Fujitsu Network Communications Inc et al v. Tellabs, Inc. et al

Filing 781

WRITTEN Opinion entered by the Honorable James F. Holderman on 7/27/2012: Fujitsu's Motion Regarding U.S. Patent No. 7,227,681: 'Active' Versus Passive Claim Terms 649 is granted in part and denied in part by the court's constr uing the disputed term "transmitting" which is the only disputed term raised in this motion 649 in claims 1, 2, 4, 6, 7 and 8 of the '681 Patent, the claims that Fujitsu intends to assert at the trial commencing August 27, 2012. The claim term "transmitting" when used as a verb in the '681 Patent means "engaged in the transmission of." The parties are encouraged to further discuss settlement. Signed by the Honorable James F. Holderman on 7/27/2012: Mailed notice (am)

Order Form (01/2005)

United States District Court, Northern District of Illinois
Name of Assigned Judge
or Magistrate Judge

James F. Holderman

CASE NUMBER

09 C 4530

CASE
TITLE

Sitting Judge if Other
than Assigned Judge

DATE

7/27/2012

Fujitsu Limited vs. Tellabs Operations, Inc.

DOCKET ENTRY TEXT

“Fujitsu’s Motion Regarding U.S. Patent No. 7,227,681: ‘Active’ Versus Passive Claim Terms” [649] is
granted in part and denied in part by the court’s construing the disputed term “transmitting” which is the only
disputed term raised in this motion [649] in claims 1, 2, 4, 6, 7 and 8 of the ‘681 Patent, the claims that
Fujitsu intends to assert at the trial commencing August 27, 2012. The claim term “transmitting” when used
as a verb in the ‘681 Patent means “engaged in the transmission of.” The parties are encouraged to further
discuss settlement.
O[ For further details see text below.]

Notices mailed by Judicial staff.

STATEMENT
Fujitsu in its motion [649] is asking for further construction of claim terms. The motion became
fully-briefed five days ago. The court grants in part and denies in part the motion by obliging Fujitsu’s
request as to claims 1, 2, 4 6, 7 and 8. Because the issues regarding claims 1, 2, 4, 6, 7 and 8 of Fujitsu’s
‘681 Patent are set to commence trial one month from today, on August 27, 2012, and counsel for the parties
are busy finalizing trial preparation, the court has truncated the fullness of its explanation to provide counsel
this ruling as promptly as possible.
The court understands the need to approach claim construction in a manner which adheres to the
principles set forth in Phillips v. AWH Corp., 415 F.3d 1301 (Fed. Cir. 2005) (en banc), which means the
court is to first examine the claim language itself and refer to the specification to understand the claims. Id.
at 1315.
Raised in Fujitsu’s motion [649] are the claim terms “transmitting,” “making,” and “receiving” used
as verbs in the independent claims 1, 6, 9, and 14 of the ‘681 Patent as follows (bolded):
1. An optical transmission system comprising: a transmitting terminal
transmitting a wavelength division multiplexed (WDM) optical signal having a
variable number of channels associated with different wavelengths;
6. An apparatus comprising: . . . the optical amplifier including: an optical
attenuator which controls a level of the amplified WDM optical signal, an optical
filter making the gain substantially even with respect to said different
wavelengths, and a controller which controls the gain to be approximately
constant.
09C4530 Fujitsu Limited vs. Tellabs Operations, Inc.

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STATEMENT
9. An optical transmission system comprising: a transmitting terminal
transmitting a wavelength division multiplexed (WDM) optical signal having a
variable number of channels associated with different wavelengths; an optical
amplifier which amplifies the WDM optical signal from the transmitting terminal
with a gain and outputs the amplified WDM optical signal, the optical amplifier
including: an optical attenuator which controls a level of the amplified WDM
optical signal, an optical filter making the gain substantial even with respect to
said different wavelengths, and a controller which controls the gain to be
approximately constant; and a receiving terminal receiving the amplified WDM
optical signal from the optical amplifier.
14. An apparatus comprising: . . . the optical amplifier including: . . . an optical
filter making the gain substantially flat with respect to said different
wavelengths, . . . .
‘681 Patent, col. 22, l. 4 - col. 24, l. 10.
In the claims to be tried on August 27, 2012, claim 1 is the only claim in which any of the raised
terms is used. That claim term is “transmitting.” It is used both as an adjective in claim 1 to modify the noun
“terminal” and as a verb to describe the action engaged in by the terminal. It has long been the law that
words of a claim are generally given their ordinary and customary meaning. Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
Nowhere in the ‘681 Patent other than the claims are the words “transmitting” and “receiving” used as
verbs. They are always used as adjectives elsewhere than the claims in the ‘681 Patent. Referring to the
specification in the Figures of the ‘681 Patent, the words “transmitting” and “receiving” are used as
adjectives to describe and delineate the functional role of each respective “unit” in the prior art, conventional
fiber optic communication system displayed as Figure 1 of the ‘681 Patent. As such, the meaning of those
terms is commonly understood to a person of ordinary skill in the art as that person is defined in the court’s
previous claim construction determinations.
Unlike HIC Corp. v. IPCom GMBH & Co., KG, 667 F.3d 1270, 1276-78 (Fed. Cir. 2012), the court
finds nothing in the specification or the prosecution history that discloses an intent by the patentee to inform
a person of ordinary skill that the term “transmitting,” when used as an active verb in claim 1, is meant to
have a meaning other that its common meaning as an active verb, and counsel have pointed to nothing. The
court need not go beyond the intrinsic record, because the common meaning is appropriate here.
In quick summary, Tellabs “asks this Court to construe these claims as they are written: to require
terminals actively transmitting/receiving and optical filters actively making the gain substantially even/flat.”
(“Tellabs Operations, Inc.’s, Tellabs North America, Inc.’s and Tellabs, Inc.’s Response to Fujitsu Limited’s
Motion Regarding U.S. Patent No. 7,227,681: ‘Active’ Versus Passive Claim Terms” [Dkt. No. 695] at 4
(“Tellabs’s Response [695]”).
Because only the term “transmitting” matters to the upcoming trial, and the court construes only the
claim term “transmitting” when used as a verb in the ‘681 Patent claims to be understood by a person of
ordinary skill in the art to mean: “engaged in the transmission of.” This construction gives effect to all the
terms in the claim. Becton, Dickson and Co. v. Tyco Healthcare Group, LP, 616 F.3d 1249, 1257 (Fed. Cir.
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STATEMENT
2010) (quoting Bicom Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006).
When the construed meaning of the verb “transmitting” is substituted for the verb “transmitting” in
claim 1 of the ‘681 Patent, the claim element reads: “a transmitting terminal [engaged in the transmission of]
a wavelength division multiplexed (WDM) optical signal . . . .” (‘681 Patent, col, 22, ll. 4-6). The court
intends to instruct the jury in a manner consistent with this determination.

09C4530 Fujitsu Limited vs. Tellabs Operations, Inc.

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