UNITED STATES DISTRICT COURT
`MIDDLE DISTRICT OF NORTH CAROLINA
`OptoLum, Inc.,
`Plaintiff,
`
`)))))))))))
`
`vs.
`Cree, Inc.,
`Defendant.
`
`Civil Action No. 1:17-cv-
`00687
`
`OPTOLUM, INC.’S MOTION FOR JUDGMENT AS A MATTER OF LAW THAT
`THE ASSERTED PATENTS ARE NOT INVALID UNDER 35 U.S.C. § 101
`I.
`INTRODUCTION
`Pursuant to Fed. R. Civ. P. 50(a), Plaintiff OptoLum,
`Inc. (“OptoLum”) hereby moves for judgment as a matter of
`law (“JMOL”) that its asserted U.S. Patent No. 7,242,028
`(“the ‘028 Patent”) is not invalid for statutory double
`patenting in light of its asserted U.S. Patent No.
`6,831,303 (“the ‘303 Patent”) under 35 U.S.C. § 101. Cree,
`Inc.’s (“Cree”) expert witness Dr. Eric Bretschneider
`conceded that the ‘028 Patent and ‘303 Patent each has a
`different scope. Therefore the Patents are not “identical”
`as required for a finding of statutory double patenting,
`
`Case 1:17-cv-00687-WO-JLW Document 339 Filed 11/08/21 Page 1 of 9
`
`
`MIDDLE DISTRICT OF NORTH CAROLINA
`OptoLum, Inc.,
`Plaintiff,
`
`)))))))))))
`
`vs.
`Cree, Inc.,
`Defendant.
`
`Civil Action No. 1:17-cv-
`00687
`
`OPTOLUM, INC.’S MOTION FOR JUDGMENT AS A MATTER OF LAW THAT
`THE ASSERTED PATENTS ARE NOT INVALID UNDER 35 U.S.C. § 101
`I.
`INTRODUCTION
`Pursuant to Fed. R. Civ. P. 50(a), Plaintiff OptoLum,
`Inc. (“OptoLum”) hereby moves for judgment as a matter of
`law (“JMOL”) that its asserted U.S. Patent No. 7,242,028
`(“the ‘028 Patent”) is not invalid for statutory double
`patenting in light of its asserted U.S. Patent No.
`6,831,303 (“the ‘303 Patent”) under 35 U.S.C. § 101. Cree,
`Inc.’s (“Cree”) expert witness Dr. Eric Bretschneider
`conceded that the ‘028 Patent and ‘303 Patent each has a
`different scope. Therefore the Patents are not “identical”
`as required for a finding of statutory double patenting,
`
`Case 1:17-cv-00687-WO-JLW Document 339 Filed 11/08/21 Page 1 of 9
`
`
`
`requiring JMOL of no statutory double patenting.
`II. JMOL UNDER FED. R. CIV. P. 50(a)
`A motion for judgment as a matter of law under Rule
`50(a) should be granted “[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). “The question is ‘whether the
`evidence, construed in the light most favorable to the non-
`moving party, permits only one reasonable conclusion.’”
`Shum v. Intel Corp., 633 F.3d 1067, 1076 (Fed. Cir. 2010)
`(citation omitted).
`“[A] mere scintilla of evidence introduced by the party
`having the burden of proof is not enough to avoid the entry
`of judgment as a matter of law.” Bongam v. Action Toyota,
`Inc., 14 F. App’x 275, 280 (4th Cir. 2001). Thus the
`question for the judge is “not whether there is literally
`no evidence, but whether there is any upon which a jury
`could properly proceed to find a verdict for the party
`producing it, upon whom the onus of proof is imposed.” Id.
`(internal quotation marks omitted). “The party bearing the
`
`2
`
`Case 1:17-cv-00687-WO-JLW Document 339 Filed 11/08/21 Page 2 of 9
`
`
`
`burden of proof must produce genuine evidence that creates
`a fair doubt; wholly speculative assertions will not
`suffice.” Id. (internal quotation marks omitted); see also
`ActiveVideo Networks, Inc. v. Verizon Commc'ns, Inc., 807
`F. Supp. 2d 544, 551 (E.D. Va. 2011) (citing Bongam and
`granting patentee JMOL of patent validity), aff'd, 694 F.3d
`1312 (Fed. Cir. 2012).
`Courts entertain Rule 50(a) motions during trial even
`on issues of law which would not be presented to the jury,
`as such rulings may affect the scope of issues to be
`presented to a jury. See, e.g., BASF Plant Sci., LP v.
`Commonwealth Sci. & Indus. Rsch. Organisation, No. 2:17-CV-
`503-HCM, 2020 WL 973751, at *5 (E.D. Va. Feb. 7, 2020)
`(granting Rule 50(a) motion on issue of law and
`consequently finding issue of fact moot).1
`III. ARGUMENT
`A.
`OptoLum is Entitled to JMOL of No Statutory Double
`Patenting
`OptoLum is entitled to judgment that the ‘028 Patent is
`not invalid for statutory double-patenting in light of the
`
`1 The Court noted its anticipation that OptoLum would be filing a
`motion for JMOL on double patenting. See Nov. 5, 2021 at 166:12-
`13.
`
`3
`
`Case 1:17-cv-00687-WO-JLW Document 339 Filed 11/08/21 Page 3 of 9
`
`
`
`‘303 Patent under 35 U.S.C. § 101. “Whoever invents or
`discovers any new and useful process, machine, manufacture,
`or composition of matter, or any new and useful improvement
`thereof, may obtain a patent therefor . . . .” 35 U.S.C. §
`101 (emphasis added). The statutory restriction on double
`patenting “only prohibits a second patent on subject matter
`identical to an earlier patent.” Geneva Pharm., Inc. v.
`GlaxoSmithKline PLC, 349 F.3d 1373, 1377 (Fed. Cir. 2003)
`(emphasis added); see also Shelcore, Inc. v. Durham
`Industries, Inc., 745 F.2d 621, 628 (Fed. Cir. 1984)
`(affirming a finding of no invalidity for statutory double
`patenting where “[a] device could readily be constructed
`that would infringe the claims of the ‘831 utility patent
`but not the claim of the ‘780 design patent . . . The
`claims do not cross-read.”). Patent claims are presumed to
`be valid under 35 U.S.C. § 282, and the party seeking to
`show invalidity must prove facts supporting invalidity by
`clear and convincing evidence. N. Am. Vaccine, Inc. v. Am.
`Cyanamid Co., 7 F.3d 1571, 1579 (Fed. Cir. 1993). Statutory
`double patenting is a pure issue of law to be decided by
`the Court, not a jury. See Sun Pharm. Indus., Ltd. v. Eli
`
`4
`
`Case 1:17-cv-00687-WO-JLW Document 339 Filed 11/08/21 Page 4 of 9
`
`
`
`Lilly & Co., 611 F.3d 1381, 1384 (Fed. Cir. 2010)
`(“Double patenting is a question of law, which we
`review without deference.”).2
`Here, Cree has failed to present clear and convincing
`evidence of a lack of double-patenting. Whereas the ‘303
`Patent claims a light source that utilizes “light emitting
`diodes,” the ‘028 Patent claims a light source that
`utilizes “solid state light sources.” PTX-631; PTX-635.
`OptoLum has introduced unrebutted evidence that the two are
`not “identical.” OptoLum’s expert witness Dr. Steigerwald
`has over 30 years of experience in LEDs and laser diodes.
`Oct. 26, 2021 Tr. at 146:7-11. He testified that a POSA
`would understand the ‘028 Patent’s reference to SSLSs to
`refer to LEDs as well as laser diodes. See Oct. 26, 2021
`Tr. at 179:20-180:7 (Dr. Steigerwald: “LEDs are one subset
`[of SSLSs], one dominant subset, of it. Another example
`
`2 This is in contrast to obviousness-type double-patenting, which
`involves a second-step obviousness-type analysis that can
`involve issues of fact. Otsuka Pharm. Co. v. Sandoz, Inc., 678
`F.3d 1280, 1290 (Fed. Cir. 2012) (“Obviousness is a question of
`law with underlying factual findings . . . . Similarly,
`nonstatutory obviousness-type double patenting is a question of
`law with underlying findings of fact.”).
`5
`
`Case 1:17-cv-00687-WO-JLW Document 339 Filed 11/08/21 Page 5 of 9
`
`
`
`could be a laser diode which could be made from these same
`materials and create light.”).
`Accordingly, a product containing a laser diode could
`infringe the ‘028 Patent but not the ‘303 Patent; therefore
`there is no double patenting. See Shelcore, Inc., 745 F.2d
`at 628; see also Nextec Applications v. Brookwood
`Companies, Inc., 703 F. Supp. 2d 390, 432 (S.D.N.Y. 2010)
`(granting summary judgment of no double patenting in light
`of “clear and convincing evidence” standard, where, “[f]rom
`[expert’s] testimony, one could reasonably infer that it
`would be possible to infringe one of the two claims in
`question without infringing the other”), aff'd sub nom.
`Nextec Applications, Inc. v. Brookwood Companies, Inc., 542
`F. App'x 995 (Fed. Cir. 2013).
`Cree has failed to rebut this testimony. Indeed, its
`expert witness Dr. Eric Bretschneider testified, consistent
`with OptoLum’s experts, that LEDs are a “subset” of SSLSs,
`and that the patents are thus different in scope. See Nov.
`5, 2021 Tr. at 126:3-17. Thus by Cree’s own admission, they
`are not “identical.” See Geneva Pharm., Inc., 349 F.3d at
`1377.
`
`6
`
`Case 1:17-cv-00687-WO-JLW Document 339 Filed 11/08/21 Page 6 of 9
`
`
`
`IV. CONCLUSION
`For the foregoing reasons, Cree has failed to carry its
`heavy burden of proving by clear and convincing evidence
`that the asserted claims of the patents-in-suit are invalid
`as for statutory double patenting. Accordingly, OptoLum
`respectfully requests that the Court enter JMOL in its
`favor of no statutory double patenting by the ‘028 Patent.
`
`Dated: November 8, 2021
`
`
`
`Respectfully submitted,
`
`By: /s/ Leah R. McCoy
`Robert A. Brooks
`Leah R. McCoy
`MCCARTER & ENGLISH, LLP
`265 Franklin Street
`Boston, MA 02110
`Telephone: (617) 449-6593
`Facsimile: (617)607-9200
`Email: lmccoy@mccarter.com
`
`/s/ Jacob S. Wharton
`Jacob S. Wharton
`NC State Bar No. 37421
`WOMBLE BOND DICKINSON
`One West 4th Street
`Winston-Salem, NC 27101
`Telephone: (336) 747-6609
`Facsimile: (336) 726-6985
`Email: jacob.wharton@wbd-
`us.com
`
`7
`
`Case 1:17-cv-00687-WO-JLW Document 339 Filed 11/08/21 Page 7 of 9
`
`
`
`Attorneys for Plaintiff
`OptoLum, Inc.
`
`8
`
`Case 1:17-cv-00687-WO-JLW Document 339 Filed 11/08/21 Page 8 of 9
`
`
`
`CERTIFICATION UNDER L.R. 7.3(d)
`Under the provisions of L.R. 7.3(d), I certify that the
`forgoing Memorandum is 1,309 words, less than the 11,000
`permitted by the Scheduling Order in place in this matter.
`
`Dated: November 8, 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
`
`9
`
`Case 1:17-cv-00687-WO-JLW Document 339 Filed 11/08/21 Page 9 of 9
`
`
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