OPTOLUM, INC.,
`
`
`Plaintiff,
`v.
`
`CREE, INC.,
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE MIDDLE DISTRICT OF NORTH CAROLINA
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`
`DEFENDANT CREE, INC.’S BRIEF IN SUPPORT OF THE
`ADMISSIBILITY OF CERTAIN TESTIMONY OF DR. CURT PROGL
`
`Defendant.
`
`Civil Action No. 1:17-cv-
`00687-WO-JLW
`
`
`
`Case 1:17-cv-00687-WO-JLW Document 333 Filed 11/04/21 Page 1 of 13
`
`
`
`
`Plaintiff,
`v.
`
`CREE, INC.,
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE MIDDLE DISTRICT OF NORTH CAROLINA
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`
`DEFENDANT CREE, INC.’S BRIEF IN SUPPORT OF THE
`ADMISSIBILITY OF CERTAIN TESTIMONY OF DR. CURT PROGL
`
`Defendant.
`
`Civil Action No. 1:17-cv-
`00687-WO-JLW
`
`
`
`Case 1:17-cv-00687-WO-JLW Document 333 Filed 11/04/21 Page 1 of 13
`
`
`
`
`STATEMENT OF THE NATURE OF THE MATTER
`I.
`Evidence of how and why Dr. Curt Progl, an employee of
`
`Defendant Cree, Inc. (“Cree”), designed the accused
`products is directly relevant to the infringement issue of
`whether the products were “specifically designed to”
`perform as required by the asserted claims. Plaintiff
`OptoLum, Inc. (“OptoLum”) put the intent of Dr. Progl at
`issue. OptoLum elicited testimony from its own
`infringement expert regarding the specific intent of Dr.
`Progl in designing the heat sink of the accused products.
`Accordingly, the Court should allow Dr. Progl, a designer
`of the accused products, to rebut OptoLum’s evidence of
`specific intent with factual testimony of his personal
`knowledge of his design choices and intentions regarding
`the accused products.
`II. STATEMENT OF FACTS
`
`All asserted claims of the Asserted Patents incorporate
`the phrase “configured to.” Joint Claim Construction
`Statement, D.I. 106 at 1. That phrase was construed as
`“specifically designed to.” Id.
`
`
`
`Case 1:17-cv-00687-WO-JLW Document 333 Filed 11/04/21 Page 2 of 13
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`
`
`OptoLum placed the subjective intent of Dr. Progl in
`
`designing the accused products squarely at issue in this
`case. OptoLum’s infringement expert, Charles McCreary,
`testified at trial regarding the design intent of Dr. Prol.
`OptoLum offered into evidence PTX-0582, a SolidWorks file
`that Curt Progl created. OptoLum’s counsel, Mr. Martinson,
`then elicited the following testimony from Mr. McCreary
`regarding that exhibit:
`Q Now, when you reviewed PTX0582, did you find a
`history of the filament tower?
` For this particular example, yes, I did.
` And can you explain to the jury what you found,
`please.
` Yes. So for this particular feet it’s got a
`name, boss-extrude 12, and it tells who created
`it, in this case a C Progl. It tells you when it
`was created, in this case it was September 5, 2012
`at 11:36:13 a.m., and then it also tells you when
`it was last modified, but in this case same day
`but 12:56:41 [referring to PDX-3.30 below]. . . .
`
`
` A
`
` Q
`
` A
`
`-2-
`
`Case 1:17-cv-00687-WO-JLW Document 333 Filed 11/04/21 Page 3 of 13
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`
`
`
`
`
`Q So please explain some of the modifications you
`found, Mr. McCreary, to the jury?
` In this particular case, the designer has
`essentially poked square holes through the
`perimeter of the outside that feed into the
`inside.
` And why is that important, and what does it
`indicate to you?
` Well, poking holes in it tells me the designer
`wanted to facilitate convection, and I’m not real
`sure – I’m pretty sure this would not be an
`effect[ive] design, but it seems to me that was
`the intent was to poke holes on the outside and
`perhaps bring in fresh air, but I don’t see what
`would be driving the fresh air in. . . .
` And what were those further modifications?
` Well, on September 6, several things changed.
`One, those square holes were moved and replaced
`with a circular array of holes that instead of
`going from inside in go from where you suppose the
`bulb would be to below where the bulb is in the
`-3-
`
` A
`
` A
`
` Q
`
` Q
`
` A
`
`Case 1:17-cv-00687-WO-JLW Document 333 Filed 11/04/21 Page 4 of 13
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`
`
`lower portion of that filament tower, and secondly
`there are external fins that are placed on the
`outside which are, of course, intended for
`convection heat transfer. . . .
` So in looking at this in totality, what does it
`convey to you as someone as an expert in thermal
`analysis?
` They were trying to maximize their heat transfer
`and doing so by two different mechanisms.
`
`November 1st Unedited Tr. 32:10–35:21 (emphasis added).
`
`Although OptoLum provided the above evidence of Dr.
`Progl’s design intentions, OptoLum has argued that Dr.
`Progl’s testimony regarding how and why he made certain
`decisions during the design of the accused products is
`inadmissible under Federal Rules of Evidence 402 and 702.
`III. STATEMENT OF QUESTION PRESENTED
`Whether Curt Progl, a designer of the accused products,
`can testify to his personal knowledge of how and why he
`designed the accused features of the accused products.
`IV. LEGAL STANDARD
`
`Under Federal Rule of Evidence 402, “[r]elevant
`evidence is admissible.” Evidence is relevant if “it has
`any tendency to make a fact more or less probable than it
`would be without the evidence” and “the fact is of
`consequence in determining the action.” Fed. R. Evid. 401.
`-4-
`
` Q
`
` A
`
`Case 1:17-cv-00687-WO-JLW Document 333 Filed 11/04/21 Page 5 of 13
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`
`
`Under Federal Rule of Evidence 702, a witness must be
`
`qualified as an expert to testify “in the form of an
`opinion.” But, under Federal Rule of Evidence 602, a
`witness may factually testify to a matter if “the witness
`has personal knowledge of the matter.”
`Courts routinely allow fact witnesses to testify
`regarding the design of their own inventions. See
`Fresenius Med. Care Holdings, Inc. v. Baxter Int’l, Inc.,
`No. 597, 2006 WL 1330002, at *3 (N.D. Cal. May 15, 2006)
`(“[C]ourts regularly allow lay witnesses, such as Mr.
`Griewski, to testify with regard to their personal
`knowledge of a particular invention or piece of prior
`art.”). For example, in Knowles Electric, LLC v.
`Microtronic U.S., Inc., No. 99 C 4681, 2000 WL 310305, at
`*2 (N.D. Ill. Mar. 24, 2000), the Court allowed witnesses
`“to testify about their inventions, what those inventions
`do, and how they work” because that “testimony [wa]s not
`expert ‘opinion’ testimony, but rather constitute[d] fact
`witnesses’ testimony about their own activities and designs
`surrounding the prior art they invented.” Id. at *2; see
`also Fresenius Med. Care Holdings, Inc., 2006 WL 1330002,
`at *3 (“Mr. Griewski’s testimony concerning the Sarns 9000—
`-5-
`
`Case 1:17-cv-00687-WO-JLW Document 333 Filed 11/04/21 Page 6 of 13
`
`
`
`to the extent that it is premised on his personal knowledge
`regarding the machine and the way that it operates—is
`admissible.”); Gart v. Logitech, Inc., 254 F. Supp. 2d
`1119, 1123 (C.D. Cal. 2003) (“When Mr. Volk was a graduate
`student at the University of Wisconsin, he worked on
`creating the Autocom. Both men have personal knowledge of
`the Autocom and its handpieces. Therefore, the Court finds
`that Mr. Volk and Dr. Vanderheiden are permitted to testify
`as lay witnesses based on their personal knowledge.”).
`ARGUMENT
`V.
`OptoLum Put the Specific Intent of Dr. Progl
`A.
`Squarely at Issue.
`Through the testimony of Mr. McCreary, OptoLum has put
`
`Dr. Progl’s specific intent with respect to the design of
`the accused products squarely at issue. Now that OptoLum
`has opened the door to such evidence, Mr. Progl should be
`allowed to respond with factual testimony of his design
`intentions.
`
`Mr. McCreary testified at trial regarding direct
`infringement. As OptoLum asserted, Mr. McCreary did not
`testify about willfulness. November 3rd Unedited Tr. 89:9-
`19. As part of his direct infringement analysis, Mr.
`
`-6-
`
`Case 1:17-cv-00687-WO-JLW Document 333 Filed 11/04/21 Page 7 of 13
`
`
`
`McCreary expressly testified about the intentions of the
`designers of the accused products, including Dr. Progl.
`Mr. McCreary named a Cree designer, Curt Progl; described a
`SolidWorks file that Dr. Progl created; and described how
`the file showed Dr. Progl’s design intentions. Cree should
`be able to respond to such evidence with Curt Progl’s
`factual testimony of his personal knowledge regarding how
`and why he designed the accused products.
`Evidence of the Specific Intent of the Designers
`B.
`of the Accused Products is Relevant to
`Infringement.
`Dr. Progl’s testimony regarding how and why he designed
`
`features of the accused products is directly relevant to an
`infringement issue in this case. Infringement is a
`question of fact based on a comparison of the claims as
`construed to the accused products. See Int’l Rectifier
`Corp. v. IXYS Corp., 361 F.3d 1363, 1369 (Fed. Cir. 2004)
`(“Comparison of the claims to the accused device requires a
`factual determination that every claim limitation or its
`equivalent is found in the accused device.”). The phrase
`“configured to” was construed as “specifically designed
`to.” Therefore, evidence of how the accused products were
`designed and why they were designed that way is directly
`-7-
`
`Case 1:17-cv-00687-WO-JLW Document 333 Filed 11/04/21 Page 8 of 13
`
`
`
`relevant to whether the accused products infringe the
`“configured to” claim limitation.
`
`By eliciting testimony of Mr. McCreary regarding the
`specific intent of the designers of the accused products,
`OptoLum has essentially conceded that such evidence is
`relevant to the direct infringement issue in this case.
`
`Dr. Progl’s testimony concerning how and why he made
`certain choices during the design of the accused products
`has a tendency to make it more or less probable that the
`accused products meet the claim phrase “specifically
`designed to.” Therefore, such evidence is relevant and
`admissible under Federal Rules of Evidence 401 and 402.
`Dr. Progl’s Testimony is Not Expert Opinion.
`C.
`OptoLum’s argument that Dr. Progl’s testimony regarding
`
`his design intent is an improper expert opinion is wrong.
`Dr. Progl was not offering an opinion regarding the design
`or infringement of the accused products. Dr. Progl was
`offering factual testimony about his personal experience
`with the design of the accused products. Dr. Progl himself
`worked on the design of the accused products. He can thus
`factually testify based on his personal experience, not his
`technical expertise, regarding his design decisions.
`-8-
`
`Case 1:17-cv-00687-WO-JLW Document 333 Filed 11/04/21 Page 9 of 13
`
`
`
`Testimony is expert in nature when it is the type that
`
`“could have been offered by any individual with specialized
`knowledge of the [relevant topic].” United States v. Conn,
`297 F.3d 548, 553–54 (7th Cir. 2002). Dr. Progl alone can
`provide testimony of Dr. Progl’s personal knowledge of his
`design choices. Such testimony cannot be offered by any
`expert in the field with specialized knowledge.
`
`That Dr. Progl’s testimony is technical in nature does
`not transform the testimony into an expert opinion. Dr.
`Progl is an engineer testifying about his personal
`experience with the technical aspects of his own design of
`the accused products.
`VI. CONCLUSION
`
`Dr. Progl’s testimony regarding his personal knowledge
`of how and why he designed features of the accused products
`is relevant to infringement and is not expert opinion
`testimony. Accordingly, Dr. Progl’s testimony should be
`admitted into evidence.
`
`
`
`
`
`-9-
`
`Case 1:17-cv-00687-WO-JLW Document 333 Filed 11/04/21 Page 10 of 13
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`
`
`
`
`Dated: November 4, 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.
`
`-10-
`
`Case 1:17-cv-00687-WO-JLW Document 333 Filed 11/04/21 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 BRIEF IN
`SUPPORT OF THE ADMISSIBILITY OF CERTAIN TESTIMONY OF DR.
`CURT PROGL 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 333 Filed 11/04/21 Page 12 of 13
`
`
`
`CERTIFICATE OF SERVICE
`I hereby certify that on November 4, 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 333 Filed 11/04/21 Page 13 of 13
`
`
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