Case 4:19-cv-00696-ALM Document 138 Filed 09/01/20 Page 1 of 34 PageID #: 2972
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`SHERMAN DIVISION
`
`LARGAN PRECISION CO., LTD.,
`
`Plaintiff,
`
`v.
`
`ABILITY OPTO-ELECTRONICS
`TECHNOLOGY CO., LTD.; NEWMAX
`TECHNOLOGY CO., LTD.; AND HP
`INC.
`
`Defendants.
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`Civil Action No. 4:19-CV-696-ALM
`Jury Trial Demanded
`
`DEFENDANTS’ RESPONSIVE CLAIM CONSTRUCTION BRIEF
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`EX 2017 Page 1
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`Case 4:19-cv-00696-ALM Document 138 Filed 09/01/20 Page 2 of 34 PageID #: 2973
`TABLE OF CONTENTS
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`
`Page
`
`
`I.
`II.
`
`B.
`
`Introduction ........................................................................................................................ 1
`The Patents-in-Suit............................................................................................................. 2
`A.
`The ’691 Patent ...................................................................................................... 3
`1.
`The Lens Elements and Their Aspheric Surfaces ...................................... 3
`2.
`The Image Plane and Sensors .................................................................... 7
`3.
`The Asserted Claims .................................................................................. 7
`The ’518 Patent, ’796 Patent, and ’378 Patent....................................................... 8
`1.
`The Lens Elements and Their Aspheric Surfaces ...................................... 8
`2.
`The Asserted Claims .................................................................................. 9
`The Prosecution Histories ................................................................................................ 10
`III.
`IV. Applicable Law ................................................................................................................ 10
`V.
`Argument ......................................................................................................................... 11
`A.
`“Aspheric”............................................................................................................ 11
`B.
`“Lens Element(s)” ................................................................................................ 16
`C.
`“Half of the diagonal length of the effective pixel area of the electronic
`sensor is ImgH”.................................................................................................... 22
`Conclusion ....................................................................................................................... 27
`
`VI.
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`Case 4:19-cv-00696-ALM Document 138 Filed 09/01/20 Page 3 of 34 PageID #: 2974
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`
`TABLE OF AUTHORITIES
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`Page
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`
`
`CASES
`
`AK Steel Corp. v. Sollac,
`344 F.3d 1234 (Fed. Cir. 2003)................................................................................................13
`
`C.R. Bard, Inc. v. U.S. Surgical Corp.,
`388 F.3d 858 (Fed. Cir. 2004)..................................................................................................16
`
`Dow Chem. Co. v. Nova Chems. Corp.,
`803 F.3d 620 (Fed. Cir. 2015)..................................................................................................24
`
`Idenix Pharms. LLC v. Gilead Scis. Inc.,
`941 F.3d 1149 (Fed. Cir. 2019)................................................................................................13
`
`InterDigital Commc’ns., Inc. v. ITC,
`601 F. App’x 972 (Fed. Cir. 2015) ..........................................................................................15
`
`Irdeto Access Inc. v. Echostar Satellite Corp.,
`383 F.3d 1295 (Fed. Cir. 2004)................................................................................................15
`
`Nautlius, Inc. v. Biosig Instruments, Inc.,
`134 S. Ct. 2120 (2014) .......................................................................................................23, 27
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc)........................................................................ passim
`
`Poly–America, L.P. v. API Indus., Inc.,
`839 F.3d 1131 (Fed. Cir. 2016)................................................................................................15
`
`Renishaw PLC v. Marposs Societa’
`per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998) .....................................................................1
`
`SandBox Logistics LLC v. Proppant Express Invs. LLC,
`2019-1684, 2020 U.S. App. LEXIS 15879 (Fed. Cir. May 18, 2020) .....................................15
`
`Solas OLED Ltd. v. Samsung Display Co.,
`No. 2:19-cv-00152-JRG, 2020 U.S. Dist. LEXIS 67490 (E.D. Tex. Apr. 17,
`2020) ....................................................................................................................................1, 15
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`Case 4:19-cv-00696-ALM Document 138 Filed 09/01/20 Page 4 of 34 PageID #: 2975
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`Teva Pharm. USA, Inc. v. Mylan Pharm. Inc.,
`789 F.3d 1335 (Fed. Cir. 2015)................................................................................................24
`
`Trs. of Columbia Univ. v. Symantec Corp.,
`811 F.3d 1359 (Fed. Cir. 2016)............................................................................................1, 15
`
`STATUTES
`
`35 U.S.C. § 112, ¶ 2 (2006 ed.) .....................................................................................................23
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`Case 4:19-cv-00696-ALM Document 138 Filed 09/01/20 Page 5 of 34 PageID #: 2976
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`I.
`
`Introduction
`
`In its seminal case of Phillips v. AWH Corp., the Federal Circuit stated:
`
`Ultimately, the interpretation to be given a term can only be
`determined and confirmed with a full understanding of what the
`inventors actually invented and intended to envelop with the
`claim. The construction that stays true to the claim language and
`most naturally aligns with the patent’s description of the
`invention will be, in the end, the correct construction.
`
`415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (quoting Renishaw PLC v. Marposs Societa’ per
`
`Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998)).1 Phillips reversed the trend of parties heavily
`
`relying upon dueling dictionary definitions, expert testimony, and other extrinsic evidence for
`
`claim construction, which often resulted in improper claim scope. Trs. of Columbia Univ. v.
`
`Symantec Corp., 811 F.3d 1359, 1363 (Fed. Cir. 2016); Solas OLED Ltd. v. Samsung Display
`
`Co., No. 2:19-cv-00152-JRG, 2020 U.S. Dist. LEXIS 67490, at *13 (E.D. Tex. Apr. 17, 2020).
`
`The Federal Circuit explained, “We have viewed extrinsic evidence in general as less reliable
`
`than the patent and its prosecution history in determining how to read claim terms” for several
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`reasons, including that “undue reliance on extrinsic evidence poses the risk that it will be used to
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`change the meaning of claims in derogation of the indisputable public records consisting of the
`
`claims, the specification and the prosecution history, thereby undermining the public notice
`
`function of patents.” Phillips, 415 F.3d at 1318–19 (internal citations and quotation marks
`
`omitted).2
`
`Plaintiff’s opening claim construction brief (hereafter, “Pl. Br.”) reads like a pre-Phillips
`
`brief. Plaintiff cites over a dozen items of extrinsic evidence—including its hand-picked
`
`software manuals and datasheets, the earlier Genius case (involving none of these Defendants),
`
`
`1 All emphasis is added unless otherwise noted.
`2 See also Section IV, infra at pp. 10–11 (Applicable Law section discussing Phillips
`discussion of weighing intrinsic and extrinsic evidence).
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`Case 4:19-cv-00696-ALM Document 138 Filed 09/01/20 Page 6 of 34 PageID #: 2977
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`certain Ability patents (not at issue in the case) and inter partes review (IPR) filings, and expert
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`testimony—none of which is mentioned in the Patents-in-Suit. At the same time, Plaintiff barely
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`mentions the actual disclosures of the Patents-in-Suit and their discussions of the three disputed
`
`claim terms: (1) “aspheric” lens surface; (2) a “lens element”; and (3) “effective pixel area.”
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`Plaintiff never offers a competing definition of any of these terms, instead simply saying they
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`should be given their “plain and ordinary meaning,” whatever that might be.
`
`The Court should reject Plaintiff’s incorrect and unhelpful positions that are not
`
`supported by the claim language, specifications, or prosecution histories of the Patents-in-Suit.
`
`When looking to this intrinsic evidence as Phillips requires, Defendants’ proposed definitions are
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`correct. Plaintiff’s contrary, overbroad, and extrinsic evidence-based characterizations do not
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`reflect the meaning of these terms to a POSITA for the Patents-in-Suit, and should be rejected.
`
`II.
`
`The Patents-in-Suit3
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`Plaintiff Largan Precision Co., Ltd. (“Largan” or “Plaintiff”) asserts four patents against
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`defendants HP Inc. (“HP”) and Ability Opto-Electronics Co. Ltd. (“Ability”) (collectively,
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`“Defendants”): U.S. Patent Nos. 7,274,518 (“’518 Patent”) (Ex. A), 8,395,691 (“’691 Patent”)
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`(Ex. B), 8,988,796 (“’796 Patent”) (Ex. C) and 9,146,378 (“’378 Patent”) (Ex. D) (collectively,
`
`“the Patents-in-Suit”). The Patents-in-Suit disclose and claim certain 3-lens and 4-lens optical
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`systems for consumer electronics devices.
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`3-lens and 4-lens optical systems predate the Patents-in-Suit. (See Declaration of José
`
`Sasián, Ph.D. (Ex. E) ¶¶ 51–56, 60–61 (hereafter, “Sasián Decl.”).) This includes optical
`
`systems having convex and concave lens elements with aspheric surfaces, wherein the surface
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`3 An overview and description of the Asserted Patents also will be provided with
`Defendants’ technology tutorial.
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`Case 4:19-cv-00696-ALM Document 138 Filed 09/01/20 Page 7 of 34 PageID #: 2978
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`shapes correct for image aberrations and distortions. (Id. ¶¶ 51, 54–56, 60.)4 This also includes
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`optical systems having an electronic sensor with pixels. (Id. ¶¶ 48, 53–54.) The electronic
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`sensor is located at an image plane, where the “lens elements” focus the light to form an image
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`of an object. (Id. ¶¶ 35, 37, 48, 122, 124.)
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`The optical systems of the Patents-in-Suit are a component of a camera, which in turn is a
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`component of an end consumer electronics product. Here, Plaintiff alleges that its Patents-in-
`
`Suit are infringed by certain camera modules, contained in some HP laptops and tablets,
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`allegedly having certain Ability or Newmax lens assemblies.5
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`A.
`
`The ’691 Patent
`
`The Lens Elements and Their Aspheric Surfaces
`
`1.
`The asserted ’691 Patent includes each of the three disputed claim terms. Although some
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`features of the four Patents-in-Suit differ, their disclosures about the disputed claim terms of
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`“aspheric” and “lens elements” are similar, and the parties agree these terms should be given the
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`same meaning across all four Patents-in-Suit. The last disputed claim term of “effective pixel
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`area” and the corresponding ImgH calculation is found only in the ’691 Patent. As the ’691
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`Patent contains all three terms, Defendants discuss the ’691 Patent below as exemplary for the
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`disputed claim terms.
`
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`4 Ability’s co-pending IPR Petitions cited by Plaintiff cite the following prior art 4-lens
`optical systems: U.S. Patent Application Publication No. 2010/0165484 (“Yin”) (Ex. F), U.S.
`Patent No. 7,443,611 (“Shinohara”) (Ex. G), and EP2015121A2 (“Taniyama”) (Ex. H) against
`Plaintiff’s ’691 Patent; and U.S. Patent No. 9,097,860 (“Yu”) (Ex. I) and U.S. Patent Application
`Publication No. 2004/0012861 (“Yamaguchi”) (Ex. J) against Plaintiff’s ’796 Patent. On August
`28, 2020, after Plaintiff served its opening brief, Ability filed IPR2020-1545 against Plaintiff’s
`’378 Patent based upon U.S. Patent No. 6,970,306 (“Matsuo”) (Ex. K) and WO 2013/145989 A1
`(“Kawasaki”) (Ex. L).
`5 Newmax has settled with Plaintiff, but Plaintiff’s infringement contentions still do not
`identify which of the accused camera modules have Newmax lenses and which have Ability
`lenses.
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`surfaces 111 and 112 being aspheric; a plastic second lens element 120 with negative refractive
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`power having a concave object-side surface 121 and a concave image-side surface 122, both of
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`the surfaces 121 and 122 being aspheric; a plastic third lens element 130 with positive refractive
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`power having a concave object-side surface 131 and a convex image-side surface 132, both of
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`the surfaces 131 and 132 being aspheric; [and] a plastic fourth lens element 140 with negative
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`refractive power having a concave object-side surface 141 and a concave image-side surface 142,
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`both of the surfaces 141 and 142 being aspheric … .” (Id. at 10:16–28.)
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`The specification expressly states and defines for this embodiment (and all other
`
`embodiments) how to determine and calculate the shape of each “aspheric” lens surface:
`
`The equation of the aspheric surface profiles is expressed as
`follows:
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`X(Y) = (Y2/R) / (1 + sqrt (l-(1+k) * (Y / R)2)) + Σ (Ai) * (Yi)
`
`wherein:
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`X: the height of a point on the aspheric surface at a distance Y
`from the optical axis relative to the tangential plane at the aspheric
`surface vertex;
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`Y: the distance from the point on the curve of the aspheric surface
`to the optical axis;
`
`k: the conic coefficient;
`
`Ai: the aspheric coefficient of order i.
`
`(Id. at 10:38–53.) The ’691 Patent further discloses tables of “aspheric coefficients” that, when
`
`used with the above equation, determine the aspheric shapes of the lens elements’ surfaces. For
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`the first embodiment, the relevant table is Table 2 of Figure 12:
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`As shown above, each lens element surface has a conic coefficient “k” and aspheric
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`coefficients A4, A6, A8, A10, A12, A14, and A16.7 The conic coefficient “k” and the aspheric
`
`coefficients for each surface is input into the equation above, thereby determining the aspheric
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`shapes of Surfaces #1 (Fig. 1A, surface 111) and #2 (Fig. 1A, surface 112) (for first lens element
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`110); #4 (Fig. 1A, surface 121) and #5 (Fig. 1A, surface 122) (for second lens element 120); #6
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`(Fig. 1A, surface 131) and #7 (Fig. 1A, surface 132) for third lens element 130; and #8 (Fig. 1A,
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`surface 141) and #9 (Fig. 1A, surface 142) for fourth lens element 140. This information also
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`can be used with optical design software to model the shape and refractive characteristics of each
`
`lens element and of the entire optical system. (See Sasián Decl. ¶¶ 44–45.)
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`The other nine embodiments of the ’691 Patent apply the same “aspheric surface profile
`
`equation” of the first embodiment. The difference is that each embodiment has its own aspheric
`
`coefficient table, which results in different aspheric shapes of the lens element surfaces for each
`
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`7 Certain lens surfaces have aspheric coefficients of zero for A10, A12, A14, and/or A16.
`For example, Surface #5 only has coefficients A4, A6 and A8.
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`Case 4:19-cv-00696-ALM Document 138 Filed 09/01/20 Page 11 of 34 PageID #: 2982
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`embodiment. See Ex. B at Fig. 14 (Table 4 for embodiment 2); Fig. 16 (Table 6 for embodiment
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`3); Fig. 18 (Table 8 for embodiment 4); Fig. 20 (Table 10 for embodiment 5); Fig. 22 (Table 12
`
`for embodiment 6); Fig. 24 (Table 14 for embodiment 7); Fig. 26 (Table 16 for embodiment 8)
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`Fig. 28 (Table 18 for embodiment 9); and Figs. 30A–30B (Tables 20A–20B for embodiment 10).
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`The Image Plane and Sensors
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`2.
`The ’691 Patent also discloses that “an electronic sensor [is] disposed at the image plane
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`160 for image formation of an object.” Id. at 11:15–18. “[T]he sensor of a general
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`photographing camera is none other than CCD (charge coupled device) or CMOS device
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`(Complementary Metal Oxide Semiconductor device).” Id. at 1:19–29. For each embodiment,
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`the specification recites that “half of a diagonal length of an effective pixel area of the electronic
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`sensor is ImgH.”8 However, there are no examples of or details about specific sensors, what is
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`or how to calculate their effective pixel area, or how to then calculate or measure “ImgH.”9
`
`The Asserted Claims
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`3.
`Plaintiff has asserted claims 21–27 of the ’691 Patent. Claims 21 and 26 are reproduced
`
`below, and are representative for purposes of the disputed claim terms.
`
`21. An optical image-capturing lens assembly comprising, in order
`from an object side to an image side:
`
`a first lens element with positive refractive power having a convex
`object-side surface;
`
`a second lens element with negative refractive power;
`
`
`8 See Ex. B at 2:7–8, 2:31–32, 5:61–62, 7:36–38, 8:34–35, 9:39–40 and 47–49; 11:23–24,
`42–43 and 51–52 (embodiment 1); 12:61–62, and 13:14–15 and 23–24 (embodiment 2); 14:31–
`32 and 50–51 (embodiment 3); 15:59–60, 16:12–13 and 21–22 (embodiment 4); 17:31–32, 50–
`51 and 59–60 (embodiment 5); 19:2–3 (embodiment 6); 20:21–22 and 40–41 (embodiment 7);
`21:50–51, and 22:2–3 and 12–13 (embodiment 8); 23:21–22, 40–41 and 49–50 (embodiment 9);
`24:59–60, and 25:11–12 and 20–21 (embodiment 10).
`9 See supra n.8.
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`Case 4:19-cv-00696-ALM Document 138 Filed 09/01/20 Page 12 of 34 PageID #: 2983
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`a plastic third lens element, the object-side and image-side
`surfaces thereof being aspheric; and
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`a plastic fourth lens element having a concave image-side surface,
`the object-side and image-side surfaces thereof being aspheric and
`at least one inflection point being formed on at least one of the
`object-side and image-side surfaces thereof,
`
`wherein the assembly is further provided with an electronic sensor
`for image formation of an object, the electronic sensor is disposed
`at an image plane, a distance on the optical axis between the
`object-side surface of the first lens element and the electronic
`sensor is TTL, and they satisfy the following relation:
`
`
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`1.80 mm<TTL<3.20 mm
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`26. The optical image-capturing lens assembly according to claim
`23, wherein a light ray having an incident angle of 36.5 degrees
`with respect to the optical axis and passing through the center of
`the stop intersects the image-side surface of the fourth lens element
`at a point, the perpendicular distance from the point to the optical
`axis is Ycl, half of the diagonal length of the effective pixel area
`of the electronic sensor is ImgH, and they satisfy the following
`relation:
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`
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`0.35<Ycl/ImgH<0.95.
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`Id. at 28:12–28 and 50–59.10
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`B.
`
`The ’518 Patent, ’796 Patent, and ’378 Patent
`
`The Lens Elements and Their Aspheric Surfaces
`
`1.
`The asserted ’518 and ’796 Patents also disclose 4-lens optical systems. In particular,
`
`both of these patents disclose the same aspheric surface profile equation as the ’691 Patent. The
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`’518 Patent states, “[t]he respective surfaces of the lenses are all aspheric, … and the equation
`
`of the curve of the aspheric surfaces is expressed as follows,” followed by this equation. (Ex. A
`
`at 5:18–32; see also id. at 6:47–68 (aspheric coefficient Table 2, embodiment 1), 8:52–68
`
`(aspheric coefficient Table 4, embodiment 2), 11:1–23 (aspheric coefficient Table 6,
`
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`10 Claim 26 depends from claims 21, 22, and 23, which recite certain refractive powers
`and/or lens surface shapes for the second, third, and fourth lens elements. Ex. B at 28:30–38.
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`Case 4:19-cv-00696-ALM Document 138 Filed 09/01/20 Page 13 of 34 PageID #: 2984
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`embodiment 3).) The ’796 Patent also discloses the same aspheric surface equation and aspheric
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`coefficient tables that “express” the “aspheric surface profiles.” (See Ex. C at 7:52–8:2 (aspheric
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`surface equation) and, e.g., 9:30–53 (aspheric coefficient Table 2, embodiment 1).)
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`The ’378 Patent discloses a 3-lens optical system. (See Ex. D at, e.g., Abstract.) The
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`’378 Patent uses the same language as the other Patents-in-Suit, stating that “[t]he equation of the
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`aspheric surface profiles of the aforementioned lens elements of the 1st embodiment is expressed
`
`as follows.” (Id. at 8:22–39.) The disclosed equation and aspheric coefficient tables are used for
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`all embodiments. (See id. at 8:22–39, 10:1–18 (Table 2, embodiment 1); 11:45–65 (Table 4,
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`embodiment 2); 13:33–52 (Table 6, embodiment 3); 15:25–45 (Table 8, embodiment 4); 17:25–
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`48 (Table 10, embodiment 5); 19:25–48 (Table 12, embodiment 6); 21:25–48 (Table 14,
`
`embodiment 7); and 23:20–40 (Table 16, embodiment 8).)
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`The Asserted Claims
`
`2.
`Plaintiff asserts the following claims of the ’518, ’796, and ’378 Patents:
`
`•
`
`•
`
`•
`
`’518 Patent: claims 1–2, 4–5, and 8–12.
`
`’796 Patent: claims 1–9, 11, and 15–25.
`
`’378 Patent: claims 1–6, 8, 9, 11, 13, and 15.
`
`Similar to the ’691 Patent, these asserted claims recite “lens elements” in which one or
`
`more surfaces are “aspheric.” (Ex. A at, e.g., 11:58–60 (claim 1 reciting, in part, “a first lens
`
`element … at least one surface of the first lens element is aspheric”); Ex. C at, e.g., 30:58–63
`
`(claim 1 reciting, in part, “a fourth lens element … wherein both of an object-side surface and
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`the image-side surface of the fourth lens element are aspheric …”); Ex. D at, e.g., 24:40–44
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`(claim 1 reciting, in part, “a first lens element … wherein the object-side surface and the image-
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`Case 4:19-cv-00696-ALM Document 138 Filed 09/01/20 Page 14 of 34 PageID #: 2985
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`side surface of the first lens element are aspheric”).) As in the ’691 Patent, the claim language
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`of ’518, ’796, and ’378 Patents does not state the meaning of “lens element” or “aspheric.”
`
`III. The Prosecution Histories
`The ’691 Patent issued from U.S. Patent Application No. 12/912,401 (the “’401
`
`Application”), which was filed on October 26, 2010. The examination was brief, and the
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`Examiner never rejected any of the patent claims. (See generally Ex. M (excerpts of the ’691
`
`Patent prosecution history).) As a result, there was never any discussion of any of the disputed
`
`claim terms. Similarly, during prosecution of the ’518, ’796, and ’378 Patents, neither Plaintiff
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`nor the Examiners ever discussed the terms “aspheric” and “lens element,” and there was no
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`significant discussion of the patent claims or prior art. (See generally Ex. N (excerpts of the ’518
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`Patent prosecution history); Ex. O (excerpts of the ’796 Prosecution history); and Ex. P (excerpts
`
`of the ’378 Patent prosecution history).)
`
`IV. Applicable Law
`“[T]he words of a claim are generally given their ordinary and customary meaning … to
`
`a person of ordinary skill in the art … at the time of the invention.” Phillips, 415 F.3d at 1312–
`
`13 (internal citation and quotation omitted). “Importantly, the person of ordinary skill in the art
`
`is deemed to read the claim term … in the context of the … entire patent, including the
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`specification.” Id. at 1313. Patent claims “must be read in view of the specification, of which
`
`they are a part. … [T]he specification is always highly relevant … . Usually, it is dispositive; it
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`is the single best guide to the meaning of a disputed term.” Id. at 1315 (internal citations and
`
`quotation omitted).
`
`In Phillips, the Federal Circuit explained that “while extrinsic evidence can shed useful
`
`light on the relevant art, … it is less significant than the intrinsic record in determining the
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`Case 4:19-cv-00696-ALM Document 138 Filed 09/01/20 Page 16 of 34 PageID #: 2987
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`k: the conic coefficient;
`
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`Ai: the aspheric coefficient of order i.
`
`As discussed in Sections II.A.1 and II.B, supra, all four Patents-in-Suit consistently and
`
`
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`expressly state what is meant by an “aspheric” surface. All four Patents-in-Suit disclose the
`
`same aspheric surface equation. For every embodiment, without exception, all four Patents-in-
`
`Suit then apply that same equation with the tables of aspheric coefficients in order to calculate
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`and determine the shape of each aspheric surface. The Patents-in-Suit do not disclose any other
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`shapes or corresponding equations that qualify as an “aspheric” surface.
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`The Patents-in-Suits’ disclosure is consistent with the understanding of “aspheric” to a
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`POSITA, as Defendants’ expert Dr. Sasián explains. (See Ex. E ¶¶ 39–44, 100–17.) Notably,
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`Plaintiff’s expert Dr. Liang does not dispute that “aspheric” means a surface formed by this
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`equation—nor could he in light of the express, consistent, and repeated disclosures of all the
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`Patents-in-Suit. Instead, Dr. Liang opines that other shapes formed using other equations also
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`qualify as “aspheric,” despite never being disclosed or explained in any of the Patents-in-Suit.
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`Specifically, Plaintiff asserts that “the claimed ‘aspheric’ surface would have been readily
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`understood … as a non-spherical and non-plano surface, calculated using any one of a number
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`of possible equations for expressing an aspheric surface.” (Pl. Br. at 3 (emphasis added); see
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`also id at 5.) Thus, despite nominally arguing for a “plain and ordinary” meaning that requires
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`no construction, Plaintiff in reality argues that the scope of “aspheric” reaches any “non-
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`spherical and non-plano surface.” (Id.)
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`Plaintiff’s proposed construction of “aspheric” suffers from a multitude of problems.
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`First, Plaintiff’s definition is a negative, tautological definition that asserts any non-spherical
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`(and non-plano) surface is “aspheric.” But Plaintiff never explains how to determine whether a
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`surface is spherical, and this is not as simple as it may seem; very small differences and
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`measurements may determine whether a surface is spherical (and therefore not “aspheric”) under
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`Plaintiff’s proposal. This is important, because Plaintiff’s infringement contentions are based in
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`large part on reverse engineering. Without any clear or objective criteria to make this
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`determination, it may be impossible to determine whether a surface is truly “aspheric.” Under its
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`proposed construction, Plaintiff may attempt to erroneously argue that even the slightest
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`manufacturing defect or shape perturbation makes a surface “aspheric.”
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`Second, Plaintiff’s proposed construction of “aspheric” lacks any intrinsic support. The
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`Patents-in-Suit do not disclose “any number of possible equations” or resulting shapes as being
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`an aspheric surface. Plaintiff never disputes that the Patents-in-Suit do not disclose embodiments
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`of any of these “more complex aspheric surfaces” or other “different polynomials.” Nor does
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`Plaintiff explain why these other equations, polynomials, and complex surfaces were omitted if
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`the inventors intended that they be covered by the claimed inventions. Plaintiff attempts to
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`broaden the claim scope beyond what is disclosed in the Patents-in-Suit—much less what is
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`enabled and has a written description. See, e.g., Idenix Pharms. LLC v. Gilead Scis. Inc., 941
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`F.3d 1149, 1163 (Fed. Cir. 2019) (explaining that “a patent owner must convey with reasonable
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`clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of
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`the invention” and that the “test requires an objective inquiry into the four corners of the
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`specification” (internal quotation marks omitted)); AK Steel Corp. v. Sollac, 344 F.3d 1234, 1244
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`(Fed. Cir. 2003) (“[T]he applicant’s specification must enable one of ordinary skill in the art to
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`practice the full scope of the claimed invention,” and “there must be reasonable enablement of
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`the scope of [a claimed] range.”).
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`Third, Plaintiff’s position relies heavily on extrinsic evidence not found in or cited by the
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`Patents-in-Suit. Plaintiff argues there can be “more complex aspheric surfaces including Fresnel,
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`Chebyshev, Q-Type, or Zernlike freeform surfaces” that can be “defined using any number of
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`different polynomials.” (Pl. Br. at 4 (discussing Liang Decl. ¶¶ 82–86).) But none of these other
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`“freeform surfaces” or equations are mentioned anywhere in the Patents-in-Suit. Dr. Liang’s
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`related testimony is also extrinsic evidence to be afforded less weight than the Patents-in-Suit.
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`See Phillips, 415 F.3d at 1317–18. Plaintiff essentially attempts to add Dr. Liang’s testimony as
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`a supplement to or substitute for the Patents-in-Suit, to sidestep the patents’ failure to disclose
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`any of these other equations or surfaces. As yet more extrinsic evidence, Plaintiff cites to a
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`Zemax user manual not mentioned by the patents, (Pl. Br. at 5), and even cites to the “fact” that
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`construction is not necessary because it was not sought in the Genius case, (id.). None of this
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`evidence speaks to what is actually described in the four corners of the specifications.
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`Left without factual support, Plaintiff attempts to obfuscate the deficiency of its
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`construction by citing Ability’s recently-filed IPR petitions challenging the ’796 and ’691
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`Patents. This too is unavailing. First, the IPR petitions are extrinsic evidence that far post-date
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`the filing dates of the Patent-in-Suits. Rather than some type of estoppel, a petitioner’s
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`submissions in an IPR merely amount to extrinsic evidence because they do not reflect the patent
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`owner’s or the PTO’s understanding of the patent. Second, the IPR petitions were only filed by
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`Ability—not by HP, which is also seeking to construe “aspheric” here. Third, the Patent Trial
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`and Appeal Board (PTAB) has not yet acted on Ability’s IPR petitions or decided if its
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`arguments are correct. Fourth, Ability’s asserted prior art in the IPRs satisfy the “aspheric”
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`requirement under both of the proposed definitions here; in fact, that prior art expressly states
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`when a surface is “aspheric.” As a result, Ability never needed to propose any construction of
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`“aspheric” in its IPR petitions, and Ability also was entitled to rely upon Plaintiff’s own claim
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`construction position here for inter partes review.
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`Because its proposed construction of “aspheric” does not have any factual intrinsic
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`support, Plaintiff then argues that the Federal Circuit’s legal precedent somehow requires its
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`construction as a matter of law. The opposite is true. First, the Patents-in-Suit use and apply the
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`aspheric surface equation and coefficient tables for all embodiments across all of the Patents-in-
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`Suit. As a result, this is not a situation where Defendants are importing select embodiments, and
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`Plaintiff’s citations of Hill-Rom and Motio are easily distinguished. (See Pl. Br. at 6–7.)
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`Defendants instead are properly interpreting the claim scope based upon the consistent intrinsic
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`record and meaning that “most naturally aligns with the patent’s description of the invention.”
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`Phillips, 415 F.3d at 1316; see SandBox Logistics LLC v. Proppant Express Invs. LLC, 2019-
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`1684, 2020 U.S. App. LEXIS 15879, at *9–11, 11 n.8 (Fed. Cir. May 18, 2020); Poly–America,
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`L.P. v. API Indus., Inc., 839 F.3d 1131, 1136–37 (Fed. Cir. 2016); Trs. of Columbia Univ., 811
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`F.3d at 1363–64 (Fed. Cir. 2016); InterDigital Commc’ns., Inc. v. ITC, 601 F. App’x 972, 980–
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`81 (Fed. Cir. 2015); Irdeto Access Inc. v. Echostar Satellite Corp., 383 F.3d 1295, 1300–02 (Fed.
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`Cir. 2004); Solas, 2020 U.S. Dist. LEXIS 67490 at *34–39.
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`Second, Defendants do not have to prove either lexicography or disavowal. This is
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`because the Patents-in-Suit already disclose the meaning of “aspher