Case 2:13-cv-00178-JRG Document 118 Filed 03/26/14 Page 1 of 11 PageID #: 6828
`
`UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`THOMAS SWAN & CO. LTD.,
`
`Plaintiff,
`
`
`
`v.
`
`FINISAR CORP. and FUJITSU NETWORK
`
`COMMUNICATIONS, Inc.,
`
`Defendants.
`
`
`
`
`
`Case No. 2:13-cv-178-JRG
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`
`
`
`
`JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT
`
`Pursuant to Local Patent Rule 4-3 and the Court’s Amended Docket Control Order (Dkt.
`
`No. 94), Plaintiff Thomas Swan & Co. Ltd. (“Thomas Swan”) and Defendants Finisar Corp. and
`
`Fujitsu Network Communications, Inc. (together “Defendants”) (collectively, “the Parties”)
`
`hereby provide this Joint Claim Construction and Pre-Hearing Statement regarding U.S. Patent
`
`Nos. 7,145,710, 7,664,395, 8,089,683, and 8,335,033.1,2
`
`
`1 Plaintiff provided Defendants with an initial draft of this pleading (a draft which included both Plaintiff and
`Defendants’ proposed constructions) at 2:00pm CST on March 25, 2014. Despite repeated—and unanswered—
`requests throughout the day on March 26, 2014 for Defendants to confirm that they would not be changing their
`proposed constructions, Defendants waited until 8:30 CST to provide Plaintiff with their portion of the pleading
`which contained changes to their proposed constructions of a number of terms. As such, and in view of the fact that
`Plaintiff resides in the UK, Plaintiff reserves the right to submit an Amended P.R. 4-3 pleading to respond to the
`eleventh-hour changes made by the Defendants, if needed.
`2 Plaintiff has asserted 132 claims in this case, rendering the claim construction process unduly burdensome.
`Nevertheless, Defendants have worked hard to narrow disputes where possible even in the face of Plaintiff’s
`unwillingness to disclose which claims it will be pursuing in this case. Any alleged timing issues are of Plaintiff’s
`own making. Defendants made repeated requests for an earlier draft of this pleading, but Plaintiff failed to provide a
`draft in a timely manner. The parties were in contact throughout the day on March 26, 2014. At several times
`during the day, Defendants reached out to Plaintiff to seek agreement on terms for construction. Defendants do not
`consent to Plaintiff’s submission of an Amended P.R. 4-3 pleading but remain willing to meet and confer in an effort
`to further narrow disputed issues.
`
`1
`
`THOMAS SWAN 2008
`Finisar v. Thomas Swan
`IPR2014-00461
`
`

`

`Case 2:13-cv-00178-JRG Document 118 Filed 03/26/14 Page 2 of 11 PageID #: 6829
`
`I.
`
`CONSTRUCTION OF THOSE CLAIM TERMS, PHRASES, OR CLAUSES
`ON WHICH THE PARTIES AGREE (PARAGRAPH 4-3(a))
`
`The Parties have agreed to the construction of the following claim terms, phrases, or clauses
`
`at this time. The Parties will continue to meet and confer in an attempt to reach agreement on
`
`other claim terms, phrases, or clauses.
`
`Term Or Phrase
`
`Patent
`
`Agreed Construction
`
`sensors for detecting
`temperature change
`
`
`temperature responsive
`devices constructed and
`arranged to feed signals
`indicative of device
`temperature to said
`control circuit
`
`710
`
`two or more sensors for detecting temperature change
`
`710
`
`two or more temperature responsive devices constructed
`and arranged to feed signals indicative of device
`temperature to said control circuit
`
`arbitrary shape
`
`395
`
`any shape
`
`LCOS
`
`Liquid Crystal On Silicon
`
`395,
`683,
`033
`
`WDM
`
`033 Wavelength Division Multiplexing
`
`rectangle
`
`395
`
`four-sided figure with four right angles
`
`multiplex of optical
`signals
`
`683
`
`ensemble of optical signals
`
`-2-
`
`

`

`Case 2:13-cv-00178-JRG Document 118 Filed 03/26/14 Page 3 of 11 PageID #: 6830
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`Term Or Phrase
`
`Patent
`
`Agreed Construction
`
`033
`
`means for delineating a
`respective group of
`controllable elements for
`each chosen location
`whereby the light from
`said locations is
`determined by the size,
`shape or position of said
`groups
`
`
`
`Function: delineating a respective group of controllable
`elements for each chosen location whereby the light from
`said locations is determined by the size, shape or position
`of said groups
`
`Corresponding Structure: control circuit (e.g., processing
`circuit 42 of Fig. 6) that delineates groups of controllable
`elements for each chosen location whereby the light from
`said locations is determined by the size, shape or position
`of said groups
`
`specularly reflected
`
`033
`
`reflected in a manner that a mirror reflects
`
`710
`
`710
`
`performing said varying
`step in response to the
`outputs of those sensors
`
`control circuit being
`responsive to signals from
`the sensor devices to vary
`said delineation and/or
`said selection
`
`varying the delineation of the groups or the selection of
`control data in response to the outputs of those two or more
`sensors
`
`control circuit being responsive to signals from the two or
`more sensor devices to vary said delineation and/or said
`selection
`
`delineation of the group
`boundaries in response to
`signals from sensors
`arranged to provide
`signals indicative of said
`emergent beams
`
`033
`
`delineation of the group boundaries in response to signals
`from two or more sensors arranged to provide signals
`indicative of said emergent beams
`
`-3-
`
`

`

`Case 2:13-cv-00178-JRG Document 118 Filed 03/26/14 Page 4 of 11 PageID #: 6831
`
`Term Or Phrase
`
`Patent
`
`Agreed Construction
`
`determining, by means of
`a control device, selection
`of the groups, selection of
`control data and
`delineation of the group
`boundaries in response to
`signals from sensors
`arranged to provide
`signals indicative of said
`emergent beams
`
`two[-]dimensional array
`
`two[-]dimensional array of
`pixels
`
`033
`
`determining, by means of a control device, selection of the
`groups, selection of control data and delineation of the
`group boundaries in response to signals from two or more
`sensors arranged to provide signals indicative of said
`emergent beams
`
`710,
`033
`
`395,
`683
`
`an arrangement of two or more elements in each of two
`dimensions
`
`an arrangement of two or more pixels in each of two
`dimensions
`
`
`two-dimensional group(s)
`
`033
`
`a group of two or more elements arranged in each of two
`dimensions
`
`
`
`
`
`
`II.
`
`DISPUTED CONSTRUCTIONS OF TERMS, PHRASES, OR CLAUSES
`(PARAGRAPH 4-3(b))
`
`The Parties dispute construction of the following claim terms, phrases, or clauses
`
`contained in the asserted claims.
`
`Term, Phrase, or
`Clause
`SLM / Spatial Light
`Modulator
`
`Patent
`
`710, 395,
`683, 033
`
`Thomas Swan Proposed
`Constructions
`a device that modifies a
`property of light as a
`function of time and
`position across it
`
`
`
`
`Defendants’ Proposed
`Constructions
`a device that modifies a property
`of light as a function of time and
`position across the device, and is
`at least somewhat polarisation-
`
`independent3
`3 In order to focus the claim construction process on the main dispute between the Parties with respect to this
`term, Defendants have incorporated the language from Thomas Swan’s proposed construction for this term
`
`
`
`-4-
`
`

`

`Case 2:13-cv-00178-JRG Document 118 Filed 03/26/14 Page 5 of 11 PageID #: 6832
`
`Term, Phrase, or
`Clause
`hologram(s)
`
`Patent
`
`710, 395,
`683, 033
`
`actual holograms
`
`710
`
`Thomas Swan Proposed
`Constructions
`a modulation pattern (e.g.,
`a phase ramp)
`
`
`
`
`
`
`Plain and ordinary meaning
`in light of other
`constructions proposed
`herein (e.g., hologram)
`
`
`
`generat[ed/ing a]
`hologram
`
`710, 395 Plain and ordinary meaning
`in light of other
`constructions proposed
`herein (e.g., hologram)
`
`
`
`Defendants’ Proposed
`Constructions
`indefinite
`
`To the extent the Court
`determines that a construction is
`ascertainable:
`
`the ideal set of phase modulation
`values for achieving a desired
`change in incident light
`indefinite
`
`To the extent the Court
`determines that a construction is
`ascertainable:
`
`sets of phase modulation values
`that are derived from and are the
`closest available approximations
`to the respective ideal sets of
`phase modulation values adapted
`to the physical limitations of the
`SLM
`indefinite
`
`To the extent the Court
`determines that a construction is
`ascertainable:
`
`determin[ed/ing the] ideal set of
`phase modulation values for
`achieving a desired change in
`incident light using an ideal SLM
`(i.e., having a continuously
`variable limitless phase
`modulation ability)
`
`into their own proposed construction. However, Defendants believe that the phrase “as a function of time” in
`Thomas Swan’s proposed construction is not necessary.
`
`
`
`
`
`-5-
`
`

`

`Case 2:13-cv-00178-JRG Document 118 Filed 03/26/14 Page 6 of 11 PageID #: 6833
`
`Defendants’ Proposed
`Constructions
`indefinite
`
`To the extent the Court
`determines that a construction is
`ascertainable:
`
` a
`
` “generated hologram” formed
`by combining two or more
`“generated holograms” for
`achieving two or more different
`desired types of changes in
`incident light
`indefinite
`
`To the extent the Court
`determines that a construction is
`ascertainable:
`
` a
`
` grating made holographically
`the optical signals within the
`ensemble
`
`two or more sensor devices
`arranged to detect light
`originating from an input fiber
`and emergent from the SLM
`
`light sensor arranged to provide
`signals indicative of light
`originating from an input fiber
`and emergent from the SLM
`light sensor arranged to provide
`signals indicative of light
`originating from an input fiber
`specularly reflected at the SLM
`
`Term, Phrase, or
`Clause
`combined hologram
`
`Patent
`
`710
`
`Thomas Swan Proposed
`Constructions
`Plain and ordinary meaning
`in light of other
`constructions proposed
`herein (e.g., hologram)
`
`
`holographic grating
`
`395
`
`the optical signals of
`the multiplex
`
`683
`
`710
`
`033
`
`033
`
`sensor devices
`arranged to detect light
`emergent from the
`SLM
`
`light sensor arranged
`to provide signals
`indicative of emergent
`light
`light sensor arranged
`to provide signals
`indicative of light
`specularly reflected at
`the SLM
`
`a grating made from a
`material whose optical
`properties are changed by
`exposure to light
`
`
`
`Plain and ordinary meaning
`in light of other
`constructions proposed
`herein (e.g., multiplex of
`optical signals)
`two or more sensor devices
`arranged to detect light
`emergent from the SLM (as
`construed herein)
`
`Plain and ordinary meaning
`
`
`
`Plain and ordinary meaning
`in light of other
`constructions proposed
`herein (e.g., specularly
`reflected)
`
`
`
`-6-
`
`

`

`Case 2:13-cv-00178-JRG Document 118 Filed 03/26/14 Page 7 of 11 PageID #: 6834
`
`Term, Phrase, or
`Clause
`two dimensional
`[SLM/ Spatial Light
`Modulator] having an
`array of pixels
`
`Patent
`
`395
`
`Thomas Swan Proposed
`Constructions
`an SLM having an
`arrangement of two or
`more pixels in each of two
`dimensions
`
`pixel
`
`395, 683
`
`Defendants’ Proposed
`Constructions
`
`a device having an
`arrangement of two or more
`pixels that modifies a property
`of light in two dimensions as a
`function of time and position
`across the device, and is at
`least somewhat polarisation‐
`independent4
`the smallest element of the
`SLM that can be independently
`controlled
`
`
`two or more groups of pixels
`each of which is positioned
`between and not a part of said
`blocks of pixels
`vary the voltage on the pixels in
`at least one group of pixels
`positioned between and not a
`part of said blocks of pixels to
`prevent light incident upon said
`group from being directed to an
`output
`No construction required
`
`a device that separates a light
`beam into spectral components
`
`common position on the
`dispersion device located by
`means of its coordinates
`
`683
`
`683
`
`the smallest element of a
`display surface that can be
`assigned independent
`characteristics
`Plain and ordinary meaning
`
`
`
`Plain and ordinary meaning
`in light of other
`constructions proposed
`herein (e.g., pixel)
`
`
`710, 395,
`033
`
`data from which a
`hologram is generated
`
`395, 033 a device that spreads out a
`light beam into spectral
`components
`
`common location on the
`dispersion device (as
`construed herein)
`
`033
`
`guardband blocks that
`are discrete from said
`blocks of pixels
`
`control the pixels in at
`least one guardband
`block to prevent light
`incident upon said
`guardband block from
`being directed to an
`output
`control data
`
`dispersion device
`
`common point on the
`dispersion device
`
`
`
`4 In order to focus the claim construction process on the main dispute between the Parties with respect to this
`term, Defendants have incorporated the language from Thomas Swan’s proposed construction for this term
`into their own proposed construction. However, Defendants believe that the phrase “as a function of time” in
`Thomas Swan’s proposed construction is not necessary.
`
`
`
`-7-
`
`

`

`Case 2:13-cv-00178-JRG Document 118 Filed 03/26/14 Page 8 of 11 PageID #: 6835
`
`Patent
`
`Term, Phrase, or
`Clause
`light from a common
`point on the dispersion
`device is substantially
`collimated
`substantially reflective 710
`
`033
`
`683
`
`683
`
`683
`
`683
`
`683
`
`approximately a
`desired passband of a
`respective channel
`
`approximately a
`desired center
`wavelength of a
`respective channel
`
`substantially at the
`centers of the
`respective different
`blocks of pixels
`
`a substantially non-
`reflective optical
`absorber
`substantially flat
`transmission between
`one or more pairs of
`adjacent channels at
`the output
`
`683
`
`033
`
`reflects substantially
`all of an incident light
`beam
`substantially
`collimated by the
`focusing device when
`incident upon the SLM
`
`
`
`Thomas Swan Proposed
`Constructions
`light from a common
`location on the dispersion
`device is largely collimated
`
`largely reflective
`
`
`close to a desired
`passband of a respective
`channel; a “channel” is a
`band of frequencies
`
`close to a desired center
`wavelength of a
`respective channel; a
`“channel” is a band of
`frequencies
`
`largely at the centers of
`the respective different
`blocks of pixels (as
`construed herein)
`
`a largely non-reflective
`optical absorber
`
`largely flat transmission
`between one or more pairs
`of adjacent channels at the
`output; a “channel” is a
`band of frequencies
`
`reflects largely all of an
`incident light beam
`
`largely collimated by the
`focusing device when
`incident upon the SLM (as
`construed herein)
`
`
`Defendants’ Proposed
`Constructions
`indefinite
`
`
`indefinite
`
`
`indefinite
`
`
`indefinite
`
`
`indefinite
`
`
`indefinite
`
`
`indefinite
`
`
`indefinite
`
`
`indefinite
`
`
`Exhibit A attached hereto provides the Parties’ identification of intrinsic evidence (e.g.,
`
`the claim language, specification, figures, prosecution histories, and references cited on the face
`
`-8-
`
`

`

`Case 2:13-cv-00178-JRG Document 118 Filed 03/26/14 Page 9 of 11 PageID #: 6836
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`of the patents-in-suit) and extrinsic evidence that the Parties contend support their respective
`
`proposed constructions or oppose the other Party’s proposed constructions. With respect to the
`
`intrinsic and extrinsic evidence, all citations to figures are to be construed as including citations
`
`to the portions of the specification discussing these figures, and all citations to portions of the
`
`specification are to be construed as including citations to any figures that are referenced in these
`
`portions of the specification. The Parties’ proposed claim constructions set forth are subject to
`
`change as claim construction discovery progresses and the Parties fully brief the issues. In
`
`addition, the Parties agree that each Party may rely on any intrinsic or extrinsic evidence
`
`identified by the other Party.
`
`III. LENGTH OF TIME NECESSARY FOR CLAIM CONSTRUCTION
`HEARING (PARAGRAPH 4-3(c))
`Pursuant to the Amended Docket Control Order, the Claim Construction Hearing is set to
`
`be held on May 30, 2014 at 1:30 pm. The Parties respectfully request 2 hours per side (total of 4
`
`hours) for the Claim Construction Hearing.
`
`IV. WITNESSES AT THE CLAIM CONSTRUCTION HEARING
`(PARAGRAPH 4-3(d))
`
`The Parties will not call any witnesses to testify at the Claim Construction Hearing.
`
`V.
`
`ADDITIONAL ISSUES (PARAGRAPH 4-3(e))
`
`The Parties do not believe there are any issues that must be addressed in a prehearing
`
`conference prior to the Claim Construction Hearing.
`
`Dated: March 26, 2014
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/s/ Michael C. Tyler
`
`Ruffin B. Cordell
`Lauren A. Degnan
`Michael C. Tyler
`Dmitry Brant
`
`/s/ Etai Lahav
`
`Harry Gillam
`GILLAM & SMITH LLP
`303 South Washington Avenue
`Marshall, Texas 75670
`
`-9-
`
`

`

`Case 2:13-cv-00178-JRG Document 118 Filed 03/26/14 Page 10 of 11 PageID #: 6837
`
`FISH & RICHARDSON P.C.
`1425 K Street NW, 11th Floor
`Washington, DC 20005
`Telephone: (202) 783-5070
`Facsimile: (202) 783-2331
`Email: cordell@fr.com
`Email: degnan@fr.com
`Email: tyler@fr.com
`Email: brant@fr.com
`Christopher G. Smith
`FISH & RICHARDSON P.C.
`222 Delaware Avenue
`17th Floor
`Wilmington, DE 19801
`Telephone: (302) 652-5070
`Facsimile: (302) 652-5070
`Email: cgsmith@fr.com
`
`Wesley Hill
`T. John Ward
`WARD & SMITH LAW FIRM
`1127 Judson Rd., Suite 220
`Longview, Tx 75606-1231
`(903) 757-6400 (telephone)
`(903) 757-2323 (facsimile)
`Email: wh@wsfirm.com
`
`Attorneys for Plaintiff Thomas Swan & Co.
`Ltd.
`
`
`Phone: (903) 934-8450
`Fax: (903) 934-9257
`Email: gil@gillamsmithlaw.com
`
`David C. Radulescu
`Tigran Vardanian
`Etai Lahav
`Gregory S. Maskel
`RADULESCU LLP
`136 Madison Avenue, 6th Floor
`New York, NY 10016
`Phone: (646) 502-5950
`Fax: (646) 502-5959
`Email: david@radulescullp.com
`Email: tigran@radulescullp.com
`Email: etai@radulescullp.com
`Email: greg@radulescullp.com
`
`Attorneys for Defendant Finisar
`Corporation
`
`
`
`By: Nathaniel T. Browand
`
`Melissa Smith
`GILLAM & SMITH LLP
`303 S. Washington Avenue
`Marshall, Texas 75702
`Telephone: (903) 934-8450
`Facsimile: (903) 934-9257
`Email: melissa@gillamsmithlaw.com
`
`
`Christopher E. Chalsen
`Lawrence T. Kass
`Nathaniel T. Browand
`Suraj Balusu
`MILBANK, TWEED, HADLEY
` & McCLOY LLP
`1 Chase Manhattan Plaza
`New York, New York 10005
`Tel: (212) 530-5380
`Fax: (212) 822-5380
`Email: cchalsen@milbank.com
`Email: lkass@milbank.com
`Email: nbrowand@milbank.com
`Email: sbalusu@milbank.com
`
`-10-
`
`

`

`Case 2:13-cv-00178-JRG Document 118 Filed 03/26/14 Page 11 of 11 PageID #: 6838
`
`
`Attorneys for Defendant
`Fujitsu Network Communications, Inc.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`-11-
`
`