Case 2:18-cv-00429-RWS Document 152 Filed 08/14/19 Page 1 of 32 PageID #: 6925
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`CIVIL ACTION NO. 2:18-CV-00429-RWS
`
`§§§§§§§§§
`
`OMNI MEDSCI, INC.,
`
`Plaintiff,
`
`v.
`
`APPLE INC.,
`
`Defendant.
`
`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. 102, filed under seal on May 29, 2019),1 the response of Apple Inc. (“Defendant”)
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`(Docket No. 125, filed on June 21, 2019),2 and Plaintiff’s reply (Docket No. 129, filed on July 1,
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`2019). The Court held a hearing on the issue of claim construction and claim definiteness on July
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`16, 2019. After the hearing, the parties submitted supplemental briefing: Defendant’s
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`supplemental brief (Docket No. 144,3 filed on July 31, 2019) and Plaintiff’s response to the
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`supplemental brief (Docket No. 145, filed under seal on August 5, 2019). Having considered the
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`arguments and evidence presented by the parties at the hearing and in their briefing, the Court
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`issues this Order.
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`1 Citations to the parties’ filings are to the filing’s number in the docket (Docket No.) and pin cites are to the page
`numbers assigned through ECF.
`2 Defendant submitted an amended responsive brief to correct misquoted claim language in the originally submitted
`brief. Docket No. 133. The Court cites the amended brief (Docket No. 133-1).
`3 Defendant incorporated a brief filed under seal on July 29, 2019 as Docket No. 244 in Omni MedSci, Inc. v. Apple
`Inc., No. 2:18-cv-134-RWS (E.D. Tex.) (the “’134 Case”).
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`Petitioner Apple Inc. - Ex. 1057, p. 1
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`Case 2:18-cv-00429-RWS Document 152 Filed 08/14/19 Page 2 of 32 PageID #: 6926
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`
`Table of Contents
`
`I.
`II.
`
`BACKGROUND ............................................................................................................... 3
`LEGAL PRINCIPLES ..................................................................................................... 5
`A.
`Claim Construction ................................................................................................. 5
`B.
`Departing from the Ordinary Meaning of a Claim Term ........................................ 8
`A.
`Definiteness Under 35 U.S.C. § 112, ¶ 2 (pre-AIA) / § 112(b) (AIA) ................... 9
`III. CONSTRUCTION OF DISPUTED TERMS ............................................................... 10
`A.
`“beam” .................................................................................................................. 10
`B.
`“lens” and “one or more lenses” ........................................................................... 12
`C.
`The Modulating Terms ......................................................................................... 15
`D.
`“spectral filter” ...................................................................................................... 20
`E.
`“two receiver outputs” .......................................................................................... 22
`F.
`“the measurement device [further] configured to improve [the] signal-to-
`noise ratio of the output signal by increasing light intensity relative to the
`initial light intensity of at least the first light emitting diode” .............................. 24
`“wherein the modulation frequency has a phase, and wherein the receiver
`is configured to lock onto the phase” .................................................................... 26
`“first reflected portion of the [first / second] output optical beam” ...................... 28
`“generate a second receiver signal from light detected while at least one of
`the first and second light emitting diodes is on including at least a portion
`of the first reflected portion of the first output optical beam” .............................. 30
`IV. CONCLUSION ............................................................................................................... 32
`
`G.
`
`H.
`I.
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`
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`Page 2 of 32
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`Petitioner Apple Inc. - Ex. 1057, p. 2
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`I.
`
`BACKGROUND
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`Plaintiff alleges infringement of four U.S. Patents: Nos. 9,861,286 (the “’286 Patent”),
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`10,098,546 (the “’546 Patent”), 10,188,299 (the “’299 Patent”), and 10,213,113 (the “’113
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`Patent”) (collectively, the “Asserted Patents”). The Asserted Patents are subject-matter related
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`and each incorporates the disclosure of the others. The ’286, ’546 and ’113 Patents are related
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`through a series of continuation applications and claim priority to a provisional application filed
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`on December 31, 2012. The ’299 Patent claims priority to a different provisional application filed
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`on December 31, 2012.
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`The Court recently construed claims of the ’286 Patent and other subject-matter related
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`patents. Omni MedSci, Inc. v. Apple Inc., No. 2:18-cv-00134-RWS, 2019 U.S. Dist. LEXIS
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`104669 (E.D. Tex. June 24, 2019) (the “’134 Order”). In the ’134 Order, the Court considered
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`the scope of “beam,” “lenses” and “modulating” terms. Id. at *11–26. These exact or substantially
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`similar terms are before the Court here.
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`In general, the Asserted Patents are directed to technology for non-invasively determining
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`characteristics of a material or substance, such as blood within biological tissue, using a light
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`source. For example, the ’286 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.” ’286 Patent 9:19–
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`22. This may entail measuring various optical characteristics of the sample as a function of the
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`wavelength4 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 9:22–33.
`
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`4 Wavelength and frequency of light are inversely related, and as it concerns the relevant technology and the Asserted
`Patents, these terms are practically interchangeable. Accordingly, references to the frequency of light in this order
`also refers to the wavelength, and vice versa.
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`
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`Page 3 of 32
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`Petitioner Apple Inc. - Ex. 1057, p. 3
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`Claim 16 of the ’286 Patent is exemplary of a claimed system:
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`16. A wearable device for use with a smart phone or tablet, the wearable device
`comprising:
`a measurement device including a light source comprising a plurality of light
`emitting diodes (LEDs) for measuring one or more physiological parameters,
`the measurement device configured to generate, by modulating at least one
`of the LEDs having an initial light intensity, an optical beam having a
`plurality of optical wavelengths, wherein at least a portion of the plurality of
`optical wavelengths is a near-infrared wavelength between 700 nanometers
`and 2500 nanometers;
`the measurement device comprising one or more lenses configured to receive
`and to deliver a portion of the optical beam to tissue, wherein the tissue
`reflects at least a portion of the optical beam delivered to the tissue, and
`wherein the measurement device is adapted to be placed on a wrist or an ear
`of a user;
`the measurement device further comprising a receiver configured to:
`capture light while the LEDs are off and convert the captured light into a
`first signal and
`capture light while at least one of the LEDs is on and convert the captured
`light into a second signal, the captured light including at least a portion
`of the optical beam reflected from the tissue;
`the measurement device configured to improve a signal-to-noise ratio of the
`optical beam reflected from the tissue by differencing the first signal and the
`second signal;
`the light source configured to further improve the signal-to-noise ratio of the
`optical beam reflected from the tissue by increasing the light intensity relative
`to the initial light intensity from at least one of the LEDs;
`the measurement device further configured to generate an output signal
`representing at least in part a non-invasive measurement on blood contained
`within the tissue; and
`wherein the receiver includes a plurality of spatially separated detectors,
`wherein at least one analog to digital converter is coupled to the spatially
`separated detectors.
`
`The Asserted Patents also disclose various techniques for improving the signal-to-noise ratio
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`for 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., ’286 Patent 4:20–24 (“The light source is configured to
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`further improve the signal-to-noise ratio of the optical beam reflected from the tissue by increasing
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`the light intensity relative to the initial light intensity from at least one of the LEDs.”). The signal-
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`to-noise ratio may also be improved by taking the difference between two light measurements.
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`See, e.g., id. at 4:17–20 (“The measurement device is configured to improve a signal-to-noise ratio
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`of the optical beam reflected from the tissue by differencing the first signal and the second
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`signal.”). Modulation of the light source may also be used to increase the signal-to-noise ratio.
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`See, e.g., id. at 24:12–17 (“For example, one way to improve the signal-to-noise ratio would be to
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`use modulation and lock-in techniques. In one embodiment, the light source may be modulated,
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`and then the detection system would be synchronized with the light source.”). Further, the source
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`light may be pulsed and the pulse rate increased to improve the signal-to-noise ratio. See, e.g.,
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`’299 Patent 2:50–55 (“The light source is configured to improve the signal-to-noise ratio of the
`
`output signal by increasing light intensity relative to an initial light intensity from at least one of
`
`the plurality of LEDs and by increasing pulse rate relative to an initial pulse rate of at least one of
`
`the plurality of LEDs.”).
`
`II.
`
`LEGAL PRINCIPLES
`
`A.
`
`Claim Construction
`
`“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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`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 dispositive;
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`it is the single best guide to the meaning of a disputed term.’ ” Id. (quoting Vitronics Corp. v.
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`Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Teleflex, Inc. v. Ficosa N. Am. Corp.,
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`299 F.3d 1313, 1325 (Fed. Cir. 2002). But, “ ‘[a]lthough the specification may aid the court 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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`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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`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.”5 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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`5 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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`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
`
`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
`
`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).
`
`A.
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`Definiteness Under 35 U.S.C. § 112, ¶ 2 (pre-AIA) / § 112(b) (AIA)
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`Patent claims must particularly point out and distinctly claim the subject matter regarded as
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`the invention. 35 U.S.C. § 112, ¶ 2. A claim, when viewed in light of the intrinsic evidence, must
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`“inform those skilled in the art about the scope of the invention with reasonable certainty.”
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`Nautilus Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910 (2014). If it does not, the claim fails
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`§ 112, ¶ 2 and is therefore invalid as indefinite. Id. at 901. Whether a claim is indefinite is
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`determined from the perspective of one of ordinary skill in the art as of the time the application for
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`the patent was filed. Id. at 911. As it is a challenge to the validity of a patent, the failure of any
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`claim in suit to comply with § 112 must be shown by clear and convincing evidence. BASF Corp.
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`v. Johnson Matthey Inc., 875 F.3d 1360, 1365 (Fed. Cir. 2017). “[I]ndefiniteness is a question of
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`law and in effect part of claim construction.” ePlus, Inc. v. Lawson Software, Inc., 700 F.3d 509,
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`517 (Fed. Cir. 2012).
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`When a term of degree is used in a claim, “the court must determine whether the patent
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`provides some standard for measuring that degree.” Biosig Instruments, Inc. v. Nautilus, Inc., 783
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`F.3d 1374, 1378 (Fed. Cir. 2015) (quotation marks omitted). Likewise, when a subjective term is
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`used in a claim, “the court must determine whether the patent’s specification supplies some
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`standard for measuring the scope of the [term].” Datamize, LLC v. Plumtree Software, Inc., 417
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`F.3d 1342, 1351 (Fed. Cir. 2005). The standard “must provide objective boundaries for those of
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`skill in the art.” Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014).
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`III. CONSTRUCTION OF DISPUTED TERMS
`
`A.
`
`“beam”
`
`Disputed Term6
`
`“beam”
`
`•
`•
`•
`•
`
`’286 Patent Claim 16
`’546 Patent Claims 1, 8, 15
`’299 Patent Claim 7
`’113 Patent Claims 1, 22
`
`The Parties’ Positions
`
`Plaintiff’s Proposed
`Construction
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`Defendant’s Proposed
`Construction
`
`photons or light
`transmitted to a particular
`location in space
`
`photons or light transmitted
`to a particular location in
`space
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`Both Plaintiff and Defendant present the Court’s construction of “beam” from the ’134 Order7
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`but dispute whether this construction needs clarification. Docket No. 130 at 5. Defendant
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`originally proposed that “beam” should be construed as “photons or light transmitted to a particular
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`location in space (a ‘beam’ does not include scattered light).” Id. at 5 n.2.
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`Plaintiff reiterates the arguments it presented to the court in the ’134 Case. Specifically,
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`Plaintiff contends that “beam” is defined in the Asserted Patents such that it does not necessarily
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`exclude “scattered light.” Docket No. 102 at 9 (citing ’286 Patent 10:14–23; ’546 Patent 8:41–50;
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`’299 Patent 10:43–52; ’113 Patent 10:36–45).
`
`
`6 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. 130) are listed.
`7 2019 U.S. Dist. LEXIS 104669, at *11–15.
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`Defendant responds that the patents’ definition of “beam” does not include “scattered (or
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`randomly directed) light.” Docket No. 133-1 at 7. As described in the patents, a “beam” of light
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`is distinct from undirected or stray or diffusely reflected light. Id. at 6–7 (citing ’286 Patent 8:50–
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`53; ’546 Patent 7:10–13; ’299 Patent 9:4–7; ’113 Patent fig. 12C, 9:4–7, 24:22–25, 24:34–37). As
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`it did in the ’134 Case, Defendant contends that the customary meaning of “beam,” which refers
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`to “rays” and “streams,” does not include randomly scattered light. Id. at 9 (citing Merriam-
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`Webster’s Collegiate Dictionary (11th ed., 2003), Docket No. 125-3 at 4 [hereinafter Merriam-
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`Webster’s]; The American Heritage Dictionary of the English Language (5th ed., 2012), Docket
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`No. 125-4 at 4 [hereinafter American Heritage]).
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`Plaintiff, in its reply, contends that “beam” should be construed here as it was in the ’134
`
`Order. Docket No. 129 at 4.
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`In supplemental briefing, Defendant contends that “beam” should be construed to clarify that
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`the light is directed to a particular location and that “beam” does not encompass any randomly
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`directed, scattered, or diffused light that is simply received at a particular location. ’134 Case
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`Docket No. 244 at 5–6. Plaintiff responds that as is known in the art and taught in Defendant’s
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`own patents, diffuse light may be directed to a particular location through scattering. Docket No.
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`145 at 5–6 (citing U.S. Patent Nos. 10,215,698 and 9,891,098).
`
`Analysis
`
`The issues in dispute, as well as the parties’ arguments and evidence, are substantially the
`
`same as addressed in the ’134 Order. The Court here adopts the reasoning and holding of the ’134
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`Order. 2019 WL 2578714, at *4–6, 2019 U.S. Dist. LEXIS 104669, at *11–15 (finding that
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`“beam” is defined in the patents). The Court reiterates that a “beam,” as set forth in the Asserted
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`Patents, is not necessarily collimated or focused, but rather may include diffuse light that is at least
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`in part directed to a particular location. The Court also reiterates that a “beam,” as set forth in the
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`Asserted Patents, is directed at a particular location and is not just light that may be transmitted to
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`an indeterminate location. Further, the Court does not draw the distinction between scattered light
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`and directed light that Defendant urges. Specifically, Defendant argues that “diffusely reflected
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`light” or scattered light is inherently not directed to a particular location. Docket No. 133-1 at 9
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`(citing ’113 Patent fig. 12C, 24:22–25, 24:34–37). The Court disagrees. Whether a particular
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`instance of diffused or scattered light is directed to a particular location is a factual issue of
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`infringement or invalidity.
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`Accordingly, the Court construes “beam” as follows:
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`• “beam” means “photons or light transmitted to a particular location in space.”
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`B.
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`“lens” and “one or more lenses”
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`Disputed Term
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`“lens”
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`•
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`’299 Patent Claim 7
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`“one or more lenses”
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`•
`•
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`’286 Patent Claim 16
`’546 Patent Claims 1, 8, 15
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`Plaintiff’s Proposed
`Construction
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`Defendant’s Proposed
`Construction
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`plain and ordinary meaning plain and ordinary meaning
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`plain and ordinary meaning plain and ordinary meaning
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`Because the parties’ arguments and proposed constructions with respect to these terms are
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`related, the Court addresses the terms together.
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`The Parties’ Positions
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`Both Plaintiff and Defendant present the Court’s construction of “lenses” from the ’134
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`Order8 but dispute whether this construction needs clarification. Docket No. 130 at 6. Defendant
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`8 2019 WL 2578714, at *6–7, 2019 U.S. Dist. LEXIS 104669, at *15–20.
`Page 12 of 32
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`Petitioner Apple Inc. - Ex. 1057, p. 12
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`Case 2:18-cv-00429-RWS Document 152 Filed 08/14/19 Page 13 of 32 PageID #: 6937
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`originally proposed that “lens” should be construed as “transparent surface[s] used to collimate
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`(make parallel) or focus rays of light.” See id. at 6 n.4.
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`Plaintiff reiterates the arguments it presented to the court in the ’134 Case. Specifically,
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`Plaintiff contends that “lens” would be readily understood by a jury without construction. Plaintiff
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`further contends that a “lens” is not limited to focusing or collimating light, but rather may also
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`diverge light. Docket No. 102 at 10 (citing American Heritage, Docket No. 102-5 at 6–7;
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`Merriam-Webster’s, Docket No. 102-6 at 7). According to Plaintiff, the lenses described in the
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`Asserted Patents include—but are not limited to—collimating or focusing lenses. Id. at 10–12
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`(citing ’286 Patent fig. 4, 7:60–8:3, 14:2–5, 18:3–17; ’546 Patent fig. 4, 6:19–29; ’299 Patent 8:34–
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`44, 18:26–28, 22:55–23:2; ’113 Patent fig. 4, 8:14–24). In addition, Plaintiff argues that a lens is
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`not necessarily completely transparent: something that blocks all light is not a lens, but a lens that
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`attenuates the light, such as a sunglass lens, is still a lens. Id. at 12.
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`Defendant responds that in order to serve their claim-recited purpose—to deliver a beam to a
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`sample or tissue—the lenses of the claims cannot diverge light, they necessarily collimate or focus
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`light. Docket No. 125 at 9. Lenses are “consistently and repeatedly” described in the Asserted
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`Patents as collimating or focusing light. Id. at 9–10 (citing ’286 Patent 13:62–64, 14:2–5, 14:26–
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`27, 14:61–63, 18:3–17; ’546 Patent 12:22–24, 12:53–54, 13:21–23, 16:43–44; ’299 Patent 20:2–
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`5, 22:55–23:2; ’113 Patent 13:17–19, 14:17–19, 14:48–50, 15:17–18). Specifically, the patents
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`provide that a lens system that directs light to a sample or tissue necessarily collimates or focuses
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`light. Id. at 12 (citing ’286 Patent 13:61–64; ’546 Patent 12:21–24; ’113 Patent 14:16–19). As
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`described in the patents, this collimating or focusing serves the inventions’ purpose of increasing
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`the signal-to-noise ratio. Id. at 10 (citing ’546 Patent at Abstract; ’299 Patent 5:32–34). A
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`diverging lens would run counter to this purpose. Id. Even the lens depicted in Figure 4 of the
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`Page 13 of 32
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`Petitioner Apple Inc. - Ex. 1057, p. 13
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`Case 2:18-cv-00429-RWS Document 152 Filed 08/14/19 Page 14 of 32 PageID #: 6938
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`’286 Patent, which does not perform the claim-recited purpose of a lens, is described as “collecting
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`light” rather than “diverging light” and therefore does not support a construction of “lens” that
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`encompasses a diverging lens. Id. at 11–12 (citing ’286 Patent fig. 4, 14:2–5; ’546 Patent 12:30;
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`’113 Patent 14:25). Finally, Defendant argues that a lens is necessarily transparent. Id. at 12. “To
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`the extent that transparency is a question of degree,” Defendant concludes, whether a particular
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`material is transparent is for the jury.
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`Plaintiff, in its reply, contends that “lens” should be construed here as it was in the ’134 Order.
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`Docket No. 129 at 4.
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`Analysis
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`The issues in dispute, as well as the parties’ arguments and evidence, are substantially the
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`same as addressed in the ’134 Order. The Court here adopts the reasoning and holding of the ’134
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`Order. 2019 WL 2578714, at *6–7, 2019 U.S. Dist. LEXIS 104669, at *15–20. That is, “lens” is
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`used in the Asserted Patents according to its plain and ordinary meaning, which does not exclude
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`diverging lenses and requires transparency. Id. at *18–20. The Court agrees with Defendant that
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`whether a particular lens, in the prior-art or in an accused product, satisfies the degree of
`
`transparency required to be a “lens” is an issue for the jury. The Court notes, however, that it does
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`not understand the plain meaning of “lens” to exclude all components that attenuate light to any
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`degree. Further, the Court is not persuaded by Defendant’s argument that construing “lens”
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`according to its plain and ordinary meaning, which does not exclude diverging lenses, would
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`improperly run counter to a “key aspect of the invention.” It may be that improving the signal-to-
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`noise ratio is important to the invention. The patents, however, disclose multiple ways to achieve
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`this purpose. See, e.g., ’286 Patent 4:17–20 (differencing two light-detection signals), 4:20–24
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`(increasing the intensity of light produced by a source), 24:12–17 (using modulation and lock-in
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`
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`Page 14 of 32
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`Petitioner Apple Inc. - Ex. 1057, p. 14
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`Case 2:18-cv-00429-RWS Document 152 Filed 08/14/19 Page 15 of 32 PageID #: 6939
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`techniques); ’299 Patent 2:50–55 (“increasing pulse rate”). A focusing or collimating lens is not
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`a necessary aspect of the invention.
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`Accordingly, the Court rejects Defendant’s position that the “lens” of the Asserted Patents is
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`necessarily a collimating or focusing lens and determines that “lens” and “lenses” have their plain
`
`and ordinary meanings without the need for further construction.
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`C.
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`The Modulating Terms
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`Plaintiff’s Proposed
`Construction
`
`Defendant’s Proposed
`Construction
`
`varying [of] the amplitude,