Case 2:18-cv-00134-RWS Document 211 Filed 06/24/19 Page 1 of 19 PageID #: 6029
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`Omni MedSci, Inc.
`
`Plaintiff,
`
`v.
`
`Apple Inc.,
`
`Defendant.
`
`Case No. 2:18-cv-00134-RWS
`
`CLAIM CONSTRUCTION MEMORANDUM OPINION AND ORDER
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`Before the Court is the opening claim construction brief of Omni MedSci, Inc. (“Plaintiff”)
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`(Docket No. 85),1 the response of Apple Inc. (“Defendant”) (Docket No. 106), Plaintiff’s reply
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`(Docket No. 108), and Defendant’s sur-reply (Docket No. 114). The Court held a hearing on the
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`issue of claim construction on February 6, 2019. Having considered the arguments and evidence
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`presented by the parties at the hearing and in their briefing, the Court issues this Order.
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`1 Citations to the parties’ filings are to the filing’s number in the docket (ECF No.) and pin cites are to the page
`numbers assigned through ECF.
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`Petitioner Apple Inc. - Ex. 1058, p. Cover
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`Case 2:18-cv-00134-RWS Document 211 Filed 06/24/19 Page 2 of 19 PageID #: 6030
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`Table of Contents
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`I.
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`II.
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`BACKGROUND ............................................................................................................... 1
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`LEGAL PRINCIPLES ..................................................................................................... 3
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`A.
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`B.
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`Claim Construction ................................................................................................. 3
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`Departing from the Ordinary Meaning of a Claim Term ........................................ 6
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`III.
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`CONSTRUCTION OF DISPUTED TERMS ................................................................. 7
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`A.
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`B.
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`C.
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`“beam” .................................................................................................................... 7
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`“a plurality of lenses” and “one or more lenses” .................................................. 10
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`“modulating at least one of the LEDs” and “modulating of at least one of
`the LEDs”.............................................................................................................. 13
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`IV.
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`CONCLUSION ............................................................................................................... 17
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`ii
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`Petitioner Apple Inc. - Ex. 1058, p. ii
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`I.
`
`BACKGROUND
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`Plaintiff alleges Defendant infringes three U.S. Patents: No. 9,651,533 (the “’533 Patent”),
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`No. 9,757,040 (the “’040 Patent”), and No. 9,861,286 (the “’286 Patent”) (collectively, the
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`“Asserted Patents”).2 The Asserted Patents are related and each incorporates the disclosure of the
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`others.
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`In general, the Asserted Patents and the ’698 Patent are directed to using a light source to non-
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`invasively determine characteristics of a material or substance, such as blood within biological
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`tissue. For example, the ’533 Patent discloses using spectroscopy to inspect a sample “by
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`comparing different features, such as wavelength (or frequency), spatial location, transmission,
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`absorption, reflectivity, scattering, fluorescence, refractive index, or opacity.” ’533 Patent 8:30–
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`34. This may entail measuring various optical characteristics of the sample as a function of the
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`wavelength3 of the source light by varying the wavelength of the source light or by using a
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`broadband source of light. Id. at 8:35–46.
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`Claim 5 of the ’533 Patent is exemplary of a claimed system:
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`5. A measurement system comprising:
`a light source comprising a plurality of semiconductor sources that are light
`emitting diodes, the light emitting diodes configured to generate an output
`optical beam with one or more optical wavelengths, wherein at least a portion
`of the one or more optical wavelengths is a near-infrared wavelength between
`700 nanometers and 2500 nanometers,
`the light source configured to increase signal-to-noise ratio by increasing a
`light intensity from at least one of the plurality of semiconductor sources and
`by increasing a pulse rate of at least one of the plurality of semiconductor
`sources;
`
`2 Shortly before the Court issued the instant order, Plaintiff dismissed its claims for infringement of a fourth patent,
`U.S. Patent No. 9,885,698 (the “’698 Patent”). Though this patent is no longer in dispute, the parties heavily relied
`on the ’698 Patent’s disclosure in their arguments, and the ’698 Patent’s disclosure informed the Court’s reasoning.
`Accordingly, citations to the ’698 Patent’s specification remain in this order.
`
`3 Wavelength and frequency are inverses, and as it concerns the relevant technology and the Asserted Patents, these
`terms are interchangeable. See, e.g., ’533 Patent 8:30–34 (describing a feature of transmitted light as “wavelength (or
`frequency)”). Accordingly, wavelength and frequency are used synonymously in this order.
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`Page 1 of 17
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`Petitioner Apple Inc. - Ex. 1058, p. 1
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`an apparatus comprising a plurality of lenses configured to receive a portion of
`the output optical beam and to deliver an analysis output beam to a sample
`a receiver configured to receive and process at least a portion of the analysis
`output beam reflected or transmitted from the sample and to generate an
`output signal, wherein the receiver is configured to be synchronized to the
`light source;
`a personal device comprising a wireless receiver, a wireless transmitter, a
`display, a microphone, a speaker, one or more buttons or knobs, a
`microprocessor and a touch screen, the personal device configured to receive
`and process at least a portion of the output signal, wherein the personal device
`is configured to store and display the processed output signal, and wherein at
`least a portion of the processed output signal is configured to be transmitted
`over a wireless transmission link; and
`a remote device configured to receive over the wireless transmission link an
`output status comprising the at least a portion of the processed output signal,
`to process the received output status to generate processed data and to store
`the processed data.
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`The Asserted Patents also disclose various techniques for improving the signal-to-noise ratio
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`of the measurement. For example, the signal-to-noise ratio may be improved by increasing the
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`intensity of the source light. See, e.g., id. at 4:15–17 (“More light intensity can help to increase
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`the signal levels, and, hence, the signal-to-noise ratio.”). The source light may be pulsed, and the
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`pulse rate may be increased to improve the signal-to-noise ratio. See, e.g., id. at 5:11–15 (“The
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`light source is configured to increase signal-to-noise ratio by increasing a light intensity from at
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`least one of the plurality of semiconductor sources and by increasing a pulse rate of at least one of
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`the plurality of semiconductor sources.”).
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`The Asserted Patents also disclose modulating a characteristic of the source light to enhance
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`the signal-to-noise ratio:
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`For example, one way to improve the signal-to-noise ratio would be to use
`modulation and lock-in techniques. In one embodiment, the light source may be
`modulated, and then the detection system would be synchronized with the light
`source.
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`Id. at 16:58–62; ’698 Patent 14:36–40. The ’698 Patent discloses locking in on the pulse frequency
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`of the light source to improve the signal-to-noise ratio. ’698 Patent 21:51–55 (“Using a lock-in
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`Page 2 of 17
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`type technique (e.g., detecting at the same frequency as the pulsed light source and also possibly
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`phase locked to the same signal), the detection system may be able to reject background or spurious
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`signals and increase the signal-to-noise ratio of the measurement.”).
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`II.
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`LEGAL PRINCIPLES
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`A.
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`Claim Construction
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`“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention to
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`which the patentee is entitled the right to exclude.’ ” Phillips v. AWH Corp., 415 F.3d 1303, 1312
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`(Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water Inc. v. Safari Water Filtration Sys., Inc.,
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`381 F.3d 1111, 1115 (Fed. Cir. 2004)). To determine the meaning of the claims, courts start by
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`considering the intrinsic evidence. Id. at 1313; C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d
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`858, 861 (Fed. Cir. 2004); Bell Atl. Network Servs., Inc. v. Covad Commc’ns Group, Inc., 262 F.3d
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`1258, 1267 (Fed. Cir. 2001). The intrinsic evidence includes the claims themselves, the
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`specification, and the prosecution history. Phillips, 415 F.3d at 1314; C.R. Bard, Inc., 388 F.3d at
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`861. The general rule—subject to certain specific exceptions discussed infra—is that each claim
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`term is construed according to its ordinary and accustomed meaning as understood by one of
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`ordinary skill in the art at the time of the invention in the context of the patent. Phillips, 415 F.3d
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`at 1312–13; Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1368 (Fed. Cir. 2003); Azure
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`Networks, LLC v. CSR PLC, 771 F.3d 1336, 1347 (Fed. Cir. 2014) (“There is a heavy presumption
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`that claim terms carry their accustomed meaning in the relevant community at the relevant time.”)
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`(vacated on other grounds).
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` “The claim construction inquiry . . . begins and ends in all cases with the actual words of the
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`claim.” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998).
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`“[I]n all aspects of claim construction, ‘the name of the game is the claim.’ ” Apple Inc. v.
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`Motorola, Inc., 757 F.3d 1286, 1298 (Fed. Cir. 2014) (quoting In re Hiniker Co., 150 F.3d 1362,
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`Page 3 of 17
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`Petitioner Apple Inc. - Ex. 1058, p. 3
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`1369 (Fed. Cir. 1998)). First, a term’s context in the asserted claim can be instructive. Phillips,
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`415 F.3d at 1314. Other asserted or unasserted claims can also aid in determining the claim’s
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`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. (quoting
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`Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc)). “[T]he
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`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). But, “ ‘[a]lthough the specification may aid the court
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`in interpreting the meaning of disputed claim language, particular embodiments and examples
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`appearing in the specification will not generally be read into the claims.’ ” Comark Commc’ns,
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`Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998) (quoting Constant v. Advanced Micro-
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`Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988)); see also Phillips, 415 F.3d at 1323. “[I]t is
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`improper to read limitations from a preferred embodiment described in the specification—even if
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`it is the only embodiment—into the claims absent a clear indication in the intrinsic record that the
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`patentee intended the claims to be so limited.” Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d
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`898, 913 (Fed. Cir. 2004).
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`The prosecution history is another tool to supply the proper context for claim construction
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`because, like the specification, the prosecution history provides evidence of how the U.S. Patent
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`and Trademark Office (“PTO”) and the inventor understood the patent. Phillips, 415 F.3d at 1317.
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`Petitioner Apple Inc. - Ex. 1058, p. 4
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`However, “because the prosecution history represents an ongoing negotiation between the PTO
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`and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the
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`specification and thus is less useful for claim construction purposes.” Id. at 1318; see also Athletic
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`Alternatives, Inc. v. Prince Mfg., 73 F.3d 1573, 1580 (Fed. Cir. 1996) (ambiguous prosecution
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`history may be “unhelpful as an interpretive resource”).
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`Although extrinsic evidence can also 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 testimony
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`may aid a court in understanding the underlying technology and determining the particular
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`meaning of a term in the pertinent field, but an expert’s conclusory, unsupported assertions as to a
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`term’s definition are not helpful to a court. Id. Extrinsic evidence is “less reliable than the patent
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`and its prosecution history in determining how to read claim terms.” Id. The Supreme Court has
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`explained the role of extrinsic evidence in claim construction:
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`In some cases, however, the district court will need to look beyond the patent’s
`intrinsic evidence and to consult extrinsic evidence in order to understand, for
`example, the background science or the meaning of a term in the relevant art during
`the relevant time period. See, e.g., Seymour v. Osborne, 11 Wall. 516, 546 (1871)
`(a patent may be “so interspersed with technical terms and terms of art that the
`testimony of scientific witnesses is indispensable to a correct understanding of its
`meaning”). In cases where those subsidiary facts are in dispute, courts will need to
`make subsidiary factual findings about that extrinsic evidence. These are the
`“evidentiary underpinnings” of claim construction that we discussed in Markman,
`and this subsidiary factfinding must be reviewed for clear error on appeal.
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`Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015).
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`Page 5 of 17
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`Petitioner Apple Inc. - Ex. 1058, p. 5
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`B.
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`Departing from the Ordinary Meaning of a Claim Term
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`There are “only two exceptions to [the] general rule” that claim terms are construed according
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`to their plain and ordinary meaning: “1) when a patentee sets out a definition and acts as his own
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`lexicographer, or 2) when the patentee disavows the full scope of the claim term either in the
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`specification or during prosecution.”4 Golden Bridge Tech., Inc. v. Apple Inc., 758 F.3d 1362,
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`1365 (Fed. Cir. 2014) (quoting Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365
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`(Fed. Cir. 2012)); see also GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304, 1309
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`(Fed. Cir. 2014) (“[T]he specification and prosecution history only compel departure from the
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`plain meaning in two instances: lexicography and disavowal.”). The standards for finding
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`lexicography or disavowal are “exacting.” GE Lighting Solutions, 750 F.3d at 1309.
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`To act as his own lexicographer, the patentee must “clearly set forth a definition of the
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`disputed claim term,” and “clearly express an intent to define the term.” Id. (quoting Thorner, 669
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`F.3d at 1365); see also Renishaw, 158 F.3d at 1249. The patentee’s lexicography must appear
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`“with reasonable clarity, deliberateness, and precision.” Renishaw, 158 F.3d at 1249.
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`To disavow or disclaim the full scope of a claim term, the patentee’s statements in the
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`specification or prosecution history must amount to a “clear and unmistakable” surrender. Cordis
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`Corp. v. Boston Sci. Corp., 561 F.3d 1319, 1329 (Fed. Cir. 2009); see also Thorner, 669 F.3d at
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`1366 (“The patentee may demonstrate intent to deviate from the ordinary and accustomed meaning
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`of a claim term by including in the specification expressions of manifest exclusion or restriction,
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`representing a clear disavowal of claim scope.”). “Where an applicant’s statements are amenable
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`4 Some cases have characterized other principles of claim construction as “exceptions” to the general rule, such as the
`statutory requirement that a means-plus-function term is construed to cover the corresponding structure disclosed in
`the specification. See, e.g., CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1367 (Fed. Cir. 2002).
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`Petitioner Apple Inc. - Ex. 1058, p. 6
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`to multiple reasonable interpretations, they cannot be deemed clear and unmistakable.” 3M
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`Innovative Props. Co. v. Tredegar Corp., 725 F.3d 1315, 1326 (Fed. Cir. 2013).
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`III.
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`CONSTRUCTION OF DISPUTED TERMS
`
`A.
`
`“beam”
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`Disputed Term5
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`“beam”
`
`•
`•
`•
`
`’533 Patent Claims 5, 13
`’040 Patent Claim 1
`’286 Patent Claim 1
`
`The Parties’ Positions
`
`Plaintiff’s Proposed
`Construction
`photons or light transmitted
`to a particular location in
`space
`
`Defendant’s Proposed
`Construction
`photons or light transmitted
`to a particular location in
`space
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`The parties and the Court agree that the term “beam” means “photons or light transmitted to
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`a particular location in space” as defined in the Asserted Patents. See Docket No. 85 at 10; Docket
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`No. 106 at 5; Docket No. 114 at 2. The dispute is whether this definition of a “beam” includes
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`randomly directed light. See Docket No. 114 at 2.
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`Plaintiff argues that the term “beam” appears in the claims in the term “optical beam,” and
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`“optical beam” is defined in the Asserted Patents as equivalent to “optical light.” Docket No. 85
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`at 10–11 (citing ’533 Patent 9:28–38; ’040 Patent 8:24–33; ’286 Patent 10:14–23; ’698 Patent
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`9:29–40). Thus, Plaintiff concludes that “beam” is used in the patents as “light.” Id. at 11.
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`Defendant responds that an optical beam is light directed to a “particular” location, rather than
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`to refer to scattered or undirected light. Docket No. 106 at 5 (citing ’533 Patent 9:28–30; ’040
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`Patent 8:24–26; ’286 Patent 10:14–16; ’698 Patent 9:29–31). Defendant argues that this is
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`apparent from the descriptions of the embodiments, which distinguished light beams from
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`5 For all term charts in this order, the claims in which the term is found are listed with the term but: (1) only the
`highest-level claim in each dependency chain is listed, and (2) only asserted claims identified in the parties’ Joint
`Patent Rule 4-5(d) Claim Construction Chart (Docket No. 112) are listed.
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`Page 7 of 17
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`Petitioner Apple Inc. - Ex. 1058, p. 7
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`undirected, scattered or stray light because the beam is directed to a location. Id. at 5–7 (citing
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`’533 Patent 5:15–18, 7:50–56, 10:12–16, 20:62–65; ’040 Patent Fig. 12C, 3:37–41, 4:6–10, 6:57–
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`63, 15:45–47; ’286 Patent 4:6–11, 4:37–42, 5:3–7, 5:39–43, 8:47–53, 18:54–56; ’698 Patent 2:53–
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`58, 3:20–25, 10:39–45, 20:35–38, 20:47–50, 24:12–14). Moreover, Defendant contends this use
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`of “beam” comports with the ordinary meaning of the term, which equates “beams” with “rays”
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`and “streams.” Id. at 8 (citing Merriam-Webster’s Collegiate Dictionary (11th ed., 2003), Docket
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`No. 106-14 at 4 [hereinafter Merriam-Webster’s]; The American Heritage Dictionary of the
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`English Language (5th ed., 2012), Docket No. 106-15 at 4 [hereinafter American Heritage]).
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`Plaintiff, in its reply, argues a “particular location” in space is the same as “a location” in
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`space, and “particular” is unnecessary. Docket No. 108 at 2 (citing ’040 Patent 14:32–33, 14:46–
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`47). Further, Plaintiff points out that the Asserted Patents describe an “incoherent beam,” meaning
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`that scattered light delivered to a location is still a “beam,” and a “beam” is not necessarily a small
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`point of light. Docket No. 108 at 3–4 (citing ’533 Patent Fig. 16A, 5:11–15).
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`Defendant filed a sur-reply to clarify that an “incoherent beam” is not the same as scattered
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`light. See Docket No. 114 at 3. Rather, “scattered” light is light that is randomly diffused or
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`dispersed and an “incoherent beam” is one in which the light is not all the same phase. Id. at 2–3
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`(citing ’040 Patent 20:45–50; Merriam-Webster’s, Docket No. 114-1 at 4; Newton’s Telecom
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`Dictionary (26th ed. 2011), Docket No. 114-2 at 4–6 [hereinafter Newton’s]). Thus, according to
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`Defendant, “beam” does not include scattered light. Docket No. 114 at 2–3.
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`Analysis
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`A “beam,” as the term is used in the Asserted Patents, is directed or aimed light. Each of the
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`Asserted Patent provides the definition for “beam” that the parties propose:
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`As used throughout this disclosure, the terms “optical light” and or “optical beam”
`and or “light beam” refer to photons or light transmitted to a particular location
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`in space. The “optical light” and or “optical beam” and or “light beam” may be
`modulated or unmodulated, which also means that they may or may not contain
`information. In one embodiment, the “optical light” and or “optical beam” and or
`“light beam” may originate from a fiber, a fiber laser, a laser, a light emitting diode,
`a lamp, a pump laser, or a light source.
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`’533 Patent 9:28–37 (emphasis added). This definition plainly refers to a “beam” as directed or
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`aimed light. The Court disagrees with Plaintiff that “particular location” here means the same as
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`“location” to the extent that Plaintiff contends “location” means any indeterminate (random) point
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`in space. Rather, a beam is directed at a particular location.
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`However, this does not mean that a “beam” necessarily has size or collimation constraints as
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`Defendant argues. For example, the Asserted Patents describe various light sources that may be
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`used to generate a beam, such a lamps, light-emitting diodes (LEDs), laser diodes (LDs), and
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`super-continuum lasers (SC lasers). See, e.g., ’533 Patent 19:21–21:35. Some of these produce
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`“beams that may be difficult to focus to a small area and may have difficulty propagating for long
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`distances.” Id. at 21:27–30. This suggests that a “beam” is not inherently focused or collimated.
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`Further, the patents provide that the light source “may . . . have one or more lenses on the output
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`to collimate or focus the light.” Id. at 20:25–26 (emphasis added). The optional inclusion of
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`collimating or focusing hardware further suggests that a beam is not inherently focused or
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`collimated.
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`The claims themselves suggest a “beam” may have spatial extents beyond a specific focus. In
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`particular, the claims posit that, while a beam is directed at a particular location, the source need
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`not be narrowly focused on the particular location. For example, Claim 5 of the ’533 Patent
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`includes “a plurality of lenses configured to receive a portion of the output optical beam and to
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`deliver an analysis output beam to a sample.” Id. at 29:56–58 (emphasis added).
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`Accordingly, the Court construes “beam” as “photons or light transmitted to a particular
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`location in space.”
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`Page 9 of 17
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`Petitioner Apple Inc. - Ex. 1058, p. 9
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`B.
`
`“a plurality of lenses” and “one or more lenses”
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`Disputed Term
`
`“a plurality of lenses”
`
`•
`
`’533 Patent Claims 5, 13
`
`“one or more lenses”
`
`•
`•
`
`’040 Patent Claim 1
`’286 Patent Claim 16
`
`Plaintiff’s Proposed
`Construction
`
`Defendant’s Proposed
`Construction
`
`no construction necessary;
`plain and ordinary meaning
`
`no construction necessary;
`plain and ordinary meaning
`
`a plurality of transparent
`surfaces used to collimate
`(make parallel) or focus rays
`of light
`
`one or more transparent
`surfaces used to collimate
`(make parallel) or focus rays
`of light
`
`Because the parties’ arguments and proposed constructions with respect to these terms are
`
`related, the Court addresses the terms together.
`
`The Parties’ Positions
`
`Plaintiff contends that “lens,” as used in the Asserted Patents and in the art, includes diverging
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`and complex lenses as well as collimating and focusing lenses. Docket No. 85 at 12–15 (citing
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`American Heritage, Docket No. 85-5 at 6–7; Merriam-Webster’s, Docket No. 85-7 at 7; ’533
`
`Patent 7:16–24, 17:7–10, 20:12–26; ’040 Patent Fig. 4, 6:20–28, 12:15–18, 14:61–15:8; ’286
`
`Patent Fig. 4, 7:60–8:1, 14:2–5, 18:3–17; ’698 Patent 8:6–14, 23:23–42). Plaintiff further argues
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`that the patents do not require that a lens is necessarily a transparent surface. Id. Moreover,
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`Plaintiff asserts that Defendant’s proposed construction improperly imports limitations from
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`exemplary embodiments of lenses. Id.
`
`Defendant responds that the “lenses” of the claims deliver a light beam to a particular location.
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`Docket No. 106 at 9 (citing ’533 Patent 29:56–58, 30:60–63; ’040 Patent 24:22–24; ’286 Patent
`
`29:44–46; ’698 Patent 31:38–40). Accordingly, defendant concludes that the lenses must
`
`collimate or focus the light, rather than disperse or diverge the beam. Id. Defendant notes that all
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`exemplary beam-delivery lenses in the Asserted Patents collimate or focus the light. Id. (citing
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`’533 Patent 18:47–49, 20:25–26; ’040 Patent 12:8–10, 12:39–40, 13:7–9, 15:7–8; ’286 Patent
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`Page 10 of 17
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`Petitioner Apple Inc. - Ex. 1058, p. 10
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`Case 2:18-cv-00134-RWS Document 211 Filed 06/24/19 Page 13 of 19 PageID #: 6041
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`13:62–64, 14:26–27, 14:61–63, 18:16–17; ’698 Patent 20:57–58, 21:22–24, 23:40–42). This
`
`serves a primary purpose of the claimed invention, namely, to increase the signal-to-noise ratio,
`
`by collecting and directing light to increase the intensity of light at a particular location. Id. at 9–
`
`10 (citing ’533 Patent 4:15–17; ’698 Patent 2:24–26). Defendant also contends that the extrinsic
`
`evidence confirms that a lens must collimate or focus rays. Id. at 11 (citing Merriam-Webster’s,
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`Docket No. 106-7 at 4, 7). Finally, Defendant argues that a lens must be transparent else light
`
`could not pass through it, and thus, the lens could not focus, collimate, or even diverge light. Id.
`
`(citing American Heritage, Docket No. 106-5 at 6); Merriam-Webster’s, Docket No. 106-7 at 4,
`
`7).
`
`Plaintiff replies that the “lenses” of the claims should be broadly understood to include all
`
`types of lenses, including diverging lenses. Docket No. 108 at 2–4 (citing ’533 Patent Fig. 16A,
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`5:11–15; ’040 Patent 14:32–33, 14:46–47). Plaintiff notes that a lens may take light and focus it
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`onto a smaller area, as Defendant suggests, but it may also take light and direct it onto a larger
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`area. Id. According to Plaintiff nothing in the patents’ claims or descriptions limits the “lenses”
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`term to the former. Id. Nor does the goal of increasing the signal-to-noise ratio require a focusing
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`or collimating lens, as Defendant posits. Id. Rather, Plaintiff insists that the patents express
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`various exemplary ways of increasing the signal-to-noise ratio, such as increasing the light
`
`intensity at the source, differencing signals, and increasing the pulse rate of the source, but none
`
`of these examples mention focusing the light to increase the signal-to-noise ratio. Id.
`
`Analysis
`
`There are two issues in dispute. First, whether the “lenses” of the claims are necessarily
`
`collimating or focusing lenses. They are not. Second, whether “lenses” are necessarily
`
`transparent. They are.
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`Page 11 of 17
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`Petitioner Apple Inc. - Ex. 1058, p. 11
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`Case 2:18-cv-00134-RWS Document 211 Filed 06/24/19 Page 14 of 19 PageID #: 6042
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`The “lenses” of the claims do not exclude diverging lenses. The Asserted Patents do not
`
`provide a definition for “lens.” Instead, the term is used according to its ordinary meaning, which
`
`includes both converging and diverging lenses. American Heritage, Docket No. 85-5 at 6–7.
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`While it may be that some or all the exemplary embodiments include focusing or collimating
`
`lenses, this is not sufficient to limit “lenses” to focusing or collimating lenses (and thereby exclude
`
`diverging lenses). Phillips, 415 F.3d at 1323 (“[W]e have expressly rejected the contention that if
`
`a patent describes only a single embodiment, the claims of the patent must be construed as being
`
`limited to that embodiment.”); Thorner, 669 F.3d at 1366 (“It is likewise not enough that the only
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`embodiments, or all of the embodiments, contain a particular limitation. We do not read limitations
`
`from the specification into claims; we do not redefine words. Only the patentee can do that.”); SRI
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`Int’l v. Matsushita Elec. Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc) (“The law does
`
`not require the impossible. Hence, it does not require that an applicant describe in his specification
`
`every conceivable and possible future embodiment of his invention.”).
`
`In its ordinary meaning, a lens is transparent. The extrinsic evidence of record establishes that
`
`a “lens,” as customarily used, is transparent, and there is no suggestion that “lens” is used in the
`
`patents to denote something that is not transparent. American Heritage, Docket No. 85-5 at 6–7;
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`Merriam-Webster’s, Docket No. 85-7 at 7. Indeed, the evidence suggests that a lens transmits
`
`light in a certain way for its purpose. See, e.g., American Heritage, Docket No. 85-5 at 6–7 (the
`
`lens is a “means by which light rays are refracted so that they converge or diverge to form an
`
`image”); ’533 Patent 17:41–43 (“a camera lens 1656 may be used to image the wavelengths onto
`
`a detector or camera 1657”). Therefore, a lens cannot be opaque, it must transmit enough light to
`
`serve the purpose of the lens—to refract light.
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`Page 12 of 17
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`Petitioner Apple Inc. - Ex. 1058, p. 12
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`Case 2:18-cv-00134-RWS Document 211 Filed 06/24/19 Page 15 of 19 PageID #: 6043
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`Accordingly, the Court rejects Defendant’s proposal as improperly limiting and Plaintiff’s
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`argument as improperly expansive, and determines that “lenses” has its plain and ordinary meaning
`
`without the need for further construction.
`
`C.
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`“modulating at least one of the LEDs” and “modulating of at least one of the
`LEDs”
`
`Disputed Term
`
`Plaintiff’s Proposed
`Construction
`
`Defendant’s Proposed
`Construction
`
`“modulating at least one of
`the LEDs”
`
`•
`•
`
`’040 Patent Claim 1
`’286 Patent Claim 16
`
`“modulating of at least one of
`the LEDs”
`
`•
`
`’286 Patent Claim 19
`
`pulsing the light, or varying
`the frequency of the light,
`produced by at least one of
`the LEDs
`
`varying the frequency of the
`light produced by at least one
`of the LEDs
`
`Because the parties’ arguments and proposed constructions with respect to these terms are
`
`related, the Court addresses the terms together.
`
`The Parties’ Positions
`
`Plaintiff argues that “modulating,” with respect to the light from the LEDs used in the Asserted
`
`Patents, includes pulsing the light. Docket No. 85 at 15. Plaintiff points out that the claims recite
`
`that the modulated light has an “initial intensity,” which indicates that the intensity may be
`
`modulated, i.e., pulsed. Id. at 16. Moreover, Plaintiff notes that the patents include descriptions
`
`of pulsing the intensity of the light. Id. (citing ’040 Patent 14:48–51, 21:10–13; ’286 Patent 17:57–
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`60, 24:20–22; ’698 Patent 14:44–47, 23:10–13). Finally, Plaintiff explains that “modulating” in
`
`the art includes modulating the amplitude or width of a pulse. Id. at 16–18 (citing Microsoft
`
`Computer Dictionary (4th ed. 1999), Docket No. 85-6 at 4 [hereinafter Microsoft 1999]; Merriam-
`
`Webster’s, Docket No. 85-7 at 8, 10; Microsoft Press Computer Dictionary (3d ed., 1997), Docket
`
`No. 85-8 at 4–6 [hereinafter Microsoft 1997]; American Heritage Science Dictionary (2011),
`
`Page 13 of 17
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`Petitioner Apple Inc. - Ex. 1058, p. 13
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`Case 2:18-cv-00134-RWS Document 211 Filed 06/24/19