Collins et al v. Nissan North America, Inc. et al
Filing
73
MEMORANDUM OPINION and ORDER - Final Markman Opinion. Signed by Judge Rodney Gilstrap on 2/5/13. (ehs, )
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
CARL B. COLLINS and
FARZIN DAVANLOO,
Plaintiffs,
v.
NISSAN NORTH AMERICA, INC. and
NISSAN MOTOR CO., LTD.,
Defendants.
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CASE NO. 2:11-CV-428-JRG
MEMORANDUM OPINION AND ORDER
Before the Court is Plaintiffs Carl B. Collins and Farzin Davanloo’s Opening Markman
Brief Pursuant to P.R. 4-5(a) (Dkt. No. 58). Also before the Court are Defendants Nissan North
America, Inc. and Nissan Motor Co., Ltd.’s response (Dkt. No. 63) and Plaintiffs’ reply (Dkt.
No. 64). The Court held a claim construction hearing on January 30, 2013.
Table of Contents
I. BACKGROUND ....................................................................................................................... 2
II. LEGAL PRINCIPLES ........................................................................................................... 5
III. CONSTRUCTION OF AGREED TERMS ........................................................................ 9
IV. CONSTRUCTION OF DISPUTED TERMS ................................................................... 10
A. “nanophase diamond film” (‘797 Patent, Claims 1, 2 & 4; ‘650 Patent, Claims 1, 2
& 4) ..................................................................................................................................... 11
B. “nodules” (‘797 Patent, Claims 1 & 2; ‘650 Patent, Claims 1 & 4) ................................... 18
C. “predominantly in three-dimensional sp3 bonds” (‘797 Patent, Claim 1; ‘650 Patent,
Claims 1 & 4) ...................................................................................................................... 23
D. “an optical quality capable of providing a visual appearance of Newton’s rings of
interference” (‘797 Patent, Claim 4; ‘650 Patent, Claim 4)................................................ 25
V. CONCLUSION...................................................................................................................... 30
1
I. BACKGROUND
Plaintiffs assert United States Patents No. 5,411,797 (“the ‘797 Patent”) and 5,478,650
(“the ‘650 Patent”) (collectively, “the patents-in-suit”), both titled “Nanophase Diamond Films.”
The ‘650 Patent is a divisional of the ‘797 Patent, so the patents-in-suit share a common
specification. The patents-in-suit were construed by Judge T. John Ward of this Court in Carl B.
Collins, et al. v. The Gillette Company, No. 2:04-CV-38, Dkt. No. 79 (E.D. Tex. June 22, 2005)
(“Gillette”), and again in Carl B. Collins, et al. v. Western Digital Technologies, Inc., et al., No.
2:09-CV-219, Dkt. No. 383 (E.D. Tex. Sept. 22, 2011) (“Western Digital”).1
Diamond is composed of carbon atoms. Another common form of carbon is graphite.
The differences between diamond and graphite are caused by differences in bonding between the
carbon atoms that make up each material. Graphite is composed primarily or entirely of “sp2”
bonds, which the parties characterize as two-dimensional bonds. Natural diamond is composed
primarily or entirely of “sp3” bonds, which the parties characterize as three-dimensional bonds.
These three-dimensional sp3 bonds are associated with diamond’s special properties, in particular
hardness, wear resistance, high thermal conductivity, and high electrical resistivity.
The patents-in-suit disclose “diamond-like carbon” (“DLC”) coatings, which are formed
by depositing carbon atoms onto a substrate. DLC coatings are useful for improving the wear
resistance of mechanical structures, for example, razor blades (such as the accused products in
Gillette), hard disk drive components (such as the accused products in Western Digital), and
automotive engine components (such as the accused products in the present case).
1
Gillette and Western Digital are attached to Plaintiffs’ opening brief in the above-captioned
case as Exs. C-1 and C-2, respectively.
2
To form a DLC film, carbon ions are deposited onto a substrate in a manner that
predominantly forms sp3 bonds. Such a carbon coating can have diamond-like properties, such
as hardness, wear resistance, thermal conductivity, electrical resistivity, and optical transparency.
The “laser ablation” technique disclosed in the patents-in-suit produces a film with so-called
“nodules” of sp3-bonded carbon, which purportedly contribute to desirable properties such as
high optical quality, low coefficient of friction, and low internal stress. (See, e.g., ‘797 Patent at
Abstract.) The patents-in-suit also explain techniques for preventing macroscopic graphite
particles from being deposited onto the substrate. (See id. at 5:66-6:12 & 10:6-34.) The patentsin-suit state that the prior art techniques of chemical vapor deposition and sputter deposition
produce diamond-like films of inferior quality and that the prior art technique of ion beam
deposition produces films at too low of a rate to be commercially useful. (See id. at 2:34-3:17.)
The patents-in-suit explain that the formation of predominantly sp3-bonded “nodules”
provides desirable diamond-like properties without the brittleness that would otherwise be
associated with a highly sp3-bonded carbon film. (See id. at 15:15-29.) Between the nodules lie
voids, sp2-bonded carbon (graphite), or both. (See id. at 4:42-43 & 7:11-22.) The arrangement
of nodules is analogous to a cobblestone street (see Dkt. No. 63, Ex. C-12, 12/6/2011 Collins
dep., at 177:18-178:25) and, according to the written description, is shown in Figure 6 of the
patents-in-suit. (‘797 Patent at 12:41-43.) The Summary of the Invention further discloses that
“[t]ypically, these nodules range in size from 100 to 1000 angstroms [(10 to 100 nanometers)] in
diameter . . . .” (Id. at 4:27-31.) Figure 6 indicates its scale by labeling a length of “0.2 μm,”
which is 0.2 micrometers and which is equal to 200 nanometers. Figure 6 is reproduced here:
3
4
The Abstracts of the patents-in-suit are the same and state:
Films of nanometer-scale nodules of diamond-bonded carbon structures are
disclosed. Such films may be used, for example, to coat objects to improve their
resistance to wear. Moreover, because the nanophase diamond films of the
present invention are of optical quality, they may be used to coat optical lenses
and the like. The nanophase diamond films of the present invention have
diamond-like properties, indicating a preponderance of sp3 bonds within the
nodules and a substantial absence of hydrogen and graphite within the nodules. If
desired, the nanophase diamond films disclosed herein may be created to have a
hardness exceeding that of natural diamond, depending on the quantity of graphite
left in the voids between the nodules. The nanophase diamond films of the
present invention are also characterized by a low coefficient of friction, by low
average internal stress, and by an optical quality capable of providing a visual
appearance of Newton’s rings of interference.
The parties dispute four terms contained in Claims 1, 2, and 4 of the ‘797 Patent and
Claims 1, 2, and 4 of the ‘650 Patent. Claims 1 and 4 of the ‘797 Patent are representative and
recite (disputed terms italicized):
1. A nanophase diamond film, comprising nodules of carbon bonded
predominantly in three dimensional sp3 bonds, said film comprising less than
about 20% hydrogen, having an imaginary index of refraction less than 0.5 for a
light wavelength of about 632.8 nm, and said nodules having a diameter of less
than about 500 angstroms.
***
4. The nanophase diamond film of claim 1, wherein said film has an optical
quality capable of providing a visual appearance of Newtons’ [sic] rings of
interference.
II. LEGAL PRINCIPLES
It is understood that “[a] claim in a patent provides the metes and bounds of the right
which the patent confers on the patentee to exclude others from making, using or selling the
protected invention.” Burke, Inc. v. Bruno Indep. Living Aids, Inc., 183 F.3d 1334, 1340 (Fed.
Cir. 1999). Claim construction is clearly an issue of law for the court to decide. Markman v.
5
Westview Instruments, Inc., 52 F.3d 967, 970-71 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370
(1996).
To ascertain the meaning of claims, courts look to three primary sources: the claims, the
specification, and the prosecution history. Markman, 52 F.3d at 979. The specification must
contain a written description of the invention that enables one of ordinary skill in the art to make
and use the invention. Id. A patent’s claims must be read in view of the specification, of which
they are a part. Id. For claim construction purposes, the description may act as a sort of
dictionary, which explains the invention and may define terms used in the claims. Id. “One
purpose for examining the specification is to determine if the patentee has limited the scope of
the claims.” Watts v. XL Sys., Inc., 232 F.3d 877, 882 (Fed. Cir. 2000).
Nonetheless, it is the function of the claims, not the specification, to set forth the limits of
the patentee’s invention. Otherwise, there would be no need for claims. SRI Int’l v. Matsushita
Elec. Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). The patentee is free to be his own
lexicographer, but any special definition given to a word must be clearly set forth in the
specification. Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1388 (Fed. Cir. 1992).
Although the specification may indicate that certain embodiments are preferred, particular
embodiments appearing in the specification will not be read into the claims when the claim
language is broader than the embodiments. Electro Med. Sys., S.A. v. Cooper Life Sciences, Inc.,
34 F.3d 1048, 1054 (Fed. Cir. 1994).
This Court’s claim construction analysis is substantially guided by the Federal Circuit’s
decision in Phillips v. AWH Corporation, 415 F.3d 1303 (Fed. Cir. 2005) (en banc). In Phillips,
the court set forth several guideposts that courts should follow when construing claims. In
6
particular, the court reiterated that “the claims of a patent define the invention to which the
patentee is entitled the right to exclude.” 415 F.3d at 1312 (emphasis added) (quoting
Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir.
2004)). To that end, the words used in a claim are generally given their ordinary and customary
meaning. Id. The ordinary and customary meaning of a claim term “is the meaning that the term
would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as
of the effective filing date of the patent application.” Id. at 1313. This principle of patent law
flows naturally from the recognition that inventors are usually persons who are skilled in the
field of the invention and that patents are addressed to, and intended to be read by, others skilled
in the particular art. Id.
Despite the importance of claim terms, Phillips made clear that “the person of ordinary
skill in the art is deemed to read the claim term not only in the context of the particular claim in
which the disputed term appears, but in the context of the entire patent, including the
specification.” Id. Although the claims themselves may provide guidance as to the meaning of
particular terms, those terms are part of “a fully integrated written instrument.” Id. at 1315
(quoting Markman, 52 F.3d at 978). Thus, the Phillips court emphasized the specification as
being the primary basis for construing the claims. Id. at 1314-17. As the Supreme Court stated
long ago, “in case of doubt or ambiguity it is proper in all cases to refer back to the descriptive
portions of the specification to aid in solving the doubt or in ascertaining the true intent and
meaning of the language employed in the claims.” Bates v. Coe, 98 U.S. 31, 38 (1878). In
addressing the role of the specification, the Phillips court quoted with approval its earlier
7
observations from Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed. Cir.
1998):
Ultimately, the interpretation to be given a term can only be determined and
confirmed with a full understanding of what the inventors actually invented and
intended to envelop with the claim. The 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.
Phillips, 415 F.3d at 1316. Consequently, Phillips emphasized the important role the
specification plays in the claim construction process.
The prosecution history also continues to play an important role in claim interpretation.
Like the specification, the prosecution history helps to demonstrate how the inventor and the
Patent and Trademark Office (“PTO”) understood the patent. Id. at 1317. Because the file
history, however, “represents an ongoing negotiation between the PTO and the applicant,” it may
lack the clarity of the specification and thus be less useful in claim construction proceedings. Id.
Nevertheless, the prosecution history is intrinsic evidence that is relevant to the determination of
how the inventor understood the invention and whether the inventor limited the invention during
prosecution by narrowing the scope of the claims. Id.; see Microsoft Corp. v. Multi-Tech Sys.,
Inc., 357 F.3d 1340, 1350 (Fed. Cir. 2004) (noting that “a patentee’s statements during
prosecution, whether relied on by the examiner or not, are relevant to claim interpretation”).
Phillips rejected any claim construction approach that sacrificed the intrinsic record in
favor of extrinsic evidence, such as dictionary definitions or expert testimony. The en banc court
condemned the suggestion made by Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193
(Fed. Cir. 2002), that a court should discern the ordinary meaning of the claim terms (through
dictionaries or otherwise) before resorting to the specification for certain limited purposes.
8
Phillips, 415 F.3d at 1319-24. According to Phillips, reliance on dictionary definitions at the
expense of the specification had the effect of “focus[ing] the inquiry on the abstract meaning of
words rather than on the meaning of claim terms within the context of the patent.” Id. at 1321.
Phillips emphasized that the patent system is based on the proposition that the claims cover only
the invented subject matter. Id.
Phillips does not preclude all uses of dictionaries in claim construction proceedings.
Instead, the court assigned dictionaries a role subordinate to the intrinsic record. In doing so, the
court emphasized that claim construction issues are not resolved by any magic formula. The
court did not impose any particular sequence of steps for a court to follow when it considers
disputed claim language. Id. at 1323-25. Rather, Phillips held that a court must attach the
appropriate weight to the intrinsic sources offered in support of a proposed claim construction,
bearing in mind the general rule that the claims measure the scope of the patent grant.
In general, prior claim construction proceedings involving the same patents-in-suit are
“entitled to reasoned deference under the broad principals of stare decisis and the goals
articulated by the Supreme Court in Markman, even though stare decisis may not be applicable
per se.” Maurice Mitchell Innovations, LP v. Intel Corp., No. 2:04-CV-450, 2006 WL 1751779,
at *4 (E.D. Tex. June 21, 2006).
III. CONSTRUCTION OF AGREED TERMS
The parties have agreed upon the following constructions:
9
Term
20% hydrogen
(‘797 Patent and
‘650 Patent)
Agreed Construction
This term should be construed as it was agreed upon between the
parties in Gillette and Western Digital:
“20 atomic % hydrogen”
“said film is chemically
bonded with a substrate”
(’650 Patent)
This term should be construed as it was in Gillette and Western
Digital:
“A chemical bond (i.e., the attractive force that holds together
atoms in molecules and crystalline salts) is formed between at least
a portion of the film and at least a portion of an adjacent,
underlying material”
“bonded to a substrate
with an alloyed layer”
(’650 patent)
This term should be construed as it was in Gillette and Western
Digital:
“Bonded to an adjacent, underlying material which includes a layer
that is a mixture of a metal and one or more different metals or nonmetallic elements”
(Dkt. No. 58, at 7.)
IV. CONSTRUCTION OF DISPUTED TERMS
Defendants submit that because diamond-like carbon (“DLC”) films were well-known at
the time Plaintiffs prosecuted their patent applications, Plaintiffs only patented a particular
method for making DLC films. (Dkt. No. 63, at 1.) Defendants argue that Plaintiffs are now
attempting to read the claims so broadly as to encompass virtually all DLC films. (Id.)
Defendants emphasize the rejection and ultimate abandonment of United States Patent
Application No. 07/602,155 (“the ‘155 Application”). (Dkt. No. 63, at 5.) United States Patent
Application No. 08/042,104 (“the ‘104 Application”), which led to the ‘797 Patent, was a
continuation-in-part of the ‘155 Application. The ‘650 Patent resulted from a divisional of the
‘104 Application. Defendants urge that the addition of Figure 6 and the terms “nanophase
10
diamond” and “nodules” in the ‘104 Application, together with assignment of the ‘104
Application to a different patent examiner, were critical factors in the patentees obtaining the
patents-in-suit despite the PTO’s rejection of the ‘155 Application. (Id., at 6.)
Even if the Court were in a position to judge the merit of PTO procedures or the caliber
of particular patent examiners, the claim construction principles set forth by Phillips include no
rubric for scrutinizing the PTO in such a fashion. See 415 F.3d 1303. Defendants present no
authority that the assignment of different applications to different examiners is a factor for the
Court to consider during claim construction. The Court does not consider it.
A. “nanophase diamond film” (‘797 Patent, Claims 1, 2 & 4; ‘650 Patent, Claims 1, 2 & 4)
Plaintiffs’ Proposal
Defs.’ Proposal
Prior Construction
“a film having
nanometer-scale
nodules of diamondbonded carbon
displaying
characteristics
similar to that of
diamond”
“a film of an
amorphous or ultra
fine-grained
diamond-like
material that is
substantially free of
graphite and
hydrogen, in the
form of nanometersized, tightly
packed nodules”
“a film having nanometer-scale nodules of
diamond-bonded carbon displaying characteristics
similar to that of diamond” (Gillette at 3-4 (Court
found a lexicography in the specification))
(Gillette)
“a film having nanometer-scale [packed] nodules
of diamond-bonded carbon displaying
characteristics similar to that of diamond”
(Western Digital at 11-13 (Court again found a
lexicography, but the Court’s Order set forth the
construction in three places, one with the word
“packed” and the other two without “packed”)
(Dkt. No. 65, P.R. 4-5(d) Joint Claim Construction Chart.)
(1) Preamble as a Limitation
At the January 30, 2013 hearing, Plaintiffs argued that the term “nanophase diamond
film,” which appears in the preamble, is not a limitation but instead is merely descriptive of the
limitations that appear in the body of the claim. Plaintiffs cited Konami Corp. v. Roxor Games,
Inc., 445 F. Supp. 2d 725, 731 (E.D. Tex. 2006), which held that the term “dance apparatus” in
11
the preamble was not a limitation because “[t]he body of the claims set forth a complete
invention.” Id. (finding that the “preamble merely gives a descriptive name to the set of
limitations in the body of the claim that completely set forth the invention”) (quoting IMS Tech.,
Inc. v. Haas Automation, Inc., 206 F.3d 1422 (Fed. Cir. 2000)). Yet, “[w]hen limitations in the
body of the claim rely upon and derive antecedent basis from the preamble, then the preamble
may act as a necessary component of the claimed invention.” Eaton Corp. v. Rockwell Int’l
Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003) (finding that “[w]hen the body of the claim refers to
‘said vehicle master clutch (8),’ and ‘said drive train,’ it is referring back to the particular clutch
and the particular drive train previously described in the preamble”). Here like in Eaton, “said
film” in the body of the claims refers back to “nanophase diamond film” in the preamble. The
Court therefore expressly rejects Plaintiffs’ argument that the term “nanophase diamond film” is
not a limitation of the claims.
(2) Lexicography
At the January 30, 2013 hearing, Plaintiffs and Defendants agreed that “nanophase
diamond film” is a term coined by the inventor. The parties likewise agreed that the best way to
interpret an inventor-coined term is to look for a definition in the specification. The parties
further agreed that the specification contains a “lexicography,” that is, a definition. The parties
disagreed on what that lexicography is.
Defendants submit that as the patentees prosecuted the ‘104 Application (the
continuation-in-part application that led to the ‘797 Patent), their efforts to remedy the
shortcomings of the ‘155 Application included replacing the term “diamond-like carbon” with
12
their newly-coined term “nanophase diamond film.” (Dkt. No. 63, at 5-6.) Defendants argue
that this term is defined in the Background of the Invention of the patents-in-suit:
This invention relates to an amorphous or ultra fine-grained, diamond-like
material that is substantially free of graphite and hydrogen, and is deposited in a
film on a substrate in the form of nanometer-sized, tightly packed nodules of sp3bonded carbon, hereinafter referred to as “nanophase diamond.”
(‘797 Patent at 1:16-21.)
Plaintiffs reply that the rejection of claims containing the term “diamond-like carbon” in
a different patent application provides no basis upon which to limit the construction of the
“inventor-coined term” “nanophase diamond” used in a later application. (Dkt. No. 64, at 3.)
Plaintiffs also emphasize that their proposed construction includes “nanometer-scale nodules of
diamond bonded carbon,” which Plaintiffs argue distinguish their patented invention from other
types of DLC. (Id.)
An inventor is permitted to define the terms of his claims “[s]o long as the meaning of an
expression is made reasonably clear and its use is consistent within a patent disclosure.”
Intellicall, 952 F.2d at 1388 (quoting Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889
(Fed. Cir. 1984)).
Although the Background of the Invention uses the seemingly definitional phrase
“hereinafter referred to as,” the Summary of the Invention goes on to disclose that “an advantage
of the present invention is its ability to produce nanophase diamond layers having less than
about 20% hydrogen (and preferably less than about 2% hydrogen) uniformly deposited across a
substrate and substantially void of macroscopic particles.” (‘797 Patent at 6:46-51.) This
disclosure of “less than about 20% hydrogen” contrasts with the purportedly definitional
disclosure of “diamond-like material that is substantially free of . . . hydrogen.” (Id.; id. at
13
1:16-21.) Defendants have responded that “less than about 20% hydrogen” is “substantially
free” of hydrogen, but the Summary of the Invention goes on to disclose what Plaintiffs cited at
the January 30, 2013 hearing as their proposed lexicography:
The term “nanophase diamond” refers to any type of structure having nanometerscale nodules of diamond-bonded carbon displaying characteristics similar to that
of diamond.
(Id. at 7:19-22.)
On balance, this inconsistency between column 1 and column 7 of the ‘797 Patent
demonstrates that neither of the above-quoted passages relied upon by Defendants and Plaintiffs,
respectively, amounts to a “reasonably clear,” “consistent” lexicography. Intellicall, 952 F.2d at
1388. Both sides’ proposals of a lexicography are therefore hereby expressly rejected.
(3) “substantially free of graphite”
Defendants rely upon disclosures that in the preferred embodiment, a film that is free of
graphite is desirable and can be achieved using various techniques. (See Dkt. No. 63 at 8-9.)
The patents-in-suit disclose, however, that a nanophase diamond film can contain graphite. (See
‘797 Patent at 4:42-43 (“Between the nodules is found an amorphous mixture of carbons and
void.”).) Defendants’ attempt to import a graphite-free limitation from a disclosed embodiment
is hereby expressly rejected.
(4) “substantially free of . . . hydrogen”
Defendants submit:
Plaintiffs contend that [Defendants’] proposed construction, including
“substantially free of . . . hydrogen” is inconsistent and confusing when
considered with the limitation “less than about 20% hydrogen” in the body of
claim 1. (Pls. Br. at 15). [Defendants’] proposed construction is neither
inconsistent nor confusing. Instead, it establishes the context for understanding
the specific limitations recited in claim 1. [Defendants’] proposed construction
14
sets forth that a claimed “nanophase diamond film” must be “substantially free of
. . . hydrogen.” The body of claim 1 then provides a specific amount – “less than
about 20% hydrogen” – within the general framework. As [Defendants’]
proposed construction gives the proper context for understanding the rest of the
claim language, it is helpful for understanding the remainder of the claim
language.
(Dkt. No. 63 at 9.)
On balance, despite Defendants’ argument that their proposal gives “proper context” for
the “less than about 20% hydrogen” limitation, a better reading is that Defendants’ interpretation
would render that limitation superfluous. Because the law disfavors a claim construction that
renders other claim language superfluous, Defendants’ proposed “substantially free of . . .
hydrogen” limitation is hereby expressly rejected. See, e.g., Bicon, Inc. v. Straumann Co., 441
F.3d 945, 950-51 (Fed. Cir. 2006) (“Claims are interpreted with an eye toward giving effect to all
terms in the claim.”) (citations omitted).
(5) “nanometer-sized, tightly packed nodules”
Defendants rely upon the following disclosures in the Summary of the Invention:
The basic unit of construction of the nanophase diamond of the present invention
is the sp3-bonded nodule. Typically, these nodules range in size from 100 to 1000
angstroms [(10 to 100 nanometers)] in diameter and contribute the properties of
diamond found in the finished films.
***
Nanophase diamond is perhaps a limiting form of i-C.2 Both materials are
comprised of diamond nodules, but only in nanophase diamond have the nodules
been reported to be densely packed throughout the volume of the film.
(’797 Patent at 4:27-31 & 4:44-48.) The specification further discloses:
2
“i-C” is not defined in the patents-in-suit, but an article written by Plaintiffs refers to “i-C” as
amorphous carbon that is produced from ionized precursors. (See Dkt. No. 63, Ex. C-11, C.B.
Collins, et al., Microstructural analysis of amorphic diamond, i-C, and amorphous carbon, 72 J.
Appl. Phys. 239, 239 (July 1992).)
15
The visual appearance of the film at the micron level is of tightly-packed, yet
randomly ordered, diamond nodules.
***
The nanophase diamond films of the present invention are characterized by a very
low average internal stress, on the order of 1 GPa or less. This is due to the tight
packing of the nodules.
(Id. at 12:44-47 & 15:30-33.)
As noted by Plaintiffs’ reply brief, the above-quoted disclosure in the specification that
“[n]anophase diamond is perhaps a limiting form of i-C” (id. at 4:44-48 (emphasis added)) is
equivocal and does not justify introducing a limitation that the nodules be tightly packed. (Dkt.
No. 64, at 4.) Likewise, the above-quoted disclosure of “tight packing of the nodules” relates to
a preferred embodiment. (‘797 Patent at 15:30-33; see Dkt. No. 63, Ex. C-11, C.B. Collins, et
al., Microstructural analysis of amorphic diamond, i-C, and amorphous carbon, 72 J. Appl.
Phys. 239, 241 (July 1992) (noting that amorphic diamond3 has been prepared with “different
efficiencies of packing” “between the grains” and “a variety of arrangements and packings of the
nodules of the sp3-bonded carbon”). Finally, including the phrase “tightly packed” would render
the disputed term vague, ambiguous, and potentially subjective.
On balance, Defendants’ proposal to limit the claimed nanophase diamond film to the
“tightly packed nodules” of the preferred embodiment is hereby expressly rejected.
(6) Additional Issues
Defendants urge that having replaced the term “diamond-like carbon” in the abandoned
‘155 Application with the term “nanophase diamond film” in the ‘104 Application, the patentees
3
The term “amorphic carbon” is a shortened form of the term “amorphous ceramic carbon.”
(Dkt. No. 63, Ex. C-17, C.B. Collins, et al., Noncrystalline films with the chemistry, bonding,
and properties of diamond, 11 J. Vac. Sci. Tech. 1936, 1936 (Sept./Oct. 1993).)
16
should not be permitted to recapture all diamond-like films. (Dkt. No. 63, at 12-13 (citing Elekta
Instruments v. O.U.R. Scientific Int’l, Inc., 214 F.3d 1302, 1308 (Fed. Cir. 2000) (“Claims that
have been narrowed in order to obtain issuance over the prior art cannot later be interpreted to
cover that which was previously disclaimed during prosecution.”)).) Defendants also cite articles
published by the named inventors, as well as the inventors’ deposition testimony. (Dkt. No. 63,
at 11.)
Plaintiffs reply that “the term ‘nanophase diamond film’ is merely a descriptive
introductory phrase that should not be confused with the claimed invention,” and “[t]he body of
the claim specifies those additional features that must be present for a film to be a claimed
nanophase diamond film.” (Dkt. No. 64, at 5.)
On balance, the change in terminology from one patent application to another does not
warrant imposing limitations on the new term “nanophase diamond film.” Instead, the specific
requirements for the claimed nanophase diamond film are set forth in the bodies of the claims.
All that the term “nanophase diamond film,” by itself,” requires is that the film must contain
nanosized nodules of sp3-bonded carbon (which Gillette, Western Digital, and the Abstract of the
patents-in-suit have referred to as “diamond-bonded” carbon) and must have diamond-like
characteristics.
Finally, Defendants submit that “Plaintiffs’ definition does not specify which or how
many characteristics of the film would need to be similar to the characteristics of diamond in
order to be covered by the claim, or to what degree those characteristics need to be ‘similar.’”
(Dkt. No. 63, at 13.) The specification explains ranges of measurements pertaining to the
desirable characteristics. (See ‘797 Patent at 4:64-67 (imaginary index of refraction), 13:21-25
17
(Newton’s rings), 13:55-61 (real index of refraction), 15:15-29 (hardness), 15:30-40 (low
average internal stress and low coefficient of friction) & Figs. 3-4 (indices of refraction).)
Because “mathematical precision” is not required, Defendants’ challenge in this regard is hereby
expressly rejected. Cf. Exxon Res. & Eng’g Co. v. U.S., 265 F.3d 1371, 1381 (Fed. Cir. 2001)
(“[M]athematical precision is not required [for definiteness]—only a reasonable degree of
particularity and definiteness.”).
In sum, the Court hereby construes “nanophase diamond film” to mean “a film having
nanometer-scale nodules of diamond-bonded carbon displaying characteristics similar to
that of diamond.”
B. “nodules” (‘797 Patent, Claims 1 & 2; ‘650 Patent, Claims 1 & 4)
Plaintiffs’ Proposal
Defendants’ Proposal
“clusters of carbon atoms of
rounded or irregular shape”
“particles, clusters, fine grains,
or crystallites of carbon atoms
separate and identifiable by
transmission electron
microscopy (TEM) of the
nanophase diamond film”
(Gillette; Western Digital)
Prior Construction
“clusters of carbon atoms of
rounded or irregular shape”
(Gillette at 6; Western Digital
at 8-11)
(Dkt. No. 65, P.R. 4-5(d) Joint Claim Construction Chart.)
Defendants argue that “[i]n order to be able to measure a diameter of a nodule to
determine if its diameter comports with the claims, the nodules must be separate and
identifiable.” (Dkt. No. 63, at 14.) At the January 30, 2013 hearing, Defendants argued that the
limitations contained in their proposed construction are necessary to avoid the claims being
invalid as indefinite.
Plaintiffs argue that “[t]he term ‘nodules’ is not so difficult to understand that it requires
a lengthy laundry list of purported synonyms such as ‘[p]articles, clusters, fine grains, or
18
crystallites,’ particularly when the intrinsic evidence uses the simple term ‘clusters.’” (Dkt. No.
58, at 13.)
The specification discloses:
[I]t is understood that the nanophase diamond film comprises substantially
dehydrogenated nodules of sp3-bonded carbon (i.e., fine-grained clusters having
dimensions of 100-1000 angstroms and preferably less than 500 angstroms).
***
Properties of importance to the quality of an optical material include quantities
such as a high index of refraction, a low coefficient for absorption of light, a
smooth surface finish, and a nodule or crystal size smaller than a wavelength of
the light of interest.
(’797 Patent at 6:63-68 & 12:54-59 (emphasis added).) Further, the Summary of the Invention
discloses that “[b]etween the nodules is found an amorphous mixture of carbons and void,” so
the nodules are separated from one another to some extent. (Id. at 4:42-43.) Finally, the only
depiction of nodules is through transmission electron microscopy (“TEM”). (See id. at 4:48-50
& Fig. 6.)
As to the prosecution history, the abandoned ‘155 Application recited “clusters,” and
those claims were rejected as unpatentable over prior art. (Dkt. No. 63, Ex. C-9, 1/16/1993
Office Action, at 4.) During prosecution of the ‘104 Application (which issued as the ‘797
Patent), the patentee argued:
In contrast to the face-centered cubic construction of the [prior art] films, the
nodules comprising the film of the present invention lack coherent ordering,
probably because they contain a random alternation of the cubic and hexagonal
polytypes of diamond. With electron diffraction [(a technique used in, for
example, transmission electron microscopy (TEM))], they appear amorphous.
Between the nodules is found an amorphous mixture of carbons and void.
(Id., Ex. C-14, 8/8/1994 Amendment, at 4 (emphasis added) (internal citations omitted).)
19
Defendants conclude that “nodules” must mean more than simply clusters, to wit, clusters
that are “separate and identifiable by transmission electron microscopy (TEM) of the nanophase
diamond film.” (Dkt. No. 63, at 16.)
Plaintiffs reply that transmission electron microscopy “is only one implementation of
electron diffraction.” (Dkt. No. 64, at 7.)
As to the other evidence, Defendants cite Plaintiffs’ publications and deposition
testimony, but none of this other cited evidence alters the significance of the above-discussed
intrinsic evidence. (See Dkt. No. 63, at 18.) Further, Plaintiffs include with their reply a
declaration by one of the inventors, Dr. Farzin Davanloo, explaining that the claimed nodules
can be visualized by techniques other than transmission electron microscopy:
4. The nanophase diamond films patented in the Asserted Patents contain nodules
of carbon bonded predominantly in three dimensional sp3 bonds. These claimed
nodules can be visualized by many techniques. These techniques include
techniques that rely on electron diffraction, as well as other techniques that do not
rely on electron diffraction[.] The techniques that do not rely on electron
diffraction include atomic force microscopy, which uses a cantilever and probe to
scan the sample’s surface directly.
(Dkt. No. 64, Ex. A, 12/17/2012 Davanloo Decl., at ¶ 4; see Dkt. No. 63, Ex. C-11, C.B. Collins,
et al., Microstructural analysis of amorphic diamond, i-C, and amorphous carbon, 72 J. Appl.
Phys. 239, 241 (July 1992) (contrasting TEM with the use of scanning tunneling microscopy
(“STM”)); see also Dkt. No. 63, Ex. C-16, 1/20/2011 Davanloo dep., at 261:6-262:8 (contrasting
TEM with STM and with atomic force microscopy (“ATM”)).)
Figure 6 is disclosed as being “a photograph of diamond nodules shown by transmission
electron microscopy of a gold-coated replica of a film of nanophase diamond in accordance with
the present invention” (‘797 Patent at 7:41-44). First, this language does not warrant limiting
20
“nodules” to the depicted embodiment. In other words, that the structure shown in Figure 6 is
within the scope of the term “nodules” does not mean that the scope of the term “nodules” must
be limited to Figure 6. MBO Labs., Inc. v. Becton, Dickinson & Co., 474 F.3d 1323, 1333 (Fed.
Cir. 2007) (noting that “patent coverage is not necessarily limited to inventions that look like the
ones in the figures”). Second, Defendants argue that because Figure 6 is described as a “goldcoated replica” rather than as an actual nanophase diamond film, Figure 6 should not be relied
upon when construing the term “nodules.” Yet, Figure 6 is part of the patents-in-suit and is
described as “show[ing] the nodules of the nanophase diamond film.” (‘797 Patent at 12:41-43.)
Figure 6 may therefore properly be considered as part of the context in which the patents-in-suit
use the term “nodules.”
In sum, neither the specification nor the prosecution history contain any disclaimer or
definition that would justify construing the generic term “nodules” to require that clusters of
atoms must be “identifiable by transmission electron microscopy (TEM).” Defendants’ proposed
limitation in that regard is hereby expressly rejected.
Further, Defendants’ proposal of “separate” could be interpreted to require that nodules
cannot be in contact with one another. The disclosure that graphite and voids may lie between
nodules (see ‘797 Patent at 4:42-43) in no way implies that nodules must be completely separate
from one another, that is, that the nodules cannot touch one another. Defendants persuasively
argued at the January 30, 2013 hearing, however, that the word “clusters,” if used without any
qualification, would permit Plaintiffs to identify any group of atoms as a “cluster” even if the
cluster at issue were part of a larger unitary “clump,” so to speak. Such an interpretation, which
would read out the “nodule” limitation entirely, must be rejected. Plaintiffs appear to agree, both
21
in briefing and through deposition testimony, that “nodule” connotes some degree of
separateness:
The space between the nodules can contain sp2 bonded carbon, can be a void
containing nothing, or can contain a mixture of the two. See id. at Col. 4, ll. 4243; Col. 7, ll. 11-22. The nodules within the claimed nanophase diamond film are
significant, as they give the claimed films both flexibility and strength,
comparable to a cobblestone street. See id. at Col. 15, ll. 24-29.
(Dkt. No. 58, at 3-4 (emphasis added).)
Q. What is the smallest number of carbon atoms that you could have and still
have a nodule?
A. I’ve answered this question before.
Q. Number of carbon atoms?
A. I think I answered this before. I said that there is -- there is -- there should be
a cluster form. A separate cluster should be formed, and that cluster cannot be
two, three atoms. Maybe there would be 10 or 20 atoms. I cannot put you a
number there. The cluster has to be formed that is disclosed in our patents.
(Dkt. No. 63, Ex. C-15, 1/19/2011 Davanloo dep., at 216:3-12 (emphasis added).)
Thus, while Defendants’ proposal of “separate” is expressly rejected so as to avoid any
requirement of complete separation between the clusters, the Court’s construction should
nonetheless clarify that the clusters are “distinct.”
The Court therefore hereby construes “nodules” to mean “discrete clusters of carbon
atoms of rounded or irregular shape.”
22
C. “predominantly in three-dimensional sp3 bonds” (‘797 Patent, Claim 1; ‘650 Patent,
Claims 1 & 4)
Plaintiffs’
Defendants’
“approximately
95% or more
of the bonds
between the
carbon atoms
in each nodule
are three
dimensional
sp³ bonds”
“95% or
more of the
bonds
between the
carbon atoms
in each
nodule are
three
dimensional
sp³ bonds”
(Gillette)
Prior Construction
Gillette construed the larger term “nodules of carbon bonded
predominantly in three dimensional sp³ bonds” to mean:
“clusters of carbon atoms of rounded or irregular shape
wherein approximately 95% or more of the bonds
between the carbon atoms in each cluster are three
dimensional sp³ bonds”
Gillette at 4-6 (underlining added).
In Western Digital, the parties agreed to construe “bonded
predominantly in three dimensional sp³ bonds” to mean
“approximately 95% or more of the bonds between the carbon
atoms in each nodule are three dimensional sp³ bonds.”
Western Digital at 7 (underlining added).
(Dkt. No. 65, P.R. 4-5(d) Joint Claim Construction Chart.)
Defendants argue that “there is absolutely no support for the inclusion of the word
‘approximately’ in the definition,” such as any words like “about” or “generally” in the claims or
any reference to “approximately” in the specification. (Dkt. No. 63, at 21-22.)
Gillette reached the “approximately 95%” construction based on the constituent term
“predominantly” and the various disclosures in the specification. See Gillette at 4-6. Defendants
now rely upon “predominantly” as support for the “95%” limitation, which the parties have
agreed upon, while at the same time rejecting that “95%” is disclosed as an estimate rather than
as a definitively determinable figure.
As Plaintiffs argue, “[t]he construction’s inclusion of ‘approximately’ gives proper effect
to this description of the estimation of sp2 bonding suggested by the described measurements.”
(Dkt. No. 58, at 16.) The specification discloses that “estimates supported by measurements of
23
mass densities and soft x-ray (Kα) emission spectra suggest that the sp2 content within the
nodules is less than 5% and perhaps even as low as 2%, indicating a ‘diamond-like’ material.”
(‘797 Patent at 4:38-42 (emphasis added).) This disclosure of “estimates” provides sufficient
guidance for a person of ordinary skill in the art, but these are estimates nonetheless. Cf.
Invitrogen Corp. v. Biocrest Mfg., L.P., 424 F.3d 1374, 1384 (Fed. Cir. 2005) (“[A] patentee
need not define his invention with mathematical precision in order to comply with the
definiteness requirement.”); Exxon, 265 F.3d at 1381 (Fed. Cir. 2001) (“[M]athematical precision
is not required [for definiteness]—only a reasonable degree of particularity and definiteness.”).
Because the sp3 content cannot be measured directly and instead is “suggest[ed]” by “estimates”
based on other material properties (‘797 Patent at 4:38-42), here as in Gillette the word
“approximately” should be included in the construction.
Finally, Plaintiffs’ journal article cited by Defendants does not add anything of relevance
to what is already disclosed in the specification. (Dkt. No. 63, at 22 (citing Ex. C-19, C.B.
Collins et al., The Bonding of Protective Films of Amorphic Diamond to Titanium, 71 J. App.
Phys. 3260, 3269 (Apr. 1992) (explaining that “the sp2 content within the nodules is less than 5%
and perhaps even as low as 2%”)).)
The Court therefore hereby construes “predominantly in three-dimensional sp3 bonds”
to mean “approximately 95% or more of the bonds between the carbon atoms in each
nodule are three dimensional sp³ bonds.”
24
D. “an optical quality capable of providing a visual appearance of Newton’s rings of
interference” (‘797 Patent, Claim 4; ‘650 Patent, Claim 4)
Plaintiffs’ Proposal
“optical characteristics such
that the material is capable of
exhibiting visible dark, bright,
and/or colored rings or lines”
Defendants’ Proposal
Plain and ordinary meaning
(same as Gillette and
Western Digital)
Prior Construction
“optical characteristics such
that the material is capable of
exhibiting visible dark, bright,
and/or colored rings or lines”
(Gillette at 6-7; Western
Digital at 14-16)
(Dkt. No. 65, P.R. 4-5(d) Joint Claim Construction Chart.)
Here as in Western Digital, “[t]he parties do not dispute that the plain and ordinary
meaning of ‘capable of providing a visual appearance of Newton’s rings of interference’ is
‘capable of exhibiting visible dark, bright and/or colored rings or lines.’” (Dkt. No. 63, at 24;
Western Digital at 15 (“The parties do not dispute that Newton’s rings are understood by those of
ordinary skill in the art to be a series of light, dark, and/or colored lines or rings created as results
of interference patterns.”).)
Defendants urge, however, that the claims recite that “said film,” not merely the material,
has the requisite optical quality. (Dkt. No. 63, at 25.) At the January 30, 2013 hearing, the
parties further characterized their dispute as being centered on the meaning of the phrase
“capable of.” The issue is whether the claims require that: (a) the nanophase diamond material
that makes up the claimed film is capable of being configured to show Newton’s rings by
modifying, for example, the film’s shape, thickness, or surface finish, as Plaintiffs argue; or (b) a
particular film having a particular shape, thickness, or surface finish, for example, is capable of
showing Newton’s rings, as Defendants argue.
25
Thus, in Plaintiffs view, “capable of” is a property of the material that allows for
manipulating the characteristics of the film that is made up of the material. In other words, even
if Newton’s rings do not appear for a particular film, the material that makes up the film might
nonetheless be “capable of” displaying Newton’s rings under other circumstances.
According to Defendants, by contrast, “capable of” is a property of a particular film and
does not refer to reconfiguring the material that makes up the film. Thus, under Defendants’
interpretation, “capable of” refers to other factors, for example, the various environmental factors
that affect whether Newton’s rings appear, such as the position of the light source, the type of
light source, the viewing angle, and so forth.4
The discussion of this disputed term in Gillette is reproduced here:
The plaintiffs urge that the disputed phrase should be construed to mean “optical
characteristics such that the material is capable of exhibiting visible dark, bright,
and/or colored rings or lines.” The plaintiffs submit that the specification and the
prosecution history teach that the appearance of these interference patterns arises
from the internal reflection of light within the films. The defendant proposes that
the disputed phrase should be construed to mean that “the film taken as is at its
actual thickness and on its actual substrate has optical characteristics such that the
film is capable of exhibiting multiple alternating, visible dark and bright (or
colored) interference rings or lines.” The defendant contends that a film is not
capable of providing a visual appearance of Newton’s rings of interference if that
film cannot display bands of interference colors at the film’s actual thickness and
on the film’s actual substrate.
The court is persuaded that the plaintiffs are correct. The defendant does not
provide any support for the limitations it attempts to read into the claims. The
court therefore adopts the plaintiffs’ construction of the disputed phrase.
Accordingly, the court construes “an optical quality capable of providing a visual
appearance of Newtons’ [sic] rings of interference” to mean “optical
characteristics such that the material is capable of exhibiting visible dark, bright,
and/or colored rings or lines.”
4
At the January 30, 2013 hearing, when questioned by the Court, Plaintiffs acknowledged that
environmental factors like these have a role in whether Newton’s rings appear.
26
Gillette at 6-7.
In Western Digital, the defendants argued that this disputed term rendered the claims
indefinite because the claims failed to identify the required sample thickness needed to test for
the appearance of Newton’s rings. Western Digital at 14. The defendants explained, as the
Court characterized it, that “any material can have interference effects if it is sliced thin enough,
including non-optical films such as metal films.” Id. at 15. The Court found that “[a]s argued by
Plaintiffs, the claims require an optical quality that would not be found in materials such as coal
or metal, regardless of how thinly they are sliced.” Id. The Court concluded that “the claims do
not require a specific thickness of the film as it relates to this element.” Id. at 16.
Thus, Gillette provided no substantive analysis for this Court to consider, and Western
Digital was focused on issues of indefiniteness, not on whether the disputed term should be
evaluated as to a material in general or as to a particular film.
Claim 4 of the ‘797 Patent is representative and recites:
4. The nanophase diamond film of claim 1, wherein said film has an optical
quality capable of providing a visual appearance of Newtons’ [sic] rings of
interference.
The Abstract of the patents-in-suit states, in relevant part (emphasis added):
The nanophase diamond films of the present invention are also characterized by a
low coefficient of friction, by low average internal stress, and by an optical
quality capable of providing a visual appearance of Newton’s rings of
interference.
Similarly, the specification discloses that the appearance of Newton’s rings is not a feature of the
nanophase material in general but rather is a feature of a “layer” or “film” of material, such as “a
film of optical material”:
27
The optical quality of the nanophase diamond layer is particularly significant in
that it is capable of providing a visual appearance of Newton’s rings of
interference. The occurrence of Newton’s rings in a film of optical material can
be an especially useful means for distinguishing that material from other so-called
optical quality, or “diamond-like” materials. Properties of importance to the
quality of an optical material include quantities such as a high index of refraction,
a low coefficient for absorption of light, a smooth surface finish, and a nodule or
crystal size smaller than a wavelength of the light of interest. Each of these
properties is a necessary but not sufficient condition to support the appearance of
Newtons’ [sic] rings. Thus, while two samples might have the same indices of
refraction, or might both be described as optically smooth, they may nevertheless
be distinguishably different on the basis of other properties just listed. Therefore,
the appearance of Newton’s rings is a particularly effective test for the
simultaneous occurrence of optimal values of all of the figures of merit for an
optical material.
(‘797 Patent at 12:48-68 (emphasis added).) The specification goes on to explain that “the
nanophase diamond film of the present invention retains optical characteristics essential for
producing Newton’s rings even for thickness greater than 2 microns.” (Id. at 13:21-25
(emphasis added).) This use of the word “retains” suggests that the requisite optical
characteristics are of the film, not of the material in general.
During prosecution of the ‘155 Application, from which the patents-in-suit claim priority,
Plaintiffs argued that “the present application claims a carbon film being greater than 2 microns,
yet being of sufficient optical quality to display Newton’s Rings.” (Dkt. No. 63, Ex. C-20,
2/3/1993 Amendment After Final Rejection and Remarks, at 10 (emphasis added).) The patentee
thus referred to the appearance of Newton’s rings in the context of a particular thickness, which
is a property of a layer or film rather than of a material in general. During a subsequent appeal to
the Board of Patent Appeals and Interferences, Plaintiffs argued that “[t]his potential [as an
excellent protective coating] is further enhanced by the superior optical quality of the claimed
film, which is capable of displaying Newton’s rings of interference.” (Id., Ex. C-21, 7/22/1993
28
Appeal Brief at 3 (emphasis added); see id. at 8 (referring to a claim “wherein the layer has an
optical quality capable of providing a visual appearance of Newton’s rings of interference”)
(emphasis added).)5
As to the prosecution of the ’104 Application (which issued as the ’797 Patent), Plaintiffs
again reaffirmed that “[t]he film of the present invention is also capable of supporting the visual
appearance of Newton’s rings of interference.” (Id., Ex. C-14, 8/8/1994 Amendment, at 6
(emphasis added).)
On balance, based on the above-quoted portions of the specification and the prosecution
history, as well as the arguments of counsel at the January 30, 2013 hearing, the Court departs
from Gillette and Western Digital and finds, as Defendants argue, that the claimed optical
characteristics are not of the nanophase diamond material in general but rather are of the film
recited in the claims. Thus, it is irrelevant whether the nanophase diamond material that the film
is composed of could be configured in such a way that Newton’s rings would appear. Instead,
the claims require that Newton’s rings appear in a particular nanophase diamond film, as formed
in a particular shape, with a particular thickness, with a particular surface finish, and so forth.6
Contrary to Plaintiffs’ argument at the January 30, 2013 hearing, this finding does not read the
5
The Board of Patent Appeals and Interferences affirmed the Examiner’s rejection of the claims
of the ‘155 Application, finding that Plaintiffs failed to meet their burden to submit evidence that
optical quality providing a visual appearance of Newton’s rings of interference was not inherent
in the “Deutchman” reference, United States Patent No. 4,992,298. (See Dkt. No. 63, Ex. C-5,
7/10/1996 Decision on Appeal, at 6-7.) Plaintiffs then abandoned the ‘155 Application. (See
Dkt. No. 63, Ex. C-6, 10/21/1996 Notice of Abandonment.)
6
At the January 30, 2013 hearing, Defendants also urged that the film must be evaluated as it
resides on a particular substrate, but not all of the claims recite a substrate, and neither the
specification nor the prosecution history definitively rule out the existence of a free-standing
nanophase diamond film. The Court’s construction of the “Newton’s ring” term is therefore
agnostic about whether the film being evaluated is attached to a substrate.
29
phrase “optical quality” out of the claims but instead clarifies that, as expressly claimed, the
“optical quality” is of “said film,” not of the material in general.
The Court therefore hereby construes “an optical quality capable of providing a visual
appearance of Newton’s rings of interference” to mean “optical characteristics such that the
film is capable of exhibiting visible dark, bright, and/or colored rings or lines.”
V. CONCLUSION
The Court adopts the constructions set forth in this opinion for the disputed terms of the
patents-in-suit. The parties are ordered that they may not refer, directly or indirectly, to each
other’s claim construction positions in the presence of the jury. Likewise, the parties are ordered
to refrain from mentioning any portion of this opinion, other than the actual definitions adopted
by the Court, in the presence of the jury. Any reference to claim construction proceedings is
limited to informing the jury of the definitions adopted by the Court.
Within thirty (30) days of the issuance of this Memorandum Opinion and Order, the
parties are hereby ORDERED, in good faith, to mediate this case with the mediator agreed upon
by the parties. As a part of such mediation, each party shall appear by counsel and by at least
one corporate officer possessing sufficient authority and control to unilaterally make binding
decisions for the corporation adequate to address any good faith offer or counteroffer of
settlement that might arise during such mediation. Failure to do so shall be deemed by the Court
as a failure to mediate in good faith and may subject that party to such sanctions as the Court
deems appropriate.
30
SIGNED this 19th day of December, 2011.
So ORDERED and SIGNED this 5th day of February, 2013.
____________________________________
RODNEY GILSTRAP
UNITED STATES DISTRICT JUDGE
31
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