UNITED STATES DISTRICT COURT
`MIDDLE DISTRICT OF NORTH CAROLINA
`OptoLum, Inc.,
`Plaintiff,
`
`)))))))))))
`
`vs.
`Cree, Inc.,
`Defendant.
`
`Civil Action No. 1:17-cv-
`00687
`
`PLAINTIFF OPTOLUM, INC.’S BRIEF IN OPPOSITION TO CREE’S
`MOTION FOR JUDGMENT AS A MATTER OF LAW PURSUANT TO
`FED. R. CIV. P. 50(a) REGARDING WILLFULNESS
`
`Plaintiff OptoLum, Inc. (“OptoLum”) submits the
`following in response to Cree, Inc.’s (“Cree”) Motion for
`Judgement as a Matter of Law Pursuant To Fed. R. Civ. P. 50(a)
`Regarding Willfulness, Dkt. No. 323 (“Motion”).
`A motion for judgment as a matter of law (“JMOL”) under
`Rule 50(a) should be granted only “[i]f 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). “Judgment as a matter of law is only
`appropriate if, viewing the evidence in the light most
`favorable to the non-moving party, the court concludes that
`
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`
`MIDDLE DISTRICT OF NORTH CAROLINA
`OptoLum, Inc.,
`Plaintiff,
`
`)))))))))))
`
`vs.
`Cree, Inc.,
`Defendant.
`
`Civil Action No. 1:17-cv-
`00687
`
`PLAINTIFF OPTOLUM, INC.’S BRIEF IN OPPOSITION TO CREE’S
`MOTION FOR JUDGMENT AS A MATTER OF LAW PURSUANT TO
`FED. R. CIV. P. 50(a) REGARDING WILLFULNESS
`
`Plaintiff OptoLum, Inc. (“OptoLum”) submits the
`following in response to Cree, Inc.’s (“Cree”) Motion for
`Judgement as a Matter of Law Pursuant To Fed. R. Civ. P. 50(a)
`Regarding Willfulness, Dkt. No. 323 (“Motion”).
`A motion for judgment as a matter of law (“JMOL”) under
`Rule 50(a) should be granted only “[i]f 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). “Judgment as a matter of law is only
`appropriate if, viewing the evidence in the light most
`favorable to the non-moving party, the court concludes that
`
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`
`
`a reasonable trier of fact could draw only one conclusion
`from the evidence.” Corti v. Storage Technology Corp., 304
`F.3d 336, 341 (4th Cir. 2002).1 “[A] movant bears a heavy
`burden in establishing that the evidence is not sufficient to
`support [a] jury's verdict” against it. Carter v. Blakely,
`1999 WL 1937226, at *5–6 (M.D.N.C. Sept. 1, 1999) (Osteen,
`Jr., U.S.D.J). A party must introduce more than “a mere
`scintilla of evidence . . . to avoid the entry of judgment as
`a matter of law” on an issue for which it bears the burden of
`proof. Bongam v. Action Toyota, Inc., 14 F. App’x 275, 280
`(4th Cir. 2001).
`ARGUMENT
`A.
`OPTOLUM HAS PRESENTED SUFFICIENT EVIDENCE OF CREE’S
`WILLFULNESS TO SURVIVE JMOL
`
`1 “The denial of a motion for judgment as a matter of law is
`a procedural issue not unique to patent law, which we review
`under the law of the regional circuit where the appeal from
`the district court normally would lie.” Z4 Technologies, Inc.
`v. Microsoft Corp., 507 F.3d 1340, 1346 (Fed. Cir. 2007).
`2
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`Cree’s Motion should be denied because OptoLum has
`presented evidence such that a reasonable fact finder could
`find willful infringement, and this decision should not be
`taken from the jury. To establish willful infringement,
`OptoLum must show by a preponderance of the evidence that
`Cree acted despite a risk of infringement that was “either
`known or so obvious that it should have been known.” Arctic
`Cat Inc. V. Bombardier Recreational Prods. Inc., 876 F.3d
`1350, 1371 (Fed. Cir. 2017) (quoting Halo Elecs., Inc. v.
`Pulse Elecs., Inc., 579 U.S. 93 (2016)). “[T]he concept of
`‘willfulness’ requires a jury to find no more than deliberate
`or intentional infringement.” Eko Brands, LLC v. Adrian
`Rivera Maynez Enters., Inc., 946 F.3d 1367, 1378 (Fed. Cir.
`2020).
`
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`OptoLum has presented evidence sufficient to meet this
`standard. First, Mr. Joel Dry, the inventor of the Asserted
`Patents, testified that he attended a number of industry
`conventions with his invention-embodying prototype. He was
`honorably invited by Lumileds, the manufacturer of the LED
`that was used in the prototype and an industry leader in the
`field, to exhibit in their booth at LightFair 2003 as an
`application of their first of its kind LED. Oct. 26, 2021 Tr.
`at 44:8-18. This was a “great honor” because LightFair is the
`“primary event in the United States for the lighting
`industry,” boasting attendance of between 50,000 and 80,000
`people each year, and “there weren’t many people who were
`exhibiting in [the Lumileds] booth.” Oct. 26, 2021 Tr. at
`44:14-18, 47:18-48:2. Lumileds further invited Mr. Dry to
`present his invention-embodying prototype at the Euroluce
`convention in Milan. Oct. 26, 2021 Tr. at 48:10-19.
`
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`Mr. Dry also testified that he attended the Blue 2003
`conference in Dallas, Texas, where he met Mr. John Edmond, a
`founder and employee of Cree, and one of the developers of
`the Accused Products. Oct. 26, 2021 Tr. at 52:14-56:11. It
`was a small conference of fewer than 100 people. Oct. 26,
`2021 Tr. at 54:3-6. Mr. Dry was part of a “roundtable
`discussion on applications” called “Hot Apps” during which
`Mr. Dry discussed his “application” embodying his invention.
`Oct. 26, 2021 Tr. at 53:25-55:14.
`Importantly, this conference occurred just days after
`Mr. Dry’s first patent issued, and he was excited to share
`that news during the panel presentation. At the end of that
`discussion
`regarding
`Mr.
`Dry’s
`invention-embodying
`application, Mr. Edmond and a number of others approached the
`stage where Mr. Dry was located and wanted to see Mr. Dry’s
`application personally. Oct. 26, 2021 Tr. at 54:18-55:10.
`
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`That was not the end of Mr. Dry’s conversation with Mr.
`Edmond. Indeed, Mr. Edmond got a one-on-one demonstration of
`Mr. Dry’s invention-embodying application. Following the Hot
`Apps discussion, Mr. Edmond was so intrigued by Mr. Dry’s
`application, that they met in the lobby bar of the convention,
`and Mr. Dry further demonstrated his prototype to Mr. Edmond
`by plugging it in, and they “talked about it at more length.”
`Oct. 26, 2021 Tr. at 55:17-2. Mr. Dry actually turned the
`prototype on for Mr. Edmond to demonstrate it. Oct. 26, 2021
`Tr. at 56:2-3. Mr. Edmond gave Mr. Dry his business card and
`told him to call him if Mr. Dry wanted help or guidance.
`Mr. Dry further testified to attending the Blue 2004
`conference in Hsinchu, Taiwan, where he gave a half-hour
`speech that included mentions of his invention, and later met
`Cree’s then-CEO Chuck Swoboda. Oct. 26, 2021 Tr. at 58:16-
`59:12. After Mr. Dry’s testimony, the Court acknowledged that
`this testimony was “evidence of Cree’s knowledge of the parent
`patent, which, in turn, relates to willfulness.” Oct. 26,
`2021 Tr. 64:23-65:3.
`
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`
`Contrary to Cree’s assertions, OptoLum’s evidence of
`willfulness does not end with Mr. Dry’s testimony. OptoLum
`also introduced evidence through its expert witness William
`Scally regarding Cree’s motivations, including their failures
`in developing the product and the known importance of being
`first to market with an LED replacement for an incandescent
`bulb that looked like the familiar Edison bulb. Scally
`testified that the project leading to the Accused Products
`“was important because there was a market opportunity to
`capitalize on at the time that Cree was looking to produce a
`solid-state lightbulb for the marketplace . . . [s]o there
`was a significant market opportunity to capitalize on. And
`timing was obviously important because it was -- in valuation
`terms, it's called a first mover advantage. When a disruption
`presents itself in the marketplace, it creates an opportunity
`to capitalize.” Nov. 2, 2021 Tr. at 18:22-19:11.
`
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`Mr. Scally further testified: “Ultimately, again,
`success breeds copy cats, and in time gives you the
`opportunity to innovate, and so over time it's not at all --
`it's absolutely common for technology to move forward and
`others to be able to achieve the same benefits, but time is
`-- time is valuable, and, and the filament tower technology
`allowed Cree to be the first entrant into the marketplace.”
`Nov. 2, 2021 Tr. at 88:3-9. Indeed, Cree engineers were well
`aware of the need to be first to market.
`Further, OptoLum’s expert witness Mr. York testified that
`he saw OptoLum’s “design as particularly revolutionary and
`[that there] wasn't really another way to get around it that
`was available, because the market was trying everything.
`Everybody was trying everything. Very bright companies like
`Phillips and Osram and others, big competitors, and out of
`the blue they have a solution that worked and basically beat
`everybody, and that's pretty impressive in my world.” Nov. 2,
`2021 Tr. at 170:2-9. OptoLum also introduced evidence through
`its expert witness Mr. McCreary that the Accused Products
`indeed infringe Mr. Dry’s patents.
`
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`Importantly, the standard for a finding of willful
`infringement is not “wanton and malicious” but rather
`requires nothing more than a finding of deliberate or
`intentional infringement or reckless disregard of the
`possibility of infringement. See Halo Elecs., Inc. v. Pulse
`Elecs., Inc., 579 U.S. 93 (2016). Mr. Dry’s meetings with
`Cree, plus OptoLum’s evidence of infringement and Cree’s
`significant motivation to produce this product at any cost,
`is sufficient evidence for a reasonable jury to infer that
`that Cree knew of the Asserted Patents and proceeded to market
`with an infringing design deliberately, intentionally, or
`with reckless disregard for the possibility of infringement.
`See, e.g., KAIST IP US LLC v. Samsung Elecs. Co., 439 F. Supp.
`3d 860, 884 (E.D. Tex. 2020) (denying JMOL of no willful
`infringement where patentee presented evidence of inventor’s
`“presentations” of invention to accused infringer), appeal
`dismissed sub nom. KIPB LLC v. Samsung Elecs. Co., No. 2020-
`1619, 2020 WL 9175080 (Fed. Cir. Sept. 3, 2020); Activevideo
`Networks, Inc. v. Verizon Commc'ns, Inc., 2011 WL 13115476,
`at *2 (E.D. Va. Aug. 2, 2011) (denying JMOL of no willful
`infringement where plaintiff presented evidence of meetings
`
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`between parties and “the substantial similarities between the
`Verizon FiOS system and ActiveVideo's patented system”).
`CONCLUSION
`For the reasons stated above, Cree’s Motion should be
`denied.
`
`Dated: November 3, 2021
`
`Respectfully submitted,
`By: /s/ Leah R. McCoy
`Robert A. Brooks
`Leah R. McCoy
`Alexander Hornat
`MCCARTER & ENGLISH, LLP
`265 Franklin Street
`Boston, MA 02110
`Telephone: (617) 449-6593
`Facsimile: (617)607-9200
`Email: rbrooks@mccarter.com
`
`/s/ Jacob S. Wharton
`Jacob S. Wharton
`NC State Bar No. 37421
`WOMBLE BOND DICKINSON (US) LLP
`One West 4th Street
`Winston-Salem, NC 27101
`Telephone: (336) 747-6609
`Facsimile: (336) 726-6985
`Email: jacob.wharton@wbd-us.com
`
`Attorneys for Plaintiff OptoLum,
`Inc.
`
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`
`
`CERTIFICATION OF PAGE COUNT UNDER L.R. 7.3(d)
`Under the provisions of L.R. 7.3(d), the undersigned
`hereby certifies that the word count for the foregoing
`memorandum totals 1653, which is less than the 6,250 words
`allowed under L.R. 7.3(d).
`Dated: November 3, 2021
`
`Respectfully submitted,
`
`
`
`By: /s/ Leah R. McCoy
`Leah R. McCoy
`MCCARTER & ENGLISH, LLP
`265 Franklin Street
`Boston, MA 02110
`Telephone: (617) 449-6593
`Facsimile: (617)607-9200
`Email: lmccoy@mccarter.com
`
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`
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