Civil Action No. 1:17-cv-
`00687
`
`
`
`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 RENEWED MOTION UNDER FEDERAL RULE OF
`CIVIL PROCEDURE 50(a) FOR JUDGMENT AS A MATTER OF LAW
`REGARDING INVALIDITY OF U.S. PATENT NO. 7,242,028 BASED ON
`LACK OF WRITTEN DESCRIPTION
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`Case 1:17-cv-00687-WO-JLW Document 338 Filed 11/08/21 Page 1 of 14
`
`
`00687
`
`
`
`Defendant.
`
`OPTOLUM, INC.,
`
`Plaintiff,
`
`v.
`CREE, INC.,
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE MIDDLE DISTRICT OF NORTH CAROLINA
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`
`DEFENDANT CREE, INC.’S RENEWED MOTION UNDER FEDERAL RULE OF
`CIVIL PROCEDURE 50(a) FOR JUDGMENT AS A MATTER OF LAW
`REGARDING INVALIDITY OF U.S. PATENT NO. 7,242,028 BASED ON
`LACK OF WRITTEN DESCRIPTION
`
`
`
`
`
`
`Case 1:17-cv-00687-WO-JLW Document 338 Filed 11/08/21 Page 1 of 14
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`TABLE OF CONTENTS
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`Page
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`I. STATEMENT OF THE NATURE OF THE MATTER ................ 1
`II. STATEMENT OF FACTS ................................... 2
`III. STATEMENT OF QUESTION PRESENTED ...................... 3
`IV. LEGAL STANDARD ....................................... 3
`A. Judgment as a Matter of Law ..................... 3
`B. Written Description Requirement ................. 4
`V. ARGUMENT ............................................. 6
`VI. CONCLUSION ........................................... 9
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`-i-
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`Case 1:17-cv-00687-WO-JLW Document 338 Filed 11/08/21 Page 2 of 14
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`TABLE OF AUTHORITIES
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`Page
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`CASES
`Ariad Pharm., Inc. v. Eli Lilly & Co.,
`598 F.3d 1336 (Fed. Cir. 2010) .......................... 5
`Atl. Rsch. Mktg. Sys., Inc. v. Troy,
`659 F.3d 1345 (Fed. Cir. 2011) ....................... 4, 6
`Lockwood v. Am. Airlines, Inc.,
`107 F.3d 1565 (Fed. Cir. 1997) .......................... 5
`Markman v. Westview Instruments, Inc.,
` 517 U.S. 370 (1996) ..................................... 6
`PowerOasis, Inc. v. T-Mobile USA, Inc.,
`522 F.3d 1299 (Fed. Cir. 2008) .......................... 5
`Russell v. Absolute Collection Servs., Inc.,
`763 F.3d 385 (4th Cir. 2014) ............................ 4
`STATUTES
`35 U.S.C. § 112 ...................................... passim
`OTHER AUTHORITIES
`Federal Rule of Civil Procedure 50(a) .................. 1, 4
`U.S. Patent No. 6,831,303 ............................ passim
`U.S. Patent No. 7,242,028 ............................ passim
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`-ii-
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`Case 1:17-cv-00687-WO-JLW Document 338 Filed 11/08/21 Page 3 of 14
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`I.
`
`STATEMENT OF THE NATURE OF THE MATTER
`Defendant Cree, Inc. (“Cree”) moves under Federal Rule
`of Civil Procedure 50(a) for judgment as a matter of law
`(“JMOL”) on the issue of the invalidity of U.S. Patent No.
`7,242,028 (“the ‘028 patent”) under 35 U.S.C. § 112 for
`lack of written description.
`In the written description of the ‘028 patent, the
`patentee chose to disclose a single light source, a light
`emitting diode (“LED”). There is no material dispute that,
`on its face, the ‘028 patent’s written description does not
`disclose or otherwise mention any light source except an
`LED.
`As a matter of law, to support claim scope broader than
`LEDs, the ‘028 patent’s written description must describe
`some other light source. It does not. Therefore, if the
`asserted claims of the ‘028 patent are found to encompass
`light sources other than LEDs, those claims are invalid for
`lack of written description. Accordingly, the Court should
`grant JMOL in favor of Cree on this issue.
`
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`Case 1:17-cv-00687-WO-JLW Document 338 Filed 11/08/21 Page 4 of 14
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`II. STATEMENT OF FACTS
`The principle difference between U.S. Patent No.
`6,831,303 (“the ‘303 patent”) and the ‘028 patent is the
`substitution of the phrase “solid state light sources” in
`the claims of the ‘028 patent for the phrase “light
`emitting diodes” in the claims of the ‘303 patent. See
`October 26th Unedited Tr. 179:20-180:1 (“Q. And with respect
`to the ‘303 and ‘028 patents, is there any material
`difference in your opinion? A. . . . [I]t’s the exact same
`thing on both of them. The only difference in the ‘303
`patent, it refers to a plurality of light emitting diodes;
`in the ‘028 patent it refers to a plurality of solid state
`light sources.”). The claim phrase “solid state light
`sources” does not appear in the written description of the
`‘028 patent. The phrase appears only in the claims of the
`‘028 patent.
`As Cree’s expert, Dr. Bretschneider, testified at
`trial, “[t]he only solid-state light sources described and
`discussed in the [‘028] patent are LEDs. LEDs are a solid-
`state light source, but there’s nothing to teach a person
`of ordinary skill in the art that anything else was
`intended or considered or conceptualized for the patent.”
`2
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`Case 1:17-cv-00687-WO-JLW Document 338 Filed 11/08/21 Page 5 of 14
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`November 4th Unedited Tr. 115:9-11; see also id. at 116:19-
`24 (“Q So would the -- to the extent that the ‘028
`description was intended to describe something other than
`LEDs, would they have had to do so in terms that a person
`of ordinary skill in the art could understand or was
`something beyond an LED? A Yes, they would have. And,
`again, that was absent in the specification.”).
`Nevertheless, Plaintiff OptoLum, Inc.(“OptoLum”)’s
`expert, Dr. Steigerwald, testified at trial that “[s]olid
`state light sources [are a] broader category of solid state
`devices that can emit light. LEDs are one subset, one
`dominant subset, of it.” October 26th Unedited Tr. 180:3-7.
`III. STATEMENT OF QUESTION PRESENTED
`Whether, in light of the evidence that OptoLum
`presented at trial and the authority provided herein, a
`reasonable jury would have no legally sufficient
`evidentiary basis to find that the ‘028 patent meets the
`written description requirement of 35 U.S.C. § 112.
`IV. LEGAL STANDARD
`Judgment as a Matter of Law
`A.
`Judgment as a matter of law is appropriate where “a
`party has been fully heard on an issue during a jury trial
`3
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`Case 1:17-cv-00687-WO-JLW Document 338 Filed 11/08/21 Page 6 of 14
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`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); Russell v.
`Absolute Collection Servs., Inc., 763 F.3d 385, 391 (4th
`Cir. 2014).
`Written Description Requirement
`B.
`The statutory written description requirement arises in
`35 U.S.C. § 112(a) and provides that “[t]he specification
`shall contain a written description of the invention.” 35
`U.S.C. § 112(a). Section 112(a) captures the fundamental
`quid pro quo that underlies the patent system. That is,
`the scope of the right to exclude as expressed in the
`claims must not be greater than what the inventor chose to
`disclose to the public in the patent’s written description.
`See Atl. Rsch. Mktg. Sys., Inc. v. Troy, 659 F.3d 1345,
`1354 (Fed. Cir. 2011)(“The purpose of the written
`description requirement is to ensure that the scope of the
`right to exclude, as set forth in the claims, does not
`overreach the scope of the inventor’s contribution to the
`field of art as described in the patent specification.”).
`The test for the written description requirement is
`“whether the disclosure of the application relied upon
`4
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`Case 1:17-cv-00687-WO-JLW Document 338 Filed 11/08/21 Page 7 of 14
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`reasonably conveys to those skilled in the art that the
`inventor had possession of the claimed subject matter as of
`the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co.,
`598 F.3d 1336, 1351 (Fed. Cir. 2010). Possession means
`“possession as shown in the disclosure” which “requires
`objective inquiry into the four corners of the
`specification from the perspective of a person of ordinary
`skill in the art.” Id. “[I]t is the specification itself
`that must demonstrate possession.” Id. at 1352.
`Because actual disclosure is the touchstone, “[i]t is
`not sufficient for purposes of the written description
`requirement of § 112 that the disclosure, when combined
`with the knowledge in the art, would lead one to speculate
`as to modifications that the inventor might have
`envisioned, but failed to disclose.” Lockwood v. Am.
`Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). In
`other words, “[o]bviousness simply is not enough; the
`subject matter must be disclosed to establish possession.”
`PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1310
`(Fed. Cir. 2008).
`
`5
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`Case 1:17-cv-00687-WO-JLW Document 338 Filed 11/08/21 Page 8 of 14
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`V.
`
`ARGUMENT
`Dr. Steigerwald testified at trial that solid state
`light sources are a “broader category of solid state
`devices that can emit light” of which “LEDs are one
`subset.” October 26th Rough Tr. 180:4-5. However, there is
`no issue of fact that the text of the ‘028 written
`description recites no light source other than LEDs. To
`the extent the phrase “solid state light sources” is found
`to encompass light sources other than LEDs, the ‘028 patent
`is invalid for lack of written description.
`The claim phrase “a plurality of solid state light
`sources” has been construed as “two or more packages, each
`of which comprise a solid state light source.” Claim
`Construction Memorandum Opinion and Order (“CC Order”),
`D.I. 152, at 17. The scope of the claim phrase “solid
`state light sources” is an outstanding issue of claim
`construction. Claim construction is a matter of law
`“reserved entirely for the court.” Markman v. Westview
`Instruments, Inc., 517 U.S. 370, 372 (1996).
`If the term “solid state light sources” is found to
`have a broader scope than the phrase “light emitting
`diodes,” that scope must be disclosed in the written
`6
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`Case 1:17-cv-00687-WO-JLW Document 338 Filed 11/08/21 Page 9 of 14
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`description. The key determination here is whether, from
`the face of the ‘028 patent’s written description, the
`Applicant made some disclosure showing possession of a
`device other than an LED for a light source. The issue is
`not whether it would have been obvious to a person of skill
`in the art to create such an embodiment. The issue is
`whether the ‘028 patent’s written description actually
`makes such a disclosure. The clear answer, based on the
`record evidence, is “No.”
`It is plain from the face of the ‘028 patent
`specification that no light emitting devices other than
`LEDs are disclosed in the ‘028 patent’s written
`description. The ‘028 patent is entitled “Light Emitting
`Diode Light Source.” ‘028 patent (PTX-0631) at (54)
`(emphasis added). In the “Background Of The Invention,”
`the ‘028 patent recites: “LED’s have many advantages as
`light sources,” id. at col. 1 l. 19 (emphasis added), but
`“LEDs typically generate significant amounts of heat,” id.
`at col. 1 l. 36 (emphasis added). The ‘028 patent then
`recites its objective: “It is therefore further desirable
`to provide an LED light source that efficiently conducts
`heat away from the LEDs.” Id. at col. 1 l. 41-42 (emphasis
`7
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`Case 1:17-cv-00687-WO-JLW Document 338 Filed 11/08/21 Page 10 of 14
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`added). The only problem or solution that the ‘028 patent
`addresses concerns LEDs, not any other light source.
`As the Court noted in construing the phrase “solid
`state light sources,” “neither the patent specification nor
`its prosecution history explain or refer to the [solid
`state light source] phrase.” CC Order at 17.
`The claim phrase “solid state light sources” was simply
`substituted into the claims of the ‘028 patent (in the
`application that was a continuation of the ‘303 patent) in
`an attempt to expand claim coverage over the ‘303 patent
`claims, even though no reference to such solid state
`devices appeared in the written description. The intrinsic
`evidence is devoid of any basis for defining a boundary for
`the phrase.1
`
`
`1 Dr. Steigerwald testified at trial that “another
`example” of a solid-state light source “could be a laser
`diode which could be made from these same materials and
`create light.” October 26th Unedited Tr. 179:6-7. But
`there is no genuine issue of material fact that the ‘028
`patent’s written description makes no reference whatsoever
`to a “laser diode.” Moreover, Dr. Bretschneider testified
`at trial that the ‘028 patent requires that the light
`“source produce white light. LEDs are the only solid-state
`light source that does emit white light. A laser is
`definitely a solid-state light source, but it produces as
`pure a color of light you can get. It’s the furthest thing
`you can get from white light.” November 4th Unedited Tr.
`175:10-18.
`8
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`Case 1:17-cv-00687-WO-JLW Document 338 Filed 11/08/21 Page 11 of 14
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`VI. CONCLUSION
`There is no genuine issue of material fact that the
`written description of the ‘028 patent discloses a single
`light source: LEDs. To the extent, therefore, that “solid
`state light sources” means something other than LEDs, the
`scope of the asserted claims of the ‘028 patent is broader
`than the ‘028 patent disclosure. This broader claim scope
`violates 35 U.S.C. § 112 as a matter of law. Accordingly,
`the Court should grant JMOL in favor of Cree on this issue.
`
`Dated: November 8, 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.
`9
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`Case 1:17-cv-00687-WO-JLW Document 338 Filed 11/08/21 Page 12 of 14
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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 Renewed
`Motion for Judgment As a Matter of Law Under Federal Rule
`of Civil Procedure 50(a) Regarding Invalidity For Lack of
`Written Description 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 338 Filed 11/08/21 Page 13 of 14
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`CERTIFICATE OF SERVICE
`I hereby certify that on November 8, 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 338 Filed 11/08/21 Page 14 of 14
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