Case 1:19-cv-02207-MN Document 101 Filed 07/28/21 Page 1 of 14 PageID #: 3028
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`Plaintiff,
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`Defendant.
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`C.A. No. 19-2207 (MN)
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`ACUITY BRANDS LIGHTING, INC.,
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`ULTRAVISION TECHNOLOGIES, LLC,
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`v.
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`MEMORANDUM ORDER
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`At Wilmington this 28th day of July 2021:
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`IT IS HEREBY ORDERED that the claim terms of U.S. Patents Nos. 8,870,410 (“the ’410
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`Patent”), 8,870,413 (“the ’413 Patent”), 9,734,738 (“the ’738 Patent”), 9,947,248 (“the ’248
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`Patent”), and 10,223,946 (“the ’946 Patent”) (collectively, “the Patents-in-Suit”) with agreed-upon
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`constructions (see D.I. 92-1), are construed as follows:
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`1.
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`2.
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`3.
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`4.
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`5.
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`“acrylic material” / “acrylic material substrate” means “material containing
`primarily acrylates” / “substrate containing primarily acrylates” (’410
`Patent, cl. 15; ’413 Patent, cl. 4, 10, 12);
`
`The preambles “An optics panel for use in a light emitting diode (LED)
`lighting assembly comprising” / “An optics panel for use in a light emitting
`diode (LED) lighting assembly for illuminating a billboard that has a
`display surface extending between outer edges of the billboard, the optics
`panel comprising” are limiting (’410 Patent, cl. 1, 10, 15; ’413 Patent, cl. 1,
`5, 11);
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`“substantially transparent” means “transparent” (’410 Patent, cl. 1; ’413
`Patent, cl. 5, 11);
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`“predetermined bounded area” means “area determined by the dimensions
`of the [display surface]” (’410 Patent, cl. 1);
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`“substantially the entire display surface” shall have its plain and ordinary
`meaning of “the entire display surface” (’410 Patent, cl. 1, 15);
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`

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`Case 1:19-cv-02207-MN Document 101 Filed 07/28/21 Page 2 of 14 PageID #: 3029
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`6.
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`7.
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`“optics panel” shall have its plain and ordinary meaning, and the optics
`panels of independent claims 1 and 15 of the ’410 Patent and claims 1, 5,
`and 11 of the ’413 Patent comprise the respective elements of those claims
`(’410 Patent, cl. 1, 10, 11, 15; ’413 Patent, cl. 1, 5, 11); and
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`“wherein each lens is disposed over only one associated LED” / “each
`optical element disposed over only one associated LED” / “each optical
`element is disposed over only one associated LED” / “each optical element
`overlies only one associated LED” / “each optical element overlies only one
`associated LED” / “each convex optical element overlying an associated
`one of the LEDs” / “each optical element . . . overlies a respective one of
`the LEDs” shall have their plain and ordinary meaning of “each [lens/optical
`element/convex optical element] is disposed over only one LED” (’410
`Patent, cl. 10; ’413 Patent, cl. 1, 5, 11; ’738 Patent, cl. 1, 10; ’248 Patent,
`cl. 1, 10; ’946 Patent, cl. 29).
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`Further, as announced at the hearing on July 21, 2021, IT IS HEREBY ORDERED that the
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`following disputed claim terms of the Patents-in-Suit are construed as follows:
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`1.
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`2.
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`3.
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`4.
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`5.
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`6.
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`“substantially uniform / substantially equal level of illumination / a
`uniformity . . . remains substantially unchanged / the uniformity of light . . .
`remains substantially the same / a uniformity of light . . . remains
`substantially the same / a uniformity of light . . . remains substantially
`unchanged” mean “a level of illumination that does not create unnoticeable
`unevenness in the overall illumination (’410 Patent, cl. 1, 10, 15; ’248
`Patent, cl. 3; ’738 Patent, cl. 11, 13; ’946 Patent, cl. 12);
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`“lens element” means “a geometrically distinct part of a lens” (’410 Patent
`cl. 1, 16, 22; ’413 Patent cl. 3, 7, 13);
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`“convex optical element” means “a lens that curves or bulges outward”
`(’946 Patent cl. 1, 21, 29);
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`“display surface” means “sign surface” (’410 Patent, cl. 1, 7, 10, 12, 14, 15,
`19, 20, 21, 25, 26; ’413 Patent, cl. 1, 2, 4, 5, 6, 10, 11, 12, 16, 17);
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`“area” / “substantially rectangular area” mean “area of a sign” /
`“substantially rectangular area of a sign” (’946 Patent, cl. 1, 21, 24, 29; ’248
`Patent, cl. 1, 10, 11, 12);
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`“configured to” / “configured so” means “designed to” / “designed so” (’410
`Patent, claims 1, 10, 15; ’413 Patent, claims 1, 5, 11; ’738 Patent, claims 1,
`10, 11, 12, 14; ’248 Patent, claims 1, 3, 10, 11; ’946 Patent, claims 1, 12,
`21, 24, 29); and
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`2
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`

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`Case 1:19-cv-02207-MN Document 101 Filed 07/28/21 Page 3 of 14 PageID #: 3030
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`7.
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`“[average illumination to minimum illumination uniformity ratio] is 3:1 / [a
`ratio of the average illumination from that LED across the entire display
`surface to the minimum illumination from that LED at any point on the
`display surface] is 3:1 / [a ratio of the average illumination from each of the
`LEDs across the entire display surface to the minimum illumination at any
`point on the display surface from each of the LEDs] is 3:1 / [a ratio of the
`average illumination from that LED across the entire display surface to the
`minimum illumination from that LED at any point on the display surface]
`is 3:1 / [ratio of the average illumination from each LED across the entire
`display surface to the minimum illumination from that LED at any point on
`the display surface] [[to]] is 3:1” mean “has a ratio of 3:1” (’410 Patent, cl.
`5, 14, 20; ’413 Patent, cl. 1, 5, 11).
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`The parties briefed the issues, (see D.I. 93), and submitted a Joint Claim Construction Chart
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`containing intrinsic evidence, (see D.I. 92-1). The Court carefully reviewed all submissions in
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`connection with the parties’ contentions regarding the disputed claim terms, heard oral argument,
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`(see D.I. 100), and applied the following legal standards in reaching its decision.
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`I.
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`LEGAL STANDARDS
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`A.
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`Claim Construction
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`“[T]he ultimate question of the proper construction of the patent [is] a question of law,”
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`although subsidiary fact-finding is sometimes necessary. Teva Pharms. USA, Inc. v. Sandoz, Inc.,
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`135 S. Ct. 831, 837-38 (2015). “[T]he words of a claim are generally given their ordinary and
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`customary meaning [which is] the meaning that the term would have to a person of ordinary skill
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`in the art in question at the time of the invention, i.e., as of the effective filing date of the patent
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`application.” Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc) (internal
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`citations and quotation marks omitted). Although “the claims themselves provide substantial
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`guidance as to the meaning of particular claim terms,” the context of the surrounding words of the
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`claim also must be considered. Id. at 1314. “[T]he ordinary meaning of a claim term is its meaning
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`to the ordinary artisan after reading the entire patent.” Id. at 1321 (internal quotation marks
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`omitted).
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`3
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`Case 1:19-cv-02207-MN Document 101 Filed 07/28/21 Page 4 of 14 PageID #: 3031
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`The patent specification “is always highly relevant to the claim construction analysis . . .
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`[as] it is the single best guide to the meaning of a disputed term.” Vitronics Corp. v. Conceptronic,
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`Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). It is also possible that “the specification may reveal a
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`special definition given to a claim term by the patentee that differs from the meaning it would
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`otherwise possess. In such cases, the inventor’s lexicography governs.” Phillips, 415 F.3d at
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`1316. “Even when the specification describes only a single embodiment, [however,] the claims of
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`the patent will not be read restrictively unless the patentee has demonstrated a clear intention to
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`limit the claim scope using words or expressions of manifest exclusion or restriction.” Hill-Rom
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`Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1372 (Fed. Cir. 2014) (internal quotation marks
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`omitted) (quoting Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004)).
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`In addition to the specification, a court “should also consider the patent’s prosecution
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`history, if it is in evidence.” Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir.
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`1995) (en banc), aff’d, 517 U.S. 370 (1996). The prosecution history, which is “intrinsic
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`evidence, . . . consists of the complete record of the proceedings before the PTO [Patent and
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`Trademark Office] and includes the prior art cited during the examination of the patent.” Phillips,
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`415 F.3d at 1317. “[T]he prosecution history can often inform the meaning of the claim language
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`by demonstrating how the inventor understood the invention and whether the inventor limited the
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`invention in the course of prosecution, making the claim scope narrower than it would otherwise
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`be.” Id.
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`In some cases, courts “will need to look beyond the patent’s intrinsic evidence and to
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`consult extrinsic evidence in order to understand, for example, the background science or the
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`meaning of a term in the relevant art during the relevant time period.” Teva, 135 S. Ct. at 841.
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`Extrinsic evidence “consists of all evidence external to the patent and prosecution history,
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`4
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`Case 1:19-cv-02207-MN Document 101 Filed 07/28/21 Page 5 of 14 PageID #: 3032
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`including expert and inventor testimony, dictionaries, and learned treatises.” Markman, 52 F.3d
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`at 980. Expert testimony can be useful “to ensure that the court’s understanding of the technical
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`aspects of the patent is consistent with that of a person of skill in the art, or to establish that a
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`particular term in the patent or the prior art has a particular meaning in the pertinent field.”
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`Phillips, 415 F.3d at 1318. Nonetheless, courts must not lose sight of the fact that “expert reports
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`and testimony [are] generated at the time of and for the purpose of litigation and thus can suffer
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`from bias that is not present in intrinsic evidence.” Id. Overall, although extrinsic evidence “may
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`be useful to the court,” it is “less reliable” than intrinsic evidence, and its consideration “is unlikely
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`to result in a reliable interpretation of patent claim scope unless considered in the context of the
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`intrinsic evidence.” Id. at 1318-19. Where the intrinsic record unambiguously describes the scope
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`of the patented invention, reliance on any extrinsic evidence is improper. See Pitney Bowes, Inc.
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`v. Hewlett-Packard Co., 182 F.3d 1298, 1308 (Fed. Cir. 1999) (citing Vitronics, 90 F.3d at 1583).
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`B.
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`Indefiniteness
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`Section 112 of the Patent Act requires a patent applicant to “particularly point out and
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`distinctly claim the subject matter” regarded as the applicant’s invention. 35 U.S.C. § 112 ¶ 2.
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`“The primary purpose of the definiteness requirement is to ensure that the claims are written in
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`such a way that they give notice to the public of the extent of the legal protection afforded by the
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`patent, so that interested members of the public, e.g. competitors of the patent owner, can
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`determine whether or not they infringe.” All Dental Prodx, LLC v. Advantage Dental Prods., Inc.,
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`309 F.3d 774, 779-80 (Fed. Cir. 2002) (citing Warner-Jenkinson Co. v. Hilton-Davis Chem. Co.,
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`520 U.S. 17, 28-29 (1997)). Put another way, “[a] patent holder should know what he owns, and
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`the public should know what he does not.” Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki
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`Co., Ltd., 535 U.S. 722, 731 (2002).
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`5
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`

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`Case 1:19-cv-02207-MN Document 101 Filed 07/28/21 Page 6 of 14 PageID #: 3033
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`A patent claim is indefinite if, “viewed in light of the specification and prosecution history,
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`[it fails to] inform those skilled in the art about the scope of the invention with reasonable
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`certainty.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910 (2014). A claim may be
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`indefinite if the patent does not convey with reasonable certainty how to measure a claimed feature.
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`See Teva Pharm. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335, 1341 (Fed. Cir. 2015). But “[i]f such
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`an understanding of how to measure the claimed [feature] was within the scope of knowledge
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`possessed by one of ordinary skill in the art, there is no requirement for the specification to identify
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`a particular measurement technique.” Ethicon Endo–Surgery, Inc. v. Covidien, Inc., 796 F.3d
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`1312, 1319 (Fed. Cir. 2015).
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`Like claim construction, definiteness is a question of law, but the Court must sometimes
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`render factual findings based on extrinsic evidence to resolve the ultimate issue of definiteness.
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`See, e.g., Sonix Tech. Co. v. Publications Int’l, Ltd., 844 F.3d 1370, 1376 (Fed. Cir. 2017); see also
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`Teva, 135 S. Ct. at 842-43. “Any fact critical to a holding on indefiniteness . . . must be proven
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`by the challenger by clear and convincing evidence.” Intel Corp. v. VIA Techs., Inc., 319 F.3d
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`1357, 1366 (Fed. Cir. 2003); see also Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1338
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`(Fed. Cir. 2008).
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`II.
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`THE COURT’S RULING
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`The Court’s rulings regarding the disputed claim terms of the Patents-in-Suit were
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`announced from the bench at the conclusion of the hearing as follows:
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`. . . Thank you for the arguments earlier today. At issue we
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`have five patents,[1] and seven disputed claim terms.
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`1
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`All five of the patents in suit share a specification, although the ’410 Patent and ’413 Patent
`are based on a different provisional application than the’738 Patent, ’248 Patent, and
`’946 Patent.
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`6
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`

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`Case 1:19-cv-02207-MN Document 101 Filed 07/28/21 Page 7 of 14 PageID #: 3034
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`I am prepared to rule on each of the disputes. I will not be issuing a
`written opinion, but I will issue an order stating my rulings. I want
`to emphasize before I announce my decisions that although I am not
`issuing a written opinion, we have followed a full and thorough
`process before making the decisions I am about to state. I have
`reviewed the patents in dispute. I have also reviewed the documents
`from the Eastern District of Texas action, the dictionary definitions,
`the excerpts of treatises, the expert declarations, and other
`documents included in the joint appendix. There was full briefing
`on each of the disputed terms. And there has been argument here
`today. All of that has been carefully considered.
`
`As to my rulings, I am not going to read into the record my
`understanding of claim construction
`law and
`indefiniteness
`generally. I have a legal standard section that I have included in
`earlier opinions, including recently in Ferring v. Fresenius, C.A.
`No. 20-431. I incorporate that law and adopt it into my ruling today
`and will also set it out in the order that I issue.
`
`As to the person of ordinary skill in the art, the parties have
`suggested differing definitions. But no party suggests that the
`differences are relevant to the issues currently before me.
`
`Now the disputed terms. I am going to refer to the original
`numbering in the claim construction brief, even though several of
`those terms are no longer disputed.
`
`The first term comprises several phrases, which the parties have
`collectively deemed “the Uniformity Limitations.”[2] All of the
`phrases include the word “substantially” and the parties agree that
`all of the terms should be construed the same. Ultravision argues
`that the Uniformity Limitations should be construed as “level of
`illumination that does not create noticeable unevenness in the
`overall illumination, such as hot spots or dead spots.” Acuity argues
`that the Uniformity Limitations are indefinite and does not propose
`an alternative construction.
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`The crux of the dispute is whether the word “substantially,” used
`here as a word of degree, renders this term and the relevant claims
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`2
`
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`Those phrases are: “substantially uniform / substantially equal level of illumination / a
`uniformity . . . remains substantially unchanged / the uniformity of light . . . remains
`substantially the same / a uniformity of light . . . remains substantially the same / a
`uniformity of light . . . remains substantially unchanged” in claims 1, 10, and 15 of the ’410
`Patent, claim 3 of the ’248 Patent, claims 11 and 13 of the ’738 Patent, and claim 12 of the
`’946 Patent.
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`7
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`

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`Case 1:19-cv-02207-MN Document 101 Filed 07/28/21 Page 8 of 14 PageID #: 3035
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`indefinite. Here, I agree with Ultravision that it is not indefinite and
`will construe this term as “level of illumination that does not create
`unnoticeable unevenness in the overall illumination.”
`
`For a claim to be held invalid for indefiniteness, there must be clear
`and convincing evidence.[3] Acuity has not met this burden.
`
`In Biosig Instruments, Inc. v. Nautilus, Inc., the Federal Circuit
`instructed that “[w]hen a ‘word of degree’ is used, the court must
`determine whether the patent provides ‘some standard for measuring
`that degree’” and that “[c]laim language employing terms of degree
`has long been found definite where it provided enough certainty to
`one of skill in the art when read in the context of the invention.”[4]
`
`Here, the specification indicates that the invention serves to
`“minimiz[e]
`any noticeable unevenness
`in
`the overall
`illumination”[5] and gives examples of undesirable unevenness, such
`as “hot spots” and “dead spots.”[6] This suggests that the purpose of
`the invention is to produce a “substantially uniform” appearance
`without deviations readily apparent to the normal human eye. The
`Federal Circuit recognized in Sonic Tech. Co. v. Publications Int’l,
`Ltd., 844 F.3d 1370, 1378 (Fed. Cir. 2017) that, unlike terms that
`turn on whether something is aesthetically pleasing or otherwise
`subjective, “what can be seen by the normal human eye . . . provides
`an objective baseline through which to interpret the claims.” And
`courts have held that the normal human eye can detect when
`is, for example, “substantially horizontal”[7] or
`something
`“substantially flattened,”[8] such that the use of “substantially” does
`not render those terms indefinite. Indeed, the Federal Circuit found
`that the phrase “substantially uniform,” albeit in a different context,
`was not indefinite because “‘substantially’ is a descriptive term
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`3
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`4
`5
`6
`7
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`8
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`
`See Nautilus, 572 U.S. at 912 n.10 (citing Microsoft Corp. v. i4i Ltd. Partnership, 564 U.S.
`91, 95 (2011))).
`Biosig Instruments, Inc. v. Nautilus, Inc., 783 F.3d 1374, 1378 (Fed. Cir. 2015).
`(’410 Patent col. 6 ll. 21–23).
`(See ’410 Patent col. 2 ll. 55–58, col. 5 ll. 33–35).
`Total Control Sports, Inc. v. Precision Impact, No. 17-CV-09281, 2019 WL 6464002, at
`*9 (N.D. Ill. Dec. 2, 2019) (“The normal human eye can perceive when an object travels
`‘substantially horizontal,’ and thus a person having ordinary skill has an objective baseline
`to interpret the claims.”).
`Kluhsman Mach., Inc. v. Dino Paoli SRL, No. 5:19-CV-00020, 2020 WL 4227470, at *6
`(W.D.N.C. July 23, 2020) (giving “substantially flattened” the “plain and ordinary meaning
`of substantially but not necessarily completely flat.”).
`
`8
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`

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`Case 1:19-cv-02207-MN Document 101 Filed 07/28/21 Page 9 of 14 PageID #: 3036
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`commonly used in patent claims to ‘avoid a strict numerical
`boundary to the specified parameter.’”[9]
`
`Therefore, given that the word “substantially” suggests that the
`lighting must be uniform as detected by the normal human eye, I
`will adopt Ultravision’s proposed construction of “level of
`illumination that does not create noticeable unevenness in the
`overall illumination.”
`
`The second term is “lens element.”[10] Ultravision contends that this
`term should be given its plain and ordinary meaning, which it argues
`is “an element of a lens,” or alternatively, “a geometrically distinct
`volume of an optical element” and agreed today that we could use
`part instead of volume. Acuity proposes that the term be construed
`as “a lens with two or more optical surfaces.”
`
`I have some doubts that there is a significant dispute about the
`parties’ positions. But to the extent there is, I agree with Ultravision
`and will give the term its plain and ordinary meaning of “a
`geometrically distinct part of a lens” rather than require distinct
`surfaces.
`
`That is consistent with the specification, which to the extent it refers
`to a lens element does so in connection with Figures 8A through J.
`These illustrate and identify different geometric shapes (such as 820,
`822, 824 and 826) rather than surfaces as being lens elements.
`
`The third term is “convex optical element.”[11] Ultravision argues
`that this term should be given its plain and ordinary meaning, which
`it proposes is “an optical element that is convex.” Acuity asserts
`that the term should be construed as “a radially symmetric
`hemispherical outer surface.”
`
`The crux of the dispute is whether Acuity is correct in asserting that
`“convex” means perfectly hemispherical. Acuity points to Figure
`5A in support of its position, arguing that “the lenses of Fig. 5A
`appear to be portions of a sphere with radial symmetry, i.e.,
`convex.”[12] But nothing in the specification or claims confirms that
`the lenses shown in Figure 5A are perfectly hemispherical.
`
`
`Ecolab, Inc. v. Envirochem, Inc., 264 F.3d 1358, 1367 (Fed. Cir. 2001).
`This term is in claims 1, 16, and 22 of the ’410 Patent and claims 3, 7, and 13 of the ’413
`Patent.
`This term is in claims 1, 21, and 29 of the ’946 Patent.
`(D.I. 93 at 30).
`
`9
`10
`
`11
`12
`
`9
`
`

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`Case 1:19-cv-02207-MN Document 101 Filed 07/28/21 Page 10 of 14 PageID #: 3037
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`Furthermore, that figure depicts merely one embodiment, meaning
`it would be inappropriate to read that limitation into the claims.[13]
`
`Acuity also argues that Ultravision’s expert supports Acuity’s
`construction.[14] I disagree. In his declaration, Ultravision’s expert
`opines that a POSA “would understand a convex shape to bulge
`outwards, as opposed [to] a recessed (i.e., concave) shape, without
`the need for further clarification.”[15] This says nothing about
`whether the shape must be radially symmetric and hemispherical.
`
`I agree with Acuity, however, that using the word “convex” in the
`construction as Ultravision proposes is not helpful. The parties each
`cite definitions of convex. Ultravision’s definitions include “curved
`or swelling out,”[16] “curving or bulging outward”[17] and “having a
`surface that is curved or rounded outward.”[18] Acuity pointed to a
`definition defining convex as “[c]urving outward, like the outer
`boundary of a circle or sphere.”[19] Both parties agree that a
`“convex” shape is one that “bulges outwards” but there is nothing in
`the definitions or the intrinsic record to support Acuity’s proposed
`limitation that a convex shape must be perfectly hemispherical,
`rather than some other convex or bulging shape.
`
`Consistent with the plain and ordinary meaning of convex, I will
`construe “convex optical element” as “a lens that curves or bulges
`outward.”
`
`I am going to address the fourth and fifth terms together as the
`parties seem to agree that the analysis underlying the construction
`of the two terms is the same. The fourth term is “display surface.”[20]
`Ultravision asserts that this term should be given its plain and
`ordinary meaning, which it contends is “surface to be displayed
`
`13
`
`14
`15
`16
`17
`18
`19
`20
`
`
`See CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002);
`Superguide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004).
`(D.I. 93 at 30).
`(D.I. 85, Ex. 7 ¶ 65).
`(Id. at Ex. 13).
`(Id. at Ex. 14)
`(Id. at Ex. 15).
`(Id. at Ex. 15).
`This term is in claims 1, 10, 14, 15, and 20 of the ’410 Patent, claims 1, 4, 5, 10, 11, and
`12 of the ’413 Patent, and claims 1, 3, 10, 11, 12, 13, and 17 of the ’738 Patent.
`
`10
`
`

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`Case 1:19-cv-02207-MN Document 101 Filed 07/28/21 Page 11 of 14 PageID #: 3038
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`using illumination.” Acuity argues that this term should be
`construed as “sign surface.”
`
`The fifth term is “area” / “substantially rectangular area.”[21]
`Ultravision argues that no construction is necessary and that the term
`should be given its plain and ordinary meaning. Acuity contends
`that the term should be construed to mean “sign” / “rectangular
`sign.”
`
`The dispute for these terms centers on whether the “display surface”
`and the “area” claimed are limited to signs. Here, I agree with
`Acuity and will construe “display surface” to mean “sign surface”
`and “area” to mean “area of a sign.”
`
`The Federal Circuit has repeatedly stated, in cases such as
`Continental Circuits LLC v. Intel Corp. that “the claims of the patent
`will not be read restrictively unless the patentee has demonstrated a
`clear intention to limit the claim scope using ‘words or expressions
`of manifest exclusion or restriction.’”[22] Where, however, a patent
`repeatedly and consistently characterizes a claim term in a particular
`way, it is appropriate to construe the term in that way.[23] Here, in
`column 2 at lines 6 through 9, the specification explains that
`“[a]lthough billboards are used herein for purposes of example, it is
`understood that the present disclosure may be applied to lighting for
`any type of sign that is externally illuminated.”[24] And the
`Technical Field in the shared specification notes that “[t]he
`following disclosure relates
`to
`lighting systems and, more
`particularly, to lighting systems using light emitting diodes to
`externally illuminate signs.” I find that these statements in the
`specification constitute expressions of manifest restriction intended
`to limit the invention to lighting of signs.
`
`Therefore, I will construe “display surface” as “sign surface.”
`
`As to area, I will give the term its plain and ordinary meaning, but
`will limit to the area to that of a sign because as I have already
`determined with respect to display surface, the invention as claimed
`
`
`These terms are in claims 1, 21, 24, and 29 of the ’946 Patent and claims 1, 10, 11, and 12
`of the ’248 Patent.
`Continental Circuits LLC v. Intel Corp., 915 F.3d 788, 797 (Fed. Cir.).
`Wisconsin Alumni Rsch. Found. v. Apple Inc., 905 F.3d 1341, 1351 (Fed. Cir. 2018).
`(’410 Patent col. 2 ll. 6–9 (emphasis added)).
`
`21
`
`22
`23
`24
`
`11
`
`

`

`Case 1:19-cv-02207-MN Document 101 Filed 07/28/21 Page 12 of 14 PageID #: 3039
`
`is restricted to signs. And indeed, when the term “area” is used in
`the specification, it is referencing the area of a surface.[25]
`
`The sixth term is “configured to / configured so.”[26] Ultravision
`asserts that this term should be construed as “capable of.” Acuity
`argues that this term should be construed as “designed to / designed
`so.”
`
`The crux of the dispute centers on whether “configured” is simply
`the hypothetical ability to do something. Here, I agree with Acuity
`and will construed the term as “designed to / designed so.”
`
`The patent specification uses “configured” interchangeably with
`“designed.” The claim term refers to lenses or a substrate containing
`lenses being “configured to” direct light from each LED onto the
`entire display surface.[27] The specification confirms that “the
`optical elements 514 are configured so that the light emitted from
`each LED 416 is projected onto the entire surface”[28] and then notes
`that “by designing the lens in such a manner, when all LEDs are
`operating, the light [from] the collective thereof will illuminate the
`surface.”[29] The specification also explains that the lens structures
`located on the substrate are “designed to ‘direct’ the light from an
`edge of the surface to cover the entire surface.”[30] These examples
`show that the specification uses “configured” to mean “designed” to
`do something. That meaning is clear when the specification notes
`that “the optics panel 206 may be configured specifically for the
`light panel 204 and the surface.”[31] Importing Ultravision’s
`
`(’410 Patent at [57] (describing “a surface having a predetermined bounded area. Light
`from each of the LEDs is directed by the transparent substrate across the entire area of the
`surface”); ’410 Patent col. 1 ll. 24–27 (using same language)).
`These terms are in claims 1, 10, and 15 of the ’410 Patent, claims 1, 5, and 11 of the ’413
`Patent, claims 1, 10, 11, 12, and 14 of the ’738 Patent, claims 1, 3, 10, and 11 of the ’248
`Patent, and claims 1, 12, 21, 24, and 29 of the ’946 Patent.
`(See ’410 Patent col. 8 ll. 37–40 (“a substantially transparent substrate comprising a
`plurality of optical elements . . . configured to direct light from each of the plurality of
`LEDs . . . onto a display surface”), col. 9 ll. 11–13 (“a plurality of lenses, wherein each
`lens . . . is configured to direct light from that LED toward the display surface”), col. 9 ll.
`41–47 (“an acrylic material substrate comprising a plurality of optical elements [which are]
`configured to direct light from each of the plurality of LEDs . . . onto a display surface”)).
`(’410 Patent col. 5 ll. 4–6).
`(’410 Patent col. 5 ll. 16–18 (emphasis added)).
`(’410 Patent col. 5 ll. 37–38).
`(’410 Patent col. 6 ll. 32–34 (emphasis added)).
`
`25
`
`26
`
`27
`
`28
`29
`30
`31
`
`12
`
`

`

`Case 1:19-cv-02207-MN Document 101 Filed 07/28/21 Page 13 of 14 PageID #: 3040
`
`this phrase becomes
`proposed construction of “capable,”
`nonsensical. Acuity’s proposed construction of “designed” is not
`only more meaningful, it is also confirmed by the specification,
`which gives an example in which “the panel 500 of Fig. 5 may be
`specifically designed for use with the PCB 402 of Fig. 4.”[32]
`Therefore,
`the
`specification
`supports Acuity’s proposed
`construction.
`
`In Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., the Federal
`Circuit indicated that “configured to” has a narrower definition than
`“having the capacity to” or “capable of.”[33] And district courts have
`relied on Aspex Eyewear
`to construe “configured
`to” as
`“programmed to,”[34] which implies intentional design rather than
`mere capacity.
`
`Therefore, I will construe this term as “designed to” / “designed so.”
`Today during the argument, Acuity stated that it is not arguing that
`the “designed to” construction depends on the subjective intent of
`the people designing the product. I will hold Acuity to that.
`
`The eighth term comprises several phrases, collectively deemed “the
`3:1 Ratio Limitations.”[35] These phrases refer to the ratio between
`the average illumination across the display surface and the minimum
`illumination at any point on the display surface. Ultravision
`contends that this term should be construed as “achieves 3:1.”
`Acuity argues that the term should be given its plain and ordinary
`meaning, which it asserts is “has a ratio of 3:1.”
`
`32
`33
`34
`
`35
`
`
`(’410 Patent col. 6 ll. 35–37 (emphasis added)).
`Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012).
`See, e.g., Wapp Tech Ltd. P'ship v. Seattle Spinco, Inc., No. 4:18-CV-469, 2020 WL
`1983087, at *20 (E.D. Tex. Apr. 27, 2020); Radware Ltd. v. A10 Networks, Inc., No. C-
`13-02024-RMW, 2014 WL 1572644, at *12 (N.D. Cal. Apr. 18, 2014).
`Those phrases are: “[average illumination to minimum illumination uniformity ratio] is 3:1
`/ [a ratio of the average illumination from that LED across the entire display surface to the
`minimum illumination from that LED at any point on the display surface] is 3:1 / [a ratio
`of the average illumination from each of the LEDs across the entire display surface to the
`minimum illumination at any point on the display surface from each of the LEDs] is 3:1 /
`[a ratio of the average illumination from that LED across the entire display surface to the
`minimum illumination from that LED at any point on the display surface] is 3:1 / [ratio of
`the average illumination from each LED across the entire display surface to the minimum
`illumination from that LED at any point on the display surface] [[to]] is 3:1” in claims 5,
`14, and 20 of the ’410 Patent and claims 1, 5, and 11 of the ’413 Patent.
`
`13
`
`

`

`Case 1:19-cv-02207-MN Document 101 Filed 07/28/21 Page 14 of 14 PageID #: 3041
`
`The crux of the dispute is whether a ratio better than 3:1 falls within
`the scope of the claim term. Here, I agree with Acuity and will give
`the term its plain and ordinary meaning of “has a ratio of 3:1.”
`
`First, the claims themselves state that the ratio of the average
`illumination to the minimum illumination “is 3:1,” which suggests
`that the ratio must be exact rather than approximate.
`
`Ultravision argues that the specification supports its broader
`construction because it describes “evenly” as “illumination with a
`uniformity that achieves a 3:1 ratio of the average to the
`minimum.”[36] This description does not, however, clarify whether
`ratios better than 3:1 are permissible. Acceptin