IN THE UNITED STATES DISTRICT COURT
`FOR THE MIDDLE DISTRICT OF NORTH CAROLINA
`GREENSBORO DIVISION
`)
`)
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`
`Civil Action No.
`17-cv-00687-WO-JLW
`
`OPTOLUM, INC.,
`Plaintiff,
`
`v.
`CREE, INC.,
`Defendant.
`
`
`
`DEFENDANT CREE, INC.’S REPLY POST-HEARING BRIEF REGARDING
`ENSNAREMENT
`Defendant, Cree, Inc. (“Cree”) submits its reply to
`Plaintiff OptoLum, Inc.’s (“OptoLum”) Briefing Regarding
`Ensnarement Hearing (Doc. 296). As explained below, OptoLum
`has failed to meet its burden of proving patentability of the
`range of equivalents it seeks. The Court should thus preclude
`OptoLum from relying on the doctrine of equivalents (“DOE”)
`for their infringement allegations as to the Single Ring
`accused products.
`A.
`OptoLum Does Not Dispute That The Prior Art
`Discloses All Asserted Claim Limitations Except
`“Outer-Surface Heat Dissipation Protrusions”
`OptoLum’s post-hearing brief arguments about the prior
`art significantly narrow this Court’s inquiry. OptoLum
`offers no argument rejecting the teachings of the prior art
`
`
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`Case 1:17-cv-00687-WO-JLW Document 303 Filed 10/20/21 Page 1 of 14
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`
`FOR THE MIDDLE DISTRICT OF NORTH CAROLINA
`GREENSBORO DIVISION
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`Civil Action No.
`17-cv-00687-WO-JLW
`
`OPTOLUM, INC.,
`Plaintiff,
`
`v.
`CREE, INC.,
`Defendant.
`
`
`
`DEFENDANT CREE, INC.’S REPLY POST-HEARING BRIEF REGARDING
`ENSNAREMENT
`Defendant, Cree, Inc. (“Cree”) submits its reply to
`Plaintiff OptoLum, Inc.’s (“OptoLum”) Briefing Regarding
`Ensnarement Hearing (Doc. 296). As explained below, OptoLum
`has failed to meet its burden of proving patentability of the
`range of equivalents it seeks. The Court should thus preclude
`OptoLum from relying on the doctrine of equivalents (“DOE”)
`for their infringement allegations as to the Single Ring
`accused products.
`A.
`OptoLum Does Not Dispute That The Prior Art
`Discloses All Asserted Claim Limitations Except
`“Outer-Surface Heat Dissipation Protrusions”
`OptoLum’s post-hearing brief arguments about the prior
`art significantly narrow this Court’s inquiry. OptoLum
`offers no argument rejecting the teachings of the prior art
`
`
`
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`Case 1:17-cv-00687-WO-JLW Document 303 Filed 10/20/21 Page 1 of 14
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`as to every asserted claim. Instead, OptoLum focuses strictly
`on claim 2 of the ’303 patent and claim 1 of the ’028 patent.
`As to those claims, it is undisputed that the prior art
`teaches virtually every element of the claims. OptoLum’s
`sole contention about the prior art disclosures rests on the
`limitation “outer surface heat dissipation protrusions.” The
`narrow question before the Court therefore is: Has OptoLum
`carried its burden to show that the “outer-surface heat
`dissipation protrusions” limitation is not obvious over the
`identified prior art. The evidentiary record demonstrates
`that the answer is no.
`B.
`It Is Undisputed That The Prior Art Discloses Heat
`Dissipation Protrusions
`Contrary to OptoLum’s arguments, both the Arndt and
`Abdelhafez references teach or make obvious outer-surface
`heat dissipation protrusions.
`1.
`Arndt
`The prosecution history of the ’028 patent makes clear
`that Arndt discloses one or more heat dissipation
`protrusions. The examiner found Arndt disclosed that
`limitation and cited to the figure below.
`
`
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`OptoLum’s expert conceded that the examiner found Arndt
`disclosed an “elongate thermally conductive member comprising
`one or more heat dissipation protrusions.” Hrg. at 129:12-
`22. It is undisputed, therefore, that the prior art disclosed
`heat dissipation protrusions. The only added limitation is
`the location of the heat dissipation protrusions; namely,
`that at least one be located on the outer surface.
`Concerning
`the
`outer-surface
`disclosures,
`Dr. Bretschneider testified that Arndt’s teachings “include[]
`the protrusions on the outside of the heat sink.” Hrg. at
`161:3-8. In his testimony, he focused on Arndt’s Figure 1A
`(below).
`
`
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`Dr. Bretschneider testified that element 2 represents
`the “LED package body” while element 2a represents the
`“electrical leads that come out of the LED package.” Hrg. at
`165. It is undisputed that the LEDs 2, including leads 2a,
`are disclosed as being the same as used in Fig 2B. Dr.
`Bretschneider explained a POSA would understand that the
`metal leads in element 2a “act as heat dissipation
`protrusions” because they “conduct heat” and are “exposed to
`the ambient environment.” Id. A POSA would further
`understand that, when the metal comprising the leads gets
`hot, by operation of the laws of physics, the hot metal’s
`exposure to the air creates a natural convection that
`dissipates rising air. Id.
`OptoLum disputes Dr. Bretschneider conclusion but,
`significantly, not the physics underlying his reasoning. It
`is undisputed that a POSA would understand that the thermal
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`physics described by Dr. Bretschneider – that the leads (2a)
`used by Arndt which protrude from the outer surface (and
`connect to LEDs 2) create convection and heat dissipation –
`are accurate. That undisputed fact is fatal to OptoLum’s
`arguments. Even OptoLum concedes that “the heat created by
`the LED [disclosed by Arndt] is removed from the package by
`one of the electrical leads.” Doc. 296 at 7 (referring to
`mid-power LEDs); id. at 11 (asserting Arndt used mid-power
`LEDs).
`Dr. Bretschneider’s undisputed testimony about the
`thermal physics of the leads in Arndt discloses the outer-
`surface heat dissipation protrusion limitation. There is no
`record evidence to the contrary. OptoLum, however, contends
`that Dr. Bretschneider is not credible because, according to
`them, neither their experts nor the USPTO considered the leads
`in Arndt to be designed to convect heat. Again, this argument
`is contrary to OptoLum’s assertions that the leads in Arndt
`- mid-power LEDs - are designed to remove “the heat created
`by the LED.” Doc. 296 at 7, 11. The fact that the USPTO
`allowed the claim because the examiner failed to appreciate
`the full scope of the disclosures does not undermine
`Dr. Bretschneider undisputed testimony about heat convection
`
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`from the LED leads.
`2.
`Abdelhafez
`OptoLum contends that convection of Abdelhafez
`element 14 is speculative and irrelevant. Doc. 296 at 28.
`They assert there is no objective evidence that the feature
`is designed for convection. OptoLum again attempts to shift
`their burden of proving patentability. Because it is OptoLum
`who seeks to expand the scope of their claims, they have the
`burden. They must show that a POSA would not understand the
`Abdelhafez disclosure such that the claims are not obvious.
`They have not carried that burden.
`Regardless of OptoLum’s criticisms, Dr. Bretschneider
`explained that element 14 of Abdelhafez acts an outer-surface
`heat dissipation protrusion and would be so understood by a
`POSA. Hrg. at 178. He also testified that “the LED packages
`themselves . . . have protrusions that . . . act as heat
`dissipation members.” Id. Just as with its arguments about
`Arndt, OptoLum does not dispute the thermal physics forming
`the basis of Dr. Bretschneider his conclusions. They attack
`the conclusion but not the physics-based reasoning from which
`a POSA would evaluate the disclosure. Under these undisputed
`facts, OptoLum cannot meet their burden of proof.
`
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`C.
`
`OptoLum Failed Its Burden To Prove That The Norlux
`Hex And Cao Prior Art Are Not Ensnared By The
`Range Of Equivalents It Seeks
`OptoLum’s alleges that the Norlux Hex and Cao do not
`disclose a thermally conductive back. Doc. 296 at 34-35.
`OptoLum is wrong on both references.
`First, OptoLum contends that the Norlux Hex lacks the
`equivalent of a “thermally conductive back” because it
`features porcelain, which is a thermal insulator. This
`argument lacks reliable evidentiary support.
`OptoLum’s expert conceded: (1) that the thickness of
`porcelain affects heat transfer; (2) that he did not examine
`how the thickness of porcelain affects heat conduction;
`(3) that he made no calculations with respect to heat
`transfer; and (4) that he was not a proffered expert on heat
`transfer. Hrg. at 69, 77. The testimony of OptoLum’s expert
`about those the “thermally conductive back” disclosures is
`thus
`unreliable.
`
`It
`cannot
`outweigh
`that
`of
`Dr. Bretschneider, who testified that he actually “calculated
`the thermal resistance” caused by the porcelain and concluded
`it is “miniscule” with “no effective impact” on the
`dissipation of heat. Hrg. at 185:6-187:1. In no uncertain
`terms, Dr. Bretschneider testified that transfer of heat out
`
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`of the back was “the only way [the Norlux Hex] was intended
`to transfer heat.” Id.
`As to Cao, OptoLum cites its expert’s testimony that
`there was “insufficient information to find it discloses the
`direct thermal path” equivalent to the thermally conductive
`back. But the fallacy of OptoLum’s argument is that it
`erroneously shifts the burden to Cree. Cree has offered proof
`that Cao discloses a thermally conductive back. Hrg. at 169-
`170. OptoLum’s inability to refute that evidence underscores
`their failure to meet their burden on this issue.
`D.
`OptoLum’s Motivation To Combine Arguments Ignore
`The Advantages Of The Prior Art References From
`The Perspective Of A POSA
`OptoLum’s contentions about motivation to combine
`completely ignore the realities driving the LED market and
`the advantages of the disclosures of each prior art reference
`from a POSA’s perspective.
`OptoLum contends that the Norlux Hex was not fit for
`outdoor application so a POSA would not have combined it with
`Abdelhafez. Doc. 296 at 29. To the contrary, a POSA would
`have been motivated to combine the design advantages of one
`reference with those of the other to achieve a combined
`superior product. The primary advantage of the Norlux Hex
`
`
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`Case 1:17-cv-00687-WO-JLW Document 303 Filed 10/20/21 Page 8 of 14
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`was that it offered “the most amount of light for any given
`package.” Hrg. at 188. The advantages of increasing lighting
`while lowering labor and cost provided strong incentives in
`the LED market to combine the references. Id.
`OptoLum also contends that a POSA would not combine Cao
`with either Abdelhafez or Arndt because Cao has no disclosure
`about environmental tolerances. That is nothing more than
`speculation based on conjecture about the absence of a
`specific type of disclosure regarding environment, as opposed
`to the advantages reflected in the actual disclosures of the
`prior art. As Dr. Bretschneider testified, the LEDs shown in
`Abdelhafez have a high assembly cost. Hrg. at 179. Cost
`reduction is paramount in the LED industry, and to reduce
`cost, a POSA would be motivated to replace the single-chip
`LEDs with Cao’s multiple-chip LEDs. Id. A POSA would have
`experience in designing and producing fixtures and, based on
`that experience, would know that “cutting your assembly cost
`by two-thirds” would reduce costs while increasing
`reliability. Id.
`Lastly, OptoLum’s argument that it would not be obvious
`to use the Norlux Hex to create white light is directly
`contradicted by their own expert. On cross examination,
`
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`Dr. Steigerwald admitted that the Norlux Hex can produce
`white light. Hrg. at 58:1-9.
`E.
`OptoLum’s Purported Objective Considerations Of
`Non-Obviousness Are Misguided And Do Not Overcome
`The Teachings Of The Prior Art
`Every argument raised by OptoLum with respect to its
`alleged evidence of secondary considerations has been
`addressed in Cree’s opening brief. In short, the indicia of
`secondary considerations is only relevant when there is a
`nexus to the claimed subject matter. That nexus is absent
`here. None of the features - omnidirectionality, form
`factor, cost, etc. – appear in the asserted claims. To avoid
`further repetition, Cree incorporates its opening brief
`responses by reference here.
`F.
`Conclusion
`This Court has all the facts and evidence to resolve the
`legal issue of whether OptoLum has met its burden of proving
`patentability over the entire range of equivalents it seeks.
`By conducting an evidentiary hearing and directing the
`parties to file briefs, this Court has afforded OptoLum every
`opportunity to meet their burden. OptoLum has failed to do
`so. they should thus be precluded from relying on DOE to
`prove infringement of the Single Ring bulbs. Cree
`
`
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`respectfully requests that the Court enter an order to that
`effect to avoid the risks of confusing the jury with highly
`technical testimony that is irrelevant to the jury’s fact-
`finding function.
`
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`Respectfully submitted on October 20, 2021.
`
`
`
`/s/ Blaney Harper
`Blaney Harper
`JONES DAY
`51 Louisiana Avenue, N.W.
`Washington, D.C. 20001-2113
`Telephone: (202) 879-3939
`Facsimile: (202) 626-1700
`Email: bharper@jonesday.com
`/s/ Peter D. Siddoway
`Peter D. Siddoway
`NC State Bar No. 45,647
`SAGE PATENT GROUP
`4120 Main at North Hills St.,
`Suite 230
`Raleigh, NC, 27609
`Telephone: (984) 219-3369
`Facsimile: (984) 538-0416
`Email: psiddoway@sagepat.com
`
`Attorneys for Defendant Cree, Inc.
`
`
`
`
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`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE MIDDLE DISTRICT OF NORTH CAROLINA
`GREENSBORO DIVISION
`
`OPTOLUM, INC.,
`Plaintiff,
`
`Civ. Action No. 1:17-cv-00687
`
`v.
`CREE, INC.,
`Defendant.
`
`
`CERTIFICATE OF WORD COUNT
`I hereby certify that the foregoing complies with the
`limitations set forth in Local Rule 7.3(d) by not exceeding
`3,125 words, including the body of the brief, headings and
`footnotes, but excluding the caption, signature lines,
`certificate of service, cover page, and index.
`/s/ Peter D. Siddoway
`Peter D. Siddoway
`
`
`
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`Case 1:17-cv-00687-WO-JLW Document 303 Filed 10/20/21 Page 13 of 14
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`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE MIDDLE DISTRICT OF NORTH CAROLINA
`
`OPTOLUM, INC.,
`Plaintiff,
`
`Civ. Action No. 1:17-cv-00687
`
`v.
`CREE, INC.,
`Defendant.
`
`
`CERTIFICATE OF SERVICE
`I hereby certify that on October 20, 2021, I
`electronically filed the foregoing with the Clerk of the Court
`using the CM/ECF system, which will send notification to
`counsel of record.
`
`/s/ Peter D. Siddoway
`Peter D. Siddoway
`
`
`
`- 1 -
`Case 1:17-cv-00687-WO-JLW Document 303 Filed 10/20/21 Page 14 of 14
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`
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