Case 2:13-cv-00178-JRG Document 157 Filed 06/25/14 Page 1 of 60 PageID #: 9511
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`THOMAS SWAN & CO. LTD.,
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`Plaintiff,
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`v.
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`FINISAR CORP., et al.,
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`Defendants.
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`Civil Action No. 2:13-cv-00178-JRG
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`MEMORANDUM OPINION AND ORDER
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`On May 30, 2014, the Court held a hearing to determine the proper construction of the
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`disputed claim terms in United States Patent Nos. 8,335,033 (“the ’033 patent”); 8,089,683 (“the
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`’683 patent”); 7,664,395 (“the ’395 patent”); and 7,145,710 (“the ’710 patent”) (collectively, the
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`“patents-in-suit”). After considering the arguments made by the parties at the hearing and in the
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`parties’ claim construction briefing (Dkt. Nos. 124, 135, 139, 151 and 156), the Court issues this
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`Claim Construction Memorandum and Order.
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`I.
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`BACKGROUND
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`The patents-in-suit are titled “Optical Processing” and generally relate to the architecture
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`and operation of an optical switch, such as the one shown in Figure 28.1
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`1 The Abstract of the ’710 Patent follows:
`To operate an optical device comprising an SLM with a two-dimensional array of
`controllable phase-modulating elements groups of individual phase-modulating
`elements are delineated, and control data selected from a store for each delineated
`group of phase-modulating elements. The selected control data are used to
`generate holograms at each group and one or both of the delineation of the groups
`and the selection of control data is/are varied. In this way upon illumination of the
`groups by light beams, light beams emergent from the groups are controllable
`independently of each other.
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`The specification describes that the switch uses a dispersion device 620 (shown in green), a
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`focusing element 621 (shown in blue), and a Spatial Light Modulator (“SLM”) 622 (shown in
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`red), arranged in a folded architecture. ’710 Patent at 43:41–43.
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`The specification states that the SLM 622 “may be a multiple phase liquid crystal over
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`silicon spatial light modulator having plural pixels, of a type having an integrated wave plate and
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`a reflective element, such that successive passes of a beam through the liquid crystal subject each
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`orthogonally polarised component to a substantially similar electrically-set phase change.” Id. at
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`7:1–6. The specification describes that the dispersion element 620 splits the multi-wavelength
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`beam 601 into single wavelength beams 605, 606, 607, which are directed by the focusing
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`element 621 to respective pixel groups 623, 624, 625 on the SLM 622. Id. at 43:49–60. The
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`specification further states that the different pixel groups of the SLM display respective phase
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`modulating patterns, known as holograms, which provide routing and other processing functions
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`for the reflected beams 635, 636, 637. Id. The specification adds that these functions may
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`include multiplexing/demultiplexing, filtering, attenuation, or monitoring. Id. at 43:61–44:33.
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`The specification states that the processed beams are then routed back to the grating 620 via the
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`focusing element 621, where they are combined and directed to one of the outputs 612-614. Id.
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`at 43:55–63. Accordingly, the specification describes an optical switch that can route, add/drop,
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`filter, and attenuate multiple wavelengths independently using holograms displayed on the SLM.
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`Plaintiff brings suit alleging infringement of 132 claims across the patents-in-suit.
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`Claims 1 and 20 of the ’395 Patent are representative of the asserted claims and recite the
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`following elements (disputed terms in italics):
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`1. An optical routing module having at least one input and at least
`one output and operable to select between the outputs, the or
`each input receiving a respective light beam having an
`ensemble of different channels, the module comprising:
`a Spatial Light Modulator (SLM) having a two dimensional array
`of pixels,
`a dispersion device disposed to receive light from said at least one
`input and constructed and arranged to disperse light beams of
`different frequencies in different directions whereby different
`channels of said ensemble are incident upon respective
`different groups of the pixels of the SLM, and circuitry
`constructed and arranged to display holograms on the SLM to
`determine the channels at respective outputs.
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`20. The optical routing module of claim 1, further comprising a
`control device operable to delineate groups of individual phase-
`modulating elements; to select, from stored control data,
`control data for each group of phase-modulating elements; to
`generate from the respective selected control data a respective
`hologram at each group of phase-modulating elements; and to
`vary at least one of the delineation of the groups and the
`selection of control data whereby upon illumination of said
`groups by respective light beams, respective emergent light
`beams from the groups are controllable independently of each
`other.
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`II.
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`APPLICABLE LAW
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`A. Claim Construction
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`“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention
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`to which the patentee is entitled the right to exclude.’” Phillips v. AWH Corp., 415 F.3d 1303,
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`Case 2:13-cv-00178-JRG Document 157 Filed 06/25/14 Page 4 of 60 PageID #: 9514
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`1312 (Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water Inc. v. Safari Water Filtration Sys.,
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`Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). To determine the meaning of the claims, courts start
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`by considering the intrinsic evidence. See id. at 1313, C.R. Bard, Inc. v. U.S. Surgical Corp.,
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`388 F.3d 858, 861 (Fed. Cir. 2004); Bell Atl. Network Servs., Inc. v. Covad Commc’ns Group,
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`Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). The intrinsic evidence includes the claims
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`themselves, the specification, and the prosecution history. See Phillips, 415 F.3d at 1314; C.R.
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`Bard, Inc., 388 F.3d at 861. Courts give claim terms their ordinary and accustomed meaning as
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`understood by one of ordinary skill in the art at the time of the invention in the context of the
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`entire patent. Phillips, 415 F.3d at 1312–13; Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361,
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`1368 (Fed. Cir. 2003).
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`The claims themselves provide substantial guidance in determining the meaning of
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`particular claim terms. Phillips, 415 F.3d at 1314. First, a term’s context in the asserted claim
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`can be very instructive. Id. Other asserted or unasserted claims can also aid in determining the
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`claim’s meaning because claim terms are typically used consistently throughout the patent. Id.
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`Differences among the claim terms can also assist in understanding a term’s meaning. Id. For
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`example, when a dependent claim adds a limitation to an independent claim, it is presumed that
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`the independent claim does not include the limitation. Id. at 1314–15.
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`“[C]laims ‘must be read in view of the specification, of which they are a part.’” Id.
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`(quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc)).
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`“[T]he specification ‘is always highly relevant to the claim construction analysis. Usually, it is
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`dispositive; it is the single best guide to the meaning of a disputed term.’” Id. (quoting Vitronics
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`Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Teleflex, Inc. v. Ficosa N. Am.
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`Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). This is true because a patentee may define his own
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`terms, give a claim term a different meaning than the term would otherwise possess, or disclaim
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`or disavow the claim scope. Phillips, 415 F.3d at 1316. In these situations, the inventor’s
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`lexicography governs. Id. The specification may also resolve ambiguous claim terms “where
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`the ordinary and accustomed meaning of the words used in the claims lack sufficient clarity to
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`permit the scope of the claim to be ascertained from the words alone.” Teleflex, Inc., 299 F.3d at
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`1325. But, “‘[a]lthough the specification may aid the court in interpreting the meaning of
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`disputed claim language, particular embodiments and examples appearing in the specification
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`will not generally be read into the claims.’” Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d
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`1182, 1187 (Fed. Cir. 1998) (quoting Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560,
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`1571 (Fed. Cir. 1988)); see also Phillips, 415 F.3d at 1323. The prosecution history is another
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`tool to supply the proper context for claim construction because a patent applicant may also
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`define a term in prosecuting the patent. Home Diagnostics, Inc., v. Lifescan, Inc., 381 F.3d 1352,
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`1356 (Fed. Cir. 2004) (“As in the case of the specification, a patent applicant may define a term
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`in prosecuting a patent.”).
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`Although extrinsic evidence can be useful, it is “‘less significant than the intrinsic record
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`in determining the legally operative meaning of claim language.’” Phillips, 415 F.3d at 1317
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`(quoting C.R. Bard, Inc., 388 F.3d at 862). Technical dictionaries and treatises may help a court
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`understand the underlying technology and the manner in which one skilled in the art might use
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`claim terms, but technical dictionaries and treatises may provide definitions that are too broad or
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`may not be indicative of how the term is used in the patent. Id. at 1318. Similarly, expert
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`testimony may aid a court in understanding the underlying technology and determining the
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`particular meaning of a term in the pertinent field, but an expert’s conclusory, unsupported
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`assertions as to a term’s definition are entirely unhelpful to a court. Id. Generally, extrinsic
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`evidence is “less reliable than the patent and its prosecution history in determining how to read
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`claim terms.” Id.
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`B. Construction Indefiniteness
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` Patent claims must particularly point out and distinctly claim the subject matter regarded
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`as the invention. 35 U.S.C. § 112(b). Whether a claim meets this definiteness requirement is a
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`matter of law. Young v. Lumenis, Inc., 492 F.3d 1336, 1344 (Fed. Cir. 2007). A party challenging
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`the definiteness of a claim must show it is invalid by clear and convincing evidence. Id. at 1345.
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`The ultimate issue is whether someone working in the relevant technical field could understand
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`the bounds of a claim. Haemonetics Corp. v. Baxter Healthcare Corp., 607 F.3d 776, 783 (Fed.
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`Cir. 2010). Specifically, “[a] patent is invalid for indefiniteness if its claims, read in light of the
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`specification delineating the patent, and the prosecution history, fail to inform, with reasonable
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`certainty, those skilled in the art about the scope of the invention.” Nautilus Inc. v. Biosig
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`Instruments, Inc., 572 U.S. ___, 134 S. Ct. 2120, 2124 (2014).
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`III. CONSTRUCTION OF AGREED TERMS
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`The parties have agreed to the construction of the following terms:
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`Claim Term/Phrase
`“sensors for detecting temperature
`change”
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`“temperature responsive devices
`constructed and arranged to feed signals
`indicative of device temperature to said
`control circuit”
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`“arbitrary shape”
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`Agreed Construction
`“two or more sensors for detecting temperature
`change”
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`“two or more temperature responsive devices
`constructed and arranged to feed signals indicative
`of device temperature to said control circuit”
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`“any shape”
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`“Liquid Crystal On Silicon”
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`“Wavelength Division Multiplexing”
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`“four-sided figure with four right angles”
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`“LCOS”
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`“WDM”
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`“rectangle”
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`“multiplex of optical signals”
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`“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”
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`“specularly reflected”
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`“performing said varying step in
`response to the outputs of those sensors”
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`“control circuit being responsive to
`signals from the sensor devices to vary
`said delineation and/or said selection”
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`“delineation of the group boundaries in
`response to signals from sensors
`arranged to provide signals indicative of
`said emergent beams”
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`“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”
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`“two[‐]dimensional array”
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`“two[‐]dimensional array of pixels”
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`“two‐dimensional group(s)”
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`“ensemble of optical signals”
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`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
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`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
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`“reflected in a manner that a mirror reflects”
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`“varying the delineation of the groups or the
`selection of control data in response to the outputs
`of those two or more sensors”
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`“control circuit being responsive to signals from
`the two or more sensor devices to vary said
`delineation and/or said selection”
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`“delineation of the group boundaries in response to
`signals from two or more sensors arranged to
`provide signals indicative of said emergent beams”
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`“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”
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`“an arrangement of two or more elements in each
`of two dimensions”
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`“an arrangement of two or more pixels in each of
`two dimensions”
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`“a group of two or more elements arranged in each
`of two dimensions”
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`“common point on the dispersion
`device”
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`“common location on the dispersion device”
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`Joint Claim Construction and Prehearing Statement (Dkt. No. 119), at 2-4; see also Defendants’
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`Responsive Claim Construction Brief (Dkt. No. 135), at 1 n.3.2 In view of the parties’
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`agreements on the proper construction of each of the identified terms, the Court hereby
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`ADOPTS AND APPROVES the parties’ agreed constructions.
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`IV. CONSTRUCTION OF DISPUTED TERMS
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`The parties’ dispute focuses on the meaning and scope of 24 terms/phrases in the
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`patents-at-issue.
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`A. “SLM / Spatial Light Modulator”
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`Disputed Term
`SLM / Spatial Light
`Modulator
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`Plaintiff’s Proposal
`a device that modifies a property of
`light as a function of time and
`position across it
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`Defendants’ Proposal
`a device that modifies a
`property of light as a function
`of time and position across the
`device, and is at least
`somewhat polarisation‐
`independent
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`The parties agree that the term “SLM” or “Spatial Light Modulator” should be construed
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`as “a device that modifies a property of light as a function of time and position across the
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`device.” The parties dispute whether the construction should require the SLM to be “at least
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`somewhat polarisation‐independent,” as Defendants propose. Plaintiff argues that the intrinsic
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`evidence makes clear that a polarization-independent SLM is only one embodiment and that the
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`claims are not limited to this one embodiment. (Dkt. No. 124 at 15.)
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`2 All cites refer to the page number included in the document as filed and not the Court’s ECF
`page number.
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`Specifically, Plaintiff contends that the specification explicitly contemplates SLMs that
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`use either polarization-dependent or polarization-independent liquid crystal materials. (Dkt. No.
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`124 at 15.) Plaintiff also argues that the specification demonstrates that the inventor
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`contemplated polarization-dependent embodiments and that the specification does not require
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`limiting the SLM itself to polarization-independent operation. (Dkt. No. 124 at 15.) Plaintiff
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`further argues that the prosecution history shows that the patents-at-issue contemplate the use of
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`both polarization-dependent and polarization-independent SLMs. (Dkt. No. 124 at 17–19.)
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`Plaintiff also contends that Defendants cannot show that the patents-in-suit clearly and
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`unmistakably disavow the ordinary meaning of SLM, which does not require polarization
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`independence. (Dkt. No. 124 at 19–21.) Finally, Plaintiff argues that the doctrine of claim
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`differentiation also counsels against importing the “polarization independent” limitation into the
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`term “SLM.” (Dkt. No. 124 at 21.)
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`Defendants respond that all of the relevant intrinsic evidence and Plaintiff’s pre-litigation
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`statements support Defendants’ construction that requires the SLM to be at least somewhat
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`polarization-independent. (Dkt. No. 135 at 1–2.) Specifically, Defendants argue that the
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`specification allows a variety of SLM structures to be used in the invention so long as those
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`SLMs are at least somewhat polarization-independent (i.e., are not polarization-dependent).
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`(Dkt. No. 135 at 2.) Defendants also contend that Plaintiff’s documents show that both Plaintiff
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`and the patentee viewed the invention of the patents-in-suit as limited to polarization-
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`independent SLMs. (Dkt. No. 135 at 2–3.)
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`Defendants further argue that Plaintiff takes the intrinsic evidence out of its proper
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`context to support its arguments. (Dkt. No. 135 at 3–5.) Defendants contend that every single
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`embodiment of the invention described in the specification uses a polarization-independent
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`SLM, and that the specification repeatedly emphasizes that the invention is carried out through
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`polarization-independent SLMs. (Dkt. No. 135 at 5–6.) Defendants further argue that Plaintiff
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`misconstrues the file history, and that neither the Restriction Requirement nor the arguments
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`regarding the prior art indicates that the claimed invention includes polarization-dependent
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`SLMs. (Dkt. No. 135 at 9–11.) Finally, Defendants contend that Plaintiff’s claim differentiation
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`argument is misplaced because the dependent claims are narrower than the independent claims.
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`(Dkt. No. 135 at 12.)
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`Plaintiff replies that Defendants are using a single sentence from the specification to limit
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`the patents to the very specific, “polarization-independent” structure. (Dkt. No. 139 at 4–5.)
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`Plaintiff argues that Defendants misread the next sentence, which states that the invention can be
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`applied to other “devices.” (Dkt. No. 139 at 5.) Plaintiff contends that the term “devices” refers
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`to other optical devices—such as routers, multiplexers, filters, etc.—that could use the SLM-
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`containing “invention.” (Dkt. No. 139 at 5–6.) Plaintiff further argues that claim 1 must be
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`broad enough to cover any type of SLM, both polarization-independent and polarization-
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`dependent material, and is not limited to a disclosed embodiment. (Dkt. No. 139 at 6.)
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`Plaintiff further argues that Defendants’ characterization of the Weiner reference and its
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`use by the examiner in the prosecution of the ’395 patent is misleading. (Dkt. No. 139 at 6.)
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`Plaintiff also argues that Defendants mischaracterize their argument with respect to the Amako
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`reference and that the examiner’s withdrawal of the Restriction Requirement in the ’395 patent
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`does not alter or rebut its argument. (Dkt. No. 139 at 7.) Finally, Plaintiff contends that
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`Defendants put inordinate weight on the internal Thomas Swan documentation. (Dkt. No. 139 at
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`7.) Plaintiff argues that even if this extrinsic evidence reflects the inventor’s view of the scope
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`of the invention, “it is not unusual for there to be a significant difference between what an
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`inventor thinks his patented invention is and what the ultimate scope of the claims is after
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`allowance by the PTO.” (Dkt. No. 139 at 7) (quoting Markman v. Westview Instruments, Inc., 52
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`F.3d 967, 985 (Fed. Cir. 1995)).
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`For the following reasons, the Court finds that “SLM / Spatial Light Modulator”
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`should be construed to mean “a device that modifies a property of light as a function of time
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`and position across the device.”
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`1. The Intrinsic Evidence
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`The Court first turns to the language of the claims, as it provides “substantial guidance as
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`to the meaning of particular claim terms.” Phillips, 415 F.3d at 1313 (citing Vitronics, 90 F.3d at
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`1582). The term “Spatial Light Modulator” or “SLM” appears in claims 1, 3, 11, 12, and 14 of
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`the ’710 Patent; claims 1, 4, 5, 21, 24, and 27 of the ’395 Patent; claims 6, 17, 18-20, 25, 27-29,
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`35, 37, 38, and 40-44 of the’683 Patent; and claims 1-4, 19, 21, 23-25, 29, 56, 57, 60, 63, 64, 66,
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`68, 71-73, 76, and 91 of the ’033 Patent. The Court finds that the term is used consistently in the
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`claims and is intended to have the same meaning in each claim.
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`Defendants argue that the intrinsic evidence indicates that the patentee disclaimed
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`polarization-dependent SLMs. The Court disagrees and finds that the intrinsic record does not
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`include a “clear and unmistakable” disavowal of polarization-dependent SLMs. Omega Eng'g,
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`Inc. v. Raytek Corp., 334 F.3d 1314, 1325-1326 (Fed. Cir. 2003) (“[F]or prosecution disclaimer
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`to attach, our precedent requires that the alleged disavowing actions or statements made during
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`prosecution be both clear and unmistakable.”); see also Home Diagnostics, Inc. v. LifeScan, Inc.,
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`381 F.3d 1352, 1358 (Fed. Cir. 2004) (“Absent a clear disavowal in the specification or the
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`prosecution history, the patentee is entitled to the full scope of its claim language.”).
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`First, the specification describes that in a preferred embodiment the SLM includes an
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`integrated quarter-wave plate that enables the SLM to be polarization-independent. ’710 Patent
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`at 12:9–64, Figure 1. Immediately following this description, the specification states that the
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`invention is not limited to this embodiment or to any particular SLM structure. Specifically,
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`the specification states the following:
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`It is not intended that any particular SLM structure is essential to the invention,
`the above being only exemplary and illustrative. The invention may be applied
`to other devices, provided they are capable of multiphase operation and are at
`least somewhat polarisation independent at the wavelengths of concern. Other
`SLMs are to be found in our co-pending applications WO 0l/25840, EP1050775
`and EP1053501 as well as elsewhere in the art.
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`’710 Patent at 12:65–13:5 (emphasis added). Defendants contend that the second sentence in
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`this paragraph indicates that the recited SLM is required to be “at least somewhat polarisation
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`independent.” The Court disagrees with Defendants’ conclusion and finds that the
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`specification refers to “other devices” in this sentence and not specifically to an “SLM.” This
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`word choice is significant because a person of ordinary skill in the art could understand that
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`the word “device” refers to the optical device as a whole (i.e., SLM, gratings, focusing devices,
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`and input and outputs), and not just the SLM. Indeed the specification refers to “optical
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`devices” that include more than just the SLM. See, e.g., ’710 Patent at 4:19–51 (describing “an
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`optical device comprising an SLM and a control circuit,” data “store,” “sensor devices
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`arranged to detect light emergent from the SLM,” and “temperature responsive devices” );
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`5:13–27 (describing “an optical device comprising one or more inputs . . ., a diffraction grating
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`. . ., a focusing device and a continuous array of phase modulating elements . . . [and] one or
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`more output[s]”); 5:55–59 (describing an add/drop multiplexer having “a reflective SLM, …
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`diffraction device, and a focusing device”). Thus, the alleged disclaimer is ambiguous at best
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`and does not rise to the level of a clear disavowal. Thorner v. Sony Computer Entm't Am. LLC,
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`669 F.3d 1362, 1366–1367 (Fed. Cir. 2012) (“To constitute disclaimer, there must be a clear and
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`unmistakable disclaimer.”)
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`Moreover, it is well established that in the absence of a clear intention to limit claim
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`scope, the description of a preferred embodiment is an insufficient basis on which to narrow the
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`claims. See Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004). Here, the
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`specification does not describe a polarization-independent SLM as the “invention,” but instead
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`uses permissive language and refers to this property as an option in certain preferred
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`embodiments. See, e.g., ’710 Patent at 40:12–14 (“In the preferred embodiment, the S[L]M 320
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`is a continuous pixel array of phase-modulating elements and is polarisation independent.”)
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`(emphasis added); 2:31–33 (“It is desirable for certain applications that a method or device for
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`addressing these issues should be polarisation-independent, or have low polarisation-
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`dependence.”); 4:8–10 (“The SLM may be integrated on a substrate and have an integral quarter-
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`wave plate whereby it is substantially polarisation insensitive”). As indicated by these examples,
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`the specification does not indicate a clear intent to limit the scope of the claims to the preferred
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`embodiments.
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`Likewise, the Court finds that the doctrine of claim differentiation indicates that the
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`“polarization independent” limitation should not be read into the term “SLM.” Specifically,
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`dependent claim 4 of the ’395 patent recites that “the SLM is integrated on a substrate and has an
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`integrated quarterwave plate whereby it is substantially polarisation insensitive.” Similarly,
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`dependent claim 8 of the ’710 patent recites “wherein the two dimensional SLM having an array
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`of pixels is a reflective SLM incorporating a wave-plate whereby the reflective SLM is
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`substantially polarisation independent.” The Court finds that the reference to “polarisation
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`insensitive” or “polarisation independent” in these dependent claims indicates that the SLM
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`Case 2:13-cv-00178-JRG Document 157 Filed 06/25/14 Page 14 of 60 PageID #: 9524
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`recited in the independent claims is not required to be “polarization-independent.” Specifically,
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`these dependent claims serve to narrow the independent claims to the preferred embodiment by
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`requiring the SLM to be “polarisation insensitive” or “polarisation independent.” Thus, the
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`claim language also indicates that the “polarisation-independent” limitation should not be read
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`into the term “SLM.”
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`Finally, Defendants do not point to any statements in the prosecution history as
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`indicating that the patentee disclaimed polarization-dependent SLMs. Instead, it is Plaintiff
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`that argues that the prosecution history indicates that the examiner understood that the claims
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`were directed to both polarization-dependent and polarization-independent SLMs. Having
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`reviewed the prosecution history, the Court finds that whether the claims are limited to SLMs
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`that are polarization-independent was not directly addressed by the examiner.3 Accordingly,
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`the Court finds that the patentee did not limit the scope of the claims to polarization-independent
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`SLMs.
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`2. Court’s Construction
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`In light of the intrinsic evidence, the Court construes “SLM / Spatial Light
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`Modulator” to mean “a device that modifies a property of light as a function of time and
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`position across the device.”
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`3 The only mention of a polarization-independent SLM is when the examiner entered a
`Restriction Requirement contending that the application contained claims directed to
`patentably distinct species: (1) devices that utilize a polarization-independent SLM having a
`wave plate; and (2) devices that utilize an LCOS SLM. (Dkt. No. 124-17 at 2, ’395 Prosecution
`History, Jan. 13, 2009 OA.) The patentee argued in response that an SLM that “uses a wave
`plate and is polarization independent is not mutually exclusive with an SLM that is an LCOS
`SLM.” (Dkt. No. 124-18 at 2.) The examiner later removed the Restriction Requirement, but
`his reason for doing so is not clear.
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`Case 2:13-cv-00178-JRG Document 157 Filed 06/25/14 Page 15 of 60 PageID #: 9525
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`Defendants’ Proposal
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`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)
`
`Indefinite
`
`To the extent the Court determines that a
`construction is ascertainable:
`
` a
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` “generated hologram” formed by combining
`two or more “generated holograms” for
`achieving two or more different desired types
`of changes in incident light
`
`
`B. “hologram” terms
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`
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`Disputed Term
`hologram(s)
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`Plaintiff’s Proposal
`a modulation pattern
`(e.g., a phase ramp)
`
`actual holograms
`
`Plain and ordinary
`meaning in light of
`other constructions
`proposed herein
`(e.g., hologram)
`
`
`generat[ed/ing a]
`hologram
`
`Plain and ordinary
`meaning in light of
`other constructions
`proposed herein
`(e.g., hologram)
`
`combined hologram
`
`Plain and ordinary
`meaning in light of
`other constructions
`proposed herein
`(e.g., hologram)
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`Case 2:13-cv-00178-JRG Document 157 Filed 06/25/14 Page 16 of 60 PageID #: 9526
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`Defendants contend that the “hologram(s)” terms, as recited in all of the patents-in-suit,
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`and the terms “actual holograms,” “generat[ed/ing a] hologram,” and “combined hologram,” as
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`recited in the claims of the ’710 Patent, are indefinite. In the alternative, Defendants contend
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`that the term “hologram(s)” should be construed as “the ideal set of phase modulation values for
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`achieving a desired change in incident light.” Plaintiff disagrees that the terms are indefinite and
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`contends that the term “hologram(s)” should be construed as “a modulation pattern (e.g., a phase
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`ramp).” Plaintiff also contends that the terms “actual holograms,” “generat[ed/ing a] hologram,”
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`and “combined hologram” should be given their plain and ordinary meaning in light of the
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`proposed construction for “hologram.”
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`Specifically, Plaintiff argues that the specification uses the term “hologram” to refer to
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`modulation patterns that are generated from control data and displayed by a SLM to perform
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`various processing operations on the incident light. (Dkt. No. 124 at 5–6.) Plaintiff also
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`contends that prior art references in the intrinsic record support its construction of “hologram” as
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`a modulation pattern. (Dkt. No. 124 at 6–7.) Thus, Plaintiff argues that the intrinsic evidence
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`demonstrates that the term “hologram” has been consistently used in the art to refer to a
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`modulation pattern and is not “insolubly ambiguous.” (Dkt. No. 124 at 7.)
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`Plaintiff furt