United States Court of Appeals
`for the Federal Circuit
`______________________
`
`GE LIGHTING SOLUTIONS, LLC,
`Plaintiff-Appellant,
`
`v.
`
`AGILIGHT, INC.,
`Defendant-Appellee.
`______________________
`
`2013-1267
`______________________
`
`Appeal from the United States District Court for the
`Northern District of Ohio in No. 12-CV-0354, Judge
`James S. Gwin.
`
`______________________
`
`Decided: May 1, 2014
`______________________
`
`
`RICHARD L. RAINEY, Executive Counsel, IP Litigation,
`General Electric Company, of Fairfield, Connecticut,
`argued for plaintiff-appellant. With him on the brief were
`ROBERT J. MCAUGHAN, JR. and JEFFREY A. ANDREWS,
`Sutton McAughan Deaver PLLC, of Houston, Texas.
`
`JONATHAN D. PAUERSTEIN, Rosenthal Pauerstein San-
`doloski Agather LLP, of San Antonio, Texas, argued for
`defendant-appellee. With him on the brief were HARRY D.
`CORNETT, JR. and BENJAMIN C. SASSÉ, Tucker Ellis LLP,
`of Cleveland, Ohio.
`______________________
`
`1
`
`ZEISS 1145
`Zeiss v. Nikon
`IPR2013-00363
`
`
`for the Federal Circuit
`______________________
`
`GE LIGHTING SOLUTIONS, LLC,
`Plaintiff-Appellant,
`
`v.
`
`AGILIGHT, INC.,
`Defendant-Appellee.
`______________________
`
`2013-1267
`______________________
`
`Appeal from the United States District Court for the
`Northern District of Ohio in No. 12-CV-0354, Judge
`James S. Gwin.
`
`______________________
`
`Decided: May 1, 2014
`______________________
`
`
`RICHARD L. RAINEY, Executive Counsel, IP Litigation,
`General Electric Company, of Fairfield, Connecticut,
`argued for plaintiff-appellant. With him on the brief were
`ROBERT J. MCAUGHAN, JR. and JEFFREY A. ANDREWS,
`Sutton McAughan Deaver PLLC, of Houston, Texas.
`
`JONATHAN D. PAUERSTEIN, Rosenthal Pauerstein San-
`doloski Agather LLP, of San Antonio, Texas, argued for
`defendant-appellee. With him on the brief were HARRY D.
`CORNETT, JR. and BENJAMIN C. SASSÉ, Tucker Ellis LLP,
`of Cleveland, Ohio.
`______________________
`
`1
`
`ZEISS 1145
`Zeiss v. Nikon
`IPR2013-00363
`
`
`
`Before RADER, Chief Judge, MOORE and REYNA, Circuit
`Judges.
`Opinion for the court filed by Circuit Judge MOORE.
`Opinion concurring in part and dissenting in part filed by
`Circuit Judge REYNA.
`MOORE, Circuit Judge.
`GE Lighting Solutions, LLC (GE) appeals from the
`district court’s grant of summary judgment that AgiLight,
`Inc.’s (AgiLight) accused products and processes do not
`infringe asserted claims of GE’s U.S. Patent Nos.
`7,160,140, 7,520,771, 7,832,896, and 7,633,055. We
`reverse the grant of summary judgment with regard to the
`’140, ’771 and ’896 patents and remand. We affirm the
`grant of summary judgment with regard to the ’055
`patent.
`
`BACKGROUND
`GE sued AgiLight, alleging infringement of various
`claims of the asserted patents. After claim construction,
`the parties stipulated to noninfringement of the ’140 and
`’771 patents on the grounds that AgiLight’s products do
`not include an “IDC connector” as construed by the court.
`The district court entered partial summary judgment
`consistent with the parties’ stipulation. GE Lighting
`Solutions, LLC. v. AgiLight, Inc., C.A. No. 12-cv-00354-JG
`(N.D. Ohio Jan. 8, 2013), ECF No. 38. The district court
`also granted AgiLight’s motion for summary judgment of
`noninfringement of the ’896 and ’055 patents. GE Light-
`ing Solutions, LLC. v. AgiLight, Inc., C.A. No. 12-cv-
`00354-JG (N.D. Ohio Mar. 18, 2013), ECF No. 43 (Sum-
`mary Judgment Order). GE appeals. We have jurisdic-
`tion under 28 U.S.C. § 1295(a)(1).
`
`2
`
`
`
`DISCUSSION
`We review claim construction de novo. Lighting Bal-
`last Control LLC v. Philips Elecs. N. Am. Corp., 744 F.3d
`1272, 1276–77 (Fed. Cir. 2014) (en banc). We review the
`grant of summary judgment under the law of the relevant
`regional circuit. The Sixth Circuit reviews grants of
`summary judgment de novo. Moore v. Holbrook, 2 F.3d
`697, 698 (6th Cir. 1993). Summary judgment is appropri-
`ate when there is no genuine issue of material fact and
`the moving party is entitled to judgment as a matter of
`law. Id.
`
`I. ’140 and ’771 Patents
`The ’140 and ’771 patents1 are directed to light-
`emitting diode (LED) string lights that include an LED,
`an insulated electrical conductor (i.e., wire), and an insu-
`lation displacement connector (IDC connector). ’140
`patent, Abstract. Power must be provided from the
`insulated electrical conductor to the LEDs. To accomplish
`this, the patents disclose an IDC connector with terminals
`(60, 66, 68) that are electrically connected to the LEDs
`and configured to displace a portion of the insulation
`surrounding the electrical conductor. Id. col. 4 ll. 5–53,
`Fig. 6 (reproduced in part below). For example, as a wire
`is received in channel 74, terminal 68 displaces (i.e., cuts)
`insulation surrounding the wire to create an electrical
`connection between the wire and the terminal (and thus
`the LED). Id.
`
`1 The ’771 patent is a continuation-in-part of the
`’140 patent.
`
`3
`
`
`
`4
`
`GE LIGHTING SOLUTIONS, LLC v. AGILIGHT, INC.
`
`
`
`The asserted claims of these two patents recite a
`string light engine including, among other things, an IDC
`connector. Claim 1 of the ’140 patent is representative
`(emphases added):
`
`A string light engine comprising:
`
`a flexible insulated electrical conductor;
`
`a first support comprising a dielectric layer and
`circuitry;
`
`a first IDC connector extending away from the
`first support and in electrical communication with
`the circuitry of the first support,
`the first IDC
`connector comprising a terminal that is inserted
`into the conductor to provide an electrical connec-
`tion between the conductor and the circuitry of
`the first support;
`
`a first LED mounted on the first support and in
`electrical communication with the circuitry of the
`first support; and
`
`a first overmolded housing at least substantially
`surrounding the first support and a portion of the
`conductor adjacent the first support.
`
`The district court recognized that an “IDC connector”
`“is commonly used in electrical engineering to connote a
`
`4
`
`
`
`range of devices,” but found that the ’140 and ’771 patents
`were limited to a “more specialized IDC connector.” GE
`Lighting Solutions, LLC. v. AgiLight, Inc., C.A. No. 12-cv-
`00354-JG, slip op. at 11 (N.D. Ohio Dec. 13, 2012), ECF
`No. 32 (Claim Construction Order). The court relied on
`the embodiment disclosed in Figure 6 and limitations of
`several dependent claims to construe IDC connector as
`requiring (1) four electrical terminals; (2) a two-part
`housing that snaps together to enclose three insulated
`conductors; (3) the snapping together allows the terminals
`to cut or pierce through the conductor’s insulation while
`preventing the conductor from moving out of the housing;
`and (4) a conductive connection between the terminal and
`the insulated conductor. Id. at 11–14. Based on this
`construction, the parties stipulated to noninfringement.
`We hold that the district court incorrectly construed
`“IDC connector.” There is no dispute that the plain
`meaning of IDC connector is “a connector that displaces
`insulation surrounding an insulated conductor to make
`electrical contact with the conductor.” Appellant’s Br. at
`34–35; see also Reply Br. at 11–12. Nor is there any
`dispute that IDC connector is a commonly used term that
`connotes a range of known devices.
`Nothing in the intrinsic record requires a departure
`from this plain and ordinary meaning. AgiLight is cer-
`tainly correct that claim terms must be construed in light
`of the specification and prosecution history, and cannot be
`considered in isolation. See Phillips v. AWH Corp., 415
`F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). However, the
`specification and prosecution history only compel depar-
`ture from the plain meaning in two instances: lexicogra-
`phy and disavowal. Thorner v. Sony Computer Entm’t
`Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). The
`standards for finding lexicography and disavowal are
`exacting. To act as its own lexicographer, a patentee
`must “clearly set forth a definition of the disputed claim
`
`5
`
`
`
`term,” and “clearly express an intent to define the term.”
`Id. Similarly, disavowal requires that “the specification
`[or prosecution history] make[] clear that the invention
`does not include a particular feature.” SciMed Life Sys.
`Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337,
`1341 (Fed. Cir. 2001).
`There is no lexicography or disavowal here. The spec-
`ifications and their prosecution histories do not define
`IDC connector or include any indication that the inven-
`tors intended to act as their own lexicographers. Like-
`wise, while the specifications only disclose a single
`embodiment of an IDC connector in Figure 6, they do not
`disavow or disclaim the plain meaning of IDC connector
`or otherwise limit it to that embodiment. A patent that
`discloses only one embodiment is not necessarily limited
`to that embodiment. Saunders Grp., Inc. v. Comfortrac,
`Inc., 492 F.3d 1326, 1332 (Fed. Cir. 2007). “[I]t is improp-
`er to read limitations from a preferred embodiment de-
`scribed in the specification—even if it is the only
`embodiment—into the claims absent a clear indication in
`the intrinsic record that the patentee intended the claims
`to be so limited.” Liebel-Flarsheim Co. v. Medrad, Inc.,
`358 F.3d 898, 913 (Fed. Cir. 2004).
`There are certainly cases where we have found disa-
`vowal or disclaimer based on clear and unmistakable
`statements by the patentee that limit the claims, such as
`“the present invention includes . . .” or “the present inven-
`tion is . . . ” or “all embodiments of the present invention
`are . . . .” See, e.g., Regents of Univ. of Minn. v. AGA Med.
`Corp., 717 F.3d 929, 936 (Fed. Cir. 2013); Honeywell Int’l,
`Inc. v. ITT Indus., Inc., 452 F.3d 1312, 1316–19 (Fed. Cir.
`2006); SciMed Life Sys., Inc., 242 F.3d at 1343–44. We
`have found disclaimer when the specification indicated
`that for “successful manufacture” a particular step was
`“require[d].” Andersen Corp. v. Fiber Composites, LLC,
`474 F.3d 1361, 1367 (Fed. Cir. 2007). We have found
`
`6
`
`
`
`disclaimer when the specification indicated that the
`invention operated by “pushing (as opposed to pulling)
`forces,” and then characterized the “pushing forces” as “an
`important feature of the present invention.” SafeTCare
`Mfg., Inc. v. Tele-Made, Inc., 497 F.3d 1262, 1269–70
`(Fed. Cir. 2007). We also have found disclaimer when the
`patent repeatedly disparaged an embodiment as “anti-
`quated,” having “inherent inadequacies,” and then de-
`tailed the “deficiencies [that] make it difficult” to use.
`Chicago Bd. Options Exch., Inc. v. Int’l Sec. Exch., LLC,
`677 F.3d 1361, 1372 (Fed. Cir. 2012). Likewise, we have
`used disclaimer to limit a claim element to a feature of
`the preferred embodiment when the specification de-
`scribed that feature as a “very important feature . . . in an
`aspect of the present invention,” and disparaged alterna-
`tives to that feature. Inpro II Licensing, S.A.R.L. v. T-
`Mobile USA Inc., 450 F.3d 1350, 1354–55 (Fed. Cir. 2008).
`Such circumstances are not present in this case. The
`specifications consistently refer to the IDC connector of
`Figure 6 merely as a “depicted embodiment.” See, e.g.,
`’140 patent col. 4 ll. 5–7, 16–17. They do not describe the
`depicted IDC connector—or any of the various limitations
`set forth by the district court—as the present invention,
`as essential, or as important. Nor do they disparage other
`IDC connectors. This is simply not a case where the
`patentee has disavowed the plain meaning of the term
`IDC connector.
`The district court also erred by importing limitations
`from the dependent claims of the ’140 patent into the
`independent claims. See Claim Construction Order at 11–
`13. For example, dependent claim 11 requires the IDC
`connector to include three wires and dependent claim 12
`requires the IDC connector to include four terminals—
`both features included in the district court’s construction.
`The doctrine of claim differentiation, however, creates a
`presumption that these dependent claim limitations are
`
`7
`
`
`
`not included in the independent claim. Liebel-Flarsheim,
`358 F.3d at 909. Of course, claim differentiation is not a
`hard and fast rule, and the presumption can be overcome
`by a contrary construction required by the specification or
`prosecution history, such as via a disclaimer. Seachange
`Int’l, Inc. v. C-COR, Inc., 413 F.3d 1361, 1369 (Fed. Cir.
`2005). In this case, however, nothing in the specification
`or prosecution history rebuts the presumption of claim
`differentiation. We thus hold that the district court erred
`by incorporating the dependent claim limitations into the
`construction of IDC connector.
`An “IDC connector” in the ’140 and ’771 patents is “a
`connector that displaces insulation surrounding an insu-
`lated conductor to make electrical contact with the con-
`ductor.” It was error to import the structural limitations
`of the preferred embodiment and the structural limita-
`tions of the dependent claims into the term IDC connect-
`or. We reverse the district court’s grant of summary
`judgment of noninfringement of the ’140 and ’771 patents,
`and remand for further proceedings based on this con-
`struction.
`
`II. ’896 Patent
`The ’896 patent discloses an optical element that
`houses an LED and interacts with the light emitted
`therefrom to increase its viewing angle. ’896 patent col. 6
`ll. 25–43, Fig. 7. All of the asserted claims recite a light
`engine with an “optical element having a substantially
`ellipsoidal inner profile and generally spherical outer
`profile.” On appeal, GE challenges the district court’s
`determination on summary judgment that the accused
`AgiLight structure lacks a substantially ellipsoidal inner
`profile.
`
`8
`
`
`
`A. “substantially ellipsoidal inner profile”
`The parties stipulated that “substantially ellipsoidal
`inner profile” should be construed as “an inner three-
`dimensional surface where the sum of the distances from
`two focal points and the points on the inner surface is
`substantially constant.” The dispute over this term
`pertains to an issue not addressed by the stipulation:
`whether the entire inner profile must be substantially
`ellipsoidal or whether the claims can be met if a portion of
`the inner profile is substantially ellipsoidal. This is not
`an uncommon occurrence—parties in patent cases fre-
`quently stipulate to a construction or the court construes
`a term, only to have their dispute evolve to a point where
`they realize that a further construction is necessary.
`The district court held that “the entirety of the
`[AgiLight] lens” must be substantially ellipsoidal. Sum-
`mary Judgment Order at 11–13 (emphasis added). The
`district court found that a portion of the AgiLight lens
`was “arguably” ellipsoidal, but that the AgiLight lens also
`included non-ellipsoidal, conical portions. Id. at 11.
`Thus, the court granted summary judgment of nonin-
`fringement. Id. at 13.
`This is a close case: whether the entire inner profile
`must be substantially ellipsoidal. Neither the claim
`language, “the optical element having a . . . substantially
`ellipsoidal inner profile,” nor the stipulated construction,
`“an inner three-dimensional surface . . .” directly address-
`es this issue. In this case, were we to adopt AgiLight’s
`proposed construction, that the entire inner profile must
`be substantially ellipsoidal, we would exclude the specifi-
`cation’s only disclosed embodiment. Figure 7, reproduced
`in part below, depicts a side view elevation of the refrac-
`tive dome 140. It includes inner profile 152 and outer
`profile 148.
`
`9
`
`
`
`
`Explaining this figure, the specification states that
`this “dome 140 has a spherical outer profile, or outer
`surface, 148 and an ellipsoidal inner profile, or inner
`surface 152.” ’896 patent col. 6 ll. 33–36 (emphasis add-
`ed). According to the patent, the inner profile 152 of
`Figure 7 is ellipsoidal. It is undisputed that only a por-
`tion of the inner profile 152 (the part above the line at
`152) is substantially ellipsoidal. The bottom half of that
`inner profile (the portion below the line at 152) is not
`arguably substantially ellipsoidal. Yet the specification
`expressly refers to this inner profile as ellipsoidal. And
`this is the only reference to the ellipsoidal inner profile in
`the specification.
`We normally do not construe claims in a manner that
`would exclude the preferred embodiment, especially
`where it is the only disclosed embodiment. See MBO
`Labs., Inc. v. Becton, Dickinson & Co., 474 F.3d 1323,
`1333 (Fed. Cir. 2007). In particular, “where claims can
`reasonably [be] interpreted to include a specific embodi-
`ment, it is incorrect to construe the claims to exclude that
`embodiment, absent probative evidence on the contrary.”
`Oatey Co. v. IPS Corp., 514 F.3d 1271, 1277 (Fed. Cir.
`2008). No such evidence exists in this case that would
`require us to construe “substantially ellipsoidal inner
`profile” in a manner that would exclude the Figure 7
`embodiment. There are no statements during prosecution
`
`10
`
`
`
`or in the specification that indicate the patentee’s intent
`to limit his claim to an entire inner profile that is sub-
`stantially ellipsoidal. And the specification makes clear
`that the patentee considered Figure 7 to have an “ellip-
`soidal inner profile.” We conclude that district court erred
`when it required the entire inner profile to be substantial-
`ly ellipsoidal. The “substantially ellipsoidal inner profile”
`limitation can be met if a portion of the inner profile is
`substantially ellipsoidal determined in accordance with
`the stipulation.
`Given this construction, there is a genuine factual
`dispute as to whether the accused structure includes a
`“substantially ellipsoidal inner profile.” The district court
`recognized that a portion of the inner profile of AgiLight’s
`structure is “arguably” ellipsoidal. Summary Judgment
`Order at 11. The depictions of the accused product, over
`which GE’s attorney imposed an image that AgiLight
`agrees meets the construction of “substantially ellipsoidal
`inner profile,” reflect a genuine factual dispute as to
`whether the AgiLight structure includes a substantially
`ellipsoidal inner profile. See J.A. 865, 867 (reproduced
`below).
`
`
`
`11
`
`
`
`
`We agree with AgiLight that attorney argument,
`alone, may not create a material question of fact regard-
`ing technical evidence. Here, however, it was AgiLight’s
`own expert who provided the cross-sectional images of the
`AgiLight devices. Those images are evidence. GE’s
`attorney merely placed an image of an undisputedly
`substantially ellipsoidal inner profile over AgiLight’s
`cross-sectional images. These cross-sectional images
`point to a genuine dispute as to whether AgiLight’s ac-
`cused devices include a substantially ellipsoidal inner
`profile. We thus reverse the district court’s grant of
`summary judgment with regard to the ’896 patent and
`remand.
`
`B. “generally spherical outer profile”
`As an alternative basis for affirming summary judg-
`ment of noninfringement of the ’896 patent, AgiLight
`argues that its accused products do not include a “general-
`ly spherical outer profile.” The parties stipulated that
`“generally spherical outer profile” should be construed as
`“an outer three-dimensional surface where the points on
`the surface are generally equidistant from a center point.”
`AgiLight asserts that its expert explained that the outside
`of the lens could not be considered generally spherical. It
`contends that GE’s attorney annotations of the AgiLight
`cross sections (reproduced below) only show that the lens
`looks circular, not that it has an outer surface with points
`that are “generally equidistant from a center point.”
`Appellee’s Br. at 37 (citing J.A. 848–49).
`
`12
`
`
`
`
`
`For similar reasons, we find that the drawings of the
`accused products point to a genuine factual dispute as to
`whether the AgiLight structure’s outer profile is generally
`spherical. Again, the cross-sectional images came from
`AgiLight’s own expert and are themselves evidence. GE’s
`attorney merely overlaid an undisputedly circular image
`over AgiLight’s expert’s cross section. Surely an expert is
`not required to create a fact question about whether
`something is generally spherical to preclude summary
`judgment. We thus reject AgiLight’s argument that the
`“generally spherical outer profile” feature provides an
`alternative basis to affirm the district court’s grant of
`summary judgment.
`III. ’055 Patent
`The ’055 patent is directed to an overmolding process
`that applies a protective sealant over the printed circuit
`board (PCB) to which an LED is attached, but not over
`the LED itself. ’055 patent Abstract. To ensure that the
`protective sealant does not cover the LED, an “annular
`gasket” surrounds the LED before it is placed into an
`injection mold. Id. col. 6 ll. 18–30, Fig. 11. A generally
`hollow member seals against the annular gasket, enclos-
`ing the LED and isolating it from the protective sealant,
`which is then injected into the mold. Id. col. 6 ll. 18–30,
`59–64, col. 8 ll. 30–65. Figure 4, reproduced below, shows
`a perspective view of an exemplary annular gasket 32
`surrounding an LED 16 before a generally hollow member
`
`13
`
`
`
`(not shown) is sealed against the top of the annular
`gasket to fully enclose the LED.
`
`
`The asserted claims are directed to an overmolding
`method and recite “disposing an annular gasket on [a
`PCB] to surround the [LED].” E.g., id. claims 1–3, 7, 9,
`13. The district court construed “annular gasket” to be “a
`three-dimensional deformable material used to make a
`pressure-tight joint between stationary parts, with an
`opening in its center capable of sealing off its center area
`when bonded statically between stationary parts on its
`top and bottom.” Claim Construction Order at 8 (empha-
`sis added).
`As shown in the image below, in AgiLight’s accused
`process, a concave lens (the alleged “annular gasket”) is
`fit tightly into a socket in a tool bottom. A PCB with an
`LED mounted on it is placed over the lens, such that the
`LED is surrounded by the lens. A supporter and tool top
`are placed over the PCB, and sealant is injected into the
`cavities between the tool top and bottom.
`
`14
`
`
`
`
`The district court granted summary judgment of non-
`infringement based on the “annular gasket” limitation.2
`Summary Judgment Order at 6–10. The district court
`determined that the AgiLight lens is not an “annular
`gasket” because its concave inner surface lacks an “open-
`ing” as required by the court’s construction. Id. at 6–8.
`In doing so, the district court made clear that the inside of
`a concave surface cannot be an “opening” in the context of
`its construction of “annular gasket.” Id. at 8.
`We agree with the district court that AgiLight’s dome-
`shaped lens is not an annular gasket because it does not
`have “an opening.” While the volume inside a dome may
`be considered an “opening” in a general sense, it is not an
`opening in the context of an “annular gasket.” This is
`consistent with plain and ordinary meaning of a “gasket”
`and with the annular gaskets disclosed in the ’055 patent,
`
`2 The district court also granted summary judg-
`ment to AgiLight based on the “generally hollow member”
`limitation, which is also recited in all of the asserted
`claims. Because our conclusion regarding the “annular
`gasket” limitation is sufficient to affirm the grant of
`summary judgment, we do not address the district court’s
`construction of “generally hollow member.”
`
`15
`
`
`
`which are ring-shaped (including circular, elliptical,
`square, etc., profiles) and can be cut from a “sheet” of
`material. ’055 patent col. 5 ll. 21–36, 50–52, Figs. 4–5.
`There is no genuine issue of material fact. Under the
`proper claim construction, AgiLight’s dome-shaped lens is
`not an annular gasket because it lacks an opening. We
`affirm the court’s grant of summary judgment of the ’055
`patent on this ground.
`CONCLUSION
`We affirm the grant of summary judgment with re-
`gard to the ’055 patent. We reverse the grant of summary
`judgment with regard to the ’140, ’771 and ’896 patents
`and remand.
`AFFIRMED-IN-PART, REVERSED-IN-PART,
`REMANDED
`COSTS
`
`No costs.
`
`16
`
`
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`GE LIGHTING SOLUTIONS, LLC,
`Plaintiff-Appellant,
`
`v.
`
`AGILIGHT, INC.,
`Defendant-Appellee.
`______________________
`
`2013-1267
`______________________
`
`Appeal from the United States District Court for the
`Northern District of Ohio in No. 12-CV-0354, Judge
`James S. Gwin.
`
`______________________
`
`Before RADER, Chief Judge, MOORE and REYNA, Circuit
`Judges.
`REYNA, Circuit Judge, concurring-in-part and dissenting-
`in-part.
`I agree with the majority’s opinion regarding the con-
`struction of “IDC connector” in the ’140 and ’771 patents
`and “annular gasket” in the ’055 patent. I therefore
`concur in the majority’s resolution of the issues regarding
`those patents. I disagree, however, with the majority’s
`interpretation of the terms “substantially ellipsoidal inner
`profile” and “generally spherical outer profile” in the ’896
`patent. In my view, the stipulated constructions must
`apply to the full inner and outer profiles (or surfaces), not
`
`17
`
`
`
`simply any mere part of those profiles. I therefore dissent
`to the majority’s outcome concerning the ’896 patent.
`The majority’s reversal of the district court’s grant of
`summary judgment of non-infringement under the ’896
`patent was premised on its erroneous conclusion that the
`use of the term “profile” in the claims referred only to “a
`portion” of the recited profiles. Under the majority’s view,
`there are a limitless number of inner and outer “profiles”
`envisioned by the claims and, so long as one of those
`innumerable inner profiles meets the “substantially
`ellipsoidal” limitation and one of the innumerable outer
`profiles meets the “generally spherical” limitation, the
`claims have been infringed. I believe this is an improper
`view of the scope of the claims because it is inconsistent
`with the context provided by the claim language, the plain
`meaning of the term “profile,” and GE’s disclaimer during
`prosecution.
`The claim element with the disputed terms from the
`’896 patent recites the following:
`a substantially dome-shaped refractive optical el-
`ement covering the LED, the optical element hav-
`ing a generally spherical outer profile and
`substantially ellipsoidal inner profile to increase
`the primary viewing angle of the LED to provide
`an altered viewing angle that is greater than the
`primary viewing angle;
`’896 patent col. 8 ll. 30-35. As a preliminary matter, this
`element refers to the entirety of the “substantially dome-
`shaped refractive optical element.” That feature of the
`claimed invention is described in association with limita-
`tions regarding its outer and inner profile. In context, the
`most consistent reading of the profile terms is that they
`serve to describe the overall geometric features of the
`claimed “refractive optical element.” See Phillips v. AWH
`Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc)
`(“[T]he claims themselves provide substantial guidance as
`
`18
`
`
`
`to the meaning of particular claim terms. To begin with,
`the context in which a term is used in the asserted claim
`can be highly instructive.”). Not, as the majority’s con-
`struction allows, merely any portion given that no further
`description is provided for the other portions, no matter
`how insubstantial or insignificant, of the outer and inner
`profiles of that “refractive optical element.”
`The context supplied by the claim language is also
`consistent with the plain meaning of the word “profile.”
`While “profile” has different meanings in different con-
`texts, the definition applicable to the present case is “an
`outline of an object, as a molding, formed on a vertical
`plane passed through the object at right angles to one of
`its principal horizontal dimensions.”1 RANDOM HOUSE
`WEBSTER’S COLLEGE DICTIONARY (2d ed. 1999). Indeed,
`the patent describes and depicts exactly such an outline
`on a vertical plane in connection with cross-sectional
`views of the disclosed optical element. The patent ex-
`plains, consistent with the dictionary definition, that the
`refractive domes “can be an integrally molded plastic or
`glass piece, i.e., a one-piece unit.” ’896 patent col. 6 ll. 21-
`23 (emphasis added). The patent further describes Fig-
`ures 6 and 7 as the “cross-sectional view of an optical
`element . . . shown in cross-section taken through the
`center of the optical element in the x-y plane” and “the
`cross-sectional view of FIG. 6 shown in side elevation,”
`respectively. Id., col. 3, ll. 33-37. These images depict the
`outlines of the optical elements with two refractive domes
`as follows:
`
`“[W]e are free to consult dictionaries regardless of
`1
`whether they have been offered by a party in evidence or
`not.” Boehringer Ingelheim Vetmedica, Inc. v. Schering-
`Plough Corp., 320 F.3d 1339, 1346 (Fed. Cir. 2003)
`
`19
`
`
`
`
`
`Id., figs. 6 & 7.
`The specification explains that the profiles describe
`the surfaces of the dome-shaped optical elements. The
`depiction in Figure 7 is described as follows: “For the
`depicted optical element each dome 140 has a spherical
`outer profile, or outer surface, 148 and an ellipsoidal
`inner profile, or inner surface 152.” Id., col. 3, ll. 33-37
`(emphasis added). During oral argument, GE’s counsel
`referred to Figure 7 and the disclosure in the specification
`by stating that “[i]f you look at Figure 7 of the ’896 patent,
`that is clearly showing you—which by the way is de-
`scribed as a substantially ellipsoidal inner profile—if you
`
`20
`
`
`
`look at that profile, it is very clearly not ellipsoidal across
`its
`entire
`profile.”
`
`Hr’g
`at
`3:18-3:33
`(http://oralarguments.cafc.uscourts.gov/default.aspx?fl=20
`13-1267.mp3). Notwithstanding the fact that the specifi-
`cation does not describe the ellipsoidal inner profile
`depicted in Figure 7 as substantially ellipsoidal, the
`statement from GE’s counsel is revealing because it
`(accurately) equates the word “profile” with the “entire
`profile.” This is relevant because it further indicates that
`the disclosed “profile” implicitly refers to the entire outline
`of the depicted cross-section. Yet, GE’s arguments deviate
`from this plain meaning regarding the entire profile by
`seeking a construction for merely a partial profile, and the
`majority adopted this view by recasting “profile” to mean
`“a portion of” the profile. This departs from the language
`of the claims by importing an extraneous adjectival modi-
`fier into the claim, which, in effect, impermissibly re-
`writes the patent’s claims. See Nike Inc. v. Wolverine
`World Wide, Inc., 43 F.3d 644, 647 (Fed. Cir. 1994) (reject-
`ing the patentee’s proposed claim construction that would,
`“in effect, rewrite its patent claims to suit its needs in this
`litigation”).
`There is no dispute that the specification wrongly de-
`scribes the shape of the inner profile depicted in Figure 7.
`The specification says the depicted inner profile is “ellip-
`soidal” when the full profile clearly is not. The majority
`resolved this flaw in favor of the patentee by parsing the
`claimed profiles to any portion thereof. While I believe
`that express ambiguity in a patent document that affects
`the scope of the claims should typically be resolved in
`favor of the public over the patentee, the ambiguity here
`is most directly resolved from the amendments and re-
`marks made by the patentee during prosecution.
`The majority states that “there are no statements dur-
`ing prosecution or in the specification that indicate the
`patentee’s intent to limit his claim to an entire inner
`
`21
`
`
`
`profile that is substantially ellipsoidal.” Maj. Op. at 10-
`11. This is not so. The profile limitations of the present
`dispute were added to the claims during prosecution in
`order to overcome a rejection that relied, in part, on U.S.
`Pat. No. 6,566,824 (“the ’824 patent”). The amendment
`changed the disputed element as follows:
`a substantially dome-shaped refractive optical el-
`ement covering the LED, the optical element be
`ing configured having a generally spherical outer
`profile and substantially ellipsoidal inner profile
`to increase the primary viewing angle of the LED
`to provide an altered viewing angle that is greater
`than the primary viewing angle;
`Claim Amendment in File History of Pat. Appl. No.
`12/105,963 (June 29, 2010) at 4. In short, the claim went
`from having no limitations regarding the geometry of the
`optical element to the specifically recited geometries for
`the inner and outer profiles.
`The amendment was made in order to overcome the
`specific geometries of the optical elements expressly
`disclosed in the prior art. In particular, the amendment
`sought to overcome the disclosure in Figure 14 of the ’824
`patent, which depicts the following optical element with
`inner and outer surfaces referred to as a “Bugeye®” lens:
`
`22
`
`
`
`
`’824 patent, Fig. 14, col. 2 ll. 60-62 (“FIG. 14 is a cross-
`sectional view of one of the BugEye™ lenses of FIG. 13
`showing a cone of light emanating therefrom”). In argu-
`ing that the amendment overcame the disclosure of the
`’824 patent, the patentee stated that:
`[The ’824 patent] displays various dome
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