OPTOLUM, INC.,
`
`Plaintiff,
`
`v.
`CREE, INC.,
`
`
`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 FOR JUDGMENT AS A MATTER OF
`LAW UNDER FEDERAL RULE OF CIVIL PROCEDURE 50(a) REGARDING
`INVALIDITY OF U.S. PATENT NO. 7,242,028 FOR STATUTORY
`DOUBLE PATENTING
`
`
`
`
`Defendant.
`
`Case 1:17-cv-00687-WO-JLW Document 328 Filed 11/02/21 Page 1 of 13
`
`
`
`Plaintiff,
`
`v.
`CREE, INC.,
`
`
`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 FOR JUDGMENT AS A MATTER OF
`LAW UNDER FEDERAL RULE OF CIVIL PROCEDURE 50(a) REGARDING
`INVALIDITY OF U.S. PATENT NO. 7,242,028 FOR STATUTORY
`DOUBLE PATENTING
`
`
`
`
`Defendant.
`
`Case 1:17-cv-00687-WO-JLW Document 328 Filed 11/02/21 Page 1 of 13
`
`
`
`TABLE OF CONTENTS
`
`
`Page
`
`
`I. STATEMENT OF THE NATURE OF THE MATTER ................ 1
`II. STATEMENT OF FACTS ................................... 1
`III. STATEMENT OF QUESTION PRESENTED ...................... 3
`IV. LEGAL STANDARD ....................................... 3
`A. Judgment as a Matter of Law ..................... 3
`B. Statutory Double Patenting ...................... 4
`V. ARGUMENT ............................................. 4
`
`
`i
`
`Case 1:17-cv-00687-WO-JLW Document 328 Filed 11/02/21 Page 2 of 13
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`
`
`TABLE OF AUTHORITIES
`
`
`Page
`
`
`CASES
`In re Goodman,
`11 F.3d 1046 (Fed. Cir. 1993) ........................... 4
`Indivior Inc. v. Dr. Reddy’s Lab’ys, S.A.,
`752 F. App’x 1024 (Fed. Cir. 2018) ...................... 5
`Markman v. Westview Instruments, Inc.,
` 517 U.S. 370 (1996) ..................................... 4
`Phillips v. AWH Corp.,
` 415 F.3d 1303 (Fed. Cir. 2005) .......................... 4
`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. § 101 ..................................... 1, 4, 7
`OTHER AUTHORITIES
`Federal Rule of Civil Procedure 50(a) ..................... 1
`U.S. Patent No. 6,831,303 ............................ passim
`U.S. Patent No. 7,242,028 ............................ passim
`
`ii
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`Case 1:17-cv-00687-WO-JLW Document 328 Filed 11/02/21 Page 3 of 13
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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 the invalidity of U.S. Patent No.
`7,242,028 (“the ‘028 patent”) under 35 U.S.C. § 101 for
`statutory double patenting.
`The asserted claims of the ‘028 patent have the same
`claim language as the asserted claims in the earlier issued
`U.S. Patent No. 6,831,303 (“the ‘303 patent”), with the
`exception that the claim phrase “solid state light sources”
`in the ‘028 patent claims replaced the phrase “light
`emitting devices” in the ‘303 patent claims. Because the
`claim phrase “solid state light sources” has the same scope
`as the claim phrase “light emitting diodes” (“LEDs”), the
`asserted claims of the ‘028 patent have the same scope as
`the asserted claims of the ‘303 patent. Accordingly, the
`asserted claims of the ‘028 patent are invalid under 35
`U.S.C. § 101 for statutory double patenting. The Court
`should thus grant JMOL in favor of Cree on this issue.
`II. STATEMENT OF FACTS
`The sole independent claim-at-issue of the ‘028 patent
`– claim 1 – has precisely the same words and limitations as
`
`
`Case 1:17-cv-00687-WO-JLW Document 328 Filed 11/02/21 Page 4 of 13
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`
`
`asserted dependent claim 2 of the ‘303 patent except that
`the ‘028 claim phrase “solid state light sources” replaces
`the claim phrase “light emitting diodes” in the ‘303
`patent. Compare ‘303 patent (PTX-0635) at claim 2 with
`‘028 patent (PTX-0631) at claim 1. The remaining
`limitations of asserted dependent claims 2-3, 5-8, 14, and
`16 of the ‘028 patent have precisely the same language as
`corresponding claims 3-4, 6-9, 15, and 17-18 of the ‘303
`patent. Compare ‘303 patent (PTX-0635) with ‘028 patent
`(PTX-0631).
`The claim phrase “solid state light sources” does not
`appear at all in the ‘303 patent. The phrase also does not
`appear in the written description of the ‘028 patent. As a
`continuation of the ‘303 patent, the ‘028 patent has
`essentially the same written description as the ‘303
`patent.1 The phrase “solid state light sources” only
`appears in the claims of the ‘028 patent.
`
`
`1 The minor differences between the written
`descriptions of the ‘028 patent and the ‘303 patent do not
`relate to “solid state light sources.” Claim Construction
`Memorandum Opinion and Order, D.I. 152, at 1 n.1.
`2
`
`Case 1:17-cv-00687-WO-JLW Document 328 Filed 11/02/21 Page 5 of 13
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`III. STATEMENT OF QUESTION PRESENTED
`Whether, in light of the record evidence and the
`authority provided herein, no reasonable jury would have a
`legally sufficient evidentiary basis to rule in favor of
`Plaintiff OptoLum, Inc. (“OptoLum”) on the issue of the
`invalidity of the ‘028 patent for statutory double
`patenting.
`IV. LEGAL STANDARD
`A. 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).
`
`3
`
`Case 1:17-cv-00687-WO-JLW Document 328 Filed 11/02/21 Page 6 of 13
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`
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`
`
`B. Statutory Double Patenting
`A central tenant of the United States Patent system is
`that an inventor is entitled to only one patent per
`invention to prevent extension of the patent monopoly. In
`the event that two patents issue having the same scope, the
`second patent is invalid under 35 U.S.C. § 101 for
`statutory double patenting. See in re Goodman, 11 F.3d
`1046, 1052 (Fed. Cir. 1993) (“If the claimed inventions are
`identical in scope, the proper rejection is under 35 U.S.C.
`§ 101 because an inventor is entitled to a single patent
`for an invention.”).
`V. ARGUMENT
`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
`the primary basis for determining the scope of the claims.
`Phillips v. AWH Corp., 415 F.3d 1303, 1313, 1315 (Fed. Cir.
`2005). The inquiry here is whether the scope of the ‘028
`patent claim phrase “solid state light sources” is the same
`as the scope of the ‘303 patent claim phrase “light
`emitting diodes.” This inquiry does not require resolving
`the precise contours of either claim phrase. Rather, the
`4
`
`Case 1:17-cv-00687-WO-JLW Document 328 Filed 11/02/21 Page 7 of 13
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`
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`narrow issue is whether the scope of the two phrases is the
`same. This is a question solely for the Court—not the
`jury. Based on the record evidence in this matter, the
`answer to this question is, “Yes.”
`The intrinsic evidence for the ‘028 patent supports the
`assertion that the terms “solid state light sources” and
`“light emitting diodes” have the same claim scope. It is
`uncontested that the only description in the written
`description of both asserted patents concerns LEDs.2
`The ‘028 patent also contains a terminal disclaimer
`over the ‘303 patent. ‘028 patent (PTX-0631) at (*). That
`terminal disclaimer is intrinsic evidence that the
`Applicant for the ‘028 and ‘303 patents conceded that the
`claims of the patents have the same scope. See Indivior
`Inc. v. Dr. Reddy’s Lab’ys, S.A., 752 F. App’x 1024, 1034
`(Fed. Cir. 2018) (“[A] terminal disclaimer is a strong clue
`that a patent examiner and, by concession, the applicant,
`
`
`2 Cree moves concurrently under Federal Rule of Civil
`Procedure 50(a) for judgment of invalidity of the ‘028
`patent because the only description of the claimed “solid
`state light sources” phrase is limited to LEDs.
`Accordingly, to the extent the phrase “solid state light
`sources” has a construction broader than “light emitting
`diodes” in the ‘303 patent, those claims of the ‘028 patent
`are invalid under 35 U.S.C. § 112.
`5
`
`Case 1:17-cv-00687-WO-JLW Document 328 Filed 11/02/21 Page 8 of 13
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`
`
`thought the claims in the continuation lacked a patentable
`distinction over the parent.”).
`The extrinsic evidence also establishes that the terms
`“solid state light sources” and “light emitting diodes”
`have the same meaning. OptoLum’s own expert, Mr. York,
`asserted that the terms have the same scope. He is
`explicit: “Your testimony is that the scope of the ‘light
`emitting diodes’ and the scope of the phrase ‘solid state
`light sources’ is the same; is that right? Answer: Yes.”
`York Deposition Tr. 145:9-16 (emphasis added).
`Moreover, OptoLum’s expert, Dr. Steigerwald, testified
`that “[s]olid state light sources were almost a colloquial
`term we use for LEDs often.” October 26th Unedited Tr.
`180:3-4. While Dr. Steigerwald also testified that solid
`state light sources are a “broader category of solid state
`devices that can emit light” of which “LEDs are one subset,
`one dominant subset, of it,” id. at 180:3-7, Dr.
`Steigerwald provided no evidence or testimony to identify
`any broader claim boundary.
`Further, in construing the phrase “solid state light
`sources,” the Court noted that there was no intrinsic
`evidence to explain or refer to the phrase. Claim
`6
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`Case 1:17-cv-00687-WO-JLW Document 328 Filed 11/02/21 Page 9 of 13
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`Construction Memorandum Opinion and Order, D.I. 152, at 17.
`OptoLum has failed to proffer any extrinsic evidence
`identifying any boundary for the “solid state light
`sources” phrase.
`The record evidence is that “solid state light sources”
`means the same as “light emitting devices.” The intrinsic
`evidence is conclusive. No extrinsic evidence has been
`offered to alter that conclusion. There is no genuine
`issue of material fact that the terms have the same scope.
`Under these facts and circumstances, where all the
`claim limitations in the asserted claims of the ‘028 patent
`have precisely the same scope as the corresponding claims
`in the earlier issued ‘303 patent, the claims of the ‘028
`patent are invalid as a matter of law for statutory double
`patenting in violation of 35 U.S.C. § 101. Accordingly,
`the Court should grant JMOL in favor of Cree on this issue.
`VI. CONCLUSION
`The Court should grant JMOL in favor of Cree as to the
`invalidity of the ‘028 patent under 35 U.S.C. § 101 for
`statutory double patenting. There is no genuine issue of
`material fact, and Cree is entitled to judgment on this
`issue as a matter of law.
`
`7
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`Case 1:17-cv-00687-WO-JLW Document 328 Filed 11/02/21 Page 10 of 13
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`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.
`
`8
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`Case 1:17-cv-00687-WO-JLW Document 328 Filed 11/02/21 Page 11 of 13
`
`
`
`
`
`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 of U.S. Patent No.
`7,242,028 for Statutory Double Patenting 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 328 Filed 11/02/21 Page 12 of 13
`
`
`
`
`
`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 328 Filed 11/02/21 Page 13 of 13
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`
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