OPTOLUM, INC.,
`
`Plaintiff,
`
`v.
`CREE, INC.,
`
`
`Defendant.
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE MIDDLE DISTRICT OF NORTH CAROLINA
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`
`DEFENDANT CREE INC.’S BRIEF REGARDING WHETHER STATUTORY
`DOUBLE PATENTING IS A QUESTION OF LAW FOR THE COURT TO
`
`Civil Action No. 1:17-cv-
`00687
`
`
`
`DECIDE
`
`
`
`
`
`Case 1:17-cv-00687-WO-JLW Document 334 Filed 11/05/21 Page 1 of 7
`
`
`
`Plaintiff,
`
`v.
`CREE, INC.,
`
`
`Defendant.
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE MIDDLE DISTRICT OF NORTH CAROLINA
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`
`DEFENDANT CREE INC.’S BRIEF REGARDING WHETHER STATUTORY
`DOUBLE PATENTING IS A QUESTION OF LAW FOR THE COURT TO
`
`Civil Action No. 1:17-cv-
`00687
`
`
`
`DECIDE
`
`
`
`
`
`Case 1:17-cv-00687-WO-JLW Document 334 Filed 11/05/21 Page 1 of 7
`
`
`
`
`I.
`
`STATUTORY DOUBLE PATENTING IS A QUESTION OF LAW FOR THE
`COURT TO DECIDE
`The Federal Circuit has expressly stated that “[d]ouble
`
`patenting is a question of law.” Sun Pharm. Indus., Ltd.
`v. Eli Lilly & Co., 611 F.3d 1381, 1384 (Fed. Cir. 2010);
`Pfizer, Inc. v. Teva Pharms. USA, Inc., 518 F.3d 1353, 1363
`(Fed. Cir. 2008) (same); see also Pregis Corp. v. Doll, 698
`F. Supp. 2d 584, 600 (E.D. Va. 2010) (“The doctrine of
`double patenting is a question of law.”).
`
`For statutory double patenting, if two patents issue
`with the same scope, the second patent is invalid under 35
`U.S.C. § 101. 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.”).
`
`The sole issue, therefore, in a double patenting
`analysis is whether the claims of the patents have the same
`scope. Determining the scope of patent claims is an issue
`of claim construction. Georgia-Pac. Corp. v. U.S. Gypsum
`Co., 195 F.3d 1322, 1326 (Fed. Cir. 1999) (“[D]ouble
`patenting is a matter of what is claimed, and therefore is
`treated like claim construction.”). Claim construction is
`
`
`Case 1:17-cv-00687-WO-JLW Document 334 Filed 11/05/21 Page 2 of 7
`
`
`
`
`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).
`
`Here, Defendant Cree, Inc. maintains that the asserted
`claims of U.S. Patent No. 7,242,028 (“the ‘028 patent”) are
`invalid for double patenting because the ‘028 claim phrase
`“solid state light sources” has the same scope as the
`phrase “light emitting diodes” in U.S. Patent No. 6,831,303
`(“the ‘303 patent”). The only issue here for double
`patenting 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 is a question of claim construction that does
`not require resolving the precise contours of either claim
`phrase. Rather, the narrow issue is whether the scope of
`the two phrases is the same. This is a question solely for
`the Court—not the jury.
`
`
`
`
`2
`
`Case 1:17-cv-00687-WO-JLW Document 334 Filed 11/05/21 Page 3 of 7
`
`
`
`
`THE CASES CITED BY THE COURT ARE DISTINGUISHABLE
`II.
`The two cases the Court cited as possibly supporting
`
`the assertion that double patenting is a question for the
`jury are distinguishable. In St. Jude Medical, Inc. v.
`Access Closure, Inc., 729 F.3d 1369 (Fed. Cir. 2013), the
`Federal Circuit did not directly address double patenting.
`Instead, the Federal Circuit addressed (and overruled) the
`district court’s finding that “the safe harbor provision”
`protected the patent-at-issue from double patenting. Id.
`at 1380. While the district court had sent the issue of
`double patenting to the jury, the issue of whether the
`district court had erred in sending the issue to the jury
`was not before the Federal Circuit. Moreover, the St. Jude
`Medical case involved obviousness-type double patenting,
`not statutory double patenting. See St. Jude Med., Inc. v.
`Access Closure, Inc., No. 08-CV-4101, 2011 WL 5374424, at
`*1 (W.D. Ark. Nov. 8, 2011).
`
`The second case, UCB, Inc. v. Accord Healthcare, Inc.,
`890 F.3d 1313, 1317 (Fed. Cir. 2018), also addresses
`obviousness-type double patenting, not statutory double
`patenting. Id. at 1317; see in re OxyContin Antitrust
`Litig., No. 04 MD 1603 SHS, 2013 WL 1608401, at *7
`
`3
`
`Case 1:17-cv-00687-WO-JLW Document 334 Filed 11/05/21 Page 4 of 7
`
`
`
`
`(S.D.N.Y. Apr. 15, 2013) (“[Statutory d]ouble-patenting is
`a question of law, but “obviousness-type double patenting
`is a question of law with underlying findings of fact.”
`(citations omitted)).
`
`Moreover, while the double-patenting analysis in UCB
`required resolving findings of fact, here, the analysis
`does not involve issues of fact. The only issue here is
`whether, based on the intrinsic record, 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.” That issue is a question of law for the
`Court to decide.
`
`Dated: November 5, 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
`
`
`
`
`4
`
`Case 1:17-cv-00687-WO-JLW Document 334 Filed 11/05/21 Page 5 of 7
`
`
`
`
`
`/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.
`
`5
`
`Case 1:17-cv-00687-WO-JLW Document 334 Filed 11/05/21 Page 6 of 7
`
`
`
`
`
`CERTIFICATE OF SERVICE
`I hereby certify that on November 5, 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 334 Filed 11/05/21 Page 7 of 7
`
`
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