Lumos Technology Co., Ltd. v. Jedmed Instrument Company
Filing
77
OPINION AND ORDER: Plaintiff Lumos Technology Co., LTD. (Lumos) alleges that the defendant JEDMED Instrument Company (JEDMED) infringed United States Patent No. 8,746,906 (the 906 Patent), entitled Light Source Module for Macro Photography. The part ies have presented their proposed constructions of the 906 Patents claims pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996). The following sets forth the Courts construction of disputed terms....(See Opinion And Order.) (Signed by Judge Denise L. Cote on 8/4/2017) (gr)
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
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:
LUMOS TECHNOLOGY CO., LTD.,
:
:
Plaintiff,
:
:
-v:
:
JEDMED INSTRUMENT COMPANY,
:
:
Defendant.
:
:
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16cv6939(DLC)
OPINION AND ORDER
APPEARANCES
For Lumos Technology Co., LTD.:
Grace L. Pan
Charles A. Weiss
Nicholas P. Chiara
Leonie W. Huang
Holland & Knight LLP
31 West 52nd Street
New York, New York 10019
For JEDMED Instrument Company:
Darren M. Geliebter
Eric J. Huang
Lombard & Geliebter LLP
305 Broadway, 7th Floor
New York, New York 10007
DENISE COTE, District Judge:
Plaintiff Lumos Technology Co., LTD. (“Lumos”) alleges that
the defendant JEDMED Instrument Company (“JEDMED”) infringed
United States Patent No. 8,746,906 (“the ‘906 Patent”), entitled
“Light Source Module for Macro Photography.”
The parties have
presented their proposed constructions of the ‘906 Patent’s
claims pursuant to Markman v. Westview Instruments, Inc., 517
U.S. 370 (1996).
The following sets forth the Court’s
construction of disputed terms.
BACKGROUND
The parties dispute the construction of essentially four
terms in the preamble of Claim 1 and four terms that appear in
the body of Claim 1 and Claim 5.
Lumos asserts that it is
unnecessary to construe the four terms in the preamble because
the preamble is non-limiting.
The relevant claims, with the
disputed terms highlighted, are set forth below.
The preamble of Claim 1 of the ‘906 Patent describes:
A light source module for macro photography, the light
source being configured for connecting to a lens of an
image capturing apparatus and bearing against a plane
surface to capture the image of the plane surface, the
light source module comprising:1
The remainder of Claim 1 describes:
a barrel having a rear portion for connecting to
the lens and a front portion opposite to the rear
portion;
a contact unit arranged on an end face of the
front portion and having a plurality of contact
pads arranged at intervals on the end face for
contacting with the plane surface; and
a lighting unit arranged on the inner surface of
the barrel.
The parties dispute whether the word “comprising” is part of
the preamble. This dispute has no impact on the claim
construction analysis that follows.
1
2
Claim 5 of the ‘906 Patent describes (emphasis supplied):
“The light source module as claim 1, wherein the contact pads
are made of elastic material.”
DISCUSSION
“It is a bedrock principle of patent law that the claims of
a patent define the invention to which the patentee is entitled
the right to exclude.”
Aventis Pharm. Inc. v. Amino Chems.
Ltd., 715 F.3d 1363, 1373 (Fed. Cir. 2013) (citation omitted).
In construing a patent claim, which is a question of law, courts
“should look first to the intrinsic evidence of record, i.e.,
the patent itself, including the claims, the specification and,
if in evidence, the prosecution history.”
Am. Calcar, Inc. v.
Am. Honda Motor Co., Inc., 651 F.3d 1318, 1336 (Fed. Cir. 2011)
(citation omitted).
Courts, however, should not read meaning
into claim language that is clear on its face.
See Tate Access
Floors, Inc. v. Interface Architectural Res., Inc., 279 F.3d
1357, 1371 (Fed. Cir. 2002).
Claim construction is not a
backdoor process by which the scope of a claim is narrowed or
expanded.
See Terlep v. Brinkmann Corp., 418 F.3d 1379, 1382
(Fed. Cir. 2005).
Claim terms are generally given their “ordinary and
customary meaning” as understood by a person of “ordinary skill
in the art at the time of invention.”
Aylus Networks, Inc. v.
Apple Inc., 856 F.3d 1353, 1358 (Fed. Cir. 2017) (citation
3
omitted).
The ordinary meaning of a claim term is its meaning
“to the ordinary artisan after reading the entire patent.”
Id.
(citation omitted).
If a claim term does not have an ordinary meaning, and its
meaning is not clear from a plain reading of the claim, courts
turn in particular to the specification to assist in claim
construction.
Power Integrations, Inc. v. Fairchild
Semiconductor Int’l, Inc., 711 F.3d 1348, 1361 (Fed. Cir. 2013).
Through the specification, a patentee “can act as his own
lexicographer to specifically define terms of a claim contrary
to their ordinary meaning.”
Abraxis Bioscience, Inc. v. Mayne
Pharma (USA) Inc., 467 F.3d 1370, 1376 (Fed. Cir. 2006)
(citation omitted).
“Usually, [the specification] is
dispositive; it is the single best guide to the meaning of a
disputed term.”
omitted).
Power Integrations, 711 F.3d at 1361 (citation
While courts use the specification “to interpret the
meaning of a claim,” they must “avoid the danger of reading
limitations from the specification into the claim” itself.
Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005).
Although the specification often describes specific embodiments
of the invention, the Federal Circuit has repeatedly warned
against confining the claims to those embodiments.
Id.
A court may consider extrinsic evidence, such as
dictionaries and treatises, but such extrinsic evidence is
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“generally of less significance than the intrinsic record.”
Takeda Pharma. Co. Ltd. v. Zydus Pharma. USA, Inc., 743 F.3d
1359, 1363 (Fed. Cir. 2014).
If the meaning of the claim is
clear from the intrinsic evidence alone, resort to extrinsic
evidence is improper.
Boss Control, Inc. v. Bombardier Inc.,
410 F.3d 1372, 1377 (Fed. Cir. 2005).
Courts consider whether to treat a preamble as a claim
limitation “on the facts of each case in light of the claim as a
whole and the invention described in the patent.”
TomTom, Inc.
v. Adolph, 790 F.3d 1315, 1323 (Fed. Cir. 2015) (citation
omitted).
As a general rule, preamble language does not limit
the scope of a patent’s claims.
Aspex Eyewear, Inc. v. Marchon
Eyewear, Inc., 672 F.3d 1335, 1347 (Fed. Cir. 2012).
It is not
limiting where a patentee “defines a structurally complete
invention in the claim body and uses the preamble only to state
a purpose or intended use for the invention.”
at 1323 (citation omitted).
TomTom, 790 F.3d
“The inventor of a machine is
entitled to the benefit of all the uses to which it can be put,
no matter whether he had conceived the idea of the use or not.”
Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d
801, 809 (Fed. Cir. 2002) (citation omitted).
Put differently,
preamble language is not limiting when the claim body describes
a structurally complete invention “such that deletion of the
preamble phrase does not affect the structure or steps of the
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claimed invention.”
omitted).
Tom Tom, 790 F.3d at 1324 (citation
If the claim body describes a complete invention,
“the preamble is of no significance to claim construction
because it cannot be said to constitute or explain a claim
limitation.”
Pitney Bowes, Inc. v. Hewlett-Packard Co., 182
F.3d 1298, 1305 (Fed. Cir. 1999).
If, however, a preamble “recites essential structure or
steps, or if it is necessary to give life, meaning, and vitality
to the claim,” then it may be limiting.
1323 (citation omitted).
TomTom, 790 F.3d at
For example, limitations in the body
of the claim that “rely upon and derive antecedent basis from
the preamble” may render the preamble a necessary component of
the claimed invention, and therefore, a limitation on the
claims.
Proveris Scientific Corp. v. Innovasystems, Inc., 739
F.3d 1367, 1372 (Fed. Cir. 2014) (citation omitted); see C.W.
Zumbiel Co. v. Kappos, 702 F.3d 1371, 1385 (Fed. Cir. 2012).
A
single claim limitation in the preamble, however, “does not
necessarily convert the entire preamble into a limitation”
requiring construction.
TomTom, 790 F.3d at 1323.
I. The Preamble is Limiting
Lumos contends that construction of terms in the preamble
is unnecessary.
JEDMED contends that the body of Claim 1
requires construction by recourse to the preamble.
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Both parties
have provided their proposed constructions if the Court agrees
with JEDMED that resort to the preamble is necessary.
The preamble to Claim 1 is necessary to give meaning to the
‘906 Patent’s claims in three respects.
JEDMED’s contention,
however, that the term “light source module” (which appears in
the preamble of Claim 1 and in the body of every claim other
than Claim 1) and “the light source” require construction is
rejected.2
First, the body of Claim 1 describes a barrel for
connecting to “the lens.”
(Emphasis supplied.)
The use of the
article “the” is a specific reference to a particular lens
identified in the preamble.
The preamble explains that this is
a reference to a camera lens, or in the words of the preamble, a
“lens of an image capturing apparatus.”
The Court accepts
Lumos’s proposed construction of “a lens of an imaging capturing
apparatus.”3
Second, the body of Claim 1 describes the front of the
barrel as having contact pads “for contacting with the plane
surface.”
To understand the import of the word “for,” it is
necessary to refer to the preamble.
The preamble explains that
JEDMED’s proposed construction is “a component that provides
light for macro-photography, that is independent and separable
from the lens to which the component connects.”
2
JEDMED proposed “an assembly of one or more optical lenses
attached to a camera body for capturing images of objects.”
3
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the contact or action at issue is the act of the barrel of the
light source “bearing against” the plane surface to assist in
the photography.
In the words of the preamble, the light source
is configured for “bearing against a plane surface to capture
the image of the plane surface.”
The parties present similar
constructions of this preamble language.
Both generally agree
that “bearing against” should be understood as “pressing
against” or “being pressed against” a surface.
The construction
“pressing against” is adopted.
The parties disagree regarding additional construction of
the preamble phrase “bearing against a plane surface to capture
the image of the plane surface.”
No further construction of the
term is necessary, and therefore it is unnecessary to resolve
the following disputed construction issue.
Lumos contends that
plane surface should be construed as a “substantially flat or
level surface” while JEDMED adds that a plane surface is a “flat
or level surface.”
The term “plane surface” in the body of
Claim 1 requires no construction.
Therefore, the term “bearing
against a plane surface to capture the image of the plane
surface” is construed as “pressing against a plane surface to
capture the image of the plane surface.”
Finally, the body of Claim 1 describes a light source
module as having a barrel with a rear portion “for connecting
to” the lens.
In an explanation that is necessary to give life
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to this claim language, the preamble explains that the rear of
the barrel is to be “configured for connecting to a lens of an
image capturing apparatus.”
The preamble’s phrase “configured
for” is plain on its face and does not require construction.4
It
is unnecessary to further construe the preamble phrase
“configured for connecting to a lens of an image capturing
apparatus,” and JEDMED’s proposal of designed for “joining or
fastening, directly or by means of an adapter,” to a lens of an
image capturing apparatus is rejected.
II.
Disputed Terms in the Body of the Claims
The parties dispute the construction of three other terms
in the body of Claims 1 and 5.
As for a fourth term, Lumos
contends no construction is necessary and JEDMED argues the term
is indefinite.
These disputes are resolved as follows.
a. “a contact unit arranged on an end face of the front
portion”
Lumos argues that the Claim 1 term “a contact unit arranged
on an end face of the front portion” should be construed as “a
structure located on the front surface of the front portion of
the barrel capable of contacting a substantially flat or level
surface.”
JEDMED contends that the term should mean “a device
Lumos argues that “configured for” should be construed as
“capable of being.” JEDMED, by contrast, argues that
“configured for” means “designed for.”
4
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located directly on the front surface of the front portion of
the barrel with the specific function of separating the barrel
from the plane surface.”
“A contact unit arranged on an end
face of the front portion” is construed to mean “a structure
located on the front surface of the front portion of the barrel
with the function of contacting a plane surface.”
b. “a plurality of contact pads”
Lumos contends that the Claim 1 term “a plurality of
contact pads” should be construed to mean “more than one
component that is capable of touching the substantially flat or
level surface.”
JEDMED argues that it must be read as “more
than one component that touches the plane surface.”
“A
plurality of contact pads” is construed as “more than one
component for touching the plane surface.”
c. “arranged at intervals on the end face for contacting
with the plane surface”
Lumos contends that the Claim 1 term “arranged at intervals
on the end face for contacting with the plane surface” should be
construed as “the [contact pads] are provided on the end of the
barrel and have spaces between them.”
JEDMED, by contrast,
argues that the phrase should mean “located directly on the
front surface of the barrel such that there is a space or gap
between any two adjacent contact pads when in contact with the
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plane surface for minimizing the contact area with the plane
surface.”
The phrase “arranged at intervals on the end face for
contacting with the plane surface” is construed as “located on
the front surface of the end of the barrel and arranged with
spaces between them for the purpose of minimizing contact
between the barrel and the plane surface.”
d. “elastic material”
Finally, the parties dispute whether the term “elastic
material” in Claim 5 is indefinite, thereby effectively
invalidating Claim 5.
Claim 5 provides: “The light source
module as claim 1, wherein the contact pads are made of elastic
material.”
A patent is invalid for indefiniteness “if its claims, read
in light of the specification delineating the patent, 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., 134 S. Ct. 2120,
2124 (2014).
Under Nautilus, the key question is whether the
claims -- as opposed to particular claim terms -- inform a
skilled reader with reasonable certainty about the scope of the
invention.
Cox Commc’ns, Inc. v. Sprint Commc’n Co. LP, 838
F.3d 1224, 1231 (Fed. Cir. 2016) (citation omitted).
Nevertheless, an indefiniteness analysis is “inextricably
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intertwined with claim construction” and training indefiniteness
on individual claim terms is a helpful tool.
(citation omitted).
Id. at 1232
“Indeed, if a person of ordinary skill in
the art cannot discern the scope of a claim with reasonable
certainty, it may be because one or several claim terms cannot
be reliably construed.”
Id.
Relative terms and terms of degree are not inherently
indefinite.
Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364,
1370 (Fed. Cir. 2014).
A patentee need not define an invention
with “mathematical precision.”
Id. (citation omitted).
Relative terms and terms of degree may prove indefinite,
however, if their baseline is unclear to a skilled reader.
Liberty Ammunition, Inc. v. United States, 835 F.3d 1388, 1395
(Fed. Cir. 2016).
They must provide “objective boundaries for
those of skill in the art.”
Id. at 1396 (citation omitted).
Whether such terms are indefinite turns, in part, on whether
intrinsic evidence provides guidance concerning the scope of the
claim.
Sonix Tech. Co. v. Publ’ns Int’l, Ltd., 844 F.3d 1370,
1377 (Fed. Cir. 2017).
Lumos contends that no construction is necessary for the
phrase “elastic material” and that it is sufficiently definite
to provide guidance to those skilled in the art.
It is correct.
JEDMED’s argument that the phrase is indefinite is rejected.
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CONCLUSION
The disputed terms, as set forth in the parties’ claim
construction submissions of April 7, April 25, and May 11, 2017,
are construed as set forth above.
Dated:
New York, New York
August 4, 2017
________________________________
DENISE COTE
United States District Judge
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