Optolum, Inc. v. Cree, Inc.

• Decision Date: 22 August 2018
• Docket Number: 1:17CV687
• Citation: 336 F.Supp.3d 571
• Parties: OPTOLUM, INC., Plaintiff, v. CREE, INC., Defendant.
• Court: U.S. District Court — Middle District of North Carolina

336 F.Supp.3d 571

OPTOLUM, INC., Plaintiff,

v.CREE, INC., Defendant.

1:17CV687

United States District Court, M.D. North Carolina.

Signed August 22, 2018

Hayden J. Silver, III, Womble Carlyle Sandridge & Rice, PLLC, Raleigh, NC, Jacob S. Wharton, Womble Bond Diskinson (US) LLP, Winston-Salem, NC, Keith Toms, Kia L. Freeman, Leah R. McCoy, Mead Misic, Robert A. Brooks, McCarter & English LLP, Boston, MA, for Plaintiff.

Lynne A. Borchers, Peter D. Siddoway, Sage Patent Group, Raleigh, NC, Blaney Harper, Jones Day, Washington, DC, for Defendant.

CLAIM CONSTRUCTION MEMORANDUM OPINION AND ORDER

WILLIAM L. OSTEEN, JR., United States District judge

This matter is before the court for claim construction of terms in U.S. Patents Nos. 6,831,303 ("the '303 Patent") and 7,242,028 ("the '028 Patent").^{1 ,2} The parties, Plaintiff OptoLum, Inc. ("Plaintiff") and Defendant Cree, Inc. ("Defendant") agree with respect to construction of several claim terms and the court adopts those agreed-upon constructions. (Joint Claim Construction Statement (Doc. 106) at 1-2.) The parties disagree, however, as to construction of eight terms in the '303 and '028 Patents and submitted proposed constructions of those terms. (Id. at 2-3.) Both parties submitted claim construction briefs, (Doc. 115 (Defendant); Doc. 118 (Plaintiff) ), and responsive briefs, (Doc. 127 (Defendant); Doc. 128 (Plaintiff) ). The court held a claim construction hearing on January 16, 2018, at which time the court took this matter under advisement. On May 29, 2018, this court requested supplemental briefing, (Doc. 139), which the parties thereafter filed, (Doc. 140 (Plaintiff); Doc. 141 (Defendant) ). On June 19, 2018, this court requested responses to the supplemental briefing, (Text Order 06/19/2018), which the parties thereafter filed, (Doc. 144 (Defendant); Doc. 146 (Plaintiff) ).

I. LEGAL STANDARD

In Markman v. Westview Instruments, Inc., 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996), the Supreme Court clarified which issues in a patent trial are properly reserved for the jury, and which are questions of law to be determined by the court. Specifically, the Court held that interpretation of language in patent claims "is an issue for the judge, not the jury[.]" Id. at 391, 116 S.Ct. 1384. The Federal Circuit has provided further guidance on how to interpret patent claims, stating that, in general, courts are to give the words of a claim "their ordinary and customary meaning" as understood by "a person of ordinary skill in the art in question at the time of the invention[.]" Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc) (citations omitted).

In construing claim terms, courts are directed to consult several specific types of evidence to discern what a person of ordinary skill in the art would understand the term to mean.

Because the meaning of a claim term as understood by persons of skill in the art is often not immediately apparent, and because patentees frequently use terms idiosyncratically, the court looks to "those sources available to the public that show what a person of skill in the art would have understood disputed claim language to mean." Those sources include "the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art."

Id. at 1314 (citations omitted).

First, "the claims themselves provide substantial guidance as to the meaning of particular claim terms." Id. (citation omitted). "To begin with, the context in which a term is used in the asserted claim can be highly instructive." Id. Federal Circuit case law "provide[s] numerous ... examples in which the use of a term within the claim provides a firm basis for construing the term." Id. (citations omitted).

Other claims of the patent in question, both asserted and unasserted, can also be valuable sources of enlightenment as to the meaning of a claim term. Because claim terms are normally used consistently throughout the patent, the usage of a term in one claim can often illuminate the meaning of the same term in other claims. Differences among claims can also be a useful guide in understanding the meaning of particular claim terms. For example, the presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim.

Id. at 1314-15 (citations omitted). "The words of a claim are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art when read in the context of the specification and prosecution history." Thorner v. Sony Comput. Entm't Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (citation omitted).

The second type of evidence the court should consider is the specification, which "contains a written description of the invention that must enable one of ordinary skill in the art to make and use the invention." See Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996) ; see also Phillips, 415 F.3d at 1315. "Claims must be read in view of the specification, of which they are a part." Markman, 52 F.3d at 979 (citations omitted). The claims define the invention, but "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 (citation omitted). "For claim construction purposes, the description may act as a sort of dictionary, which explains the invention and may define terms used in the claims." Markman, 52 F.3d at 979 (citation omitted). "[A] patentee is free to be his own lexicographer[, but] ... any special definition given to a word must be clearly defined in the specification." Id. at 980 (citations omitted). "[C]laims are not to be interpreted by adding limitations appearing only in the specification.... [P]articular embodiments appearing in a specification will not be read into the claims when the claim language is broader than such embodiments." Electro Med. Sys., S.A. v. Cooper Life Scis., Inc., 34 F.3d 1048, 1054 (Fed. Cir. 1994) (citations omitted). A limitation from the specification should only be read into the claims when the specification requires that limitation. See id.

The third type of evidence that a court should consider is the patent's prosecution history. See Phillips, 415 F.3d at 1317 ; see also Markman, 52 F.3d at 980 ; Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). "This ‘undisputed public record’ of proceedings in the Patent and Trademark Office is of primary significance in understanding the claims." Markman, 52 F.3d at 980 (citation omitted). "The prosecution history limits the interpretation of claim terms so as to exclude any interpretation that was disclaimed during prosecution. Claims may not be construed one way in order to obtain their allowance and in a different way against accused infringers." Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1576 (Fed. Cir. 1995) (citations omitted).

There are two relevant exceptions to the general rule that claim terms "are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art[.]" Thorner, 669 F.3d at 1365 (citation omitted).

First, the claim term will not receive its ordinary meaning if the patentee acted as his own lexicographer and clearly set forth a definition of the disputed claim term in either the specification or prosecution history. Second, a claim term will not carry its ordinary meaning if the intrinsic evidence shows that the patentee distinguished that term from prior art on the basis of a particular embodiment, expressly disclaimed subject matter, or described a particular embodiment as important to the invention.

CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366-67 (Fed. Cir. 2002) (citations omitted); see also Thorner, 669 F.3d at 1365.

The redefinition of a claim term must be clear "so as to put one reasonably skilled in the art on notice that the patentee intended to so redefine the claim term." Bell Atl. Network Servs., Inc. v. Covad Commc'ns Grp., Inc., 262 F.3d 1258, 1268 (Fed. Cir. 2001) (citations omitted). However, redefinition need not be explicit. Id."[T]he specification may define claim terms ‘by implication’ such that the meaning may be ‘found in or ascertained by a reading of the patent documents.’ " Id. (citation omitted); see also Trs. of Columbia Univ. v. Symantec Corp., 811 F.3d 1359, 1364 (Fed. Cir. 2016).

"The party seeking to invoke prosecution history disclaimer bears the burden of proving the existence of a ‘clear and unmistakable’ disclaimer that would have been evident to one skilled in the art." Mass. Inst. of Tech. v. Shire Pharm., Inc., 839 F.3d 1111, 1119 (Fed. Cir. 2016) (citation omitted); see also Omega Eng'g, Inc., v. Raytek Corp., 334 F.3d 1314, 1324 (Fed. Cir. 2003) (stating that a disclaimer occurs where the "patentee has unequivocally disavowed a certain meaning to obtain his patent"). Said disavowal must be clear and may not be "too vague or ambiguous[.]" Omega Eng'g, 334 F.3d at 1325 (citation omitted).

Evidence from sources other than the claims, the specification, and the prosecution history is extrinsic and generally should be relied upon only when the intrinsic evidence fails to resolve any ambiguity in a disputed term. See Vitronics, 90 F.3d at 1583 ; see also Phillips, 415 F.3d at 1318-19. Extrinsic evidence includes "expert and inventor testimony, dictionaries, and learned treatises." Markman, 52 F.3d at 980. A court may use extrinsic evidence to aid its understanding of a patent, but "not for the purpose of varying or contradicting the terms of the claims." Id. at 981 (citations omitted). Accordingly, the Federal Circuit has...