configured to be screwed into a
receiving socket of an electric light fixture for supporting the
retrofit light emitting diode (LED) bulb, which connector may or
may not draw power from the receiving socket; . . . .”
3)
Claim 18: “A light emitting diode (LED) apparatus
comprising: a screw connector for screwing a retrofit light
emitting diode (LED) bulb into a receiving socket of an electric
light fixture, which connector may or may not draw power from the
receiving socket, and wherein physical dimensions of the screw
connector conform with one of the following standards:
GU24,
GU10, E11, E12, E17, E26, MR16 and MR11; . . . .”
DONE and ORDERED at Fort Myers, Florida, this 23rd day of
May, 2017.

Copies:
Counsel of Record

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