Civil Action No. 1:17-cv-
`00687-WO-JLW
`
`
`
`Defendant.
`
`OPTOLUM, INC.,
`
`
`Plaintiff,
`v.
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`CREE, INC.,
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE MIDDLE DISTRICT OF NORTH CAROLINA
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`DEFENDANT CREE, INC.’S REPLY BRIEF IN SUPPORT OF ITS MOTION
`FOR JUDGMENT AS A MATTER OF LAW UNDER FEDERAL RULE OF CIVIL
`PROCEDURE 50(a) REGARDING LACK OF WILLFULNESS
`
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`
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`Case 1:17-cv-00687-WO-JLW Document 332 Filed 11/03/21 Page 1 of 10
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`
`00687-WO-JLW
`
`
`
`Defendant.
`
`OPTOLUM, INC.,
`
`
`Plaintiff,
`v.
`
`CREE, INC.,
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE MIDDLE DISTRICT OF NORTH CAROLINA
`
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`
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`DEFENDANT CREE, INC.’S REPLY BRIEF IN SUPPORT OF ITS MOTION
`FOR JUDGMENT AS A MATTER OF LAW UNDER FEDERAL RULE OF CIVIL
`PROCEDURE 50(a) REGARDING LACK OF WILLFULNESS
`
`
`
`
`Case 1:17-cv-00687-WO-JLW Document 332 Filed 11/03/21 Page 1 of 10
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`Plaintiff OptoLum, Inc. (“OptoLum”) has failed to meet
`its burden to establish willfulness by a preponderance of
`the evidence. No reasonable jury could find that Cree
`willfully infringed the Asserted Patents. Accordingly, the
`Court should grant judgment as a matter of law (“JMOL”) in
`favor of Defendant Cree, Inc. (“Cree”) on this issue.
`Argument
`I.
`JMOL is Appropriate When A Reasonable Jury
`A.
`Would Not Have A Legally Sufficient Evidentiary
`Basis To Find for a Party.
`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) (emphasis added).
`The question for JMOL “is not whether there
`is literally no evidence supporting the party against whom
`the motion is directed but whether there is evidence upon
`
`which the jury could properly find a verdict for that
`party.” Jaasma v. Shell Oil Co., 412 F.3d 501, 503 (3d
`Cir. 2005) (citing 9B Fed. Prac. & Proc. Civ. § 2524 (3d
`ed. 2011)) (emphasis added). “More than a ‘mere scintilla’
`of evidence is necessary to defeat [a JMOL motion].” Lampe
`
`Case 1:17-cv-00687-WO-JLW Document 332 Filed 11/03/21 Page 2 of 10
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`v. Kim, 105 F. App’x 466, 468 (4th Cir. 2004) (emphasis
`added).
`B.
`
`OptoLum Failed to Meet Its Burden to Establish
`Willfulness During Its Case-In-Chief
`OptoLum bears the burden of proof on willfulness.
`Bayer Healthcare LLC v. Baxalta Inc., 989 F.3d 964, 987
`(Fed. Cir. 2021) (“A patentee needs to show by a pre-
`ponderance of the evidence the facts that support a finding
`of willfulness.”). To establish willfulness, OptoLum had
`to prove by a preponderance of the evidence that Cree’s
`infringement was “deliberate or intentional.” Eko Brands,
`LLC v. Adrian Rivera Maynez Enterprises, Inc., 946 F.3d
`1367, 1378 (Fed. Cir. 2020). Specifically, OptoLum had to
`establish that Cree “had a specific intent to infringe at
`the time of the challenged conduct.” Bayer Healthcare LLC,
`989 F.3d at 987. Yet, by the close of OptoLum’s evidence,
`OptoLum had failed to meet that burden.
`The only evidence OptoLum presented related to
`willfulness was Mr. Dry’s testimony that he told John
`Edmond about an unidentified OptoLum patent at the Blue
`Conference in 2003. November 2nd Unedited Tr. 192:16-22.
`OptoLum never connected that alleged knowledge in 2003 to
`Cree’s alleged infringement that began in 2013. October
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`-2-
`Case 1:17-cv-00687-WO-JLW Document 332 Filed 11/03/21 Page 3 of 10
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`26th Unedited Tr. 79:15-18. No other witnesses offered any
`evidence of the state of mind of any individual at Cree
`regarding the Asserted Patents. Any evidence of Cree’s
`business intentions that is not connected to the Asserted
`Patents is not relevant to willfulness.
`Therefore, OptoLum’s evidence cannot show that Cree had
`“a specific intent to infringe.” Bayer Healthcare LLC, 989
`F.3d at 987. No reasonable jury could find that Cree’s
`infringement was “deliberate or intentional.” Eko Brands,
`LLC, 946 F.3d at 1378.
`Knowledge Alone Is Not Sufficient to Establish
`C.
`Willfulness
`
`Even if Mr. Dry’s testimony could establish that Mr.
`Edmond knew of OptoLum’s non-asserted patent, knowledge of
`a patent is not enough, on its own, to support a finding of
`willful infringement. See Norian Corp. v. Stryker Corp.,
`363 F.3d 1321, 1332 (Fed. Cir. 2004) (“Willful infringement
`is not established by the simple fact of infringement, even
`though [the infringer] stipulated that it had knowledge of
`the [] patents.”).
`In Bayer Healthcare LLC, the Federal Circuit upheld a
`district court’s JMOL of no willful infringement because
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`Case 1:17-cv-00687-WO-JLW Document 332 Filed 11/03/21 Page 4 of 10
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`“[t]he evidence adduced at trial merely demonstrate[d]
`Baxalta’s knowledge of the [asserted] patent and Baxalta’s
`direct infringement of the asserted claims.” 989 F.3d at
`988. The Federal Circuit found that the evidence did not
`establish willfulness because “[k]nowledge of the asserted
`patent and evidence of infringement is necessary, but not
`sufficient, for a finding of willfulness. Rather,
`willfulness requires deliberate or intentional
`infringement.” Id. (emphasis added).
`Similarly, here, OptoLum has not established that Cree
`deliberately or intentionally infringed the Asserted
`Patents. OptoLum’s evidence could establish, at most, that
`Cree had knowledge of the parent patent to the asserted
`patents in 2003 and that Cree’s products that were released
`in 2013 infringe the asserted claims. OptoLum has made no
`connection between Mr. Dry’s conversation with Mr. Edmond
`in 2003 and Cree’s alleged infringement that began 10 years
`later in 2013.
`OptoLum’s Evidence Did Not Establish Cree’s
`D.
`Knowledge of the Asserted Patents
`Mr. Dry’s testimony, even if accepted as true, cannot
`establish that Mr. Edmond obtained knowledge of the
`Asserted Patents. Willfulness requires evidence that the
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`Case 1:17-cv-00687-WO-JLW Document 332 Filed 11/03/21 Page 5 of 10
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`accused infringer had knowledge of the patents. See Evonik
`Degussa GmbH v. Materia, Inc., 305 F. Supp. 3d 563, 577 (D.
`Del. 2018) (“Willfulness necessarily involves knowledge of
`the patent and of infringement.”).
`Mr. Dry could not, and did not, testify that he
`identified OptoLum’s patent by number to Mr. Edmond or that
`he described the scope of OptoLum’s patent to Mr. Edmond.
`Mr. Dry admitted that, while he may have told Mr. Edmond
`that OptoLum “had received a patent,” he likely did not
`“mention[ the patent] by name, only that we had received a
`patent.” October 26th Unedited Tr. 114:15-19.
`Moreover, the patent that Mr. Dry discussed with Mr.
`Edmond was not an Asserted Patent. The only patent that
`OptoLum had at the time of the Blue Conference in 2003 was
`U.S. Patent No. 6,573,536 (“the ‘526 patent”). October 26th
`Unedited Tr. 114:9-11. The ‘536 patent is a parent patent
`to the Asserted Patents. Evidence of knowledge of a parent
`patent, on its own, does not support a finding of knowledge
`of the continuations from that patent. See Va. Innovation
`Scis., Inc. v. Samsung Elecs. Co., 983 F. Supp. 2d 700, 712
`(E.D. Va. 2013) (“The allegation that Defendants knew or
`should have known of these patents simply from their
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`-5-
`Case 1:17-cv-00687-WO-JLW Document 332 Filed 11/03/21 Page 6 of 10
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`knowledge of the ’492 patent, from which they are
`continuations, is not a reasonable inference.”); MONEC
`Holding AG v. Motorola Mobility, Inc., 897 F. Supp. 2d 225,
`232 (D. Del. 2012) (explaining that there is no authority
`indicating that knowledge of a related patent is equivalent
`to knowledge of the asserted patent, “and the relevant case
`law suggests that drawing such an inference is too tenuous
`even at the pleading stage”); Vasudevan Software, Inc. v.
`TIBCO Software Inc., 2012 WL 1831543, at *3 (N.D. Cal. May
`18, 2012) (rejecting suggestion that knowledge of patent in
`suit may be inferred from alleged awareness of parent
`patent).
`OptoLum has never explained, nor provided any evidence
`explaining, how an allegation that Cree had knowledge of
`the surrendered and unasserted ‘536 patent could establish
`Cree’s knowledge of the Asserted Patents.
`II. CONCLUSION
`At the close of OptoLum’s evidence, OptoLum had
`presented no evidence that Cree deliberately or
`intentionally infringed the Asserted Patents. OptoLum has
`failed as a matter of law to meet its burden of proving
`willfulness by a preponderance of the evidence. No
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`Case 1:17-cv-00687-WO-JLW Document 332 Filed 11/03/21 Page 7 of 10
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`reasonable jury could find that Cree willfully infringed
`the Asserted Patents. Accordingly, the Court should grant
`JMOL in favor of Cree as to lack of willfulness.
`
`Dated: November 3, 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.
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`-7-
`Case 1:17-cv-00687-WO-JLW Document 332 Filed 11/03/21 Page 8 of 10
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`
`
`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 Reply
`Brief in Support of Its Motion for Judgment As a Matter of
`Law Under Federal Rule of Civil Procedure 50(a) Regarding
`Lack of Willfulness complies with the limitations set forth
`in Local Rule 7.3(d) by not exceeding 3,125 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 332 Filed 11/03/21 Page 9 of 10
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`CERTIFICATE OF SERVICE
`I hereby certify that on November 3, 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
`
`
`
`
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`Case 1:17-cv-00687-WO-JLW Document 332 Filed 11/03/21 Page 10 of 10
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