Solta Medical, Inc. v. Lumenis, Inc. et al

Filing 99

Judge Denise J. Casper: ORDER entered. MEMORANDUM AND ORDER - The disputed claim terms are construed as follows:1. "changing the form or function of a laser beam to an irradiation pattern"2. " part of the generated laser light"3. No further construction needed4. "reducing temperature with cryogenic fluid"5. "material that allows the laser beam to pass through"6. No further construction needed.

UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS
__________________________________________
)
)
SOLTA MEDICAL, INC.,
)
)
Plaintiffs,
)
)
v.
)
)
)
LUMENIS, INC., and LUMENIS, LTD.,
)
)
Defendants.
)
)
__________________________________________)

Case No. 19-cv-11600-DJC

MEMORANDUM AND ORDER
CASPER, J.
I.

October 15, 2021

Introduction
In this patent dispute, Plaintiff Solta Medical, Inc. (“Solta”) alleges that Defendants

Lumenis, Inc. and Lumenis, Ltd. (collectively, “Lumenis”) infringe certain claims of United States
Patents Nos. RE42,594 (“‘594 patent”) and RE43, 881 (“‘881 patent”) (collectively, the “PatentsIn-Suit”).

The parties now seek construction of six disputed claims terms.

After claim

construction briefing and a Markman hearing, the Court’s claim construction of the disputed terms
follows.
II.

Patents-in-Suit
This lawsuit involves two patents related to laser skin treatment technologies. D. 1; D. 1-

3; D. 1-4. Solta’s ‘594 patent was filed on October 13, 2005 and issued on August 2, 2011. D. 1-

1

3 at 1. Solta’s ‘881 patent was filed on June 21, 2011 and issued on December 25, 2012. D. 1-4
at 1. The ‘881 patent is a continuation of the ‘594 patent and the Patents-In-Suit share a common
specification. See id.; D. 58 at 7 n.1; D. 60 at 9.
III.

Procedural History
Solta instituted this action on July 24, 2019. D. 1. Lumenis asserted counterclaims against

Solta, seeking a declaration of non-infringement for the Patents-In-Suit. D. 16; D. 36. After claim
construction briefing, the Court held a Markman hearing and took the matter under advisement.
D. 77.
IV.

Standard of Review
The construction of disputed claim terms is a question of law. Markman v. Westview

Instruments, 517 U.S. 370, 372 (1996). For claim construction, a court must construe “the meaning
that the term would have to a person of ordinary skill in the art in question at the time of . . . the
effective filing date of the patent application.” Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed.
Cir. 2005). To do so, the Court must look to “the words of the claims themselves, the remainder
of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific
principles, the meaning of technical terms, and the state of the art.” Id. at 1314 (quoting
Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir.
2004)).
A.

The Claims

The analysis must begin with the language of the claim, which “define[s] the invention to
which the patentee is entitled the right to exclude.” Id. at 1312 (citing Innova, 381 F.3d at 1115).
“[T]he context in which a term is used in the asserted claim can be highly instructive.” Id. at 1314.
Courts may find that the claim itself provides the means for construing the term where, for

2

example, the claim term is used consistently throughout the patent. Id. In that case, “the meaning
of a term in one claim is likely the meaning of that same term in another.” Abbott GmbH & Co.,
KG v. Centocor Ortho Biotech, Inc., No. 09-11340-FDS, 2011 WL 948403, at *3 (D. Mass. Mar.
15, 2011) (citing Phillips, 415 F.3d at 1314). Furthermore, “the presence of a dependent claim
that adds a particular limitation gives rise to a presumption that the limitation in question is not
present in the independent claim.” Phillips, 415 F.3d at 1315.
B.

The Specification

Nevertheless, the claims “do not stand alone” but “are part of a fully integrated written
instrument, consisting principally of a specification,” which “is always highly relevant to the claim
construction analysis.” Id. “Usually, [the specification] is dispositive; it is the single best guide
to the meaning of a disputed term.” Id. (citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576,
1582 (Fed. Cir. 1996)). “[T]he scope and outer boundary of claims is set by the patentee’s
description of his invention” and, therefore, “claims cannot be of broader scope than the invention
that is set forth in the specification.” On Demand Mach. Corp. v. Ingram Indus., Inc., 442 F.3d
1331, 1338-40 (Fed. Cir. 2006); see Phillips, 415 F.3d at 1315–17, 1323. The Court must “us[e]
the specification [only] to interpret the meaning of a claim,” and must be careful not to “import[ ]
limitations from the specification into the claim.” Phillips, 415 F.3d at 1323. This standard may
“be a difficult one to apply in practice,” id., but “[t]he construction that stays true to the claim
language and most naturally aligns with the patent’s description of the invention will be, in the
end, the correct construction.” Id. at 1316 (citing Renishaw PLC v. Marposs Societa’ per Azioni,
158 F.3d 1243, 1250 (Fed. Cir. 1998)).

3

C.

The Prosecution History

After the claims themselves and the specification, “a court should also consider the patent’s
prosecution history, if it is in evidence.” Id. at 1317 (quoting Markman, 52 F.3d at 980) (internal
quotation mark omitted). “Like the specification, the prosecution history provides evidence of
how the [United States Patent and Trademark Office] and the inventor understood the patent” and
“can 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. (citing Vitronics,
90 F.3d at 1582–83). The prosecution history should be given less weight than the claims and the
specification, however, because “it often lacks [] clarity . . . and thus is less useful for claim
construction purposes.” Id.
D.

Extrinsic Evidence

Courts may also consider extrinsic sources, which “can help educate the court regarding
the field of the invention and can help the court determine what a person of ordinary skill in the
art would understand claim terms to mean.” Id. at 1319. In particular, “dictionaries and treatises
can be useful in claim construction” as they may assist the court in understanding the underlying
technology and “can assist the court in determining the meaning of particular terminology to those
of skill in the art of the invention.” Id. at 1318. “[W]hile 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. at 1317 (citations and internal quotation marks
omitted). In general, extrinsic evidence is viewed “as less reliable than the patent and its
prosecution history in determining how to read claim terms.” Id. at 1318. Therefore, extrinsic

4

evidence is “unlikely to result in a reliable interpretation of patent claim scope unless considered
in the context of the intrinsic evidence.” Id. at 1319.
E.

Indefiniteness

A patent claim is invalid for indefiniteness if its claims, when 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). “The definiteness requirement must take into account the inherent limitations of
language, but at the same time, the patent must be precise enough to afford clear notice of what is
claimed, thereby apprising the public of what is still open to them.”

Fairfield Indus., Inc. v.

Wireless Seismic, Inc., No. 4:14-CV-2972, 2015 WL 1034275, at *4 (S.D. Tex. Mar. 10, 2015)
(quoting Nautilus, 572 U.S. at 909–910). Patents are presumed to be valid, 35 U.S.C. § 282, and
indefiniteness must be proved by the more demanding standard of clear and convincing evidence.
Microsoft Corp. v. i4i Ltd. P’ship, 564 U.S. 91, 95 (2011).

5

V.

Construction of Disputed Claims
The parties dispute the meaning of the following six terms and the Court resolves these

disputes as discussed below:1
A.

“Converting the Laser Light From a Beam to [an] Irradiation Pattern”

Term

Solta’s Proposed
Construction

Lumenis’ Proposed
Construction

Court’s
Construction

converting the
laser light from a
beam to an
irradiation pattern

using one or more
beams from the
generated laser light to
create an exposure
pattern, or changing
the form or function of
the generated laser
light to create an
exposure pattern

The term is indefinite. In
the alternative, the term
means: splitting the laser
beam to passively
produce illuminated
areas separated by
unilluminated areas

changing the form
or function of a
laser beam to an
irradiation pattern

‘594: 29-30, 45,
47
‘881: 29-30, 64,
66

As to “converting,” the parties agree that the ordinary meaning of the term is “changing
the form or function.” See D. 87 at 13:24-25; D. 66 at 14. The remaining dispute is over the scope
of that term as used in the Patents-In-Suit.
Solta urges the Court to adopt its proposed construction because the independent claim
includes using laser beams to generate an irradiation pattern that is not limited to a specific method
of generating such pattern, D. 58 at 12 (citing ‘594 cl. 29), while dependent claims are directed to
a specific method of generating the irradiation pattern. Id. (citing ‘594 cl. 30, 47). Solta notes that
a person of ordinary skill in the art (“POSITA”) would have understood the independent claim to
“broadly encompass” the multiple methods of converting described in the dependent claims and

1

The parties initially disputed the construction of “Er:Glass laser” but have since agreed to adopt
Solta’s proposed construction of the term: “a laser having erbium-doped crystal or glass as the
gain medium.” D. 75 at 1; D. 78 at 3. Additionally, the parties filed an amended joint claim
construction statement after the Markman hearing, reflecting certain changes to their proposed
constructions. See D. 78. The Court refers to these proposed constructions below.
6

understood the dependent claims all to involve “one or more beams of the generated laser light.”
Id. at 12–13. Lumenis supports its proposed construction by asserting that “the only relevant
embodiment,” masking, “describes the use of passive beam splitting, such as through use of a
mask, to produce an irradiation pattern in which the uncovered areas are irradiated by the laser and
the masked areas are not.” D. 60 at 17.
While the masking method involves a passive optical element to change the intensity
distribution and shape of the light (i.e., from a “single whole beam into multiple smaller portions”),
see D. 61 ¶ 62 (Grove Decl.); D. 59 ¶ 48 (Viator Decl.), masking is only one method of converting
a laser beam described in the patent, see D. 59 ¶ 51 (describing pulsing as used in ‘594 patent as
“method of patterning to . . . actively control the laser pulse/scan of the bean to apply a pattern to
the skin tissue”); D. 61 ¶¶ 55–57 (describing pulsing/scanning as active). For these reasons, the
Court also rejects Lumenis’ argument that the term is indefinite, see D. 60 at 15, as the parties
agree on the ordinary meaning of “converting,” see D. 61 ¶¶ 76–77; D. 66 at 14 n. 4, and the
Patents-In-Suit indeed describe the methods of “converting” for each claim. D. 1-3 at 24
(describing method in cl. 29 as masking, describing method in cl. 45 as pulsing/scanning); see D.
59 ¶ 42 (describing methods and referring to commonly used encyclopedia providing definitions
for same).
Accordingly, the Court construes the term “converting the laser light from a beam to an
irradiation pattern” as “changing the form or function of a laser beam to an irradiation pattern.”

7

B.

“A Portion of the Laser Light”

Term
“a portion of the
laser light”

Solta’s Proposed
Construction

Lumenis’ Proposed
Construction

a part of the generated a fraction of the
laser light
generated laser light
beam

Court’s
Construction
a part of the
generated laser
light

‘594: 29
‘881: 29
As indicated at the Markman hearing, D. 87 at 40, the parties agree that the ordinary
meaning of “a portion” is a part of a whole. D. 87 at 40:6-8, 43:15-16; D. 78 at 2. The remaining
dispute is thus over Lumenis’ proposed construction, where they argue that, since the relevant
claim later refers to the “masking” embodiment as its preferred method, each “portion” of the laser
beam “is a different fraction” of the same laser light beam. D. 60 at 18. The Court construes the
term as “a part of the generated laser light,” as such construction comports with the agreed-upon
plain and ordinary meaning of the term portion. Moreover, nothing in the intrinsic record supports
swapping the word portion with fraction, see D. 1-3; D. 1-4, which would in turn need to be
construed, and of which Lumenis does not provide a plain and ordinary meaning. See D. 60. The
Court also declines to add “beam” in construing the term. As discussed above, the preceding claim
language refers to converting the laser light from a beam to an irradiation pattern, indicating that
laser light and laser beam have different meanings.

See D. 61 ¶ 62 (describing masking

embodiment as changing “single whole beam into multiple smaller portions”).

8

C.

“Substantially Simultaneously”

Term
“substantially
simultaneously”
‘594: 29, 45

Solta’s Proposed
Construction

Lumenis’ Proposed
Construction

at the same time or
approximately at the
same time, or
substantially
simultaneously

The term is indefinite. In
the alternative, the term
means: at the same time

Court’s
Construction
No further
construction
needed

Here, the parties agree that the ordinary meaning of simultaneously is “at the same time,”
D. 78 at 2, but dispute the use of “substantially” to modify it. Solta argues that using the term
“substantially” results in a broader temporal relationship, which refers to the two relevant methods
of converting, masking (where irradiation occurs “at the same time”) and pulse/scanning (where
irradiation depends on the pulse rate of the laser). D. 58 at 15–16. Lumenis argues that the
qualifier “substantially” is indefinite because there is no objective standard within the patent to
discern between what is “substantially” simultaneous and what is not. D. 60 at 19–20. In the
alternative, Lumenis offers its proposed construction, which it contends “requires the overlap in
time dictated by the ordinary meaning of simultaneously.” Id.
As an initial matter, courts do not construe the term “substantially” to be “inherently
indefinite.” Vifor (Int’l) AG v. Mylan Lab’ys Ltd., No. 19-cv-13955 (FLW), 2021 WL 2652123,
at *10 (D.N.J. June 28, 2021) (citations omitted).

For example, using substantially can

“accommodate the minor variations that may be appropriate to secure the invention.” Id. (citing
Verve, LLC v. Crane Cams, Inc., 311 F.3d 1116, 1120 (Fed. Cir. 2002)). Used, as here, as “a word
of degree,” the Court must “determine whether the patent provides some standard for measuring
that degree.” Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1332 (Fed. Cir. 2010)
(quotations omitted). Here, the claim language and the specification provide some standard for
measuring that degree. See D. 1-3 at 24, cl. 48; id. at 20 (describing “laser producing 25 Joule 2
9

ms pulses at a wavelength of 1.54 microns and at pulse rates of 1 Hz or 0.5Hz”); id. at 21 tbls. 1–
3 (providing repetition rate of laser). Such functional limitations (i.e., pulse rate range) provide
objective guidance. See IMPINJ, INC., v. NXP USA, INC., No. 4:19-CV-3161-YGR, 2021 WL
4221659, at *3–4 (N.D. Cal. Sept. 16, 2021). Accordingly, the Court does not conclude that the
term “substantially” is indefinite.
In light of this conclusion, and the reasons articulated for same, the Court need not further
construe the term.
D.

“Cooling”

Term
“cooling”
‘594: 31-33, 45
‘881: 31-33, 41-42, 64

Solta’s Proposed
Construction
Reducing or
controlling
temperature

Lumenis’ Proposed
Construction
reducing temperature
with cryogenic fluid

Court’s
construction
reducing
temperature with
cryogenic fluid

As to “cooling,” the parties agree that the ordinary definition of cooling includes reducing
temperature. See D. 58 at 17; D. 87 at 63:2–3. Solta argues that cooling also includes controlling
temperature, and that cooling is not limited to cooling with cryogenic fluids. D. 58 at 21–23.
Lumenis points to references in the Patents’ claims and specification referring specifically to
cooling with cryogenic fluid. D. 60 at 22.
As to “controlling,” the Court declines to include it. Such term is used differently
throughout the claims. For example, the ‘881 patent describes “using the measured temperature
to control an amount of cooling applied to the transparent material,” but not with reference to
controlling the temperature itself. See D. 1-4 at 24, cl. 41. To the extent cooling refers to the skin
tissue itself, see D. 1-4 at 24, cl. 33, the specification distinguishes between cooling (i.e., reducing
temperature), and controlling temperature, when it explains that “[t]he cooling is coordinated with

10

the application of the laser beam so as to control the temperatures of all affected layers of tissues.”
See D. 1-3 at 19.
As to cryogenic fluid, the Court includes it. First, the specification states that the cooling
devices employ cryogenic fluid as a means of cooling the physical embodiment itself (i.e., cooling
rod or plate), and the claims begin by stating that the cooling elements employ a cryogenic
container and cryogen (or fluid). See D. 1-3 at 19–20, 22, 23–24. Moreover, a description of the
invention background admits that non-cryogenic cooling was “typical . . . of the prior art,”
indicating that this invention disclaimed other previously used cooling methods, like ice water. D.
1-4 at 19. Furthermore, the prosecution history contains the inventors’ assertions that “the most
important feature of Applicants’ invention” was “the cryogenic cooling means for cooling a
surface of a cooling element, which in turn cools the tissue surface.” D. 60-2l at 2; D. 60-19 at 8–
9; see D. 60-33 at 1 (stating that application of original patent was first instance where inventor
“suggested use of cryogenic cooling to cool a surface area of a transparent high thermal
conductivity cooling element for laser tissue treatment”). Taken together, the Patents-In-Suit
disavow other cooling methods. See On Demand Mach. Corp., 442 F.3d at 1340 (quoting
Astrazeneca AB v. Mut. Pharm. Co., 384 F.3d 1333, 1339–40 (Fed. Cir. 2004) (explaining that
“[w]here the general summary or description of the invention describes a feature of the invention,”
and “criticizes other products . . . that lack that same feature, this operates as a clear disavowal of
these other products”)). Although in the reissue application for the Patents, the inventors urge that
cryogenic cooling is “optional,” and seek to “broaden the scope of the claims to more fully
encompass [what was] disclosed in the specification,” D. 59-2 at 41, 44, the language of the claims
and the specification remains unchanged.

11

Accordingly, the Court construes “cooling” as “reducing temperature with cryogenic
fluid.”
E.

“Transparent Material”

Term

Solta’s Proposed
Construction

Lumenis’ Proposed
Construction

“transparent material” a material that allows The term is indefinite
light to pass through
‘594: 29, 31-34, 36, without appreciable
45, 48
scattering
‘881: 29, 31-34, 37,
41, 64, 67

Court’s
construction
material that allows
the laser beam to
pass through

Here, Solta argues that claims do not limit the type of light to which the material is
transparent. D. 58 at 18–19. Lumenis argues that the term is indefinite, as transparent is a term of
degree with no objective standard. D. 60 at 25; D. 78 at 3.
As a preliminary matter, transparent is not indefinite. Confusion over the term occurs when
multiple light sources are used. See D. 61 ¶ 95 (explaining ambiguity comes from “whether the
material must be transparent to all wavelengths, to those wavelengths spanning from the ultraviolet
to the infrared regions of the optical spectrum, or those the wavelengths of only a portion of the
optical spectrum”). But here, the specification provides the wavelengths (or range of same) of
each embodiment. See, e.g., D. 1-3 at 20:4:33-35, 21:5:42, 21:6:38, 24 cl. 41.
As to the plain and ordinary meaning of “transparent,” the parties do not appear to dispute
that it means transmitting light without appreciable scattering or absorption. See D. 87 at 77:1317, 83:9-10; D. 61 ¶ 96, 101. In other words, the material allows light to pass through. See id.
Finally, the Court concludes that “transparent material” is limited to the laser beam. The
summary of the invention states that “[t]he present invention provides a laser treatment device
[that] contains a cooling element with high heat conduction properties, which is transparent to the

12

laser beam.” D. 1-3 at 19:2:3-6. The specification similarly and explicitly provides for material
transparent to the laser beam. See D. 1-3 at 22:7:36. Moreover, as the device’s operative light
source is a laser beam, the claims should not be read to broadly include other sources of light not
used in the invention. See On Demand Mach. Corp., 442 F.3d at 1340 (citing Phillips, 415 F.3d
at 1321).
Accordingly, the Court construes “transparent material” as “material that allows the laser
beam to pass through.”
F.

“Approximately 1.54 μm”

Term
“approximately 1.54
μm”

Solta’s Proposed
Construction

Lumenis’ Proposed
Construction

approximately 1.54 μm The term is indefinite

Court’s
construction
No further
construction
needed

‘594: 41, 45
‘881: 46, 54
Here, Lumenis contends that “approximately 1.54 μm” is indefinite because
“approximately” is a “subjective term of degree” and the patents do not provide an objective
standard for what would be considered “approximately” 1.54 and what would not. D. 60 at 28.
Solta argues that a POSITA would have understood that such wavelength is “typically found in
Er:Glass lasers and is one of many wavelengths primarily absorbed in water.” D. 58 at 19 (citing
D. 1-3 at 20:5:1-3).
As discussed above, approximately, like other “descriptive terms [are] commonly used in
patent claims to avoid a strict numerical boundary to the specified parameter.” Anchor Wall Sys.,
Inc. v. Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1310–11 (Fed. Cir. 2003) (citations and
quotations omitted); see Unigene Lab’ys, Inc. v. Apotex Inc., No. 06-cv-5571 (RPP), 2008 WL

13

3992294, at *8 (S.D.N.Y. Aug. 28, 2008) (noting ordinary meaning of approximate and not
construing the term further). Here, as Lumenis’ expert explains, “to a POSITA . . . a wavelength
of 1.54 μm indicates an Er:Glass laser.” D. 61 ¶ 106; see D. 59 ¶ 96 (explaining that a “wavelength
of 1.54 μm is a characteristic Er:Glass wavelength”). The claims and specification provide for
such laser in the range of 1.54 μm, where “[l]ight in this range has minimal scattering losses in the
skin tissue and is readily absorbed in the skin fluids.” D. 59 ¶ 98 (quoting D. 1-3 at 20:5:1-3).
Thus, “approximately” is functionally defined by permissible scattering and absorption, which
“will not result in radical changes in therapeutic effect.” Id.
Accordingly, the term “approximately” is not indefinite, and the Court need not construe
it further.
VI.

Conclusion
For the foregoing reasons, the disputed claim terms are construed as follows:
1. “changing the form or function of a laser beam to an irradiation pattern”
2. “a part of the generated laser light”
3. No further construction needed
4. “reducing temperature with cryogenic fluid”
5. “material that allows the laser beam to pass through”
6. No further construction needed.

So Ordered.
/s/ Denise J. Casper
United States District Judge

14