OPTOLUM, INC.,
`
`Plaintiff,
`
`Civil Action No. 1:17-cv-
`00687
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE MIDDLE DISTRICT OF NORTH CAROLINA
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`
`DEFENDANT CREE, INC.’S MOTION UNDER FEDERAL RULE OF CIVIL
`PROCEDURE 50(a) FOR JUDGMENT AS A MATTER OF LAW REGARDING
`INVALIDITY OF U.S. PATENT NO. 7,242,028 BASED ON LACK OF
`WRITTEN DESCRIPTION
`
`v.
`CREE, INC.,
`
`
`
`
`Defendant.
`
`
`
`
`
`
`
`Case 1:17-cv-00687-WO-JLW Document 327 Filed 11/02/21 Page 1 of 14
`
`
`
`Plaintiff,
`
`Civil Action No. 1:17-cv-
`00687
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE MIDDLE DISTRICT OF NORTH CAROLINA
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`
`DEFENDANT CREE, INC.’S MOTION UNDER FEDERAL RULE OF CIVIL
`PROCEDURE 50(a) FOR JUDGMENT AS A MATTER OF LAW REGARDING
`INVALIDITY OF U.S. PATENT NO. 7,242,028 BASED ON LACK OF
`WRITTEN DESCRIPTION
`
`v.
`CREE, INC.,
`
`
`
`
`Defendant.
`
`
`
`
`
`
`
`Case 1:17-cv-00687-WO-JLW Document 327 Filed 11/02/21 Page 1 of 14
`
`
`
`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. LEGAL STANDARD ....................................... 3
`A. Judgment as a Matter of Law ..................... 3
`B. Written Description Requirement ................. 3
`V. ARGUMENT ............................................. 5
`
`
`
`
`-i-
`
`Case 1:17-cv-00687-WO-JLW Document 327 Filed 11/02/21 Page 2 of 14
`
`
`
`TABLE OF AUTHORITIES
`
`
`Page
`
`
`CASES
`Ariad Pharm., Inc. v. Eli Lilly & Co.,
`598 F.3d 1336 (Fed. Cir. 2010) .......................... 4
`Atl. Rsch. Mktg. Sys., Inc. v. Troy,
`659 F.3d 1345 (Fed. Cir. 2011) ....................... 4, 6
`Lockwood v. Am. Airlines, Inc.,
`107 F.3d 1565 (Fed. Cir. 1997) .......................... 5
`Markman v. Westview Instruments, Inc.,
` 517 U.S. 370 (1996) ..................................... 5
`Phillips v. AWH Corp.,
` 415 F.3d 1303 (Fed. Cir. 2005) .......................... 6
`PowerOasis, Inc. v. T-Mobile USA, Inc.,
`522 F.3d 1299 (Fed. Cir. 2008) .......................... 5
`Russell v. Absolute Collection Servs., Inc.,
`763 F.3d 385 (4th Cir. 2014) ............................ 3
`Wheatley v. Wicomico Cnty., Maryland,
`390 F.3d 328 (4th Cir. 2004) ............................ 3
`STATUTES
`35 U.S.C. § 112 ...................................... passim
`OTHER AUTHORITIES
`Federal Rule of Civil Procedure 50(a) .................. 1, 3
`U.S. Patent No. 6,831,303 ........................... 1, 2, 7
`U.S. Patent No. 7,242,028 ............................ passim
`
`
`
`
`-ii-
`
`Case 1:17-cv-00687-WO-JLW Document 327 Filed 11/02/21 Page 3 of 14
`
`
`
`
`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 the invalidity of U.S. Patent No.
`7,242,028 (“the ‘028 patent”) under 35 U.S.C. § 112 for
`lack of written description.
`In the written description of the ‘028 patent, the
`patentee chose to disclose a single light source, a light
`emitting diode (“LED”). There is no material dispute that,
`on its face, the ‘028 patent’s written description does not
`disclose or otherwise mention any light source except an
`LED. As a matter of law, to support claim scope broader
`than LEDs, the ‘028 patent’s written description must
`describe some other light source. It does not. Therefore,
`if the asserted claims of the ‘028 patent are found to
`encompass light sources other than LEDs, those claims are
`invalid for lack of written description. Accordingly, the
`Court should grant JMOL in favor of Cree on this issue.
`II. STATEMENT OF FACTS
`The principle difference between U.S. Patent No.
`6,831,303 (“the ‘303 patent”) and the ‘028 patent is the
`
`
`
`
`
`Case 1:17-cv-00687-WO-JLW Document 327 Filed 11/02/21 Page 4 of 14
`
`
`
`
`substitution of the phrase “solid state light sources” in
`the ‘028 patent for the phrase “light emitting diodes” in
`the ‘303 patent. October 26th Unedited Tr. 179:20-180:1
`(“Q. And with respect to the ‘303 and ‘028 patents, is
`there any material difference in your opinion? A. . . .
`it’s the exact same thing on both of them. The only
`difference in the ‘303 patent, it refers to a plurality of
`light emitting diodes; in the ‘028 patent it refers to a
`plurality of solid state light sources.”). The claim
`phrase “solid state light sources” does not appear anywhere
`in the written description of the ‘028 patent. The phrase
`appears only in the claims of the ‘028 patent.
`Nevertheless, Plaintiff OptoLum, Inc.(“OptoLum”)’s
`expert, Dr. Steigerwald, testified at trial that “[s]olid
`state light sources were almost a colloquial term we use
`for LEDs often, but it’s [a] broader category of solid
`state devices that can emit light. LEDs are one subset,
`one dominant subset, of it.” Id. at 180:3-7.
`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
`2
`
`Case 1:17-cv-00687-WO-JLW Document 327 Filed 11/02/21 Page 5 of 14
`
`
`
`
`evidentiary basis to find that the ‘028 patent meets the
`written description requirement of 35 U.S.C. § 112.
`IV. LEGAL STANDARD
`Judgment as a Matter of Law
`A.
`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).
`Written Description Requirement
`B.
`The statutory written description requirement arises in
`35 U.S.C. § 112(a) and provides that “[t]he specification
`shall contain a written description of the invention.” 35
`U.S.C. § 112(a). Section 112(a) captures the fundamental
`quid pro quo that underlies the patent system. That is,
`3
`
`Case 1:17-cv-00687-WO-JLW Document 327 Filed 11/02/21 Page 6 of 14
`
`
`
`
`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’s written description.
`See Atl. Rsch. Mktg. Sys., Inc. v. Troy, 659 F.3d 1345,
`1354 (Fed. Cir. 2011)(“The purpose of the written
`description requirement is to ensure that the scope of the
`right to exclude, as set forth in the claims, does not
`overreach the scope of the inventor’s contribution to the
`field of art as described in the patent specification.”).
`The test for the written description requirement is
`“whether the disclosure of the application relied upon
`reasonably conveys to those skilled in the art that the
`inventor had possession of the claimed subject matter as of
`the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co.,
`598 F.3d 1336, 1351 (Fed. Cir. 2010). Possession means
`“possession as shown in the disclosure” which “requires
`objective inquiry into the four corners of the
`specification from the perspective of a person of ordinary
`skill in the art [“POSA”].” Id. “[I]t is the
`specification itself that must demonstrate possession.”
`Id. at 1352.
`
`4
`
`Case 1:17-cv-00687-WO-JLW Document 327 Filed 11/02/21 Page 7 of 14
`
`
`
`
`
`Because actual disclosure is the touchstone, “[i]t is
`not sufficient for purposes of the written description
`requirement of § 112 that the disclosure, when combined
`with the knowledge in the art, would lead one to speculate
`as to modifications that the inventor might have
`envisioned, but failed to disclose.” Lockwood v. Am.
`Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997); see
`also PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299,
`1310 (Fed. Cir. 2008) (“Obviousness simply is not enough;
`the subject matter must be disclosed to establish
`possession.”).
`ARGUMENT
`V.
`Dr. Steigerwald testified at trial that solid state
`light sources are a “broader category of solid state
`devices that can emit light” of which “LEDs are one
`subset.” October 26th Rough Tr. 180:4-5. There is no issue
`of fact concerning what the text of the ‘028 patent’s
`written description recites. The ‘028 written description
`recites no light source other than an LED.
`Claim construction is a matter of law “reserved
`entirely for the court.” Markman v. Westview Instruments,
`Inc., 517 U.S. 370, 372 (1996). The intrinsic evidence is
`5
`
`Case 1:17-cv-00687-WO-JLW Document 327 Filed 11/02/21 Page 8 of 14
`
`
`
`
`the primary basis for determining the scope of the claims.
`Phillips v. AWH Corp., 415 F.3d 1303, 1313, 1315 (Fed. Cir.
`2005). The claim phrase “a plurality of solid state light
`sources” has been construed as “two or more packages, each
`of which comprise a solid state light source.” Claim
`Construction Memorandum Opinion and Order (“CC Order”),
`D.I. 152, at 17. The scope of that claim phrase in
`relation to the claim phrase “light emitting diodes” is a
`matter for the Court.
`The law is clear that the scope of the claims cannot
`exceed what the inventors chose to describe in the written
`description of the patent. Atl. Rsch. Mktg. Sys., Inc.,
`659 F.3d at 1354. To the extent that the term “solid state
`light sources” is found to have a broader scope than the
`phrase “light emitting diodes,” that scope of the asserted
`claims of the ‘028 patent must be disclosed in the written
`description.
`Therefore, the key determination for lack of written
`description here is whether, from the face of the ‘028
`patent’s written description, the Applicant made some
`disclosure showing possession of a device other than an LED
`for a light source. The issue is not whether it would have
`6
`
`Case 1:17-cv-00687-WO-JLW Document 327 Filed 11/02/21 Page 9 of 14
`
`
`
`
`been obvious to a POSA to create such an embodiment. The
`issue is whether the ‘028 patent specification actually
`makes such a disclosure. The clear answer, based on the
`record evidence, is “No.”
`It is plain from the face of the ‘028 patent
`specification that no light emitting devices other than
`LEDs are disclosed in the ‘028 patent’s written
`description. The ‘028 patent is entitled “Light Emitting
`Diode Light Source.” ‘028 patent (PTX-0631) at (54)
`(emphasis added). In the “Background Of The Invention,”
`the ‘028 patent recites: “LED’s have many advantages as
`light sources,” id. at col. 1 l. 19 (emphasis added), but
`“LEDs typically generate significant amounts of heat,” id.
`at col. 1 l. 36 (emphasis added). The ‘028 patent then
`recites its objective: “It is therefore further desirable
`to provide an LED light source that efficiently conducts
`heat away from the LEDs.” Id. at col. 1 l. 41-42 (emphasis
`added). The only problem or solution that the ‘028 patent
`addresses concerns LEDs, not any other light source.
`The claim phrase “solid state light sources” was simply
`substituted into the claims of the ‘028 patent (in the
`application that was a continuation of the ‘303 patent) in
`7
`
`Case 1:17-cv-00687-WO-JLW Document 327 Filed 11/02/21 Page 10 of 14
`
`
`
`
`an attempt to expand claim coverage over the ‘303 patent
`claims, even though no reference to such solid state
`devices appeared in the specification.
`As the Court noted in construing the phrase “solid
`state light sources,” “neither the patent specification nor
`its prosecution history explain or refer to the [solid
`state light source] phrase.” CC Order at 17. The
`intrinsic evidence is devoid of any basis for defining a
`boundary for the phrase. And now, OptoLum has similarly
`failed to proffer any extrinsic evidence defining such
`boundary.1
`There is no genuine issue of material fact that the
`written description of the ‘028 patent discloses a single
`light source: LEDs. To the extent, therefore, that “solid
`state light sources” means something other than LEDs, the
`scope of the asserted claims of the ‘028 patent is broader
`than the ‘028 patent disclosure. This broader claim scope
`violates 35 U.S.C. § 112 as a matter of law. Accordingly,
`the Court should grant JMOL in favor of Cree on this issue.
`
`1 The Court noted in its claim construction order that
`OptoLum had failed in claim construction to offer evidence
`on this issue. CC Order at 16-17. It has again failed to
`offer such evidence.
`
`8
`
`Case 1:17-cv-00687-WO-JLW Document 327 Filed 11/02/21 Page 11 of 14
`
`
`
`
`VI. CONCLUSION
`The Court should grant JMOL in favor of Cree as to the
`invalidity of the ‘028 patent under 35 U.S.C. § 112 for
`lack of written description. There is no genuine issue of
`material fact, and Cree is entitled to judgment on this
`issue as a matter of law.
`
`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.
`
`
`
`9
`
`Case 1:17-cv-00687-WO-JLW Document 327 Filed 11/02/21 Page 12 of 14
`
`
`
`
`
`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 Invalidity For Lack of Written
`Description 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 327 Filed 11/02/21 Page 13 of 14
`
`
`
`
`
`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. 32386
`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 327 Filed 11/02/21 Page 14 of 14
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
