Ge Lighting Solutions, LLC v. Lights of America, Inc. , 663 F. App'x 938 ( 2016 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
GE LIGHTING SOLUTIONS, LLC,
Plaintiff-Appellant
v.
LIGHTS OF AMERICA, INC., LIGHTING SCIENCE
GROUP CORPORATION, FEIT ELECTRIC
COMPANY, INC., MSI, LLC, TECHNICAL
CONSUMER PRODUCTS, INC.,
Defendants-Appellees
______________________
2015-1979, 2015-1980, 2015-1981, 2015-1982, 2015-2044
______________________
Appeals from the United States District Court for the
Northern District of Ohio in Nos. 1:12-cv-03131-DAP,
1:12-cv-03132-DAP, 1:12-cv-03134-DAP, 1:12-cv-03136-
DAP, 5:12-cv-03127-JRA, Judge Dan Aaron Polster, Judge
John R. Adams.
______________________
Decided: October 27, 2016
______________________
RICHARD L. RAINEY, Covington & Burling LLP, Wash-
ington, DC, argued for plaintiff-appellant. Also repre-
sented by ROBERT JASON FOWLER, RANGANATH
SUDARSHAN.
2 GE LIGHTING SOLUTIONS, LLC v. LIGHTS OF AMERICA, INC.
GARRET A. LEACH, Kirkland & Ellis LLP, Chicago, IL,
argued for all defendants-appellees. Appellee Lighting
Science Group Corporation also represented by KOURTNEY
BALTZER, ERIC DAVID HAYES.
GARY W. SMITH, Posternak Blankstein & Lund LP,
Boston, MA, for defendant-appellee Lights of America,
Inc.
RYAN DYKAL, Shook, Hardy & Bacon, LLP, Kansas
City, MO, for defendant-appellee Feit Electric Company,
Inc. Also represented by MARK SCHAFER.
JOSEPH W. BAIN, Shutts & Bowen LLP, West Palm
Beach, FL, for defendant-appellee MSI, LLC. Also repre-
sented by DANET RODRIGUEZ FIGG.
STACIE RACHEL HARTMAN, Schiff Hardin LLP, Chica-
go, IL, for defendant-appellee Technical Consumer Prod-
ucts, Inc. Also represented by HENRY BEHNEN, New York,
NY.
______________________
Before PROST, Chief Judge, WALLACH and HUGHES,
Circuit Judges.
HUGHES, Circuit Judge.
GE Lighting Solutions sued Defendants for infringing
U.S. Patent Nos. 6,787,999 and 6,799,864—two patents
directed to dissipating heat from light emitting diode
lamps. The district court correctly found the asserted ’864
patent claims indefinite, but erroneously determined that
the asserted ’999 patent claims are indefinite. According-
ly, we affirm-in-part, reverse-in-part, and remand for
further proceedings.
GE LIGHTING SOLUTIONS, LLC v. LIGHTS OF AMERICA, INC. 3
I
This appeal results from the consolidation of several
cases arising from the United States District Court for the
Northern District of Ohio. One of those cases, GE Light-
ing Solutions, LLC v. Technical Consumer Products, Inc.,
Case No. 5:12-cv-3127 (N.D. Ohio) (GE Lighting I) was
assigned to Judge Adams, while the other cases (collec-
tively, GE Lighting II) 1 proceeded before Judge Polster.
After the GE Lighting I court construed certain dis-
puted claims, the GE Lighting II defendants moved for
summary judgment on the grounds that the terms “elon-
gated” and “to heat sink” render the asserted claims
indefinite. The GE Lighting II court agreed and thus held
that the asserted claims are indefinite. Because the GE
Lighting II indefiniteness findings were entitled to pre-
clusive effect, the GE Lighting I court entered judgment
against GE. GE appeals both final judgments here.
II
“We review a district court’s ultimate determination
that a claim is invalid as indefinite under 35 U.S.C. § 112
¶ 2 de novo, although, as with claim construction, any
factual findings by the district court based on extrinsic
evidence are reviewed for clear error.” UltimatePointer,
L.L.C. v. Nintendo Co., 816 F.3d 816, 826 (Fed. Cir. 2016)
(footnote omitted). 2 Under Nautilus, Inc. v. Biosig In-
struments, Inc., claims are indefinite when “read in light
of the specification delineating the patent, and the prose-
1 Unless otherwise mentioned, all references here
are to GE Lighting II.
2 The patents-in-suit were filed before the adoption
of the Leahy-Smith America Invents Act, Pub. L. No. 112–
29, § 3, 125 Stat. 284, 285–93 (2011), and so the prior
version of § 112 governs. See Fleming v. Escort, Inc., 774
F.3d 1371, 1374 n.1 (Fed. Cir. 2014).
4 GE LIGHTING SOLUTIONS, LLC v. LIGHTS OF AMERICA, INC.
cution history,” they “fail to inform, with reasonable
certainty, those skilled in the art about the scope of the
invention.” 134 S. Ct. 2120, 2124 (2014). “Even if a claim
term’s definition can be reduced to words, the claim is still
indefinite if a person of ordinary skill in the art cannot
translate the definition into meaningfully precise claim
scope.” Halliburton Energy Servs., Inc. v. M-I LLC, 514
F.3d 1244, 1251 (Fed. Cir. 2008).
A
GE asserted claims 1, 4–8, 10, 12, and 14–16 of the
’864 patent against Defendants. The asserted claims all
require a thermally conductive core, which draws heat
from the LEDs and dissipates it into the air. Each assert-
ed claim also requires (directly or by dependence) that the
thermally conductive core be “elongated.” J.A. 28. The
district court construed “elongated” to mean “extending in
length.” J.A. 11, 14–15. The court then found the assert-
ed claims indefinite because a person of ordinary skill in
the art could not be reasonably certain of the claim scope
in light of the term “elongated.” J.A. 22–23. We agree.
“Elongated” is undoubtedly a term of degree. Alt-
hough “terms of degree are [not] inherently indefinite,”
the patent must provide “some standard for measuring
that degree” such that the claim language “provide[s]
enough certainty to one of skill in the art when read in
the context of the invention.” Biosig Instruments, Inc. v.
Nautilus, Inc., 783 F.3d 1374, 1378 (Fed. Cir. 2015), cert.
denied, 136 S. Ct. 569 (internal quotations and citations
omitted); see also Interval Licensing LLC v. AOL, Inc., 766
F.3d 1364, 1370–71 (Fed. Cir. 2014), cert. denied, 136
S. Ct. 59 (2015). And so for the asserted claims to be
definite, the patent must provide that additional infor-
mation in the form of “objective boundaries.” Interval
Licensing, 766 F.3d at 1371.
The ’864 patent fails to do so. As GE’s expert admit-
ted, an ordinarily skilled artisan cannot, without addi-
GE LIGHTING SOLUTIONS, LLC v. LIGHTS OF AMERICA, INC. 5
tional information, differentiate an “elongated” core from
a “non-elongated” core. J.A. 2060–62. “Elongated” ap-
pears nowhere in the specification, nor, as GE admits, are
the core’s dimensions otherwise described in text or
drawings. See J.A. 5588. And in the prosecution history,
GE distinguished two prior art references disclosing heat
sinks, Reisenauer and Serizawa, as not containing an
“elongated” element. See J.A. 5894 (“There is nothing in
Serizawa’s plate shaped heat sink 153 that could be
described as ‘elongated.’”); id. (“Reisenaur [sic] discloses a
disk or plate shaped heat sink which cannot be considered
to be elongated”); J.A. 5896 (“Applicants find no aspect of
element 28 [of the Reisenauer prior art reference] which
could conceivably be called ‘elongated.’”). But the disk of
Reisenauer and the plate in Serizawa both extend in
length, which creates an unresolved ambiguity as to how
the prior art elements are not considered to be “elongat-
ed.” A person of ordinary skill thus has no objective
means to determine which cores are “elongated” and
which are not.
Although “a patentee need not define his invention
with mathematical precision,” Invitrogen Corp. v. Biocrest
Mfg., L.P., 424 F.3d 1374, 1384 (Fed. Cir. 2005) (internal
quotations and citations omitted), at best, a skilled arti-
san would know from the prosecution history only that
the elongated cores cannot be “disk or plate shaped” or
“generally planar.” J.A. 5896. Those general descriptions
hardly provide the necessary “objective boundaries” about
the length or shape of an “elongated” core. See Interval
Licensing, 766 F.3d at 1371. Accordingly, we affirm the
finding of indefiniteness for the asserted claims of the ’864
patent.
B
GE also asserted claims 8, 9, and 12 of the ’999 pa-
tent, which covers certain LED lamps. The asserted
claims cover an LED lamp that contains a heat sink with
6 GE LIGHTING SOLUTIONS, LLC v. LIGHTS OF AMERICA, INC.
an LED module on one side and an electronic module on
the other side. See ’999 patent col. 10 ll. 7–20. The heat
sink draws heat from both components, which are “in
thermal communication” with the heat sink. Id. The heat
sink then dissipates heat into the air. Id. col. 4 ll. 45–50,
col. 8 ll. 55–59. The court construed the noun “heat sink”
to carry its plain and ordinary meaning and adopted GE’s
proposed construction of “to heat sink” as “to receive and
dissipate heat from.” The district court then found that
the phrase “to heat sink” renders the asserted claims
indefinite. GE argues that the phrase “to heat sink” does
not render the asserted claims of the ’999 patent indefi-
nite. We agree.
As the district court recognized, “[t]he claims, specifi-
cation and prosecution history demonstrate[] that any
amount of heat transfer is sufficient for ‘heat sink (verb).’”
J.A. 25–26 (emphasis added). And that is true even if a
lamp’s design seeks to minimize heat transfer. J.A. 27
(“[A]s [heat sinking] is used in the ’999 Patent, an object
that is shielded from receiving heat is still ‘heat sink-
ing.’”). Thus, whether a component heat sinks another
component is an objectively defined fact: either heat is
transferred between the components and heat sink, or it
is not. Because “to heat sink” creates no “zone of uncer-
tainty,” see Nautilus, 134 S. Ct. at 2129, we conclude that
the asserted claims of the ’999 patent are not indefinite. 3
3 Because the asserted claims are not indefinite
based on the clear intrinsic evidence, we need not consider
any extrinsic evidence. See Profectus Tech. LLC v.
Huawei Techs. Co., 823 F.3d 1375, 1380 (Fed. Cir. 2016)
(“Extrinsic evidence may not be used to contradict claim
meaning that is unambiguous in light of the intrinsic
evidence.” (internal quotation marks omitted)).
GE LIGHTING SOLUTIONS, LLC v. LIGHTS OF AMERICA, INC. 7
III
Accordingly, we affirm-in-part, reverse-in-part, and
remand for proceedings consistent with this opinion.
AFFIRMED-IN-PART, REVERSED-IN-PART, AND
REMANDED
No costs.