Case 2:18-cv-07090-CAS-GJS Document 266 Filed 08/02/19 Page 1 of 30 Page ID
` #:15247
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`2:18-cv-07090-CAS-GJS
`Date August 2, 2019
`DMF, INC. V. AMP PLUS, INC. ET AL.
`
`Case No.
`Title
`
`
`
`Present: The Honorable
`CATHERINE JEANG
`Deputy Clerk
`
`CHRISTINA A. SNYDER
`
`Not Present
`
`Court Reporter / Recorder
`
`
`
`
`N/A
`Tape No.
`
`
`Attorneys Present for Plaintiffs:
`
`N/A
`CLAIM CONSTRUCTION ORDER
`
`Proceedings:
`
`Attorneys Present for Defendants:
`N/A
`
`
`I.
`
`INTRODUCTION
`This claim construction order construes the disputed terms in U.S. Patent No.
`9,964,266 (“the ‘266 Patent”). On August 15, 2018, plaintiff DMF, Inc. filed a complaint
`against defendants AMP Plus, Inc. d/b/a ELCO Lighting, and ELCO Lighting, Inc.
`(collectively “ELCO”), alleging claims for patent infringement of the ‘266 Patent,
`trademark infringement, and unfair competition. Dkt. 1 (“Compl.”).
`On June 21, 2019, DMF filed a joint claim construction chart. Dkt. 227. On July
`3, 2019, the parties filed claim construction briefs that they had previously exchanged
`with each other. Dkt. 237 (“Pl.’s Opening”); Dkt. 242 (“Def.’s Opening”); Dkt. 239
`(“Pl.’s Response”); Dkt. 243 (“Def.’s Response”). The parties filed supplemental briefs
`on July 22, 2019. Dkt. 256 (“Pl. Supp.”); Dkt. 255 (“Def. Supp.”).
`The Court held a hearing on July 29, 2019. For the reasons stated herein, the Court
`adopts the construction set forth below.
`II. OVERVIEW OF THE ‘266 PATENT
`On May 8, 2018, the United States Patent and Trademark Office issued the ‘266
`Patent, entitled “Unified Driver and Light Source Assembly for Recessed Lighting” to
`inventor Michael Danesh. Compl. Ex. 1 (“Patent”). The ‘266 Patent teaches a compact
`recessed lighting system including a light source module and a driver coupled to a unified
`casting. Id.
`
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`Case 2:18-cv-07090-CAS-GJS Document 266 Filed 08/02/19 Page 2 of 30 Page ID
` #:15248
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`2:18-cv-07090-CAS-GJS
`Date August 2, 2019
`DMF, INC. V. AMP PLUS, INC. ET AL.
`
`Case No.
`Title
`
`The ‘266 Patent has 30 claims, four of which are independent (claims 1, 17, 22,
`and 26). Patent at 8–12. The two independent claims relevant to this action are claims 1
`and 26. Compl. ¶¶ 121, 124.
`Claim 1 discloses:
`A compact recessed lighting system, comprising:
`a light source module for emitting light;
`a driver for powering the light source module to emit light, the driver
`including an electronic device to at least one of supply and regulate electrical
`energy to the light source module;
`a unified casting with a heat conducting closed rear face, a heat conducting
`sidewall and an open front face wherein the heat conducting sidewall is
`joined to the heat conducting closed rear face at one end and defines the
`open front face of the unified casting at another end, wherein the heat
`conducting sidewall has a first dimension between the heat conducting
`closed rear face and the open front face of less than 2 inches and extends
`360 degrees around a center axis of the unified casting to define a first cavity
`that extends forward from the heat conducting closed rear face to the open
`front face of the unified casting and outward to the heat conducting sidewall,
`wherein the light source module and the driver are positioned inside the first
`cavity while being coupled to the heat conducting closed rear face of the
`unified casting such that the light source module is closer to the closed
`rear face of the unified casting than the open front face of the unified casting,
`and wherein the unified casting includes a plurality of elements positioned
`proximate to the open front face so as to align with corresponding tabs of a
`standard junction box and thereby facilitate holding the unified casting up
`against the standard junction box when the unified casting is installed in the
`standard junction box; and
`a reflector positioned inside the first cavity of the unified casting and coupled
`to and surrounding the light source module such that the reflector directs
`light produced by the light source module into an area surrounding the
`compact recessed lighting system while enclosing the driver from exposure
`to the area surrounding the compact recessed lighting system, wherein the
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`Case 2:18-cv-07090-CAS-GJS Document 266 Filed 08/02/19 Page 3 of 30 Page ID
` #:15249
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`2:18-cv-07090-CAS-GJS
`Date August 2, 2019
`DMF, INC. V. AMP PLUS, INC. ET AL.
`
`Case No.
`Title
`
`
`heat conducting closed rear face and the heat conducting sidewall of the
`unified casting significantly dissipate heat generated by the light source
`module during operation of the light source module.
`Patent 8:2–44. Claim 26 discloses:
`A lighting system, comprising:
`a substantially heat conducting unified casting forming a casting cavity having
`a front face and a rear heat conducting portion and having dimensions to fit
`inside a standard-sized junction box, the substantially heat conducting
`unified casting including a plurality of elements positioned on the casting so
`as to align with corresponding tabs of the standard-sized junction box;
`a light source module, disposed in the casting cavity, to emit light, wherein
`the light source module is positioned in the casting cavity closer to the rear
`heat conducting portion than the front face of the substantially heat
`conducting unified casting;
`a driver, disposed in the casting cavity, to power the light source module; and
`a reflector, disposed in the casting cavity to cover the driver and to direct light
`produced by the light source module out of the front face, wherein the
`substantially heat conducting unified casting significantly dissipates heat
`generated by the light source module during operation of the light source
`module.
`Id. 12:9–31.
`DMF alleges that conventional recessed lighting systems require: (1) the use of a
`heat sink stacked on top of the light source’s housing; (2) the installation of fireboxes to
`enclose the lighting system; and (3) separate junction boxes for connecting wires from
`the lighting fixture to the building’s electrical system. Compl. ¶¶ 12–14. According to
`DMF, Danesh recognized these issues and “designed [an] LED Module with a low-
`profile heat conducting casting that could both house LED components and significantly
`dissipate heat from the LED light source, rather than stacking a conventional heat-sink on
`top of a separate component housing,” and “was small enough to fit into standard
`junction boxes without using a separate firebox, ‘can’ or lighting fixture.” Id. ¶ 16. As
`described in the “Abstract” portion of the ‘266 Patent specification, the claimed lighting
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`Case 2:18-cv-07090-CAS-GJS Document 266 Filed 08/02/19 Page 4 of 30 Page ID
` #:15250
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`2:18-cv-07090-CAS-GJS
`Date August 2, 2019
`DMF, INC. V. AMP PLUS, INC. ET AL.
`
`Case No.
`Title
`
`system “provides a compact design that allows the combined casting, light source
`module, driver, and reflector to be installed in a standard junction box instead of a ‘can’
`housing structure to reduce the overall cost of the lighting system while still complying
`with all building and safety code/regulations.” Patent at p.2.
`III. LEGAL STANDARD
`Claim construction begins with an examination of the intrinsic evidence of record,
`which includes the patent claims,1 the specification,2 and, if in evidence, the prosecution
`history.3 Phillips v. AWH Corp., 415 F.3d 1303, 1316-17 (Fed. Cir. 2005) (en banc).
`
`
`1 The first source courts turn to in order to define the scope of the invention is “the
`words of the claims themselves, both asserted and nonasserted.” Abbott Labs. v. Andrx
`Pharms., Inc., 452 F.3d 1331, 1336 (Fed. Cir. 2006) (quoting Vitronics Corp. v.
`Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). “[T]he claims themselves
`provide substantial guidance as to the meaning of particular claim terms” and “the
`context in which a term is used in the asserted claim can be highly instructive.” Phillips
`v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc). Claim language is
`generally interpreted consistently across different claims. Id.
`
`2 “The claims, of course, do not stand alone,” but instead “must be read in view of
`the specification, of which they are a part.” Phillips, 415 F.3d at 1315–17 (internal
`quotations omitted); see also Vitronics, 90 F.3d at 1582 (“[T]he specification is always
`highly relevant to the claim construction analysis. Usually, it is dispositive; it is the
`single best guide to the meaning of a disputed term”). However, it is improper to read
`limitations from the written description into a claim. Tate Access Floors, Inc. v. Maxcess
`Techs. Inc., 222 F.3d 958, 966 (Fed. Cir. 2000) (citations omitted); see also Phillips, 415
`F.3d at 1320 (quoting SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242
`F.3d 1337, 1340 (Fed. Cir. 2001)) (referring to reading a limitation from the written
`description into the claims as “one of the cardinal sins of patent law”). Conversely, “an
`interpretation [which excludes a preferred embodiment] is rarely, if ever, correct and
`would require highly persuasive evidentiary support.” Vitronics, 90 F.3d at 1583.
`
` 3
`
` The prosecution history “contains the complete record of all the proceedings
`before the Patent and Trademark Office, including any express representations made by
`the applicant regarding the scope of the claims.” Vitronics, 90 F.3d at 1582. “[B]ecause
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`Case 2:18-cv-07090-CAS-GJS Document 266 Filed 08/02/19 Page 5 of 30 Page ID
` #:15251
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`2:18-cv-07090-CAS-GJS
`Date August 2, 2019
`DMF, INC. V. AMP PLUS, INC. ET AL.
`
`Case No.
`Title
`
`Courts also may use extrinsic evidence, for example dictionaries, treatises, and expert or
`inventor testimony, to resolve ambiguities in the disputed claim terms, but “while
`extrinsic evidence can shed useful light on the relevant art … it is less significant than the
`intrinsic record in determining the legally operative meaning of claim language.”4
`Phillips, 415 F.3d at 1317-18 (internal citations omitted) (quoting C.R. Bard, Inc. v. U.S.
`Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004)). Technical extrinsic evidence, such
`as dictionaries, encyclopedias, and technical treatises, may similarly be consulted to help
`determine the meaning of claim terms.5 Phillips, 415 F.3d 1322-23. All evidence – both
`intrinsic and extrinsic – should be viewed from the perspective of a person of ordinary
`skill in the relevant art at the time the invention was filed. Markman v. Westview
`Instruments Inc., 52 F.3d 967, 979-80 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370
`(1996).
`Generally, courts begin with a presumption that “claim terms are to be given their
`ordinary and customary meaning.” Aylus Networks, Inc. v. Apple Inc., 856 F.3d 1353,
`1358 (Fed. Cir. 2017) (internal quotations omitted) (citing Aventis Pharm. Inc. v. Amino
`Chems. Ltd., 715 F.3d 1363, 1373 (Fed. Cir. 2013)). “Properly viewed, the ‘ordinary
`
`the prosecution history represents an ongoing negotiation between the PTO and the
`applicant, rather than the final product of that negotiation, it often lacks the clarity of the
`specification and thus is less useful for claim construction purposes.” Phillips, 415 F.3d
`at 1317. Despite this, the prosecution history “can often inform the meaning of the claim
`language by demonstrating how the inventor understood the invention.” Id.
`
` 4
`
` “The sequence of steps used by the judge in consulting various sources is not
`important; what matters is for the court to attach the appropriate weight to be assigned to
`those sources in light of the statutes and policies that inform patent law.” Phillips, 415
`F.3d at 1324.
`
` 5
`
` In Phillips, the Federal Circuit cautioned that “heavy reliance on the dictionary
`divorced from the intrinsic evidence risks transforming the meaning of the claim term to
`the artisan into the meaning of the term in the abstract, out of its particular context, which
`is the specification.” Phillips, 415 F.3d at 1321 (holding that a court should not start with
`a dictionary to determine the plain meaning of a term, and only then turn to the
`specification in order to determine whether to narrow that meaning in light of the intrinsic
`evidence).
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`Case 2:18-cv-07090-CAS-GJS Document 266 Filed 08/02/19 Page 6 of 30 Page ID
` #:15252
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`2:18-cv-07090-CAS-GJS
`Date August 2, 2019
`DMF, INC. V. AMP PLUS, INC. ET AL.
`
`Case No.
`Title
`
`meaning’ of a claim term is its meaning to the ordinary artisan after reading the entire
`patent.” Phillips, 415 F.3d at 1321. “In some cases, the ordinary meaning of claim
`language as understood by a person of skill in the art may be readily apparent even to lay
`judges, and claim construction in such cases involves little more than the application of
`the widely accepted meaning of commonly understood words.” Id. at 1314.
`The Federal Circuit recognizes two exceptions to the general rule that claim terms
`are given their ordinary and customary meaning as understood by a person of ordinary
`skill in the art in the context of the patent intrinsic record: “1) when a patentee sets out a
`definition and acts as his own lexicographer, or 2) when the patentee disavows the full
`scope of a claim term either in the specification or during prosecution.” Thorner v. Sony
`Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (citing Vitronics, 90
`F.3d at 1580). To act as her own lexicographer, the patentee must “‘clearly set forth a
`definition of the disputed claim term’ other than its plain and ordinary meaning.” Id.
`(quoting CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002));
`Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008)
`(patentee must “clearly express an intent” to depart from the plain and ordinary meaning).
`To effect a clear disavowal or disclaimer in the patent specification, the applicant must
`make clear “that the invention does not include a particular feature . . . even though the
`language of the claims, read without reference to the specification, might be considered
`broad enough to encompass the feature in question.” SciMed, 242 F.3d at 1341; see also
`Thorner, 669 F.3d at 1366. Similarly, during prosecution, a patent applicant can “make[ ]
`clear that the invention does not include a particular feature, or is clearly limited to a
`particular form of the invention.” Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367,
`1372 (Fed. Cir. 2014) (internal quotations and citations omitted). If the plain language of
`the claim is to be narrowed, any disclaimer of a broader construction must be “clear and
`unmistakable.” Cordis Corp. v. Boston Scientific Corp., 561 F.3d 1319, 1329 (Fed. Cir.
`2009); Home Diagnostics, Inc. v. Lifescan, Inc., 381 F.3d 1352, 1358 (Fed. Cir. 2004).
`IV. DISCUSSION
`As an initial matter, the Court observes that both parties offer expert testimony on
`how to construe ordinary, non-technical language in the ‘266 Patent. The Court observes
`that “‘[e]xperts may be examined to explain terms of art, and the state of the art, at any
`given time,’ but they cannot be used to prove ‘the proper or legal construction of any
`instrument or writing.’” Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831,
`841 (2015) (quoting Winans v. New York & Erie R. Co., 62 U.S. 88, 100 (1859)).
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`Case 2:18-cv-07090-CAS-GJS Document 266 Filed 08/02/19 Page 7 of 30 Page ID
` #:15253
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`2:18-cv-07090-CAS-GJS
`Date August 2, 2019
`DMF, INC. V. AMP PLUS, INC. ET AL.
`
`Case No.
`Title
`
`Where appropriate, the Court references expert testimony that meaningfully explains
`technical terms or the state of the art. The Court otherwise gives no weight to expert
`testimony that merely offers an opinion on the proper construction of a claim.
`A.
`“Unified Casting”
`
`
`
`Term
`
`Claims
`
`unified
`casting
`
`all
`claims
`
`Plaintiff’s Construction
`A structure formed as a single-part of
`heat-conducting material—e.g., heat-
`conducting material is formed into a
`one-piece structure, rather than
`screwing together separate structures.
`
`Defendants’
`Construction
`A structure formed from
`a single element or from
`multiple elements
`brought together to
`form the structure.
`
`
`Claim 1 recites:
`
` a
`
` unified casting with a heat conducting closed rear face, a heat conducting
`sidewall and an open front face wherein the heat conducting sidewall is joined
`to the heat conducting closed rear face at one end and defines the open front
`face of the unified casting at another end . . . and wherein the unified casting
`includes a plurality of elements positioned proximate to the open front face so
`as to align with corresponding tabs of a standard junction box . . .
`Patent at 8:8–30 (emphasis added).
`The parties’ dispute regarding this claim term is whether the unified casting can
`consist of more than one component. Both parties rely on language from the
`specification in support of their respective arguments. The specification states:
`The casting 5 may be formed of metals, polymers, metal alloys, and/or other
`materials.
`Although described as a casting 5, the casting 5 may be formed through other
`processes other than casting techniques. For example, the casting 5 may be
`formed through an extrusion process or formed through the welding of metal
`sheets to form a structure.
` Patent at 3:16–17; 3:47–51.
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`Case 2:18-cv-07090-CAS-GJS Document 266 Filed 08/02/19 Page 8 of 30 Page ID
` #:15254
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`2:18-cv-07090-CAS-GJS
`Date August 2, 2019
`DMF, INC. V. AMP PLUS, INC. ET AL.
`
`Case No.
`Title
`
`ELCO argues that the above specification language means that the unified casting
`
`may be formed of multiple elements. ELCO also relies on the Merriam-Webster
`Dictionary, which defines “unified” as “brought together as one.” Def. Opening at 12.
`
`DMF argues that the specification language indicates that the unified casting is a
`one-piece structure made of the same heat-conducting material. Pl.’s Response at 11.
`DMF also finds support in the patent prosecution history wherein Danesh distinguished
`from the Pickard reference, which was “a multi-part structure” comprised of a “heat sink
`198,” “driver housing 195,” and “main housing 180,” by explaining that the “unified
`casting” “presents a unified, single-part solution in which the unified casting plays a large
`role, namely as a one-piece housing for the driver, the light source module and the
`reflector, while also acting as a heat sink thereby eliminating any need for any additional
`heat sink piece.” Pl.’s Response at 11; ‘266 Patent File History at FH266PAT 0306.
`
`The Court finds that ELCO’s proposed construction of the term “unified casting” is
`contrary to the intrinsic evidence. The claim language, written description, and patent
`prosecution history—as well as the very use of the word “casting”—demonstrate that the
`“unified casting” refers to a one-piece structure made from the same heat-conducting
`material. Indeed, the other techniques described in the ‘266 Patent for forming the
`unified casting (i.e., extrusion and welding) would all result in a one-piece structure made
`from the same material that cannot be separated. The Court is also unpersuaded by
`ELCO’s argument that the specification language stating that the casting “may be formed
`of metals, polymers, metal alloys, and/or other materials” means that a single casting can
`be made of different materials. Rather, this language, in the context of the ‘266 Patent,
`indicates that the unified casting can be made from one of many different types of heat-
`conducting material.
`The Court acknowledges that the Merriam-Webster Dictionary defines “unified” as
`“brought together as one,” but disagrees with ELCO that the use of this word means that
`the casting itself is a structure made of different elements. Rather, in the context of the
`‘266 Patent, the word “unified” indicates that the casting serves as both a heat sink and a
`housing for the light source module and driver. This interpretation is consistent with the
`file history of the ‘266 Patent wherein Danesh explained that the unified casting functions
`“as a one-piece housing for the driver, the light source module and the reflector, while
`also acting as a heat sink thereby eliminating any need for any additional heat sink
`piece.” Pl.’s Response at 11; ‘266 Patent File History at FH266PAT 0306. Indeed, in its
`
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`Case 2:18-cv-07090-CAS-GJS Document 266 Filed 08/02/19 Page 9 of 30 Page ID
` #:15255
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`2:18-cv-07090-CAS-GJS
`Date August 2, 2019
`DMF, INC. V. AMP PLUS, INC. ET AL.
`
`Case No.
`Title
`
`supplemental brief, ELCO reverses course and argues that “the word ‘unified’ refers to
`the multi-functionality of the casting, not to its physical construction.” Def. Supp. at 6.
`
`Having rejected ELCO’s proposed construction, the Court determines whether the
`term “unified casting” requires any further construction. Although DMF’s proposed
`construction is accurate, the Court observes that “merely rephrasing or paraphrasing the
`plain language of a claim by substituting synonyms does not represent genuine claim
`construction.” C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 863 (Fed. Cir.
`2004). The Court finds that a typical juror would understand “unified casting” without
`assistance and declines to provide further clarification of this term.
`
`For the reasons stated, no construction of “unified casting” is necessary.
`B.
`“Closed Rear Face”
`
`
`
`Term
`
`Claims
`
`Plaintiff’s Construction
`
`Defendants’
`Construction
`Indefinite pursuant to
`35 U.S.C. § 112.
`
`Alternatively,
`
`The exterior rear
`surface of the unified
`casting.
`
`A rear face that has no
`openings.
`
`rear face
`
`1–26
`
`closed
`rear face
`
`1–26,
`28
`
`The unified casting’s “closed rear face”
`is a three-dimensional object that
`includes an external surface and
`internal surface and the claim language
`refers to the internal surface of the
`“closed rear face.”
`
`The “closed rear face” may have small
`holes to accommodate wires or screws
`and may even have slightly larger
`holes.
`
`
`The claim term “closed rear face” appears in many of the claims of the ‘266 Patent,
`including Claim 1, which recites:
`
` a
`
` unified casting with a heat conducting closed rear face, a heat conducting
`sidewall and an open front face . . . wherein the light source module and the
`driver are positioned inside the first cavity while being coupled to the heat
`conducting closed rear face of the unified casting such that the light source
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`Case 2:18-cv-07090-CAS-GJS Document 266 Filed 08/02/19 Page 10 of 30 Page ID
` #:15256
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`2:18-cv-07090-CAS-GJS
`Date August 2, 2019
`DMF, INC. V. AMP PLUS, INC. ET AL.
`
`Case No.
`Title
`
`module is closer to the closed rear face of the unified casting than the open
`front face of the unified casting . . .
`Patent 8:8–26.
`
`The parties dispute whether the term “closed rear face” refers only to the exterior
`surface of the rear portion of the unified casting and whether the “closed rear face” may
`have small openings. The Court first addresses whether the term “closed rear face” refers
`only to the exterior of the rear portion of the unified casting.
`i.
`Interior or Exterior Rear Surface
`ELCO argues that the term “rear face” should be construed to mean only the
`exterior rear surface of the unified casting because: (1) Figure 1 and Figure 3 of the ‘266
`Patent identify the rear face as the exterior rear surface of the unified casting; (2) the
`Merriam-Webster Dictionary defines “face” to mean “a front, upper, or outer surface”;
`and (3) the claims refer to the exterior surface of the closed rear when describing the total
`height of the claimed invention and the function of the closed rear face in significantly
`dissipating heat. Id. at 15.
`The Court finds that ELCO’s proposed construction is incompatible with the
`language of the claim, which recites that “the light source module and the driver are
`positioned inside the first cavity while being coupled to the heat conducting closed rear
`face of the unified casting . . .” Patent 8:21–24. The light source module cannot be both
`inside the first cavity and coupled to the exterior surface of the closed rear face. ELCO’s
`proposed construction also finds no support in the specification, which repeatedly refers
`to the interior surface of the closed rear face. See, e.g., Patent 3:26–28 (“The closed rear
`face 14 allows the light source module 3 and the driver 4 to be securely mounted to the
`casting 5 . . .”). In fact, ELCO’s construction would exclude the preferred embodiments
`of the ‘266 Patent by requiring the light module to be attached to the exterior surface of
`the closed rear face. The Court declines to construe the meaning of “closed rear face” in
`such a way as to exclude the preferred embodiments of the invention.
`Indeed, the Court previously rejected ELCO’s proposed construction of the term
`“closed rear face” in its order granting DMF’s motion for a preliminary injunction. Dkt.
`147 at 11–12. In that order, the Court explained that “ELCO’s construction of the term
`‘closed rear face’ to refer exclusively to the exterior surface of the rear of the casting is
`
`
`CV-549 (10/16)
`
` CIVIL MINUTES – GENERAL
`
`Page 10 of 30
`
`Elco Lighting 1026
`IPR of U.S. Patent No. 9,964,266
`Page 10 of 30
`
`

`

`Case 2:18-cv-07090-CAS-GJS Document 266 Filed 08/02/19 Page 11 of 30 Page ID
` #:15257
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`2:18-cv-07090-CAS-GJS
`Date August 2, 2019
`DMF, INC. V. AMP PLUS, INC. ET AL.
`
`Case No.
`Title
`
`plainly inconsistent with how the term ‘closed rear face’ is used throughout the
`specification[,]” as well as the relevant claim language. Id. The Court is still persuaded
`that ELCO’s proposed construction finds no support in the ‘266 Patent and sees no reason
`to depart from its earlier conclusion.
`
`Alternatively, ELCO, contends that if “rear face” were to refer to the entirety of
`rear portion of the unified casting, the term would be indefinite because a competitor
`would not be able to determine whether it is infringing the claimed invention. Def.’s
`Opening at 14. Specifically, ELCO references language in Claim 1 which provides
`“wherein the heat conducting sidewall has a first dimension between the heat conducting
`closed rear face and the open front face of less than 2 inches” and argues that when
`determining whether the “first dimension” of the sidewall is less than two inches, one
`must measure the sidewall from the exterior surface of the closed rear face to the open
`front face. Therefore, according to ELCO, allowing “closed rear face” to also refer to the
`interior surface of the rear portion of the casting when determining whether the light
`module is “closer to” the closed rear face than the open front face would render that term
`too indefinite. Id.
`
` claim term is indefinite if “[the] claims, read in light of the specification
`delineating the patent, and the prosecution history, fail to inform, with reasonable
`certainty, those skilled in the art about the scope of the invention.” Nautilus, Inc. v.
`Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014). The burden is on the defendant to
`prove indefiniteness by clear and convincing evidence. BASF Corp. v. Johnson Matthey
`Inc., 875 F.3d 1360, 1365 (Fed. Cir. 2017). The Court is not persuaded that the term
`“closed rear face” is indefinite merely because it can refer to the interior surface, the
`exterior surface, or the entirety of the closed rear face. The Court finds that the claim
`language provides enough context to allow a person of ordinary skill in the art to
`determine what part of the closed rear face is being referenced. For example, with
`respect to the claim language cited by ELCO in arguing that the term “closed rear face” is
`indefinite, the Court finds that the claim itself explains how to measure the length of the
`sidewall. Claim 1 recites:
`
` A
`
`a unified casting with a heat conducting closed rear face, a heat conducting
`sidewall and an open front face wherein the heat conducting sidewall is
`joined to the heat conducting closed rear face at one end and defines the
`open front face of the unified casting at another end, wherein the heat
`
`CV-549 (10/16)
`
` CIVIL MINUTES – GENERAL
`
`Page 11 of 30
`
`Elco Lighting 1026
`IPR of U.S. Patent No. 9,964,266
`Page 11 of 30
`
`

`

`Case 2:18-cv-07090-CAS-GJS Document 266 Filed 08/02/19 Page 12 of 30 Page ID
` #:15258
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`2:18-cv-07090-CAS-GJS
`Date August 2, 2019
`DMF, INC. V. AMP PLUS, INC. ET AL.
`
`Case No.
`Title
`
`conducting sidewall has a first dimension between the heat conducting closed
`rear face and the open front face of less than 2 inches . . .
`Patent at 8:8–16 (emphasis added). Here, because the claim states that the sidewall is
`“joined to” the “closed rear face” and that the sidewall has a “first dimension between the
`heat conducting closed rear face and the open front face,” one would determine the length
`of the sidewall by measuring the distance from the “open front face” to where the
`sidewall is “joined to” the “closed rear face.” Although determining where the sidewall
`is “joined to” the “closed rear face” would depend on the shape of the casting, the Court
`is nonetheless persuaded that the claim language is sufficiently definite to allow a person
`of ordinary skill in the art to determine how to measure the sidewall.
`
`Having rejected ELCO’s argument that the term “closed rear face” is indefinite as
`well as its proposed construction of that term, the Court determines whether the “closed
`rear face” requires any clarifying construction. Claim 1 recites a unified casting with an
`open cavity comprised of three parts: (1) a heat conducting closed rear face, (2) a heat
`conducting sidewall, and (3) an open front face. The delineation of three parts makes it
`clear that the “closed rear face” refers to the portion of the unified casting that is not the
`open front face or the sidewall—i.e., the rear part of the casting opposite the open front
`face. Accordingly, the Court finds that the term “closed rear face” does not require
`construction. The Court, however, is aware that the parties dispute whether the interior
`surface or the exterior surface of the “closed rear face” is referenced