       NOTE: This disposition is nonprecedential.

  United States Court of Appeals
      for the Federal Circuit
               __________________________

           ILIGHT TECHNOLOGIES, INC.,
                 Plaintiff-Appellee,
                            v.
FALLON LUMINOUS PRODUCTS CORPORATION,
            Defendant-Appellant.
               __________________________

                       2009-1342
               __________________________

    Appeal from the United States District Court for the
Middle District of Tennessee in
case no. 2:06-CV-0025, Judge William J. Haynes, Jr.
               __________________________

  Before MAYER, SCHALL, and GAJARSA, Circuit Judges.
SCHALL, Circuit Judge.
                         ORDER
    iLight Technologies, Inc. (“iLight”) petitions for re-
hearing of our April 20, 2010 decision in this case. iLight
Technologies, Inc. v. Fallon Luminous Prods. Corp., No.
2009-1342, 2010 WL 1558939 (Fed. Cir. Apr. 20, 2010).
That decision grew out of iLight’s suit against Fallon
Luminous Products Corporation (“Fallon”) in the United
States District Court for the Middle District of Tennessee
for infringement of claims 8 and 25 of U.S. Patent No.
ILIGHT TECH   v. FALLON LUMINOUS                           2


6,592,238 (“the '238 patent”); claims 1 and 8 of U.S.
Patent No. 6,593,262 (“the '262 patent”); and claims 1, 5,
and 8 of U.S. Patent No. 7,188,970 (“the '970 patent”).
Following a jury trial, all asserted claims were found both
not invalid and willfully infringed. After denying Fallon’s
motion for a new trial and its renewed motion for judg-
ment as a matter of law, the district court entered final
judgment in favor of iLight, awarding iLight $2 million in
compensatory damages and $1 million in increased dam-
ages for willfulness. In addition, the court permanently
enjoined Fallon from infringing the three patents. Fi-
nally, the court awarded iLight $1,760,391.54 in attorney
fees and costs.
    In our April 20, decision, we vacated the judgment of
the district court and the permanent injunction entered
against Fallon and remanded the case to the district court
for further proceedings consistent with our opinion. We
did so after concluding that the district court had erred in
its construction of the claim limitations “rod” and “rod-
like.” The term “rod” appears in claims 1 and 8 of the '262
patent and claim 5 of the '970 patent. The term “rod-like”
appears in claim 8 of the '238 patent and claims 1 and 8 of
the '970 patent. Neither term appears in claim 25 of the
'238 patent. “Rod” and “rod-like” are used with reference
to the claimed invention’s waveguide, designated 12 in
Figure 1 of the specification in all three patents.
    iLight seeks rehearing on the ground that our holding
that the district court erred in its claim construction
relates only to claim 8 of the '238 patent, claims 1 and 8 of
the '262 patent, and claims 1, 5, and 8 of the '970 patent.
That is so, iLight argues, because it is only those claims
that contain either the limitation “rod” or “rod-like.”
iLight contends that, because claim 25 of the '238 patent
includes neither the limitation “rod” nor “rod-like,” the
judgment of infringement of that claim should remain
3                           ILIGHT TECH   v. FALLON LUMINOUS


undisturbed. Accordingly, iLight asks us to grant rehear-
ing for the purpose of correcting our April 20 decision to
state (i) that the judgment of willful infringement of claim
25 is affirmed; (ii) that Fallon is liable for $2 million in
compensatory damages, as well as enhanced damages,
attorney fees, and costs; and (iii) that the permanent
injunction entered by the district court remains in place
with respect to claim 25 of the '238 patent.
    Having considered iLight’s petition for rehearing,
Fallon’s response thereto, and iLight’s reply, we grant
iLight’s petition for the limited purpose of clarifying our
April 20 decision. We do so in order to make it clear that
our April 20 decision covers claim 25 of the '238 patent, as
well as the other claims at issue in the case.
     On appeal, Fallon argued that the district court erred
in its claim construction because the construction failed to
reflect the patent applicants’ “unambiguous disavowal
[during prosecution] of hollow, thin walled diffusers and
[the] express limitation [of the invention] to solid rods to
distinguish prior art.” See Appellants’ Br. 33. Fallon
contended that, under a correct construction of “rod” and
“rod-like,” its devices do not infringe. Id. at 35.
    In our April 20 decision, we held that, during prosecu-
tion, in order to avoid certain prior art, the applicants
unequivocally disclaimed non-essentially solid structure.
iLight Technologies, Inc. v. Fallon Luminous Prods. Corp.,
2010 WL 1558939, at *4 (Fed. Cir. Apr. 20, 2010). We
based our holding on the following prosecution statement
by the applicants: “[T]o achieve the desired light intensity
and uniformity, the rod must preferentially direct light
along its length while also urging the light out of a lateral
surface. This requires an essentially solid rod with opti-
cal waveguide and light scattering characteristics.” Id.
We stated that “[t]he jury should have been instructed
ILIGHT TECH   v. FALLON LUMINOUS                              4


that the claimed invention did not included ‘hollow’ struc-
ture for the waveguide and that, in order to infringe,
structure in the accused Fallon products corresponding to
the waveguide could not be ‘hollow.’” Id. at *5.
    The analysis in our April 20 decision covers claim 25
of the '238 patent. After making the statement to the
Examiner which we have quoted above, the applicants
concluded as follows: “Therefore, for the reasons stated
above, Applicants respectfully submit that none of the
claims of the present application, as amended, are antici-
pated or obvious . . . .” Significantly, among “the claims of
the present application” was claim 42, which issued as
claim 25 of the '238 patent. Applicants’ disclaimer of
hollow structures thus clearly extended to what is now
claim 25. Moreover, beyond that, claim 25 describes “a
light transmitting member of a predetermined length
having a substantially curved front surface and a light
receiving lateral surface . . . .” '238 patent, col. 11, ll. 55-
57. At the same time, claim 8 of the '238 patent describes
“a substantially rod-like member having a predetermined
length with a lateral light receiving surface and a lateral
curved light emitting surface having a predetermined
circumferential width . . . . ”       Id., col. 10, ll. 44-47.
Thus, although claim 25 does not contain the term “rod”
or “rod-like,” it covers the same structure as claim 8,
which does contain one of those terms.
    In sum, we have no difficulty concluding that the ap-
plicants’ disavowal of hollow structure was directed to the
invention as a whole. See, e.g., Ekchian v. Home Depot,
Inc., 104 F.3d 1299, 1304 (Fed. Cir. 1997) (“by distin-
guishing the claimed invention over the prior art, an
applicant is indicating what the claims do not cover”);
Ormco Corp. v. Align Technology, Inc., 498 F.3d 1307,
1315-16 (Fed. Cir. 2007) (a disavowal of scope as to the
general nature of an invention limits all claims where the
5                           ILIGHT TECH   v. FALLON LUMINOUS


statements made in prosecution history are not associated
with particular claim language); Saunders Group, Inc. v.
Comfortrac, Inc., 492 F.3d 1326, 1333 (Fed. Cir. 2007)
(only disclaimers that distinguish the prior art by focus-
ing on a particular claim limitation are not directed to the
invention as a whole). Here, the statements made during
prosecution clearly indicate that none of the claims should
be read so broadly as to encompass the distinguished
prior art hollow waveguide structure. Therefore, the
disavowal of claim scope extends to claim 25, as well as to
the other claims at issue. We therefore reject iLight’s
request that we correct our April 20 decision to state that
the judgment of infringement of claim 25 of the '238
patent is affirmed.
    ACCORDINGLY, IT IS ORDERED THAT:
       1. iLight’s petition for rehearing is
       granted for the limited purpose of clarify-
       ing our April 20 decision, as set forth
       above. In all other respects the petition is
       denied.
       2. Except to the extent clarified by this
       Order, our April 20 decision is undis-
       turbed.
       3. The judgment of infringement, the
       award of damages, and the award of at-
       torney fees and costs in favor of iLight are
       vacated. The permanent injunction en-
       tered against Fallon also is vacated. The
       case is remanded to the district court for
       further proceedings consistent with our
       April 20 decision and this Order. That
       means those proceedings will be based
       upon (1) the revised construction of the
       terms “rod” and “rod-like” described in our
ILIGHT TECH   v. FALLON LUMINOUS                         6


       April 20 decision; (2) the previous claim
       construction of the district court insofar as
       it was affirmed in our April 20 decision;
       and (3) our ruling that a hollow waveguide
       does not, as a matter of law, infringe any
       of the asserted claims, including claim 25
       of the '238 patent.

                                   FOR THE COURT


   June 4, 2010                    /s/ Alvin A. Schall
 ——————————                        ——————————
      Date                         Alvin A. Schall
                                   Circuit Judge
