Civil Action No. 1:17-cv-
`00687-WO-JLW
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`
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`Defendant.
`
`OPTOLUM, INC.,
`
`
`Plaintiff,
`v.
`
`CREE, INC.,
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE MIDDLE DISTRICT OF NORTH CAROLINA
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`DEFENDANT CREE, INC.’S MOTION FOR JUDGMENT AS A MATTER OF
`LAW UNDER FEDERAL RULE OF CIVIL PROCEDURE 50(a) REGARDING
`LACK OF WILLFULNESS
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`Case 1:17-cv-00687-WO-JLW Document 323 Filed 11/02/21 Page 1 of 16
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`00687-WO-JLW
`
`
`
`Defendant.
`
`OPTOLUM, INC.,
`
`
`Plaintiff,
`v.
`
`CREE, INC.,
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE MIDDLE DISTRICT OF NORTH CAROLINA
`
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`)
`)
`)
`)
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`)
`)
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`
`
`DEFENDANT CREE, INC.’S MOTION FOR JUDGMENT AS A MATTER OF
`LAW UNDER FEDERAL RULE OF CIVIL PROCEDURE 50(a) REGARDING
`LACK OF WILLFULNESS
`
`
`
`
`Case 1:17-cv-00687-WO-JLW Document 323 Filed 11/02/21 Page 1 of 16
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`TABLE OF CONTENTS
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`Page
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`I. STATEMENT OF THE NATURE OF THE MATTER ................ 1
`II. STATEMENT OF FACTS ................................... 1
`III. STATEMENT OF QUESTION PRESENTED ...................... 3
`IV. LEGAL STANDARD ....................................... 3
`V. ARGUMENT ............................................. 5
`A. No Reasonable Jury Could Find Willfulness ....... 5
`1. OptoLum has Presented No Evidence that
`Cree Knew of the Asserted Patents .......... 5
`2. OptoLum has Presented No Evidence that
`Cree Knew or Should Have Known that it
`Infringed the Asserted Patents ............. 6
`3. Allegations Regarding the Unasserted ‘536
`Patent Do Not Establish that Cree Had
`Knowledge of the Asserted Patents .......... 8
`VI. CONCLUSION .......................................... 10
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`-i-
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`Case 1:17-cv-00687-WO-JLW Document 323 Filed 11/02/21 Page 2 of 16
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`TABLE OF AUTHORITIES
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`Page
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`CASES
`Arctic Cat Inc. v. Bombardier Recreational Prod.
`Inc.,
`876 F.3d 1350 (Fed. Cir. 2017) .......................... 7
`Corephotonics, Ltd. v. Apple, Inc.,
`No. 17-CV-06457-LHK, 2018 WL 4772340 (N.D. Cal.
`Oct. 1, 2018) ........................................... 9
`
`Eko Brands, LLC v. Adrian Rivera Maynez
`Enterprises, Inc.,
`946 F.3d 1367 (Fed. Cir. 2020) .......................... 5
`Evonik Degussa GmbH v. Materia, Inc.,
`305 F. Supp. 3d 563 (D. Del. 2018) ...................... 5
`Finjan, Inc. v. Juniper Networks, Inc.,
`2018 WL 905909 (N.D. Cal. Feb. 14, 2018) ................ 9
`Halo Elecs., Inc. v. Pulse Elecs., Inc.,
`136 S. Ct. 1923 (2016) ............................... 6, 9
`LML Holdings, Inc. v. Pac. Coast Distrib. Inc.,
`No. 11-CV-06173 YGR, 2012 WL 1965878 (N.D. Cal.
`May 30, 2012) ........................................... 8
`MONEC Holding AG v. Motorola Mobility, Inc.,
`897 F. Supp. 2d 225 (D. Del. 2012) ...................... 8
`Norian Corp. v. Stryker Corp.,
`363 F.3d 1321 (Fed. Cir. 2004) .......................... 7
`Russell v. Absolute Collection Servs., Inc.,
`763 F.3d 385 (4th Cir. 2014) ............................ 4
`Va. Innovation Scis., Inc. v. Samsung Elecs. Co.,
`983 F. Supp. 2d 700 (E.D. Va. 2013) ..................... 8
`-ii-
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`Case 1:17-cv-00687-WO-JLW Document 323 Filed 11/02/21 Page 3 of 16
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`TABLE OF AUTHORITIES
`(continued)
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`Page
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`Vasudevan Software, Inc. v. TIBCO Software Inc.,
`2012 WL 1831543 (N.D. Cal. May 18, 2012) ................ 9
`Weisgram v. Marley Co.,
`528 U.S. 440 (2000) ..................................... 4
`Wheatley v. Wicomico Cnty., Maryland,
`390 F.3d 328 (4th Cir. 2004) ............................ 4
`Windy City Innovations, LLC v. Microsoft Corp.,
`193 F.Supp.3d 1109 (N.D. Cal. 2016) ..................... 9
`OTHER AUTHORITIES
`9B Fed. Prac. & Proc. Civ. § 2524 (3d ed. 2011) ........... 4
`Federal Rule of Civil Procedure 50(a) .................. 1, 4
`U.S. Patent No. 6,573,536 ........................ 3, 6, 8, 9
`U.S. Patent Nos. 6,831,303 ................................ 1
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`-iii-
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`Case 1:17-cv-00687-WO-JLW Document 323 Filed 11/02/21 Page 4 of 16
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`I.
`
`STATEMENT OF THE NATURE OF THE MATTER
`Defendant Cree, Inc. (“Cree”) moves under Federal Rule
`of Civil Procedure 50(a) for judgment as a matter of law
`(“JMOL”) on the issue of lack of willfulness. Plaintiff
`OptoLum, Inc. (“OptoLum”) presented no evidence that Cree
`willfully infringed U.S. Patent Nos. 6,831,303 and
`7,242,028 (collectively, “the Asserted Patents”). OptoLum
`has thus failed to meet its burden to establish willfulness
`by a preponderance of the evidence and no reasonable jury
`could find that Cree willfully infringed the Asserted
`Patents. Accordingly, the Court should grant JMOL in favor
`of Cree on this issue.
`II. STATEMENT OF FACTS
`At the close of OptoLum’s evidence, OptoLum had
`presented no evidence to support its claim of willfulness.
`The only evidence OptoLum presented that could possibly
`relate to willfulness was certain trial testimony of Joel
`Dry. No other witnesses offered any evidence of the state
`of mind of any individual at Cree regarding the Asserted
`Patents.
`Mr. Dry testified at trial that he spoke on a
`roundtable discussion at the Blue 2003 Conference in
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`Case 1:17-cv-00687-WO-JLW Document 323 Filed 11/02/21 Page 5 of 16
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`Dallas. October 26th Unedited Tr. 52:16, 55:6-7. Mr. Dry
`testified that, after the roundtable he spoke to John
`Edmonds, one of the founders of Cree. Id. at 55:5-14,
`54:19-21. According to Mr. Dry, during those discussions,
`Mr. Edmonds looked at Mr. Dry’s BL-800 prototype, discussed
`the prototype with Mr. Dry (although Mr. Dry provided no
`details of the scope of this discussion), and gave Mr. Dry
`his business card. Id. at 55:17-56:11, 113:1-15.
`Mr. Dry admitted that, while he may have told Mr.
`Edmond that OptoLum “had received a patent,” he likely did
`not “mention[ the patent] by name, only that we had
`received a patent.” Id. at 114:15-19. Mr. Dry further
`admitted that he had no conversations with Mr. Edmond after
`the Blue 2003 Conference.1 Id. at 114:20-115:1.
`Further, Mr. Dry testified that the Asserted Patents
`did not exist at the time of the Blue 2003 Conference so he
`could not have identified the Asserted Patents to Mr.
`
`
`1 Mr. Dry also testified that, at the Blue 2004
`Conference in Taiwan, Mr. Dry gave a speech, October 26th
`Unedited Tr. 58:19-23, and “said hello” to Charles Swoboda,
`the CEO of Cree at the time, id. at 59:9-12. OptoLum’s
`counsel conceded that OptoLum “can’t prove that Mr. Swoboda
`heard [Mr. Dry’s] speech [at the conference] or anything
`else.” Id. at 65:6-8.
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`-2-
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`Case 1:17-cv-00687-WO-JLW Document 323 Filed 11/02/21 Page 6 of 16
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`Edmond. Id. at 114:9-11. The only patent that OptoLum
`owned at the time was the unasserted U.S. Patent No.
`6,573,536 (“the ‘536 patent”). Mr. Dry also testified that
`he was familiar with and admired Cree as a “leader in LEDs”
`at the time of the Blue 2003 Conference. Id. at 55:1,
`56:6-7.
`The record evidence shows that Cree’s alleged
`infringement began on March 1, 2013, in a highly publicized
`product release. Id. at 79:15-18, 80:9-11. Yet, although
`Mr. Dry testified that he was well aware of Cree, id. at
`80:16, OptoLum did not give Cree any notice of the alleged
`infringement until it brought suit against Cree on November
`6, 2016, id. at 81:14-16.
`III. STATEMENT OF QUESTION PRESENTED
`Whether, in light of the evidence that OptoLum
`presented at trial and the authority provided herein, a
`reasonable jury would have no legally sufficient
`evidentiary basis to find that Cree willfully infringed the
`Asserted Patents.
`IV. LEGAL STANDARD
`Judgment as a matter of law is appropriate where “a
`party has been fully heard on an issue during a jury trial
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`-3-
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`Case 1:17-cv-00687-WO-JLW Document 323 Filed 11/02/21 Page 7 of 16
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`and the court finds that a reasonable jury would not have a
`legally sufficient evidentiary basis to find for the party
`on that issue.” Fed. R. Civ. P. 50(a)(1); Russell v.
`Absolute Collection Servs., Inc., 763 F.3d 385, 391 (4th
`Cir. 2014). “Such a motion is properly granted if the
`nonmoving party failed to make a showing on an essential
`element of his case with respect to which he had the burden
`of proof.” Wheatley v. Wicomico Cnty., Maryland, 390 F.3d
`328, 332 (4th Cir. 2004) (internal citations and quotations
`omitted).
`Rule 50(a) allows the trial court to remove issues from
`the jury's consideration “when the facts are sufficiently
`clear that the law requires a particular result.” Weisgram
`v. Marley Co., 528 U.S. 440, 448 (2000) (internal
`quotations omitted). “The question is not whether there is
`literally no evidence supporting the party against whom the
`motion is directed but whether there is evidence upon which
`the jury might reasonably find a verdict for that party.”
`9B Fed. Prac. & Proc. Civ. § 2524 (3d ed. 2011).
`
`-4-
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`Case 1:17-cv-00687-WO-JLW Document 323 Filed 11/02/21 Page 8 of 16
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`V.
`
`ARGUMENT
`No Reasonable Jury Could Find Willfulness
`A.
`On the record evidence here, no reasonable jury could
`find that Cree willfully infringed the Asserted Patents.
`To establish willfulness, OptoLum must prove by a
`preponderance of the evidence that Cree’s infringement was
`“deliberate or intentional.” Eko Brands, LLC v. Adrian
`Rivera Maynez Enterprises, Inc., 946 F.3d 1367, 1378 (Fed.
`Cir. 2020). OptoLum’s evidence, even if accepted as true,
`establishes no more than that one Cree employee may have
`had knowledge that OptoLum had an unidentified, non-
`asserted patent related to OptoLum’s BL-800 prototype in
`2003. Based on that evidence, no reasonable jury could
`find that Cree’s infringement was deliberate or
`intentional. OptoLum, therefore, has failed to establish
`willfulness as a matter of law.
`OptoLum has Presented No Evidence that Cree
`1.
`Knew of the Asserted Patents
`Willfulness requires evidence that the accused
`infringer had knowledge of the patents and of infringement.
`See Evonik Degussa GmbH v. Materia, Inc., 305 F. Supp. 3d
`563, 577 (D. Del. 2018) (“Willfulness necessarily involves
`knowledge of the patent and of infringement.”). Yet Mr.
`-5-
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`Case 1:17-cv-00687-WO-JLW Document 323 Filed 11/02/21 Page 9 of 16
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`Dry’s testimony cannot establish that Mr. Edmond obtained
`knowledge of the Asserted Patents.
`OptoLum’s evidence, at most, establishes that one Cree
`employee may have had knowledge that OptoLum owned an
`unidentified patent related to OptoLum’s BL-800 prototype.
`Mr. Dry could not, and did not, testify that he identified
`the ‘536 patent to Mr. Edmond. Mr. Dry admitted that, at
`most, he may have told Mr. Edmond that OptoLum owned a
`patent related to its prototype. Mr. Dry did not identify
`the patent number to Mr. Edmond. Nor did Mr. Dry testify
`that he described the scope of OptoLum’s patent to Mr.
`Edmond. No reasonable jury, therefore, could find that
`Cree had knowledge of the Asserted Patents.
`OptoLum has Presented No Evidence that Cree
`2.
`Knew or Should Have Known that it Infringed
`the Asserted Patents
`
`Even if Mr. Dry’s testimony could establish that Mr.
`Edmond knew of the ‘536 patent, knowledge of a patent is
`not enough, on its own, to support a finding of willful
`infringement. See Halo Elecs., Inc. v. Pulse Elecs., Inc.,
`136 S. Ct. 1923, 1936 (2016) (Breyer, J., concurring)
`(“[T]he Court’s references to ‘willful misconduct’ do not
`mean that a court may award enhanced damages simply because
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`-6-
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`Case 1:17-cv-00687-WO-JLW Document 323 Filed 11/02/21 Page 10 of 16
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`the evidence shows that the infringer knew about the patent
`and nothing more.” (emphasis in original)); Norian Corp. v.
`Stryker Corp., 363 F.3d 1321, 1332 (Fed. Cir. 2004)
`(“Willful infringement is not established by the simple
`fact of infringement, even though [the infringer]
`stipulated that it had knowledge of the [] patents.”).
`Willfulness requires evidence that the accused
`infringer knew of the asserted patents and “acted despite a
`risk of infringement that was ‘either known or so obvious
`that it should have been known to the accused infringer.’”
`Arctic Cat Inc. v. Bombardier Recreational Prod. Inc., 876
`F.3d 1350, 1371 (Fed. Cir. 2017).
`Here, OptoLum has never alleged nor provided any
`evidence that Cree knew or should have known that its
`conduct amounted to infringement of the Asserted Patents.
`Instead, the evidence has shown that, despite Cree’s highly
`publicized release of the accused bulb in 2013 and Mr.
`Dry’s admitted familiarity with Cree, October 26th Unedited
`Tr. at 55:1, 56:6-7, 80:14-16, OptoLum did not give Cree
`any notice of its infringement until OptoLum brought suit
`against Cree three-and-one-half years after the release of
`the accused bulb, id. at 81:14-16.
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`-7-
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`Case 1:17-cv-00687-WO-JLW Document 323 Filed 11/02/21 Page 11 of 16
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`3.
`
`Allegations Regarding the Unasserted ‘536
`Patent Do Not Establish that Cree Had
`Knowledge of the Asserted Patents
`Finally, OptoLum’s argument that knowledge of the
`unasserted and abandoned ‘536 patent establishes knowledge
`of the Asserted Patents is wrong. Willfulness requires
`evidence that Cree had “knowledge of the actual patents at
`issue.” LML Holdings, Inc. v. Pac. Coast Distrib. Inc.,
`No. 11-CV-06173 YGR, 2012 WL 1965878, at *4 (N.D. Cal. May
`30, 2012).
`Evidence of knowledge of a parent patent, on its own,
`does not support a finding of knowledge of the
`continuations from that patent. See Va. Innovation Scis.,
`Inc. v. Samsung Elecs. Co., 983 F. Supp. 2d 700, 712 (E.D.
`Va. 2013) (“The allegation that Defendants knew or should
`have known of these patents simply from their knowledge of
`the ’492 patent, from which they are continuations, is not
`a reasonable inference.”); MONEC Holding AG v. Motorola
`Mobility, Inc., 897 F. Supp. 2d 225, 232 (D. Del. 2012)
`(explaining that there is no authority indicating that
`knowledge of a related patent is equivalent to knowledge of
`the asserted patent, “and the relevant case law suggests
`that drawing such an inference is too tenuous even at the
`
`-8-
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`Case 1:17-cv-00687-WO-JLW Document 323 Filed 11/02/21 Page 12 of 16
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`pleading stage”); Vasudevan Software, Inc. v. TIBCO
`Software Inc., 2012 WL 1831543, at *3 (N.D. Cal. May 18,
`2012) (rejecting suggestion that knowledge of patent in
`suit may be inferred from alleged awareness of parent
`patent).2
`OptoLum has never explained, nor provided any evidence
`explaining, how an allegation that Cree had knowledge of
`the surrendered and unasserted ‘536 patent could establish
`Cree’s knowledge of the Asserted Patents. Evidence of
`Cree’s alleged knowledge of the ‘536 patent, therefore,
`cannot establish Cree’s knowledge of the Asserted Patents.
`
`
`2 Indeed, multiple courts, post-Halo, have held that
`knowledge of related patents is not sufficient to establish
`knowledge of asserted patents. See, e.g., Finjan, Inc. v.
`Juniper Networks, Inc., 2018 WL 905909, at *3 (N.D. Cal.
`Feb. 14, 2018) (finding that knowledge of a related patent
`was not sufficient to establish willfulness); Windy City
`Innovations, LLC v. Microsoft Corp., 193 F.Supp.3d 1109,
`1117 (N.D. Cal. 2016) (failing to find knowledge of patent-
`in-suit because defendant only had actual knowledge
`regarding the patent application of the asserted patent and
`another non-asserted patent); see also Corephotonics, Ltd.
`v. Apple, Inc., No. 17-CV-06457-LHK, 2018 WL 4772340, at *8
`(N.D. Cal. Oct. 1, 2018) (“Indeed, it has been well-
`established both before and after the Halo decision that
`knowledge of a pending patent application does not confer
`knowledge of an existing patent.”).
`-9-
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`Case 1:17-cv-00687-WO-JLW Document 323 Filed 11/02/21 Page 13 of 16
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`VI. CONCLUSION
`At the close of OptoLum’s evidence, OptoLum had
`presented no evidence that Cree deliberately or
`intentionally infringed the Asserted Patents. OptoLum has
`failed as a matter of law to meet its burden of proving
`willfulness by a preponderance of the evidence. No
`reasonable jury could find that Cree willfully infringed
`the Asserted Patents. Accordingly, the Court should grant
`JMOL in favor of Cree as to lack of willfulness.
`
`Dated: November 1, 2021 Respectfully submitted,
`
`By: /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. 45647
`SAGE PATENT GROUP
`4120 Main at North Hills St.,
`Suite 230
`Raleigh, NC, 27609
`Telephone: 984-219-3358
`Facsimile: (984) 538-0416
`Email: psiddoway@sagepat.com
`
`Attorneys for Defendant Cree, Inc.
`
`
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`-10-
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`Case 1:17-cv-00687-WO-JLW Document 323 Filed 11/02/21 Page 14 of 16
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`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE MIDDLE DISTRICT OF NORTH CAROLINA
`
`
`OPTOLUM, INC.,
`Plaintiff,
`
`Civil Action No.
`1:17-cv-00687
`
`
`
`v.
`CREE, INC.,
`Defendant.
`CERTIFICATE OF WORD COUNT
`I hereby certify that Defendant Cree, Inc.’s Motion for
`Judgment As a Matter of Law Under Federal Rule of Civil
`Procedure 50(a) Regarding Lack of Willfulness complies with
`the limitations set forth in Local Rule 7.3(d) by not
`exceeding 6,250 words, including the body of the brief,
`headings and footnotes, but excluding the caption,
`signature lines, certificate of service, and cover page or
`index.
`
`
`/s/ Peter D. Siddoway
`Peter D. Siddoway
`
`
`
`Case 1:17-cv-00687-WO-JLW Document 323 Filed 11/02/21 Page 15 of 16
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`CERTIFICATE OF SERVICE
`I hereby certify that on November 2, 2021, I
`electronically filed the foregoing with the Clerk of Court
`for the United States District Court for the Middle
`District of North Carolina using the CM/ECF Filing System,
`which will send notification via electronic means to all
`counsel of record.
`
`
`
`/s/ Peter D. Siddoway
`Peter D. Siddoway
`NC State Bar No. 45647
`SAGE PATENT GROUP
`4120 Main at North Hills St.,
`Suite 230
`Raleigh, NC, 27609
`Telephone: 984-219-3358
`Facsimile: (984) 538-0416
`Email: psiddoway@sagepat.com
`
`
`
`Case 1:17-cv-00687-WO-JLW Document 323 Filed 11/02/21 Page 16 of 16
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