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)
`
`INTRODUCTION
`Defendant Cree, Inc.’s (“Cree”) Motion for Judgment as a
`Matter of Law under Federal Rule of Civil Procedure 50(a)
`Regarding Prosecution History Estoppel (“Motion”) Dkt. No.
`324, is effectively a Motion for Judgment as a Matter of Law
`(“JMOL”) on the sufficiency of Optolum’s proof of
`infringement under the Doctrine of Equivalents (“DOE”)
`masquerading as a motion regarding prosecution history
`estoppel (“PHE”). Cree cannot conflate these two issues to
`avoid the fact that OptoLum’s DOE claim presents an issue of
`fact for the jury, whereas the narrow PHE issue is an issue
`of law for the Court. OptoLum’s DOE claim must survive unless
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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)
`
`INTRODUCTION
`Defendant Cree, Inc.’s (“Cree”) Motion for Judgment as a
`Matter of Law under Federal Rule of Civil Procedure 50(a)
`Regarding Prosecution History Estoppel (“Motion”) Dkt. No.
`324, is effectively a Motion for Judgment as a Matter of Law
`(“JMOL”) on the sufficiency of Optolum’s proof of
`infringement under the Doctrine of Equivalents (“DOE”)
`masquerading as a motion regarding prosecution history
`estoppel (“PHE”). Cree cannot conflate these two issues to
`avoid the fact that OptoLum’s DOE claim presents an issue of
`fact for the jury, whereas the narrow PHE issue is an issue
`of law for the Court. OptoLum’s DOE claim must survive unless
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`a reasonable jury could not find in OptoLum’s favor on
`infringement by DOE, whereas PHE is a matter of law wherein
`Cree must prove a clear and unmistakable surrender of the
`claimed equivalent structure. Conoco, Inc. v. Energy & Env't
`Int'l, L.C., 460 F.3d 1349, 1364 (Fed. Cir. 2006) (citation
`omitted).
`Critically, OptoLum asserts that the individual diodes
`and surrounding infrastructure of Cree’s Single-Ring bulb
`products are on multiple planes perpendicular to the axis of
`the ETCM, and the Court’s disclaimer related only to packaged
`diodes in a single planes. Therefore OptoLum’s claimed
`equivalent was not disclaimed. This is the narrow issue of
`law for the Court to decide. OptoLum has presented clear and
`persuasive evidence that the individual diodes and their
`surrounding infrastructures are on multiple planes and
`therefore the Court should find that PHE does not limit its
`DOE claim.
`In contrast, the issue of fact for the jury to decide is
`whether the individual diodes and their surrounding
`infrastructure in the Cree Single-Ring Accused Products are
`in fact equivalent to OptoLum’s asserted claims. OptoLum has
`presented evidence sufficient for a reasonable jury to find
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`in its favor on this issue. This issue must go to the jury
`unless the Court finds that the evidence on this point is so
`scant that no reasonable jury could find in OptoLum’s favor.
`Therefore, Cree’s Motion should be denied.
`THE COMPETING STANDARDS OF LAW IMPLICATED BY CREE’S
`MOTION
`Prosecution history estoppel is a “legal limitation[] on
`the application of the doctrine of equivalents, decided as
`[a] question[] of law.” DePuy Spine, Inc. v. Medtronic Sofamor
`Danek, Inc., 567 F.3d 1314, 1323 (Fed. Cir. 2009). Cree has
`the burden to prove that OptoLum made a “clear and
`unmistakable surrender” of the equivalent that OptoLum claims
`infringes under DOE.
`Infringement, including under the DOE, on the other hand,
`presents an issue of fact for the jury. Warner-Jenkinson Co.,
`520 U.S. at 38; see Intendis GMBH v. Glenmark Pharm., USA,
`822 F.3d 1355, 1360–61 (Fed. Cir. 2016) (“Each prong of the
`function-way-result test is a factual determination.”).
`Under Rule 50(a), an issue of fact may be taken away from
`the jury “[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
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`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 a reasonable trier of fact could draw only one
`conclusion from the evidence.” Corti v. Storage Tech. 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 the 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).
`ARGUMENT
`A.
`OPTOLUM’S DOE CLAIM IS NOT WITHIN THE SCOPE OF ITS
`PROSECUTION DISCLAIMER
`Cree’s JMOL merely rehashes the argument presented in
`its Motion in Limine No. 1: that its Single-Ring Accused
`Products cannot infringe because OptoLum disclaimed coverage
`of a single ring of LEDs around the ETCM during prosecution.
`Dkt. No. 249 at 12-22. Cree asserts that in light of the
`Court’s finding of disclaimer during claim construction,
`which bars literal infringement of Cree’s Single Ring Bulbs,
`
`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 Techs., Inc. v.
`Microsoft Corp., 507 F.3d 1340, 1346 (Fed. Cir. 2007).
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`OptoLum is estopped from asserting infringement over its
`Single-Ring bulbs.
`Cree’s Motion must fail because OptoLum’s infringement
`theory is not attempting to recapture infringement by LEDs,
`within the meaning of the construction of that term, in a
`single plane perpendicular to the axis of the ETCM. Rather,
`OptoLum asserts that, under the doctrine of equivalents
`(“DOE”), each individual diode with its surrounding
`infrastructure is the equivalent of the packaged LED of the
`claims, and Cree’s Single-Ring Accused Products contain these
`structures on multiple planes perpendicular to the axis of
`the ETCM.
`OptoLum has presented copious evidence on this point.
`Its expert witness Dr. Steigerwald identified the three types
`of LED packages used on the Single-Ring Accused Products –
`Cree’s XT-E LEDs, XB-E LEDs, and XB-G LEDs. Oct. 26, 2021 Tr.
`at 174:18-175:7. He testified that each of these packages has
`an array of eight separate diode chips, each of which is
`supported by a surrounding infrastructure of a silicone lens,
`phosphor layer, metal traces, ceramic substrate, and metal
`core of printed circuit board. Oct. 26, 2021 Tr. at 174:18-
`176:9. Dr. Steigerwald further explained to the jury how the
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`Cree Single-Ring Bulbs contain these diodes on multiple
`planes perpendicular to the axis of the ETCM. Oct. 26, 2021
`Tr. at 183:12-185:9 (testifying that Single-Ring Accused
`Products have “LED chips lined up on this elongate thermal
`conductive member light tower such that they define and lie
`in multiple mathematical planes”). The following FIG. 1
`depicts Dr. Steigerwald’s testimony by showing the individual
`chips and surrounding infrastructure of Cree’s Single-Ring
`Accused Products aligned on multiple planes perpendicular to
`the axis of the ETCM:
`
`FIG. 1
`In light of the foregoing, OptoLum has clearly
`distinguished its theory of infringement by the Single-Ring
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`Accused Products from the scope found to have been disclaimed
`during prosecution - the narrow issue upon which this Motion
`is grounded. Cree bears the burden and on this issue, and
`OptoLum has presented significant evidence that Cree has not
`rebutted. See, e.g., Intendis GMBH, 822 F3d 1355 (affirming
`finding of infringement under doctrine of equivalents and
`finding of no prosecution history estoppel where clarifying
`statements regarding claim coverage did not expressly disavow
`the asserted equivalent); Cordis Corp. v. Medtronic Ave,
`Inc., 511 F.3d 1157 (Fed. Cir. 2008) (affirming the district
`court’s rejection of prosecution history estoppel where
`patentee’s only clear and unmistakable surrender was of the
`prior art device and did not disavow all equivalents); Conoco,
`Inc. v. Energy & Environ. Int’l, L.C., 460 F.3d 1349 (Fed.
`Cir. 2006) (finding that the patentee had surrendered only
`infringement by a specific formulation and had not
`surrendered other equivalents); Aquatex Indus. Inc. v.
`Techniche Sols., 419 F.3d 1374 (Fed. Cir. 2005) (reversing a
`district court finding of prosecution history estoppel where
`patentee distinguished prior art on a specific ground and
`therefore there was no surrender of any other equivalents);
`Cordis Corp. v. Medtronic Ave, Inc., 339 F.3d 1352 (Fed. Cir.
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`2003) (reversing a finding of prosecution history estoppel
`where statements distinguishing prior art did not amount to
`a “clear and unmistakable surrender” of the asserted
`equivalent subject matter); Riles v. Shell Expl. & Prod. Co.,
`298 F.3d 1302 (Fed. Cir. 2002) (finding that prosecution
`history estoppel did not limit infringement by the asserted
`equivalent where statements only distinguished the prior art
`from the claims and did not clearly surrender all
`equivalents); Chamberlain Grp., Inc. v. Techtronic Indus.
`Co., 315 F. Supp. 3d 977, 995-96 (N.D. Ill. 2018) (denying
`judgment of PHE where defendant failed to establish that
`accused product fell within scope of prosecution disclaimer),
`
`aff'd in part, vacated in part, rev'd in part sub nom.
`Chamberlain Grp., Inc. v. Techtronic Indus. Co., 935 F.3d
`1341 (Fed. Cir. 2019).
`B.
`OPTOLUM PRESENTED SUFFICIENT EVIDENCE TO ESTABLISH
`THAT THE INDIVIDUAL DIODES AND THEIR SURROUNDING
`INFRASTRUCTURES ARE EQUIVALENT TO THE PACKAGED
`DIODES OF THE ASSERTED CLAIMS
`The remaining issues raised by Cree’s Motion relate to
`infringement under the doctrine of equivalents, an issue of
`fact that must be submitted to the jury absent the Court
`finding that OptoLum has failed to provide sufficient
`evidence for a reasonable jury to find in its favor. Warner-
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`Jenkinson Co., 520 U.S. at 38. This includes an analysis under
`the function-way-result test, i.e., whether the individual
`diodes and their surrounding infrastructure of the Cree
`Single-Ring Accused Products serve substantially the same
`function, in substantially the same way, to achieve
`substantially the same result. See Intendis GMBH, 822 F.3d at
`1360–61 (“Each prong of the function-way-result test is a
`factual determination.”).
`“Infringement under the doctrine of equivalents is an
`equitable doctrine intended, in situations where there is no
`literal
`infringement
`but
`liability
`is
`nevertheless
`appropriate, to prevent what is in essence a pirating of the
`patentee's invention.” Hormone Rsch. Found., Inc. v.
`Genentech, Inc., 904 F.2d 1558, 1564 (Fed. Cir.
`1990)(citations omitted; internal quotation marks omitted).
`In order to find infringement under the DOE, the jury must
`decide whether the accused equivalent structure is equivalent
`to the claims of the patent as construed by the Court. See
`Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605,
`610 (1950). An element of an accused product is equivalent
`under the DOE “if it performs substantially the same function
`[as the asserted claims] in substantially the same way to
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`obtain [substantially] the same result.” Id. at 608.
`OptoLum presented sufficient evidence for the jury to
`find that claimed equivalent structures on the Single-Ring
`Accused Products perform substantially the same function in
`substantially the same way to obtain substantially the same
`result as the Asserted Claims. See, e.g., Cajun Servs.
`Unlimited, LLC v. Benton Energy Serv. Co., 2020 WL 3188991,
`at *20 (E.D. La. June 15, 2020) (denying JMOL where
`plaintiff’s expert witness presented evidence “that the
`filler pads and lower rollers perform the same function, in
`the same way, to achieve the same result”), aff'd, 855 F.
`App'x 771 (Fed. Cir. 2021); Siemens Mobility, Inc. v.
`Westinghouse Air Brake Techs. Corp., 2019 WL 3240521, at *3
`(D. Del. July 18, 2019) (denying JMOL where plaintiff’s expert
`witness presented evidence that accused product performed
`substantially the same function in substantially the same way
`to achieve substantially the same result); see also Bio-Rad
`Lab'ys Inc. v. 10X Genomics, Inc., 396 F. Supp. 3d 368, 378
`(D. Del. 2019) (denying JMOL where plaintiff’s expert
`testified that the limitation not literally infringed “did
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`not change how the microchannels worked”), aff'd in relevant
`part, 967 F.3d 1353 (Fed. Cir. 2020).
`OptoLum’s expert Dr. Steigerwald testified as follows:
` “The Cree LEDs that were in the allegedly infringing
`bulbs include multiple internal LED structures, each
`of which is equivalent to the LED . . . of the ‘303
`and ‘028 patents”;
` “The Cree LED chips [i.e. the individual diodes] are
`surrounded by their own package infrastructures
`equivalent to the package infrastructures [of the]
`. . . ‘303 and ‘028 patents”; and
` “[T]he [equivalent structures within the] infringing
`Cree LEDs performed substantially the same function
`in substantially the same way and generate
`substantially the same results as the . . . LEDs .
`. . in the ‘303 and ‘028 patents.”
`Oct. 26, 2021 Tr. at 147:14-148:1.
`Dr. Steigerwald went on to support those opinions with
`factual testimony. He identified the three types of multi-
`chip LED packages used on the Single-Ring Accused Products –
`Cree’s XT-E LEDs, XB-E LEDs, and XB-G LEDs. Oct. 26, 2021 Tr.
`at 174:18-175:7. He identified that each of these multi-chip
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`packages has an array of eight separate diode chips, each of
`which is supported by a surrounding infrastructure of a
`silicone lens, phosphor layer, metal traces, ceramic
`substrate, and metal core of printed circuit board. Oct. 26,
`2021 Tr. at 174:18-176:9. Dr. Steigerwald explained that
`these are the same elements contemplated by the Asserted
`Patents, the only difference being that the individual diodes
`in Accused Products share common surrounding infrastructure
`with the other diodes in the same package, while the LEDs of
`the Asserted Patents are packaged. Oct. 26, 2021 Tr. at
`163:25-165:21 (single white LEDs and white multi-LED packages
`have “near identical” construction in that multi-LED packages
`have a “common substrate,” an “electrical interface where the
`traces . . . go through each of the . . . LEDs,” “common
`overlying phosphor and lens structure,” and “common thermally
`conductive back side,” whereas single white LEDs have each of
`these elements individually).
`Dr. Steigerwald further explained to the jury how the
`arrays of eight diode chips were necessarily on different
`planes perpendicular to the ETCM of the Single-Ring Accused
`Products. Oct. 26, 2021 Tr. at 183:12-185:9 (testifying that
`Single-Ring Accused Products have “LED chips lined up on this
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`elongate thermal conductive member light tower such that they
`define and lie in multiple mathematical planes”). And he
`explained that each of the Single-Ring Accused Products
`contain a plurality of 80 diodes. Oct. 26, 2021 Tr. at 204:1-
`8.
`
`Dr. Steigerwald then testified that in light of the
`foregoing, the Single-Ring Accused Products meet the “triple
`identity test” in that they perform substantially the same
`function, in substantially the same way, to achieve
`substantially the same result as the Asserted Patents. Oct.
`26, 2021 Tr. at 180:12-183:11. They have substantially the
`same function “to emit light suitable for a general lighting
`application.” Oct. 26, 2021 Tr. at 180:15-181:5; PTX-1194;
`PTX-1195; PTX-1196. They perform this function in
`substantially the same way “by emitting white light from a
`phosphor colored blue LED that also generates heat that is
`then conducted away from the LED . . . chip through a
`thermally conductive material beneath.” Oct. 26, 2021 Tr. at
`181:6-182:22; PTX-1198; PTX-1199. Finally, they achieve
`substantially the same result in that they “emit light away
`from the structure on which the LED is mounted while
`conducting the heat from the diode towards a thermally
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`conductive back side and toward the structure that the LED
`package is mounted onto.” Oct. 26, 2021 Tr. at 182:24-183:11.
`In light of the foregoing, OptoLum presented sufficient
`evidence for a jury to find that each individual diode with
`its surrounding infrastructure on the Single-Ring Accused
`Products is the equivalent of the LEDs and SSLSs in the
`Asserted Claims as they have been construed by the Court.
`See, e.g., Cajun Servs., 2020 WL 3188991, at *20 (jury could
`find infringement under DOE where accused oil drilling
`elevator product “did not function by rotating or rolling” a
`tubular pipe therein as literally stated in the claims, but
`nevertheless “allow[ed] the tubular pipe to spin”); Siemens
`Mobility, Inc., 2019 WL 3240521, at *3 (jury could find
`infringement under DOE where accused product did not
`“prevent[] the train from moving” as literally stated in the
`claims, but nevertheless stopped train “if it senses any
`movement greater than 0.1 miles per hour”); see also Bio-Rad
`Lab'ys Inc., 396 F. Supp. 3d at 378 (jury could find
`infringement under DOE where accused product had a
`microchannel with “negligible amounts of fluorine” rather
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`than a “non-fluorinated microchannel” as literally stated in
`the claims).
`C.
`OPTOLUM’S DOE THEORY CAN BE CONSISTENTLY APPLIED
`BETWEEN THE “PLURALITY” AND “PLANE” LIMITATIONS AS
`CONSTRUED
`The Court has stated a concern that OptoLum’s DOE theory
`improperly “treat[s] the packages one way for purposes of a
`plurality of LEDs, and . . . a different way for purposes of
`the two-plane limitation.” Oct. 27, 2021 Tr. at 27:19-28:12.
`OptoLum’s theory satisfies both asserted claim limitations as
`construed.
`With respect to the “plurality” limitation, “a plurality
`of light emitting diodes” has been construed to mean “two or
`more packages, each of which comprise a thermally conductive
`back and a diode that emits light.” Dkt. No. 314 at ¶ 2. The
`Accused equivalent structures are functionally equivalent to
`this claim element. Each individual diode and its surrounding
`infrastructure is the equivalent to such a package in that it
`comprises a “thermally conductive back and a diode that emits
`light.”2 Oct. 26, 2021 Tr. at 174:18-176:9. There are 80 such
`
`Cree’s attempt to conflate the term “package” within the
`2
`meaning of OptoLum’s patent with the multi-chip “packages” on
`its products is unfounded. See Dkt. No. 324 at 10-11. As
`construed, the requirements of a “package” are that it
`“comprise a thermally conductive back and a diode that emits
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`structures on each Cree Single-Ring Accused Product,
`satisfying the “two or more” requirement. Oct. 26, 2021 Tr.
`at 204:1-8.
`Both the LEDs of the Asserted Claims and the individual
`diodes and surrounding infrastructure in Cree’s Single-Ring
`Accused Products, each of which are capable of emitting light
`at roughly 3.5 volts, are represented by the following image:
`
`FIG. 2
`The Single-Ring Accused Products have a plurality of 80
`such structures arranged in ten groups of eight:
`
`light,” which the individual diodes and surrounding
`infrastructure indisputably meet. To help distinguish between
`the two uses of “package,” Cree’s multi-chip packages will be
`described as “Multi-Chip Packages,” whereas the individual
`diodes and surrounding infrastructure will be described
`merely as “structures.”
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`FIG. 3
`With respect to the “plane” limitation, “disposed in a
`second plane not coextensive with said first plane” has been
`construed to mean that the plurality of packaged LEDs is
`“disposed in a second plane that is not the same as the first
`plane wherein the plurality of LEDs are not disposed in a
`single plane perpendicular to the axis of the elongate
`thermally conductive member.” Dkt. No. 314 at ¶ 12. Under
`OptoLum’s DOE theory, multiple equivalent structures within
`the Accused Single-Ring bulbs are disposed in non-coextensive
`planes perpendicular to the axis of the ETCM. Dr. Steigerwald
`demonstrated to the jury how the individual diodes along with
`their surrounding infrastructure of Cree’s Single-Ring
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`Accused Products are on separate planes from other diodes and
`their surrounding infrastructure:
`
`FIG. 1
`
`D.
`
`OPTOLUM’S EQUIVALENCE THEORY IS SUPPORTED BY
`SUBSTANTIAL EVIDENCE
`During oral argument, the Court raised concern with the
`fact that, unlike the individual diodes disclosed in
`OptoLum’s patent, the individual diodes and surrounding
`infrastructure in the Cree Single-Ring Accused Products are
`wired in a series such that “light [is] only emitted if the
`22 amps . . . [is] run through from the positive to the
`negative cathode and anode on the [entire Multi-Chip]
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`[P]ackage.” Nov. 2, 2021 Tr. at 184:22-24. The Court’s
`observation is an astute and important one to OptoLum’s DOE
`theory – this is indeed a difference between the way the
`individual diodes of Cree’s Single-Ring Accused products and
`the packaged LEDs of the claims function. However, this
`difference does not defeat OptoLum’s equivalence theory, it
`is OptoLum’s equivalence theory. Absent this difference,
`Cree’s Single-Ring Accused Products would literally infringe
`the Asserted Claims.
`As the Court observed, whereas the voltage in Cree’s
`Single-Ring Accused Products actually runs from diode to
`diode as depicted in FIG. 3 supra, and thus no diode is
`capable of lighting independently, it could instead have been
`wired individually to each diode separately i.e. ‘in parallel’
`as depicted in the following FIG. 4:
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`FIG. 4
`OptoLum is in full agreement that this is a difference.
`However, absent this difference, the claimed equivalent
`structures would literally infringe the Asserted Claims.
`Indeed, the individual diodes and surrounding infrastructure
`of the above FIG. 4 are on separate planes perpendicular to
`the axis of the ETCM, there are a plurality of them, and there
`is no difference in how they function because they are wired
`exactly the same.
`Importantly, the arrangement of the individual diodes
`and surrounding infrastructure of Cree’s Single-Ring Accused
`Products was a clear design choice made by Cree in order to
`achieve broad omnidirectional light as disclosed in OptoLum’s
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`patents. Indeed, Cree could have arranged its individual
`diodes in a single plane, wired in a series, as follows:
`
`FIG. 5
`Such arrangement very clearly would not have infringed
`OptoLum’s patents as construed. Instead, Cree set its
`individual diodes and their surrounding infrastructures on
`separate planes perpendicular to the axis of the ETCM as
`depicted in FIG. 1 supra.
`To further demonstrate this point, Cree also could have
`arranged its individual diodes and infrastructure as
`demonstrated below:
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`Case 1:17-cv-00687-WO-JLW Document 331 Filed 11/03/21 Page 21 of 25
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`
`
`FIG. 6
`Unlike the arrangement of FIG. 5, such an arrangement
`would infringe under the DOE, because the diodes are on
`multiple planes perpendicular to the ETCM, but the individual
`diodes and their surrounding infrastructure are still wired
`serially rather than in parallel.
`Finally, OptoLum’s DOE theory does not implicate the
`Court’s stated concern that “to get that equivalent structure,
`you have to draw your plane through . . . two different spots
`in the same package.” Dkt. No. 192 at 4-6. That is not the
`case. Rather, OptoLum’s DOE is met without having to splice
`through Cree’s Multi-Chip Packages, which, if actually
`performed, would result in destruction of the electrical
`22
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`ME1 38016129v.5
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`Case 1:17-cv-00687-WO-JLW Document 331 Filed 11/03/21 Page 22 of 25
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`
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`wiring between diodes. That is because the multi-plane
`limitation is met by individual diodes and their surrounding
`infrastructure across different Multi-Chip Packages, as
`depicted in the following FIG. 7 and FIG. 8:
`
`FIG. 7
`
`FIG. 8
`
`In light of the foregoing, OptoLum’s DOE claim is
`consistent with the Court’s claim constructions, its
`prosecution disclaimer as found by the Court, and its summary
`judgment ruling that LEDs along a single plane do not
`23
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`ME1 38016129v.5
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`Case 1:17-cv-00687-WO-JLW Document 331 Filed 11/03/21 Page 23 of 25
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`
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`literally infringe. The DOE theory is legally sufficient and
`factually supported and should be put in the hands of the
`jury whose job it is to decide issues of fact such as
`infringement by DOE.
`
`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.
`
`ME1 38016129v.5
`
`24
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`Case 1:17-cv-00687-WO-JLW Document 331 Filed 11/03/21 Page 24 of 25
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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 3,796, 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
`
`ME1 38016129v.5
`
`25
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`Case 1:17-cv-00687-WO-JLW Document 331 Filed 11/03/21 Page 25 of 25
`
`
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