Case 1:09-cv-00146-RBK -JS Document 146 Filed 03/26/12 Page 1 of 28 PageID #: 1850
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`NOT FOR PUBLICATION
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`JOSEPH NEEV,
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`ABBOTT MEDICAL OPTICS, INC. and
`RAINFOREST ACQUISITION, INC.,
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`____________________________________
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`:
`:
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`Plaintiff, :
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`v. :
`:
`:
`:
`:
`:
`Defendants.
`____________________________________:
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`KUGLER, United States District Judge
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`
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`(Doc. Nos. 121)
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`Civil No. 09-146 (RBK)
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`MARKMAN OPINION
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`Presently before the Court are motions for claim construction on U.S. Patent No.
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`6,482,199 (filed Aug. 2, 2000) (“the ‘199 Patent”) by Plaintiff Dr. Joseph Neev (“Plaintiff”) and
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`Defendant Abbott Medical Optics, Inc. (“Defendant”). On March 6, 2012, the Court held a
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`hearing pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996) (“Markman
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`hearing”). There, and in their briefing prior to the hearing, the parties presented proposed
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`constructions concerning up to nineteen claim terms. For the reasons set forth below, the Court
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`adopts Defendant’s construction of “target region” and “target material.” The Court adopts
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`Plaintiff’s constructions of all other disputed claim terms. For claim terms as to which the
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`parties do not dispute the proper construction, the Court adopts the parties’ agreed-upon
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`constructions. Finally, the Court denies Defendant’s motion to strike.
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`I. Background
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`A.
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`Procedural History
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`
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`1
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`Alcon Research, Ltd.
`Exhibit 1024 - Page 1
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`

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`Case 1:09-cv-00146-RBK -JS Document 146 Filed 03/26/12 Page 2 of 28 PageID #: 1851
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`
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`Plaintiff is the owner and sole inventor listed on the ‘199 Patent, which is embodied in,
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`among other forms, a laser used in LASIK® corrective vision procedures. Plaintiff alleges that
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`Defendant infringed the ‘199 Patent and Plaintiff accordingly seeks damages, an injunction, and
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`attorney’s fees and costs. Compl. ¶¶ 13-14.
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`Plaintiff filed suit against Defendant pursuant to 35 U.S.C. § 281 et seq., claiming that
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`Defendant has infringed seven independent claims and twenty nine additional dependent claims
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`of the ‘199 Patent.1 (Pls.’ Opening Claim Construction Br. 1). Plaintiff states that Defendant’s
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`sale of the IntraLase FS device, which is used for LASIK® eye surgery, directly infringes these
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`claims in the ‘199 Patent. (Id.) Defendant responds that the ‘199 Patent is either invalid and/or
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`will not be infringed by Lupin’s ANDA Products.
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`Defendant furthermore asserted counterclaims against Plaintiffs, seeking declaratory
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`judgment that Plaintiff’s ‘199 Patent is invalid and/or that Defendant’s products do not infringe
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`Plaintiff’s patent. (Def. Answer & Countercls. ¶¶ 1-11).
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`B.
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`
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`Brief Description of the Product at Issue
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`At issue in this case is the construction of terms contained in the claims of the ‘199 Patent
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`that are allegedly being infringed by a surgical laser developed and distributed by Defendant.
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`The core of the invention in the ‘199 Patent is a method for modifying materials, such as bodily
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`tissues, using pulsed laser bursts at short and frequent intervals. (Pl. Opening Claim
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`Construction Br. 5-6). Plaintiff’s invention claims novelty because it improves on the prior
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`pulsed laser systems by reducing the collateral damage caused by the pulsed laser system to
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`tissues surrounding the target area. Id. Plaintiff’s method of achieving this more precise
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`modification of the target area was through utilizing repeated laser pulses to continually modify
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`                                                            
`1 Specifically, Plaintiff asserts that Defendant has infringed claims 1, 2, 5-7, 10-15, 20-25, 27, 28, 30, 34, 50-54, 61,
`67, 71, 77, 80-83, 85, and 86 of the ‘199 Patent.
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`
`
`2
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`Alcon Research, Ltd.
`Exhibit 1024 - Page 2
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`

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`Case 1:09-cv-00146-RBK -JS Document 146 Filed 03/26/12 Page 3 of 28 PageID #: 1852
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`the target area and then allowing the residual heat, or thermal energy, in the area to dissipate.
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`Id.2 As discussed below, the disputed terms primarily concern the character and utilization of the
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`laser to achieve the claimed result.
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`C.
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`
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`Procedural History
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`On March 5, 2009, Plaintiff filed a Complaint alleging that Defendant infringed the ‘199
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`Patent. On April 6, 2009, Defendant filed an answer and counterclaims. On July 24, 2009,
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`Defendant filed its first request for ex parte reexamination with the United States Patent and
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`Trademark Office (“PTO”). This first request for reexamination focused on two pieces of prior
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`art, arguing that when viewed in a new light, these pieces created a substantial new question
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`regarding patentability. The PTO disagreed and rejected Defendant’s application for a
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`reexamination. On October 28, 2009, Defendant filed a second request for reexamination, citing
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`one piece of prior art that it had cited in the initial reexamination application as well as three
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`other pieces of prior art not previously cited. The request for reexamination was granted by the
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`PTO in December of 2009.
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`In Defendant’s request for reexamination, Defendant argued that there was a substantial
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`question of patentability with regard to independent claim 1 and its dependent claim 2 of the
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`‘199 Patent and that these claims should be invalidated as anticipated and/or obvious in light of
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`the prior art. On October 26, 2010, the PTO issued a reexamination certificate that affirmed, as
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`amended, the patentability of claims 1 to 4 of the ‘199 Patent. See 7826th Reexamination
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`Certificate, U.S. Patent 6,482,199 C1. In addition, the PTO allowed additional new claims 17
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`through 86 of the ‘199 Patent.3
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`                                                            
`2 The Abstract of the ‘199 Patent states that the patented product is “[a] method and apparatus . . . for fast precise
`material processing and modification which minimizes collateral damage.” The invention claims to achieve this
`result by “[u]tilizing optimized, pulsed electromagnetic energy parameters.” (Abstract, ‘199 Patent).
`3 The PTO did not reexamine the patentability of claims 5 through 16 of the ‘199 Patent.
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`
`
`3
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`Alcon Research, Ltd.
`Exhibit 1024 - Page 3
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`

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`Case 1:09-cv-00146-RBK -JS Document 146 Filed 03/26/12 Page 4 of 28 PageID #: 1853
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`
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`II.
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`Legal Standard for Claim Construction
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`
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`To prove patent infringement, a plaintiff must demonstrate that the accused device or
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`method contains all the limitations of the claimed invention. Johnson Worldwide Assocs., Inc.
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`v. Zebco Corp., 175 F.3d 985, 988 (Fed. Cir. 1995). As a prerequisite to the ultimate disposition,
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`however, a court must determine as a matter of law the meaning and the scope of the disputed
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`patent's claims. (Id.). Claim construction is a question of law; therefore, it is “[t]he duty of the
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`trial judge . . . to determine the meaning of the claims at issue.” Exxon Chem. Patents, Inc. v.
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`Lubrizoil Corp., 64 F.3d 1553, 1555 (Fed. Cir. 1995).
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`
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`The scope of a patented invention is defined by the enumerated claims that comprise the
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`patent. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005). Absent an express intent
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`to impart a novel meaning, the words of a claim are given their "ordinary and customary
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`meaning," which is defined as "the meaning that the term would have to a person of ordinary
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`skill in the art in question at the time of the invention." Id. at 1312-13 (citations omitted). The
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`court must adopt the perspective of one who "read[s] the words used in the patent documents
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`with an understanding of their meaning in the field, and [who has] knowledge of any special
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`meaning and usage in the field." Id.
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`
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`Intrinsic evidence, which consists of materials within the patent itself, including the
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`claims, the specification, and the prosecution history, is the key initial component of claim
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`construction. Id. at 1314. Claim construction begins with intrinsic evidence—“[f]irst and
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`foremost . . . the language of the claims themselves,” since the claim language is chosen by the
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`inventor to distinctly claim the subject matter of the invention. ACTV, Inc. v. Walt Disney Co.,
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`346 F.3d 1082, 1088 (Fed. Cir. 2003). “Because the claim language is chosen by the patentee to
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`
`
`4
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`Alcon Research, Ltd.
`Exhibit 1024 - Page 4
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`

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`Case 1:09-cv-00146-RBK -JS Document 146 Filed 03/26/12 Page 5 of 28 PageID #: 1854
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`particularly point out and distinctly claim the subject matter of the invention, the claim terms
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`chosen by the patentee carry a presumption that they mean what they say and have the ordinary
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`meaning that would be attributed to those words by persons skilled in the relevant art.” Id.
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`(internal citations omitted).
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`Furthermore, the specification can "act[] as a dictionary when it expressly defines terms
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`used in the claims or when it defines terms by implication." Vitronics Corp. v. Conceptronic,
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`Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). It is also "entirely appropriate for a court, when
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`conducting claim construction, to rely heavily on the written description for guidance as to the
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`meaning of the claims." Phillips, 415 F.3d at 1317.
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`
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`Secondarily, a court may draw on extrinsic evidence regarding "relevant scientific
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`principles, the meaning of technical terms, and the state of the art." Id. Extrinsic evidence
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`derives from sources outside the patent and prosecution history, such as expert testimony,
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`dictionaries, or treatises, and although it may be useful, "it is unlikely to result in a reliable
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`interpretation of patent claim scope unless considered in the context of the intrinsic evidence."
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`Id. at 1319. Moreover, the Federal Circuit has cautioned that "the use of the dictionary may
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`extend patent protection beyond what should properly be afforded by the inventor's patent." Id.
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`at 1322.
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`III.
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`Terms for Which All Parties Agree that the Court Should Adopt a Construction
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`
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`The following subsections present claim terms that the parties agree require construction.
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`Subsection A presents terms for which the parties agree on the proper construction, and
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`Subsection B presents terms for which the parties disagree on the proper construction. Because
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`all parties agree that the terms identified in these subsections require construction, these terms
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`5
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`Alcon Research, Ltd.
`Exhibit 1024 - Page 5
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`

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`Case 1:09-cv-00146-RBK -JS Document 146 Filed 03/26/12 Page 6 of 28 PageID #: 1855
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`are properly considered “at issue” in this litigation and the Court will adopt constructions of
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`these terms.
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`A.
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`Terms for Which There Is Both Agreement that the Court Should Adopt a Construction,
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`and Agreement by Both Parties as to the Construction the Court Should Adopt.
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`
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`Plaintiff and Defendant have agreed on the construction of the terms “[modification]
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`threshold volumetric power density,” “power density threshold for material ablation,” “deposited
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`volumetric power density,” “power densities within the region targeted for modification,”
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`“commutative ablation,” “absorption characteristic of the material . . . at the target region,”
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`“absorption of the target region,” “scattering characteristic of the material at the target region,”
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`and “scattering of the target region.” Both Plaintiff and Defendant urge the Court to adopt the
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`agreed-upon constructions. These claim terms appear in claims 1, 5, 80-83, 85, and 86 of the
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`‘199 Patent. Pl. Opening Br. 10. Plaintiff asserts that Defendant has infringed all of these
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`claims, among other claims of the ‘199 Patent.
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`
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`Given the role these five terms play in the Patents at issue in this case, the Court will
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`construe the terms. Further, because Plaintiff and Defendant agree on a set of constructions, the
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`Court will adopt the agreed-upon constructions. These constructions are reflected in the
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`following table. (Pls.’ Opening Claim Construction Br. 10).
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`Table 1
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`Claim Term
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`“[modification]
`threshold
`volumetric power
`density”
`“power density
`threshold for
`material ablation”
`“deposited
`
`
`
`Claim(s) in Which
`Term Appears
`1, 80-83
`
`Agreed-Upon Construction
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`“The minimum energy per unit time per unit
`volume necessary for material modification.”
`
`
`5
`
`1, 80-83
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`“Deposited energy per unit time per unit
`
`6
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`Alcon Research, Ltd.
`Exhibit 1024 - Page 6
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`

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`Case 1:09-cv-00146-RBK -JS Document 146 Filed 03/26/12 Page 7 of 28 PageID #: 1856
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`volumetric power
`density”
`“power densities
`within the region
`targeted for
`modification”
`“commutative
`ablation”
`“absorption
`characteristic of
`the material . . . at
`the target region”
`“absorption of the
`target region”
`“scattering
`characteristic of
`the material at the
`target region”
`“scattering of the
`target region”
`
`
`5
`
`5
`
`1, 80-83
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`85, 86
`
`1, 80-83
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`85, 86
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`volume.”
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`“The combined effect of successive ablation.”
`
`“A characteristic of the target material that
`determines the absorption of the
`electromagnetic energy by the target material at
`the target region.”
`
`“A characteristic of the target material that
`determines the scattering of the electromagnetic
`energy by the target material at the target
`region.”
`
`B.
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`Terms for Which There is Agreement that the Court Should Adopt a Construction, but
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`Where Plaintiffs and Defendants Present Competing Constructions:
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`
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`Plaintiff and Defendant dispute the construction of several claim terms in the ‘199 Patent.
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`See Joint Claim Construction and Prehearing Statement, Ex. A. “[I]t is the court’s duty to
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`resolve . . . a fundamental dispute regarding the scope of a claim term . . . .” O2 Micro Int'l Ltd.
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`v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008). Because each party
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`presents a different proposed construction of these fifteen claim terms, and both Plaintiff and
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`Defendant agree that the Court should adopt constructions (albeit different constructions) of each
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`term, the Court finds that there is a “fundamental dispute” concerning these terms. Accordingly,
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`the Court construes each term as set forth below. The parties’ proposed constructions for each
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`disputed claim term are listed in Table 2 below.
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`
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`
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`7
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`Alcon Research, Ltd.
`Exhibit 1024 - Page 7
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`

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`Case 1:09-cv-00146-RBK -JS Document 146 Filed 03/26/12 Page 8 of 28 PageID #: 1857
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`
`
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`# Claim term
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`1 “operating the
`source and
`manipulating the
`beam parameters”
`
`“manipulating beam
`parameters”
`
`“manipulating
`parameters of the
`beam”
`“adjusting
`characteristics of the
`electromagnetic
`radiation beam”
`“varying at least one
`of the following
`beam
`parameters”
`2 “interaction energy
`transients”
`
`Recited in or
`Required by
`Claims4
`1, 2, 20, 21,
`22, 23, 25, 27,
`28, 30, 34, 50-
`54, 61, 67, 71,
`77, 80-83
` 1, 2, 20, 21,
`22, 23, 25, 27,
`28, 30, 34, 50-
`54, 61, 67, 71,
`77, 80-83
`5, 6, 7, 10-15
`
`85, 86
`
`1, 2, 20-25,
`27, 28, 30, 34,
`50-54, 61, 67,
`71, 77, 80-83
`1, 2, 20-25,
`27, 28, 30, 34,
`50-54, 61, 67,
`71, 77, 80-83,
`85, 86
`
`Table 2
`
`Plaintiff
`
`Operating the source
`and setting or adjusting
`the beam parameters
`prior to or during the
`operation of the source.
`Setting or adjusting the
`beam parameters prior
`to or during the
`operation of the source.
`
`Defendant
`
`Varying the wavelength,
`energy, power, spot size,
`focal volume, duration, or
`repetition rate of an
`electromagnetic beam
`while irradiating the
`target material.
`
`Energy transients in the
`target material that are
`created by interaction of
`electromagnetic
`radiation with the target
`material.
`
`A temporary state of
`matter, other than plasma,
`that is initiated by the
`interaction of
`electromagnetic beam
`energy with the target.
`
`Interaction energy
`transients would
`normally include plasma,
`but in the application for
`the patent, Neev
`disclaimed plasma from
`
`                                                            
`4 Independent claims are listed in bold typeface, whereas dependent claims are listed in regular
`typeface.
`
`
`
`8
`
`Alcon Research, Ltd.
`Exhibit 1024 - Page 8
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`

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`Case 1:09-cv-00146-RBK -JS Document 146 Filed 03/26/12 Page 9 of 28 PageID #: 1858
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`1, 2, 20-25,
`27, 28, 30, 34,
`50-54, 61, 67,
`71, 77
`
`Altering the absorption
`or scattering
`characteristic of the
`target region of the
`target material in time or
`space, prior to
`irradiating the region
`with the electromagnetic
`pulses.
`
`interaction energy
`transient.
`Changing the absorption
`or scattering
`characteristics of the
`target region by
`introducing a substance,
`such as a doping agent.
`
`Firing multiple
`electromagnetic pulses at
`a rate greater than one
`pulse every ten seconds
`at the same target region
`until a desired volume
`within that target region
`has been modified.
`Allow(ing) the decay, via
`the passage of time, of an
`interaction energy
`transient, caused by the
`delivery of a single
`electromagnetic pulse to
`the target region, prior to
`subsequent irradiation, so
`that the material is
`modified.
`
`Operating the source at
`a pulse repetition rate
`greater than 0.1 pulses
`per second until a target
`volume in the target
`region has been
`modified.
`
`Allowing energy
`transients in the target
`material that are created
`by interaction of
`electromagnetic
`radiation with the target
`material and caused by
`the electromagnetic
`pulses incident on the
`target material to
`substantially decay such
`that the material is
`modified.
`Allow energy transients
`in the target material
`that are created by
`interaction of
`electromagnetic
`radiation with the target
`material and caused by
`the electromagnetic
`pulses incident on the
`target material to
`
`9
`
`3 “preparing the target
`region of the target
`material by spatially
`or temporally
`varying at
`least one of an
`absorption
`characteristic of the
`material or a
`scattering
`characteristic of the
`material at the target
`region”
`4 “operating the
`source at a pulse
`repetition rate
`greater than 0.1
`pulses per second
`until a target volume
`in the target region
`has been modified”
`5 “allowing interaction
`energy transients
`caused by the
`electromagnetic
`pulses to
`substantially
`decay so that
`material
`modification is
`effected”
`
`1, 2, 20-25,
`27, 28, 30, 34,
`50-54, 61, 67,
`71, 77, 80-83
`
`1, 2, 20-25,
`27, 28, 30, 34,
`50-54, 61, 67,
`71, 77, 80-83
`
`85, 86
`
`“allow interaction
`energy transients
`caused by the pulsed
`electromagnetic
`radiation beam to
`decay sufficiently
`such that the
`material can be
`modified”
`
`
`
`Alcon Research, Ltd.
`Exhibit 1024 - Page 9
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`

`

`Case 1:09-cv-00146-RBK -JS Document 146 Filed 03/26/12 Page 10 of 28 PageID #: 1859
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`“Thermal energy” means
`energy from the
`electromagnetic radiation
`that was converted to
`heat energy resulting in a
`temperature increase.
`
` A
`
` “pulse train” is the
`delivery of multiple
`exposures of EM
`radiation to the same
`target region in the target
`material.
`
`“Cumulative residual
`thermal energy left in the
`material by a pulse train”
`refers to the residual
`thermal energy that
`builds up at a particular
`target region in the target
`material after multiple
`exposures of EM
`radiation by the pulse
`train each depositing a
`certain amount of
`residual thermal energy.
`
`6 “cumulative residual
`thermal energy left
`in the material by a
`pulse train”
`
`5-7, 10-15
`
`substantially decay such
`that the material can be
`modified.
`Remaining accumulated
`thermal energy left in
`the target material by a
`pulse train.
`
`
`
`The ‘199 Patent is structured with two major independent claims, claims 1 and 5, from
`
`which the majority of the 86 claims depend. Independent claims 1 and 5 claim a method of
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`operating a laser to achieve the desired material modification and ablation. Claims 79 through
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`83 are also independent method claims for operating a laser. Claims 84 through 86 are
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`independent claims directed to an apparatus for performing the method, rather than the method
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`itself, and were added during the reexamination proceedings.
`
`
`
`10
`
`Alcon Research, Ltd.
`Exhibit 1024 - Page 10
`
`

`

`Case 1:09-cv-00146-RBK -JS Document 146 Filed 03/26/12 Page 11 of 28 PageID #: 1860
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`Claim 1 and its numerous dependent claims are the major claims at issue in this case.
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`Claim 1 consists of a preamble and five separate elements. The claim is directed to a method of
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`using a pulsed laser to modify a target material in a controlled and variable speed manner. The
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`claim recites five elements that are necessary to achieving this result. Element (a) requires
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`providing a source for the pulsed laser. Element (b), which was added during reexamination,
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`requires the preparation of the target material in a particular manner. Element (c) requires the
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`operation of the laser source and adjusting the parameters until the material is able to be
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`modified. Element (d) describes a pause between pulses to allow the energy to decay and the
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`material to be modified. Element (e) requires the pulse to be operated at a rate of greater than
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`one pulse every 10 seconds until the target material has been modified. Several of the claim
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`terms in the preamble of Claim 1 and each of its five elements are at issue in this case.
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`
`
`The disputed claim terms will each be discussed in turn below.
`
`1. “operating the source and manipulating the beam parameters,” “manipulating beam
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`parameters,” “manipulating parameters of the beam,” “adjusting characteristics of the
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`electromagnetic radiation beam,” and “varying at least one of the following beam
`
`parameters”
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`Plaintiff’s and Defendant’s claim construction dispute regarding these terms centers
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`around the relevant time period during which the laser beam must be adjusted. Plaintiff’s
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`construction allows for the beam to be adjusted “prior to or during the operation of the source,”
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`whereas Defendant’s construction requires the beam to be adjusted “while irradiating the target
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`material.” Defendant notes that several portions of the specification discuss the adjustment of
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`the beam settings in conjunction with the operation of the laser pulse source. Def. br. at 17-19
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`(citing, inter alia, ‘199 Patent at col.7 ll.39-58, col.8 ll.24-37, col.9 ll.21-35). Defendant argues
`
`
`
`11
`
`Alcon Research, Ltd.
`Exhibit 1024 - Page 11
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`

`

`Case 1:09-cv-00146-RBK -JS Document 146 Filed 03/26/12 Page 12 of 28 PageID #: 1861
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`that because “the specification teaches monitoring the amount of material being ablated and
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`using this information to reduce the laser repetition rate,” the specification envisions adjustment
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`of the laser pulse rate simultaneously with the operation of the laser source. Def. br. at 19.
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`Plaintiff counters that while the beam parameters may be varied during operation, the
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`specification never requires that the laser beam parameters be varied during operation of the
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`source. Pl. br. at 10.
`
`The Court adopts Plaintiff’s construction of these claim terms. The ‘199 Patent
`
`specification provides that “[p]referably, at least one characteristic of the material to be ablated is
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`first determined and then a pulse [or pulse rate] of the directed energy is defined.” ‘199 Patent,
`
`col.6 ll.7-9, 60-65 (emphasis added). The specification further provides that the desired ablation
`
`“may be accomplished using . . . a single pulse.” Id. col.9 ll.19-20. These portions of the
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`specification assume that the beam parameters may be adjusted prior to operation of the laser
`
`source. Therefore, Plaintiff’s construction of the claim terms as “setting or adjusting the beam
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`parameters prior to or during the operation of the source” clarifies the meaning of the terms in a
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`manner supported by the specification.
`
`2. “interaction energy transients”
`
`The parties’ central dispute regarding this claim term focuses on whether the term
`
`includes plasma within its purview. Defendant argues that Plaintiff previously disclaimed
`
`plasma from the scope of the patent during prosecution in order to distinguish Plaintiff’s
`
`invention from prior art. Defendant cites to the prosecution history of the ‘199 Patent, during
`
`which the examiner purportedly understood the ‘199 Patent to distinguish between the
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`“interaction energy transients” of the ‘199 Patent and the “plasma” disclosed in a previously
`
`issued patent, U.S. Patent No. 5,720,894 (filed Jan. 11, 1996) (“the ‘894 Patent”), issued to Neev
`
`
`
`12
`
`Alcon Research, Ltd.
`Exhibit 1024 - Page 12
`
`

`

`Case 1:09-cv-00146-RBK -JS Document 146 Filed 03/26/12 Page 13 of 28 PageID #: 1862
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`et al. Def. br. at 26 (citing Def. Ex. C. at 2). Plaintiff responds that while the patent examiner
`
`may have understood there to be such a distinction, Plaintiff’s silence in the face of the
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`examiner’s statement does not constitute a disavowal of claim scope. Pl. br. at 16.
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`The Federal Circuit has held that “silence regarding statements made by the examiner
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`during prosecution, without more, cannot amount to a ‘clear and unmistakable disavowal’ of
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`claim scope.’” Salazar v. Procter & Gamble Co., 414 F.3d 1342, 1345 (Fed. Cir. 2005).
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`Furthermore, the term “plasma” is specifically cited in the claims added during reexamination,
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`including Claim 21. ‘199 Patent Reex. Cert. col.2 ll.56-59. Therefore, the Court adopts
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`Plaintiff’s construction of “interaction energy transients” as “energy transients in the target
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`material that are created by interaction of electromagnetic radiation with the target material.”
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`3. “preparing the target region of the target material by spatially or temporally varying at
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`least one of an absorption characteristic of the material or a scattering characteristic of the
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`material at the target region”
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`The parties disagree as to the method of preparing the target region of the material to be
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`modified or ablated. Defendant’s construction proposes that the claim term be construed as
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`“changing the absorption or scattering characteristics of the target region by introducing a
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`substance, such as a doping agent.” Def. br. at 22 (emphasis added). Plaintiff argues that this
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`limitation of the claim term is not proper, as the target material could be modified by mechanical
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`means that do not require the introduction of a chemical substance. Pl. br. at 14. For the reasons
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`below, the Court adopts Plaintiff’s construction.
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`Defendant argues that their construction is proper since the specification does not support
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`a method of preparing the target material through a means other than through introduction of
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`chemical substances. Plaintiff cites to several portions of the patent specification that describe
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`
`
`13
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`Alcon Research, Ltd.
`Exhibit 1024 - Page 13
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`

`

`Case 1:09-cv-00146-RBK -JS Document 146 Filed 03/26/12 Page 14 of 28 PageID #: 1863
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`different embodiments for preparation of the target material. Id. (citing ‘199 Patent at col.19
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`ll.41-53, col.20 ll.7-12, col.40 ll.46-55, col.41 ll.40-48, col.42 ll.24-43, col.45 ll.22-29).
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`However, none of these examples provide for preparation of the material through mechanical
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`means, as Plaintiff’s proposed construction seeks to encompass. Moreover, both Plaintiff, as
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`well as Plaintiff’s patent prosecution counsel in the reexamination proceedings, stated during
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`deposition that they could not point to any portion of the specification that describes using a
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`mechanical means for modifying the target material.5
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`Where “[a]ll the descriptions of the invention” in a patent specification concern one
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`particular embodiment, it is proper to limit a claim to that embodiment. See Hologic, Inc. v.
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`SenoRx, Inc. 639 F.3d 1329, 1335 (Fed. Cir. 2011) (finding that the “specification ma[de] clear
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`what the inventors contemplated as their invention” because of the similarity between the
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`examples provided in the specification). Defendant argues that its construction of the claim term
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`as “changing the absorption or scattering characteristics of the target region by introducing a
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`substance, such as a doping agent,” would be consistent with the specification, which only
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`provides examples of chemical means of modifying the target material.
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`Plaintiff responds that claims 57 and 58, which depend from independent claim 1,
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`provide examples “wherein preparing the target region of the target material” may be
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`accomplished via mechanical means. Specifically, claim 57 teaches that the target material can
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`be prepared by “creating compression zones with the target region,” and claim 58 teaches that
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`the target material can be prepared by “changing a density of the target material at the target
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`                                                            
`5 Plaintiff argues that Defendant’s use of Plaintiff’s reexamination counsel’s deposition
`testimony is not proper because Defendant has not qualified Plaintiff’s reexamination counsel as
`an expert such that his opinion on claim construction is admissible. Pl. resp. br. at 13 n.5. The
`Court finds that Plaintiff’s counsel’s testimony is admissible as a party admission under Federal
`Rule of Evidence 801(d)(2)(B), and that Plaintiff is bound by the representations of his counsel.
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`
`
`14
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`Alcon Research, Ltd.
`Exhibit 1024 - Page 14
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`

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`Case 1:09-cv-00146-RBK -JS Document 146 Filed 03/26/12 Page 15 of 28 PageID #: 1864
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`region.” ‘199 Patent at col.5 ll.32-43. The Court agrees with Plaintiff that claims 57 and 58
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`recite means of preparation that include mechanical means. Defendant argues in response that
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`claims 57 and 58 are not supported by the specification, and therefore must be limited by the
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`specification.6 While it is true that ambiguous language in a claim term may be limited when all
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`the examples in the specification concern one specific embodiment, see Hologic, 639 F.3d at
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`1335, the duty of the Court while construing the terms is to “[f]irst . . . look to the words of the
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`claims themselves . . . to define the scope of the patented invention.” Vitronics, 90 F.3d at 1582.
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`Therefore, since claims 57 and 58 of the ‘199 Patent specifically describe mechanical means of
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`modifying the target material, it would be improper for this Court to limit the claim terms
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`beyond their plain meaning by adopting Defendant’s construction. Accordingly, this Court
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`adopts Plaintiff’s construction of the claim term as “altering the absorption or scattering
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`characteristic of the target region of the target material in time or space, prior to irradiating the
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`region with the electromagnetic pulses.”
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`4. “operating the source at a pulse repetition rate greater than 0.1 pulses per second until a
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`target volume in the target region has been modified”
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`The parties’ dispute about this claim term focuses on whether the operation of the laser
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`source requires “firing multiple electromagnetic pulses,” as Defendant claims, or whether the
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`method of operating the laser source may involve only one pulse, as Plaintiff claims. In support
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`                                                            
`6 Defendant argues alternatively that the Court should adopt their claim construction as to this
`term because means of modifying the target material envisioned by claims 57 and 58 are not
`supported by the specification, and are therefore invalid for lack of written description and/or
`enablement under 35 U.S.C. § 112. While this Court’s findings regarding the specification’s
`teachings are not necessarily inconsistent with Defendant’s allegations, see discussion supra Part
`III.B.3, the Court’s duty during a Markman hearing is limited to construction of the claim terms.
`Allegations regarding the validity of patent claims are to be raised and argued at a later time.
`Therefore, the Court does not reach the merits of Defendant’s invalidity claim for lack of written
`description as to claims 57 and 58.
`
`
`
`15
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`Alcon Research, Ltd.
`Exhibit 1024 - Page 15
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`

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`Case 1:09-cv-00146-RBK -JS Document 146 Filed 03/26/12 Page 16 of 28 PageID #: 1865
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`of Defendant’s construction, Defendant refers to a portion of the specification in which Plaintiff
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`stated,
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`The inventor recognized that the deposition of a large number of pulses within a
`short time duration, which corresponds to high pulse repetition rate, is only
`possible because of the condition which the present invention imposes on the
`interaction, namely, that most of the energy deposited by a single pulse will be
`removed by the ablation products ejected from the material due to the action of
`the very same pulse.
`
`‘199 Patent, 21:35-4