Innovative Display Technologies LLC v. HYUNDAI MOTOR GROUP et al
Filing
244
CLAIM CONSTRUCTION MEMORANDUM OPINION AND ORDER. Signed by Judge Rodney Gilstrap on 05/04/2015. (jrg3)
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
INNOVATIVE DISPLAY
TECHNOLOGIES LLC, et al.,
Plaintiffs,
v.
HYUNDAI MOTOR CO., et al.,
Defendants.
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CASE NO. 2:14-CV-201-JRG
(LEAD CASE)
MEMORANDUM OPINION AND ORDER
Before the Court are the opening brief filed by Plaintiffs Innovative Display
Technologies LLC and Delaware Display Group LLC (collectively, “Plaintiff”) (Dkt. No. 216),
the response filed by Defendants Hyundai Motor Company, Hyundai Motor Manufacturing
Alabama, LLC, Kia Motors Manufacturing Georgia, Inc., Kia Motors America, Inc., Kia Motors
Corporation, Mercedes-Benz U.S. International, Inc., Mercedes-Benz USA, LLC, Nissan Motor
Co., Ltd., Nissan North America, Inc., Toyota Motor Corp., Toyota Motor Sales, U.S.A., Inc.,
Toyota Motor Manufacturing, Kentucky, Inc., Toyota Motor Manufacturing, Indiana, Inc.,
Toyota Motor Manufacturing, Texas, Inc., Toyota Motor Manufacturing, Mississippi, Inc.,
Subaru of Indiana Automotive, Inc., Gulf States Toyota, Inc., American Honda Motor Co., Inc.,
Honda of America Mfg., Inc., Honda Manufacturing of Alabama, LLC, Honda Manufacturing of
Indiana, LLC, Sprint Spectrum L.P., Sprint Solutions, Inc., Boost Mobile, LLC, Virgin Mobile
USA, L.P., BMW of North America, LLC, BMW Manufacturing Co., LLC, Volkswagen Group
of America, Inc. and Volkswagen Group of America Chattanooga Operations, LLC (collectively,
“Defendants”) (Dkt. No. 221), and Plaintiff’s reply (Dkt. No. 224).
The Court held a claim construction hearing on April 29, 2015.
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Table of Contents
I. BACKGROUND ....................................................................................................................... 3
II. LEGAL PRINCIPLES ........................................................................................................... 4
III. THE PARTIES’ AGREED CONSTRUCTIONS ............................................................... 9
IV. CONSTRUCTION OF DISPUTED TERMS PREVIOUSLY CONSTRUED .............. 10
A. “continuous side walls”....................................................................................................... 10
B. “transition region” ............................................................................................................... 14
C. “an air gap between the film, sheet, plate or substrate and the panel member”.................. 16
D. “predetermined” .................................................................................................................. 20
E. “well defined optical elements or deformities” and “optical elements or deformities of
well defined shape” ............................................................................................................. 21
F. “pass through a liquid crystal display with low loss” .......................................................... 23
V. CONSTRUCTION OF DISPUTED TERMS NOT PREVIOUSLY CONSTRUED ...... 26
A. “one or more secondary flat, angled, faceted or curved reflective or refractive surfaces” . 26
B. “in close proximity” ............................................................................................................ 28
C. “positioned near,” “positioned near the light emitting surface . . . and air gap between,”
and “positioning a film near” .............................................................................................. 31
D. “optical elements” ............................................................................................................... 34
E. “facilitate better mixing of light rays within the cavity or recess” ...................................... 37
F. “more in the width direction” .............................................................................................. 39
G. “output distribution defined by a greater width component than height component” ........ 44
H. “greater cross-sectional width than thickness” ................................................................... 48
I. “edge of said panel assembly” .............................................................................................. 48
J. “for shining light through said panel member” .................................................................... 50
K. “one or more light emitting diodes along said light input surface for receiving light
from said light emitting diodes and conducting the light from said edge for emission of
the light from at least one of said sides” ............................................................................. 52
VI. CONCLUSION .................................................................................................................... 55
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I. BACKGROUND
Plaintiff brings suit alleging infringement of United States Patents No. 7,300,194 (“the
’194 Patent”), 7,384,177 (“the ’177 Patent”), 7,404,660 (“the ’660 Patent”), 7,434,974 (“the ’974
Patent”), 7,537,370 (“the ’370 Patent”), and 8,215,816 (“the ’816 Patent”) (collectively, the
“Display Patents”) and United States Patents No. 6,508,563 (“the ’563 Patent”) and 6,886,956
(“the ’956 Patent”) (collectively, the “Auto Patents”).
All of the Display Patents are titled “Light Emitting Panel Assemblies” and “relate to the
field of backlights, which can be used, for example, to illuminate LCDs [(liquid crystal
displays)].” (Dkt. No. 216, at 1). All of the Display Patents claim priority to a common ancestor
patent and bear an earliest priority date of June 27, 1995. The Display Patents, at least for
purposes of the present claim construction proceedings, share a common written description and
figures. The Abstract of the ’194 Patent is generally representative and states:
Light emitting assemblies include at least one light source and at least one film,
sheet, plate or substrate having optical elements or deformities of well defined
shape on at least one surface that have reflective or refractive surfaces for
controlling the light output ray angle distribution of the emitted light. The film,
sheet, plate or substrate may be positioned near the light emitting surface of a
light emitting panel member with an air gap therebetween or over a cavity or
recess in a tray through which light from a light source in the cavity or recess is
emitted.
Both of the Auto Patents are titled “Light Emitting Panel Assemblies for Use in
Automotive Applications and the Like.” Plaintiff submits that “[t]he Auto Patents generally
relate to exterior auto lights such as taillights and headlights.” (Dkt. No. 216, at 1.) The ’563
Patent bears an earliest priority date of January 16, 1996. The ’956 Patent is a continuation of
the ’563 Patent, and Plaintiff submits that the Auto Patents have “nearly identical written
descriptions.” (Dkt. No. 216, at 1.) The Abstract of the ’563 Patent states:
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Light emitting panel assemblies include in one form of the invention a light
emitting panel member made of a transparent resiliently deformable elastomeric
material that absorbs impact without breakage for use in automotive lighting
applications of various types. In another form of the invention, a rigid light
emitting panel member may be used with dome switches for switch area lighting
or to backlight control buttons/key pads by providing holes or openings in the
panel member for the control buttons/key pads. Also, a rigid light emitting panel
member may be used as a structural member, and two or more such light emitting
panel members may be stacked together and used to light an instrument panel or
the like. One or more light sources may be mounted within one or more light
transition areas adjacent one or more light input surfaces of the light emitting
panel members. Also one or more light sources may be positioned adjacent one
side of the light emitting panel members for causing light to shine through the
panel members or through holes in the panel members for performing specified
lighting functions.
Less than a year ago, the Court construed terms in the Display Patents in Innovative
Display Technologies LLC v. Acer Inc., et al., No. 2:13-CV-522, Dkt. No. 101, 2014 WL
4230037 (E.D. Tex. Aug. 26, 2014) (Payne, J.) (“Acer”),1 objections overruled, Dkt. No. 219
(Dec. 15, 2014) (Gilstrap, J.). Acer also construed terms in United States Patent No. 6,755,547
(“the ’547 Patent”), which is related to the Display Patents but which is not asserted in the
present case. Below, the Court divides the presently disputed terms into terms that the Court
previously construed in Acer and terms that the Court has not previously construed, as Plaintiff
has done in its briefing.
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.
1
Citations to Acer herein are to the slip opinion, which Plaintiff has attached to its opening brief
as Exhibit I.
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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
particular, the court reiterated that “the claims of a patent define the invention to which the
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patentee is entitled the right to exclude.” 415 F.3d at 1312 (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
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
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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
United States 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.
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.
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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.
The Supreme Court of the United States “read[s] [35 U.S.C.] § 112, ¶ 2 to require that a
patent’s claims, viewed in light of the specification and prosecution history, inform those skilled
in the art about the scope of the invention with reasonable certainty.” Nautilus, Inc. v. Biosig
Instruments, Inc., 134 S. Ct. 2120, 2129 (2014); see Biosig Instruments, Inc. v Nautilus, Inc., --F.3d ----, 2015 WL 1883265, at *4 (Fed. Cir. Apr. 27, 2015). “A determination of claim
indefiniteness is a legal conclusion that is drawn from the court’s performance of its duty as the
construer of patent claims.” Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347
(Fed. Cir. 2005) (citations and internal quotation marks omitted), abrogated on other grounds by
Nautilus, 134 S. Ct. 2120.
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) (Davis, J.); see TQP Development, LLC v. Inuit Inc., No. 2:12-
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CV-180, 2014 WL 2810016, at *6 (E.D. Tex. June 20, 2014) (Bryson, J.) (“[P]revious claim
constructions in cases involving the same patent are entitled to substantial weight, and the Court
has determined that it will not depart from those constructions absent a strong reason for doing
so.”); see also Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 839-40 (2015) (“prior
cases will sometimes be binding because of issue preclusion and sometimes will serve as
persuasive authority”) (citation omitted).
The Court nonetheless conducts an independent evaluation during claim construction
proceedings. See, e.g., Texas Instruments, Inc. v. Linear Techs. Corp., 182 F. Supp. 2d 580,
589-90 (E.D. Tex. 2002); Burns, Morris & Stewart Ltd. P’ship v. Masonite Int’l Corp., 401 F.
Supp. 2d 692, 697 (E.D. Tex. 2005); Negotiated Data Solutions, Inc. v. Apple, Inc., No. 2:11CV-390, 2012 WL 6494240, at *5 (E.D. Tex. Dec. 13, 2012).
III. THE PARTIES’ AGREED CONSTRUCTIONS
The Parties have agreed to the following constructions:
Term
“deformities”
(’194 Patent, Claims 1, 16, 28, 31;
’660 Patent, Claims 1, 33;
’974 Patent, Claims 1, 7, 13;
’370 Patent, Claims 1, 4, 8, 13, 29, 47;
’816 Patent, Claim 1;
’177 Patent, Claim 14)
“vary randomly”
Agreed Construction
“any change in the shape or geometry of a
surface and/or coating or surface treatment that
causes a portion of the light to be emitted”
Plain meaning
(’177 Patent, Claim 26;
’370 Patent, Claim 37)
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“posts, tabs, or other structural features that
provide a mount”
Plain meaning
(’974 Patent, Claims 1, 7)
“transreflector”
Plain meaning
(’563 Patent, Claim 9)
“pattern of deformities”
(’660 Patent, Claims 1, 33)
“pattern of light extracting deformities”
(’974 Patent, Claims 1, 7, 13;
’370 Patent, Claims 1, 13, 29, 47;
’816 Patent, Claim 1)
“pattern of individual optical elements”
(’196 Patent, Claim 1)
“a pattern of deformities, including, but not
limited to, a random placement pattern or a
variable pattern”
“a pattern of deformities, including, but not
limited to, a random placement pattern or a
variable pattern”
“a pattern of individual optical elements
including, but not limited to, a random
placement pattern or a variable pattern”
(Dkt. No. 202, 2/20/2015 P.R. 4-3 Joint Claim Construction and Prehearing Statement, at 3-4;
Dkt. No. 228, 4/15/2015 P.R. 4-5 Joint Claim Construction Chart, at 3-4.)
IV. CONSTRUCTION OF DISPUTED TERMS PREVIOUSLY CONSTRUED
A. “continuous side walls”
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
Plain meaning
“side walls free of discontinuities”
(Dkt. No. 216, at 2; Dkt. No. 221, at 20-21.) The parties submit that this disputed term appears
in Claims 1 and 15 of the ’177 Patent.
(1) The Parties’ Positions
Plaintiff argues that Defendants’ proposal should be rejected for the same reasons the
Court rejected the proposal of “free of breaks” in Acer. (Dkt. No. 216, at 2.)
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Defendants respond that what is shown in Figure 6 “is the only tray depicted,” and
Defendants cite prosecution history involving the “Kitizawa” reference that was addressed in
Acer. (Dkt. No. 221, at 21-22; see Acer at 15-16.)
Plaintiff replies that “Defendants’ ‘free of discontinuities’ construction is essentially the
same one the Court already rejected [in Acer] (‘free of breaks’).” (Dkt. No. 224, at 1.)
(2) Analysis
Defendants urge:
[T]he applicant amended claims 1 and 15 to further limit the tray to one “having a
back wall and continuous side walls that forms form a hollow cavity or recess
completely surrounded by the side walls.” [(Dkt. No. 221,] Ex. 16, IDT0000278287. And, the applicant argued, inter alia, that “the so-called tray 12 of Kitazawa
does not have a back wall and continuous side walls that form a hollow cavity or
recess completely surrounded by the side walls. . . .” Id. The applicant, thus,
relied on the continuous side walls disclosed in Figure 6 of the specification, side
walls free of discontinuities, to distinguish over the prior art.
(Dkt. No. 221, at 21 (additions underlined and deletions in strikethrough, as in original; italics
omitted).)
In Acer, the defendants proposed construing this disputed term to mean “uninterrupted
walls that are free of breaks on the side of the tray.” The Court found:
As for the prosecution history, the patentee added the term “continuous side
walls,” as well as the phrase “completely surrounded by the side walls,” in
response to a rejection based on United States Patent No. 5,070,431 (“Kitazawa”).
See [No. 2:13-CV-522,] Dkt. No. 75, Ex. H, 1/22/2008 Reply to Office Action of
October 3, 2007, at 2 (p. 56 of 94 of Ex. H). The patentee stated: “[I]t is
respectfully submitted that the so-called tray 12 of Kitazawa does not have a back
wall and continuous side walls that form a hollow cavity or recess completely
surrounded by the side walls in which at least one light source is located, mounted
or positioned as recited in claims 1 and 16 as amended.” Id. at 8 (p. 62 of 94 of
Ex. H). Figure 2 of Kitazawa is reproduced here:
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Because the “light guide plate 12” of Kitazawa (see Kitazawa at 2:27-3:45)
includes “recesses 12a and 12b” (see id. at 3:15-20) that are illustrated as being
completely open-ended, the patentee’s statements distinguishing Kitazawa cannot
be fairly read as requiring that “continuous” side walls must be uninterrupted, as
Defendants here propose. See Omega Eng’g v. Raytek Corp., 334 F.3d 1314,
1324 (Fed. Cir. 2003) (“As a basic principle of claim interpretation, prosecution
disclaimer promotes the public notice function of the intrinsic evidence and
protects the public’s reliance on definitive statements made during prosecution.”)
(emphasis added); see also id. at 1325-26 (“[F]or prosecution disclaimer to attach,
our precedent requires that the alleged disavowing actions or statements made
during prosecution be both clear and unmistakable”) (emphasis added).
Acer at 15-16. Defendants have not justified departing from this finding in Acer. (See Dkt.
No. 221, at 21.) Indeed, the above-discussed “light guide plate 12” of Kitazawa, which the
patentee referred to as a “so-called tray,” was apparently not a tray at all. See Acer at 15-16.
Acer construed the term “continuous side walls” to have its plain meaning. Id. at 17.
Finally, Defendants rely on Figure 6 of the ’177 Patent as illustrating side walls that are
free of discontinuities. Figure 6 is reproduced here:
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Defendants’ reliance on the illustration in Figure 6 is rejected as importing a limitation
from a particular disclosed embodiment. See MBO Labs. Inc. v. Becton, Dickinson & Co., 474
F.3d 1323, 1333 (Fed. Cir. 2007) (“[P]atent coverage is not necessarily limited to inventions that
look like the ones in the figures. To hold otherwise would be to import limitations [i]nto the
claim[s] from the specification, which is fraught with danger.”).
Defendants’ proposed construction is therefore hereby expressly rejected, and no further
construction is necessary. See U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed.
Cir. 1997) (“Claim construction is a matter of resolution of disputed meanings and technical
scope, to clarify and when necessary to explain what the patentee covered by the claims, for use
in the determination of infringement. It is not an obligatory exercise in redundancy.”); see also
O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008)
(“[D]istrict courts are not (and should not be) required to construe every limitation present in a
patent’s asserted claims.”); Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197, 1207 (Fed.
Cir. 2010) (“Unlike O2 Micro, where the court failed to resolve the parties’ quarrel, the district
court rejected Defendants’ construction.”).
The Court accordingly hereby construes “continuous side walls” to have its plain
meaning.
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B. “transition region”
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
“a region configured to transmit light”
“an area used to make the transition from the
light source to the light emitting area of the
panel member [’370] / optical conductor
[’660]”2
(Dkt. No. 216, at 2; Dkt. No. 221, at 22 (square brackets Defendants’).) The parties submit that
this disputed term appears in Claims 1, 3, 10, and 33 of the ’660 Patent and Claims 13 and 47 of
the ’370 Patent.
(1) The Parties’ Positions
Plaintiff argues that Defendants’ proposal would improperly limit the disputed term to a
particular embodiment in a manner that the Court rejected in Acer. (Dkt. No. 216, at 3.)
Defendants respond that they propose the construction proposed by Plaintiff in Acer.
(Dkt. No. 221, at 22.) Defendants urge that the “transition region” is “the area after the light
source but before the light emitting region,” and “[t]he specifications of both patents confirm that
the transition region receives light from the light source and transmits that light to the light
emitting portion.” (Id., at 23.) Defendants conclude:
The Court should not adopt the Acer construction—“region configured to transmit
light”—because it is overbroad and omits the structure and function implicit in the
term. The prior construction encompasses any region in the light emitting
assembly configured to transmit light, which is so broad it could encompass the
light source and the light emitting portion of the light guide. Defendants’
construction appropriately differentiates between the light source, the transition
region, and the light emitting portion according to the patent’s disclosure.
2
The word “used” appears in Defendants’ proposal in the parties’ February 20, 2015 P.R. 4-3
Joint Claim Construction and Prehearing Statement (Dkt. No. 200, at 9) and in the parties’
April 15, 2015 P.R. 4-5 Joint Claim Construction Chart (Dkt. No. 228, at 4) but does not appear
in Defendants’ proposal in their response brief (Dkt. No. 221, at 22).
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(Id., at 24.) Defendants have also submitted expert opinion. (See id., Ex. 3, 3/3/2015 Gillespie
Decl., at ¶ 48 (“Since light from the source is often emitted over a broad range of angles, it is
necessary to constrain the light for injection into the light guide’s emission zone. The region
where this takes place is typically termed the entry zone or, in the Display Patents and [Auto]
Patents, the ‘transition area.’”).)
Plaintiff replies that “the claim limitations themselves demark the transition region from
the light source and light emitting area, by claiming them all as separate limitations.” (Dkt.
No. 224, at 1.)
(2) Analysis
In Acer, the Court rejected the defendants’ proposal to require that a “transition region” is
“a region that spreads and transmits light.” See Acer at 18-22 (emphasis added). The Court in
Acer nonetheless did not adopt Plaintiff’s proposal of plain meaning or Plaintiff’s alternative
proposed construction (which is the construction proposed here by Defendants). See id. Instead,
the Court arrived at a construction based upon a review of the specification. See id. (citing ’547
Patent at 2:62-3:7 & 7:13-31). The Court construed this disputed term to mean “a region
configured to transmit light” (Acer at 22), and Plaintiff proposes that the Court adopt the Acer
construction in the present case.
The Summary of the Invention of the ’660 Patent states:
Referring now in detail to the drawings, and initially to FIG. 1, there is
schematically shown . . . a light transition member or area 4 used to make the
transition from the light source 3 to the light emitting panel 2, as well known in
the art.
’660 Patent at 2:59-66 (emphasis added).
Figures 10 and 11 of the ’370 Patent and the ’660 Patent purportedly show a transition
area 63 that transmits light to a light output area 62. See ’660 Patent at 7:55-8:5. Defendants
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also submit that Figure 3 of the ’370 Patent and the ’660 Patent shows that transition areas 12
emit light “into the light input surface 19 of the light emitting panel 14.” ’660 Patent at 3:39-50.
The thrust of Defendants’ argument thus appears to be that a “transition region” must be
distinct from both a light source and a light emitting area. Defendants have failed to justify
limiting the disputed term to particular illustrations. See MBO Labs., 474 F.3d at 1333 (“[P]atent
coverage is not necessarily limited to inventions that look like the ones in the figures.”). Also of
note, although Defendants’ brief cites Figure 10 and annotates the figure with a line drawn
around transition area 63 (Dkt. No. 221, at 23), no such demarcation line appears in Figure 10 in
the patents.3
Thus, to the extent Defendants maintain that the disputed term necessarily refers to a
structure distinct from a light source and a light emitting area, the Court hereby expressly rejects
Defendants’ proposed construction. Likewise, to whatever extent Defendants are proposing that
a “transition region” cannot emit any light, the Court hereby rejects any such argument as
unsupported. Nonetheless, the construction should specify what the “transition” is from and to.
The Court accordingly hereby construes “transition region” to mean “a region
configured to transmit light from a light source to a light emitting area.”
C. “an air gap between the film, sheet, plate or substrate and the panel member”
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
Plain meaning
“the film, sheet, plate or substrate and the panel
member are held apart and do not fit snugly
together”
3
Finally, both sides have cited Textron Innovations Inc. v. Am. Eurocopter Corp., 498 F. App’x
23, 28 (Fed. Cir. 2012) (“In certain circumstances functional language may be used to add
limitations to an apparatus claim.”). Textron has not significantly impacted the Court’s analysis
here.
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(Dkt. No. 216, at 3; Dkt. No. 221, at 24.) The parties submit that this disputed term appears in
Claim 1 of the ’194 Patent.
(1) The Parties’ Positions
Plaintiff argues that Defendants are attempting to “import limitations into claims with no
basis in either the intrinsic or extrinsic evidence.” (Dkt. No. 216, at 4.) In particular, Plaintiff
submits that “Defendants mistakenly rely upon statements made in the prosecution of a different
Display Patent that were directed to a claim with an important difference in its claim language.”
(Id.)
Defendants respond that “[t]he patentee indicated that no air gap exists when two
surfaces fully adhere to one another.” (Dkt. No. 221, at 25 (citing ’194 Patent at 3:60-62 &
6:39-51).) Defendants also cite prosecution history of related patent applications. (See id.,
at 25-26.)
Plaintiff replies that the prosecution history cited by Defendants is either inapplicable or
was rejected by the Court in Acer. (Dkt. No. 224, at 1-2.)
(2) Analysis
In Acer, the Court construed this disputed term to have its plain meaning. See Acer
at 30-35.
As for the prosecution history, Defendants have cited the “Hou” reference, United States
Patent No. 6,129,439, which the Court addressed in Acer. (See Dkt. No. 221, Ex. 21, 8/5/2003
Reply to Office Action, at 11 (IDT000044); see also Acer at 33-34.) For the same reasons set
forth in Acer, the Court finds that the prosecution history involving Hou does not warrant finding
any disclaimer or otherwise narrowing the meaning of the disputed term as proposed by
Defendants. See id.
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Defendants have also cited prosecution history of the ’974 Patent in which the patentee
distinguished the “Sakuma” reference (United States Patent No. 5,184,888) in which, the
patentee stated, components “fit snugly.” (Dkt. No 221, Ex. 23, 8/8/2008 Reply to Final Office
Action, at 10 (IDT0000567).) There, however, the relevant claim language recited that “at least
one of a tab, hole, cavity, or protrusion holds the additional component away from the panel
member to create an air gap between the panel member and the additional component.” Id.
Claim 1 of the ’194 Patent does not require a tab, hole, cavity, or protrusion. The ’974 Patent
prosecution history cited by Defendants thus does not warrant finding any disclaimer or
otherwise narrowing the meaning of the disputed term as proposed by Defendants.
The remaining prosecution history4 cited by Defendants involves the “Ohtsuki”
reference, United States Patent No. 5,786,665. The patentee stated:
According to the Examiner, Figs. 20b or 23a of Ohtsuki disclose a transparent
member 80 overlying the LED light sources 74 in spaced relation therefrom to
provide an air gap therebetween. Although an air gap is shown in these two
figures, as column 21, lines 1-11 of Ohtsuki makes clear, the LED lamps 70 and
the block-shaped member 91 are pressed on the transparent gel layer 80 formed
on the light incident surface 50a of the light directing plate 50 so as to be held
closely in contact therewith to eliminate an air layer between the light directing
plate 50 and the LED lamps. Thus there is no open gap between the light source
and the transparent member for mixing of the light before passing through the
transparent member . . . .
(Dkt. No. 221, Ex. 20, 8/26/2005 Reply to Office Action, at 10.)
Even if this prosecution history is read as meaning that “held closely in contact” refers to
the absence of an air gap, it does not necessarily follow that the presence of an air gap between
4
Defendants submit that this prosecution history is of a related patent, United States Patent No.
7,077,544, which is a divisional of United States Patent No. 6,712,481. The ’194 Patent is a
divisional of United States Patent No. 6,712,481. See Omega Eng’g, 334 F.3d at 1333-34
(prosecution history of related patents may be relevant where there is “a common term in
dispute”).
- 18 -
two surfaces requires that those surfaces be “held apart,” as Defendants have proposed. For
example, Defendants’ argument presumably breaks down if the surfaces at issue have bumps or
are otherwise not flat. Of note, Acer addressed this issue and rejected the defendants’ proposal
of “no direct physical contact.” See Acer at 31-35, esp. at 35 (“Defendants have failed to identify
any persuasive reason for finding that a point of contact defeats the existence of an air gap.
Instead, as Plaintiff has argued, points of contact may indeed facilitate maintaining an air gap.”).
On balance, the prosecution history submitted by Defendants is not sufficiently clear to
warrant finding any disclaimer or otherwise narrowing the meaning of the disputed term as
proposed by Defendants. See Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327, 1332 (Fed.
Cir. 2004) (“Because the statements in the prosecution history are subject to multiple reasonable
interpretations, they do not constitute a clear and unmistakable departure from the ordinary
meaning of the term ‘rotating.’”); see also Omega Eng’g, 334 F.3d at 1324 (“As a basic principle
of claim interpretation, prosecution disclaimer promotes the public notice function of the
intrinsic evidence and protects the public’s reliance on definitive statements made during
prosecution.”) (emphasis added); id. at 1325-26 (“[F]or prosecution disclaimer to attach, our
precedent requires that the alleged disavowing actions or statements made during prosecution be
both clear and unmistakable”) (emphasis added).
Finally, Defendants’ proposal of “held apart and do not fit snugly together” would tend to
confuse rather than clarify the scope of the claims. For example, presumably two non-flat sheets
could be held “snugly” together such that some portions would be in contact while other portions
would be held apart.
- 19 -
Defendants’ proposed construction is therefore hereby expressly rejected, and no further
construction is necessary. See U.S. Surgical, 103 F.3d at 1568; see also O2 Micro, 521 F.3d
at 1362; Finjan, 626 F.3d at 1207.
The Court accordingly hereby construes “an air gap between the film, sheet, plate or
substrate and the panel member” to have its plain meaning.
D. “predetermined”
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
“fixed”
Plain and ordinary meaning
(Dkt. No. 216, at 5; Dkt. No. 221, at 28.) The parties submit that this disputed term appears in
Claims 1, 13, 29, and 47 of the ’370 Patent, Claims 1 and 33 of the ’660 Patent, and Claim 1 of
the ’177 Patent.
(1) The Parties’ Positions
Plaintiff argues that “Defendants[’] ‘plain meaning’ construction runs the risk that that
[sic] the jury may improperly interpret this term as ‘chosen in advance,’ or some other similar
construction that would import a process limitation into apparatus claims or require an
unnecessary actor or choice.” (Dkt. No. 216, at 5.)
Defendants respond that the Court’s construction in Acer, proposed here by Plaintiff, was
based on extrinsic dictionary definitions, and Defendants note that Plaintiff has not submitted
any evidence at all as to this disputed term in the present case. (Dkt. No. 221, at 28-29.)
Defendants urge that “[a]bsent any evidence, intrinsic or otherwise, that ‘predetermined’ means
‘fixed,’ the term’s plain and ordinary meaning controls.” (Id., at 29.)
Plaintiff replies that Defendants have shown no reason why the Court should depart from
its prior construction. (Dkt. No. 224, at 2.)
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(2) Analysis
In Acer, the Court construed “predetermined” to mean “fixed,” and reasoned as follows
in rejecting the defendants’ proposal of “chosen in advance”:
Plaintiff properly objects that the word “chosen” may raise issues as to who does
the choosing. Likewise, the phrase “in advance” may raise issues as to “in
advance” of what. Nonetheless, the above-quoted dictionary definitions suggest
that “predetermined” means “fixed,” and at the July 30, 2014 hearing, Plaintiff
was amenable to such a construction, at least in principle. Further, such a
construction gives meaning to the prefix “pre-” by requiring a degree of
immutability that the word “determined” might not by itself demand.
Acer at 42; see id. at 41 (citing dictionary definitions submitted by the defendants). Defendants
have not justified departing from the Acer construction.
The Court therefore hereby construes “predetermined” to mean “fixed.”
E. “well defined optical elements or deformities” and “optical elements or deformities of
well defined shape”
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
“well defined” means “distinct” (otherwise,
plain meaning)
Indefinite
(Dkt. No. 216, at 6; Dkt. No. 221, at 8-9.) The parties submit that these disputed terms appear in
Claims 1, 16, 28, and 31 of the ’194 Patent.
(1) The Parties’ Positions
Plaintiff argues that the Court should reject Defendants’ indefiniteness argument for the
same reasons as in Acer. (Dkt. No. 216, at 6.)
Defendants respond:
While the specification and figures 4a-4d provide examples of deformities on the
panel member (i.e., “dots, squares, diamonds, ellipses, stars, random shapes, and
the like,” and “prismatic surfaces, depressions or raised surfaces of various
shapes[,]” Ex. 4, ’194 Patent, at 5:43-52; 5:67-6:17), and how deformities may be
produced (“molded, etched, stamped, thermoformed, hot stamped or the like into
or on one or more areas of the panel member,” id.), the specification never
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distinguishes between “deformities” and “well defined deformities.” See Gillespie
Decl., ¶¶168-171.
(Dkt. No. 221, at 8.) Defendants also argue that interpreting “well-defined” as meaning
“distinct” does not avoid indefiniteness because “a person of ordinary skill in the art at the time
of the alleged invention would have no sure way of delineating between films that have optical
elements or deformities that are ‘distinct’ or of a ‘distinct shape,’ and those that do not contain
‘distinct’ features.” (Id., at 9.) In other words, Defendants argue, “‘distinct’ is just as
ambiguous as ‘well defined,’ and again lacks support in the specification.” (Id. (citing
MediaTek, Inc. v. Sanyo Electric Co., 513 F. Supp. 2d 778, 791 (E.D. Tex. 2007)).)
Plaintiff replies that “Defendants restate the same argument that the Court rejected [in
Acer], namely that ‘distinct’ is just as ambiguous as ‘well defined.’” (Dkt. No. 224, at 2 (internal
quotation marks omitted).)
(2) Analysis
In Acer, the Court found:
The best reading of the claims, in light of the above-quoted passages from the
specification, is that the patentee used “well defined” to mean “distinct.” See
Phillips, 415 F.3d at 1314 (“In some cases, the ordinary meaning of claim
language as understood by a person of skill in the art may be readily apparent
even to lay judges, and claim construction in such cases involves little more than
the application of the widely accepted meaning of commonly understood
words.”). At the July 30, 2014 hearing, Plaintiff stated that it accepted and agreed
with the Court’s preliminary construction in this regard. Such a construction
gives proper meaning to “well defined” in the context of the claims by
distinguishing deformities from, for example, a gradual change in thickness (or
some other property) across the entire claimed panel or plate.
Such a construction also comports with the extrinsic dictionary definitions cited
by Plaintiff, which define “well-defined” as meaning “having clearly
distinguishable limits or boundaries.” [No. 2:13-cv-522,] Dkt. No. 69, Ex. C, The
Merriam-Webster Dictionary 599 (1998); see id., Ex. D, Merriam-Webster’s
Collegiate Dictionary 1338 (10th ed. 2002) (“having clearly distinguishable
limits, boundaries, or features”).
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Finally, as to the examiner’s use of the term “well defined” in the context of a
prior art rejection, the examiner did not explain the meaning of the term, so the
examiner’s remark is of limited weight.
Nonetheless, the examiner’s use of the term without objection provides further
support for finding that “well defined” has a readily understandable meaning in
the context of the claims and the specification.
Acer at 46-47 (citations omitted); see also Acer at 45-46 (citing ‘547 Patent at 5:41-50 &
5:65-6:16).)
Acer thus construed “well defined” to mean “distinct” and found no further construction
necessary. Acer at 47. On balance, Defendants have not justified departing from the findings
reached in Acer. See, e.g., ’194 Patent at 5:43-58 (disclosing examples of deformity shapes);5
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1260 (Fed. Cir. 2014) (“For other terms
like, for example, terms of degree, specific and unequivocal examples may be sufficient to
provide a skilled artisan with clear notice of what is claimed.”); Biosig, 2015 WL 1883265,
at *2, *5.
The Court therefore hereby construes “well defined” to mean “distinct.”
F. “pass through a liquid crystal display with low loss”
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
“[This term] does not limit the claims in which
it appears.”
Indefinite
(Dkt. No. 216, at 8; Dkt. No. 221, at 3-4.) The parties submit that this disputed term appears in
Claims 1 and 29 of the ’370 Patent and Claims 1, 16, and 28 of the ’194 Patent.
5
(See also Dkt. No. 216, Ex. L, 3/12/2015 Smith-Gillespie dep., at 77:22-78:10 (acknowledging
that deformities illustrated in Figures 4B and 4C are “distinct”).)
- 23 -
(1) The Parties’ Positions
Plaintiff argues that here as in Acer, the Court should find that this term is analogous to a
non-limiting whereby clause. (Dkt. No. 216, at 8.) Alternatively, Plaintiff argues: “One of
ordinary skill would further be informed of the scope of the term through the passage from the
specification that discusses low loss, and would have understood the term to cover the situation
when a more efficient light output is created by using deformities to cause light rays to emit at
predetermined ray angles from the backlight panel.” (Id., at 10 (citing ’194 Patent at 5:25-32).)
Defendants respond that this term is limiting because every word in a claim is presumed
to have meaning and because “the patentee deliberately added it during prosecution specifically
to secure allowance.” (Dkt. No. 221, at 4.) Defendants conclude that the disputed term “renders
the claim indefinite because no objective basis is provided by which the public can judge the
metes and bounds of the claims.” (Id., at 5.) Specifically, Defendants submit that “the patent
specification provides no standard or public notice as to what would constitute ‘low loss’ versus,
e.g., moderate or high loss.” (Id.) Defendants also submit the opinion of their expert that “there
was not a well-recognized industry-wide standard in 1995 for quantifying ‘loss’ of emitted light
in liquid crystal displays, or that would allow a person of ordinary skill to characterize any such
‘loss’ of emitted light as ‘low loss,’ as opposed to loss that was not ‘low loss.’” (Id., Ex. 3,
3/3/2015 Smith-Gillespie Decl., at ¶ 149.)
Plaintiff replies that “[t]he Court’s previous decision is supported by extensive case law
explaining that a simple expression of intended result does not limit claims.” (Dkt. No. 224,
at 3.)
- 24 -
(2) Analysis
In Acer, the Court found that “the specification reveals that the disputed term is a
statement of an objective of the claimed invention.” Acer at 53 (citing ’547 Patent at 1:21-25,
1:64-2:2 & 5:23-30)6; Acer at 54 (“The . . . clause ‘such that the light will pass through a liquid
crystal display with low loss’ merely states a result of the claim limitations and adds nothing to
the substance of the claim.”). “The Court therefore conclude[d] that the ‘low loss’ term is
analogous to a whereby clause and does not limit the claims in which it appears.” Id. (citing Tex.
Instruments Inc. v. U.S. Int’l Trade Comm’n, 988 F.2d 1165, 1172 (Fed. Cir. 1993); Lockheed
Martin Corp. v. Space Sys./Loral, Inc., 324 F.3d 1308, 1319 (Fed. Cir. 2003).).
Although Defendants here argue that, in Acer, “Magistrate Judge Payne did not have the
benefit of the opinion of one skilled in the art when deciding whether the term ‘low loss’ limited
the claims in which it appears” (Dkt. No. 221, at 4 n.2), the extrinsic expert opinions and
testimony cited by Defendants do not warrant departing from the conclusion reached in Acer.
See Phillips, 415 F.3d at 1318-19. Finally, although Defendants have cited authority for the
proposition that “when the ‘whereby’ clause states a condition that is material to patentability, it
cannot be ignored in order to change the substance of the invention,” Hoffer v. Microsoft Corp.,
405 F.3d 1326, 1329 (Fed. Cir. 2005), Defendants have not demonstrated that the disputed term
states a condition or limitation rather than an objective or result.
The Court therefore concludes that the “. . . with low loss” term does not limit the claims
in which it appears, and no further construction is necessary.
6
These passages also appear in the ’194 Patent and the ’370 Patent.
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V. CONSTRUCTION OF DISPUTED TERMS NOT PREVIOUSLY CONSTRUED
A. “one or more secondary flat, angled, faceted or curved reflective or refractive surfaces”
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
Plain meaning
“reflective or refractive surfaces that reflect or
refract a portion of the light around one or
more corners or curves in a non-rectangular
shaped tray”
(Dkt. No. 216, at 11; Dkt. No. 221, at 26-27.) The parties submit that this disputed term appears
in Claims 1 and 15 of the ’177 Patent.
(1) The Parties’ Positions
Plaintiff argues that “Defendants have not shown that a clear indication exists in the
intrinsic record that the inventor of the ’177 patent intended to limit this claim term to the written
description of the embodiment shown in Figure 6.” (Dkt. No. 216, at 11.)
Defendants respond that “the inventor supplied his own definition for ‘secondary . . .
surfaces’ with reference to Figure 6 (shown below): ‘[O]ne or more secondary reflective or
refractive surfaces 38 may be provided on the panel member 33 and/or the tray 35 to reflect a
portion of the light around one or more corners or curves in a non-rectangular shaped panel
member 33.” (Dkt. No. 221, at 27 (quoting ’177 Patent at 7:3-7) (emphasis Defendants’).)
Defendants urge, for example, that “while back reflectors direct the light back through the
opposite side of the panel member, the distinct purpose of the secondary surface is to reflect
around one or more corners or curves.” (Dkt. No. 221, at 28 (citing ’177 Patent at 6:18-29,
6:67-7:3, Fig. 5 & Abstract; citing Dkt. No. 221, Ex. 3, 3/3/2015 Smith-Gillespie Decl., at
¶¶ 86-87 & 185-189).)
Plaintiff replies that “Defendants’ argument confuses a description of a single
embodiment with an explicit definition of a term.” (Dkt. No. 224, at 4.)
- 26 -
At the April 29, 2015 hearing, Defendants emphasized that the language of the disputed
term matches disclosure in the specification that corresponds with Figure 6. Defendants also
urged that because the claims separately recite a “back,” “side edge,” and “end edge” in addition
to a “secondary” edge, the claims imply that the tray is not rectangular. Plaintiff replied that the
disputed term refers to secondary surfaces, not secondary edges.
(2) Analysis
Defendants have cited Figure 6 and the accompanying description, but no lexicography
or disclaimer is apparent. See Bell Atl. Network Servs., Inc. v. Covad Commc’ns Grp., Inc., 262
F.3d 1258, 1268 (Fed. Cir. 2001) (“The specification acts as a dictionary when it expressly
defines terms used in the claims or when it defines terms by implication.”) (citation and internal
quotation marks omitted); see also Abbott Labs. v. Syntron Bioresearch, Inc., 334 F.3d 1343,
1354 (Fed. Cir. 2003) (“patentee’s lexicography must, of course, appear with reasonable clarity,
deliberateness, and precision”) (citation and internal quotation marks omitted).
Instead, the claims merely use the term “secondary” to distinguish the “secondary . . .
surfaces” from the recited “back, side edge, and end edge.” See ’177 Patent at Claims 1 & 15.
The Court hereby expressly rejects Defendants’ proposal to limit the disputed term to the
embodiment illustrated in Figure 6. See MBO Labs., 474 F.3d at 1333 (“[P]atent coverage is not
necessarily limited to inventions that look like the ones in the figures.”).
No further construction is necessary. See U.S. Surgical, 103 F.3d at 1568; see also O2
Micro, 521 F.3d at 1362; Finjan, 626 F.3d at 1207.
The Court accordingly hereby construes “one or more secondary flat, angled, faceted
or curved reflective or refractive surfaces” to have its plain meaning.
- 27 -
B. “in close proximity”
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
Plain meaning
Indefinite
(Dkt. No. 216, at 11; Dkt. No. 221, at 10.) The parties submit that this disputed term appears in
Claim 7 of the ’177 Patent.
(1) The Parties’ Positions
Plaintiff notes that the defendants in Acer did not challenge the definiteness of this term,
and “[t]he term ‘in close proximity’ is a simple term, and one of ordinary skill in the art would
have had a common sense understanding of the scope of this term in light of the subject matter of
the patent.” (Dkt. No. 216, at 13.)
Defendants respond that “[t]he intrinsic record provides no guidance as to when a light
source is ‘in close proximity’ to ‘a group of the refractive or reflective surfaces.’” (Dkt. No. 221,
at 10.)
Plaintiff replies: “Although Fig. 6 shows a reflective surface (37) in close proximity to a
light source, Defendants argue that it is irrelevant because element 37 is allegedly not a
secondary surface. But the mere use of the word ‘secondary’ in the claims does not render
incomprehensible an otherwise easily understood example of a reflector in close proximity that is
sufficient to disclose the full scope of the term.” (Dkt. No. 224, at 5.)
(2) Analysis
Claim 7 of the ’177 Patent depends from Claim 6, which in turn depends from Claim 1.
Claims 1, 6, and 7 recite (emphasis added):
1. A light emitting assembly comprising a tray having a back wall and continuous
side walls that form a hollow cavity or recess completely surrounded by the side
walls, at least one light source located, mounted or positioned in the cavity or
recess, and at least one sheet, film or substrate overlying the assembly for
- 28 -
controlling the light emitted from the assembly to fit a particular application,
wherein the tray acts as at least one of a back, side edge, and end edge reflector
and has one or more secondary flat, angled, faceted or curved reflective or
refractive surfaces to redirect at least a portion of the light emitted by the light
source in a predetermined manner within the cavity or recess.
***
6. The assembly of claim 1 wherein there are at least two light sources located,
mounted or positioned in the cavity or recess.
7. The assembly of claim 6 wherein each light source is positioned in close
proximity to a group of the refractive or reflective surfaces.
The specification does not use the terms “close” or “proximity.” Defendants’ expert
opines that a person of skill in the art would not have understood the scope of “in close
proximity.” (Dkt. No. 221, Ex. 3, 3/3/2015 Smith-Gillespie Decl., at ¶¶ 11, 180, 194 & 196;
but see Dkt. No. 216, Ex. L, 3/12/2015 Smith-Gillespie dep., at 82:9-14.) Plaintiff’s expert has
stated that “in close proximity” is “a comparative judgment” and “no specific measurement
applies.” (Dkt. No. 221, Ex. 2, 3/9/2015 Werner dep., at 88:5-9; see id., at 89:7-9 (“‘Close
proximity’ specifies things that are close relative to the overall structure or in the context of the
overall structure.”).) Also, Plaintiff’s expert has testified that he could not determine, for
example, whether elements 53 and 55 in Figure 9 of the ’177 Patent depict elements that are “in
close proximity” to each other. (Id., at 89:10-19.)
In some cases, “proximity” has been found indefinite. See Abdou v. Alphatec Spine, Inc.,
No. 12-CV-1804, 2014 WL 6611422, at *9 (S.D. Cal. Nov. 19, 2014) (Benitez, J.) (finding that
“in proximity to” “does not state with reasonable certainty what that proximity is”). The Court
reached a similar conclusion in Acer as to the term “quite small.” See Acer at 47-51.
Yet, Plaintiff has cited several authorities finding that terms such as “near” or “close
proximity” are not necessarily indefinite. See Accentra, Inc. v. Staples, Inc., 500 F. App’x 922,
- 29 -
930-31 (Fed. Cir. 2013); see also Young v. Lumenis, Inc., 492 F.3d 1336, 1345-46 (Fed. Cir.
2007); Rosemount, Inc. v. Beckman Instruments, Inc., 727 F.2d 1540, 1547 (Fed. Cir. 1984);
Power-One, Inc. v. Artesyn Techs, Inc., 599 F.3d 1343, 1348 (Fed. Cir. 2010).
Further, in these cases, including Accentra, the court found sufficient context set forth in
the claims and the specifications:
Nor do we believe that the use of the term “near” in the claims (“a pressing area
near a front end of the handle”) renders the . . . patent indefinite. “Near” is a word
whose meaning is dictated by context. We have previously held that the term
“near” is not indefinite when used to denote a particular location and when the
context does not create insoluble ambiguity. Staplers require leverage on the
handle to operate and, as the patent makes clear, users typically apply pressure
near the front of the handle, where the lever’s mechanical advantage is the
greatest. In this context, we find that the term is sufficiently precise to describe
the location of the area that is pressed to discharge staples. The word is used
throughout the . . . patent in a variety of contexts, including in other claims.
Consistent with its ordinary meaning, we construe it to mean “at or in the vicinity
of.” Whatever play remains in that construction is not enough to render the patent
indefinite.
Accentra, 500 F. App’x at 930-31 (citations and footnote omitted); see Young, 492 F.3d
at 1345-46 (discussing disclosures in the specification and finding that, in the relevant art, “the
term ‘near’ is not insolubly ambiguous and does not depart from the ordinary and customary
meaning of the phrase ‘near’ as meaning ‘close to or at’”); Rosemount, 727 F.2d at 1547 (“close
proximity” found not indefinite, the court noting the challenger’s “own ease in applying ‘close
proximity’ to the prior art at trial and in its briefs here, the use of ‘close proximity’ in the claims
of one of its references, its own use of ‘close proximity’ in describing its pH meters, its own
witness’ statement that he had no trouble understanding the claims of the . . . patent, the specific
acceptance of ‘close proximity’ by the examiner and by the industry, and the district court’s
finding that ‘close proximity’ is as precise as the subject matter permits”); Power-One, 599 F.3d
at 1348 (“Claims using relative terms such as ‘near’ or ‘adapted to’ are insolubly ambiguous
- 30 -
only if they provide no guidance to those skilled in the art as to the scope of that requirement.
Here, a person of ordinary skill in the field would understand the meaning of ‘near’ and ‘adapted
to’ because the environment dictates the necessary preciseness of the terms.”) (citations omitted).
Admittedly, Young, Rosemount, and Power-One all predate the Supreme Court’s decision
in Nautilus. Nonetheless, after Nautilus the Federal Circuit set forth similar principles on
remand and in the DDR Holdings case cited by Plaintiff in its reply brief. See Biosig, 2015 WL
1883265, at *3 (“terms of degree” not inherently indefinite); see also DDR Holdings, 773 F.3d
at 1260 (“For other terms like, for example, terms of degree, specific and unequivocal examples
may be sufficient to provide a skilled artisan with clear notice of what is claimed.”).
In sum, the disputed term “in close proximity,” in the context of surrounding claim
language and the specification, “inform[s] those skilled in the art about the scope of the invention
with reasonable certainty.” Nautilus, 134 S. Ct. at 2129. The Court therefore hereby expressly
rejects Defendants’ indefiniteness argument, and no further construction is necessary. See U.S.
Surgical, 103 F.3d at 1568; see also O2 Micro, 521 F.3d at 1362.
The Court accordingly hereby construes “in close proximity” to have its plain meaning.
C. “positioned near,” “positioned near the light emitting surface . . . and air gap between,”
and “positioning a film near”
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
Plain meaning
Indefinite
(Dkt. No. 216, at 14; Dkt. No. 221, at 14-15.) The parties submit that these disputed terms
appear in Claims 1 and 23 of the ’194 Patent and Claims 1, 3, 5, 7, and 13 of the ’974 Patent.
(1) The Parties’ Positions
Plaintiff incorporates its arguments as to the term “in close proximity,” above, and
submits that the meaning of “near” is further illuminated by examples such as film 27 positioned
- 31 -
near the light emitting surface of panel 14 in Figure 5, as well as at least one LED light source
positioned near or against the light entrance surface. (Dkt. No. 216, at 14-15.)
Defendants respond that “[n]either the surrounding claim language, nor the specifications
(where ‘near’ only appears in the Abstracts), provide . . . objective boundaries or any explanation
of what constitutes ‘near’ in this context.” (Dkt. No. 221, at 15 (citing, e.g., Advanced Display
Techs. of Texas, LLC v. AU Optronics Corp., No. 6:11-CV-391, 2012 WL 2872121, at *14-*15
(E.D. Tex. July 12, 2012) (Davis, J.) (finding “highly modulated” and “smooth bumps”
indefinite because patent disclosed no objective anchor or standard)).)
Plaintiff replies by reiterating that “[i]n his 96-page declaration, Defendants’ expert never
even alleges indefiniteness for these terms,” and “the specification includes examples of
‘positioned near’ as cited in Plaintiffs’ Opening Brief.” (Dkt. No. 224, at 5.)
(2) Analysis
Claim 1 of the ’194 Patent, for example, recites (emphasis added):
1. A light emitting assembly comprising at least a light emitting panel member
having a light emitting surface, at least one light source, at least one film, sheet,
plate or substrate positioned near the light emitting surface through which light
from the panel member is emitted, and an air gap between the film, sheet, plate or
substrate and the panel member, wherein at least one surface of the film, sheet,
plate or substrate has one or more reflective or refractive surfaces, and at least one
of the reflective or refractive surfaces has well defined optical elements or
deformities for controlling the emitted light such that at least some of the light is
redirected to pass through a liquid crystal display with low loss.
On one hand, “[w]hen a proposed construction requires that an artisan make a separate
infringement determination for every set of circumstances in which the composition may be
used, and when such determinations are likely to result in differing outcomes (sometimes
infringing and sometimes not), that construction is likely to be indefinite.” Halliburton Energy
Servs. v. M-I LLC, 514 F.3d 1244, 1254-55 (Fed. Cir. 2008). Defendants have cited various
- 32 -
statements by Plaintiff’s expert, such as that “near” is a “foggy,” relative term. (See Dkt.
No. 221, Ex. 3, 3/9/2015 Werner dep., at 83:6-19, 88:1-89:19, 127:17-128:3, 128:12-129:1,
129:14-130:1 & 131:4-133:8.)
On the other hand, Plaintiff’s expert has also opined that a person of ordinary skill in the
art would have an understanding of “near” as applied in particular circumstances. See id.
at 130:11-131:3; see also id. at 131:13-15. The specification provides context. See ’194 Patent
at 4:65-5:2, 6:29-33 (“a transparent film, sheet or plate 27 may be attached or positioned against
the side or sides of the panel member from which light is emitted using a suitable adhesive 28 or
other method in order to produce a desired effect”), 6:39-54, Abstract (“The film, sheet, plate or
substrate may be positioned near the light emitting surface of a light emitting panel member with
an air gap therebetween or over a cavity or recess in a tray through which light from a light
source in the cavity or recess is emitted.”) (emphasis added) & Figs. 3 & 5. Also of note,
although Defendants have submitted a declaration by Defendants’ expert opining that the term
“in close proximity” (addressed above) is indefinite, Defendants’ expert’s declaration does not
address the “positioned near” terms.
On balance, the specification provides sufficient context for a person of ordinary skill in
the art to understand the disputed terms with “reasonable certainty.” Nautilus, 134 S. Ct.
at 2129. The Court therefore hereby expressly rejects Defendants’ indefiniteness argument, and
no further construction is necessary. See U.S. Surgical, 103 F.3d at 1568; see also O2 Micro,
521 F.3d at 1362.
The Court accordingly hereby construes “positioned near,” “positioned near the light
emitting surface . . . and air gap between,” and “positioning a film near” to have their plain
meaning.
- 33 -
D. “optical elements”
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
Plain meaning
Indefinite
(Dkt. No. 216, at 15; Dkt. No. 221, at 6-8.) The parties submit that this disputed term appears in
Claims 1, 16, and 31 of the ’194 Patent and Claims 13 and 47 of the ’370 Patent.
(1) The Parties’ Positions
Plaintiff submits that “the specification clearly describes ‘elements’ that one of ordinary
skill would understand as ‘optical elements.’” (Dkt. No. 216, at 16 (citing ’194 Patent
at 5:43-50).)
Defendants respond that “optical elements” and “deformities” “are presumed to have
different meanings because they appear in the same claim.” (Dkt. No. 221, at 7.) Defendants
urge that “[w]ithout any discussion of ‘optical elements’ or how ‘optical elements’ differ from
‘deformities,’ a person of ordinary skill in the art could not determine the scope of the claims
with reasonable certainty.” (Id.)
Plaintiff replies that “optical elements” and “deformities” are used interchangeably.
(Dkt. No. 224, at 5-6.)
At the April 29, 2015 hearing, Defendants urged that the broad meaning of the disputed
term in the art, coupled with the broad meaning of “deformity” set forth in the specification,
leaves a person of ordinary skill in the art unable to ascertain the difference between the two.
(2) Analysis
Claim 1 of the ’194 Patent, for example, recites (emphasis added):
1. A light emitting assembly comprising at least a light emitting panel member
having a light emitting surface, at least one light source, at least one film, sheet,
plate or substrate positioned near the light emitting surface through which light
from the panel member is emitted, and an air gap between the film, sheet, plate or
- 34 -
substrate and the panel member, wherein at least one surface of the film, sheet,
plate or substrate has one or more reflective or refractive surfaces, and at least one
of the reflective or refractive surfaces has well defined optical elements or
deformities for controlling the emitted light such that at least some of the light is
redirected to pass through a liquid crystal display with low loss.
The specification discloses:
Print patterns of light extracting deformities 21 may vary in shapes such as dots,
squares, diamonds, ellipses, stars, random shapes, and the like, and are desirably
0.006 square inch per deformity/element or less. Also, print patterns that are 60
lines per inch or finer are desirably employed, thus making the deformities or
shapes 21 in the print patterns nearly invisible to the human eye in a particular
application thereby eliminating the detection of gradient or banding lines that are
common to light extracting patterns utilizing larger elements. Additionally, the
deformities may vary in shape and/or size along the length and/or width of the
panel members. Also, a random placement pattern of the deformities may be
utilized throughout the length and/or width of the panel members. The
deformities may have shapes or a pattern with no specific angles to reduce moiré
or other interference effects.
’194 Patent at 5:43-58 (emphasis added).
On one hand, the reference to “deformity/element” might be read as meaning that the
terms “deformity” and “element” are synonymous and are used interchangeably. See Baran v.
Med. Device Techs., Inc., 616 F.3d 1309, 1316 (Fed. Cir. 2010) (“th[e] implication [that the use
of different terms implies that they have different meanings] is overcome where, as here, the
evidence indicates that the patentee used the two terms interchangeably”); see also Tehrani v.
Hamilton Medical, Inc., 331 F.3d 1355, 1361 (Fed. Cir. 2003) (“We agree . . . that the intrinsic
evidence indicates that the patentee meant for those two terms [(‘indicative of’ and
‘representing’)] to be interchangeable and to carry the same meaning within the claims.”); TQP
Development, LLC v. Intuit Inc., No. 2:12-CV-180, 2014 WL 706056, at *5 (E.D. Tex. Feb. 21,
2014) (Bryson, J.) (noting that the inference of different meanings “can be overcome if the
contrary evidence is strong,” and finding that “[t]he specification shows that the two verbs
[(‘produced’ and ‘generated’)] are used interchangeably in the patent”).
- 35 -
On the other hand, “we must presume that the use of . . . different terms in the claims
connotes different meanings.” CAE Screenplates, Inc. v. Heinrich Fiedler GmbH & Co. KG, 224
F.3d 1308, 1317 (Fed. Cir. 2000); accord Primos, Inc. v. Hunter’s Specialties, Inc., 451 F.3d
841, 848 (Fed. Cir. 2006) (“[T]he terms ‘engaging’ and ‘sealing’ are both expressly recited in the
claim and therefore ‘engaging’ cannot mean the same thing as ‘sealing’; if it did, one of the
terms would be superfluous.”); Chi. Bd. Options Exch., Inc. v. Int’l Sec. Exch., LLC, 677 F.3d
1361, 1369 (Fed. Cir. 2012) (noting “[t]he general presumption that different terms have
different meanings”). Also, Defendants’ persuasively argued at the April 29, 2015 hearing that
the use of a slash does not necessarily indicate synonyms, Defendants having suggested the
example of a “pass/fail” examination.
On balance, Plaintiff has not overcome this presumption here. The recital in the abovequoted claim of “optical elements or deformities,” read in view of the above-quoted disclosure in
the specification, demonstrates that “deformities” are a type of optical element.
As to whether the scope of the disputed term is reasonably certain, Defendants’ expert
has acknowledged that the term “optical elements” can refer to “a broad spectrum of . . .
components,” and “it’s an element that’s placed in a - - in a light path to do something to the
light, to condition the light in some form,” such as “lenses, beam splitters, polarizers, [and]
diffraction gratings.” (Dkt. No. 216, Ex. L, 3/12/2015 Smith-Gillespie dep., at 33:6-34:6.) A
“deformity,” by contrast, as the parties have agreed, is “any change in the shape or geometry of a
surface and/or coating or surface treatment that causes a portion of the light to be emitted.” (Dkt.
No. 202, 2/20/2015 P.R. 4-3 Joint Claim Construction and Prehearing Statement, at 3; Dkt.
No. 228, 4/15/2015 P.R. 4-5 Joint Claim Construction Chart, at 3.) Further, the specification
provides examples of deformities, as quoted above. See ’194 Patent at 5:43-58; see also DDR
- 36 -
Holdings, 773 F.3d at 1260 (“specific and unequivocal examples may be sufficient to provide a
skilled artisan with clear notice of what is claimed”).
Defendants’ indefiniteness argument, namely that the distinction between “elements” and
“deformities” cannot be understood with reasonable certainty, is therefore hereby expressly
rejected. No further construction is necessary. See U.S. Surgical, 103 F.3d at 1568; see also O2
Micro, 521 F.3d at 1362.
The Court accordingly hereby construes “optical elements” to have its plain meaning.
E. “facilitate better mixing of light rays within the cavity or recess”
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
Plain meaning
Indefinite
(Dkt. No. 216, at 16; Dkt. No. 221, at 12.) The parties submit that this disputed term appears in
Claim 15 of the ’177 Patent.
(1) The Parties’ Positions
Plaintiff argues: “The question of how to determine whether ‘better mixing’ exists is
clear: when the claimed secondary surface is present in an apparatus is there better mixing than
without the claimed secondary surface?” (Dkt. No. 216, at 17.)7
Defendants respond that “[n]o standards, thresholds, or examples are provided to identify
‘better mixing.’” (Dkt. No. 221, at 12.)
7
Plaintiff has also quoted the transcript of a deposition of Defendants’ expert, but the cited page
of the transcript is not included with the excerpts submitted by Plaintiff. (Dkt. No. 216, at 16 &
n.81 (citing “Gillespie Transcript at 93:12-18”); see Dkt. No. 216, Ex. L, 3/12/2015 SmithGillespie dep.; see also Dkt. No. 221, Ex. 26.)
- 37 -
Plaintiff replies that “Defendants’ inaccurate interpretation of the deposition of
Mr. Werner [(Plaintiff’s expert)] cannot erase the clear disclosure of the intrinsic record,” such as
“the claim language cited in Plaintiff’s Opening Brief.” (Dkt. No. 224, at 6.)
At the April 29, 2015 hearing, Defendants argued that without a starting point of
reference for comparison, the comparative term “better” has no understandable meaning.
Plaintiff replied that the point of reference is whatever mixing would occur in the absence of a
secondary surface. Alternatively, Plaintiff argued that the Court could find that this disputed
term is not a limitation and instead merely refers to a use of the secondary surfaces.
(2) Analysis
Claim 15 of the ’177 Patent recites (emphasis added):
15. A light emitting assembly comprising a tray having a back wall and
continuous side walls that form a hollow cavity or recess completely surrounded
by the side walls, at least two light sources located, mounted or positioned in the
cavity or recess, and at least one sheet, film or substrate overlying the assembly
for controlling the light emitted from the assembly to fit a particular application,
wherein the tray acts as at least one of a back, side edge and end edge reflector
and has at least one secondary flat, angled, faceted or curved reflective or
refractive surface to facilitate better mixing of light rays within the cavity or
recess to produce a desired light output color or uniformity.
The specification discloses configuring light sources so as to improve mixing:
The light sources 3 may be oriented at different angles relative to each other and
offset to facilitate better mixing of the light rays 67 in the transition area 63 as
schematically shown in FIG. 10 and/or to permit a shorter length transition
area 63 to be used.
’177 Patent at 8:12-16 (emphasis added); see id. at Fig. 10.
A plain reading of the claim language, particularly in light of the use of “better mixing”
in the specification, is that “better mixing” means that the mixing is better than the mixing would
be without the secondary surface. Plaintiff’s expert agrees. (Dkt. No. 216, Ex. O, 3/9/2015
Werner dep., at 80:2-7.)
- 38 -
The Court therefore hereby expressly rejects Defendants’ indefiniteness argument. No
further construction is necessary. See U.S. Surgical, 103 F.3d at 1568; see also O2 Micro, 521
F.3d at 1362.
The Court accordingly hereby construes “facilitate better mixing of light rays within
the cavity or recess” to have its plain meaning.
F. “more in the width direction”
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
Plain meaning
Indefinite
(Dkt. No. 216, at 17; Dkt. No. 221, at 13.) The parties submit that this disputed term appears in
Claim 1 of the ’816 Patent.
(1) The Parties’ Positions
Plaintiff argues: “(1) the specification does specify the width dimension; and (2) one of
ordinary skill in the art would have known the width dimension with reasonable certainty
without any direct statements defining ‘width’ in the specification.” (Dkt. No. 216, at 18.)
Further, Plaintiff argues that all of the disclosures in the Display Patents point to the same
identification of dimensions: (1) the length correlates to the dimension that spans the edge where
light enters to the panel to the far opposite edge of the panel; (2) the thickness correlates to the
smallest dimension, which gives the panel depth, and (3) the width correlates to the remaining
dimension, i.e., the dimension of the light source that is parallel with line 13 in Fig. 1.” (Id.)
Finally, Plaintiff urges that “[f]rom reading th[e] claim limitation, one of ordinary skill in the art
would know that the ‘more’ comparison is made between the ‘width’ dimension and the other
dimension(s) in which light is refracted by the input edge.” (Dkt. No. 216, at 22.)
- 39 -
Defendants respond that “one of ordinary skill in the art could not determine with
reasonable certainty the various refractive input edge structures that fall within the scope of the
claim that redirect light ‘more in the width direction.’” (Dkt. No. 221, at 13.) Defendants submit
that “[b]ecause there is no disclosure concerning this limitation, it is impossible for a person of
skill in the art to select among . . . equally reasonable alternative meanings.” (Id., at 14.)
Plaintiff replies that “the only two dimensions of refraction for this claim limitation are
width and height, and ‘more in the width direction’ must mean more in the width direction than
the height direction.” (Dkt. No. 224, at 7.)
At the April 29, 2015 hearing, Defendants reiterated that “more” could refer to a
comparison with the light output distribution as emitted from the light source before reaching the
recited refractive surface. Defendants concluded that the existence of multiple reasonable but
divergent interpretations renders the claim indefinite.
(2) Analysis
Claim 1 of the ’816 Patent recites (emphasis added):
1. A light emitting assembly comprising at least one light source, a light emitting
panel member having at least one input edge for receiving light from the light
source and a light emitting surface, a tray or housing having a cavity or recess in
which the panel member is entirely received, wherein the panel member has a
pattern of light extracting deformities on or in at least one surface to cause light to
be emitted from the light emitting surface of the panel member, end edge
reflectors and side edge reflectors, and an additional component overlying the
panel member, wherein the panel member has a greater width than height, and the
light input edge has a refractive surface that redirects the light output distribution
of the light source more in the width direction as the light enters the panel
member.
The specification of United States Patent No. 4,897,771 (“the ’771 Patent,” incorporated
by reference in the ’816 Patent, see ’816 Patent at 4:20-23), discloses:
In still another form of reflector and light system 38 shown in FIG. 10, the
collecting reflector 39 is elongated in the transverse plane to accommodate a line
- 40 -
filament lamp 40 located substantially at the focus F of the collecting reflector
which extends substantially the full width thereof. Also, the back reflector 41
may be a flat rectangular mirror whose focus is outside a long narrow optical
window 42 extending substantially the full width of the smaller open end 43 of the
collecting reflector.
’771 Patent at 7:41-49 (emphasis added). Figure 10 of the ’771 Patent is reproduced here:
The specification of the ’816 Patent discloses:
The light that is transmitted by the light transition area 4 to the transparent light
emitting panel 2 may be emitted along the entire length of the panel or from one
or more light output areas along the length of the panel as desired to produce a
desired light output distribution to fit a particular application.
’816 Patent at 3:6-11 (emphasis added); see id. at 5:52-55 (“deformities may vary in shape
and/or size along the length and/or width of the panel members”).
Providing one or more transition areas at one or both ends of the panel member of
any desired dimension to accommodate one or more light sources, with reflective
and/or refractive surfaces on the transition areas for redirecting the light rays into
the panel member at relatively low angles allows the light emitting panel member
to be made much longer and thinner than would otherwise be possible. For
example the panel members of the present invention may be made very thin, i.e.,
0.125 inch thick or less.
Id. at 8:24-32 (emphasis added).
Plaintiff’s expert identifies the width dimensions in Figures 1 and 2 of the ’816 Patent as
shown in figures annotated by Plaintiff’s expert, which are reproduced here:
- 41 -
(Dkt. No. 216, Ex. K, 3/4/2015 Werner Decl. at ¶ 12 (p. 10).) This is also consistent with
surrounding claim language that recites “the panel member has a greater width than height,” as
quoted above.
Ultimately, however, Defendants have focused not on which direction is the “width”
direction but rather on the comparative term “more.”
Defendants maintain that “[a]s Mr. Smith-Gillespie [(Defendants’ expert)] has explained,
there are at least three reasonable interpretations of this phrase to a person of skill in the art:
(i) light is redirected ‘more in the width direction’ than the light was otherwise traveling after
exiting the light source; (ii) light is redirected ‘more in the width direction’ than in the height
direction; or (iii) light is redirected ‘more in the width direction’ than in the length direction.”
(Dkt. No. 221, at 13-14.) In some circumstances, “if a person of ordinary skill would determine
that there are multiple equally plausible but materially dissimilar constructions of a claim term,
the claim would fail the ‘reasonable certainty’ standard, even if none of the competing
constructions are ‘insolubly ambiguous.’” Diamond Coating Techs., LLC v. Hyundai Motor
Am., No. 8:13-CV-01480, -01481, 2014 WL 5698445, at *4 (C.D. Cal. Aug. 25, 2014)
(Pfaelzer, J.).
As a threshold matter, Plaintiff has urged that Defendants’ interpretation “(iii)” is not
plausible because “light can never refract in the length dimension; it only refracts along the
- 42 -
dimensions of the input edge, i.e., width and height.” (Dkt. No. 224, at 7.) For the sake of
argument, the Court assumes, without deciding, that Plaintiff is correct in this regard.
Plaintiff argues that Defendants’ interpretation “(ii)” is the appropriate interpretation
because, as explained by Plaintiff’s expert, “[o]ne of ordinary skill in the art would understand
that height/thickness is a comparison dimension because it is the only other dimension that light
can be refracted in the claimed scenario.” (Dkt. No. 216, Ex. K, 3/4/2015 Werner Decl., at ¶ 12,
pp. 14-15.) Thus, the parties evidently agree that this is a plausible interpretation. The
remaining issue, then, is whether Defendants’ interpretation “(i)” is plausible.
Plaintiff urges that Defendants’ interpretation “(i)” is not plausible because “the word
‘more’ implies a comparison to another dimension.” (Dkt. No. 216, at 7 (citing Dkt. No. 216,
Ex. K, 3/4/2015 Werner Decl., at ¶ 12).)
This is far from clear. Plaintiff has failed to adequately demonstrate that the word
“more” cannot refer to what might colloquially be referred to as a “before and after” comparison.
The relevant above-quoted claim language recites that “the light input edge has a refractive
surface that redirects the light output distribution of the light source more in the width direction
as the light enters the panel member.” Thus, a person of ordinary skill in the art could
reasonably interpret the claim as requiring merely that, when light enters the panel member, the
refractive surface widens the light distribution.
This interpretation differs substantially from the dimensional comparison that Plaintiff
suggests is the only plausible interpretation. In particular, under Defendants’ interpretation “(i),”
so long as the refractive surface causes the light distribution to be wider than it would be
otherwise, the “more in the width direction” limitation is satisfied. This would apparently be
- 43 -
true even if the refractive surface also causes the light distribution to be expanded in the height
direction to an even greater extent than in the width direction.
Defendants have shown that both of these divergent interpretations are plausible, and
Plaintiff has failed to adequately demonstrate that its preferred interpretation is necessarily the
correct one. Instead, Plaintiff essentially proposes replacing “more in the width direction” with
“more in the width direction than the height direction.” This would amount to an impermissible
redrafting of the claim. See K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1364 (Fed. Cir. 1999)
(“Courts do not rewrite claims; instead, we give effect to the terms chosen by the patentee.”); see
also Chef Am., Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1374 (Fed. Cir. 2004) (“[C]ourts may
not redraft claims, whether to make them operable or to sustain their validity.”). As a result, the
claim language at issue fails to “inform those skilled in the art about the scope of the invention
with reasonable certainty.” Nautilus, 134 S. Ct. at 2129.
The Court accordingly hereby finds that “more in the width direction” is indefinite.
G. “output distribution defined by a greater width component than height component”
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
Plain meaning
Indefinite
(Dkt. No. 216, at 22; Dkt. No. 221, at 19.) The parties submit that this disputed term appears in
Claims 1, 33, and 34 of the ’660 Patent.
(1) The Parties’ Positions
Plaintiff argues that the reference to the “width component” is clear for the reasons set
forth as to the term “more in the width direction,” above. (Dkt. No. 216, at 23.) As to the
“height component,” Plaintiff argues that “[o]ne of ordinary skill in the art would have
understood that the height dimension and the thickness dimension both represent the same
- 44 -
directional dimension.” (Id.) Further, Plaintiff argues, “the phrase ‘light output distribution’ is
scattered throughout the specification of the Display Patents, each time informing one of
ordinary skill in the art about its scope.” (Id., at 24.)
Defendants respond that “[t]his phrase is indefinite because the patent lacks any
disclosure as to where the ‘output distribution’ is measured to determine whether it has a ‘greater
width component.’” (Dkt. No. 221, at 19.)
Plaintiff replies: “The plain reading of that term shows that the output distribution is
measured at the light sources – the light sources themselves are ‘generating light having an
output distribution defined by a greater width component than height component.’” (Dkt.
No. 224, at 8.)
(2) Analysis
Defendants’ expert has acknowledged that “light output distribution” refers to spatial
uniformity. (Dkt. No. 216, Ex. L, 3/12/2015 Smith-Gillespie dep., at 28:15-29:4.) Also, the
parties do not appear to substantially dispute the meaning of “width” and “height” or
“thickness,” at least for purposes of this disputed term.8
Instead, the dispute appears to concern how the “distribution” is measured. Defendants
argue: “the ’660 Patent provides no reasonable certainty as to whether the dimensions of the
‘output distribution’ are measured (i) from each individual light source in isolation, (ii) at some
other point within the panel assembly (e.g., following the transition area), (iii) from the output
region of the panel assembly; or (iv) at each of the aforementioned locations.” (Dkt. No. 221,
8
Height and thickness, if not necessarily identical, are closely related. For example, United
States Patent No. 5,005,108, which the ’660 Patent incorporates by reference (see ’660 Patent
at 4:12-16), discloses a “wave” panel in which the height of the wave is approximately twice the
thickness of the panel.
- 45 -
at 19.) Defendants have also cited testimony by Plaintiff’s expert that purportedly demonstrates
inherent confusion regarding this disputed term. (See Dkt. No. 221, Ex. 2, 3/9/2015 Werner
dep., at 57:1-6, 67:5-7 & 137:12-22.)
On balance, however, the disputed term is sufficiently clear on its face, when read in the
context of the surrounding claim language, that whatever light source is directed into the optical
conductor provides more light along a width direction than along a height direction. Also of
note, the examiner, in the Notice of Allowability, relied upon the language of the disputed term.
(See Dkt. No. 224, Ex. O, Reasons for Allowance.) The Court therefore hereby expressly rejects
Defendants’ indefiniteness argument. No further construction is necessary. See U.S. Surgical,
103 F.3d at 1568; see also O2 Micro, 521 F.3d at 1362.
Some discussion is nonetheless appropriate to address the parties’ dispute as to where the
output distribution is measured. At the April 29, 2015 hearing, Plaintiff submitted that it has
always maintained that the output distribution is measured at the light source. Plaintiff further
explained that where a claim refers to an individual light source, the output distribution is
measured at that light source, and where a claim refers to multiple light sources, the output
distribution is measured at a “combined” point. The claims at issue are Claims 1, 33, and 34,
which recite (emphasis added):
1. A light emitting panel assembly comprising:
a generally planar optical conductor having at least one input edge with a
greater cross-sectional width than thickness; and
a plurality of light sources configured to generate light having an output
distribution defined by a greater width component than height component, the
light sources positioned adjacent to the input edge, thereby directing light into the
optical conductor;
the optical conductor having at least one output region and a
predetermined pattern of deformities configured to cause light to be emitted from
the output region,
the optical conductor having a transition region disposed between the light
source and the output region.
- 46 -
***
33. A light emitting panel assembly comprising:
a generally planar optical conductor having at least one input edge with a
greater cross-sectional width than thickness; and
a plurality of LED light sources each having a greater width than height
positioned adjacent to the input edge, thereby directing light into the optical
conductor, each light source being configured to generate light having an output
distribution defined by a greater width component than height component;
the optical conductor having at least one output region and a
predetermined pattern of deformities configured to cause light to be emitted from
the output region,
the optical conductor having a transition region disposed between the light
source and the output region.
34. The assembly of claim 33 wherein each light source has a light output
distribution with a greater width component than height component.
Claim 33 thus explicitly refers to the output distribution of each LED (light emitting
diode) light source. Claim 1, likewise, can readily be read as consistent with Claim 33 such that
the “configured to . . .” phrase in Claim 1 modifies “light sources” rather than “a plurality.” See
Phillips, 415 F.3d at 1314 (“Other claims of the patent in question, both asserted and unasserted,
can also be valuable sources of enlightenment as to the meaning of a claim term.”). The Court
therefore concludes that the disputed term refers to output distribution measured as to each
individual light source.9
The Court accordingly hereby construes “output distribution defined by a greater
width component than height component” to have its plain meaning.
9
To whatever extent dependent Claim 34 is redundant of language recited in independent
Claim 33, any such redundancy does not affect the Court’s analysis here. See N. Am. Vaccine,
Inc. v. Am. Cyanamid Co., 7 F.3d 1571, 1577 (Fed. Cir. 1993) (“While it is true that dependent
claims can aid in interpreting the scope of claims from which they depend, they are only an aid
to interpretation and are not conclusive. The dependent claim tail cannot wag the independent
claim dog.”).
- 47 -
H. “greater cross-sectional width than thickness”
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
Plain meaning
Indefinite
(Dkt. No. 216, at 24; Dkt. No. 200, at 77.) The parties submit that this term appears in Claims 1,
5, 11, and 22 of the ’563 Patent.
Plaintiff submits that Defendants “did not provide any expert opinion as to whether a
person of ordinary skill in the art could understand the term with reasonable certainty.” (Dkt.
No. 216, at 24-25.)
Neither Defendants’ response brief nor Plaintiff’s reply brief addresses this term. (See
Dkt. No. 221; see also Dkt. No. 224.) This term does not appear in the parties’ April 15, 2015
P.R. 4-5 Joint Claim Construction Chart. (See Dkt. No. 228.)
At the April 29, 2015 hearing, the parties confirmed that this term is no longer in dispute.
The Court therefore does not address this term.
I. “edge of said panel assembly”
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
Plain meaning
Indefinite
(Dkt. No. 216, at 25; Dkt. No. 221, at 16.) The parties submit that this disputed term appears in
Claims 1, 5, 11, and 22 of the ’563 Patent.
(1) The Parties’ Positions
Plaintiff argues that in the context of surrounding claim language, “a person of ordinary
skill would understand that the claimed ‘edge of said panel assembly’ is a surface through which
the panel assembly receives light from the light source – namely, the light input edge of the panel
member.” (Dkt. No. 216, at 25.) In particular, “[a]rmed with the ’563 [Patent] disclosure and
- 48 -
general knowledge of the subject matter, a person of ordinary skill would have no trouble
identifying the light input edge of the panel member and would understand that this is also the
claimed ‘edge of said panel assembly.’” (Id., at 26.)
Defendants respond that “[n]either the claims nor the specification describes an edge of a
panel assembly or explains how light that is received by this undefined edge is then emitted from
a surface of the panel member.” (Dkt. No. 221, at 16.) Defendants submit that Plaintiff
“re-writes the claim by arguing that the plain meaning must be that the ‘edge of said panel
assembly’ is the same as the ‘light input edge of the panel member.’” (Id., at 17.)
Plaintiff replies that “there is no logical or technical reason why the light-receiving edge
of a panel member cannot also be a light-receiving edge of the overall assembly.” (Dkt. No. 224,
at 9.) In other words, Plaintiff submits, Plaintiff’s interpretation “does not conflate ‘panel
member’ with ‘panel assembly,’ or ‘re-write’ the claims as Defendants allege. It reflects the
technical and logical reality that the edge of a component can also be the edge of an assembly
that includes the component.” (Id.)
(2) Analysis
Claim 1 of the ’563 Patent, for example, recites (emphasis added):
1. A light emitting panel assembly mounted on a body portion of a vehicle, said
panel assembly comprising at least one solid light emitting panel member having
top and bottom surfaces and a greater cross sectional width than thickness, said
panel assembly having at least one light input surface for receiving light from at
least one light source and directing the light through said panel assembly from an
edge of said panel assembly for emission of the light from one of said top and
bottom surfaces of said panel member, said panel member being located on an
exterior surface of said body portion with said panel member wrapped around a
corner of said vehicle to provide illumination around said corner.
The disputed term thus refers, in the context of the surrounding claim language, to an
edge of the panel assembly that has a light input surface. Such a reading is also consistent with
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Figures 3 and 4 of the ’563 Patent. See ’563 Patent at 9:13-19 (“FIG. 3 shows the light source 9
at the left end of panel member 28 mechanically held in place by a holder 63 received in a slot in
an edge of the panel member.”). Defendants have failed to demonstrate any inconsistency
between such an interpretation and interpreting “panel assembly” and “panel member” as have
distinct meanings. That is, the recited “panel member” is part of the recited “panel assembly.”
The Court therefore hereby expressly rejects Defendants’ indefiniteness argument. No
further construction is necessary. See U.S. Surgical, 103 F.3d at 1568; see also O2 Micro, 521
F.3d at 1362.
The Court accordingly hereby construes “edge of said panel assembly” to have its plain
meaning.
J. “for shining light through said panel member”
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
Plain meaning
“designed to cause light to shine through the
panel member”
(Dkt. No. 216, at 28; Dkt. No. 221, at 29.) The parties submit that this disputed term appears in
Claim 5 of the ’563 Patent.
(1) The Parties’ Positions
Plaintiff argues that “Defendants propose to rewrite the claims in a way that is
unnecessary, unsupported and unhelpful.” (Dkt. No. 216, at 28.) Further, Plaintiff argues, “[t]he
proposed phrase ‘designed to cause’ risks distracting the factfinder by introducing an element of
intent that is speculative at best and irrelevant to the inquiry.” (Id.)
Defendants respond that their proposal “clarifies that ‘for shining’ is a recitation of the
purpose of the other light source – i.e., the other light source is ‘designed to cause’ light to shine
through the panel member.” (Dkt. No. 221, at 29.) Defendants argue:
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It is not enough that another light source exists, or that some de minimis portion of
the light from the other source happens to shine through said panel member. The
claim requires that the purpose of the other light source is “for shining light
through the panel member.” Only a light source that is designed to carry out this
purpose can fall within the scope of the claim. See Acco Brands, Inc. v. Micro
Security Devices, Inc.[,] 346 F.3d 1075, 1077-80 (Fed. Cir. 2003) (construing “for
extending”).
(Dkt. No. 221, at 30.)
Plaintiff replies that Defendants do not “propose any criteria by which one would judge
the ‘purpose’ of a light source or whether it is ‘designed to carry out this purpose,’” and
“[r]equiring the trier of fact to discern the mental intent of a designer of prior-art devices or
accused products is an exercise fraught with peril, and an improper construction of an apparatus
claim, which does not involve an inquiry into ‘intent.’” (Dkt. No. 224, at 10.)
(2) Analysis
Claim 5 of the ’563 Patent recites (emphasis added):
5. A light emitting panel assembly mounted on a body portion of a vehicle, said
panel assembly comprising at least one solid light emitting panel member having
top and bottom surfaces and a greater cross sectional width than thickness, said
panel assembly having at least one light input surface for receiving light from at
least one light source and directing the light through said panel assembly from an
edge of said panel assembly for emission of the light from one of said top and
bottom surfaces of said panel member, and an other [sic] light source located
directly behind said panel member for shining light through said panel member
independently of the light emitted by said panel member from said light source.
The specification discloses:
An additional array of light sources 31 such as LEDs or incandescent or halogen
lamps (with or without reflectors) may also be strategically mounted inwardly
(i.e., behind) the inner surface of the light emitting panel members 29 and/or 30 to
cause a more intense light to shine through the panel members and a trans
reflector 32 if provided on the panel members or through one or more clear areas
or holes 33 through the panel members where no print pattern, back reflector or
trans reflector is provided on the panel members as also schematically shown in
FIGS. 3 and 4 for specific applications, for example, to provide brake or turn
signal lights, turning or backup illumination, etc. By locating the light sources 9
for illuminating the panel members 29 themselves adjacent one or more ends of
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the panel members, they will not interfere with or obstruct the visibility of the
array of light sources 31 shining through the panel members.
’563 Patent at 9:21-26 (emphasis added).
The disputed term is a limitation of the claim. Beyond that, however, Defendants have
failed to demonstrate that design intent is a necessary or appropriate claim limitation here. The
Court therefore hereby expressly rejects Defendants’ proposed construction, and no further
construction is necessary. See U.S. Surgical, 103 F.3d at 1568; see also O2 Micro, 521 F.3d
at 1362; Finjan, 626 F.3d at 1207.
Finally, Defendants’ above-noted concern, regarding “some de minimis portion of the
light from [another] source,” relates to questions of fact in relation to whatever particular
instrumentalities are accused, and such questions of fact are not appropriate for the Court to
resolve as part of claim construction. See PPG Indus. v. Guardian Indus. Corp., 156 F.3d 1351,
1355 (Fed. Cir. 1998) (“[A]fter the court has defined the claim with whatever specificity and
precision is warranted by the language of the claim and the evidence bearing on the proper
construction, the task of determining whether the construed claim reads on the accused product is
for the finder of fact.”).
The Court accordingly hereby construes “for shining light through said panel
member” to have its plain meaning.
K. “one or more light emitting diodes along said light input surface for receiving light
from said light emitting diodes and conducting the light from said edge for emission of the
light from at least one of said sides”
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
Plain meaning
Indefinite
(Dkt. No. 216, at 28; Dkt. No. 221, at 17-18.) The parties submit that this disputed term appears
in Claim 1 of the ’956 Patent.
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(1) The Parties’ Positions
Plaintiff argues that “the common-sense understanding [of] the final claim language,
regardless of its grammatical parsing, specifies the properties of the light guide as a whole, not of
the LEDs.” (Dkt. No. 216, at 30.) Plaintiff explains that LEDs do not receive light but rather
emit light, and a “light input surface” is a boundary and does not conduct light. (Id., at 29.)
Defendants respond that because “[t]he grammatically correct reading is that the light
emitting diodes (LEDs) receive and conduct the light from the LEDs,” “the claim is indefinite
because it claims something that is not possible.” (Dkt. No. 221, at 17-18.) Alternatively,
Defendants argue, if the claim is read such that the light input surface receives and conducts the
light, “a surface is a two-dimensional boundary that cannot conduct light.” (Id., at 18.)
Plaintiff replies that “both from a practical standpoint and in view of the ’956 disclosure,
a person of ordinary skill would understand that ‘receiving light’ and ‘conducting the light’ are
properties of the light guide – a fact that Defendants’ expert admits he did not consider.” (Dkt.
No. 224, at 10 (footnotes omitted).)
At the April 29, 2015 hearing, Defendants urged that Plaintiff’s interpretation—that the
“conducting” is by the light guide—impermissibly re-writes the claim.
(2) Analysis
Claim 1 of the ’956 Patent recites (emphasis added):
1. A light emitting assembly for vehicle illumination comprising a light guide
having opposite sides and at least one light input surface along at least one edge
of said light guide, one or more light emitting diodes along said light input
surface for receiving light from said light emitting diodes and conducting the light
from said edge for emission of the light from at least one of said sides, a plurality
of light extracting deformities on at least one of said sides, said deformities
having shapes for controlling an output ray angle distribution of emitted light to
suit a particular application, and a transparent substrate overlying at least one of
said sides, said substrate providing an exterior portion of a vehicle for vehicle
illumination at said exterior portion.
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The plain language of the claim thus recites that the phrase “for receiving light from said
light emitting diodes and conducting the light from said edge for emission of the light from at
least one of said sides” modifies “said light input surface,” not “one or more light emitting
diodes.” Plaintiff’s expert agrees. (See Dkt. No. 216, Ex. K, 3/4/2015 Werner Decl., at ¶ 17,
pp. 28-31.) Such a reading is consistent with the “light input surface” being introduced in the
claim as “along at least one edge of said light guide,” which is the antecedent basis for “said
edge” in the phrase “conduct[s] the light from said edge.” Such a reading is also consistent with
the ’956 Patent’s prosecution history involving the “Serizawa” reference, United States Patent
No. 4,733,335, which the parties have addressed. (See Dkt. No. 216, Ex. S, 9/29/2004 Reply to
Office Action, at 8-9 (distinguishing Serizawa as “shining light through the lens assembly from
one side to the other”).)
Finally, any argument that “a surface is a two-dimensional boundary that cannot conduct
light” (Dkt. No. 221, at 18; see Dkt. No. 221, Ex. 3, 3/3/2015 Smith-Gillespie Decl., at ¶ 225;
see also id., Ex. 2, 3/9/2015 Werner dep., at 126:10-16) is unavailing because the claim itself, as
quoted above, recites that the “light input surface” is a surface of a “light guide.” That is, the
“conducting”—recited in the phrase “conducting the light from said edge for emission of the
light from at least one of said sides”—is through the light guide. (See id., at 126:14-16.)
Under this interpretation, as Defendants’ expert acknowledges, the disputed term is not
indefinite. (See Dkt. No. 216, Ex. L, 3/12/2015 Smith-Gillespie dep., at 142:15-144:12.)
The Court therefore hereby expressly rejects Defendants’ indefiniteness argument.
Construction is appropriate, however, to clarify the potentially confusing wording of this
disputed term and thereby assist the finder of fact. See TQP Dev., LLC v. Merrill Lynch & Co.,
Inc., No. 2:08-CV-471, 2012 WL 1940849, at *2 (E.D. Tex. May 29, 2012) (Bryson, J.) (“The
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Court believes that some construction of the disputed claim language will assist the jury to
understand the claims.”).
The Court accordingly hereby construes “one or more light emitting diodes along said
light input surface for receiving light from said light emitting diodes and conducting the
light from said edge for emission of the light from at least one of said sides” to mean “one or
more light emitting diodes along said light input surface, wherein said light input surface
receives light from said light emitting diodes and said light guide conducts the light from
said edge for emission of the light from at least one of said sides.”
VI. 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.
Having found that the term “more in the width direction” in Claim 1 of the ’816 Patent is
indefinite, as discussed above, the Court hereby finds that Claim 1 of the ’816 Patent is invalid.
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
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as a failure to mediate in good faith and may subject that party to such sanctions as the Court
deems appropriate.
So Ordered and Signed on this
May 4, 2015
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