CAO Lighting, Inc. v. Light Efficient Design et al

Filing 83

MEMORANDUM Opinion and Order Re: Claim Construction. Signed by the Honorable Harry D. Leinenweber on 4/3/19:Mailed notice(maf)

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
CAO LIGHTING, INC.,
Plaintiff,

Case No. 17 C 7359

v.

Judge Harry D. Leinenweber

LIGHT EFFICIENT DESIGN,
Defendant.

MEMORANDUM OPINION
Plaintiff CAO Lighting, Inc. (“CAO”) alleges that Defendant
TADD, LLC, doing business as Light Efficient Design (“TADD”), is
infringing its patent, United States Patent No. 6,465,961 (“the
‘961

Patent”).

Both

parties

have

submitted

opening

claim

construction briefs (Dkt. Nos. 26, 27) and supplemental claim
construction briefs (Dkt. Nos. 67, 68). The parties dispute the
construction of six terms that appear throughout the claims of the
asserted patent. This Opinion sets forth the Court’s construction
of the contested claim language.
I.
Plaintiff

makes,

BACKGROUND

markets,

and

sells

light-emitting

diode

(“LED”) lighting products. By way of background, LED technology
produces

light

more

efficiently

than

traditional

incandescent

light bulbs. (John Curran Decl. ¶ 15, Ex. A to Def.’s Suppl. Br.,
Dkt. No. 67-1.) LED lighting products create visible light by

passing

an

electrical

current

through

a

semi-conductor

light

source. (Id.) To prevent performance issues, the heat LEDs produce
is absorbed into a heat sink.

(Id. ¶ 21.)

Plaintiff owns the ‘961 Patent. The U.S. Patent and Trademark
Office issued the ‘961 Patent on October 15, 2002, with 20 claims.
(‘961 Patent, Ex. A to First Am. Compl., Dkt. No. 56-1.) The ‘961
Patent describes and claims new and novel features of an LED
lighting source, including (1) an enclosure with an interior
volume, (2) a base including an electrical connector, (3) a heat
sink

configured

to

withdraw

heat

and

suitable

for

mounting

semiconductor devices, and (4) semiconductor chips capable of
emitting light with a power output greater than 40 milliwatts.
Plaintiff originally filed suit in the District of Idaho
against TADD and Electric Wholesale Supply Company, Inc. (“EWS”).
Plaintiff claims that TADD is making, using, importing, and selling
LED

lighting

products

that

infringe

on

the

‘961

Patent.

In

particular, Plaintiff asserts that certain of TADD’s “8000 Series”
lighting
further

products
contends

infringe
that

EWS

on
is

the

subject

infringing

patent.
on

its

Plaintiff
patent

by

distributing LED’s infringing products. In October of 2017, the
District of Idaho severed Plaintiff’s claims against TADD and EWS
and transferred the claims against TADD to the Northern District
of Illinois. That court retained the claims against EWS and stayed

- 2 -

them until Plaintiff’s suit against TADD before this Court is
complete. Thus, when the Court refers to “Defendant” in this
Opinion, it refers to TADD.
Defendant denies infringement and denies that the ‘961 Patent
claims

new

and

novel

features.

The

parties

now

dispute

the

construction of six terms that appear throughout the claims of the
‘961

Patent:

(1)

“output

light

at

greater

than

about

40

milliwatts,” (2) “monochromatic,” (3) “enclosure,” (4) “in said
interior volume,” (5) “in said base,” and (6) “array of LEDs.”
Each term will be discussed in turn.
II.

LEGAL STANDARD

Determining the meaning of a patent claim is a matter of law
for a judge to decide. Markman v. Westview Instruments, Inc., 517
U.S. 370, 391 (1996). The scope of the patent, delineated by the
claims, defines what right the patentee has to exclude. Phillips
v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (citation
omitted). Claims are construed from the perspective of a person of
ordinary skill in the art of the invention. Id. at 1315. The claim
terms are given their “ordinary and customary reading,” which is
the meaning understood at the time of invention by a person having
ordinary skill in the art. Id. at 1312–13. The intrinsic evidence
of a patent—the same resources that a person of ordinary skill
would also review—is a court’s “primary focus in determining the

- 3 -

ordinary and customary meaning of a claim limitation.” Phillips,
415 F.3d at 1316. The intrinsic evidence includes the claims, the
patent specification, and the prosecution history. McDavid Knee
Guard, Inc. v. Nike USA, Inc., 809 F. Supp. 2d 863, 868 (N.D. Ill.
2011) (citing Phillips, 415 F.3d at 1313).
Courts can also look to extrinsic evidence, which consists of
“all evidence external to the patent and prosecution history,
including expert and inventor testimony, dictionaries, and learned
treatises.” Phillips, 415 F.3d at 1317. Extrinsic evidence can
shed useful light on the relevant art; however, it is “less
significant than the intrinsic record” in determining the legally
operative meaning of claim language. Id. Thus, in construing
claims, courts should turn to extrinsic evidence only if intrinsic
evidence does not yield an answer. Vitronics Corp. v. Conceptronic,
Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996). In sum, courts engaging
in

claim

construction

generally

follow

the

following

hierarchy of evidence: (i) claim language, (ii) other intrinsic
evidence, and (iii) extrinsic evidence. Suffolk Techs. LLC v. AOL
Inc., 942 F. Supp. 2d 600, 605 (E.D. Va. 2013) (citing Advanced
Cardiovascular Sys. v. Medtronic, 265 F.3d 1294, 1304 (Fed. Cir.
2001)), aff’d, 752 F.3d 1358 (Fed. Cir. 2014).

- 4 -

III.
A.

DISCUSSION

“Output light at greater than about 40 milliwatts”

The first claim term at issue is “output light at greater
than about 40 milliwatts.” Claim 21 of the ‘961 Patent recites:
The semiconductor light source as recited in claim 8
wherein: said at least one semiconductor chip is a light
emitting diode (LED) chip configured to output light at
greater than about 40 milliwatts, and said LED chip is
configured to emit monochromatic visible light.
(Reexamination Certificate, Ex. B to First Am. Compl., Dkt. No. 562.) Plaintiff proposes the following construction: “Radiometric
light output greater than about 40 milliwatts as quantitated by an
appropriate measuring and detection device.” Defendant’s proposed
construction is “Includes a light output of about 15 lumens.”
Plaintiff’s construction centers on a radiometric measurement
of

light.

Light

output

is

measured

in

two

different

systems

according to use: radiometry and photometry. (Eric Bretschneider
Decl. ¶¶ 24, 26, Ex. B to Def.’s Suppl. Br., Dkt. No. 67-2.)
Radiometry, which measures light output in watts (or a fraction
thereof,

i.e.,

milliwatts),

is

commonly

used

in

physics,

engineering, and sensing applications. (Bretschneider Decl. ¶ 24.)
Photometry, which measures light output in lumens, is used for
measuring light as related to use by humans. (Bretschneider Decl.
¶ 26.) Plaintiff and Defendant’s experts agree that a light source
has both a radiant power, measured in milliwatts, and a luminous
- 5 -

flux, measured in lumens. (Curran Decl. ¶¶ 30-32; Bretschneider
Decl. ¶¶ 24-27.) Thus, both radiometric and photometric light
measurements are fundamental terms utilized by those skilled in
the art of LED lighting.
Plaintiff
milliwatts)

contends

is

that

necessary

a

radiometric

because

the

measurement

inventor

used

(in
that

measurement system in the claims of the ‘961 Patent. Claims 21,
25, 40, 42, 58, and 77 all recite the milliwatts measurement, and
it is a “bedrock principle” of patent law that courts look first
to claim language to define the scope of the invention. Phillips,
415 F.3d at 1312. Furthermore, Plaintiff asserts, its construction
is consistent with the specification, as the specification’s only
reference to measuring light output is as follows: “‘[h]igh power’
LED’s [sic] means that the light output from each LED module is
greater

than

40

milliwatts.”

(‘961

Patent,

4:6-7.)

Defendant

argues that Plaintiff’s proposed construction is not supported by
the intrinsic record, as the terms “radiometric light output,”
“radiometric,” or “radiant power” do not appear in the claims or
the

specification.

This

argument

is

unavailing.

The

inventor

sufficiently identified his use of radiometry by using its unit of
measurement, watts, throughout in the claims. A person of ordinary
skill in the art of LED lighting would understand that the use of
milliwatts in the ‘961 Patent defines light output in terms of

- 6 -

radiometry. Thus, Plaintiff’s interpretation aligns with the plain
meaning of the claim, and the plain meaning of a claim almost
always controls its construction. Toshiba Corp. v. Imation Corp.,
681 F.3d 1358, 1369 (Fed. Cir. 2012).
However, there are two primary exceptions to the general rule
that the plain meaning of the claim controls: (1) when a patentee
sets out a definition and acts as his own lexicographer, or (2)
when the patentee disavows the full scope of a claim during patent
prosecution (“prosecution disclaimer”). Id. Defendant argues that
the second exception is present here.
A

patent’s

prosecution

history

is

relevant

intrinsic

evidence, and a court should consider it if it is in evidence. The
prosecution

history

consists

of

the

complete

record

of

the

proceedings before the U.S. Patent and Trademark Office (“PTO”)
and includes the prior art cited during the examination of the
patent. Phillips, 415 F.3d at 1317. It provides evidence of how
the PTO and the inventor understood the patent. Id. The prosecution
history

constitutes

a

public

record

of

the

patentee’s

representations concerning the scope and meaning of the claims,
and competitors “are entitled to rely on those representations
when ascertaining the degree of lawful conduct, such as designing
around the claimed invention.” Hockerson-Halberstadt, Inc. v. Avia
Grp. Int’l, Inc., 222 F.3d 951, 957 (Fed. Cir. 2000). This history

- 7 -

can

“often

inform

demonstrating
whether

the

how

the

investor

prosecution,
otherwise

the

making

be.”

meaning

investor
limited

the

415

the

claim

understood

the

claim

Phillips,

of

invention

scope
F.3d

the
in

1317.

invention
the

narrower

at

language

course

than

it

However,

by
and
of

would
patent

prosecution represents an ongoing negotiation between the PTO and
the applicant, rather than the final product of that negotiation,
and therefore can be less useful than the specification for claim
construction purposes. Id.
A

brief

recitation

of

the

subject

patent’s

prosecution

history is in order. The ‘961 Patent was issued in 2002 with 20
claims.

It

was

then

subject

to

two

merged

Inter

Partes

Reexaminations (95/000,680 and 95/002,324), which resulted in the
cancellation of all 20 of the original claims. That decision was
affirmed on appeal. GE Lighting Inc. v. Epistar Corp., Appeal 2016008254, 2016 WL 7030873 (P.T.A.B. Nov. 30, 2016). Pursuant to an
Ex Parte Reexamination (90/012,957), the PTO determined new claims
21-103 to be patentable. (Reexamination Certificate, Ex. B to First
Am. Compl., Dkt. No. 56-2.)
During the prosecution of the third Reexamination, Plaintiff
submitted

its

new

claim

21,

reciting

one

or

more

LED

chips

“configured to output light at greater than about 40 milliwatts.”
(Reexamination

Resp.,

Dkt.

No.

- 8 -

26-5.)

Plaintiff

sought

to

distinguish the ‘961 Patent from a prior art (the “Begemann”
patent) that described output in terms of lumens. Accordingly,
Plaintiff made the following representation to the PTO:
Begemann teaches that the LEDs 4 of FIG. 1 and FIG. 2
are configured to have “a luminous flux of 5 [lumens] or
more.” Begemann, 2:1-3. However, a light output of “40
milliwatts” is roughly equal to a light output of about
15 lumens. Therefore, the single “LED chip” of claim 18
[sic] produces roughly 3 times the light output as LEDs
4 of the LED lamps of Begemann. Therefore, Begemann does
not teach or suggest one or more LED chips “configured
to output light at greater than about 40 milliwatts.”
(Reexamination Resp. at 33 (emphasis added).) Defendant argues
that the Patent Examiner must have accepted this argument, because
he stated:
Proposed new claim 21, from which all of the other
proposed new claims depend directly or indirectly,
includes a feature requiring the semiconductor chip to
be “a light emitting diode (LED) chip configured to
output light at greater than about 40 milliwatts,” which
Patent Owner argues is not explicitly taught or
suggested by any reference currently relied on to reject
the claims. . . For this reason, the claims are found
patentable.
(Notice of Intent to Issue Reexamination Certificate, Dkt. No. 265.) As an initial matter, the Court notes that whether the Examiner
relied on CAO’s representation in its conclusion is irrelevant.
The prosecution disclaimer analysis “focuses on what the applicant
said,

not

on

whether

the

representation

- 9 -

was

necessary

or

persuasive.” Uship Intellectual Properties, LLC v. United States,
714 F.3d 1311, 1315-16 (Fed. Cir. 2013).
Nevertheless, Defendant contends that Plaintiff explicitly
represented to the Examiner that a light output of 40 milliwatts
is roughly equal to a light output of 15 lumens, and pursuant to
prosecution

disclaimer

representation.
because

This

Plaintiff

Plaintiff

now

representation

made

the

must

be

carries

representation

bound

by

particular
not

to

that

weight

define

the

invention more specifically, but instead to differentiate the
invention from prior art.

See Pall Corp. v. Micron Separations,

Inc., 66 F.3d 1211, 1220 (Fed. Cir. 1995) (finding that a position
taken

to

establish

patentability

in

view

of

prior

art

is

a

“substantive position on the technology for which a patent is
sought, and will generally generate an estoppel,” while arguments
made in order to more particularly point out the applicant’s
invention are “not presumed to raise an estoppel”). And a patentee
should not be able to construe claims “one way in order to obtain
their allowance and in a different way against accused infringers.”
Aylus Networks, Inc. v. Apple Inc., 856 F.3d 1353, 1360 (Fed. Cir.
2017) (citation omitted).
However, Plaintiff’s representation that 40 milliwatts is
“roughly equal” to 15 lumens does not meet the high bar that the
Federal

Circuit

has

set

for

prosecution

- 10 -

disclaimer.

For

prosecution disclaimer to apply, the alleged disavowing actions or
statements

made

unmistakable.”

during
Aylus

prosecution

Networks,

856

must
F.3d

be
at

“both
1359

clear

and

(citation

omitted). Thus, when the patentee “unequivocally and unambiguously
disavows a certain meaning to obtain a patent . . . [prosecution
disclaimer] narrows the meaning of the claim consistent with the
scope of the claim surrendered.” Id. Defendant has only identified
one sentence in the entire prosecution history of the ‘961 Patent
that relates to the milliwatts/lumens distinction, and while it
did serve the function of differentiating the ‘961 Patent from
prior art, that sentence does not even disclaim any specific
meanings. Plaintiff performed a rough approximation of the light
output power of his invention relative to another invention that
chose

to

measure

light

output

in

lumens.

Plaintiff’s

representation did not narrow the meaning of the ‘961 Patent. See
Grober v. Mako Prod., Inc., 686 F.3d 1335, 1342 (Fed. Cir. 2012).
Thus, Defendant’s prosecution disclaimer argument fails, and the
Court accepts Plaintiff’s construction, as it aligns with the plain
meaning of the claim language.
B.

“Monochromatic”

The construction of “monochromatic” determines whether the
‘961 Patent recites an LED chip that emits light of a single
wavelength, or light that is one color. Plaintiff asserts that the
- 11 -

plain and ordinary meaning of “monochromatic” in light of the
entire intrinsic record is “one color.” Defendant counters that
the intrinsic evidence defines “monochromatic” as “light of a
single wavelength.”
By way of background, LEDs emit various colors depending on
the elements used in the semiconductor. (Curran Decl. ¶ 18.) LED
colors include infrared, red, orange, yellow, green, blue, violet,
and ultraviolet. (Id.) In order to produce white light, the LED
light source must be manipulated. For example, LEDs can be combined
with photoluminescent phosphors which, in combination with the
light output of a blue LED, produce a blue-white color. (Id.) The
wavelength of light determines its perceived color to humans.
(Curran Decl. ¶¶ 34, 36.) Within the visible light spectrum, there
are various ranges of wavelengths that humans perceive as one
color.

(Id.)

parties’

The

definition

constructions.

of

See

“monochromatic”
Monochromatic,

contains

both

Mirriam-Webster

Dictionary (2019) (“(1): having or consisting of one color or hue;
(2): consisting of radiation of a single wavelength.”).
The Court looks first to the claim language. Patent ‘961
discusses monochromatic light in several claims. Claim 21 depends
on claim 1, which recites “at least one semiconductor chip capable
of emitting light mounted on one of said panels, said semiconductor
chip being capable of emitting monochromatic light.” (‘961 Patent,

- 12 -

10:1-4 (emphasis added).) Claim 21 recites “said LED chip is
configured to emit monochromatic visible light.” (Reexamination
Certificate, 1:38-39 (emphasis added).) Claims 42 and 77 both
describe LED chips surface mounted on the primary heat sink, “each
configured to output monochromatic visible light at greater than
about 40 milliwatts, and said LED chip and said [additional] LED
chips are all configured to emit a same color of monochromatic
visible light.” (Id. (emphasis added); see also claims 40, 58).)
The claims consistently reference “monochromatic” in terms of
“visible light”—that is, visible to humans. As humans cannot see
wavelength,

only

color,

it

stands

to

reason

that

when

“monochromatic” precedes “visible light,” the claim refers to
emitting light that is one color. The claims do not reference
wavelength, which further supports this construction. Thus, the
claims, which are of primary importance in patent construction,
Phillips, 415 F.3d at 1312, appear to define monochromatic in terms
of single color.
Nevertheless,

Defendant

does

not

contend

that

the

claim

language supports its construction of “monochromatic.” Instead,
Defendant urges the Court to look to the specification, wherein,
Defendant asserts, Plaintiff repeatedly used “monochromatic” to
mean single wavelength light:
The semiconductor devices may be any semiconductor
devices capable of emitting light, such as LED’s, LED
- 13 -

arrays, VCSEL’s, VCSEL arrays, photon recycling devices
that cause a monochromatic chip to emit white light, and
others. . ..
A thickness of phosphor 607 may be placed over the chip
or array 604 in order to convert single wavelength light
emitted from the chip or array into multiple wavelength
white light useful for illumination of spaces used by
humans. . ..
The interior surface 1003b of the enclosure may have a
coating or layer 1004 which serves to alter properties
of the light emitted from the light source 1002. For
example, if light from the light source 1002 is single
wavelength, then the light-altering coating 1004 may be
phosphorous which will turn the monochromatic light into
white light. . ..
(Patent ‘961, 3:42-46, 7:66-8:3, 8:48-54 (emphasis added).)
Defendant
“monochromatic”

contends
in

the

that
claims,

regardless
the

of

the

specification

use

of

clearly

and

unambiguously defined that term to mean “single wavelength,” and
the use of the term in the specification therefore controls. Thus,
Defendant invokes the “lexicographer” exception. While the plain
meaning of a claim term almost always controls its construction,
there are two primary exceptions to this rule: (1) when a patentee
sets out a definition and acts as his own lexicographer, or (2)
prosecution disclaimer. Toshiba Corp., 681 F.3d at 1369. To act as
his

own

lexicographer,

a

patentee

must

“clearly

set

forth

a

definition of the disputed claim term” other than its plain and
ordinary meaning. Thorner v. Sony Computer Entm’t Am. LLC, 669
- 14 -

F.3d 1362, 1365 (Fed. Cir. 2012).

The patentee must “clearly

express

term.”

an

intent

to

redefine

the

Id.

(citations

and

internal quotations omitted). For example, the Federal Circuit has
held that a patentee acted as his own lexicographer when the
specification

stated:

“‘Multiple

embossed’

means

two

or

more

embossing patterns are superimposed on the web to create a complex
pattern

of

differing

depths

of

embossing.”

3M

Innovative

Properties Co. v. Avery Dennison Corp., 350 F.3d 1365, 1369, 1371
(Fed. Cir. 2004).
According to Defendant, because the specification recites
that a phosphor is used to convert single wavelength light emitted
from the chip or array into multiple wavelength white light, the
inventor

must

have

intended

“monochromatic”

to

mean

single-

wavelength light. Defendant’s interpretation of the specification
fails to meet the high bar of the lexicography exception. The
specification does not approach the level of clarity required to
define “monochromatic” other than the plain meaning set forth in
the claims. Indeed, the “Background of Invention” section of the
‘961 Patent appears to define “monochromatic” as “one color”: “A
distinct need is felt in the prior art for a semiconductor light
source for use in illuminating a space with single color light in
the visible range . . .” (‘961 Patent 1:46:48.) Accordingly,

- 15 -

Defendant has failed to establish that the specification clearly
defines monochromatic as a single wavelength.
Finally,

the

Courts

turns

to

the

pertinent

extrinsic

evidence. Both parties have produced a person of skill in the art
of LED lighting to serve as expert witnesses. A court can consider
extrinsic evidence in the form of expert testimony to provide
background on the technology or invention at issue, or to establish
that a particular patent term has a particular meaning in the
pertinent field. Phillips, 415 F.3d at 1318. Defendant’s expert,
Dr. Eric Bretschneider, contends that “monochromatic” means a
single wavelength. Plaintiff’s expert, Dr. John Curran, did not
opine directly on this issue, as it apparently was raised after
Dr. Curran had already submitted his declaration to the Court.
Regardless,

the

Court

finds

Dr.

Bretschneider’s

opinion

unpersuasive. Dr. Bretschneider states that “monochromatic light
is light of a single wavelength” in his declaration. (Bretschneider
Decl. ¶ 22.) However, Dr. Bretschneider does not contend that a
person

of

ordinary

skill

in

this

field

would

not

define

monochromatic as “one color,” nor does he assert that the ‘961
Patent defines monochromatic as single wavelength. Rather, he
simply

sets

forth

a

conclusory

definition,

and

conclusory

assertions by experts as to the definition of a claim term are not
useful to the Court. Phillips, 415 F.3d at 1318. Thus, Defendant’s

- 16 -

extrinsic evidence fails to overcome the plain meaning of the claim
language. The Court adopts Plaintiff’s construction.
C.

“Enclosure”

The original claim 1 of the ‘961 Patent, included in current
claim 21, recites a semiconductor light source that includes “an
enclosure,

said

substantially
within

said

enclosure

transparent
enclosure,

a

being
to

fabricated

white

heat

light,

sink

an

located

from

a

material

interior
in

said

volume

interior

volume.” (‘961 Patent, 9:55-59.) The parties dispute whether the
enclosure is a barrier surrounding the interior volume, such that
there can be no flow between the exterior and the interior volume.
Plaintiff proposes to construe “enclosure” as “a structure that
encloses a volume.” Defendant suggests “a barrier surrounding a
volume.”
Defendant asserts that Plaintiff’s construction would render
the

claim

impermissibly

indefinite.

Plaintiff

claims

that

Defendant is estopped from arguing indefiniteness. The Local Rules
in the District of Idaho, where this action was originally filed,
required Defendant to disclose any grounds for indefiniteness in
its initial invalidity contentions, and Plaintiff asserts that
Defendant failed to do so. However, the Federal Circuit grants
district courts broad discretion in the enforcement of local patent
rules. Allvoice Devs. US, LLC v. Microsoft Corp., 612 Fed. Appx.
- 17 -

1009, 1014 (Fed. Cir. 2015). Accordingly, the Court finds that
Defendant has not waived its ability to argue definiteness. See
Riddell, Inc. v. Kranos Corp., No. 16 C 4496, 2017 WL 2264347, at
*5 (N.D. Ill. May 24, 2017).
Indefiniteness is a standard that assesses compliance with 35
U.S.C. § 112(b), which requires no special form of claiming, but
mandates the following: “The specification shall conclude with one
or more claims particularly pointing out and distinctly claiming
the subject matter which the inventor or a joint inventor regards
as the invention.” 35 U.S.C. § 112(b). An entire patent or certain
claims can be invalid for indefiniteness if the claims, read in
light of the specification and the prosecution history, fail to
inform, with reasonable certainty, those skilled in the art about
the scope of the invention. Nautilus, Inc. v. Biosig Instruments,
Inc., 572 U.S. 898, 901 (2014).
Defendant asserts that the circular nature of Plaintiff’s
proposed

construction

renders

the

enclosure

impermissibly

indefinite. Every piece of an apparatus could be considered a
structure. Thus, to say that an enclosure is a structure that
encloses a volume is merely to say that an enclosure encloses.
This argument may be facially persuasive, but the Court must also
consider definiteness in light of the claims and specification.

- 18 -

Nautilus, 572 U.S. at 901. And the specification defines the
enclosure as follows:
The enclosure 101 may be of any desired shape, including
spherical, cylindrical, elliptical, domed, square, nsided where n is an integer, or otherwise. The enclosure
may be made from any desired light transparent or
translucent
materials,
including
glass,
plastic,
polycarbonate… The enclosure 101 has an exterior surface
101a and an interior surface 101b.
(‘961 Patent, 2:52-60.) This detailed description is sufficient to
inform those skilled in the art about the scope of the invention.
Accordingly,

the

Court

finds

that

the

enclosure,

even

under

Plaintiff’s proposed construction, is not indefinite. What remains
is the parties’ debate over the permeability of the enclosure.
In support of its construction, Plaintiff invokes the rule
that where claims “can reasonably be interpreted to include a
specific embodiment, it is incorrect to construe the claims to
exclude

that

embodiment,

absent

probative

evidence

on

the

contrary.” GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304,
1311 (Fed. Cir. 2014). According to Plaintiff, some claims and
embodiments require an enclosure that does not act as a barrier.
Plaintiff asserts that the following claims and specification
constitute an embodiment in which the heat sink is cooled by air
circulation through an air chamber located in the interior volume:

- 19 -

(1) Claim 47: “[T]he semiconductor light source further
comprises an air entrance, and . . . an air exit.”
(Reexamination Certificate, 3:65-61.)
(2) Claim 49: “The semiconductor light source as recited
in claim 47 wherein: the semiconductor light source
further comprises an air chamber located in said
interior volume, and said air entrance and air exit are
configured to allow air to travel through said air
chamber.” (Reexamination Certificate, 4:1-6.)
(3) The following specification portion: “The enclosure
encloses an interior volume which may be a vacuum, or
may contain a gas such as ordinary air, an inert gas
such as argon or nitrogen, or any other desired gas. In
some embodiments of the invention, a gas will be included
in the interior volume 102 for the purpose of avoiding
oxidation of the heat sink and the semiconductor.” (‘961
Patent, 3:9-14.)
(4) Figure 6 (below), which “depicts a cross sectional
view of a heat sink of the invention using a fan and TE
cooler to circulate air and remove heat.” (‘961 Patent,
2:31-33, 7:15-39.)
(5) The specification’s description of Figure 6,
specifically: “The air chamber is open at its entrance
and at its exit 406b. A fan 407 may be placed in or near
the air chamber 406 in order to cause air 408 to travel
in the entrance 406a, through the air chamber 406 past
the TE material 405 and out of the exit 406b, carrying
heat with it.” (‘961 Patent, 7:31-35.)

- 20 -

Claim 47 and the specification at 3:9-14 do not support Plaintiff’s
construction. Claim 47 merely recites a version of the light source
that has an air entrance and exit, without specifying where they
are located. It is silent on the subject of the enclosure and
immaterial to either parties’ construction.

The specification at

3:9-14 indicates that a barrier is necessary, stating, “[t]he
enclosure 101 encloses an interior volume 102 which may be vacuum,
or may contain a gas such as ordinary air, an inert gas such as
argon or nitrogen, or any other desired gas.” (‘961 Patent, 3:912.) Naturally, a barrier is required to contain a gas. (See
Bretschneider Decl. ¶ 40 (“A structure that allows gas to flow
- 21 -

into/out of the enclosure would not be able to maintain a vacuum
or an inert gas such as argon or nitrogen.”).) However, courts
should avoid importing limitations from the specification into the
claims. Phillips, 415 F.3d at 1323. Thus, this aspect of the
specification is insufficient to support Defendant’s construction.
The remainder of the intrinsic record supports Plaintiff’s
construction. The specification at 7:15-39 and Figure 6 do not
further define “enclosure” nor do they explicitly state a need for
flow through the enclosure. However, the logical conclusion of
this embodiment is some need for a flow between the interior volume
and the exterior. The purpose of the air circulation is heat
dissipation. (‘961 Patent, Abstract.)

Hot air travels out of the

air chamber. (‘961 Patent, 7:31-35.) This hot air presumably must
then exit through the enclosure. Similarly, claim 49 recites an
air entrance and air exit that allow air to travel through an air
chamber that is located in the interior volume. While claim 49
does not explicitly state the relationship between the air travel
and the enclosure, it follows logically that some flow through the
enclosure is necessary. Defendant concedes that these embodiments
would require air to flow through the enclosure in some fashion.
(Def.’s Claim Construction Br. at 14, Dkt. No. 27 (“A barrier does
not preclude an air entrance or exit.”).) Accordingly, the Court
finds that a person of ordinary skill in the LED lighting art would

- 22 -

interpret some embodiments of the ‘961 Patent to require airflow
through

the

enclosure

for

cooling

purposes,

which

would

impossible if the enclosure operated as a pure “barrier.”

be
The

Court adopts Plaintiff’s construction.
D.

“In said interior volume”

The original claim 1 of the ‘961 Patent, included in current
claim 21, requires “an enclosure . . . an interior volume within
said enclosure, a heat sink located in said interior volume.” (‘961
Patent, 9:55-59.) Plaintiff proposes to construe “in said interior
volume” as “included within the interior volume.” Plaintiff seeks
to assign a meaning to this term that would permit the heat sink
to be located partially in and partially out of the interior
volume. Defendant proposes “within the interior volume of said
enclosure.” Defendant’s construction requires the heat sink to be
located entirely within the interior volume of the enclosure.
Plaintiff asserts that Defendant’s construction would exclude
a specific embodiment in the specification. Where claims can
reasonably be interpreted to include a specific embodiment, it is
incorrect to construe claims to exclude that embodiment, absent
probative evidence to the contrary. GE Lighting Sols., 750 F.3d at
1311 (citation omitted). Plaintiff contends that the following
specification teaches an embodiment wherein the heat sink is not

- 23 -

located entirely in the interior volume, but rather continues into
the support or base:
The enclosure 101 may be mounted to a support 105. The
support may be a separate component or may be integral
with the base 103. . . . Located within the interior
volume 102 is at least one heat sink 104. The heat sink
104 may be of any desired shape, depending on the
application. . . . If the heat sink 104 may be mounted
on a support 105, the support 105 may be designed in
order to place the heat sink in the most desirable
position within the interior volume 102…
(‘961 Patent, 3:15-33.)
Plaintiff does not explain how Defendant’s construction would
exclude these embodiments, and apparently, it would not. The cited
specification teaches that the heat sink may be mounted on a
support; and that the support may be separate or attached to the
base. However, it does not indicate that the support (and the heat
sink mounted thereon) would be in any way outside the interior
volume. Furthermore, the specification teaches that if the heat
sink is mounted on a support, that support may be designed to place
the heat sink in the most desirable position within the interior
volume.

Given

reasonably

be

the

foregoing,

interpreted

as

the

specific

Plaintiff

embodiment

suggests.

The

cannot
written

description must “clearly allow persons of ordinary skill in the
art to recognize that [he] invented what is claimed.” Ariad Pharm.,
Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
banc). Plaintiff has failed to meet this standard, as no claim,

- 24 -

specification, or drawing recites a heat sink located partially in
and out of the interior volume.
Here, the claim should be given its plain meaning, which is
that the heat sink is “located in said interior volume”—and nowhere
else.

The

plain

meaning

of

a

claim

generally

controls

its

construction. Toshiba Corp., 681 F.3d at 1369. Furthermore, the
specification clearly supports Defendant’s interpretation. The
specification recites that “[l]ocated within the interior volume
102 is at least one heat sink 104.” (‘961 Patent, 3:22-23.)
Furthermore,

Figure

1

(below)

shows

the

heat

sink

located

completely within the interior volume.

The scope of a patent may be limited by a narrow disclosure.
Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473, 1479 (Fed.
- 25 -

Cir.

1998).

Plaintiff

cannot

disclosure. Id. at 1480.

make

claims

broader

than

its

Accordingly, in light of the plain

meaning of the claim language, the written description, and the
relevant illustration, the Court adopts Defendant’s construction.
E.

“In said base”

Claim 33 of the ‘961 Patent discloses: “The semiconductor
light source as recited in claim 32 wherein: the semiconductor
light source further comprises a base to which said enclosure is
mounted, and said AC/DC converter is positioned in said base.”
(Reexamination Certificate, 2:41-45.) Plaintiff seeks to define
“in said base” as “included within the base,” such that the AC/DC
converter could be positioned in the base or partially in the base.
Defendant proposes construing “in said base” as “within the base,”
a definition that requires the AC/DC converter to be entirely
within the base.
The specification describes an “AC/DC converter 705” but does
not define its location. (‘961 Patent, 8:60-63.) Plaintiff points
to where the specification, describing Figure 1, states that the
“AC/DC converter may be located in the base 103 or in another
location.” (‘961 Patent, 3:63-64 (emphasis added).)

However, no

AC/DC converter is shown in Figure 1 and the specification does
not explain where else it might be. The AC/DC converter 705 is

- 26 -

illustrated only in Figure 11, which does not indicate its location
(although it appears to be in the base).

Defendant

argues

that

Plaintiff

cannot

claim

an

AC/DC

converter that is only partially in the base, as Plaintiff did not
claim or illustrate such an embodiment. Defendant asserts that
Plaintiff failed to comply with PTO rules regarding the sufficiency
of drawings, citing 37 C.F.R. § 1.83(a):
The drawing in a nonprovisional application must show
every feature of the invention specified in the claims.
However,
conventional
features
disclosed
in
the
description
and
claims,
where
their
detailed
illustration is not essential for a proper understanding
of the invention, should be illustrated in the drawing
- 27 -

in the form of a graphical drawing symbol or a labeled
representation (e.g., a labeled rectangular box).
37 C.F.R. § 1.83(a). The Manual of Patent Examining Procedure
(“MPEP”) further provides, “[a]ny structural detail that is of
sufficient importance to be described should be shown in the
drawing.” MPEP § 608.02(D). The MPEP is not binding on courts, but
it may receive judicial notice to the extent that it does not
conflict with the patent statute. Enzo Biochem, Inc. v. Gen-Probe
Inc., 323 F.3d 956, 964 (Fed. Cir. 2002). The Court finds that
Plaintiff has complied with both 37 C.F.R. § 1.83(a) and the MPEP.
Plaintiff included Figure 11, a drawing of the AC/DC converter.
While Figure 11 does not precisely indicate the location of the
AC/DC converter within the context of the apparatus as a whole,
there is no such requirement under 37 C.F.R. § 1.83(a) or the MPEP.
Thus, Defendant’s drawing-based argument fails.
Regardless, the Court notes that the plain meaning of claim 33
is that the AC/DC converter is positioned only in the base. And
the claims, not the specification, provide the measure of the
patentee’s right to exclude. Johnson & Johnston Assocs. Inc. v.
R.E.

Serv.

Co.,

285

F.3d

1046,

1052

(Fed.

Cir.

2002).

The

specification is “highly relevant” intrinsic evidence, as it is
the single best guide to the meaning of a disputed term. Phillips,
415 F.3d at 1315. However, the specification is not a substitute
for, nor can it be used to rewrite, the chosen claim language.
- 28 -

SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875
(Fed. Cir. 2004) (“Specifications teach. Claims claim.”).
Plaintiff seeks to use the specification to expand claim 33.
The specification does clearly state that the AC/DC converter can
be located in “another location,” but the claim itself takes a
narrower

approach,

stating

only

that

the

AC/DC

converter

is

“positioned in said base.” While the specification may be referred
to in order to limit the claim, it can never be made available to
expand it. Johnson & Johnston, 285 F.3d at 1052 (citation omitted)
(“Out of all the possible permutations of elements which can be
made from the specifications, he reserves for himself only those
contained in the claims.”).
Additionally, other intrinsic evidence emphasizes the AC/DC
converter being in the base. The Abstract states that “[a]n AC/DC
converter may be included in the light source fitting.” (‘961
Patent, Abstract.) The specification then explains that “fitting”
is synonymous with “base.” (‘961 Patent, 3:17-19 (“The base 103
may be configured as a fitting or connector for use in a desired
light

socket.”).)

Thus,

the

specification

at

3:63-64

is

insufficient to overcome the plain meaning of claim 33. The Court
adopts Defendant’s construction.

- 29 -

F.

“Array of LEDs”

The claims reference “LED array chips” throughout, but the
term is most precisely defined in claim 22: “said LED chip is an
LED array chip . . . said LED array chip includes a pad in
electrical connection with a metal strip arranged in an array
formation configured to provide power to said active layer.”
(Reexamination

Certificate,

1:42:48.)

Plaintiff’s

proposed

construction of “array of LEDs” is “a plurality of LEDs arranged
in a pattern.” Defendant seeks the following construction: “a
plurality of LEDs arranged in a pattern and formatted to be
operated at a specific voltage.” Thus, while parties agree that an
“array of LEDs” is a “plurality of LEDs arranged in a pattern,”
Defendant seeks to impose a further limitation to that definition:
that the plurality of LEDs be formatted to be operated at a
specific voltage.
The claims, specification, and drawings do not contemplate
specific

voltages

within

the

LED

array,

and

do

not

support

Defendant’s construction. (See ’961 Patent, Figures 1, 4a, 4b;
3:26-30; 3:42-46; 6:12-29.) Perhaps due to this fact, Defendant
supports its “specific voltage” construction with third party
extrinsic

evidence.

Specifically,

definition

of

of

“array

LEDs”

Defendant

offered

unrelated retail LED lighting store:
- 30 -

on

the

points
website

to
of

the
an

A group of LEDs set in a square, rectangular or linear
pattern and formatted to be operated at a specific
voltage. They will always include wires called leads.
One is negative, the other positive. In RGB products,
there are four wires – red, blue, green and common.
(TheLEDLight.com Definitions, Ex. 8 to Def.’s Claim Construction
Br., Dkt. No. 27-7.) Pursuant to this definition, Defendant argues
that a person of skill in the art would understand that the LEDs
in the array have more in common than simply being arranged in a
pattern—they must be formatted to operate at a specific voltage.
Courts can consider extrinsic evidence, technical dictionaries in
particular, to determine the accepted meanings of terms used in
various fields. Phillips, 415 F.3d at 1318. The Court declines to
adopt Defendant’s construction, however, because it imposes a
limitation that is not present in the claims or specification. It
is

improper

to

import

a

limitation

into

a

claim

where

the

limitation has no basis in the intrinsic record. Seachange Int’l,
Inc. v. C-COR, Inc., 413 F.3d 1361, 1376 (Fed. Cir. 2005). The
Court adopts Plaintiff’s construction as it is consistent with the
intrinsic evidence.
IV.

CONCLUSION

For the reasons stated herein, the Court construes the six
disputed terms of the ‘961 Patent as follows:

- 31 -

1) Output light at greater than about 40 milliwatts: Radiometric
light output greater than about 40 milliwatts as quantitated
by an appropriate measuring and detection device.
2) Monochromatic: One color.
3) Enclosure: A structure that encloses a volume.
4) In said interior volume: Within the interior volume of said
enclosure.
5) In said base: Within the base.
6) Array of LEDs: A plurality of LEDs arranged in a pattern.
IT IS SO ORDERED.

Dated: 4/3/2019

Harry D. Leinenweber, Judge
United States District Court

- 32 -