By Eric Schweibenz
Further to our March 16, 2010 post, on March 29, 2010, ALJ Theodore R. Essex issued the public version of the Initial Determination on Violation of Section 337 and Recommended Determination on Remedy and Bond (“ID”) in Certain Optoelectronic Devices, Components Thereof, and Products Containing Same (Inv. No. 337-TA-669).

By way of background, the Complainants in this investigation are Avago Technologies Fiber IP Pte. Ltd., Avago Technologies General IP Pte. Ltd., and Avago Technologies Ltd. (collectively “Avago”).  The sole Respondent is Emcore Corporation (“Emcore”).  In the ID, ALJ Essex determined that a violation of Section 337 occurred in connection with the importation into the U.S., sale for importation, or sale within the U.S. after importation of certain optoelectronic devices, components thereof, and products containing same because of infringement of claims 1, 2, 3, and 5 of U.S. Patent No. 5,359,447 (the ‘447 patent).  However, ALJ Essex found no violation of Section 337 with respect to U.S. Patent No. 5,761,229 (the ‘229 patent) and claim 6 of the ‘447 patent.  ALJ Essex determined that the asserted claims of the ‘447 patent are valid and enforceable.   ALJ Essex further determined that a domestic industry existed with respect to the ‘447 patent, but not with respect to the ‘229 patent since the technical prong for the ‘229 patent had not been satisfied.  He also found that Emcore did not have an implied license to practice the claims of the ‘447 patent.  Regarding the ‘229 patent, ALJ Essex determined that the asserted claim was valid, but not infringed.

The Patents

The ‘447 patent relates to an optical communication system using a relatively large-area vertical-cavity surface-emitting laser (“VCSEL”) where the laser has an opening larger than about eight micrometers and is coupled to a multimode optical medium.  The laser is driven into multiple transverse mode operation.  Claims 1, 2, 5, and 6 of the ‘447 patent were asserted.

The ‘229 patent relates to particular methods and apparatuses by which the intensity of light emitted by laser-based light sources having lasers with only one light-emitting face is controlled.  The only claim at issue was claim 8.

Claim Construction

ALJ Essex construed several disputed terms from the ‘447 patent.  Emcore argued that “multimode optical medium” should be construed as any medium through which multiple modes of an optical signal can propogate, thereby extending the scope to cover the atmosphere (and the prior art).  Avago and the Commission Investigative Staff proposed more restrictive constructions.  ALJ Essex construed the term to mean “a guided wave medium (e.g., an optical fiber or a waveguide) through which multiple modes of an optical signal can propagate.”  In addition, “optically coupled” was construed as meaning “acceptance of light into the multimode optical medium in an amount sufficient for the purposes of the application."

For the ‘229 patent, Emcore argued that the preamble term “an integrated laser-based light source generating an output light beam having a controlled intensity” in claim 8 of the ‘229 patent should be limiting.  The ALJ found that the preamble did not limit the claim because claim 8 recites a complete invention and the preamble neither provides needed structure nor antecedent bases for any of the limitations in the body of the claim.

ALJ Essex construed the term "a laser having one and only one light-emitting face from which a light beam is radiated as a radiated light beam" as being limited to a laser that radiates a light beam from only one end of its cavity.  “The intensity at which the laser generates the radiated light beam with a signal-to-noise ratio above a threshold level being greater than a predetermined maximum intensity” was construed as requiring that the laser operate such that the signal-to-noise ratio of the light generated by the laser is above some threshold signal-to-noise ratio and the intensity of the light is greater than a predetermined maximum intensity.  “Predetermine maximum intensity” was construed as the targeted upper bound for the intensity of the signal.


According to the ID, Emcore products incorporate laser transmitters and receivers, and are used for optical communication when assembled with an optical medium. The products include transmitters and receivers that have varying numbers of channels, ranging from 12 channel and 4 channel assemblies to individual laser transmitters and receivers.  None of Emcore's accused products directly infringe any claims of the '447 Patent by themselves, because (as acknowledged by Avago) “Emcore does not connect the parts together.”   However, the ALJ determined that Emcore's customers or end users configure at least some of the accused products into an optical communication network that infringes certain claims of the '447 Patent.  Specifically, the ALJ found that Emcore imported or sold within the United States at least a 12-channel parallel transmitter and receiver sets and 4-channel transceiver modules, which were established as comprising accused VCSEL arrays, which infringed claims 1, 2, 3, and 5 of the ‘447 patent.  However, according to the ID, Emcore did not infringe claim 6, which is further limited to the network in claim 1 “wherein the multi-mode optical medium comprises an optical waveguide,” because there was no proof that any Emcore product was coupled to an “optical waveguide.”

For the ‘229 patent, Avago argued that certain Emcore products infringed claim 8 of the ‘229 patent.  However, ALJ Essex determined that Avago failed to prove that the accused products met the “the intensity at which the laser generates the radiated light beam with a signal-to-noise ratio above a threshold level being greater than a predetermined maximum intensity” and the “coupling means coupling such a fraction of the radiated light beam to the light sensor means that the output light beam has a signal-to-noise ratio greater than the threshold level and an intensity less than the predetermined maximum intensity” limitations, especially because Avago and its experts never actually measured the signal-to-noise ratio in the accused products.


Emcore argued that certain claims of the ‘447 patent were anticipated by two references, Banwell and Von Lehman.  The ALJ found the claims not anticipated because the references did not disclose the use of a “multimode optical medium,” and Emcore did not prove that this was inherently in the references.  Moreover, the Von Lehman reference used air as the media, not the multi-mode optical media as defined in the claim construction.  Emcore also argued that the claims of the ‘447 patent were obvious, but the ALJ found that they did not meet the clear and convincing evidence standard.  Further, the commercial success and skepticism of others regarding the invention supported the ALJ’s finding of non-obviousness.

Emcore argued that the ‘229 patent was anticipated by or obvious over certain Japanese patent publications, both of which were considered by the PTO during prosecution.  The ALJ found that these references did not disclose or otherwise suggest the limitations related to the signal-to-noise ratio.  Moreover, the commercial success regarding the invention supported the finding of non-obviousness.  The ALJ found the asserted claim of the ‘229 patent not anticipated and not obvious.


Emcore argued that it had an implied license to practice the asserted claims of the ‘447 patent as a result of the conduct between Emcore and Avago.  Alternatively, they argued that Avago must grant them a license on reasonable and non-discriminatory terms as stated in multi-source agreements that Avago and Emcore participated in.  The ALJ rejected all of Emcore’s arguments regarding licensing.


Emcore also argued that the ‘447 patent was unenforceable because of inequitable conduct during its prosecution.  Specifically, they argued that certain statements made in response to rejections were misleading.  The ALJ found that such statements were intended to be advocacy, and were not material misrepresentations.  The ALJ also found no evidence of intent to deceive, and thus rejected Emcore’s unenforceability argument.

Domestic Industry

The ALJ found that certain Avago products are used in networks that meet the requirements of claim 1 of the ‘447 patent, thus meeting the technical prong of the domestic industry requirement.  He also found that Avago met the economic prong of the domestic industry requirement.  However, because Avago did not prove that Avago products meet the signal-to-noise ratio elements of claim 8 of the ‘229 patent, the ALJ found that Avago did not meet the technical prong of the domestic industry requirement for the ‘229 patent.

Remedy and Bond

With respect to remedy, ALJ Essex recommended that if the Commission finds a violation of Section 337, it should issue a limited exclusion order directed to the accused products that infringe claims 1, 2, 3, and 5 of the ‘447 patent.  He also recommended that the Commission issue a cease and desist order directed to Emcore, and recommended a bond set at 3% as a reasonable royalty rate.