Lexington Luminance LLC v. Amazon.com Inc. et al

Filing 87

Judge Denise J. Casper: ORDER entered. MEMORANDUM AND ORDER - The Court ALLOWS Amazon's motion for judgment on the pleadings, D. 49. Judgment shall enter on Amazon's counterclaim for a declaration of invalidity in its favor and Lexington's complaint shall be DISMISSED(Hourihan, Lisa)

UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS
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LEXINGTON LUMINANCE LLC ,
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Plaintiff,
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v.
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Civil Action No. 12-cv-12216-DJC
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AMAZON.COM, INC. and
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AMAZON DIGITAL SERVICES, INC.,
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Defendants.
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__________________________________________)
MEMORANDUM AND ORDER
CASPER, J.
I.

March 18, 2014

Introduction
Plaintiff Lexington Luminance LLC (“Lexington”) has filed this lawsuit for patent

infringement against Amazon.com, Inc. and Amazon Digital Services, Inc. (collectively
“Amazon”). Amazon has now moved for judgment on the pleadings. D. 49. In addition, the
parties have argued their proposed claim constructions before the Court and the Court’s claim
constructions follow. For the reasons stated below, the Court ALLOWS Amazon’s motion for
judgment on the pleadings.
II.

Standard of Review
A.

Claim Construction

Claim construction is a question of law for the determination by the court. Markman v.
Westview Instruments, Inc., 517 U.S. 370, 388-89 (1996). The Court assigns claim terms the
ordinary and customary meaning that a person of ordinary skill in the art in question would have

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assigned to the terms at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 131213 (Fed. Cir. 2005) (en banc) (citations omitted). “[T]he person of ordinary skill in the art is
deemed to read the claim term . . . in the context of the entire patent, including the specification.”
Id. at 1313.
The patent specification “‘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.’” Id. at
1315 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). In
fact, “the claims themselves provide substantial guidance as to the meaning of particular claim
terms.” Id. at 1314. Because the purpose of the specification is to “teach and enable those of
skill in the art to make and use the invention and to provide the best mode for doing so,” Phillips,
415 F.3d at 1323, it is “entirely appropriate for a court, when conducting claim construction, to
rely heavily on the written description for guidance as to the meaning of the claims.” Id. at 1317.
The patent’s prosecution history “can [also] often inform the meaning of the claim
language by demonstrating how the inventor understood the invention and whether the inventor
limited the invention in the course of prosecution, making the claim scope narrower than it
would otherwise be.” Id. (citations omitted). Although courts generally do not accord extrinsic
evidence the weight that they accord to intrinsic evidence, the Court may consider extrinsic
evidence “if the court deems it helpful in determining the true meaning of language used in the
patent claims.” Id. at 1318. Ultimately, “[t]he construction that stays true to the claim language
and most naturally aligns with the patent’s description of the invention [in the specification] will
be, in the end, the correct construction.” Id. at 1316 (citation omitted).

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B.

Indefiniteness

The Patent Act requires that every patent’s specification must “conclude with one or
more claims particularly pointing out and distinctly claiming the subject matter which the
applicant regards as his invention.” 35 U.S.C. § 112(b). “Because the claims perform the
fundamental function of delineating the scope of the invention, the purpose of the definiteness
requirement is to ensure that the claims delineate the scope of the invention using language that
adequately notifies the public of the patentee’s right to exclude,” Datamize, LLC v. Plumtree
Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005) (citations omitted), and the boundaries of
the patentee’s invention, Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1253 (Fed.
Cir. 2008). The patentee has satisfied this requirement only when the claims “clearly distinguish
what is claimed from what went before in the art and clearly circumscribe what is foreclosed
from future enterprise.” United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 236 (1942).
Patents are presumed valid. 35 U.S.C. § 282(a). “By finding claims indefinite only if
reasonable efforts at claim construction prove futile, [courts] accord respect to the statutory
presumption of validity and we protect the inventive contribution of patentees, even when the
drafting of their patents has been less than ideal.” Exxon Research & Eng’g Co. v. United
States, 265 F.3d 1371, 1375 (Fed. Cir. 2001). A party seeking a declaration of invalidity must
prove same by clear and convincing evidence. Budde v. Harley–Davidson, Inc., 250 F.3d 1369,
1376 (Fed. Cir. 2001).
C.

Motion for Judgment on the Pleadings

Pursuant to Rule 12(c), a party may move for judgment on the pleadings. “A motion for
judgment on the pleadings is treated much like a Rule 12(b)(6) motion to dismiss.” PerezAcevedo v. Rivero–Cubano, 520 F.3d 26, 29 (1st Cir. 2008) (citing Curran v. Cousins, 509 F.3d

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36, 43-44 (1st Cir. 2007)). When considering a motion under Rule 12(c), a court must view the
facts in the pleadings and the reasonable inferences therefrom in the light most favorable to the
nonmovant. Perez-Acevedo, 520 F.3d at 29 (citation omitted). In reviewing the motion, the
Court may also “consider ‘documents the authenticity of which are not disputed by the parties; . .
. documents central to plaintiffs’ claim; [and] documents sufficiently referred to in the
complaint.’” Curran, 509 F.3d at 44 (quoting Watterson v. Page, 987 F.2d 1, 3 (1st Cir. 1993)).
To survive a Rule 12(c) motion, “a complaint must contain factual allegations that ‘raise a right
to relief above the speculative level, on the assumption that all the allegations in the complaint
are true. . . .’” Perez-Acevedo, 520 F.3d at 29 (quoting Bell Atlantic Corp. v. Twombly, 550
U.S. 544, 555 (2007)). “[A]n adequate complaint must provide fair notice to the defendants and
state a facially plausible legal claim.” Ocasio-Hernandez v. Fortuño-Burset, 640 F.3d 1, 12 (1st
Cir. 2011).
III.

Factual Background and Procedural History
Lexington is a limited liability company organized under the laws of Massachusetts that

is the sole owner of U.S. Patent No. 6,936,851 (“the ‘851 patent”) entitled “Semiconductor
Light-Emitting Device and Method for Manufacturing the Same.” D. 1 ¶ 1, 9. The ‘851 patent’s
specification describes the invention as relating to “the fabrication of semiconductor devices
such as light-emitting devices in misfit systems.” Col. 1:9-10.1 A light-emitting diode (“LED”)
is a semiconductor light source that is used in various pieces of electronic equipment, especially
for displaying readings on digital displays. D. 50 at 3; D. 51 at 6; D. 82-1 at 7-22. Part of the
process for creating an LED includes applying a semiconductor layer on a substrate. Col. 2:12-

1

References to “Col. _:_” refer to column and line numbers for the ‘851 patent. As the
patent is attached to the complaint, the Court may consider it in its resolution of Amazon’s
motion. Watterson, 987 F.2d at 3.
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26. The atomic structures of these two layers both form a matrix or “lattice” pattern, but do not
align perfectly and therefore form what the patent refers to as a “lattice misfit system.” Col. 1:910. One of the drawbacks of the “misfit system” is that “the quality of the directly disposed
layer is inferior to the penetration of the threading dislocations in this material system.” Col.
1:19-23. Elsewhere in the patent these are referred to as “lattice defects.” Col. 1:11. That is, as
Lexington contended at the Markman hearing, because the atoms in these structures do not align
perfectly, these defects propagate in the active layer of the LED construct and manifest
themselves by decreasing the efficacy and longevity of the device.

D. 84 (argument at

11/21/2014 Markman hearing). The patented invention teaches the user to “guide” “the lattice
defects” such that they are “contained in designated locations,” which results in “the free
propagation of extended defects . . . [being] restricted and the overall defect density of the
system [being] reduced.” Col. 1:12-15. The invention accomplishes this feat by creating a
curved surface or “textured district” atop the substrate. Col. 8:38. Accordingly, the defects do
not all rise directly upward into the active layer of the LED device, but instead bounce to the
side, as demonstrated in Figure 2A of the patent:

Only one of the patent claims is at issue in this litigation, claim 1, which reads:
A semi conductor light-emitting device comprising: a substrate; a textured
district defined on the surface, of said substrate comprising a plurality of etched
trenches having a sloped etching profile with a smooth rotation of microfacets
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without a prescribed angle of inclination; a first layer disposed on said textured
district; comprising a plurality of inclined lower portions so as to guide the
extended lattice defects away from propagating into the active layer, said first
layer and said substrate form a lattice-mismatched system, said substrate is
selected from the group comprising group III-V, group IV, group II-VI elements
and alloys, ZnO, spinel and sapphire; and a light-emitting structure containing an
active layer disposed on said first layer.
Col. 8:35-52.
Amazon markets e-reader devices and tablet computers, including the “Kindle Fire.” D.
1 ¶ 12. Lexington filed this lawsuit on November 29, 2012 and alleges that these Amazon
products infringe the ‘851 patent. Id. Amazon filed its answer and counterclaims on February
15, 2013, asserting an invalidity defense, D. 13 at 4 ¶ 16, and a counterclaim for a declaratory
judgment that that the ‘851 is invalid. Id. at 7 ¶ 17. Amazon moved for judgment on the
pleadings on its invalidity defense to Lexington’s claim of infringement and its counterclaim for
a declaration of invalidity. D. 49. The Court heard the parties on these matters and on claim
construction on November 21, 2013 and took this matter under advisement. D. 84.
IV.

Discussion
A.

Undisputed Terms

As an initial matter, the Court adopts the undisputed constructions jointly proposed by the
parties. These terms shall be construed as follows:
Construction

Term
Substrate

The supporting material upon which the other layers of an lightemitting device are grown

Layer

A thickness of material, which may be made up of sublayers, but
does not refer to a substrate

Disposed on

Applied directly or indirectly above

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Comprising a plurality of Including one or more lower portions that are inclined relative to
inclined lower portions
the overall plane of the substrate
Lattice-mismatched
system

misfit A system in which a crystal layer exhibiting one lattice constant
is disposed on a substrate that exhibits a different lattice constant

Group III-V . . . elements and an alloy of at least one group III element (i.e., boron,
alloys
aluminum, gallium, indium, thallium, scandium, yttrium)
and at least one group V element (i.e., nitrogen,
phosphorous, arsenic, antimony, bismuth, vanadium,
niobium, tantalum, dubnium)
Group IV . . . elements and a group IV element alone (i.e., carbon, silicon, germanium,
alloys
tin, lead, titanium, zirconium, hafnium, rutherfordium), or
an alloy of two or more group IV elements
group II-VI . . . elements and an alloy of at least one group II element (i.e., beryllium,
alloys
magnesium, calcium, strontium, barium, radium, zinc,
cadmium, mercury, copernicium) and at least one group VI
element (i.e., oxygen, sulfur, selenium, tellurium, polonium,
livermorium, chromium, molybdenum, tungsten,
seaborgium)

active layer
B.

the layer in the light-emitting device that emits the light
Disputed Terms

The parties dispute the meaning of the following terms and the Court resolves these
disputes as discussed below:
1.
Term

trenches

“Trenches”
Lexington’s Proposed
Construction

Amazon’s Proposed
Construction

[No
construction
required] Generally elongated depressions
otherwise, areas in the surface of bounded on the sides and bottom
the substrate from which some and open at the top
amount of material is removed in
order to create a pattern on the
surface of the substrate

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The parties’ disagreement regarding “trenches” lies at the heart of the dispute as to how
the Court should construe the claim. At oral argument, Lexington argued that Figure 2B and
Figure 4B of the patent support its proposed construction.

Extrapolating from this figure, and relying on language from the specification that describes the
trenches as “stripes” or “mesas,” Col. 3:48, Lexington’s position is that the surface of the
substrate can appear as “stripes,” as shown in Fig. 7A,

or as “mesas.” D. 50 at 7-10. An aerial view of “mesas,” however, does not appear in the
specification. Accordingly, at oral argument, counsel for Lexington brought his own model of
such a construct, resembling the following three-dimensional image of snow moguls:

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Lexington argues that if this is a potential embodiment of the patent-in-suit, then the trenches
could not be generally elongated if the “textured district” is a mesa pattern. D. 58 at 4-6.
Amazon, at oral argument, noted that a visual rendering of mesas does not appear in the
specification, and that if Lexington wanted to claim such a feature, it could have done so. D. 84.
Amazon also points to the “ordinary meaning” of trench – a depression in an otherwise flat
surface, which is bounded on the side and open on the top. D. 51 at 10.
Ultimately, when construing a claim, the Court must look to the ordinary meaning of
trench first. E-Pass Technologies, Inc. v. 3Com Corp., 343 F.3d 1364, 1368 (Fed. Cir. 2003)
(citation and internal quotation marks omitted) (applying the “heavy presumption that a claim
term carries its ordinary and customary meaning”). The Court agrees with Amazon, that by their
plain and ordinary meaning, trenches are “depressions bounded on the sides and bottom and
open at the top.” D. 51 at 10. However, the Court declines to go so far as to limit “trenches” to
being “generally elongated,” in the absence of any claim language supporting this proposition
and where the ordinary meaning of “trench” does not necessarily support such a limitation. See
Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d 1324, 1330 (Fed. Cir. 2012) (noting that “[i]t is .
. . not enough that the only embodiments, or all of the embodiments, contain a particular
limitation” to limit a claim term beyond its ordinary meaning) (internal citations omitted).
Accordingly, the Court construes “trenches” to mean “depressions bounded on the sides
and bottom and open at the top.”

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2.
Term

Having

“Having”
Lexington’s Proposed
Construction
[No
construction
otherwise, comprising

Amazon’s Proposed
Construction

required] Consisting of

The claim provides that the “textured district” is comprised of “etched trenches having a
sloped etching profile.” Col. 8:39-40. The parties agree that “comprising” is an open term,
meaning “including but not limited to,” whereas “consisting of” is a closed term, meaning
“including and limited to.” See Vehicular Techs. Corp. v. Titan Wheel Int’l, Inc., 212 F.3d
1377, 1382-83 (Fed. Cir. 2000). The patent clearly contemplates that the “etched trenches” have
a “sloped etching profile.” The patentee viewed the shape of these trenches as “essential” to
guide the lattice defects away from the active layer. Col. 2:33. Thus, opening the claim to
encompass embodiments without a “sloped etching profile” would frustrate the purpose of the
invention.
Again, relying on Figure 2B and Figure 4B, Lexington argues that the patent claims
“textured districts” with flat spaces between surface features. The Court, however, agrees with
Amazon that such an embodiment conflicts with the purpose of the invention. A comparison of
Figure 2A, which has no space between surface features and Figure 2B, which does, illustrates
this:

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Whereas the embodiment shown in Figure 2A only leaves enough room between surface features
for a single lattice defect to propagate directly upward at a 90 degree angle from the substrate,
the spaces between the features shown in Figure 2B leave a proportionately higher amount of
space between the features such that defects would propagate directly up at a 90 degree angle.
See D. 51 at 8. In this way, Lexington’s proposed construction is antithetical to the purpose of
the patent. See, e.g., Col. 1:12-15 (discussing lattice defect reduction). This fact weighs against
Lexington’s proposed construction even where Figure 2B is a disclosed embodiment, because
“[a]lthough reluctant to exclude an embodiment, this court must not allow the disclosed
embodiment to ‘outweigh the language of the claim, especially when the court’s construction is
supported by the intrinsic evidence.’” Rolls-Royce, PLC v. United Technologies Corp., 603
F.3d 1325, 1334-35 (Fed. Cir. 2010) (quoting TIP Sys., LLC v. Phillips & Brooks/Gladwin, Inc.,
529 F.3d 1364, 1373 (Fed. Cir. 2008)); see also Ascion, LLC v. Ruoey Lung Enter. Corp., No.
09-10293-GAO, 2010 WL 4183834, at *4 (D. Mass. Oct. 25, 2010) (construing claims in light of
purpose of invention over disclosed embodiments, noting that “[n]one of those features [in
disclosed embodiments] is necessary to achieve the purpose of the invention”).
In addition, the Court notes that while there is certainly no presumption of “having”
being an open or closed term, it is clear that a closed construction is more consistent with the
context of the specification and claims.

See Crystal Semiconductor Corp. v. Tritech

Microelectronics Int’l, 246 F.3d 1336, 1347 (Fed. Cir. 2001) (noting that a construction of
“having” depends on context). Accordingly, the Court construes “having” to mean “consisting
of,” consistent with Judge Young’s construction of same in Lexington Luminance LLC v. Feit
Elec. Co., No. 12-11554-WGY, D. 43 (D. Mass. Jun. 25, 2013) (construing same claim).
3.

“Microfacets”

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Term

Lexington’s Proposed
Construction

Microfacets

Amazon’s Proposed
Construction

Very small planes that make up a Planar crystal surfaces
surface contour

The parties apparently agree that a “facet” is a “planar crystal surface” or a “plane surface
of a crystal.” D. 50 at 17; D. 51 at 18. The parties dispute, however, whether the addition of
“very small” to the construction of microfacets is appropriate. Amazon argues that “very small”
adds an unnecessary layer of ambiguity to the claim. D. 51 at 18. The Court disagrees. First,
the Court agrees with Lexington that courts have used “qualitative” terms in prior claim
constructions. D. 50 at 16 (citing Inpro II Licensing, S.A.R.L. v. TMobile USA, Inc., et al., No.
03-1047 (GMS), 2004 U.S. Dist. LEXIS 29773, at *1 (D. Del. Nov 29, 2004) (construing the
term “digital assistant module” as “a small portable computing device”); Southwest Efuel
Network, L.L.C. v. Transaction Tracking Technologies, Inc., No. 07-cv-311-TJW, 2009 U.S.
Dist. LEXIS 103395, at *40 (E.D. Tex. Oct. 23, 2009) (construing the term “keypad” as “a small
hand held keyboard”)). Second, the Court notes that to simply construe “microfacets” to mean
“planar crystal surfaces” would be to ignore a descriptive part of the term. The Court declines to
do so here, where the claim construction process begins with term’s ordinary meaning. Phillips,
415 F.3d at 1312. Accordingly, the Court construes “microfacets” to mean “very small planar
crystal surfaces.”
4.
Term

“Sloped etching profile with a smooth rotation of microfacets”
Lexington’s Proposed
Construction

Sloped etching profile [No construction required]
with a smooth rotation otherwise, sloped surface
of microfacets
contour without sharp corners

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Amazon’s Proposed
Construction
when viewed in cross-section, the
side and bottom walls of the etched
trenches are made up of microfacets with a gradual, incremental
rotation in slope from micro-facet

to microfacet such that there are no
sharp corners

The proposed constructions indicate the parties’ agreement that the claim’s reference to a
“smooth rotation” of microfacets means that there are no sharp corners in the “textured district.”
The parties disagree as to whether the “sloped etching profile” refers to a “surface contour” or
the “etched trenches.” The Court must construe the claim in light of the specification. Phillips,
415 F.3d at 1315. The specification does not refer to a “surface contour,” but repeatedly refers to
“trenches.” See, e.g., Col. 2:24, 2:37, 3:63. The Court therefore finds that Amazon’s proposed
construction is more consistent with the specification.
Lexington argues that Amazon’s construction is inconsistent with Figure 2B, because a
“flat bottom [as indicated in Figure 2B] cannot be part the sloped etching profile.” D. 50 at 20.
As the Court has indicated above, however, a flat bottom is inconsistent with the purpose of the
invention. Moreover, the parties have agreed that there are to be no sharp corners. Id. at 17.
The Court agrees with Amazon that an absence of sharp corners is inconsistent with flat bottoms
of trenches. D. 59 at 15. Even if the Court’s adoption of Amazon’s construction is inconsistent
with Figures 2B and 4B, the Court is empowered to exclude a disclosed embodiment when it is
required by the claim’s language. Lucent Techs., Inc. v. Gateway, Inc., 525 F.3d 1200, 1215-16
(Fed. Cir. 2008) (concluding that because “the claim language is unambiguous, we have
construed the claims to exclude all disclosed embodiments”).2

2

As discussed above, there is a “strong presumption” against constructions that excludes
disclosed embodiments. In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303,
1324 (Fed. Cir. 2011); see also C.R. Bard., inc. v. U.S. Surgical Corp., 388 F.3d 858, 865 (Fed.
Cir. 2004). Nevertheless, where inconsistent with the specification and claims, the disclosed
embodiments must give way. Elekta Instrument S.A. v. O.U.R. Scientific Int’l, Inc., 214 F.3d
1302, 1308 (Fed. Cir. 2000) (excluding disclosed embodiment “in light of the prosecution history
and the unambiguous language of the amended claim”).
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Lexington also argues that Amazon’s proposed construction is improper because a
“sloped etching profile” cannot be a “two-dimensional cross-section.” D. 50 at 18. However,
almost all of the figures in the specification show the etching profile from a cross-sectional view,
see, e.g., Figs. 1C, 2B, 3C, which is best apt to demonstrate the nature in which the surface
features have no sharp corners. Amazon’s construction does not limit the claim to a twodimensional view; it merely demonstrates how the textured district should look from a side-view.
Finally, Amazon’s construction is consistent with the plain and ordinary meaning of profile, that
is, the side-view.
Accordingly, the Court construes “sloped etching profile with a smooth rotation of
microfacets” to mean “when viewed in cross-section, the side and bottom walls of the etched
trenches are made up of micro-facets with a gradual, incremental rotation in slope from microfacet to microfacet such that there are no sharp corners.”

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5.

“A sloped etching profile . . . without a prescribed angle of inclination”

Term

Lexington’s Proposed
Construction

a sloped
etching profile
. . . without a
prescribed
angle of
inclination

[No construction necessary],
otherwise: a sloped surface
contour... without a specific
angle of inclination

Amazon’s Proposed
Construction
when viewed in cross-section, the
side and bottom walls of the etched
trenches have no constant angle of
inclination, and so they have no
linear portions

For the reasons discussed above, the Court adopts Amazon’s construction of “sloped
etching profile.” What remains, then, is “without a prescribed angle of inclination.” Lexington
argues that “prescribed” must mean specific,” whereas Amazon asks the Court to construe the
term to mean “constant.” Consistent with its earlier constructions, the Court looks to the purpose
of the invention itself. As discussed above, the patentee was interested in removing sharp
corners from the surface of the substrate. Col. 4:27-34. To accomplish this, the profile of the
trench must always be curved. As counsel for Amazon noted at oral argument, if the etching
profile were not curved, the angle of inclination would be constant – an angle of zero or 180
degrees. Accordingly, the Court agrees with Amazon that “prescribed” should be construed to
mean “constant.” Similarly, the Court agrees that a constant angle of inclination necessarily
requires there to be “no linear portions” on the “sloped etching profile.” Although Lexington
again argues that the “no linear portions” requirement ignores plainly-disclosed embodiments, D.
50 at 23, the Court finds for the same reasons as discussed above that both the claim language
itself and the purpose of the invention run counter to the embodiments disclosed in Figures 2B
and 4B.

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Accordingly, the Court construes “a sloped etching profile . . . without a prescribed angle
of inclination” to mean “when viewed in cross-section, the side and bottom walls of the etched
trenches have no constant angle of inclination, and so they have no linear portions.”
6.

“So as to guide the extended lattice defects away from propagating into
the active layer”

Term

Lexington’s Proposed
Construction

so as to guide the
extended lattice
defects away from
propagating into the
active layer

[No construction required]
otherwise, such that free
propagation of extended
lattice defects into the active
layer is significantly
reduced relative to a device
made by the same process
without the textured districts
a)

Amazon’s Proposed
Construction
The term “the extended lattice
defects” is indefinite.
No construction is required for the
remainder of this term.

Amazon Argues that Claim 1 of the ‘851 Patent Is Indefinite

Amazon argues that claim 1 of the ‘851 patent is invalid because it is indefinite. D. 49-1
at 9. Amazon argues that “. . . so as to guide the extended lattice defects away from propagating
into the active layer” is indefinite because it does not explain to which “extended lattice defects”
the claim refers. Id. at 11.
As an initial matter, the Court must evaluate whether these issues are appropriately
decided on the pleadings. “A determination of claim indefiniteness is a legal conclusion that is
drawn from the court’s performance of its duty as the construer of patent claims. . . .
Indefiniteness, therefore, like claim construction, is a question of law.” Atmel Corp. v. Info.
Storage Devices, Inc., 198 F.3d 1374, 1378 (Fed. Cir. 1999) (citing Personalized Media
Communications, LLC v. Int’l Trade Comm’n, 161 F.3d 696, 705 (Fed. Cir. 1998)). In general,
however, the issue of indefiniteness is decided on a motion for summary judgment. See, e.g.,
Baker Hughes, Inc., v. Davis-Lynch, Inc., 31 Fed. App’x 650, 651 (Fed. Cir. 2002) (affirming
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district court’s grant of partial summary judgment on issue of indefiniteness). That is because a
court evaluating whether a claim is indefinite must often construe the claim prior to determining
whether the claim is indefinite. See Enzo Biochem, Inc. v. Appelera Corp., 599 F.3d 1325,
1332-36 (Fed. Cir. 2010) (evaluating indefiniteness in part based upon district court’s claim
constructions). Many courts, however, do not rely on their claim constructions in determining
whether a claim is sufficiently definite. See Verve, LLC v. Crane Cams, Inc., 311 F.3d 1116,
1119-20 (Fed. Cir. 2002) (determining that the word “substantially” did not render claim
indefinite where the district court did not construe the term). Moreover where, as here, however,
the sections of the claim in dispute have already been construed as a matter of law, disposition of
the issues raised by Amazon are appropriate for a motion for judgment on the pleadings. See
Curran, 509 F.3d at 45 (affirming district court’s entry of judgment on the pleadings where the
court only needed to decide issues of law).
b)

The Word “The” Without Any Further Explanation Does Not
Render the Claim Indefinite

Amazon argues that the ‘851 patent’s requirement that the “lower portions” “guide the
extended lattice defects away from the active layer” is indefinite because it fails to specify which
lattice defects to which the claim refers. D. 49-1 at 6 (emphasis in original) (internal quotation
marks omitted). As put by Amazon:
[W]hat did the patentee mean when he referred to guiding “the extended lattice
defects?” Did he mean that his invention would guide all extended lattice defects
away from the active layer? Or, by using the plural “defects,” that the invention
would simply guide more than one extended lattice defect? Or was it that the
invention would guide some other, indeterminate number of lattice defects
away from the active layer?
Id. (emphasis in original).
Amazon fails to meet its burden of proving invalidity as to this argument by clear and
convincing evidence. Amazon’s argument might be persuasive if the Court read the claim in
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isolation. However, “resolution of any ambiguity arising from the claims and specification may
be aided by extrinsic evidence of usage and meaning of a term in the context of the invention.”
Verve, 311 F.3d at 1119. Despite Amazon’s protestations to the contrary, it is clear that the goal
of the invention is to “reduce” the number of lattice defects. Col. 1:12-15; Col. 1:48; Col. 1:55;
Col. 1:63; Col. 2:9; Col. 2:22; Col. 2:36; Col. 3:46; Col. 5:11; Col. 5:19; Col. 5:37 (all references
to lattice defect reduction). Accordingly, “guid[ing] the extended lattice defects away from the
active layer” therefore means to reduce their manifestation in the active layer.
In a parallel litigation before another judge in this district, the court construed many of
the terms at issue here, including “so as to guide the extended lattice defects away from
propagating into the active layer.” See Feit Elec. Co., Inc., 12-11554-WGY, D. 43 (construing
same claim).

In that case, Judge Young construed this term in a manner consistent with

Lexington’s proposed construction. Id. That court’s constructions consistently endorsed the
notion that the goal of the invention was to reduce or “minimiz[e]” lattice defects. Feit Elec.
Co., Inc., No. 12-11554-WGY, D. 50 at 24 (transcript of Markman hearing in which the court
proposed a construction “‘that serves the purpose of minimizing the propagation of lattice
defects into the active layer.’ I mean, that’s the goal [of the invention]”).
Amazon argues that the claim has multiple possible meanings, analogizing this case to
Honeywell Int’l, Inc. v. Int’l Trade Comm’n, 341 F.3d 1332 (Fed. Cir. 2003), in which the
Federal Circuit found a claim indefinite where “melting point elevation” could be measured in
four different ways and each method yielded a different result. D. 49-1 at 11 (citing Honeywell,
341 F.3d at 1341). This is not such a case. Although Amazon argues that the patent fails to
specify which lattice defects are guided away from the layer, the invention teaches here that
guiding the defects away from the active layer simply means that they are reducing them as

18

much as possible, or as put by Judge Young, “minimizing” them. Col. 2:22; Feit Elec. Co., Inc.,
No. 12-11554-WGY, D. 50 at 24. There is clearly only one definition, unlike in Honeywell, and
the fact that the patent does not specify exactly how many defects will be reduced does not doom
the claim as indefinite. Kinetic Concepts, Inc. v. Blue Sky Medical Group., Inc., 554 F.3d 1010,
1022 (Fed. Cir. 2009) (concluding that “reduction . . . by at least 50%” is not indefinite).
c)

The Court adopts Feit Elec. Co., Inc.’s construction of the term

Accordingly, for the foregoing reasons, the Court adopts the construction of this term in
Feit Elec. Co. Inc., No. 12-11554-WGY, D. 43, and construes the claim to mean “such that free
propagation of extended lattice defects into the active layer is significantly reduced relative to a
device made by the same process without the textured districts.”
7.

“Said Substrate Is Selected from the Group Comprising”

Term

Lexington’s Proposed
Construction

said substrate
is selected
from the
group
comprising

[No construction required]
otherwise, said substrate is
selected from one or
more of the following groups

Amazon’s Proposed
Construction
said substrate is selected from the
group that includes but is not
limited to

Amazon asserts that the claim language “said substrate is selected from the group
comprising group III-V, group IV, group II-VI elements and alloys, ZnO, spinel and sapphire” is
indefinite because it allows for an unlimited amount of alternative embodiments. In other words,
Amazon alleges that the group amounts to a Markush group that was incorrectly drafted. D. 49-1
at 15-21.
a)

The Group of Elements from Which Those Practicing the Patent
May Draw for the Claimed Substrate is a Markush Group

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A Markush group derives its name from a nearly ninety year-old patent application. See
Ex parte Markush, 1925 CD 126 (Com. Pat. 1924). Such a group is “a listing of specified
alternatives of a group in a patent claim,” with members of the claimed group being functionally
equivalent for purposes of claim validity. Abbott Labs. v. Baxter Pharm. Prods., Inc., 334 F.3d
1274, 1280 (Fed. Cir. 2003).

Put another way, a Markush group provides for alternate

embodiments of the claimed invention. See In re Harnisch, 631 F.2d 716, 720 (C.C.P.A. 1980).
“A Markush group is . . . typically expressed in the form: a member selected from the group
consisting of A, B, and C.” Maxma v. ConocoPhillips, Inc., No. 03-421, 2005 WL 1690611, at
*5 (E.D. Tex. July 19, 2005) (citing Abbott Labs., 334 F.3d at 1280). In other words, the group
includes and is limited to A, B and C.

Thus, in the example discussed in Maxma, the

embodiments would be limited to A; B; C; A and B; A and C; B and C; or A, B and C.
Here, the patent claims a substrate where “said substrate is selected from the group
comprising group III-V, group IV, group II-VI elements and alloys, ZnO, spinel and sapphire.”
Col. 8:46-49. The parties have stipulated and the Court takes judicial notice of the fact that
groups III-V, IV and II-VI elements and alloys refer to a closed list of certain elements and
combinations (i.e., alloys) of elements on the periodic table. D. 54 at 9; see also Encyclopedia
Britannica Online, Periodic Table of Elements, http://www.britannica.com/nobelprize/art-91 (last
visited Oct. 10, 2013). Thus, it follows that the substrate could be made of any number of these
elements and alloys, but can also include any other element or alloy. This is the very essence of
a patent claiming alternate embodiments.
Lexington argues that Accenture v. Global Services GmbH v. Guidewire Software, Inc.,
No. 07-826, 2010 WL 883019 (D. Del. Mar. 5, 2010) compels the outcome of this case. D. 54 at
8. In Accenture, the court construed claim language in U.S. Patent No. 7,013,284, in which the

20

patentee claimed a computer program that organized information related to an insurance
transaction into four levels. U.S. Patent No. 7,013,284, Col. 107:28-33 (claiming “an insurance
transaction database . . . comprising a claim folder containing the information related to the
insurance transaction decomposed into a plurality of levels from the group comprising a policy
level, a claim level, a participant level and a line level”). In clarifying its construction of this
claim, the court noted that it “rejected Guidewire’s argument that the four levels specified in the
‘284 patent constitute a Markush group” because “[t]he four levels set forth in the ‘284 patent are
not functionally equivalent alternatives. Instead, each serves a different function in handling the
claim, and each must be present.” Accenture Global Servs., GmbH v. Guidewire Software, Inc.,
800 F. Supp. 2d 613, 623 (D. Del. 2011), aff’d, 728 F.3d 1336 (Fed. Cir. 2013), reh’g en banc
denied (Dec. 12, 2013). Unlike the ‘284 patent at issue in Accenture, the invention claimed by
the ‘851 patent are described as functionally equivalent alternatives. Thus, claim 1 of the ‘851
patent includes a Markush group.
b)

By Using the Word “Comprising,” the ‘851 Patent Claims an
Infinite Number of Possibilities for the Nature of the Substrate,
Rendering the Claim Indefinite

Amazon posits that use of the word “comprising” rather than “consisting” provides for a
substrate selected from a group that has no limits. D. 49-1 at 15-16. “A Markush group by its
nature is closed. If an applicant tries to claim a Markush group without the word ‘consisting,’
the PTO will insist upon the addition of this word to ensure a closed meaning.” Gillette Co. v.
Energizer Holdings, Inc., 405 F.3d 1367, 1372 (Fed. Cir. 2005). If a Markush group uses the
term “comprising” rather than “consisting of,” it is not closed. Abbott Labs., 334 F.3d at 128081 (quoting Stephen A. Becker, Patent Applications Handbook § 2:17 (9th ed. 2000)). This is
because “‘comprising’ is a “term of art used in claim language which means that the named

21

elements are essential, but other elements may be added and still form a construct within the
scope of the claim.” Sevenson Envtl. Servs., Inc. v. United States, 76 Fed. Cl. 51, 74 (Fed. Cl.
2007) (quoting Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997) (internal
quotation marks omitted)). In other words, “‘comprising’ is well understood to mean ‘including,
but not limited to.’” CIAS, Inc. v. Alliance Gaming Corp., 504 F.3d 1356, 1360 (Fed. Cir. 2007)
(citation omitted).
To illustrate the difference between a group “comprising” certain elements and a group
“consisting of” certain elements, the Court returns to the example cited in Maxma, 2005 WL
1690611, at *5. Whereas a Markush group expressed in the form “a member selected from the
group consisting of A, B and C,” id., would be limited to A; B; C; A and B; A and C; B and C; or
A, B and C, a Markush group comprising A, B and C would include any one of the
aforementioned embodiments, but would not be limited to them such that it could include an
infinite number of alternative embodiments.
Here, claim 1 of the ‘851 patent provides that the “substrate is selected from the group
comprising group III-V, group IV, group II-VI elements and alloys, ZnO, spinel and sapphire.”
Col. 8:46-49.

Using the Federal Circuit’s definition of “comprising,” this means that the

substrate may include the enumerated elements or alloys, but may also include an indeterminate
number of other elements or alloys. The Manual of Patent Examining Procedure (“MPEP”)
recognizes that “a Markush group may be so expansive that persons skilled in the art cannot
determine the metes and bounds of the claimed invention.” MPEP § 2173.05(h).3 That is
exactly the case here, where the claim fails to narrow down the composition of the claimed
3

While the MPEP does not have the force of law, it is entitled to judicial notice as an
official interpretation of statutes or regulations as long as it is not in conflict therewith. Molins
PLC v. Textron, Inc., 48 F.3d 1172, 1180 n.10 (Fed. Cir. 1995) (citation omitted).
22

substrate to any degree of substantial certainty. It is therefore indefinite. See Halliburton Energy
Servs., Inc., 514 F.3d at 1253 (finding claim indefinite and noting that “[w]hile patentees are
allowed to claim their inventions broadly, they must do so in a way that distinctly identifies the
boundaries of their claims”).
Lexington argues that the proper way to interpret the claim is to say that the substrate
must include one of the enumerated elements or alloys but may include others. D. 54 at 9-10.
Even if true, the claim would still envision an infinite number of combinations from which the
substrate can be derived, because it uses the word “comprising.” Indeed, in the Accenture case
that Lexington cites, the court acknowledged that had it found that “the four levels specified in
the ‘284 patent constitute a Markush group,” “the use of the term ‘comprising’ [would]
automatically lead to indefiniteness.” Accenture, 800 F. Supp. 2d at 623; see also Sevenson, 76
Fed. Cl. at 74 (noting that “[b]y proposing the word ‘comprising,’ Sevenson improperly broadens
the scope of each Markush group by converting it to an open group where other members could
be added.

Such a construction would contradict the established law relating to Markush

groups”).
Lexington relies on the district court opinion in Gillette, where another judge in this
district noted that “comprising is not a weasel word with which to abrogate all claim limitations.”
Gillette Co. v. Energizer Holdings, Inc., No. 03-11514-PBS, 2004 WL 3366162, at *5 (D. Mass.
Jan. 15, 2004) (citation omitted). However, that ruling was vacated on appeal, with the Federal
Circuit applying the term’s “open” usage and determining that a claim describing “comprising a
group of first, second, and third blades” encompassed more than only three-bladed razors.
Gillette, 405 F.3d at 1371 (vacating district court’s denial of preliminary injunction). Moreover,
because the district court’s findings at the preliminary injunction stage addressed only the

23

plaintiff’s likelihood of success on infringement, the Federal Circuit remanded the matter to the
district court to consider the defendant’s invalidity defenses. Id. at 1375. Accordingly, the
neither court addressed whether the claim in the patent at issue was indefinite and therefore
Gillette is inapposite.
For all these reasons, since the claim fails to narrow the composition of the substrate to
any degree of substantial certainty, claim 1 of the ‘851 patent is indefinite.
V.

Conclusion
For the foregoing reasons, the Court ALLOWS Amazon’s motion for judgment on the

pleadings, D. 49. Judgment shall enter on Amazon’s counterclaim for a declaration of invalidity
in its favor and Lexington’s complaint shall be DISMISSED.4
So Ordered.
/s/ Denise J. Casper
United States District Judge

4

Where a patent is deemed invalid, judgment must enter against the patentee. Aspex
Eyewear, Inc. v. Altair Eyewear, Inc., 818 F. Supp. 2d 348, 365 (D. Mass. 2011) (entering
judgment in favor of defendant upon determination that patent was invalid).
24