throbber
IN THE UNITED STATES DISTRICT COURT
`
`FOR THE MIDDLE DISTRICT OF NORTH CAROLINA
`
`
`
`OPTOLUM, INC.,
`
`
`
`Plaintiff,
`
`
`
`
`
`
`CREE, INC.,
`
`
`
`
`Defendant.
`
`
`v.
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`1:17CV687
`
`
`MEMORANDUM OPINION AND ORDER
`
`
`OSTEEN, JR., District Judge
`
`
`OptoLum, Inc. (“OptoLum”) sues Defendant Cree, Inc.
`
`(“Cree”) for patent infringement, violations of the Lanham Act,
`
`and unjust enrichment. (Doc. 32.) This matter is before the
`
`court on Cree’s motion for partial summary judgment pursuant to
`
`Federal Rule of Civil Procedure 56. (Doc. 190.) Because there is
`
`no genuine issue of material fact with respect to Cree’s
`
`argument that the Gen 2.5 bulbs do not infringe and that Cree’s
`
`Single Ring bulbs do not literally infringe the asserted
`
`patents, the court will grant Cree’s motion on these issues. The
`
`court finds, however, that Cree fails to show that there is no
`
`genuine issue of material fact as to the remaining issues, and
`
`the court will deny Cree’s motion as to these arguments.
`
`I.
`
`FACTUAL AND PROCEDURAL BACKGROUND
`
`“In reviewing the evidence as it relates to a motion for
`
`summary judgment, this Court must . . . view all evidence in the
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`light most favorable to the non-moving party.” Shealy v.
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`Winston, 929 F.2d 1009, 1011 (4th Cir. 1991). The facts here,
`
`taken in the light most favorable to OptoLum, are as follows.
`
`A.
`
`Factual Background
`
`1.
`
`Parties
`
`Plaintiff OptoLum is a corporation organized under the laws
`
`of the state of Arizona with its principal place of business
`
`there as well. (Amended Complaint (“Am. Compl.”) (Doc. 32)
`
`¶ 28.)
`
`Defendant Cree is a corporation organized under the laws of
`
`the state of North Carolina with its principal place of business
`
`there as well. (Id. ¶ 30.)
`
`Both parties produce lighting products using light-emitting
`
`diodes (“LEDs”). (Id. ¶¶ 12, 20, 22–23, 29.)
`
`2.
`
`OptoLum’s Patents at Issue
`
`OptoLum seeks to enforce U.S. Patents 6,831,303 (the “‘303
`
`Patent”), and 7,242,028 (the “‘028 Patent”) in this action
`
`(together, the “Patents”).1 (Id. ¶¶ 25–27.)
`
`
`1 Both Patents are continuations of U.S. Patent No.
`6,573,536 (the “‘536 Patent”), (see Def.’s Br. (Doc. 191),
`Ex. B, U.S. Patent No. 7,242,028 (the “‘028 Patent”) (Doc.
`191-3) at 2), but OptoLum does not seek to enforce this Patent
`and Cree submits that the ‘536 Patent is not at issue in this
`matter, (Def.’s Br. (Doc. 191) at 18 n.2).
`
`-2-
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`These Patents were invented by Mr. Joel M. Dry (“Dry”).
`
`(See Def.’s Mem. in Supp. of Mot. for Partial Summ. J. (“Def.’s
`
`Br.”) (Doc. 191), Ex. A, U.S. Patent No. 6,831,303 (“‘303
`
`Patent”) (Doc. 191-2) at 2; Ex. B, U.S. Patent No. 7,242,028
`
`(“‘028 Patent”) (Doc. 191-3) at 2.)2 The ‘028 Patent, issued on
`
`July 10, 2017, is a continuation of the ‘303 Patent. (‘028
`
`Patent (Doc. 191-3) at 2.) The ‘303 Patent was issued on
`
`December 14, 2004. (‘303 Patent (Doc. 191-2) at 2.) Dry is the
`
`CEO and President of OptoLum. ((Declaration of Leah McCoy (Doc.
`
`214) Ex. A, Declaration of Joel M. Dry (“Dry Decl.”) (Doc.
`
`214-1) ¶ 2.) At the time the United States Patent and Trademark
`
`Office issued the patents to Dry, he and his wife, Martha Baker
`
`(“Baker”), were married and living in Arizona. (Deposition of
`
`Joel Dry (“Dry Dep.”) (Doc. 191-7) at 8, 10.)
`
`Dry assigned both patents to OptoLum; he assigned the ‘303
`
`Patent application to OptoLum in 2003 and the ‘028 Patent in
`
`2016. (Doc. 191-8 at 2; Doc. 191-9 at 3.)
`
`The ‘303 Patent discloses a “light source that utilizes
`
`light emitting diodes [LEDs] that emit white light.” (‘303
`
`Patent (Doc. 191-2) at 2.) “The diodes are mounted on an
`
`
`2 All citations in this Memorandum Opinion and Order to
`documents filed with the court refer to the page numbers located
`at the bottom right-hand corner of the documents as they appear
`on CM/ECF.
`
`
`-3-
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`elongate member having at least two surfaces upon which the
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`[LEDs] are mounted,” and the “elongate member is thermally
`
`conductive and is utilized to cool the [LEDs].” (Id.) The ‘303
`
`Patent includes independent claim 1 and dependent claims 2-18.
`
`OptoLum alleges Cree infringed claims 2–4 and 6–9 of the ‘303
`
`Patent. (Doc. 191-16 at 3.) Claim 1 claims:
`
`A light source comprising:
`
`
`an elongate thermally conductive member having an
`outer surface;
`a plurality of light emitting diodes carried on said
`elongate member outer surface at least some of
`said light emitting diodes being disposed in a
`first plane and others of said light emitting
`diodes being disposed in a second plane not
`coextensive with said first plane;
`electrical conductors carried by said elongate
`thermally conductive member and connected to said
`plurality of light emitting diodes to supply
`electrical power thereto; and
`said elongate thermally conductive member being
`configured to conduct heat away from said light
`emitting diodes to fluid contained by said
`elongate thermally conductive member;
`said elongate thermally conductive member comprises
`one or more heat dissipation protrusions.
`
`
`(‘303 Patent (Doc. 191-2) col. 4 lines 25-43)
`
`The ‘028 Patent also discloses a “light source that
`
`utilizes light emitting diodes [LEDs] that emit white light,”
`
`which uses an elongate member to conduct heat. (‘028 Patent
`
`(Doc. 191-3) at 2.) OptoLum alleges Cree infringed claims 1–3,
`
`-4-
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`5–8, 14, and 16 of the ‘028 Patent.3 (Doc. 191-16 at 3.) Claim 1
`
`is an independent claim and the remaining claims are dependent
`
`claims. (‘028 Patent (Doc. 191-3) at 6.) It reads:
`
`A light source comprising:
`
`
`an elongate thermally conductive member having an
`outer surface;
`a plurality of solid state light sources carried on
`said elongate member outer surface at least some
`of said solid state light sources being disposed
`in a first plane and others of said solid state
`light sources being disposed in a second plane
`not coextensive with said first plane;
`electrical conductors carried by said elongate
`thermally conductive member and connected to said
`plurality of solid state light sources to supply
`electrical power thereto;
`said elongate thermally conductive member being
`configured to conduct heat away from said solid
`state light sources to fluid contained by said
`elongate thermally conductive member; and
`said elongate thermally conductive member comprises
`one or more heat dissipation protrusions, at
`least one of said heat dissipation protrusions
`being carried on said elongate member outer
`surface.
`
`
`(‘028 Patent (Doc. 191-3) col. 4 lines 30-50.)
`
`Claim 1 of the ‘028 Patent reiterates Claim 1 of the ‘303
`
`Patent, except instead of using the term “light emitting
`
`
`3 OptoLum filed its original Infringement Contentions on
`April 21, 2017. (Doc. 191-4 at 10.) These Infringement
`Contentions listed Claims 17, 19–22, 27, and 29–30 as infringed
`claims of the ‘028 Patent. (Id. at 3.) In November 2017, OptoLum
`notified Cree that it was no longer asserting infringement of
`claims 19–22, 27, and 29–30. (Doc. 191-5 at 2.) Further, in
`April 2019, OptoLum notified Cree that it was no longer
`asserting infringement of claim 17 of the ‘028 Patent. (Doc.
`191-6 at 2.)
`
`
`-5-
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`diodes,” it uses the term “a plurality of solid state light
`
`sources.” (Compare ‘303 Patent (Doc. 191-2) col. 4 line 28 (Doc.
`
`191-2), with ‘028 Patent (Doc. 191-3) col. 4 line 33.)
`
`3.
`
`Cree’s Accused Products
`
`OptoLum identifies seventy-three lighting products produced
`
`by Cree that allegedly infringe the ‘303 Patent and the ‘028
`
`Patent (together, the “Accused Products”). (Doc. 191-16 at 3–5.)
`
`In particular, OptoLum submits the Cree 60 Watt Bulb, a “single
`
`ring” bulb (the “Single Ring bulb”); and the Cree 100 Watt Bulb,
`
`a “multiple ring” bulb, as representative of the Accused
`
`Products. (Id. at 5–7.) OptoLum alleges the 60 Watt Bulb and the
`
`100 Watt Bulb both infringe the ‘303 Patent and the ‘028 Patent.
`
`(Id.)
`
`B.
`
`Procedural Background
`
`The parties filed a Joint Claim Construction Statement in
`
`November 2017. (Doc. 106.) The parties agreed to the
`
`constructions of several phrases. The court also issued its own
`
`Claim Construction Memorandum Opinion and Order. (Doc. 152.) In
`
`that Order, the court found that OptoLum disclaimed subject
`
`matter concerning the phrase “disposed in a second plane not
`
`coextensive with said first plane.” (Id. at 21–22.)
`
`Cree filed its motion for partial summary judgment on
`
`noninfringement, invalidity, and damages, (Doc. 190), and a
`
`supporting brief, (Doc. 191). OptoLum responded, (Pl.’s Opp’n to
`
`-6-
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`Cree’s Omnibus Mot. for Summ. J. of Non-Infringement, Invalidity
`
`and Damages (“Pl.’s Resp.”) (Doc. 213)), and Cree replied,
`
`(Def.’s Reply Mem. in Supp. of Omnibus Mot. for Partial Summ. J.
`
`of Non-Infringement, Invalidity, and Damages (“Def.’s Reply”)
`
`(Doc. 218)). Plaintiff has moved for leave to file a surreply,
`
`(Doc. 220), which the court will grant.
`
`II. STANDARD OF REVIEW
`
`Summary judgment is appropriate when “there is no genuine
`
`dispute as to any material fact and the movant is entitled to
`
`judgment as a matter of law.” Fed. R. Civ. P. 56(a); see Celotex
`
`Corp. v. Catrett, 477 U.S. 317, 322–23 (1986). This court’s
`
`summary judgment inquiry is whether the evidence “is so one-
`
`sided that one party must prevail as a matter of law.” Anderson
`
`v. Liberty Lobby, Inc., 477 U.S. 242, 252 (1986). The moving
`
`party bears the initial burden of demonstrating “that there is
`
`an absence of evidence to support the nonmoving party’s case.”
`
`Celotex Corp., 477 U.S. at 325. If the “moving party discharges
`
`its burden . . . , the nonmoving party must come forward with
`
`specific facts showing that there is a genuine issue for trial.”
`
`McLean v. Patten Cmtys., Inc., 332 F.3d 714, 718-19 (4th Cir.
`
`2003) (citing Matsushita Elec. Indus. Co. v. Zenith Radio Corp.,
`
`475 U.S. 574, 586-87 (1986)). Summary judgment should be granted
`
`“unless a reasonable jury could return a verdict for the
`
`-7-
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`nonmovant party on the evidence presented.” McLean, 332 F.3d at
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`719 (citing Liberty Lobby, 477 U.S. at 247–48).
`
`III. ANALYSIS
`
`Cree raises five issues in its motion for partial summary
`
`judgment. First, Cree contends its Generation 2.5 Single Ring
`
`bulb does not infringe the Patents. (Def.’s Br. (Doc. 191) at
`
`27.) Second, Cree argues that its Single Ring bulb does not
`
`infringe the Patents. (Id. at 33.) Third, Cree asserts that
`
`OptoLum lacks standing to assert the ‘028 Patent. (Id. at 43.)
`
`Fourth, Cree argues the ‘028 Patent is invalid pursuant to
`
`35 U.S.C. § 112 for violating the written description
`
`requirement. (Id. at 48, 54.) Finally, Cree contends that pre-
`
`suit damages are not recoverable because OptoLum failed to
`
`comply with the written description requirement under 35 U.S.C.
`
`§ 287(a). (Id. at 62–63.) The court will address Cree’s
`
`arguments in turn. Because Cree alleges OptoLum lacks standing
`
`to assert the ‘028 Patent, which would be a dispositive issue
`
`regarding the ‘028 Patent, the court will address this argument
`
`first.
`
`A.
`
`OptoLum’s Standing to Maintain Suit for Infringement
`of the ‘028 Patent
`
`All co-owners of a patent must join in a patent suit. Drone
`
`Techs., Inc. v. Parrot S.A., 838 F.3d 1283, 1292 (Fed. Cir.
`
`2016). Cree argues that Martha Baker, Dry’s wife, has a
`
`-8-
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`co-ownership interest in the ‘028 Patent by virtue of Arizona
`
`property laws, where they resided when Dry was issued the ‘028
`
`Patent. Thus, Cree contends, because Dry only assigned his
`
`interest in the ‘028 Patent to OptoLum, and Martha Baker did not
`
`assign her interest, she retains an ownership interest in the
`
`‘028 Patent but has not joined in this suit, thus depriving
`
`OptoLum of prudential standing to enforce the ‘028 Patent.
`
`(Def.’s Br. (Doc. 191) at 14–15.)
`
`OptoLum argues that Arizona law provides each spouse the
`
`right to dispose of community property while they are still
`
`married. (Pl.’s Resp. (Doc. 213) at 23–24.) OptoLum also
`
`acknowledges that such dispositions can sometimes constitute a
`
`breach of fiduciary duty between spouses, but it contends Martha
`
`Baker had full knowledge of the assignment and that there is no
`
`evidence in the record that Dry’s assignment of the ‘028 Patent
`
`was a breach of fiduciary duty which would invalidate the
`
`assignment. (Id. at 24–25.)
`
`Article III of the Constitution “limits the jurisdiction of
`
`federal courts to ‘Cases’ and ‘Controversies,’” Beck v.
`
`McDonald, 848 F.3d 262, 269 (4th Cir.), cert. denied sub nom.
`
`Beck v. Shulkin, ____ U.S. ____, 137 S. Ct. 2307 (2017) (quoting
`
`U.S. Const. art. III, § 2), and the doctrines of standing and
`
`mootness derive from that limitation, White Tail Park, Inc. v.
`
`Stroube, 413 F.3d 451, 458 (4th Cir. 2005). The standing
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`-9-
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`determination “remains focused on whether the party invoking
`
`jurisdiction had the requisite stake in the outcome when the
`
`suit was filed.” Davis v. Fed. Election Comm’n, 554 U.S. 724,
`
`734 (2008).
`
`The standing doctrine has two components: Article III
`
`standing, which implicates the jurisdiction of the federal
`
`courts, and prudential standing, “which embodies ‘judicially
`
`self-imposed limits on the exercise of federal jurisdiction.’”
`
`United States v. Windsor, 570 U.S. 744, 757 (2013) (quoting Elk
`
`Grove Unified Sch. Dist. v. Newdow, 542 U.S. 1, 11-12 (2004));
`
`Doe v. Va. Dep't of State Police, 713 F.3d 745, 753 (4th Cir.
`
`2013). The “irreducible minimum requirements” of standing that a
`
`plaintiff bears the burden of establishing under Article III are
`
`(1) an injury in fact, (2) that is fairly traceable to the
`
`challenged conduct of the defendant, and (3) that is likely to
`
`be redressed by a favorable judicial decision. Spokeo, Inc. v.
`
`Robins, 578 U.S. ___, ___, 136 S. Ct. 1540, 1547 (2016) (quoting
`
`Lujan v. Defenders of Wildlife, 504 U.S. 555, 560 (1992)); David
`
`v. Alphin, 704 F.3d 327, 333 (4th Cir. 2013).
`
`Certain prudential considerations may nevertheless deprive
`
`a plaintiff of standing “[e]ven when Article III permits the
`
`exercise of federal jurisdiction.” Windsor, 570 U.S. at 760.
`
`“Before a court may exercise jurisdiction over a patent
`
`infringement action, it must be satisfied that, ‘in addition to
`
`-10-
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`Article III standing, the plaintiff also possesse[s] standing as
`
`defined by § 281 of the Patent Act.’” Drone Techs., 838 F.3d at
`
`1292 (quoting Alps S., LLC v. Ohio Willow Wood Co., 787 F.3d
`
`1379, 1382 (Fed. Cir. 2015)). Section 281 provides that a
`
`“patentee shall have remedy by civil action for infringement of
`
`his patent.” 35 U.S.C. § 281. The term “patentee” includes both
`
`the person to whom the patent issued, but also “successors in
`
`title to the patentee.” 35 U.S.C. § 100(d); see also H.R.
`
`Techs., Inc. v. Astechnologies, Inc., 275 F.3d 1378, 1384 (Fed.
`
`Cir. 2002) (“In order to have standing, the plaintiff in an
`
`action for patent infringement must be a ‘patentee’ pursuant to
`
`35 U.S.C. §§ 100(d) and 281 . . . .”). “A party may become the
`
`successor in title to the original patentee by assignment, and
`
`then may sue for infringement in its own name.” Drone Techs.,
`
`838 F.3d at 1292 (citing 35 U.S.C. § 261 (“[P]atents, or any
`
`interest therein, shall be assignable in law by an instrument in
`
`writing.”); Morrow v. Microsoft Corp., 499 F.3d 1332, 1339–40
`
`(Fed. Cir. 2007); Propat Int'l Corp. v. RPost, Inc., 473 F.3d
`
`1187, 1189 (Fed. Cir. 2007). However, “if a co-inventor assigns
`
`his or her ownership interest to a third party, the assignee
`
`cannot sue infringers ‘[a]bsent the voluntary joinder of all
`
`co-owners.’” Drone Techs., 838 F.3d at 1292 (quoting Israel Bio-
`
`Eng’g Project v. Amgen, Inc., 475 F.3d 1256, 1264–65 (Fed. Cir.
`
`2007)).
`
`-11-
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`For OptoLum to have prudential standing under § 281, it
`
`must be the sole owner or the co-owner of the ‘028 Patent. If
`
`Dry assigned the entirety of the ‘028 Patent to OptoLum, OptoLum
`
`is the sole owner of the ‘028 Patent and therefore has
`
`prudential standing to enforce that Patent. In order to make
`
`this determination, the court applies Arizona law to determine
`
`whether Baker retained a community property interest in the ‘028
`
`Patent when Dry assigned it to OptoLum.
`
`Under 35 U.S.C. § 261, “patents shall have the attributes
`
`of personal property.” Because Dry received the ‘028 Patent
`
`while he and Baker were living and domiciled in Arizona, Arizona
`
`property law applies. See Enovsys LLC v. Nextel Commc’ns, Inc.,
`
`614 F.3d 1333, 1342 (Fed. Cir. 2010) (noting that “[w]ho has
`
`legal title to a patent is a question of state law” and applying
`
`California community property law to determine whether a party,
`
`who lived in California, owned the patent at issue); see also
`
`Stop the Beach Renourishment, Inc. v. Fla. Dep’t of Envtl.
`
`Prot., 560 U.S. 702, 707 (2010) (“Generally speaking, state law
`
`defines property interests . . . .”). Further, the parties agree
`
`that the ‘028 Patent was subject to Arizona’s community property
`
`laws when it was assigned. (Compare Def.’s Br. (Doc. 191) at 47,
`
`with Pl.’s Resp. (Doc. 213) at 26.)
`
`Ariz. Rev. Stat. Ann. § 25-211 provides that “[a]ll
`
`property acquired by either husband or wife during the marriage
`
`-12-
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`is the community property of the husband and wife except for
`
`property that is . . . [a]cquired by gift, devise or descent.”
`
`Ariz. Rev. Stat. Ann. § 25-214 further provides that “[t]he
`
`spouses have equal management, control and disposition rights
`
`over their community property and have equal power to bind the
`
`community,” and “[e]ither spouse separately may acquire, manage,
`
`control or dispose of community property or bind the community
`
`. . . .” This law also provides that:
`
`joinder of both spouses is required in any of the
`following cases:
`
`1. Any transaction for the acquisition, disposition or
`encumbrance of an interest in real property other than
`an unpatented mining claim or a lease of less than one
`year.
`
`2. Any transaction of guaranty, indemnity or
`suretyship.
`
`3. To bind the community, irrespective of any person's
`intent with respect to that binder, after service of a
`petition for dissolution of marriage, legal separation
`or annulment if the petition results in a decree of
`dissolution of marriage, legal separation or
`annulment.
`
`Ariz. Rev. Stat. § 25-214(C).
`
`Dry was married to his wife when they moved to Arizona in
`
`October 2004. (Dry Dep. (Doc. 191-7) at 8, 10.) The ‘028 Patent
`
`was not issued until July 2007. (Doc. 191-3 at 2.) Because the
`
`‘028 Patent is personal property under federal law, and it was
`
`acquired by Dry during the marriage, it was community property
`
`under Arizona law. See Ariz. Rev. Stat. § 25-211. Further, the
`
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`patent is not real property, nor was the assignment of the ‘028
`
`Patent a “transaction of guaranty, indemnity or suretyship” or a
`
`transaction “[t]o bind the community” after the dissolution of
`
`the marriage. Therefore, either Dry or Baker could separately
`
`dispose of community property, including the patent at issue,
`
`under Ariz. Rev. Stat. Ann. § 25-214.
`
`Dry assigned his interest in the ‘028 Patent in a written
`
`instrument. (Doc. 191-9.) This court finds that this constituted
`
`a valid disposition of community property and that Baker’s
`
`signature was unnecessary because Dry had authority to “control
`
`or dispose of community property.” Ariz. Rev. Stat. § 25-214.
`
`Cree’s argument that Baker’s interest could only be transferred
`
`by written instrument, (Def.’s Reply (Doc. 218) at 11), is
`
`technically correct; it was, but by Dry, as is permitted by
`
`Arizona law.
`
`Thus, when Dry assigned his interest in the ‘028 Patent to
`
`OptoLum in 2016, Baker did not retain an interest in the ‘028
`
`Patent. See U.S. Bank NA v. Varela, No. CV-15-02575-PHX-DLR,
`
`2016 WL 7178668, at *3 n.6 (D. Ariz. Dec. 9, 2016) (observing
`
`the plaintiff’s argument that the contract at issue was not
`
`valid because it was not also signed by the other spouse was
`
`without merit under A.R.S. § 25-214); Wasserman v. Moya, No.
`
`1 CA–CV 12–0509, 2013 WL 3893322, at *3–4 (Ariz. Ct. App.
`
`July 25, 2013) (finding that the husband could dispose of
`
`-14-
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`property bought with community funds and the wife was not
`
`entitled to one-half the value of the disposed property).
`
`In its reply, Cree raises the argument that, in the
`
`assignment, Dry identifies himself as “Joel Dry, an individual,”
`
`thus “[a]s ‘an individual,’ Mr. Dry acted in his individual
`
`capacity, not purporting to represent Martha [Baker] of the
`
`community interest.”4 (Def.’s Reply (Doc. 218) at 11.) Cree
`
`further argues that “[t]he assignment makes no mention of any
`
`rights held by Martha [Baker]. Because Martha [Baker] held an
`
`interest in the ‘028 patent, and those rights were never
`
`identified – directly or indirectly – in the assignment
`
`document, the ownership interest of Martha [Baker] was never
`
`transferred to OptoLum.” (Id.) The court finds these arguments
`
`unconvincing. First, Cree offers no legal authority for either
`
`argument. Second, as OptoLum points out in its surreply, because
`
`Joel Dry designated himself as “an individual,” “it is clear
`
`
`4 The court finds that this constitutes a new argument for
`the sake of Plaintiff’s motion to file a surreply. Parties do
`not have the right to file a surreply. See Johnson v. Rinaldi,
`No. 1:99CV170, 2001 WL 293654, at *7 (M.D.N.C. Feb. 16, 2001)
`(noting that the “[c]ourt knows of no authority establishing a
`right to file a surreply”). Generally, however, courts allow a
`party to file a surreply when fairness dictates based on new
`arguments raised in the previous reply. See United States v.
`Falice, No. 1:04CV878, 2006 WL 2488391 (M.D.N.C. Aug. 25, 2006);
`Khoury v. Meserve, 268 F. Supp. 2d 600, 605–06 (D. Md. 2003).
`Such is the case here; the court will grant Plaintiff’s motion,
`and the court will consider this argument and Plaintiff’s filed
`surreply.
`
`-15-
`
`Case 1:17-cv-00687-WO-JLW Document 230 Filed 09/28/20 Page 15 of 57
`
`

`

`from the language of the assignment as a whole that the notation
`
`‘an individual’ merely identifies Mr. Dry as an individual and
`
`not a corporate or other type of entity.” (Doc. 220-2 at 9.) The
`
`assignment states that Joel Dry “assign[s], transfer[s], and
`
`deliver[s]” to OptoLum “all right, title and interest in and to”
`
`the ‘028 Patent. (Doc. 191-9 at 3.) This language indicates that
`
`Dry assigned all interest to OptoLum, not merely his own. Third,
`
`Cree’s argument that Baker’s interest was not identified in the
`
`assignment is unavailing because there is no requirement under
`
`Arizona law that any lawful disposal of community property must
`
`identify the other spouse’s interest.5
`
`The court finds that Cree has failed to demonstrate that
`
`there is no genuine issue of material fact that Martha Baker
`
`retained an ownership interest in the ‘028 Patent. The court
`
`will deny Cree’s motion for summary judgment on this issue.
`
`
`5 In addition to the instances when the other spouse must be
`joined, “each spouse owes the other certain fiduciary duties.”
`In re Estate of Kirkes, 231 Ariz. 334, 335, 295 P.3d 432, 433
`(2013). While Cree does not address the issue of whether Dry
`breached any fiduciary duty owed to Baker, OptoLum is correct
`that Cree has put forth no evidence that Dry committed a breach
`of fiduciary duty to Baker, which could have rescued Cree’s
`failed argument. See Mezey v. Fioramonti, 204 Ariz. 599, 608, 65
`P.3d 980, 989 (2003) (“Husband had no absolute right to manage
`or dispose of community property under A.R.S. § 25–214(C). A
`husband's statutory rights to act with respect to marital
`property remain subject to his fiduciary duty to his wife's
`interest in the property.”).
`
`
`-16-
`
`Case 1:17-cv-00687-WO-JLW Document 230 Filed 09/28/20 Page 16 of 57
`
`

`

`The court will next determine whether there is a genuine
`
`issue of material fact as to whether the ‘028 Patent violated
`
`the written description requirement under 35 U.S.C. § 112.
`
`B.
`
`The ‘028 Patent and the Written Description
`Requirement under 35 U.S.C. § 112(a)
`
`
`Cree argues that the ‘028 Patent fails to satisfy the
`
`written description requirement of 35 U.S.C. § 112(a) and thus
`
`is invalid. Cree argues OptoLum violated the implicit rule
`
`underlying § 112 that “the scope of the right to exclude as
`
`expressed in the claims must not be greater than what the
`
`inventor chose to disclose to the public in the patent
`
`specification.” (Def.’s Br. (Doc. 191) at 16.)
`
`Specifically, Cree observes that the ‘303 Patent claims
`
`contain the phrase “light emitting diodes,” while the ‘028
`
`Patent merely replaces this phrase with “solid state light
`
`sources” (“SSLSs”) in its claims. (Id. at 15.)
`
`Cree makes three sub-arguments in support of this position.
`
`First, it uses the testimony of OptoLum’s expert, Mr. A. Brent
`
`York, to demonstrate that the specification only includes LEDs.
`
`Second, Cree argues that Mr. York’s opinion and the ‘028 Patent
`
`prosecution history, upon which OptoLum relies in making its own
`
`argument, are making obviousness arguments and thus cannot
`
`create a genuine issue of material fact. Third, Cree contends
`
`that, because the specification does not contain the words
`
`-17-
`
`Case 1:17-cv-00687-WO-JLW Document 230 Filed 09/28/20 Page 17 of 57
`
`

`

`“solid state light sources,” it must fail to meet the written
`
`description requirement.
`
`The court interprets Cree’s argument as follows: given
`
`SSLSs are a broader category of light sources, of which LEDs are
`
`a subset, OptoLum failed to “disclose or mention” another type
`
`of light source other than LEDs in the ‘028 Patent claiming a
`
`“solid state light source.” Therefore, because, in substance,
`
`the ‘028 Patent discloses only LEDs, OptoLum’s ‘028 Patent claim
`
`reaches too far beyond its substance in claiming an SSLS, which
`
`is broader than an LED; instead, OptoLum may only claim an LED
`
`light source in the ‘028 Patent.
`
`Because the court finds that the testimony and opinion of
`
`OptoLum’s expert create a genuine issue of material fact
`
`regarding what a person of ordinary skill in the art would find
`
`is disclosed in the ‘028 Patent specification, the court will
`
`deny Cree’s motion for summary judgment on this issue.
`
`1.
`
`Written Description Requirement Background
`
`35 U.S.C. § 112(a) provides that a patent:
`
`shall contain a written description of the invention,
`and of the manner and process of making and using it,
`in such full, clear, concise, and exact terms as to
`enable any person skilled in the art to which it
`pertains, or with which it is most nearly connected,
`to make and use the same, and shall set forth the best
`mode contemplated by the inventor or joint inventor of
`carrying out the invention.
`
`
`-18-
`
`Case 1:17-cv-00687-WO-JLW Document 230 Filed 09/28/20 Page 18 of 57
`
`

`

`35 U.S.C. § 112(a); see Festo Corp. v. Shoketsu Kinzoku Kogyo
`
`Kabushiki Co., 535 U.S. 722, 731 (2002). Whether a patent
`
`complies with the written description requirement is a question
`
`of fact determined as of the time of filing. See Ariad Pharm.,
`
`Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351, 1355 (Fed. Cir.
`
`2010) (en banc).
`
`In order to satisfy the written description requirement,
`
`the written description must “clearly allow persons of ordinary
`
`skill in the art [a Person of Skill in the Art (“POSA”)] to
`
`recognize that [the inventor] invented what is claimed. In other
`
`words, the applicant must ‘convey with reasonable clarity to
`
`those skilled in the art that, as of the filing date sought, he
`
`or she was in possession of the invention.’” Ariad Pharm., Inc.
`
`v. Eli Lilly & Co., 560 F.3d 1366, 1371-72 (Fed. Cir. 2009)
`
`(internal quotation marks omitted) (quoting In re Alton, 76 F.3d
`
`1168, 1172 (Fed. Cir. 1996) and Vas-Cath Inc. v. Mahurkar, 935
`
`F.2d 1555, 1563–64 (Fed. Cir. 1991)). A patent may be invalid
`
`for failing the written description requirement on its face. See
`
`Univ. of Rochester v. G.D. Searle & Co., 358 F.3d 916, 927 (Fed.
`
`Cir. 2004) (“[A] patent can be held invalid for failure to meet
`
`the written description requirement, based solely on the
`
`language of the patent specification.”). “However, the failure
`
`of the specification to specifically mention a limitation that
`
`later appears in the claims is not a fatal one when one skilled
`
`-19-
`
`Case 1:17-cv-00687-WO-JLW Document 230 Filed 09/28/20 Page 19 of 57
`
`

`

`in the art would recognize upon reading the specification that
`
`the new language reflects what the specification shows has been
`
`invented.” All Dental Prodx, LLC v. Advantage Dental Prods.,
`
`Inc., 309 F.3d 774, 779 (Fed. Cir. 2002).
`
`Despite being a question of fact, the issue of invalidity
`
`for lack of written description may be resolved on summary
`
`judgment. See Carnegie Mellon Univ. v. Hoffmann-La Roche Inc.,
`
`541 F.3d 1115, 1126 (Fed. Cir. 2008) (affirming summary judgment
`
`of invalidity for lack of written description). But competing
`
`testimony from experts may create a genuine issue of material
`
`fact as to what a POSA would recognize as disclosed in a
`
`specification. See Enzo Biochem, Inc. v. Gen-Probe Inc., 323
`
`F.3d 956, 966, 970 (Fed. Cir. 2002); Univ. of S. Fla. v. United
`
`States, 146 Fed. Cl. 274, 294 (2019).
`
`2.
`
`Patent Specification and Claim Language of the
`‘303 Patent and the ‘028 Patent
`
`
`
`The patent specification of the ‘303 Patent is as follows:
`
`The exterior surface of elongate heat sink has a
`
`plurality of Light Emitting Diodes disposed thereon.
`Each LED in the illustrative embodiment comprises a
`white light emitting LED of a type that provides a
`high light output. Each LED also generates significant
`amount of heat that must be dissipated to avoid
`thermal destruction of the LED. By combining a
`plurality of LEDs on elongate heat sink, a high light
`output light source that may be used for general
`lighting is provided.
`
`
`
`
`. . . .
`
`-20-
`
`Case 1:17-cv-00687-WO-JLW Document 230 Filed 09/28/20 Page 20 of 57
`
`

`

`As will be appreciated by those skilled in the
`
`art, the principles of the invention are not limited
`to the use of light emitting diodes that emit white
`light. Different colored light emitting diodes may be
`used to produce monochromatic light or to produce
`light that is the combination of different colors.
`
` (‘303 Patent (Doc. 191-2) col. 3 lines 11-19; col. 4 lines
`
`10-15 (emphasis added).)
`
`
`
`The ‘303 Patent claims:
`
`A light source comprising:
`
`
`an elongate thermally conductive member having an
`outer surface;
`a plurality of light emitting diodes carried on said
`elongate member outer surface at least some of
`said light emitting diodes being disposed in a
`first plane and others of said light emitting
`diodes being disposed in a second plane not
`coextensive with said first plane . . . .
`
` (Id. col. 4 lines 25-32 (emphasis added).)
`
`
`
`The patent specification of the ‘028 Patent is as follows:
`
`The exterior surface of elongate heat sink has a
`
`plurality of Light Emitting Diodes disposed thereon.
`Each LED in the illustrative embodiment comprises a
`white light emitting LED of a type that provides a
`high light output. Each LED also generates significant
`amount of heat that must be dissipated to avoid
`thermal destruction of the LED. By combining a
`plurality of LEDs on elongate heat sink, a high light
`output light source that may be used for gene

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