IN THE UNITED STATES DISTRICT COURT
`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 MOTION FOR JUDGMENT AS A MATTER OF
`LAW UNDER FEDERAL RULE OF CIVIL PROCEDURE 50(A) REGARDING
`ENSNAREMENT
`
`
`
`
`Case 1:17-cv-00687-WO-JLW Document 326 Filed 11/02/21 Page 1 of 19
`
`
`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 MOTION FOR JUDGMENT AS A MATTER OF
`LAW UNDER FEDERAL RULE OF CIVIL PROCEDURE 50(A) REGARDING
`ENSNAREMENT
`
`
`
`
`Case 1:17-cv-00687-WO-JLW Document 326 Filed 11/02/21 Page 1 of 19
`
`
`
`TABLE OF CONTENTS
`
`
`Page
`
`I. STATEMENT OF THE NATURE OF THE MATTER ................ 1
`II. STATEMENT OF FACTS ................................... 1
`III. STATEMENT OF QUESTION PRESENTED ...................... 2
`IV. ARGUMENT ............................................. 3
`A. LEGAL STANDARD .................................. 3
`1. Judgment As A Matter Of Law ................ 3
`2. DOE ........................................ 4
`B. OPTOLUM FAILED TO MEET ITS BURDEN OF PROVING
`THAT THE EXPANDED RANGE OF EQUIVALENTS IT
`SEEKS IS PATENTABLE AND DOES NOT ENSNARE THE
`PRIOR ART ....................................... 5
`1. OptoLum Did Not Dispute That The Prior
`Art Disclosed All Asserted Claim
`Limitations Except Outer-Surface Heat
`Dissipation Protrusions .................... 6
`2. Arndt Discloses Outer-Surface Heat
`Dissipation Protrusions .................... 9
`V. CONCLUSION .......................................... 13
`
`
`
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`Case 1:17-cv-00687-WO-JLW Document 326 Filed 11/02/21 Page 2 of 19
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`TABLE OF AUTHORITIES
`
`
`CASES
`DePuy Spine, Inc. v. Medtronic Sofamor Danek,
`Inc.,
`567 F.3d 1314 (Fed. Cir. 2009) .......................... 4
`Eli Lilly & Co. v. Hospira, Inc.,
`933 F.3d 1320 (Fed. Cir. 2019) .......................... 4
`
`Page
`
`Interactive Pictures Corp. v. Infinite Pictures,
`Inc.,
`274 F.3d 1371 (Fed. Cir. 2001) .......................... 5
`Russell v. Absolute Collection Servs., Inc.,
`763 F.3d 385 (4th Cir. 2014) ............................ 3
`Warner Jenkinson Co. v. Hilton Davis Chem., Co.
`520 U.S. 17 (1997) ...................................... 4
`Weisgram v. Marley Co.,
`528 U.S. 440 (2000) ..................................... 3
`Wheatley v. Wicomico Cnty., Maryland,
`390 F.3d 328 (4th Cir. 2004) ............................ 3
`
`Wilson Sporting Goods Co. v. David Geoffrey &
`Assoc.,
`904 F.2d 677 (Fed. Cir. 1990) ........................ 4, 5
`OTHER AUTHORITIES
`Fed. R. Civ. P. 50(a) .................................. 1, 3
`
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`Case 1:17-cv-00687-WO-JLW Document 326 Filed 11/02/21 Page 3 of 19
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`I.
`
`STATEMENT OF THE NATURE OF THE MATTER
`Defendant Cree Inc. (“Cree”) respectfully moves for
`judgment as a matter of law under Federal Rule of Civil
`Procedure 50(a) that Plaintiff OptoLum, Inc. (“OptoLum”) is
`estopped from relying on the doctrine of equivalents (“DOE”)
`to prove infringement with respect to the Single Ring bulbs
`due to ensnarement.
`II. STATEMENT OF FACTS
`OptoLum alleges that Cree’s Single Ring accused products
`infringe U.S. Patent Nos. 6,831,303 (“the ‘303 patent”) and
`7,242,028 (“the ‘028 patent”) (collectively, “the asserted
`patents”).1 OptoLum concedes that Cree’s single ring accused
`bulbs do not literally infringe the asserted patents. This
`Court has already found no genuine issue of material fact
`that the two-plane limitation in the claims is not literally
`infringed by the Single Ring bulbs. D.I. 230 at 35. OptoLum
`relies on DOE for their infringement allegations with respect
`to the asserted patents.
`
`
`1 As identified in the Court’s claim construction order,
`the two asserted patents “are largely the same for purposes
`of claim construction. Dkt. 152 at 1 n.1.
`
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`On January 1, 2020, Cree moved for summary judgment that
`OptoLum could not rely on DOE to assert infringement of the
`single ring bulbs because their expanded scope of equivalents
`ensnared prior art. Dkt. 191 at 28-36. Cree identified
`specific prior art that was ensnared by OptoLum. The Court
`denied Cree’s motion but took the issue under advisement after
`finding that an evidentiary hearing would be helpful. Dkt.
`230 at 43.
`On October 7, 2021, the Court held an evidentiary hearing
`on the issue of ensnarement. Expert from both sides testified
`at the hearing. Both parties subsequently filed post-hearing
`opening and reply briefs on the issue. (Dkt. 296, 297, 303,
`305). On October 22, 2021, the Court held a final pre-trial
`conference. At that conference, the Court noted that it would
`reserve its ruling on the issue of ensnarement. On October
`27, 2021, the Court held a status conference wherein it
`instructed the parties to be prepared to address the DOE
`issues again at the close of OptoLum’s evidence, including
`prosecution estoppel and ensnarement. 10/27 RTr. at 27-28.
`III. STATEMENT OF QUESTION PRESENTED
`Whether OptoLum is estopped as a matter of law from
`asserting that Cree’s Single Ring bulbs infringe the asserted
`
`
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`- 2 -
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`patents under DOE where Cree has identified ensnared prior
`art and OptoLum has failed to meet its burden to prove
`patentability over the expanded range of equivalents it
`seeks.
`IV. ARGUMENT
`A.
`Legal Standard
`1.
`Judgment As A Matter Of Law
`Judgment as a matter of law is appropriate where “a party
`has been fully heard on an issue during a jury trial 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).
`
`
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`Case 1:17-cv-00687-WO-JLW Document 326 Filed 11/02/21 Page 6 of 19
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`DOE
`2.
`Under DOE, “a product or process that does not literally
`infringe upon the express terms of a patent claim may
`nonetheless be found to infringe if there is ‘equivalence’
`between the elements of the accused product or process and
`the claim elements of the patented invention.” Warner
`Jenkinson Co. v. Hilton Davis Chem., Co. 520 U.S. 17, 21
`(1997). Proof of infringement under “the doctrine of
`equivalents is ‘the exception, however, not the rule.’” Eli
`Lilly & Co. v. Hospira, Inc., 933 F.3d 1320, 1330 (Fed. Cir.
`2019) (quoting, London v. Carson Pirie Scott & Co., 946 F.2d
`1534, 1538 (Fed. Cir. 1991)). “[C]ourts have placed important
`limitations on a patentee’s ability to assert infringement
`under the doctrine of equivalents.” Id.
`Ensnarement is a legal question to be decided by the
`court. DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
`567 F.3d 1314, 1323-24 (Fed. Cir. 2009). OptoLum cannot
`“obtain, under [DOE], coverage which [it] could not lawfully
`have obtained from the PTO by literal claims.” Wilson
`Sporting Goods Co. v. David Geoffrey & Assoc., 904 F.2d 677,
`684 (Fed. Cir. 1990).
`
`
`
`- 4 -
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`Case 1:17-cv-00687-WO-JLW Document 326 Filed 11/02/21 Page 7 of 19
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`B.
`
`OptoLum Failed To Meet Its Burden Of Proving
`That The Expanded Range Of Equivalents It Seeks
`Is Patentable And Does Not Ensnare The Prior
`Art
`It is undisputed that Cree met its initial burden of
`producing evidence of prior art that would be ensnared;
`namely: (1) Arndt & Cao; (2) Abdelhafez & Cao; and
`(3) Abdelhafez & Norlux Hex.2 Accordingly, OptoLum bears “the
`burden of proving patentability.” Interactive Pictures Corp.
`v. Infinite Pictures, Inc., 274 F.3d 1371, 1380-81 (Fed. Cir.
`2001). Indeed, “it is important to remember that the burden
`is on [OptoLum] to prove that the range of equivalents which
`it seeks would not ensnare the prior art.” Wilson, 904 F.2d
`at 685.
`As explained below, OptoLum has failed to meet its
`burden. That is, they fail to prove that their conceptualized
`(yet unspecified) version of a hypothetical claim – one which
`is broad enough to encompass the literal scope of the claims
`in addition to OptoLum’s purported range of equivalents – is
`not obvious or anticipated by the prior art.
`
`
`2 The parties agreed prior to the ensnarement hearing
`that Cree had met its burden of presenting evidence of prior
`art ensnarement. Hrg. at 3-4.
`
`
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`Cree recognizes that the issues concerning ensnarement
`have been extensively briefed for the Court. For brevity and
`the Court’s convenience, Cree incorporates its briefs by
`reference3 and focuses here strictly on the most salient
`issues in view of the trial testimony.
`1.
`OptoLum Did Not Dispute That The Prior Art
`Disclosed All Asserted Claim Limitations
`Except Outer-Surface Heat Dissipation
`Protrusions
`OptoLum’s post-hearing briefs arguments about the prior
`art significantly narrow this Court’s ensnarement inquiry.
`OptoLum offered no argument rejecting the teachings of the
`prior art as to every asserted claim. Instead, OptoLum
`focused 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.
`Indeed, during prosecution of the ’028 patent, the
`examiner rejected certain of the then-pending claims over
`Arndt. The examiner found that Arndt disclosed all of the
`
`
`3 Fact and supporting arguments and evidence underlying
`Cree’s present motion are laid out in Cree’s (a) Memorandum
`in Support of its Omnibus Motion for Partial Summary Judgment
`of Non-Infringement, Invalidity and Damages (Dkt. 191 at 28-
`36); (b) Post-Hearing Brief Regarding Ensnarement (Dkt. 297);
`and (c) Reply Post-Hearing Brief Regarding Ensnarement
`(Dkt. 303). Cree incorporates those briefs by reference.
`
`
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`elements of the rejected independent claim. As shown in the
`table below, all of the elements of the rejected claim are
`also present in issued claim 1 of the ’303 patent, and all of
`them but one are present in issued claim 1 of the ’028 patent:
`Rejected ’028 Claim
`’303 Patent
`’028 Patent
`over Arndt
`1. 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;
`
`1. 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;
`
`1. 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;
`
`
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`Case 1:17-cv-00687-WO-JLW Document 326 Filed 11/02/21 Page 10 of 19
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`
`
`’303 Patent
`
`’028 Patent
`
`
`Rejected ’028 Claim
`over Arndt
`electrical
`conductors carried
`by said elongate
`thermally
`conductive member
`and connected to
`said plurality of
`solid state light
`sources to supply
`electrical power
`thereto; and
`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;
`
`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;
`
`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.
`
`said elongate
`thermally
`conductive member
`comprises one or
`more heat
`dissipation
`protrusions.
`
`said elongate
`thermally
`conductive member
`comprises one or
`more heat
`dissipation
`protrusions.
`
`
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`Case 1:17-cv-00687-WO-JLW Document 326 Filed 11/02/21 Page 11 of 19
`
`
`
`’303 Patent
`
`’028 Patent
`
`
`
`2. A light source
`in accordance with
`claim 1, wherein:
`at least one of
`said heat
`dissipation
`protrusions being
`carried on said
`elongate member
`outer surface.
`
`
`Rejected ’028 Claim
`over Arndt
`
`
`
`OptoLum’s sole contention about the prior art disclosures
`rests on the limitation about 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
`from the ensnarement hearing and trial demonstrates that the
`answer is no.
`Outer-Surface
`Discloses
`2.
`Arndt
`Dissipation Protrusions
`OptoLum does not dispute that Cao discloses the expanded
`range of equivalents it seeks with respect to the LED
`packages. Instead, their primary argument is that their
`expanded range of equivalents is patentable over the Arndt
`and Cao prior art references because Arndt allegedly does not
`
`Heat
`
`
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`Case 1:17-cv-00687-WO-JLW Document 326 Filed 11/02/21 Page 12 of 19
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`disclose outer-surface heat dissipation protrusion. But, on
`this record, OptoLum cannot meet their burden of showing that
`their expanded range of equivalents is not obvious over prior
`art.
`The issue with Arndt’s disclosures is furthered narrowed
`by the fact that OptoLum’s own expert conceded at the
`ensnarement hearing that the examiner found Arndt disclosed
`an “elongate thermally conductive member comprising one or
`more heat dissipation protrusions.” Hrg. at 129:12-22. So
`the question is not whether heat dissipation protrusions are
`disclosed, but rather whether outer-surface heat dissipation
`protrusions are disclosed. The evidence shows that they are.
`At the hearing, Dr. Bretschneider testified about his
`extensive experience designing LED lighting products and
`explained that Arndt’s disclosures “include[] the protrusions
`on the outside of the heat sink.” Hrg. at 161:3-8. He
`focused on Arndt’s Figure 1A (below).
`
`
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`Case 1:17-cv-00687-WO-JLW Document 326 Filed 11/02/21 Page 13 of 19
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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. Dr. Bretschneider explained that 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. He also testified that 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. He explained that the electrical
`leads go into the package and conduct heat into the circuit
`board via convection. Hrg. at 202. Dr. Bretschneider also
`testified about his discussions with others in this field –
`individual behind the Superflux package from Hewlett-Packard
`
`
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`Case 1:17-cv-00687-WO-JLW Document 326 Filed 11/02/21 Page 14 of 19
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`- who confirmed that that the leads were, in fact, designed
`to dissipate heat via convection. Hrg. at 203:21-204:3.
`Dr. Bretschneider’s testimony about the leads disclosed
`in Arndt serving as outer-surface heat dissipation
`protrusions is unrebutted by evidence sufficient for OptoLum
`to meet its burden. At trial, Dr. Steigerwald (OptoLum’s
`expert) conceded that he was not qualified to offer any
`opinions about thermal transfer. 10/26 RTr. at 155-159.
`Indeed, he admitted that he had never done any work or
`research in convection of heat and electrical leads. 10/26
`RTr. at 159:14-17. Because of that, this Court sustained
`Cree’s objection directed to Dr. Steigerwald’s attempt to
`testify about the thermal properties of electrical leads.
`It is undisputed that the electrical leads in Arndt
`convect heat and are located in the outer surface. Any
`convection of heat is sufficient according to OptoLum’s own
`expert. During his deposition, Mr. McCreary testified that
`any amount of convection would be sufficient to meet the
`claim’s limitation of being configured to (specifically
`designed) to conduct heat. Accordingly, as supported by the
`unrebutted evidence and Dr. Bretschneider’s testimony, Arndt
`
`
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`discloses electrical leads that serve as outer-surface heat
`dissipation protrusions.
`Moreover, the trial testimony of Mr. Dry further
`confirmed that protrusions would be obvious to a person of
`ordinary skill in the art (“POSA”). Mr. Dry is not POSA.
`Yet, even from his untrained perspective, he testified
`working through solving the heat problem and increasing the
`surface area, one “gauge[s] the amount of surface area
`required to dissipate the heat.” RTr. at 95. So, “work[ing]
`over time based on the number of LEDs and the wattage and the
`heat produced to determine what the surface area needs to be”
`leads to a determination that “protrusions [are] necessary.”
`Id.
`Because Arndt and Cao disclose all of the elements
`encompassed by the expanded range of equivalents, OptoLum has
`not met its burden of showing that its asserted expanded range
`of equivalents would not ensnare the prior art. As a result,
`OptoLum is estopped from relying on DOE to prove infringement
`of the single ring bulbs.
`V.
`CONCLUSION
`For the foregoing reasons, OptoLum is estopped as a
`matter of law from relying on DOE to prove their infringement
`
`
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`allegations concerning the single ring bulbs. Because a jury
`should be precluded from finding that the single ring bulbs
`infringe the asserted patents, Cree respectfully requests
`that this Court grants its motion and enter judgment as a
`matter of law that the single ring bulbs do not infringe the
`asserted patents.
`
`
`
`Respectfully submitted, November 1, 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. 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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`
`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
`6,250 words, including the body of the memorandum, 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 326 Filed 11/02/21 Page 18 of 19
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`
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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 November 2, 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
`
`
`
`
`
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`Case 1:17-cv-00687-WO-JLW Document 326 Filed 11/02/21 Page 19 of 19
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`
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