Case 1:09-cv-00146-RBK -JS Document 119 Filed 10/18/11 Page 1 of 25 PageID #: 1374
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`
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`
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`C.A. No. 09-146-RBK
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`Plaintiff,
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`Defendant.
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`JOSEPH NEEV,
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`v.
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`ABBOTT MEDICAL OPTICS INC.,
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`
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`PLAINTIFF JOSEPH NEEV’S RESPONSIVE MARKMAN BRIEF
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`
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`Dated: October 18, 2011
`
`Richard K. Herrmann (#405)
`Mary B. Matterer (#2696)
`MORRIS JAMES LLP
`500 Delaware Avenue, Suite 1500
`Wilmington, DE 19801
`(302) 888-6800
`mmatterer@morrisjames.com
`
`Attorneys for Plaintiff, Joseph Neev
`
`Alcon Research, Ltd.
`Exhibit 1016 - Page 1
`
`

`

`Case 1:09-cv-00146-RBK -JS Document 119 Filed 10/18/11 Page 2 of 25 PageID #: 1375
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`TABLE OF CONTENTS
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`Page
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`I.
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`II.
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`INTRODUCTION .............................................................................................................. 1
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`ARGUMENT ...................................................................................................................... 1
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`A. The Court should reject AMO’s pulse-is-not-a-pulse argument. .......................................... 1
`
`1. Claim 5’s preamble does not require that continuously emitted electromagnetic
`radiation interact with the ablated material; nor does it exclude electromagnetic
`pulses interacting with the ablated material; moreover, the body of the claim
`itself describes a complete invention in which electromagnetic pulses interact
`with the ablated material. ................................................................................................... 2
`
`that, not
`just
`radiation” means
`2. “Continuously emitted electromagnetic
`“continuous electromagnetic radiation without any intervening period of zero
`power.” ............................................................................................................................... 4
`
`3. It is improper to limit the “modified beam” of Claim 5 to one that has the same
`characteristics as the continuously emitted source beam from which it is created,
`or to one that is modified solely by “spatial partitioning” as AMO proposes,
`because the claim clearly includes creating a pulse of electromagnetic energy by
`redistributing the source beam in time and space. ............................................................. 5
`
`B. The Court should reject AMO’s attempt to improperly import limitations into the
`varying-the-beam-parameters limitations.............................................................................. 9
`
`1. “Controlled, variable rate material modification/removal” means just that, it does
`not include the limitation of “manipulating the beam parameters while irradiating
`the target material.” ........................................................................................................... 9
`
`2. The manipulating-beam-parameters limitations do not contain any limitation
`requiring that the beam parameters be manipulated after the beam has been
`turned on. ........................................................................................................................... 9
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`C. The Court should reject AMO’s proposed construction of the spatial-or-temporal-
`alteration limitations. ........................................................................................................... 12
`
`1. “Target material” and “target region” do not refer to an entire targeted object or
`specific fixed location in that object. ............................................................................... 12
`
`2. The preparing-the-target-region limitation does not require that a substance be
`introduced to the target region. ........................................................................................ 14
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`D. The Court should reject AMO’s pulse-train argument. ....................................................... 15
`
`
`
`i
`
`Alcon Research, Ltd.
`Exhibit 1016 - Page 2
`
`

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`Case 1:09-cv-00146-RBK -JS Document 119 Filed 10/18/11 Page 3 of 25 PageID #: 1376
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`1. “Interaction energy transients” are energy transients; and “plasma” is plasma and
`was not disclaimed. .......................................................................................................... 16
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`2. The ’199 Patent does not require multiple pulses to interact with the exact same
`material. ........................................................................................................................... 18
`
`the “complete
`3. “Ablation” means ablation, does not necessarily require
`disintegration and explosive ejection of the target volume,” and does not require
`that more than one pulse interact with the same volume to work the ablation. ............... 19
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`III.
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`CONCLUSION ................................................................................................................. 20
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`
`
`
`ii
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`Alcon Research, Ltd.
`Exhibit 1016 - Page 3
`
`

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`Case 1:09-cv-00146-RBK -JS Document 119 Filed 10/18/11 Page 4 of 25 PageID #: 1377
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`
`
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`FEDERAL CASES
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`TABLE OF AUTHORITIES
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`Page(s)
`
`Biotec Biologische Naturverpackungen GmbH v. Biocorp., Inc.,
`249 F.3d 1341 (Fed. Cir. 2001)........................................................................................6, 8, 17
`
`DSW Inc. v. Shoe Pavilion Inc.,
`537 F.3d 1342 (Fed. Cir. 2008)............................................................................................4, 12
`
`Epistar Corp. v. ITC,
`566 F.3d 1321 (Fed. Cir. 2009)..........................................................................................14, 19
`
`Invitrogen Corp. v. Biocrest Mfg., L.P.,
`327 F.3d 1364 (Fed. Cir. 2003)..................................................................................................2
`
`Linear Tech. Corp. v. ITC,
`566 F.3d 1049 (Fed. Cir. 2009)..........................................................................................10, 12
`
`Martek Biosciences Corp. v. Nutrinova, Inc.,
`579 F.3d 1363 (Fed. Cir. 2009)................................................................................................14
`
`MBO Labs., Inc. v. Becton, Dickinson & Co.,
`474 F.3d 1323 (Fed. Cir. 2007)......................................................................................5, 10, 14
`
`Med. Sys., Inc. v. Biolitec, Inc.,
`618 F.3d 1354 (Fed. Cir. 2010)..............................................................................................2, 4
`
`O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co.,
`521 F.3d 1351 (Fed. Cir. 2008)............................................................................................4, 12
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ..................................................................5, 6, 13, 14
`
`Salazar v. Procter & Gamble Co.,
`414 F.3d 1342 (Fed. Cir. 2005)..........................................................................................15, 16
`
`Schindler Elevator Corp. v. Otis Elevator Co.,
`593 F.3d 1275 (Fed. Cir. 2010)..................................................................................................6
`
`Sundance v. Demonte Fabricating, Ltd.,
`550 F.3d 1356 (Fed. Cir. 2008)..........................................................................................13, 15
`
`
`
`iii
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`Alcon Research, Ltd.
`Exhibit 1016 - Page 4
`
`

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`Case 1:09-cv-00146-RBK -JS Document 119 Filed 10/18/11 Page 5 of 25 PageID #: 1378
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`OTHER AUTHORITIES
`
`Ex Parte Team Worldwide Corp., Appeal 2010-002223, Reexam No. 90/008,926, 2010
`Pat. App. LEXIS 17650 (BPAI July 22, 2010) ........................................................................15
`
`
`
`iv
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`Alcon Research, Ltd.
`Exhibit 1016 - Page 5
`
`

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`Case 1:09-cv-00146-RBK -JS Document 119 Filed 10/18/11 Page 6 of 25 PageID #: 1379
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`I.
`
`INTRODUCTION
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`The language and claims of U.S. Patent No. 6,482,199, (the “’199 Patent”) is plain and
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`simple, and little construction (if any) is required from this Court. Despite the plain language of
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`the claims, Defendant Abbott Medical Optics Inc. (“AMO”) has come to Court with a host of
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`arguments that are all aimed at persuading the Court to rewrite the claims to limit the scope of
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`Dr. Neev’s rights. AMO’s positions are not proper under the established case law relating to
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`patent claim construction—the numerous legal errors in AMO’s analysis are discussed below.
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`Moreover, AMO’s presentation of the facts relevant to claim construction are simply attorney
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`argument, based on out-of-context quotes from portions of the record.
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`In contrast, Dr. Neev moves the Court to construe claims according to widely accepted rules
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`set forth in decades of precedent. Importantly, unlike AMO, Dr. Neev is not asking the Court to
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`interpret even simple and widely used terms in the hope of favorably altering the scope of the
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`claims through an advantageous construction. Dr. Neev simply requests that the Court construe
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`the scope of the asserted patent claims consistent with how one of ordinary skill in the art would
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`understand the terms which is all that the parties’ experts will need to provide their opinions
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`about the infringement and validity issues in this case.
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`II.
`
`ARGUMENT
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`A. The Court should reject AMO’s pulse-is-not-a-pulse argument.
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`AMO utterly fails to articulate a cogent argument as to why Claim 5—to what is clearly an
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`invention for creating a beam of electromagnetic pulses from a beam of continuously emitted
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`electromagnetic radiation and directing the beam of pulses to a target material where the pulse
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`interaction with the target material works to ablate the material—requires interaction of the
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`continuously emitted electromagnetic radiation with the material, or why it excludes a pulsed
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`
`
`1
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`Alcon Research, Ltd.
`Exhibit 1016 - Page 6
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`

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`Case 1:09-cv-00146-RBK -JS Document 119 Filed 10/18/11 Page 7 of 25 PageID #: 1380
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`beam.1 And AMO’s proposed construction contradicts the clear description of an embodiment of
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`the invention, a “method for ablating a material [that] comprises the steps of directing a pulse of
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`energy at the material [] so as to permanently modify a quantity of the material.” ’199 Patent,
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`col.5 ll.61–64.
`
`1. Claim 5’s preamble does not require that continuously emitted electromagnetic
`radiation interact with the ablated material; nor does it exclude electromagnetic
`pulses interacting with the ablated material; moreover, the body of the claim
`itself describes a complete invention in which electromagnetic pulses interact
`with the ablated material.
`
`AMO’s attempt to narrow the scope of independent Claim 5 to require “material removal by
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`a beam of electromagnetic radiation that operates without any intervening period of zero power
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`as it interacts with the material” not only flies in the face of Federal Circuit precedent, it defies
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`common sense. The law disfavors—and in this instance the Court should reject—AMO’s attempt
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`to read the preamble as limiting. It is well established that a claim’s preamble “[g]enerally . . .
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`does not limit the claim[]” and specifically does not limit the claim when, as here, the preamble
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`merely describes “the set of limitations in the body of the claim that completely set forth the
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`invention.” See Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358–59 (Fed. Cir. 2010)
`
`(refusing to limit a laser-vaporization method claim to “photoselective vaporization” because this
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`term, found only in the preamble of the claims at issue, is “simply a descriptive name for the
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`invention that is fully set forth in the bod[y] of the claim[]”).
`
`
`1 Claim 5 is an open-ended claim utilizing the “comprising” transition phrase. As such, it is not
`limited to the steps set forth in the process; other steps may be added and still form a method
`which falls within the scope of the claim. See Invitrogen Corp. v. Biocrest Mfg., L.P., 327 F.3d
`1364, 1368 (Fed. Cir. 2003). For example, even if the claim were to be construed as including
`the step of redistributing a source beam in space but not to include the step of changing the
`characteristics of the source beam, a method that includes changing a characteristic of the source
`beam will still be within the scope of Claim 5 if it includes all the steps of Claim 5, regardless of
`whether the method also includes changing the characteristics of the beam.
`
`
`
`2
`
`Alcon Research, Ltd.
`Exhibit 1016 - Page 7
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`

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`Case 1:09-cv-00146-RBK -JS Document 119 Filed 10/18/11 Page 8 of 25 PageID #: 1381
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`The limitations of the body of Claim 5 itself “completely set forth the invention.” An
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`invention that clearly makes a beam of pulsed electromagnetic energy from a beam of
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`continuously emitted electromagnetic radiation, directs the pulses to the material to be ablated,
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`and uses the interaction of pulses with the target material to ablate the material. The claim body
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`recites the steps of a complete method, that can be properly understood without reference to the
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`preamble:
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`[A] method comprising the steps of:
`a) providing a source capable of generating an output beam comprised of
`continuously emitted electromagnetic radiation;
`b) redistributing the beam in time and space to form at least one modified
`beam comprising a plurality of pulses;
`c) directing said modified beam(s) so that their energy distribution at any given
`location on the target material forms a sequence of electromagnetic pulses,
`each electromagnetic pulse having a pulse duration between approximately 1
`femtosecond and approximately 10 millisecond;
`d) operating said source and manipulating parameters of the beam so that the
`electromagnetic pulse's power densities within the region targeted for
`modification are between approximately 104 W/cm3 approximately 1018
`W/cm3 and are larger than a power density threshold for material ablation;
`e) allowing the electromagnetic energy absorbed by the material to complete
`the material ablation, so that substantially most of the deposited
`electromagnetic energy is removed from the target material with an ejected
`portion of the material;
`f) repeating said electromagnetic energy absorption, ablation, and energy
`removal steps at a pulse repetition rage greater than 0.1 pulses per second so
`that substantially most of the cumulative residual thermal energy left in the
`material by a pulse train is removed by the commutative ablation, and at a
`pulse repetition rate less than approximately 100,000 pulses per second until a
`sufficient depth of material has been removed while mitigating transfer of
`thermal or mechanical energy into the remaining material and thus mitigating
`collateral damage thereto.
`
`The preamble states:
`
`A method for a high precision, highly controllable, variable rate, material removal
`by a continuously emitting, continuous wave (CW) beam of electromagnetic
`radiation, the interaction between the electromagnetic radiation, and the material
`being such that a material removal depth within is approximately equal to an
`energy deposition depth within the target material.
`
`
`
`3
`
`Alcon Research, Ltd.
`Exhibit 1016 - Page 8
`
`

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`Case 1:09-cv-00146-RBK -JS Document 119 Filed 10/18/11 Page 9 of 25 PageID #: 1382
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`This preamble simply provides a high-level description of the nature of the patented process, the
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`steps of which are completely set forth in the claim body, it does not provide any information
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`necessary to understand the invention and therefore does not limit it. See Med. Sys., 618 F.3d at
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`1359. Further, the preamble cannot limit the invention as AMO proposes. Such a limitation
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`would impermissibly be in direct conflict with the actual limitations set forth in the body of the
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`claim. See id. at 1359–60. For example, limitations c) and e) clearly set forth the
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`ablation-causing interaction as between the electromagnetic pulses and the material, not as
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`between the continuously emitted source radiation and the material, as AMO erroneously argues
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`the preamble requires.
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`2. “Continuously emitted electromagnetic radiation” means just that, not
`“continuous electromagnetic radiation without any intervening period of zero
`power.”
`
`The Court should reject AMO’s proposed construction as it does nothing to clarify the scope
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`of the claim and threatens to improperly obfuscate plain, unambiguous language and import
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`limitations. The purpose of claim construction is to “clarify and when necessary to explain what
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`the patentee covered by the claims,” and AMO’s proposed construction does nothing to clarify or
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`explain. See O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir.
`
`2008). Further, the plain and unambiguous language of this term governs absent evidence
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`dictating otherwise, and AMO has failed to provide any such evidence. See DSW Inc. v. Shoe
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`Pavilion Inc., 537 F.3d 1342, 1347 (Fed. Cir. 2008).
`
`There is no support for construing the term as AMO proposes, which is merely to add
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`ambiguous limitations. AMO’s construction simply changes the words of the claim without
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`clarifying anything. To the extent that AMO contends that the meaning of “continuously” needs
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`to be clarified, its use of “continuous” to do so fails. Further, “emitted” is not given any effect in
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`
`
`4
`
`Alcon Research, Ltd.
`Exhibit 1016 - Page 9
`
`

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`Case 1:09-cv-00146-RBK -JS Document 119 Filed 10/18/11 Page 10 of 25 PageID #: 1383
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`AMO’s construction—it disappears from the construction even though it is clearly present in the
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`claim.
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`Given that the plain and unambiguous language of “continuously emitted” is readily
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`accessible and understandable to experts in the field, it should not be construed—and it should
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`definitely not be construed to mean something other than its plain and unambiguous meaning. In
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`contrast to the simple and accessible language of the claim, AMO’s proposed construction is
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`convoluted and ambiguous. AMO does not even explain what “continuous electromagnetic
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`radiation” is (other than, presumably, something AMO contends it does not have).
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`3. It is improper to limit the “modified beam” of Claim 5 to one that has the same
`characteristics as the continuously emitted source beam from which it is created,
`or to one that is modified solely by “spatial partitioning” as AMO proposes,
`because the claim clearly includes creating a pulse of electromagnetic energy by
`redistributing the source beam in time and space.
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`The modified-beam limitation, b) “redistributing the beam [of continuously emitted
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`electromagnetic radiation] in time and space to form at least one modified beam,” is plain,
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`unambiguous, and accessible—it does not need to be construed. AMO’s overly limiting
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`construction should be rejected because it improperly excludes disclosed embodiments and
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`renders other claims redundant. See MBO Labs., Inc. v. Becton, Dickinson & Co., 474 F.3d 1323,
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`1333 (Fed. Cir. 2007) (“[A] claim interpretation that excludes a preferred embodiment from the
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`scope of the claim is rarely, if ever, correct.”); Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed.
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`Cir. 2005) (en banc) (“the presence of a dependent claim that adds a particular limitation gives
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`rise to a presumption that the limitation in question is not present in the independent claim”).
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`AMO’s interpretation of the prosecution history cannot be used to limit the scope of the
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`claims. It is well established that the patent specification is “the single best guide to the meaning
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`of a disputed term” and that the prosecution history is less reliable as it is a snapshot of the
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`“ongoing negotiation between the PTO and the applicant” rather than the final product of that
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`
`
`5
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`Alcon Research, Ltd.
`Exhibit 1016 - Page 10
`
`

`

`Case 1:09-cv-00146-RBK -JS Document 119 Filed 10/18/11 Page 11 of 25 PageID #: 1384
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`negotiation—the issued claims. Phillips, 415 F.3d at 1315–17. The prosecution-history statement
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`that AMO relies on does not evince that Dr. Neev “unequivocally disavowed” claim scope, it is
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`not a “clear and unmistakable” disclaimer of scope and should not be interpreted as limiting. See
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`Schindler Elevator Corp. v. Otis Elevator Co., 593 F.3d 1275, 1285 (Fed. Cir. 2010). Indeed, if
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`the prosecution history statement stands for what AMO proposes, the statement is clearly
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`contrary to the plain language of the claims and the specification; therefore, it cannot be limiting.
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`See Biotec Biologische Naturverpackungen GmbH v. Biocorp., Inc., 249 F.3d 1341, 1348 (Fed.
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`Cir. 2001) (citing Intervet Am., Inc. v. Kee-Vet Labs., Inc., 887 F.2d 1050, 1054 (Fed. Cir. 1989)
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`(finally issued claim language trumps erroneous statements made in the course of patent
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`prosecution)).
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`AMO’s construction would impermissibly read out disclosed embodiments. For example,
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`the Pockels-cell and Kerr-cell modulating devices2 would be excluded from AMO’s proposed
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`claim scope. These devices take the beam of continuously emitted electromagnetic radiation and
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`“rapidly switch[] out a portion of the electromagnetic beam so that a pre-determined time
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`duration [of the resultant pulse] can be precisely selected.” ’199 Patent, col.50 ll.16–25; see also,
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`id. fig. 8e, col.52 ll.21–32 (disclosing a shutter / optical switch that chops the continuously
`
`
`2 A Kerr cell is an optical device that is used to modulate, in time, the energy distribution of a
`beam of electromagnetic radiation (e.g., light), but not to redirect the beam. (Tiller Decl. Ex. D
`(“Siegman”) at 7.) The workings of the cell are based on the Kerr effect and are well known.
`(Tiller Decl. Ex. C (“Guenther”) at 13–15.) The Kerr effect is the name given to the phenomenon
`by which the application of an electric field to a material causes the refractive index of the
`material to be different for different directions of propagation of a beam of electromagnetic
`radiation travelling through the material. (Id. at 7, 9, 12–13.) This difference in refractive index,
`a function of the strength of the applied electric field, creates a phase difference between
`components of the beam. (Id. at 13–14.) The phase difference causes an interference between the
`two components of the beam such that the electric field strength can be varied to create
`maximum or zero transmission through the material.(Id. at 14.) In short, a Kerr cell can be used
`to transmit or impede light, like a shutter, depending on the applied electric field. (Id. at 15, 17.)
`A Pockels cell functions similarly to the Kerr cell. (Id. at 10, 15–16).
`
`
`
`6
`
`Alcon Research, Ltd.
`Exhibit 1016 - Page 11
`
`

`

`Case 1:09-cv-00146-RBK -JS Document 119 Filed 10/18/11 Page 12 of 25 PageID #: 1385
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`emitted source beam into pulses of the desired duration). AMO’s misconstruction of this claim
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`would actually exclude Claim 7, which depends directly from Claim 5 and claims redistributing
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`the continuously emitted source beam with, for example, a Kerr cell. It would also exclude Claim
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`16, which depends indirectly from Claim 5 and which claims redistributing the continuously
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`emitted source beam by “changing the beam wavelength.”
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`The construction would also improperly read limitations of Claim 6 into Claim 5,
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`threatening to render Claim 6’s modified-beam limitation, “deflecting sequential portions of the
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`beam and re-directing them to separate locations so that the net effect at each location is that of a
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`sequence of pulses of a desired duration and a desired pulse repetition rate,” redundant.
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`And AMO’s prosecution-history argument is misleading and based on a statement taken out
`
`of context. Claim 5, originally filed as claim 55 of the application, was initially rejected by the
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`patent examiner on or around January 2, 2002. (Tiller Decl. Ex. A (“Initial Office Action”) at 2.)
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`The initial rejection was based on a patent on which Dr. Neev was a co-inventor, U.S. Patent No.
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`5,720,894 (“Neev ’894”). (Id. at 3.) In response, Dr. Neev’s patent attorney argued that the
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`invention was patentable over Neev ’894, but did not amend any claims. (Tiller Decl. Ex. B
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`(“Response”) at 1.) The PTO issued Claim 5, and its dependent claims, as filed.
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`The patent attorney seemed to primarily argue that Neev ’894: (1) discloses a pulsed source
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`beam; (2) did not disclose redistributing a continuously emitted beam; and (3) did not disclose a
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`means for pulsing the material by controlling the source beam’s spatial or temporal
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`characteristics. (See id. at 5–7.) In contrast, he argued, the invention of Claim 5 includes
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`manipulating the energy distribution of a continuously emitted source beam by changing its
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`spatial or temporal characteristics with, for example, an external Kerr cell. (See id.)
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`
`
`7
`
`Alcon Research, Ltd.
`Exhibit 1016 - Page 12
`
`

`

`Case 1:09-cv-00146-RBK -JS Document 119 Filed 10/18/11 Page 13 of 25 PageID #: 1386
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`The portion of the attorney’s argument that AMO focuses on, taken in isolation, misstates
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`the extent of the invention of the ’199 Patent. It is true that the attorney pointed to the present
`
`invention’s ability to “pulse” the beam by redistributing the source beam in space so that the
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`redistributed beam hits different places on the target, and distinguished that feature from the laser
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`of Neev ’894, which “only allows an operator to change the beam location manually, by moving
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`it from one target location to the other.” But to the extent that the attorney’s remarks are taken to
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`mean that the scope of Claim 5 does not permit and include changing the characteristics of the
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`source beam, such as by modifying the continuously emitted source beam’s energy distribution
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`in time, the remarks are mistaken and contrary to the plain language of the claims and
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`description as they would be understood by a person of ordinary skill in the art. For example, the
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`’199 Patent describes—and clearly claims in Claim 7—the use of a Kerr cell, which is a device
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`used to modulate a beam’s energy distribution in time.3 ’199 Patent, col.50 ll.16–25; Claim 7.
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`The Patent also includes the use of optical modulators in general to work the energy
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`redistribution of the continuously emitted beam via mode-locking.4 Id. col.47 ll.19–37; Claim 7.
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`Further, the Patent describes an embodiment in which redistributing the source beam includes
`
`changing the wavelength. Id. col.13 ll.4–8; Claim 16. Taking AMO’s interpretation of the
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`attorney’s out-of-context remarks, the remarks contradict the specification and the issued claims
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`and they cannot be limiting. See Biotec Biologische, 249 F.3d at 1348.
`
`The attorney remarks made in the Response cannot be a “clear and unmistakable” disclaimer
`
`of claim scope. First, the remarks are ambiguous, given that the attorney mentioned the
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`contemplated use of the Kerr effect, which is used to modulate the intensity of the beam in time
`
`
`3 See footnote 2, supra.
`4 Mode-locking is a technique for generating a beam of electromagnetic (e.g., laser) pulses from
`a continuously emitted source. (Ex. D at 16–17.)
`
`
`
`8
`
`Alcon Research, Ltd.
`Exhibit 1016 - Page 13
`
`

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`Case 1:09-cv-00146-RBK -JS Document 119 Filed 10/18/11 Page 14 of 25 PageID #: 1387
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`(creating pulses of intensity), not to redirect a beam. Second, as stated above, construing the term
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`as AMO suggests would exclude disclosed embodiments set forth in issued claims. Finally, if the
`
`statement in the prosecution history is interpreted as AMO proposes, the statement is erroneous
`
`and cannot be held to limit the scope of the ’199 Patent.
`
`B. The Court should reject AMO’s attempt to improperly import limitations into the
`varying-the-beam-parameters limitations.
`
`1. “Controlled, variable rate material modification/removal” means just that, it
`does not include the limitation of “manipulating the beam parameters while
`irradiating the target material.”
`
`This language is plain, unambiguous, and accessible—and AMO’s improper construction
`
`creates limitations where there are none. There is no language in the term itself that would
`
`support construing the term to include “manipulating the beam parameters while irradiating the
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`target material.” Doing so would improperly import limitations, as opposed to clarifying the
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`scope of the claim. As set forth above, the body of Claim 5 recites a structurally complete
`
`invention and construing any aspect of the preamble as limiting would be improper—the “highly
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`controllable variable rate material removal” language is not limiting. Further, as set forth in
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`Section II.B.2 below, construing the variable-rate language of Claim 5 or the “controlled,
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`variable rate material modification” language of Claim 1 to require modification or removal “at a
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`variable rate by manipulating the beam parameters while irradiating the target material” would
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`improperly exclude disclosed embodiments.
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`2. The manipulating-beam-parameters limitations do not contain any limitation
`requiring that the beam parameters be manipulated after the beam has been
`turned on.
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`AMO misrepresents the prosecution history and ignores the law in its attempt to limit the
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`’199 Patent claims to require that the beam parameters be adjusted during the operation of the
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`beam. AMO’s suggested construction would improperly read out disclosed embodiments without
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`
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`9
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`Alcon Research, Ltd.
`Exhibit 1016 - Page 14
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`

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`Case 1:09-cv-00146-RBK -JS Document 119 Filed 10/18/11 Page 15 of 25 PageID #: 1388
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`justification. See MBO Labs., 474 F.3d at 1333. And the claim amendments that AMO relies on
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`cannot work a disclaimer of scope. The amendments were to claims in the parent application,
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`were made with the express reservation of right to pursue the full scope of the original claim
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`language in a continuing application, involved claims and terms not at issue in the ’199 Patent,
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`and were to an invention that the examiner considered patentably distinct from the claims of the
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`’199 Patent. Consequently, they are not a “clear and unmistakable” disavowal of scope of the
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`’199 Patent. See Linear Tech. Corp. v. ITC, 566 F.3d 1049, 1057–58 (Fed. Cir. 2009). While Dr.
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`Neev does not dispute that the beam parameters may be varied during operation, there is no
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`support for construing these limitations to require that the parameters be varied during the
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`operation—they can be set or adjusted prior to or during the operation of the source.
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`AMO’s construction of the manipulating-the-beam-parameters limitations improperly
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`excludes disclosed embodiments. For example, one embodiment of Dr. Neev’s invention
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`includes specifically configuring the electromagnetic pulse beam “to increase the ratio of the
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`quantity of the material which is ablated with respect to the quantity of material which is
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`permanently modified.” ’199 Patent, col.5 ll.64–66, col.6 ll.58–65. “Preferably, at least one
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`characteristic of the material to be ablated is first determined and then a pulse [or pulse rate] of
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`the directed energy is defined.” Id. col.6 ll.7–9, 60–65. The characteristic of the material can be
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`determined in various ways, such as directly sensing it, looking it up in a reference, or by
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`ablating it and observing the ablation and modification. Id. col. 6. ll.30–46. The “high precision,
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`highly controllable, variable rate, material removal” embodiment includes setting the beam
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`parameters for a desired ablation rate and operating the beam to ablate the material at the
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`preferably substantially constant rate. Id. col.7 l.39 – col.8 l.23. It does not require varying the
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`ablation rate—or the beam parameters—during operation of the beam. Indeed, the very concept
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`10
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`Alcon Research, Ltd.
`Exhibit 1016 - Page 15
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`

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`Case 1:09-cv-00146-RBK -JS Document 119 Filed 10/18/11 Page 16 of 25 PageID #: 1389
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`of looking up a material characteristic so that the beam parameters can be appropriately set
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`strongly connotes that the beam parameters can be set before the beam is turned on and the
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`electromagnetic pulse interacts with the material. And, given that the desired ablation “may be
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`accomplished using . . . a single pulse,” id. col.9 ll.19–20, requiring adjustments to the beam
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`during the operation does not make sense. Controlled variable rate ablation or modification
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`simply means that the rate of the ablation or modification can be controlled and varied by, for
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`example, setting the pulsed beam parameters prior to or during operation of the source.
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`AMO’s resort to the prosecution history in the ’199 Patent parent application is misleading.
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`The parent applicat