  United States Court of Appeals
      for the Federal Circuit
                 ______________________

          GE LIGHTING SOLUTIONS, LLC,
                Plaintiff-Appellant,

                            v.

                   AGILIGHT, INC.,
                   Defendant-Appellee.
                 ______________________

                       2013-1267
                 ______________________

   Appeal from the United States District Court for the
Northern District of Ohio in No. 12-CV-0354, Judge
James S. Gwin.
                ______________________

                  Decided: May 1, 2014
                 ______________________

   RICHARD L. RAINEY, Executive Counsel, IP Litigation,
General Electric Company, of Fairfield, Connecticut,
argued for plaintiff-appellant. With him on the brief were
ROBERT J. MCAUGHAN, JR. and JEFFREY A. ANDREWS,
Sutton McAughan Deaver PLLC, of Houston, Texas.

    JONATHAN D. PAUERSTEIN, Rosenthal Pauerstein San-
doloski Agather LLP, of San Antonio, Texas, argued for
defendant-appellee. With him on the brief were HARRY D.
CORNETT, JR. and BENJAMIN C. SASSÉ, Tucker Ellis LLP,
of Cleveland, Ohio.
                 ______________________
2                GE LIGHTING SOLUTIONS, LLC   v. AGILIGHT, INC.



    Before RADER, Chief Judge, MOORE and REYNA, Circuit
                          Judges.
     Opinion for the court filed by Circuit Judge MOORE.
Opinion concurring in part and dissenting in part filed by
                 Circuit Judge REYNA.
MOORE, Circuit Judge.
    GE Lighting Solutions, LLC (GE) appeals from the
district court’s grant of summary judgment that AgiLight,
Inc.’s (AgiLight) accused products and processes do not
infringe asserted claims of GE’s U.S. Patent Nos.
7,160,140, 7,520,771, 7,832,896, and 7,633,055.       We
reverse the grant of summary judgment with regard to the
’140, ’771 and ’896 patents and remand. We affirm the
grant of summary judgment with regard to the ’055
patent.
                       BACKGROUND
    GE sued AgiLight, alleging infringement of various
claims of the asserted patents. After claim construction,
the parties stipulated to noninfringement of the ’140 and
’771 patents on the grounds that AgiLight’s products do
not include an “IDC connector” as construed by the court.
The district court entered partial summary judgment
consistent with the parties’ stipulation. GE Lighting
Solutions, LLC. v. AgiLight, Inc., C.A. No. 12-cv-00354-JG
(N.D. Ohio Jan. 8, 2013), ECF No. 38. The district court
also granted AgiLight’s motion for summary judgment of
noninfringement of the ’896 and ’055 patents. GE Light-
ing Solutions, LLC. v. AgiLight, Inc., C.A. No. 12-cv-
00354-JG (N.D. Ohio Mar. 18, 2013), ECF No. 43 (Sum-
mary Judgment Order). GE appeals. We have jurisdic-
tion under 28 U.S.C. § 1295(a)(1).
GE LIGHTING SOLUTIONS, LLC   v. AGILIGHT, INC.             3



                        DISCUSSION
    We review claim construction de novo. Lighting Bal-
last Control LLC v. Philips Elecs. N. Am. Corp., 744 F.3d
1272, 1276–77 (Fed. Cir. 2014) (en banc). We review the
grant of summary judgment under the law of the relevant
regional circuit. The Sixth Circuit reviews grants of
summary judgment de novo. Moore v. Holbrook, 2 F.3d
697, 698 (6th Cir. 1993). Summary judgment is appropri-
ate when there is no genuine issue of material fact and
the moving party is entitled to judgment as a matter of
law. Id.
                 I. ’140 and ’771 Patents
     The ’140 and ’771 patents 1 are directed to light-
emitting diode (LED) string lights that include an LED,
an insulated electrical conductor (i.e., wire), and an insu-
lation displacement connector (IDC connector).           ’140
patent, Abstract. Power must be provided from the
insulated electrical conductor to the LEDs. To accomplish
this, the patents disclose an IDC connector with terminals
(60, 66, 68) that are electrically connected to the LEDs
and configured to displace a portion of the insulation
surrounding the electrical conductor. Id. col. 4 ll. 5–53,
Fig. 6 (reproduced in part below). For example, as a wire
is received in channel 74, terminal 68 displaces (i.e., cuts)
insulation surrounding the wire to create an electrical
connection between the wire and the terminal (and thus
the LED). Id.




    1   The ’771 patent is a continuation-in-part of the
’140 patent.
GE LIGHTING SOLUTIONS, LLC   v. AGILIGHT, INC.           5



range of devices,” but found that the ’140 and ’771 patents
were limited to a “more specialized IDC connector.” GE
Lighting Solutions, LLC. v. AgiLight, Inc., C.A. No. 12-cv-
00354-JG, slip op. at 11 (N.D. Ohio Dec. 13, 2012), ECF
No. 32 (Claim Construction Order). The court relied on
the embodiment disclosed in Figure 6 and limitations of
several dependent claims to construe IDC connector as
requiring (1) four electrical terminals; (2) a two-part
housing that snaps together to enclose three insulated
conductors; (3) the snapping together allows the terminals
to cut or pierce through the conductor’s insulation while
preventing the conductor from moving out of the housing;
and (4) a conductive connection between the terminal and
the insulated conductor. Id. at 11–14. Based on this
construction, the parties stipulated to noninfringement.
    We hold that the district court incorrectly construed
“IDC connector.” There is no dispute that the plain
meaning of IDC connector is “a connector that displaces
insulation surrounding an insulated conductor to make
electrical contact with the conductor.” Appellant’s Br. at
34–35; see also Reply Br. at 11–12. Nor is there any
dispute that IDC connector is a commonly used term that
connotes a range of known devices.
    Nothing in the intrinsic record requires a departure
from this plain and ordinary meaning. AgiLight is cer-
tainly correct that claim terms must be construed in light
of the specification and prosecution history, and cannot be
considered in isolation. See Phillips v. AWH Corp., 415
F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). However, the
specification and prosecution history only compel depar-
ture from the plain meaning in two instances: lexicogra-
phy and disavowal. Thorner v. Sony Computer Entm’t
Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). The
standards for finding lexicography and disavowal are
exacting. To act as its own lexicographer, a patentee
must “clearly set forth a definition of the disputed claim
6               GE LIGHTING SOLUTIONS, LLC   v. AGILIGHT, INC.



term,” and “clearly express an intent to define the term.”
Id. Similarly, disavowal requires that “the specification
[or prosecution history] make[] clear that the invention
does not include a particular feature.” SciMed Life Sys.
Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337,
1341 (Fed. Cir. 2001).
     There is no lexicography or disavowal here. The spec-
ifications and their prosecution histories do not define
IDC connector or include any indication that the inven-
tors intended to act as their own lexicographers. Like-
wise, while the specifications only disclose a single
embodiment of an IDC connector in Figure 6, they do not
disavow or disclaim the plain meaning of IDC connector
or otherwise limit it to that embodiment. A patent that
discloses only one embodiment is not necessarily limited
to that embodiment. Saunders Grp., Inc. v. Comfortrac,
Inc., 492 F.3d 1326, 1332 (Fed. Cir. 2007). “[I]t is improp-
er to read limitations from a preferred embodiment de-
scribed in the specification—even if it is the only
embodiment—into the claims absent a clear indication in
the intrinsic record that the patentee intended the claims
to be so limited.” Liebel-Flarsheim Co. v. Medrad, Inc.,
358 F.3d 898, 913 (Fed. Cir. 2004).
    There are certainly cases where we have found disa-
vowal or disclaimer based on clear and unmistakable
statements by the patentee that limit the claims, such as
“the present invention includes . . .” or “the present inven-
tion is . . . ” or “all embodiments of the present invention
are . . . .” See, e.g., Regents of Univ. of Minn. v. AGA Med.
Corp., 717 F.3d 929, 936 (Fed. Cir. 2013); Honeywell Int’l,
Inc. v. ITT Indus., Inc., 452 F.3d 1312, 1316–19 (Fed. Cir.
2006); SciMed Life Sys., Inc., 242 F.3d at 1343–44. We
have found disclaimer when the specification indicated
that for “successful manufacture” a particular step was
“require[d].” Andersen Corp. v. Fiber Composites, LLC,
474 F.3d 1361, 1367 (Fed. Cir. 2007). We have found
GE LIGHTING SOLUTIONS, LLC   v. AGILIGHT, INC.             7



disclaimer when the specification indicated that the
invention operated by “pushing (as opposed to pulling)
forces,” and then characterized the “pushing forces” as “an
important feature of the present invention.” SafeTCare
Mfg., Inc. v. Tele-Made, Inc., 497 F.3d 1262, 1269–70
(Fed. Cir. 2007). We also have found disclaimer when the
patent repeatedly disparaged an embodiment as “anti-
quated,” having “inherent inadequacies,” and then de-
tailed the “deficiencies [that] make it difficult” to use.
Chicago Bd. Options Exch., Inc. v. Int’l Sec. Exch., LLC,
677 F.3d 1361, 1372 (Fed. Cir. 2012). Likewise, we have
used disclaimer to limit a claim element to a feature of
the preferred embodiment when the specification de-
scribed that feature as a “very important feature . . . in an
aspect of the present invention,” and disparaged alterna-
tives to that feature. Inpro II Licensing, S.A.R.L. v. T-
Mobile USA Inc., 450 F.3d 1350, 1354–55 (Fed. Cir. 2008).
    Such circumstances are not present in this case. The
specifications consistently refer to the IDC connector of
Figure 6 merely as a “depicted embodiment.” See, e.g.,
’140 patent col. 4 ll. 5–7, 16–17. They do not describe the
depicted IDC connector—or any of the various limitations
set forth by the district court—as the present invention,
as essential, or as important. Nor do they disparage other
IDC connectors. This is simply not a case where the
patentee has disavowed the plain meaning of the term
IDC connector.
    The district court also erred by importing limitations
from the dependent claims of the ’140 patent into the
independent claims. See Claim Construction Order at 11–
13. For example, dependent claim 11 requires the IDC
connector to include three wires and dependent claim 12
requires the IDC connector to include four terminals—
both features included in the district court’s construction.
The doctrine of claim differentiation, however, creates a
presumption that these dependent claim limitations are
8               GE LIGHTING SOLUTIONS, LLC   v. AGILIGHT, INC.



not included in the independent claim. Liebel-Flarsheim,
358 F.3d at 909. Of course, claim differentiation is not a
hard and fast rule, and the presumption can be overcome
by a contrary construction required by the specification or
prosecution history, such as via a disclaimer. Seachange
Int’l, Inc. v. C-COR, Inc., 413 F.3d 1361, 1369 (Fed. Cir.
2005). In this case, however, nothing in the specification
or prosecution history rebuts the presumption of claim
differentiation. We thus hold that the district court erred
by incorporating the dependent claim limitations into the
construction of IDC connector.
    An “IDC connector” in the ’140 and ’771 patents is “a
connector that displaces insulation surrounding an insu-
lated conductor to make electrical contact with the con-
ductor.” It was error to import the structural limitations
of the preferred embodiment and the structural limita-
tions of the dependent claims into the term IDC connect-
or. We reverse the district court’s grant of summary
judgment of noninfringement of the ’140 and ’771 patents,
and remand for further proceedings based on this con-
struction.
                      II. ’896 Patent
     The ’896 patent discloses an optical element that
houses an LED and interacts with the light emitted
therefrom to increase its viewing angle. ’896 patent col. 6
ll. 25–43, Fig. 7. All of the asserted claims recite a light
engine with an “optical element having a substantially
ellipsoidal inner profile and generally spherical outer
profile.” On appeal, GE challenges the district court’s
determination on summary judgment that the accused
AgiLight structure lacks a substantially ellipsoidal inner
profile.
GE LIGHTING SOLUTIONS, LLC   v. AGILIGHT, INC.            9



        A. “substantially ellipsoidal inner profile”
     The parties stipulated that “substantially ellipsoidal
inner profile” should be construed as “an inner three-
dimensional surface where the sum of the distances from
two focal points and the points on the inner surface is
substantially constant.” The dispute over this term
pertains to an issue not addressed by the stipulation:
whether the entire inner profile must be substantially
ellipsoidal or whether the claims can be met if a portion of
the inner profile is substantially ellipsoidal. This is not
an uncommon occurrence—parties in patent cases fre-
quently stipulate to a construction or the court construes
a term, only to have their dispute evolve to a point where
they realize that a further construction is necessary.
    The district court held that “the entirety of the
[AgiLight] lens” must be substantially ellipsoidal. Sum-
mary Judgment Order at 11–13 (emphasis added). The
district court found that a portion of the AgiLight lens
was “arguably” ellipsoidal, but that the AgiLight lens also
included non-ellipsoidal, conical portions. Id. at 11.
Thus, the court granted summary judgment of nonin-
fringement. Id. at 13.
     This is a close case: whether the entire inner profile
must be substantially ellipsoidal. Neither the claim
language, “the optical element having a . . . substantially
ellipsoidal inner profile,” nor the stipulated construction,
“an inner three-dimensional surface . . .” directly address-
es this issue. In this case, were we to adopt AgiLight’s
proposed construction, that the entire inner profile must
be substantially ellipsoidal, we would exclude the specifi-
cation’s only disclosed embodiment. Figure 7, reproduced
in part below, depicts a side view elevation of the refrac-
tive dome 140. It includes inner profile 152 and outer
profile 148.
10               GE LIGHTING SOLUTIONS, LLC   v. AGILIGHT, INC.




    Explaining this figure, the specification states that
this “dome 140 has a spherical outer profile, or outer
surface, 148 and an ellipsoidal inner profile, or inner
surface 152.” ’896 patent col. 6 ll. 33–36 (emphasis add-
ed). According to the patent, the inner profile 152 of
Figure 7 is ellipsoidal. It is undisputed that only a por-
tion of the inner profile 152 (the part above the line at
152) is substantially ellipsoidal. The bottom half of that
inner profile (the portion below the line at 152) is not
arguably substantially ellipsoidal. Yet the specification
expressly refers to this inner profile as ellipsoidal. And
this is the only reference to the ellipsoidal inner profile in
the specification.
    We normally do not construe claims in a manner that
would exclude the preferred embodiment, especially
where it is the only disclosed embodiment. See MBO
Labs., Inc. v. Becton, Dickinson & Co., 474 F.3d 1323,
1333 (Fed. Cir. 2007). In particular, “where claims can
reasonably [be] interpreted to include a specific embodi-
ment, it is incorrect to construe the claims to exclude that
embodiment, absent probative evidence on the contrary.”
Oatey Co. v. IPS Corp., 514 F.3d 1271, 1277 (Fed. Cir.
2008). No such evidence exists in this case that would
require us to construe “substantially ellipsoidal inner
profile” in a manner that would exclude the Figure 7
embodiment. There are no statements during prosecution
GE LIGHTING SOLUTIONS, LLC   v. AGILIGHT, INC.            11



or in the specification that indicate the patentee’s intent
to limit his claim to an entire inner profile that is sub-
stantially ellipsoidal. And the specification makes clear
that the patentee considered Figure 7 to have an “ellip-
soidal inner profile.” We conclude that district court erred
when it required the entire inner profile to be substantial-
ly ellipsoidal. The “substantially ellipsoidal inner profile”
limitation can be met if a portion of the inner profile is
substantially ellipsoidal determined in accordance with
the stipulation.
     Given this construction, there is a genuine factual
dispute as to whether the accused structure includes a
“substantially ellipsoidal inner profile.” The district court
recognized that a portion of the inner profile of AgiLight’s
structure is “arguably” ellipsoidal. Summary Judgment
Order at 11. The depictions of the accused product, over
which GE’s attorney imposed an image that AgiLight
agrees meets the construction of “substantially ellipsoidal
inner profile,” reflect a genuine factual dispute as to
whether the AgiLight structure includes a substantially
ellipsoidal inner profile. See J.A. 865, 867 (reproduced
below).
12              GE LIGHTING SOLUTIONS, LLC   v. AGILIGHT, INC.




    We agree with AgiLight that attorney argument,
alone, may not create a material question of fact regard-
ing technical evidence. Here, however, it was AgiLight’s
own expert who provided the cross-sectional images of the
AgiLight devices. Those images are evidence. GE’s
attorney merely placed an image of an undisputedly
substantially ellipsoidal inner profile over AgiLight’s
cross-sectional images.    These cross-sectional images
point to a genuine dispute as to whether AgiLight’s ac-
cused devices include a substantially ellipsoidal inner
profile. We thus reverse the district court’s grant of
summary judgment with regard to the ’896 patent and
remand.
          B. “generally spherical outer profile”
    As an alternative basis for affirming summary judg-
ment of noninfringement of the ’896 patent, AgiLight
argues that its accused products do not include a “general-
ly spherical outer profile.” The parties stipulated that
“generally spherical outer profile” should be construed as
“an outer three-dimensional surface where the points on
the surface are generally equidistant from a center point.”
AgiLight asserts that its expert explained that the outside
of the lens could not be considered generally spherical. It
contends that GE’s attorney annotations of the AgiLight
cross sections (reproduced below) only show that the lens
looks circular, not that it has an outer surface with points
that are “generally equidistant from a center point.”
Appellee’s Br. at 37 (citing J.A. 848–49).
GE LIGHTING SOLUTIONS, LLC   v. AGILIGHT, INC.          13




    For similar reasons, we find that the drawings of the
accused products point to a genuine factual dispute as to
whether the AgiLight structure’s outer profile is generally
spherical. Again, the cross-sectional images came from
AgiLight’s own expert and are themselves evidence. GE’s
attorney merely overlaid an undisputedly circular image
over AgiLight’s expert’s cross section. Surely an expert is
not required to create a fact question about whether
something is generally spherical to preclude summary
judgment. We thus reject AgiLight’s argument that the
“generally spherical outer profile” feature provides an
alternative basis to affirm the district court’s grant of
summary judgment.
                     III. ’055 Patent
    The ’055 patent is directed to an overmolding process
that applies a protective sealant over the printed circuit
board (PCB) to which an LED is attached, but not over
the LED itself. ’055 patent Abstract. To ensure that the
protective sealant does not cover the LED, an “annular
gasket” surrounds the LED before it is placed into an
injection mold. Id. col. 6 ll. 18–30, Fig. 11. A generally
hollow member seals against the annular gasket, enclos-
ing the LED and isolating it from the protective sealant,
which is then injected into the mold. Id. col. 6 ll. 18–30,
59–64, col. 8 ll. 30–65. Figure 4, reproduced below, shows
a perspective view of an exemplary annular gasket 32
surrounding an LED 16 before a generally hollow member
14              GE LIGHTING SOLUTIONS, LLC   v. AGILIGHT, INC.



(not shown) is sealed against the top of the annular
gasket to fully enclose the LED.




     The asserted claims are directed to an overmolding
method and recite “disposing an annular gasket on [a
PCB] to surround the [LED].” E.g., id. claims 1–3, 7, 9,
13. The district court construed “annular gasket” to be “a
three-dimensional deformable material used to make a
pressure-tight joint between stationary parts, with an
opening in its center capable of sealing off its center area
when bonded statically between stationary parts on its
top and bottom.” Claim Construction Order at 8 (empha-
sis added).
     As shown in the image below, in AgiLight’s accused
process, a concave lens (the alleged “annular gasket”) is
fit tightly into a socket in a tool bottom. A PCB with an
LED mounted on it is placed over the lens, such that the
LED is surrounded by the lens. A supporter and tool top
are placed over the PCB, and sealant is injected into the
cavities between the tool top and bottom.
GE LIGHTING SOLUTIONS, LLC   v. AGILIGHT, INC.            15




     The district court granted summary judgment of non-
infringement based on the “annular gasket” limitation. 2
Summary Judgment Order at 6–10. The district court
determined that the AgiLight lens is not an “annular
gasket” because its concave inner surface lacks an “open-
ing” as required by the court’s construction. Id. at 6–8.
In doing so, the district court made clear that the inside of
a concave surface cannot be an “opening” in the context of
its construction of “annular gasket.” Id. at 8.
    We agree with the district court that AgiLight’s dome-
shaped lens is not an annular gasket because it does not
have “an opening.” While the volume inside a dome may
be considered an “opening” in a general sense, it is not an
opening in the context of an “annular gasket.” This is
consistent with plain and ordinary meaning of a “gasket”
and with the annular gaskets disclosed in the ’055 patent,


    2   The district court also granted summary judg-
ment to AgiLight based on the “generally hollow member”
limitation, which is also recited in all of the asserted
claims. Because our conclusion regarding the “annular
gasket” limitation is sufficient to affirm the grant of
summary judgment, we do not address the district court’s
construction of “generally hollow member.”
16               GE LIGHTING SOLUTIONS, LLC   v. AGILIGHT, INC.



which are ring-shaped (including circular, elliptical,
square, etc., profiles) and can be cut from a “sheet” of
material. ’055 patent col. 5 ll. 21–36, 50–52, Figs. 4–5.
There is no genuine issue of material fact. Under the
proper claim construction, AgiLight’s dome-shaped lens is
not an annular gasket because it lacks an opening. We
affirm the court’s grant of summary judgment of the ’055
patent on this ground.
                       CONCLUSION
    We affirm the grant of summary judgment with re-
gard to the ’055 patent. We reverse the grant of summary
judgment with regard to the ’140, ’771 and ’896 patents
and remand.
     AFFIRMED-IN-PART, REVERSED-IN-PART,
                 REMANDED
                          COSTS
     No costs.
  United States Court of Appeals
      for the Federal Circuit
                  ______________________

          GE LIGHTING SOLUTIONS, LLC,
                Plaintiff-Appellant,

                             v.

                    AGILIGHT, INC.,
                    Defendant-Appellee.
                  ______________________

                        2013-1267
                  ______________________

   Appeal from the United States District Court for the
Northern District of Ohio in No. 12-CV-0354, Judge
James S. Gwin.
                ______________________

 Before RADER, Chief Judge, MOORE and REYNA, Circuit
                       Judges.
REYNA, Circuit Judge, concurring-in-part and dissenting-
in-part.
    I agree with the majority’s opinion regarding the con-
struction of “IDC connector” in the ’140 and ’771 patents
and “annular gasket” in the ’055 patent. I therefore
concur in the majority’s resolution of the issues regarding
those patents. I disagree, however, with the majority’s
interpretation of the terms “substantially ellipsoidal inner
profile” and “generally spherical outer profile” in the ’896
patent. In my view, the stipulated constructions must
apply to the full inner and outer profiles (or surfaces), not
2               GE LIGHTING SOLUTIONS, LLC   v. AGILIGHT, INC.



simply any mere part of those profiles. I therefore dissent
to the majority’s outcome concerning the ’896 patent.
     The majority’s reversal of the district court’s grant of
summary judgment of non-infringement under the ’896
patent was premised on its erroneous conclusion that the
use of the term “profile” in the claims referred only to “a
portion” of the recited profiles. Under the majority’s view,
there are a limitless number of inner and outer “profiles”
envisioned by the claims and, so long as one of those
innumerable inner profiles meets the “substantially
ellipsoidal” limitation and one of the innumerable outer
profiles meets the “generally spherical” limitation, the
claims have been infringed. I believe this is an improper
view of the scope of the claims because it is inconsistent
with the context provided by the claim language, the plain
meaning of the term “profile,” and GE’s disclaimer during
prosecution.
    The claim element with the disputed terms from the
’896 patent recites the following:
    a substantially dome-shaped refractive optical el-
    ement covering the LED, the optical element hav-
    ing a generally spherical outer profile and
    substantially ellipsoidal inner profile to increase
    the primary viewing angle of the LED to provide
    an altered viewing angle that is greater than the
    primary viewing angle;
’896 patent col. 8 ll. 30-35. As a preliminary matter, this
element refers to the entirety of the “substantially dome-
shaped refractive optical element.” That feature of the
claimed invention is described in association with limita-
tions regarding its outer and inner profile. In context, the
most consistent reading of the profile terms is that they
serve to describe the overall geometric features of the
claimed “refractive optical element.” See Phillips v. AWH
Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc)
(“[T]he claims themselves provide substantial guidance as
GE LIGHTING SOLUTIONS, LLC   v. AGILIGHT, INC.                3



to the meaning of particular claim terms. To begin with,
the context in which a term is used in the asserted claim
can be highly instructive.”). Not, as the majority’s con-
struction allows, merely any portion given that no further
description is provided for the other portions, no matter
how insubstantial or insignificant, of the outer and inner
profiles of that “refractive optical element.”
    The context supplied by the claim language is also
consistent with the plain meaning of the word “profile.”
While “profile” has different meanings in different con-
texts, the definition applicable to the present case is “an
outline of an object, as a molding, formed on a vertical
plane passed through the object at right angles to one of
its principal horizontal dimensions.” 1 RANDOM HOUSE
WEBSTER’S COLLEGE DICTIONARY (2d ed. 1999). Indeed,
the patent describes and depicts exactly such an outline
on a vertical plane in connection with cross-sectional
views of the disclosed optical element. The patent ex-
plains, consistent with the dictionary definition, that the
refractive domes “can be an integrally molded plastic or
glass piece, i.e., a one-piece unit.” ’896 patent col. 6 ll. 21-
23 (emphasis added). The patent further describes Fig-
ures 6 and 7 as the “cross-sectional view of an optical
element . . . shown in cross-section taken through the
center of the optical element in the x-y plane” and “the
cross-sectional view of FIG. 6 shown in side elevation,”
respectively. Id., col. 3, ll. 33-37. These images depict the
outlines of the optical elements with two refractive domes
as follows:




    1  “[W]e are free to consult dictionaries regardless of
whether they have been offered by a party in evidence or
not.” Boehringer Ingelheim Vetmedica, Inc. v. Schering-
Plough Corp., 320 F.3d 1339, 1346 (Fed. Cir. 2003)
4                   GE LIGHTING SOLUTIONS, LLC   v. AGILIGHT, INC.




Id., figs. 6 & 7.
    The specification explains that the profiles describe
the surfaces of the dome-shaped optical elements. The
depiction in Figure 7 is described as follows: “For the
depicted optical element each dome 140 has a spherical
outer profile, or outer surface, 148 and an ellipsoidal
inner profile, or inner surface 152.” Id., col. 3, ll. 33-37
(emphasis added). During oral argument, GE’s counsel
referred to Figure 7 and the disclosure in the specification
by stating that “[i]f you look at Figure 7 of the ’896 patent,
that is clearly showing you—which by the way is de-
scribed as a substantially ellipsoidal inner profile—if you
GE LIGHTING SOLUTIONS, LLC   v. AGILIGHT, INC.               5



look at that profile, it is very clearly not ellipsoidal across
its     entire     profile.”         Hr’g      at     3:18-3:33
(http://oralarguments.cafc.uscourts.gov/default.aspx?fl=20
13-1267.mp3). Notwithstanding the fact that the specifi-
cation does not describe the ellipsoidal inner profile
depicted in Figure 7 as substantially ellipsoidal, the
statement from GE’s counsel is revealing because it
(accurately) equates the word “profile” with the “entire
profile.” This is relevant because it further indicates that
the disclosed “profile” implicitly refers to the entire outline
of the depicted cross-section. Yet, GE’s arguments deviate
from this plain meaning regarding the entire profile by
seeking a construction for merely a partial profile, and the
majority adopted this view by recasting “profile” to mean
“a portion of” the profile. This departs from the language
of the claims by importing an extraneous adjectival modi-
fier into the claim, which, in effect, impermissibly re-
writes the patent’s claims. See Nike Inc. v. Wolverine
World Wide, Inc., 43 F.3d 644, 647 (Fed. Cir. 1994) (reject-
ing the patentee’s proposed claim construction that would,
“in effect, rewrite its patent claims to suit its needs in this
litigation”).
    There is no dispute that the specification wrongly de-
scribes the shape of the inner profile depicted in Figure 7.
The specification says the depicted inner profile is “ellip-
soidal” when the full profile clearly is not. The majority
resolved this flaw in favor of the patentee by parsing the
claimed profiles to any portion thereof. While I believe
that express ambiguity in a patent document that affects
the scope of the claims should typically be resolved in
favor of the public over the patentee, the ambiguity here
is most directly resolved from the amendments and re-
marks made by the patentee during prosecution.
    The majority states that “there are no statements dur-
ing prosecution or in the specification that indicate the
patentee’s intent to limit his claim to an entire inner
6               GE LIGHTING SOLUTIONS, LLC   v. AGILIGHT, INC.



profile that is substantially ellipsoidal.” Maj. Op. at 10-
11. This is not so. The profile limitations of the present
dispute were added to the claims during prosecution in
order to overcome a rejection that relied, in part, on U.S.
Pat. No. 6,566,824 (“the ’824 patent”). The amendment
changed the disputed element as follows:
    a substantially dome-shaped refractive optical el-
    ement covering the LED, the optical element be
    ing configured having a generally spherical outer
    profile and substantially ellipsoidal inner profile
    to increase the primary viewing angle of the LED
    to provide an altered viewing angle that is greater
    than the primary viewing angle;
Claim Amendment in File History of Pat. Appl. No.
12/105,963 (June 29, 2010) at 4. In short, the claim went
from having no limitations regarding the geometry of the
optical element to the specifically recited geometries for
the inner and outer profiles.
    The amendment was made in order to overcome the
specific geometries of the optical elements expressly
disclosed in the prior art. In particular, the amendment
sought to overcome the disclosure in Figure 14 of the ’824
patent, which depicts the following optical element with
inner and outer surfaces referred to as a “Bugeye®” lens:
GE LIGHTING SOLUTIONS, LLC   v. AGILIGHT, INC.               7




’824 patent, Fig. 14, col. 2 ll. 60-62 (“FIG. 14 is a cross-
sectional view of one of the BugEye™ lenses of FIG. 13
showing a cone of light emanating therefrom”). In argu-
ing that the amendment overcame the disclosure of the
’824 patent, the patentee stated that:
    [The ’824 patent] displays various domes in Fig-
    ures 10, 12, and 14. However, neither of the
    domes depicted in [the ’824 patent] is spherical in
    its outer profile and elliptical in its inner profile.
    In fact, Figure 14 could, arguably, be interpreted
    as the inverse of the presently claimed invention.
Remarks in File History of Pat. Appl. No. 12/105,963
(June 29, 2010) at 6 (emphasis added).
    The only reasonable interpretation of the patentee’s
argument during prosecution is that it was referring to
the full profiles depicted in Figure 14 of the ’824 patent.
That image depicts a lens that has a substantially ellip-
soidal outer profile and a generally spherical inner profile.
But, this is only true if one considers the entirety of the
GE LIGHTING SOLUTIONS, LLC   v. AGILIGHT, INC.             9



adopt a position contrary to that adopted before the PTO
and expect to be believed.”); Southwall Techs., Inc. v.
Cardinal IG Co., 54 F.3d 1570, 1576 (Fed. Cir. 1995)
(“Claims may not be construed one way in order to obtain
their allowance and in a different way against accused
infringers.”). To do otherwise, as the majority has done
here, allows the patentee to recapture surrendered claim
scope and ensnare the prior art. See, e.g., Omega Eng’g,
Inc., v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003)
(“prosecution disclaimer is well established in Supreme
Court precedent, precluding patentees from recapturing
through claim interpretation specific meanings disclaimed
during prosecution”). This further demonstrates the
majority’s error.
    Finally, the majority’s construction allows for illogical
results. The claim terms in dispute are a “generally
spherical outer profile” and “substantially ellipsoidal
inner profile.” To me, this language means that there is
an outer profile that is generally spherical and an inner
profile that is substantially ellipsoidal. By contrast, the
majority’s construction allows the claims to cover profiles
that are, when viewed in their entirety, neither generally
spherical nor substantially elliptical. For instance, the
majority’s construction considers the following to repre-
sent profiles of three-dimensional surfaces that are “gen-
erally    spherical”   and    “substantially   ellipsoidal,”
respectively:




    In my view, a more natural interpretation of the fore-
going profiles is that they depict a structure that is gen-
10               GE LIGHTING SOLUTIONS, LLC   v. AGILIGHT, INC.



erally cubic and a structure that is substantially conical,
respectively. That the majority’s construction allows for
such a radical departure from the plain import of the
claim language further demonstrates the flaw in that
interpretation. See Interactive Gift Express, Inc. v. Com-
puserve Inc., 256 F.3d 1323, 1336 (Fed. Cir. 2001) (reject-
ing claim construction that is “illogical and does not
accord with the plain import of the claim language”).
    The parties stipulated to constructions for the disput-
ed profile terms. They agreed that “generally spherical
outer profile” meant “an outer three-dimensional surface
where the points on the surface are generally equidistant
from a center point” and that “substantially elliptical
inner profile” meant “an inner three-dimensional surface
where the sum of the distances from two focal points and
the points on the inner surface is substantially constant.”
As the majority recognized, the stipulation did not resolve
the parties’ dispute as to whether the claim limitations
applied to the full profile or simply a portion of the profile.
Based on the foregoing analysis, I conclude that the
patent’s use of the term “profile” means the full outline
created by a cross section of the entire “substantially
dome-shaped refractive optical element.” That is, the
claim addresses the entire inner and outer profiles.
Under that interpretation, the Appellant has not submit-
ted adequate evidence to raise a genuine issue of fact
regarding infringement and I would therefore affirm the
district court’s grant of summary judgment of non-
infringement of the ’896 patent.
