DCT
1:24-cv-11007
Omni Continuum LLC v. NKT Photonics Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Omni Continuum LLC (Michigan)
- Defendant: NKT Photonics Inc. (Delaware) and NKT Photonics As (Denmark)
- Plaintiff’s Counsel: Brooks Kushman P.C.; Michael C Moschos
- Case Identification: 1:24-cv-11007, D. Mass., 06/20/2024
- Venue Allegations: Venue is alleged to be proper based on NKT Photonics Inc. having a regular and established place of business in the district and NKT Photonics A/S being a foreign corporation.
- Core Dispute: Plaintiff alleges that Defendant’s multi-stage supercontinuum lasers infringe patents related to the generation of broadband and infrared light using fiber optics.
- Technical Context: Supercontinuum lasers are advanced light sources that generate light across a very broad spectrum of wavelengths, enabling applications in medical imaging, materials processing, and scientific research.
- Key Procedural History: The complaint references prior litigation between the parties (Case No. 1:23-cv-10359) where Plaintiff Omni asserted U.S. Patent No. 7,519,253. Omni alleges it dropped the '253 patent from that suit in reliance on Defendant NKT's representation that its lasers could not generate a signal with the claimed "pulse width of at least 100 picoseconds." After that case was resolved as to another patent, Omni alleges it newly discovered that an external input on the accused lasers allows them to generate pulses meeting the '253 patent’s requirement. This amended complaint re-asserts the '253 patent and adds an infringement claim for U.S. Patent No. 7,433,116.
Case Timeline
| Date | Event |
|---|---|
| 2002-09-03 | Priority Date for U.S. Patent No. 7,433,116 |
| 2005-11-18 | Priority Date for U.S. Patent No. 7,519,253 |
| 2008-10-07 | U.S. Patent No. 7,433,116 Issues |
| 2009-04-14 | U.S. Patent No. 7,519,253 Issues |
| 2023-02-17 | Prior lawsuit (1:23-cv-10359) filed |
| 2024-03-07 | Prior lawsuit dismissed by stipulation |
| 2024-06-20 | Current Amended Complaint filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,433,116, "Infra-red Light Source Including a Raman Shifter," issued October 7, 2008
The Invention Explained
- Problem Addressed: The patent background describes the fatigue and strain medical professionals experience during complex procedures and implies a need for improved light-based medical tools, such as for surgery or diagnostics, that can operate at specific, beneficial wavelengths. ('116 Patent, col. 1:24-38).
- The Patented Solution: The invention is a specialized infrared light source. It uses two pump lasers generating signals at substantially different wavelengths, which are then combined. This combined signal is passed through a "Raman wavelength shifter" composed of two distinct waveguide structures. This shifter uses the Raman effect to first shift the light to an intermediate wavelength in the first structure, and then to a longer, final wavelength in the second structure, enabling the generation of tailored mid-infrared light. ('116 Patent, Abstract; col. 21:6-35).
- Technical Importance: The patent explains that certain mid-infrared wavelengths, such as approximately 6.45 microns, can be particularly advantageous for "clean" surgery by minimizing collateral tissue damage compared to more common laser wavelengths. ('116 Patent, col. 16:47-62).
Key Claims at a Glance
- The complaint asserts independent claim 1 and reserves the right to assert other claims (Compl. ¶20).
- The essential elements of independent claim 1 include:
- An infrared light source.
- One or more combiners coupled to a first and second pump laser, where the pump lasers generate signals with substantially different wavelengths.
- The combiners combine the pump signals into a first optical signal.
- A wavelength shifter coupled to the combiners, comprising a first and second waveguide structure.
- The wavelength shifter receives the first optical signal and shifts its wavelength based on the Raman effect.
- The shifter operates by shifting the first wavelength to an intermediate wavelength in the first waveguide structure, and then shifting the intermediate wavelength to a longer optical wavelength in the second waveguide structure.
- The intermediate wavelength is greater than the first wavelength, and the longer wavelength is greater than the intermediate wavelength.
- The first and second waveguide structures are substantially different from each other.
U.S. Patent No. 7,519,253, "Broadband or Mid-Infrared Fiber Light Sources," issued April 14, 2009
The Invention Explained
- Problem Addressed: The patent identifies a need for simpler, more robust, and less expensive methods for generating broadband mid-infrared (mid-IR) light, noting that existing technologies like optical parametric oscillators (OPOs) are often "expensive, complicated, and involve moving parts that are prone to mis-alignment." ('253 Patent, col. 1:40-44).
- The Patented Solution: The invention describes a fiber-based light source that uses one or more laser diodes to generate a relatively long pump pulse (at least 100 picoseconds). This pulse is amplified to a high peak power (at least 500 W) and injected into an optical fiber operating in its "anomalous group-velocity dispersion regime." This combination of high power and specific fiber properties initiates a nonlinear process called "modulational instability," which breaks the initial pulse into a train of shorter, more intense pulses, ultimately generating a broad spectrum of light (a supercontinuum). ('253 Patent, Abstract; Fig. 16).
- Technical Importance: This approach leverages mature and cost-effective technologies from the telecommunications industry, such as laser diodes and fiber amplifiers, to create a compact and robust mid-IR light source without the complexity of traditional systems. ('253 Patent, col. 1:55-67).
Key Claims at a Glance
- The complaint asserts independent claim 1 and reserves the right to assert other claims (Compl. ¶29).
- The essential elements of independent claim 1 include:
- A broadband light source.
- One or more laser diodes capable of generating a pump signal with a wavelength shorter than 2.5 microns and a pulse width of at least 100 picoseconds.
- One or more optical amplifiers capable of amplifying the pump signal to a peak power of at least 500W.
- A first fiber coupled to the amplifiers, comprising an anomalous group-velocity dispersion regime and a modulational instability mechanism.
- The pump signal's wavelength resides in this anomalous dispersion regime.
- Different intensities in the pump signal can cause relative motion between parts of the modulated signal.
- A nonlinear element coupled to the first fiber, capable of broadening the pump optical spectral width to at least 100 nm.
III. The Accused Instrumentality
Product Identification
- The NKT SuperK FIANIUM series lasers and the NKT SuperK EXTREME series lasers (the "Accused Lasers") (Compl. ¶19).
Functionality and Market Context
- The complaint alleges the Accused Lasers are multi-stage supercontinuum lasers that generate broadband light, including in the infrared spectrum (Compl. ¶¶19, 20.a). The complaint references an NKT product datasheet showing a typical output spectrum for the FIANIUM series extending beyond 2400 nm. The "SuperK FIANIUM typical output spectrum" chart from an NKT datasheet is presented as evidence of the accused products' infrared output (Compl. ¶20.a, p. 8).
- For the '253 patent allegations, the complaint alleges that the Accused Lasers have external inputs, such as a "Booster ON/OFF" input on the FIANIUM series and a "Modulation input" on the EXTREME series, that allow a user to control the pulse width of the pump signal, making the lasers "capable of generating a Pump signal of at least 100 picoseconds" (Compl. ¶¶18-21, 29.b). A diagram from an NKT product guide shows the "Booster ON/OFF" BNC connector on the rear panel of a FIANIUM laser (Compl. ¶29.b, p. 19).
- The complaint alleges that sales of the Accused Lasers average at least $30 million per year (Compl. ¶34).
IV. Analysis of Infringement Allegations
'7,433,116 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An infrared light source, comprising... | The Accused Lasers are alleged to be infrared light sources, generating light at wavelengths from 750 nm to 10,000 nm or more, as shown in product spectrum charts. | ¶20.a | col. 1:3-4 |
| one or more combiners coupled to at least a first pump laser operable to generate a first pump signal and a second pump laser operable to generate a second pump signal... | The complaint alleges the Accused Lasers use two pump lasers (e.g., at ~976nm and ~1060nm) coupled to a combiner, referencing a simplified diagram labeled "Fig. A." | ¶20.b | col. 20:25-32 |
| a wavelength shifter coupled to the one or more combiners... the wavelength shifter comprising a first waveguide structure and a second waveguide structure... | The Accused Lasers are alleged to have a wavelength shifter. The complaint cites a figure from Defendant's own U.S. Patent No. 11,221,445 to illustrate the claimed first (12) and second (13) waveguide structures. | ¶¶20.d, 20.e | col. 1:63-65 |
| and to wavelength shift at least a portion of the first optical signal based at least in part on a Raman effect... | The complaint alleges the wavelength shifter operates based on the Raman effect, citing an NKT technical note that describes "blueshifts" and "redshifts" in supercontinuum generation. | ¶20.g | col. 15:1-5 |
| wherein the wavelength shifter operates to wavelength shift at least the first wavelength to an intermediate optical wavelength in the first waveguide structure... and to wavelength shift the intermediate optical wavelength to a longer optical wavelength in the second waveguide structure... | The complaint alleges the first structure (12) shifts the pump pulse to an intermediate wavelength ("Solitons") and the second structure (13) shifts that to a longer wavelength, as shown in product spectrum charts. | ¶¶20.h, 20.i | col. 21:26-33 |
| wherein the first waveguide structure is substantially different than the second waveguide structure. | The complaint alleges the structures are substantially different, referencing a figure from Defendant's U.S. Patent No. 11,221,445 that depicts different waveguide geometries. | ¶20.k | col. 21:34-35 |
Identified Points of Contention
- Scope Questions: A central dispute may be whether the allegedly integrated or tapered fiber design in the Accused Lasers constitutes a "first waveguide structure and a second waveguide structure" as claimed. The complaint's reliance on figures from a different NKT patent ('445 patent) to illustrate this structure raises the question of whether that patent accurately describes the Accused Lasers and whether such a structure meets the claim limitations as construed by the court.
- Technical Questions: The analysis will question whether the Accused Lasers perform the two distinct, sequential wavelength shifts as required by claim 1 (pump → intermediate → longer), or if they operate via a different physical mechanism of supercontinuum generation that does not map onto the claim's specific steps.
'7,519,253 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A broadband light comprising... | The Accused Lasers are alleged to be broadband light sources because they emit white light, as described on NKT's website. | ¶29.a | col. 15:27-29 |
| one or more laser diodes capable of generating a pump signal comprising... a pulse width of at least 100 picoseconds... | The complaint alleges the Accused Lasers are "capable of" generating such pulses via external inputs like the "Booster ON/OFF" or "Modulation input," which control the laser diodes. | ¶29.b | col. 19:5-6 |
| one or more optical amplifiers coupled to the pump signal and capable of amplifying the pump signal to a peak power of at least 500W... | The Accused Lasers are alleged to have optical amplifiers that amplify the pump signal to tens of kilowatts, exceeding the 500W requirement, citing another NKT-owned patent. | ¶29.c | col. 19:7-9 |
| a first fiber coupled to the one or more optical amplifiers... comprising an anomalous group-velocity dispersion regime and a modulational instability mechanism... | The complaint alleges the Accused Lasers use a fiber with these properties, citing a technical publication co-authored by NKT employees that describes this mechanism leading to "soliton-like pulses." | ¶29.e | col. 19:11-13 |
| a nonlinear element coupled to the first fiber capable of broadening the pump optical spectral width to at least 100 nm... | The Accused Lasers are alleged to have a nonlinear element (e.g., a tapered fiber) that broadens the spectrum, as shown in product output spectrum charts. | ¶29.h | col. 19:20-23 |
Identified Points of Contention
- Scope Questions: The primary dispute will likely be the construction of "capable of generating ... a pulse width of at least 100 picoseconds." Given the procedural history, the key question is whether a product is "capable" of infringing if it requires a specific external signal to trigger the functionality, particularly when the defendant previously represented to the court that the product was not capable of meeting this limitation.
- Technical Questions: An evidentiary question will be whether the use of the "Booster ON/OFF" or "Modulation input" actually causes the laser diodes to generate a single pulse of at least 100 picoseconds, or if it performs a different function (e.g., gating a stream of much shorter pulses). The complaint's assertion that a "Modulation bandwidth" of 100Hz "equals a pulse width of 10 microseconds" may be a point of technical debate (Compl. ¶29.b, p. 21).
V. Key Claim Terms for Construction
Term: "capable of generating a pump signal comprising ... a pulse width of at least 100 picoseconds" ('253 Patent, Claim 1)
- Context and Importance: This term is the central point of contention for the '253 patent, as it was the basis for Omni dropping its prior infringement claim. The case's viability hinges on whether the Accused Lasers, with their external trigger inputs, meet this "capable of" standard. Practitioners may focus on this term because its construction will determine whether Omni's new theory of infringement can proceed, and it may raise issues of estoppel based on NKT's prior representations.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent's use of "capable of" could be argued to encompass any function the device can be made to perform, even if it requires an external signal or is not a default mode of operation. The specification does not appear to explicitly limit the term to unassisted operation.
- Evidence for a Narrower Interpretation: The specification describes the invention in the context of generating supercontinuum light via modulational instability, which typically involves very short (femtosecond to picosecond) pulses breaking up. An interpretation that requires the "pulse width" to be relevant to this primary mechanism could support a narrower meaning that excludes artificially long pulses generated for other purposes.
Term: "a first waveguide structure and a second waveguide structure" ('116 Patent, Claim 1)
- Context and Importance: The infringement reading for the '116 patent depends on mapping the architecture of the Accused Lasers onto this two-part structure. A court’s construction of whether this requires two physically separate or merely functionally distinct sections within a single fiber will be critical.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claims do not specify that the structures must be physically separate components. One might argue that a single, continuous optical fiber with two sections having "substantially different" properties (e.g., a tapered section) could meet the limitation.
- Evidence for a Narrower Interpretation: The patent repeatedly refers to a "first" and "second" structure, which may imply distinctness. The description of wavelength shifting from an "intermediate" to a "longer" wavelength in discrete steps could be argued to support a requirement for two identifiably separate structures or fiber types.
VI. Other Allegations
Willful Infringement
- The complaint alleges that NKT's infringement of the '116 patent is willful, stating that NKT has had knowledge of the patent "since at least the filing of the original complaint in this action" on February 17, 2023 (Compl. ¶23). The prayer for relief specifically requests treble damages for willful infringement of the '116 patent (Compl., p. 28). No parallel allegation of willfulness is made for the '253 patent.
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of definitional scope and litigation history: Can the term "capable of generating," as used in the '253 patent, be construed to cover functionality that requires a specific external signal, and what legal effect, if any, will NKT's prior contrary representation to the court have on the infringement analysis?
- A key structural question will be one of component identity: For the '116 patent, the case may turn on whether the accused lasers' potentially integrated fiber architecture embodies the "first waveguide structure and a second waveguide structure" required by the claim, or if the claim demands more distinct components than are present.
- An underlying evidentiary question will be the weight of extrinsic evidence: With infringement allegations for both patents relying heavily on the defendant's own product manuals, technical notes, and even other patents, a key issue will be whether this extrinsic evidence accurately reflects the specific operation of the Accused Lasers in a manner that satisfies the limitations of the asserted claims.