Case 2:20-cv-00038-JRG Document 84 Filed 05/11/21 Page 1 of 39 PageID #: 4046
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`
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`NANOCO TECHNOLOGIES LTD.,
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`v.
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`SAMSUNG ELECTRONICS CO., LTD.
`AND SAMSUNG ELECTRONICS
`AMERICA, INC.,
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`
`
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`Plaintiff,
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`Defendants.
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`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
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`Case No. 2:20-cv-00038-JRG
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`MEMORANDUM OPINION AND ORDER
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`Before the Court is the opening claim construction brief of Plaintiff Nanoco Technologies
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`Ltd. (“Plaintiff”) (Dkt. No. 64, filed on February 12, 2021), the response of Defendants Samsung
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`Electronics Co., Ltd. and Samsung Electronics America, Inc. (collectively “Defendant” or
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`“Samsung”) (Dkt. No. 70, filed on February 26, 2021), and the reply of Plaintiff (Dkt. No. 71, filed
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`on March 5, 2021). The Court held a claim construction hearing on March 26, 2021 (see Dkt. No.
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`75). Having considered the arguments and evidence presented by the parties at the hearing and in
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`their claim construction briefing, the Court issues this Claim Construction Order.
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`Case 2:20-cv-00038-JRG Document 84 Filed 05/11/21 Page 2 of 39 PageID #: 4047
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`Table of Contents
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`I. BACKGROUND ........................................................................................................................ 3
`II. LEGAL PRINCIPLES ............................................................................................................ 4
`III. CONSTRUCTION OF AGREED TERMS ......................................................................... 8
`IV. CONSTRUCTION OF DISPUTED TERMS ...................................................................... 9
`A. “molecular cluster compound” ............................................................................................. 9
`B. “wherein said[/the] conversion is[/being] effected in the presence of a[/the] molecular
`cluster compound” .............................................................................................................. 18
`C. “first semiconductor material” ............................................................................................ 25
`D. “emulsion” .......................................................................................................................... 31
`E. “polymer” ............................................................................................................................ 35
`V. CONCLUSION....................................................................................................................... 38
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`Case 2:20-cv-00038-JRG Document 84 Filed 05/11/21 Page 3 of 39 PageID #: 4048
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`I. BACKGROUND
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`Plaintiff brings suit alleging infringement of the following patents: U.S. Patent No.
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`7,803,423 (“the ’423 patent”), U.S. Patent No. 7,588,828 (“the ’828 patent”), U.S. Patent No.
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`8,524,365 (“the ’365 patent”), U.S. Patent No. 7,867,557 (“the ’557 patent”), and U.S. Patent No.
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`9,680,068 (“the ’068 patent”) (collectively, “the Asserted Patents”). The Asserted Patents
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`generally relate to nanoparticles. In particular, the ‘068 patent relates to a multi-phase polymer
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`film for nanoparticles, while the remaining Asserted Patents relate to nanoparticles and methods
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`of making same. All the Asserted Patents are owned by Nanoco Technologies Ltd.
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`The ‘423, ‘828, and ‘365 patents are entitled “Preparation of Nanoparticle Materials.” The
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`‘828 patent is a continuation-in-part of the application leading to the ‘423 patent. The ‘365 patent
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`is a continuation of the application leading to the ‘423 patent. There is a high degree of overlap
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`between the specifications of these patents. The Abstract of the ‘423 patent is reproduced below:
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`A method of producing nanoparticles comprises effecting conversion of a
`nanoparticle precursor composition to the material of the nanoparticles. The
`precursor composition comprises a first precursor species containing a first ion to
`be incorporated into the growing nanoparticles and a separate second precursor
`species containing a second ion to be incorporated into the growing nanoparticles.
`The conversion is effected in the presence of a molecular cluster compound under
`conditions permitting seeding and growth of the nanoparticles.
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`The ‘557 patent is entitled “Nanoparticles” and is not in the same patent family as the prior
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`patents. The Abstract of the ‘557 patent is reproduced below:
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`Method for producing a nanoparticle comprised of core, first shell and second shell
`semiconductor materials. Effecting conversion of a core precursor composition
`comprising separate first and second precursor species to the core material and then
`depositing said first and second shells. The conversion is effected in the presence
`of a molecular cluster compound under conditions permitting seeding and growth
`of the nanoparticle core. Core/multishell nanoparticles in which at least two of the
`core, first shell and second shell materials incorporate ions from groups 12 and 15,
`14 and 16, or 11, 13 and 16 of the periodic table. Core/multishell nanoparticles in
`which the second shell material incorporates at least two different group 12 ions
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`and group 16 ions. Core/multishell nanoparticles in which at least one of the core,
`first and second semiconductor materials incorporates group 11, 13 and 16 ions and
`the other semiconductor material does not incorporate group 11, 13 and 16 ions.
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`The ‘068 patent is entitled “Quantum Dot Films Utilizing Multi-Phase Resins,” and has a
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`substantially different specification than the remaining patents. The ‘068 patent generally
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`describes a multi-phase polymer film for quantum dots, and the preparation thereof. The Abstract
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`of the ‘068 patent is reproduced below:
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`Multi-phase polymer films containing quantum dots (QDs) are described herein.
`The films have domains of primarily hydrophobic polymer and domains of
`primarily hydrophilic polymer. QDs, being generally more stable within a
`hydrophobic matrix, are dispersed primarily within the hydrophobic domains of the
`films. The hydrophilic domains tend to be effective at excluding oxygen.
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`II. LEGAL PRINCIPLES
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`A. Claim Construction
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`“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention to
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`which the patentee is entitled the right to exclude.’ ” Phillips, 415 F.3d 1303 at 1312 (en banc)
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`(quoting Innova/Pure Water Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed.
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`Cir. 2004)). The Court first examines a patent’s intrinsic evidence to define the patented
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`invention’s scope. Id. at 1313–14; Bell Atl. Network Servs., Inc. v. Covad Commc’ns Group, Inc.,
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`262 F.3d 1258, 1267 (Fed. Cir. 2001). Intrinsic evidence includes the claims themselves, the
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`specification, and the prosecution history. Phillips, 415 F.3d at 1312–13; C.R. Bard, Inc. v. U.S.
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`Surgical Corp., 388 F.3d 858, 861 (Fed. Cir. 2004). The general rule—subject to certain specific
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`exceptions discussed infra—is that each claim term is construed according to its ordinary and
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`accustomed meaning as understood by one of ordinary skill in the art at the time of the invention
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`in the context of the patent. Phillips, 415 F.3d at 1312–13; Alloc, Inc. v. Int’l Trade Comm’n, 342
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`F.3d 1361, 1368 (Fed. Cir. 2003); see also Azure Networks, LLC v. CSR PLC, 771 F.3d 1336, 1347
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`(Fed. Cir. 2014) (“There is a heavy presumption that claim terms carry their accustomed meaning
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`in the relevant community at the relevant time.”).
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`“The claim construction inquiry. . . begins and ends in all cases with the actual words of
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`the 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. Differences
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`among the claim terms can also assist in understanding a term’s meaning. Id. For example, when
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`a dependent claim adds a limitation to an independent claim, it is presumed that the independent
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`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)). “[T]he specification
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`‘is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the
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`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). In the specification, a patentee may define his own terms,
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`give a claim term a different meaning than it would otherwise possess, or disclaim or disavow
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`some claim scope. Phillips, 415 F.3d at 1316. Although the Court generally presumes terms
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`possess their ordinary meaning, this presumption can be overcome by statements of clear
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`disclaimer. See SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1343–
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`44 (Fed. Cir. 2001). This presumption does not arise when the patentee acts as his own
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`lexicographer. See Irdeto Access, Inc. v. EchoStar Satellite Corp., 383 F.3d 1295, 1301 (Fed. Cir.
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`2004).
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`“Although the specification may aid the court in interpreting the meaning of disputed claim
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`language, particular embodiments and examples appearing in the specification will not generally
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`be read into the claims.” Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir.
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`1998) (quoting Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988));
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`see also Phillips, 415 F.3d at 1323. “[I]t is improper to read limitations from a preferred
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`embodiment described in the specification—even if it is the only embodiment—into the claims
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`absent a clear indication in the intrinsic record that the patentee intended the claims to be so
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`limited.” Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 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 is useful, it is “less significant than the intrinsic record in
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`determining the legally operative meaning of claim language.” Phillips, 415 F.3d at 1317 (quoting
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`C.R. Bard, Inc., 388 F.3d at 862) (internal quotation marks omitted). Technical dictionaries and
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`treatises may help a court understand the underlying technology and the manner in which one
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`skilled in the art might use claim terms, but technical dictionaries and treatises may provide
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`definitions that are too broad or may not be indicative of how the term is used in the patent. Id. at
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`1318. Similarly, expert testimony may aid a court in understanding the underlying technology and
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`determining the particular meaning of a term in the pertinent field, but an expert’s conclusory,
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`unsupported assertions as to a term’s definition are not useful. Id. Generally, extrinsic evidence is
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`“less reliable than the patent and its prosecution history in determining how to read claim terms.”
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`Id.
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`B. 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
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`according to their plain and ordinary meaning: “1) when a patentee sets out a definition and acts
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`as his own lexicographer, or 2) when the patentee disavows the full scope of the claim term either
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`in the specification or during prosecution.” Golden Bridge Tech., Inc. v. Apple Inc., 758 F.3d 1362,
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`1365 (Fed. Cir. 2014) (quoting Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365
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`(Fed. Cir. 2012)); see also GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304, 1309
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`(Fed. Cir. 2014) (“[T]he specification and prosecution history only compel departure from the
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`plain meaning in two instances: lexicography and disavowal.”). “The standards for finding
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`lexicography or disavowal are ‘exacting.’ ” GE Lighting Solutions, 750 F.3d at 1309.
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`To act as his own lexicographer, the patentee must “clearly set forth a definition of the
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`disputed claim term,” and “clearly express an intent to define the term.” Id. (quoting Thorner, 669
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`F.3d at 1365); see also Renishaw, 158 F.3d at 1249. The patentee’s lexicography must appear
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`“with reasonable clarity, deliberateness, and precision.” Renishaw, 158 F.3d at 1249.
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`To disavow or disclaim the full scope of a claim term, the patentee’s statements in the
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`specification or prosecution history must amount to a “clear and unmistakable” surrender. Cordis
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`Corp. v. Boston Sci. Corp., 561 F.3d 1319, 1329 (Fed. Cir. 2009); see also Thorner, 669 F.3d at
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`1366 (“The patentee may demonstrate intent to deviate from the ordinary and accustomed meaning
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`of a claim term by including in the specification expressions of manifest exclusion or restriction,
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`representing a clear disavowal of claim scope.”). “Where an applicant’s statements are amenable
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`to multiple reasonable interpretations, they cannot be deemed clear and unmistakable.” 3M
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`Innovative Props. Co. v. Tredegar Corp., 725 F.3d 1315, 1326 (Fed. Cir. 2013).
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`C. 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
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`as the invention. 35 U.S.C. § 112, ¶ 2. A claim, when viewed in light of the intrinsic evidence,
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`must “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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`III. CONSTRUCTION OF AGREED TERMS
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`Before the Markman hearing, the parties have agreed to the following meanings for the
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`following terms. See, e.g., Dkt. No. 61 (Joint Claim Construction Chart.)
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`Case 2:20-cv-00038-JRG Document 84 Filed 05/11/21 Page 9 of 39 PageID #: 4054
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`TERM
`“provided on”
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`‘828 patent (claims 1, 3–5, 8–13)
`‘557 patent (all claims)
`“disposed on”
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`‘365 patent (all claims)
`“depositing … on”
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`‘557 patent (all claims)
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`AGREED CONSTRUCTION
`Plain and ordinary meaning.
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`Plain and ordinary meaning.
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`Plain and ordinary meaning.
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`Accordingly, the Court adopts the constructions agreed to by the parties as listed above.
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`IV. CONSTRUCTION OF DISPUTED TERMS
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`The parties’ positions and the Court’s analysis as to the disputed terms within the claims
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`of the Asserted Patents are presented below.
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`A. “molecular cluster compound”
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`Defendants’
`Proposed Construction
`Indefinite. If not indefinite, “clusters of
`3 or more metal atoms and their
`associated ligands of sufficiently well-
`defined chemical structure such that all
`molecules of the cluster compound
`possess the same relative molecular
`mass, where ligand means an atom or
`group bound to a central atom of a
`complex”
`[same as above]
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`Plaintiff’s
`Proposed Construction
`“clusters of three or more metal
`atoms and their associated
`ligands of sufficiently well-
`defined chemical structure such
`that all molecules of the cluster
`compound possess
`approximately the same relative
`molecular formula”
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`“clusters of 3 or more metal or
`non-metal atoms and their
`associated ligands of sufficiently
`well-defined chemical structure
`such that all molecules of the
`cluster compound possess the
`same relative molecular mass”
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`Term
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`“molecular
`cluster
`compound”
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`(’828 patent,
`‘557 patent)
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`“molecular
`cluster
`compound”
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`(’423 patent,
`‘365 patent)
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`(1) The Parties’ Positions
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`Plaintiff argues that the patents provide express definitions for these terms, and that those
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`definitions should be adopted as the construction for these terms. See, e.g., Dkt. No. 64, Plaintiff’s
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`Opening Claim Construction Brief, at 6–10. Plaintiff argues that the term is not indefinite because
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`the patentee defined the terms in the patents. Id. at 10–11. Plaintiff further argues that the use of
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`metal or non-metal does not render the claims indefinite because the scope of the claims are
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`reasonably certain to one of skill in the art. Id. at 12.
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`Defendant argues that the term is indefinite because there is no reasonable certainty around
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`the boundaries of the term. See, e.g., Dkt. No. 70, Defendant’s Responsive Claim Construction
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`Brief, at 5. In effect, Defendant argues that because lexicography is inapplicable, the term is
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`indefinite because there is no commonly understood meaning for the term. Id. at 5–8. Defendant
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`argues that there is no ordinary meaning for the term and the different patents use different
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`definitions for the same term. Id. at 5. Defendant argues that the surrounding language regarding
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`the alleged definition of the term does not support lexicography. Id. at 6. Defendant also argues
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`that the term is indefinite because a person of skill in the art would not have known which of
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`multiple, inconsistent meanings was correct. Id. at 8–12. Defendant argues that there is no plain
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`meaning as to the term because some definitions require metal atoms, others require metal bonds,
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`and others allow nonmetal atoms. Id. at 9. Defendant argues that this discrepancy in the definitions
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`is not resolved by the patents’ definitions, which are themselves contradictory. Id. at 9–10.
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`In its Reply, Plaintiff argues that the patentee did in fact provide an express definition of
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`“molecular cluster compound” within the patents. See, e.g., Dkt. No. 71, Plaintiff’s Reply Claim
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`Construction Brief, at 1–4. Plaintiff argues that the same claim term can have different meanings
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`in different claims of the same patent or a different patent if that is the patentee’s intent. Id. at 2.
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`Plaintiff argues that there is no requirement that an express definition cannot be consistent with
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`the plain and ordinary meaning. Id. at 2–3. Plaintiff argues that the use of the phrase “relates to”
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`in the patentee’s definition of the term does not preclude the phrase from being definitional. Id. at
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`3–4. Plaintiff also argues that the term “molecular cluster compound” is not indefinite because a
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`person of skill in the art would understand what it means. Id. at 4–7.
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`(2) Analysis
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`The parties dispute whether the “molecular cluster compound” term is indefinite and
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`whether the same term has different meanings in different patents. Plaintiff argues that the patent
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`specifications provide specific (and different) definitions to the terms that provide a
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`lexicographical definition. Defendant disagrees and argues that because lexicography is not
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`present, and because there is no commonly understood meaning for the term, that the term is
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`indefinite. For the reasons below, the Court rejects Defendant’s indefiniteness argument and finds
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`that a single construction across the patents-in-suit is most appropriate for this term.
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`The disputed term appears in all asserted claims of the ‘423, ‘828, ‘365, and ‘557 patents.
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`The claim language is not particularly relevant to the dispute. Instead, the parties rely primarily on
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`the specification, as well as extrinsic evidence.
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`The ‘423 patent provides a general definition of the “molecular cluster” term:
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`‘Molecular cluster’ is a term which is widely understood in the relevant
`technical field but for the sake of clarity should be understood herein to relate
`to clusters of 3 or more metal or nonmetal atoms and their associated ligands
`of sufficiently well defined chemical structure such that all molecules of the
`cluster compound possess the same relative molecular mass. Thus the molecular
`clusters are identical to one another in the same way that one H2O molecule is
`identical to another H2O molecule. The use of the molecular cluster compound
`provides a population of nanoparticles that is essentially monodisperse. By
`providing nucleation sites which are so much more well defined than the nucleation
`sites employed in previous work the nanoparticles formed using the method of the
`present invention possess a significantly more well defined final structure than
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`those obtained using previous methods. A further significant advantage of the
`method of the present invention is that it can be more easily scaled-up for use in
`industry than current methods. Methods of producing suitable molecular cluster
`compounds are known within the art, examples of which can be found at the
`Cambridge Crystallographic Data Centre (www.ccdc.ca.ac.uk).
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`‘423 patent, col. 5, ll. 3–24 (emphasis added). Of relevance to the parties’ dispute, the ‘423 patent
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`provides a definition to the term as being clusters of 3 or more “metal or nonmetal atoms.” See id.
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`The ‘365 patent is a continuation of the ‘423 patent and provides the same definition of the term.
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`See, e.g., ‘365 patent, col. 5, ll. 19–40.
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`The ‘828 patent is a continuation-in-part of the ‘423 patent and provides a different
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`definition of the term:
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`“Molecular cluster” is a term which is widely understood in the relevant
`technical field, but for the sake of clarity should be understood herein to relate
`to clusters of three or more metal atoms and their associated ligands of
`sufficiently well-defined chemical structure such that all molecules of the
`cluster compound possess approximately the same relative molecular formula.
`(When the molecules possess the same relative molecular formula, the molecular
`clusters are identical to one another in the same way that one H2O molecule is
`identical to another H2O molecule.) The molecular clusters act as nucleation sites
`and are much better defined than the nucleation sites employed in other methods.
`The use of a molecular cluster compound may provide a population of nanoparticles
`that are essentially monodisperse. A significant advantage of this method is that it
`can be more easily scaled-up to production volumes when compared to other
`methods of nanoparticle generation. Methods of producing suitable molecular
`cluster compounds are known within the art, examples of which can be found at the
`Cambridge Crystallographic Data Centre (www.ccdc.ca.ac.uk).
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`‘828 patent, col. 3, ll. 28–48 (emphasis added). Of relevance to the parties’ dispute, the ‘828 patent
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`provides a definition to the term as being clusters of 3 or more “metal atoms.” See id. The ‘557
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`patent is not a direct continuation of the ‘423 patent, and while it utilizes and claims a “molecular
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`cluster compound,” it does not provide any definition of the term.
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`As discussed above, the ‘423, ‘365, and ‘828 patents state that a “molecular cluster
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`compound” is widely understood in the relevant technical field. In regards to the parties’ specific
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`disputes as to this term, the ‘423 and ‘365 patents state that it is a cluster of 3 or more “metal or
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`nonmetal atoms” with the same relative “molecular mass,” the ‘828 patent states that it is a cluster
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`of 3 or more “metal atoms” with the same relative “molecular formula,” and the specification of
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`the ‘557 patent is silent as to any definition of the “molecular cluster compound” term. Based on
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`the different “definitions” in the patent specifications, the parties dispute whether there is a
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`commonly understood definition for the term, whether the patentee acted as a lexicographer for
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`the term, whether the term can have different meanings based on the different “definitions” within
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`the patents, and whether the term is indefinite based on the different “definitions.”
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`The patent specifications illustrate various embodiments of a molecular cluster. All the
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`embodiments depict a molecular cluster compound with three or more metal atoms. For example,
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`Figures 2–6 of the ‘423 patent illustrate various embodiments of a molecular cluster compound
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`each with three or more metal atoms. The specifications also reference that “the molecular clusters
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`are identical to one another” in the same way one H2O molecule is identical to another H2O
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`molecule. See, e.g., ‘423 patent, col. 5, ll. 9–11; ‘365 patent, col. 5, ll. 25–28; ‘828 patent, col. 3,
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`ll. 35–38, col. 6, l. 40, col. 11, ll. 28–29.
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`The parties also rely on extrinsic evidence in the form of dictionaries, treatises, and expert
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`testimony. Plaintiff’s expert opines that the specifications’ definitions for the term are consistent
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`and have little meaningful difference. Dkt. No. 64-6, ¶¶ 50–53. Plaintiff’s expert opines that “metal
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`or non-metal atoms” could include atoms that some scientists do not consider to be true metals,
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`but that can behave as metals in certain circumstances, such as metalloids. Id. at ¶ 52. Plaintiff’s
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`expert opines that the distinction between metals and non-metals is inconsequential for these
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`patents, and there is little meaningful difference between molecular formula and molecular mass.
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`Id. at ¶¶ 51–53. Defendant relies heavily on extrinsic definitions for the “molecular cluster” term.
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`Case 2:20-cv-00038-JRG Document 84 Filed 05/11/21 Page 14 of 39 PageID #: 4059
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`See Defendant’s Responsive Claim Construction Brief (Dkt. No. 70) at page 9. Most of the
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`definitions require metal atoms or metallic bonding, while others appear to allow non-metal atoms.
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`See id.; see also Dkt. No. 70-11 at 1363; Dkt. No. 70-12 at 5; Dkt. No. 70-15 at 135; Dkt. No. 70-
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`16 at 46; Dkt. No. 70-31. Defendant’s expert opines that the “molecular cluster compound” did
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`not have a plain and ordinary meaning at the time of the alleged invention, much less a known
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`meaning of reasonably certain scope. Dkt. No. 70-2, ¶¶ 50–52.
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`It is well recognized that a patentee may set out a definition of a term and act as his own
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`lexicographer. See, e.g., Phillips, 415 F.3d at 1316 (if a special definition is provided to a claim
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`term by the patentee, the inventor’s lexicography governs). On balance, the Court finds that the
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`patentee acted as a lexicographer for the “molecular cluster” term, and the definitions within the
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`specifications should govern. The Court notes that the specifications use quotation marks around
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`the word “molecular cluster”, which is a strong indicator of lexicography. See Sinorgchem C.. v.
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`ITC, 511 F.3d 1132, 1136 (Fed. Cir. 2007) (quotation marks are a strong indicator that what
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`follows is a definition). The Court also notes that the specifications state that for the purposes of
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`the patent and the sake of clarity, the term “should be understood herein to relate to …,” which is
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`an indicator of lexicography. The fact that there is or may be a common meaning to the term does
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`not change the fact that the patentee attempted to act as a lexicographer. Further, the fact that
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`“relate” is used in the definition also does not change the fact that the patentee attempted to act as
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`a lexicographer. On balance, the Court finds that the patentee acted as a lexicographer for the
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`“molecular cluster” term in the ‘423, ‘365, and ‘828 patents.
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`Despite a finding of lexicography, two primary issues relating to lexicography remain: (1)
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`what meaning shall be given to the term in the ‘557 patent, where there is no express definition in
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`that patent, and (2) whether a single construction is warranted across all patents despite slightly
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`Case 2:20-cv-00038-JRG Document 84 Filed 05/11/21 Page 15 of 39 PageID #: 4060
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`different definitions. On balance, the Court finds that a single construction for all relevant patents
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`is most appropriate. First, Defendant argues that a single construction is appropriate if
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`indefiniteness is not found. Thus, the Court’s construction is consistent with the approach taken
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`by the Defendant. Second, while there are some differences in the different patent specification
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`definitions, the Court finds that they are substantially the same and it is not clear what, if any,
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`practical differences there are between the different definitions as to the disputes between the
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`parties. For example, it is Plaintiff’s position that the differences between a construction with metal
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`atoms versus metal and non-metal atoms is a distinction without a difference. Likewise, it is
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`unclear what, if any, material difference there is between the use of “molecular formula” and
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`“molecular mass.” Third, there is no compelling reason to have different constructions between
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`the different patents, as they have substantially similar specifications and the disputed term is used
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`in the same way in the claims across the patents. Fourth, despite the ‘557 patent not providing an
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`express definition, one of skill in the art would have read the ‘557 patent in light of the other
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`specifications—and the general understanding of that term in the art—to determine its meaning.
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`Fifth, despite providing a definition in the specification, the specifications clearly state that the
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`term has a widely understood meaning in the relevant technical field, which then attempts to define
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`that understood meaning for “clarity” and the purposes of the patents. Applying that general
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`understanding on the ‘557 patent and across the other patents is consistent with the general
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`disclosures of the specifications.
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`To the extent a single construction is adopted, there are three differences in the parties’
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`constructions: (1) “metal” atoms versus “metal or non-metal” atoms, (2) “molecular formula”
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`versus “molecular mass,” and (3) the embedded “ligands” word. First, the Court finds that a
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`construction directed to “metal atoms” as opposed to “metal or non-metal atoms” is most
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`Case 2:20-cv-00038-JRG Document 84 Filed 05/11/21 Page 16 of 39 PageID #: 4061
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`appropriate for multiple reasons. All or substantially all the embodiments in the specifications
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`depict a molecular cluster compound with three or more metal atoms. The Court is not aware of a
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`single embodiment in the patents that depicts only non-metal atoms. While there is some
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`inconsistency in the definitions offered in the extrinsic evidence, on balance, the Court finds that
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`the extrinsic evidence indicates a molecular cluster contains metal atoms or metall