Case 1:17-cv-00269-RGA Document 150 Filed 09/27/18 Page 1 of 16 PageID #: 5723
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`MANUFACTURING RESOURCES
`INTERNATIONAL, INC.,
`
`Plaintiff,
`
`V.
`
`CIVIQ SMARTSCAPES, LLC, CIVIQ
`HOLDINGS, LLC, COMARK, LLC, and
`COMARK HOLDINGS, LLC,
`
`Defendants.
`
`Civil Action No. 17-269-RGA
`
`MEMORANDUM OPINION
`
`Arthur G. Connolly, III and Ryan P. Newell, CONNOLLY GALLAGHER LLP, Wilmington,
`DE; Jeffrey S. Standley, James Lee Kwak (argued), and F. Michael Speed, Jr. , STANDLEY
`LAW GROUP LLP, Dublin, OH.
`
`Attorneys for Plaintiff.
`
`John W. Shaw, Karen E. Keller, and Nathan R. Hoeschen, SHAW KELLER LLP, Wilmington,
`DE; Douglas J. Kline (argued), Srikanth K. Reddy (argued), and Molly R. Grammel (argued),
`GOODWIN PROCTER LLP, Boston, MA; Naomi Birbach, GOODWIN PROCTER LLP, New
`York, NY; Yuval H. Marcus, Cameron S. Reuber, Matthew L. Kaufman, and Lori L. Cooper,
`LEASON ELLIS LLP, White Plains, NY.
`
`Attorneys for Defendants.
`
`September r/, 2018
`
`1
`
`SEC et al. v. MRI
`SEC Exhibit 1012.001
`IPR 2023-00199
`
`

`

`Case 1:17-cv-00269-RGA Document 150 Filed 09/27/18 Page 2 of 16 PageID #: 5724
`
`Before the Court is the issue of claim construction of multiple terms in U.S. Patent Nos.
`
`8,854,572 ("the ' 572 patent"), 8,854,595 ("the ' 595 patent"), 9,629,287 ("the ' 287 patent"),
`
`9,173,325 ("the ' 325 patent"), 9,173,322 ("the ' 322 patent"), 8,773 ,633 ("the ' 633 patent"),
`
`9,285,108 ("the ' 108 patent") and 9,313 ,917 ("the ' 917 patent"). The Court has considered the
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`Parties' Joint Claim Construction Brief. (D.I. 124). The Court issued tentative constructions of
`
`seven of the ten disputed terms before oral argument. (D.I. 146). The Court heard oral argument
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`on September 19, 2018. (D.I. 147).
`
`I.
`
`LEGAL ST AND ARD
`
`"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. A WH Corp., 415 F.3d 1303, 1312
`
`(Fed. Cir. 2005) (en bane) (citation omitted).
`
`'" [T]here is no magic formula or catechism for conducting claim construction. ' Instead,
`
`the court is free to attach the appropriate weight to appropriate sources ' in light of the statutes
`
`and policies that inform patent law."' SoftView LLC v. Apple Inc., 2013 WL 4758195 , at *1 (D.
`
`Del. Sept. 4, 2013) (quoting Phillips, 415 F.3d at 1324) (alteration in original). When construing
`
`patent claims, a court considers the literal language of the claim, the patent specification, and the
`
`prosecution history. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979- 80 (Fed. Cir.
`
`1995) (en bane), aff'd, 517 U.S . 370 (1996). Of these sources, "the 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." Phillips, 415 F.3d at 1315.
`
`"[T]he words of a claim are generally given their ordinary and customary meaning .. ..
`
`[This is] the meaning that the term would have to a person of ordinary skill in the art in question
`
`2
`
`SEC et al. v. MRI
`SEC Exhibit 1012.002
`IPR 2023-00199
`
`

`

`Case 1:17-cv-00269-RGA Document 150 Filed 09/27/18 Page 3 of 16 PageID #: 5725
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`at the time of the invention, i.e., as of the effective filing date of the patent application." Id. at
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`1312-13. "[T]he ordinary meaning of a claim term is its meaning to [an] ordinary artisan after
`
`reading the entire patent." Id. 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
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`construction in such cases involves little more than the application of the widely accepted
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`meaning of commonly understood words." Id. at 1314.
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`When a court relies solely upon the intrinsic evidence-the patent claims, the
`
`specification, and the prosecution history-the court's construction is a determination oflaw. See
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`TevaPharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 , 841 (2015). Thecourtmayalsomake
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`factual findings based upon consideration of extrinsic evidence, which "consists of all evidence
`
`external to the patent and prosecution history, including expert and inventor testimony,
`
`dictionaries, and learned treatises." Phillips, 415 F.3d at 1317-19. Extrinsic evidence may assist
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`the court in understanding the underlying technology, the meaning of terms to one skilled in the
`
`art, and how the invention works. Id. Extrinsic evidence, however, is less reliable and less useful
`
`in claim construction than the patent and its prosecution history. Id.
`
`"A claim construction is persuasive, not because it follows a certain rule, but because it
`
`defines terms in the context of the whole patent." Renishaw PLC v. Marposs Societa ' per Azioni,
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`158 F.3d 1243, 1250 (Fed. Cir. 1998). It follows that "a claim interpretation that would exclude
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`the inventor's device is rarely the correct interpretation." Osram GMBH v. Int '! Trade Comm 'n,
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`505 F.3d 1351, 1358 (Fed. Cir. 2007) (citation omitted).
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`II.
`
`BACKGROUND
`
`On March 14, 2017, Manufacturing Resources International, Inc. ("Plaintiff') filed a
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`patent infringement action. The defendants are Civiq Smartscapes, LLC, Civiq Holdings, LLC,
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`3
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`SEC et al. v. MRI
`SEC Exhibit 1012.003
`IPR 2023-00199
`
`

`

`Case 1:17-cv-00269-RGA Document 150 Filed 09/27/18 Page 4 of 16 PageID #: 5726
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`Comark, LLC, and Comark Holdings, LLC (collectively, "Defendants"). The patents in suit are
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`U.S. Patent Nos. 8,854,572 ("the' 572 patent"), 8,854,595 ("the ' 595 patent"), 9,629,287 ("the
`
`'287 patent"), 9,173 ,325 ("the '325 patent"), 9,173,322 ("the '322 patent"), 8,773,633 ("the '633
`
`patent"), 9,285,108 ("the' 108 patent") and 9,313 ,917 ("the ' 917 patent"). All the patents in suit
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`concern systems and methods for cooling large electronic displays to enable outdoor use year(cid:173)
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`round regardless of temperature.
`
`The parties dispute terms in claim 1 of the ' 595 Patent. Claim 1 reads as follows:
`
`1. A system for cooling an electronic display having a posterior display surface and
`contained within a housing, the system comprising:
`a constricted convection plate placed posterior to the posterior display surface;
`two side panels placed adjacent to the constricted convection plate and the
`posterior display surface, defining a constricted convection channel
`having an entrance and an exit; and
`a fan placed to draw air from outside the housing through the constricted
`convection channel.
`
`(' 595 Patent, claim 1) ( disputed terms italicized).
`
`The parties dispute a term in claims 4 and 7 of the '322 Patent. The following claim of
`
`the '322 Patent is representative:
`
`4. A liquid crystal display (LCD) comprising:
`a liquid crystal stack;
`a backlight assembly behind the liquid crystal stack and comprising:
`a printed circuit board (PCB) having front and back sides;
`a plurality of LEDs mounted on the front side of the PCB ;
`a posterior surface on the rear side of the PCB;
`a constricted convection place placed behind and substantially parallel with the
`posterior surface of the PCB ; and
`a fan positioned to draw air between the constricted convection plate and the
`posterior surface.
`
`(' 322 Patent, claim 4) (disputed term italicized).
`
`The parties dispute terms in claims 1 and 8 of the ' 572 Patent. The following claim of the
`
`'572 Patent is representative:
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`4
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`SEC et al. v. MRI
`SEC Exhibit 1012.004
`IPR 2023-00199
`
`

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`Case 1:17-cv-00269-RGA Document 150 Filed 09/27/18 Page 5 of 16 PageID #: 5727
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`1. A method for cooling an electronic display having a rear surface, comprising the steps
`of:
`
`placing a substantially planar surface adjacent to the rear surface of the electronic
`display to define a gap between the planar surface and the electronic
`display;
`placing a closed loop of circulating gas around the display;
`forcing a circulating gas around the closed loop; and
`forcing cooling air through said gap.
`
`(' 572 Patent, claim 1) ( disputed terms italicized).
`
`The parties dispute terms in claim 18 of the ' 287 Patent. Claim 18 reads as follows:
`
`18. An electronic display assembly comprising:
`a housing;
`an electronic display positioned within the housing;
`a rear cooling chamber positioned behind the electronic display and containing an
`electrical component which is electrically connected to the electronic
`display;
`a front surface of the electronic display which faces an intended viewer and a rear
`surface of the electronic display which opposes the front surface;
`wherein the front surface of the electronic display is coolable by a closed loop of
`isolated gas and the rear surface of the electronic display is coolable by
`an open loop of ambient air.
`
`(' 287 Patent, claim 18) ( disputed terms italicized).
`
`The parties dispute terms in claim 1 of the '325 Patent. Claim 1 reads as follows:
`
`1. An electronic display assembly comprising:
`a first and second electronic image assembly where the two image assemblies are
`positioned back to back;
`a first closed gaseous loop encircling the first image assembly;
`a second closed gaseous loop encircling the second image assembly;
`a heat exchanger placed within the path of both the first and second closed
`gaseous loops;
`a circulating fan assembly positioned to force circulating gas through the first
`gaseous loop, second gaseous loop, and heat exchanger; and
`an open loop fan which forces ambient air through the heat exchangers;
`wherein the ambient air is not permitted to mix with the circulating gas.
`
`('325 Patent, claim 1) (disputed terms italicized).
`
`The parties dispute a term in claims 1 and 10 of the ' 633 Patent. The following claim of
`
`the ' 633 Patent is representative:
`
`5
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`SEC et al. v. MRI
`SEC Exhibit 1012.005
`IPR 2023-00199
`
`

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`Case 1:17-cv-00269-RGA Document 150 Filed 09/27/18 Page 6 of 16 PageID #: 5728
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`1. A system for cooling components in an electronic display comprising:
`a thermally conductive plate having a surface area;
`a component having a foot print smaller than the surface area of the plate and
`placed in thermal communication with the plate; and
`a plurality of ribs in thermal communication with the plate;
`wherein the plate provides a gaseous and contaminate barrier between the ribs and
`the component.
`
`(' 633 Patent, claim 1) (disputed term italicized).
`
`The parties dispute a term in claims 1 and 10 of the ' 917 Patent. The following claim of
`
`the '917 Patent is representative:
`
`1. A thermal plate for use with an electronic display placed within a thermally(cid:173)
`conductive housing, the thermal plate comprising:
`A first portion which is in conductive thermal communication with the electronic
`display; and
`a second portion extending from the first portion and placed within conductive
`thermal communication with the housing.
`
`('917 Patent, claim 1) (disputed term italicized).
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`III. CONSTRUCTION OF DISPUTED TERMS
`
`1.
`
`"rear surface of the electronic display"
`
`a.
`
`b.
`
`c.
`
`Plaintiff's proposed construction: no construction needed
`
`Defendants ' proposed construction: "rear surface of the backlight"
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`Court 's construction: To Be Announced
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`This term appears in asserted claims of the ' 572 and ' 287 patents. The parties are
`
`submitting additional briefing and the Court will rule once the briefing is complete.
`
`2.
`
`"posterior display surface"
`
`a.
`
`Plaintiff's proposed construction: "the rear side of the back of the display"
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`or no construction needed
`
`6
`
`SEC et al. v. MRI
`SEC Exhibit 1012.006
`IPR 2023-00199
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`

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`Case 1:17-cv-00269-RGA Document 150 Filed 09/27/18 Page 7 of 16 PageID #: 5729
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`b.
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`Defendants ' proposed construction: "posterior surface of the backlight
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`assembly or the posterior surface of any other thin panel display assembly
`
`(OLED, plasma, etc.)"
`
`c.
`
`Court 's construction: "rear-facing surface of the display assembly"
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`This term appears in asserted claims of the ' 595 patent. Defendants argued that the
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`Plaintiff acted as its own lexicographer by defining "posterior display surface" in the
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`specification of the '595 patent. (D.I. 124 at 16-17). Plaintiff responded that the specification
`
`language identified by Defendants is not a definitional statement, but rather a description of an
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`exemplary embodiment. (D.I. 124 at 19). Plaintiff further asserted that there is no clear
`
`definitional language, nor a use of quotation marks that would indicate an intent to define the
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`term. (D.I. 124 at 19-20). The Court agrees that there is no clear definitional language within the
`
`specification. See Thorner v. Sony Comput. Entm 't Am. LLC, 669 F.3d 1362, 1365-66 (Fed. Cir.
`
`2012) ("It is not enough for a patentee to simply disclose a single embodiment or use a word in
`
`the same manner in all embodiments, the patentee must ' clearly express an intent' to redefine the
`
`term.").
`
`As Defendants noted, however, Plaintiffs proposed construction would create more
`
`ambiguity than clarity in its attempt to construe the term. The Court agrees that Plaintiffs
`
`proposed construction is ambiguous. The Court, before oral argument, proposed a tentative
`
`construction of "posterior display surface" to mean "rear-facing surface of the display
`
`assembly." At oral argument, Plaintiff accepted this construction, while Defendants objected to
`
`the Court' s use of "display assembly" as broadening the term. (D.I. 147, Tr. at 91 :15-19, 92:12-
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`25). Defendants preferred the term "backlight in a back[light] assembly or the posterior surface
`
`in any other thin panel display assembly." (Id. at 93: 12-14 ). Despite Defendants' objections, the
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`7
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`SEC et al. v. MRI
`SEC Exhibit 1012.007
`IPR 2023-00199
`
`

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`Case 1:17-cv-00269-RGA Document 150 Filed 09/27/18 Page 8 of 16 PageID #: 5730
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`Court finds that the term has support within the intrinsic evidence of the specification and
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`properly reflects the claim scope. ' 595 patent at 2:51-54, 3:5. The intrinsic evidence suggests that
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`"backlight assembly" and "thin panel display assembly" are merely examples of a "display
`
`assembly." Id. at 2:51-54. Therefore, the Court construes "posterior display surface" to mean
`
`"rear-facing surface of the display assembly."
`
`3.
`
`"closed loop" / "closed gaseous loop"
`
`a.
`
`Plaintiff's proposed construction: "gas pathway within a display housing that is
`
`isolated from external air outside the pathway to the extent that dust and
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`contaminates may not substantially enter the pathway"
`
`b.
`
`Def endants' proposed construction: no construction necessary or "gas pathway
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`within a display housing containing gas that is essentially isolated from external
`
`air"
`
`c.
`
`Court 's construction : "gas pathway within a display housing containing gas that
`
`is essentially isolated from external air"
`
`These terms appear in asserted claims of the ' 572, ' 287, and ' 325 patents. Plaintiffs
`
`proposed construction impermissibly defines "closed loop" in terms of an outcome and not by its
`
`function or structure. Furthermore, Defendants' proposed construction reflects the plain and
`
`ordinary meaning of the term as reflected by the intrinsic evidence. ' 572 patent at 3:53-63, 5:28-
`
`32; '287 patent at 4:4-11; ' 325 patent at 6:55-59. At oral argument, Plaintiff indicated it was
`
`"prepared to accept [the Court's] tentative construction[]." (D.I. 147, Tr. at 78:1-5). Therefore,
`
`the Court construes "closed loop" and "closed gaseous lo_op" to mean "gas pathway within a
`
`display housing containing gas that is essentially isolated from external air."
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`8
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`SEC et al. v. MRI
`SEC Exhibit 1012.008
`IPR 2023-00199
`
`

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`Case 1:17-cv-00269-RGA Document 150 Filed 09/27/18 Page 9 of 16 PageID #: 5731
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`4.
`
`"open loop"
`
`a.
`
`Plaintiff's proposed construction: "gas pathway within a display housing that is
`
`open to or accessible to external air"
`
`b.
`
`c.
`
`Defendants ' proposed construction: no construction necessary
`
`Court 's construction: no construction necessary
`
`This term appears in asserted claims of the '287 and ' 325 patents. Plaintiffs proposed
`
`construction provides no additional clarity to the term "open loop" as used in both patents. At
`
`oral argument, Plaintiff indicated it was "prepared to accept [the Court's] tentative
`
`construction[]." (D.I. 147, Tr. at 78:1-5). Therefore, the Court finds no construction necessary.
`
`5.
`
`"between"
`
`a.
`
`Plaintiff's proposed construction: "in the space that separates" or no construction
`
`needed
`
`b.
`
`c.
`
`Defendants ' proposed construction: "into contact with"
`
`Court 's construction: "in the space that separates"
`
`This term appears in asserted claims of the ' 322 patent. Defendants asserted that Plaintiff
`
`acted as its own lexicographer for the term "between" because the specification includes
`
`embodiments which describe the constricted convectional channel as "directing air into contact
`
`with" the posterior display surface. (D.I. 124 at 32). Plaintiff advocates that "in the space that
`
`separates" gives effect to the ordinary and plain meaning of the term in the context of the patent.
`
`I agree. Defendants' proposed construction impermissibly reads limitations from embodiments in
`
`the specification ('322 col. 6:33-35) into the claim. Defendants ignore multiple other
`
`embodiments in the ' 322 patent that do not use the words "into contact with" but rather
`
`"through" or "between" to describe how air travels in the constricted convection channel. ('322
`
`9
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`SEC et al. v. MRI
`SEC Exhibit 1012.009
`IPR 2023-00199
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`

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`Case 1:17-cv-00269-RGA Document 150 Filed 09/27/18 Page 10 of 16 PageID #: 5732
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`col. 5:1-5, 47-54, col. 6:2-13). The inventors specifically stated that "direct" physical contact was
`
`"not required." (' 322 col. 9:22-24). Therefore, the Court construes "between" to mean "in the
`
`space that separates."
`
`6.
`
`"constricted convection channel"
`
`a.
`
`Plaintiff's proposed construction : "a narrow passage immediately behind the
`
`posterior display surface formed by the constricted convection plate and the
`
`posterior display surface and the side panels through which outside air can pass
`
`through to remove heat from the posterior display surface through convective heat
`
`transfer"
`
`b.
`
`Defendants ' proposed construction: "channel located behind the posterior display
`
`surface which directs air into contact with the posterior display surface"
`
`c.
`
`Court 's construction: "constricted channel through which air may flow to remove
`
`heat from the posterior display surface"
`
`This term appears in asserted claims of the ' 595 patent. Plaintiff argued that its
`
`construction should be adopted because it gives effect to each word in the term "constricted
`
`convection channel" and is "consistent with the explicit definition . . . provided in claim 1 itself'
`
`(D.I. 124 at 38). Defendants responded that Plaintiffs proposal of the term "narrow" is imprecise
`
`and that Plaintiffs proposed construction creates redundant limitations. (D.I. 124 at 41).
`
`Defendants are correct. However, Defendants' proposed construction impermissibly narrows the
`
`claim scope by reading limitations from isolated portions of the specification into the claim.
`
`At oral argument, the Court proposed a tentative construction of "constricted convection
`
`channel" to mean "a constricted channel through which air may flow to remove heat from the
`
`posterior display surface." (D.I. 147, Tr. at 33:3-5). Plaintiff accepted the Court' s proposed
`
`10
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`SEC et al. v. MRI
`SEC Exhibit 1012.010
`IPR 2023-00199
`
`

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`Case 1:17-cv-00269-RGA Document 150 Filed 09/27/18 Page 11 of 16 PageID #: 5733
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`definition. (Id. at 34:4-5). Defendants asserted that the Court' s construction should be modified
`
`to "a constricted channel through which air may flow to directly remove heat from the posterior
`
`display surface" to capture the idea that the air must be in contact with the posterior display
`
`surface to remove heat. (Id. at 33 :9-17). However, this construction again impermissibly reads
`
`limitations from embodiments into the claim language. Therefore, the Court construes
`
`"constricted convection channel" to mean "constricted channel through which air may flow to
`
`remove heat from the posterior display surface".
`
`7.
`
`"plurality of ribs in thermal communication with the plate"
`
`a.
`
`b.
`
`Plaintiff's proposed construction: no construction needed
`
`Defendants ' proposed construction : "plurality of ribs wherein heat is transferred
`
`to and/or from the plate to the ribs via conductive, convective, radiative means or
`
`any combination thereof'
`
`c.
`
`Court 's construction: "plurality of ribs capable of thermal communication with
`
`the plate"
`
`This term appears in asserted claims of the ' 63 3 patent. Plaintiff asserted that the term
`
`needs no construction because the parties have agreed that: (1) "ribs" does not need construction,
`
`and (2) "thermal communication" shall be defined as "transfer of heat via conductive,
`
`convective, radiative means or any combination thereof. " (D.I. 124 at 5). Defendants argued that
`
`"the phrase ' in thermal communication' is a structural limitation that describes the relationship
`
`between the claimed ' plurality ofribs' and plate." (Id. at 48.) Defendants further asserted that the
`
`term should be construed to require the transfer of heat between the ribs and plate because
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`Plaintiff disclaimed "capability" of thermal communication in the prosecution history. (Id. at 49).
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`11
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`SEC et al. v. MRI
`SEC Exhibit 1012.011
`IPR 2023-00199
`
`

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`Case 1:17-cv-00269-RGA Document 150 Filed 09/27/18 Page 12 of 16 PageID #: 5734
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`The Court disagrees. First, the term "in thermal communication" operates as a functional
`
`claim limitation to describe the capability of the ribs and plate to transfer heat. The use of "in
`
`thermal communication" does not require that actual heat transfer occurs, as argued by the
`
`Defendants. Moreover, the specification supports the construction of "in thermal
`
`communication" as the capability of the ribs and plate to thermally communicate with each
`
`other. ' 633 patent at 5:45-51 , 62-65. Defendants' reliance on Vanguard Prod. Corp. v. Parker
`
`Hannifin Corp. , 234 F.3d 1370 (Fed. Cir. 2000) is mistaken. The Federal Circuit in Vanguard
`
`determined that the term "' integral' ... mea[nt] formed as a unit with another part" because "the
`
`word ' integral ' describe[d] the relationship between the elastomeric layers, not the means of
`
`joining them." Id. at 1371-72 (internal quotation marks omitted). However, the term "integral"
`
`solely described the relationship, not the function of those layers. Here, the term "in thermal
`
`communication" indicates the function or activity that may occur between the ribs and the plate.
`
`Defendants' proposed construction therefore interprets the claim scope too narrowly.
`
`Second, the prosecution history does not disclaim structures that are capable of thermal
`
`communication. The prosecution history indicates only that Plaintiff distinguished the ' 633
`
`patent from U.S Patent No. 6,473 ,150 ("Takushima") and Japanese Patent App. No. 09-214156
`
`("the ' 156 application") because neither reference taught the placement of ribs in heat transfer
`
`with a plate. Rather, the Takushima reference taught to place ribs in contact with a fan to reduce
`
`vibrations, while the ' 156 application taught to place ribs in contact with a plate for structural
`
`stability. Neither reference indicated whether the ribs were made from a thermally conductive
`
`material.
`
`Therefore, the Court construes "plurality of ribs in thermal communication with the
`
`plate" to mean "plurality of ribs capable of thermal communication with the plate."
`
`12
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`SEC et al. v. MRI
`SEC Exhibit 1012.012
`IPR 2023-00199
`
`

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`Case 1:17-cv-00269-RGA Document 150 Filed 09/27/18 Page 13 of 16 PageID #: 5735
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`8.
`
`"conductive thermal communication"
`
`a.
`
`Plaintiff's proposed construction: "the transfer of heat within an object or
`
`between objects through physical contact"
`
`b.
`
`Defendants ' proposed construction: "physical contact that results in the transfer
`
`of heat"
`
`c.
`
`Court 's construction: "the transfer of heat between objects through physical
`
`contact"
`
`This term appears in asserted claims the ' 633 and ' 917 patents. The parties have agreed to
`
`define "thermal communication" as "transfer of heat via conductive, convective, radiative means
`
`or any combination thereof'. (D.I. 124 at 5). Therefore, the Parties' dispute centers on the word
`
`"conductive" as a modifier for "thermal communication." Plaintiff's proposed construction for
`
`"conductive thermal communication" would encompass both heat transfer within an object and
`
`between objects. (D.I. 124 at 57). However, as Defendants argued, and this Court agrees, the
`
`plain meaning of the term "communication" and its use throughout both patents indicates that the
`
`heat transfer encompassed by these terms must occur between multiple objects. (D.I. 124 at 59,
`
`61). Plaintiffs construction would read out the terms "in" and "within" that precede "conductive
`
`thermal communication" throughout the patent. Bicon, 441 F.3d at 951 (rejecting a construction
`
`that would read limitations out of the claim). At oral argument, Plaintiff indicated it was
`
`"prepared to accept [the Court' s] tentative construction[]." (D.I. 147, Tr. at 78:1-5). Therefore,
`
`the Court construes "conductive thermal communication" to mean "the transfer of heat between
`
`objects through physical contact".
`
`13
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`SEC et al. v. MRI
`SEC Exhibit 1012.013
`IPR 2023-00199
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`

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`Case 1:17-cv-00269-RGA Document 150 Filed 09/27/18 Page 14 of 16 PageID #: 5736
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`9.
`
`"substantially parallel"
`
`a.
`
`Plaintiff's proposed construction: "approximately parallel" or no construction
`
`needed
`
`b.
`
`c.
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`Defendants ' proposed construction: indefinite
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`Court's construction: "approximately parallel"
`
`This term appears in asserted claims of the ' 322 patent. Defendants argued that the term
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`"substantially parallel" is indefinite "because it fails to inform a POSA, with reasonable
`
`certainty, of the scope of invention." (D.I. 124 at 66). Nautilus Inc. v. Biosig Instruments, Inc.
`
`sets out that "a patent is invalid for indefiniteness if its 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." 134 S. Ct. 2120, 2124 (2014). After Nautilus ,
`
`the Federal Circuit has continued to uphold terms of degree, recognizing that "absolute precision
`
`is unattainable." Apple Inc. v. Samsung Elecs. Co., 786 F.3d 983 , 1002-03 (Fed. Cir. 2015).
`
`The Federal Circuit has upheld the use of "substantially" as a term of degree in several
`
`post-Nautilus cases. See Apple, 786 F.3d at 1002-02 (finding "substantially centered" not
`
`indefinite); Tinnus Enters., LLC v. Tele brands Corp., 846 F.3d 1190, 1205-06 (Fed. Cir. 2017)
`
`(suggesting that "substantially filled" is not indefinite). The Federal Circuit has also previously
`
`held the phrase "generally parallel" is not indefinite and that it "envisions some amount of
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`deviation from exactly parallel." Anchor Wall Sys., Inc. v. Rockwood Retaining Walls, Inc., 340
`
`F.3d 1298, 1311 (Fed. Cir. 2003). A person of ordinary skill in the art would be informed of the
`
`scope of the invention when reading the term "substantially parallel" in light of the specification
`
`and prosecution history. Therefore, the Court finds that "substantially parallel" is not indefinite
`
`and construes the term to mean "approximately parallel."
`
`14
`
`SEC et al. v. MRI
`SEC Exhibit 1012.014
`IPR 2023-00199
`
`

`

`Case 1:17-cv-00269-RGA Document 150 Filed 09/27/18 Page 15 of 16 PageID #: 5737
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`10.
`
`"the front surface of the electronic display is coolable by a closed loop of isolated
`
`gas"
`
`a.
`
`b.
`
`c.
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`Plaintiff's proposed construction: Not indefinite
`
`Defendants ' proposed construction: Indefinite
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`Court's construction: Not indefinite.
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`This term appears in asserted claims of the ' 287 patent. Defendants asserted that the term
`
`is indefinite "because it adds a functional limitation to the asserted claims of the ' 287 patent
`
`without any corresponding structure in the specification." (D.I. 124 at 75). Defendants argued
`
`that while functional language can be definite, the ' 287 patent provides no quantitative metrics or
`
`formula to determine how "coolable" the front surface of the electronic display needs to be to
`
`infringe. (D.I. 124 at 75-76); see also Halliburton Energy Servs. , Inc. v. M-I LLC, 514 F.3d 1244,
`
`1255-56 (Fed. Cir. 2008). Plaintiff responded that "coolable" defines the front surface' s
`
`capability of being cooled and that a person of ordinary skill in the art would understand the
`
`scope of invention as required by Nautilus. This Court agrees.
`
`To be definite, a claim must only inform a person of ordinary skill in the art of the
`
`invention's scope with reasonable certainty. Nautilus , 134 S. Ct. at 2124. Absolute precision is
`
`not required. Apple v. Samsung, 786 F.3d 983, 1002-03 (Fed. Cir. 2015). Furthermore, the
`
`Federal Circuit has held that "breadth is not indefiniteness." BASF Corp. v. Johnson Matthey
`
`Inc., 875 F.3d 1360, 1367 (Fed. Cir. 2017) (quoting SmithKline Beecham Corp. v. Apotex Corp.,
`
`403 F.3d 1331 , 1341 (Fed. Cir. 2005)). In other words, indefiniteness may not be implied from
`
`the scope of the invention. BASF, 875 F.3d at 1367. While the term coolable is broad, it is not
`
`indefinite. Unlike in Halliburton Energy Servs., Inc. v. M-I LLC, where the court held that the
`
`term "fragile gel" was indefinite because it required a case-by-case determination of whether the
`
`15
`
`SEC et al. v. MRI
`SEC Exhibit 1012.015
`IPR 2023-00199
`
`

`

`Case 1:17-cv-00269-RGA Document 150 Filed 09/27/18 Page 16 of 16 PageID #: 5738
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`same gel was "fragile" depending on the formation or well configuration, 514 F.3d 1244, 1254-
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`55 (Fed. Cir. 2008), here it is quite clear that any front display surface that is capable of being
`
`cooled-however minutely-is included within the scope of the invention. Therefore, the Court
`
`finds that "the front surface of the electronic display is coo lab le by a closed loop of isolated gas"
`
`is not indefinite.
`
`IV.
`
`CONCLUSION
`
`Within five days the parties shall submit a proposed order consistent with this
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`Memorandum Opinion suitable for submission to the jury.
`
`16
`
`SEC et al. v. MRI
`SEC Exhibit 1012.016
`IPR 2023-00199
`
`