UNITED STATES DISTRICT COURT
`MIDDLE DISTRICT OF NORTH CAROLINA
`OptoLum, Inc.,
`Plaintiff,
`vs.
`Cree, Inc.,
`Defendant.
`
`Civil Action No. 1:17-cv-
`00687
`
`I.
`
`OPTOLUM, INC.’S MOTION FOR JUDGMENT AS A MATTER OF LAW THAT
`CREE IS NOT ENTITLED TO LIMIT DAMAGES
`PURSUANT TO 35 U.S.C. § 287(a)
`INTRODUCTION
`Pursuant to Fed. R. Civ. P. 50(a), Plaintiff OptoLum,
`Inc., (“OptoLum”) moves for a judgment as a matter of law
`(“JMOL”) that Defendant Cree, Inc., (“Cree”) is not entitled
`to limit OptoLum’s damages for patent infringement pursuant
`to 35 U.S.C. § 287(a),1 the Marking Statute, because Cree
`has failed to carry its burden of proving that OptoLum had a
`patent practicing product that was either sold, or offered
`
`1 “Patentees, and persons making, offering for sale . . . may give
`notice to the public that the same is patented, either by fixing
`thereon the word ‘patent’ or the abbreviation ‘pat.’, together
`with the number of the patent. . . . In the event of failure so to
`mark, no damages shall be recovered by the patentee in any action
`for infringement . . . .” 35 U.S.C. § 287(a) (emphasis added).
`1
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`
`MIDDLE DISTRICT OF NORTH CAROLINA
`OptoLum, Inc.,
`Plaintiff,
`vs.
`Cree, Inc.,
`Defendant.
`
`Civil Action No. 1:17-cv-
`00687
`
`I.
`
`OPTOLUM, INC.’S MOTION FOR JUDGMENT AS A MATTER OF LAW THAT
`CREE IS NOT ENTITLED TO LIMIT DAMAGES
`PURSUANT TO 35 U.S.C. § 287(a)
`INTRODUCTION
`Pursuant to Fed. R. Civ. P. 50(a), Plaintiff OptoLum,
`Inc., (“OptoLum”) moves for a judgment as a matter of law
`(“JMOL”) that Defendant Cree, Inc., (“Cree”) is not entitled
`to limit OptoLum’s damages for patent infringement pursuant
`to 35 U.S.C. § 287(a),1 the Marking Statute, because Cree
`has failed to carry its burden of proving that OptoLum had a
`patent practicing product that was either sold, or offered
`
`1 “Patentees, and persons making, offering for sale . . . may give
`notice to the public that the same is patented, either by fixing
`thereon the word ‘patent’ or the abbreviation ‘pat.’, together
`with the number of the patent. . . . In the event of failure so to
`mark, no damages shall be recovered by the patentee in any action
`for infringement . . . .” 35 U.S.C. § 287(a) (emphasis added).
`1
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`for sale. Therefore, Cree’s attempt to limit OptoLum’s
`damages pursuant to 35 U.S.C. § 287(a) is deficient as a
`matter of law as the jury could not properly find, based on
`the evidence provided, that the Marking Statute applies to
`this case.
`II. LEGAL STANDARD
`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
`
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`whom the onus of proof is imposed.” Id. (internal quotation
`marks omitted). “The party bearing the 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).
`III. ARGUMENT
`A.
`OptoLum Never Offered The BL800 For Sale
`Cree has failed to establish that OptoLum offered the
`BL800 prototype for sale. Therefore, Cree cannot limit
`OptoLum’s damages as a matter of law pursuant to 35 U.S.C. §
`287(a) because that statute only applies to patent practicing
`products that were offered for sale. Although 35 U.S.C. §
`287(a) does not define “offer for sale,” federal courts have
`defined “offer for sale” in the context of other patent-
`related statutes. For instance, the Federal Circuit held
`that “offer for sale” pursuant to 35 U.S.C. § 271, the Patent
`Infringement Statute, “must meet the traditional contract law
`definition of that term.” Superior Indus., LLC v. Thor Global
`Enters. Ltd., 700 F.3d 1287, 1294 (Fed. Cir. 2012) (“An ‘offer
`
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`for sale’ sufficient to give rise to liability for patent
`infringement must meet the traditional contract law
`definition of that term. Thus, [a party] must communicate a
`manifestation of willingness to enter into a bargain, so made
`as to justify another person in understanding that his assent
`to
`that
`bargain
`is
`invited
`and
`will
`conclude
`it. Communications that describe the allegedly infringing
`materials but do not contain any price terms . . . on their
`face . . . cannot be construed as an ‘offer’ which [the
`offeree] could make into a binding contract by simple
`acceptance.”) (citations omitted; internal quotation marks
`omitted).
`Logically, an “offer for sale” in accordance with the
`Patent Infringement statute means the same as “offer for sale”
`in accordance with the Patent Marking Statute. “Undoubtedly,
`there is a natural presumption that identical words used in
`different parts of the same act are intended to have the same
`meaning. . . .” Gustafson v. Alloyd Co., Inc., 513 U.S. 561,
`598 (1995); see also Kaufman v. Microsoft Corp., 16 Civ. 2880
`(AKH), 2020 WL 564227, at *1 (S.D.N.Y. Feb. 5, 2020) (“The
`term ‘on sale,’ used in 35 U.S.C. § 102(b), is nearly
`
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`identical to the term ‘offer for sale,’ used in the provision
`at issue here, 35 U.S.C. § 287(a).”).2
`During its case-in-chief, Cree presented no evidence to
`establish that Mr. Dry offered a product for sale. No
`reasonable juror could find that Mr. Dry communicated any
`sort of manifestation of willingness to enter into a bargain,
`so made as to justify another person in understanding that
`his assent to that bargain was invited and would conclude it.
`Without showing that the BL800 was a patent practicing product
`offered for sale, Cree cannot limit OptoLum’s damages as a
`matter of law pursuant to 35 U.S.C. § 287(a).
`As an initial matter, the BL800 prototype was just that,
`a mere prototype. In fact, Mr. Dry was asked a number of times
`during cross-examination whether he had offered his prototype
`for sale, and, each time, he made it very clear not only that
`he had not done so but that the prototype itself lacked
`critical components to be a salable item. For instance, Mr.
`Dry testified:
`
` “We were not selling [the BL800 in 2003]. I wasn’t
`selling anything.” Oct. 26, 2021 Tr. 107:8.
`
`2 35 U.S.C. § 102 governs Conditions of Patentability.
`5
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`
` “We were showing——we were showing a prototype.” Oct. 26,
`2021 Tr. 107:17.
` “In my experience, you can’t sell prototypes.” Oct. 26,
`2021 Tr. 107:19.
` “I think ‘offered to ship’ is not exactly accurate,
`no.” Oct. 26, 2021 Tr. 107:22
` “I was showing our product example, our prototype.” Oct.
`26, 2021 Tr. 107:25.
` “[The BL800] wasn’t ready to be sold.” Oct. 26, 2021 Tr.
`108:6.
` “We were trying to——we were trying to understand interest,
`we were trying to develop interest so we could afford to
`finish it. As you mentioned, it needed to have a power
`supply integrated into it. It needed a mechanism to
`attach power, and the mechanical aspects of it.” Oct. 26,
`2021 Tr. 108:12-16.
` “We were trying to develop interests so that we could
`have enough money to afford to finish it so that it would
`be scalable.” Oct. 26, 2021 Tr. 108:22-24.
`
`Additionally, Ms. Baker was also asked during cross-
`examination questions relating to whether she had offered the
`prototype for sale, and, each time, she made it very clear
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`that not only had she not done so, but that the prototype
`lacked any price terms. For instance, Ms. Baker testified:
`
` “That’s correct” in response to whether the actual sales
`of the BL800 were zero. Oct. 26, 2021 Tr. 138:9.
`
` “I honestly can’t tell you, and I don’t know if we had
`a real firm price or not” in response to “[w]hat was
`the price that you were considering trying to sell the
`BL800 at.” Oct. 26, 2021 Tr. 138:18-21.
`
`B.
`
`Cree Omitted Damages Pursuant to 35 U.S.C. § 287(a)
`In Its Proposed Jury Instructions
`Cree omitted instructions related to damages pursuant to
`35 U.S.C. § 287(a) in its final proposed jury instructions.
`In fact, it is unclear to what extent, if any, Cree intends
`to further pursue this issue. OptoLum submits this motion
`only because Cree later indicated they would adopt a portion
`of OptoLum’s proposed instruction on this issue. Regardless,
`any attempt by Cree to limit OptoLum’s damages pursuant to 35
`U.S.C. § 287(a) is legally deficient and will only confuse
`the jury.
`
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`
`IV. CONCLUSION
`For the foregoing reasons, Cree has failed to carry its
`burden of proving that OptoLum had a patent practicing product
`that was either sold, or offered for sale. Accordingly,
`OptoLum respectfully requests that the Court enter JMOL in
`its favor.
`
`Dated: November 8, 2021
`
`Respectfully submitted,
`
`By: /s/ Leah R. McCoy
`Robert A. Brooks
`Leah R. McCoy
`Gregory A. Hall
`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
`
`Attorneys for Plaintiff
`OptoLum, Inc.
`
`ME1 38119721v.1
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`CERTIFICATION UNDER L.R. 7.3(D)
`Under the provisions of L.R. 7.3(d), I certify that the
`forgoing Memorandum is 1,532 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
`
`ME1 38119721v.1
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`
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