UNITED STATES DISTRICT COURT
`MIDDLE DISTRICT OF NORTH CAROLINA
`OptoLum, Inc.,
`Plaintiff,
`
`)))))))))))
`
`vs.
`Cree, Inc.,
`Defendant.
`
`Civil Action No. 1:17-cv-
`00687
`
`I.
`
`PLAINTIFF OPTOLUM, INC.’S MOTION FOR JUDGMENT AS A MATTER
`OF LAW PURSUANT TO FED. R. CIV. P. 50(a) THAT THE ASSERTED
`PATENTS ARE NOT INVALID UNDER 35 U.S.C. § 103
`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 Nos. 6,831,303
`(“the ‘303 Patent”) and 7,242,028 (“the ‘028 Patent”) are
`not invalid for obviousness pursuant to 35 U.S.C. § 103.
`Defendant Cree, Inc. (“Cree”) has asserted two
`combinations of prior art against the ‘303 and ‘028
`Patents: (1) U.S. Patent Application Publication No. US
`2002/0122309 to Abdelhafez (“Abdelhafez”) + the NorLux Hex
`(“NorLux Hex”), and (2) U.S. Patent No. 6,715,900 to Zhang
`(“Zhang”) + U.S. Patent No. 6,634,770 to Cao (“Cao”). Cree
`
`Case 1:17-cv-00687-WO-JLW Document 341 Filed 11/08/21 Page 1 of 15
`
`
`MIDDLE DISTRICT OF NORTH CAROLINA
`OptoLum, Inc.,
`Plaintiff,
`
`)))))))))))
`
`vs.
`Cree, Inc.,
`Defendant.
`
`Civil Action No. 1:17-cv-
`00687
`
`I.
`
`PLAINTIFF OPTOLUM, INC.’S MOTION FOR JUDGMENT AS A MATTER
`OF LAW PURSUANT TO FED. R. CIV. P. 50(a) THAT THE ASSERTED
`PATENTS ARE NOT INVALID UNDER 35 U.S.C. § 103
`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 Nos. 6,831,303
`(“the ‘303 Patent”) and 7,242,028 (“the ‘028 Patent”) are
`not invalid for obviousness pursuant to 35 U.S.C. § 103.
`Defendant Cree, Inc. (“Cree”) has asserted two
`combinations of prior art against the ‘303 and ‘028
`Patents: (1) U.S. Patent Application Publication No. US
`2002/0122309 to Abdelhafez (“Abdelhafez”) + the NorLux Hex
`(“NorLux Hex”), and (2) U.S. Patent No. 6,715,900 to Zhang
`(“Zhang”) + U.S. Patent No. 6,634,770 to Cao (“Cao”). Cree
`
`Case 1:17-cv-00687-WO-JLW Document 341 Filed 11/08/21 Page 1 of 15
`
`
`
`has failed to put forth sufficient evidence for a
`reasonable jury to find that either combination renders any
`asserted claim obvious. Cree’s expert witness Dr. Eric
`Bretschneider conceded during cross-examination that the
`Abdelhafez/NorLux Hex combination failed to teach the
`limitation regarding heat dissipation protrusions on the
`outer surface and therefore did not render the asserted
`claims obvious. As to the Zhang/Cao combination, Cree
`failed to put forth sufficient evidence that a person of
`ordinary skill in the art (“POSA”) would have been
`motivated to combine these references.
`Accordingly, JMOL of no obviousness should be entered
`in favor of OptoLum, and this case should be reduced for
`the jury to largely infringement and damages.1
`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
`
`1 Cree has abandoned all invalidity defenses except obviousness,
`statutory double patenting, and lack of written description.
`Statutory double patenting is a question of law for the Court to
`decide and should not be presented to the jury. Lack of written
`description is for the jury to decide, but relates only to the
`‘028 patent.
`
`2
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`
`
`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
`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
`
`3
`
`Case 1:17-cv-00687-WO-JLW Document 341 Filed 11/08/21 Page 3 of 15
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`
`
`granting patentee JMOL of patent validity), aff'd, 694 F.3d
`1312 (Fed. Cir. 2012).
`III. ARGUMENT
`A.
`OptoLum is Entitled to JMOL that the Asserted '303
`and ‘028 Patents are Not Obvious in Light of
`Abdelhafez and the NorLux Hex
`OptoLum is entitled to JMOL that the combination of
`Abdelhafez and the NorLux Hex does not render the ‘303 and
`‘028 Patents obvious because Cree has failed to put forth
`any evidence that the outer surface heat dissipation
`protrusion limitation is supplied by the combination.
`A patent may not issue “if the differences between the
`subject matter sought to be patented and the prior art are
`such that the subject matter as a whole would have been
`obvious at the time the invention was made to a person
`having ordinary skill in the art to which said subject
`matter pertains.” 35 U.S.C. § 103(a). Obviousness is a
`question of law based on underlying factual findings: (1)
`the scope and content of the prior art; (2) the differences
`between the claims and the prior art; (3) the level of
`ordinary skill in the art; and (4) objective considerations
`of nonobviousness. Graham v. John Deere Co., 383 U.S. 1,
`17–18 (1966). Where the prior art fails to disclose a claim
`4
`
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`
`
`limitation or to provide an apparent reason to modify
`existing prior art in a manner to meet a missing
`limitation, the claimed invention cannot be found obvious.
`See St. Jude Med., Inc. v. Access Closure, Inc., 729 F.3d
`1369, 1381 (Fed. Cir. 2013) (affirming judgment of no
`obviousness because limitation of asserted claim was not
`disclosed by asserted prior art combination); Kinetic
`Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1366
`(Fed. Cir. 2012) (reversing JMOL of obviousness because
`limitation of asserted claim was not disclosed by asserted
`prior art combination); see also Sealant Sys. Int’l, Inc.
`v. TEK Global, S.R.L., 616 F. App’x 987, 996 (Fed. Cir.
`2015) (reversing summary judgment of obviousness because
`limitation of asserted claim was not disclosed by asserted
`prior art combination).
`Cree failed to support that the combination of
`Abdelhafez and the NorLux Hex teach the outer-surface heat
`dissipation protrusions that are “designed to convect heat”
`of the claimed invention. In fact, Cree’s expert witness
`Eric Bretschneider conceded that this limitation was not
`provided by the combination and therefore did not render
`
`5
`
`Case 1:17-cv-00687-WO-JLW Document 341 Filed 11/08/21 Page 5 of 15
`
`
`
`the asserted claims obvious. See Nov. 5, 2021 Tr. at 130:3-
`17 (“Q. . . . So if I put Abdelhafez together with the
`Norlux Hex, it’s still going to be missing the heat
`dissipation protrusions per your previous testimony, right?
`A. Correct. Q. So it’s not obvious in light of that
`specific combination, correct? A. That claim element is not
`obvious.” (emphasis added)), 131:4-6 (“So all the claims
`are valid in light of that combination, correct? A. If
`that’s where the claim element was [in claim 1 of the ‘303
`patent], yes.”); see also PX-631 & PX-635 (outer-surface
`heat dissipation protrusion limitation present in every
`asserted claim).
`the
`that
`find
`could
`jury
`No
`reasonable
`Abdelhafez/NorLux Hex combination renders any asserted
`claim obvious in light of this concession, requiring JMOL
`in OptoLum’s favor. See, e.g., St. Jude Med., Inc., 729
`F.3d at 1381 (affirming judgment of no obviousness because
`“[n]either Takayasu nor Smiley discloses a balloon
`configured to operate as a positioning device to prevent a
`plug from entering a blood vessel as claimed in the Fowler
`patents”); Kinetic Concepts, Inc., 688 F.3d at 1366
`
`6
`
`Case 1:17-cv-00687-WO-JLW Document 341 Filed 11/08/21 Page 6 of 15
`
`
`
`(reversing JMOL of obviousness because “none of the
`references discloses treating wounds with negative pressure
`as required by the patents”); see also Sealant Sys. Int’l,
`Inc. v. TEK Global, S.R.L., 616 F. App’x 987, 996 (Fed.
`Cir. 2015) (reversing summary judgment of obviousness
`because “neither Bridgestone nor Eriksen teach the use of
`‘an additional hose [ ] cooperating with’ the tire”). Even
`if Dr. Bretschneider had not conceded that the combination
`did not render the asserted claims obvious, he did not
`provide sufficient evidence for a jury to find that the
`missing limitation was provided by “common sense” or any
`other source, requiring JMOL of no obviousness. See Arendi
`S.A.R.L v. Apple Inc., 832 F.3d 1355, 1362 (Fed. Cir. 2016)
`(“common sense . . . cannot be used as a wholesale
`substitute for a reasoned analysis and evidentiary support,
`especially when dealing with a limitation missing from the
`prior art references specified”).
`B.
`OptoLum is Entitled to JMOL that the Asserted '303
`and ‘028 Patents are Not Obvious in Light Zhang
`and Cao Because Cree Has Failed to Provide
`Sufficient Evidence of a Motivation to Combine
`OptoLum is also entitled to JMOL that the combination
`of Zhang and Cao does not render the ‘303 and ‘028 Patents
`
`7
`
`Case 1:17-cv-00687-WO-JLW Document 341 Filed 11/08/21 Page 7 of 15
`
`
`
`obvious, because Cree has failed to present sufficient
`evidence that a person of ordinary skill in the art would
`be motivated to combine the prior art references of Zhang
`and Cao in the configuration proffered by Cree.
`“[A] party seeking to invalidate a patent as obvious
`must ‘demonstrate by clear and convincing evidence that a
`skilled artisan would have had reason to combine the
`teaching of the prior art references to achieve the claimed
`invention, and that the skilled artisan would have had a
`reasonable expectation of success from doing so.’” In re
`Cyclobenzaprine Hydrochloride, 676 F.3d 1063, 1068–69 (Fed.
`Cir. 2012) (citation and internal quotations omitted). To
`establish a legally sufficient motivation to combine, Cree
`must demonstrate both “a motivation to select the
`references and to combine them in the particular claimed
`manner to reach the claimed invention.” Eli Lilly & Co. v.
`Zenith Goldline Pharm., Inc., 471 F.3d 1369, 1379 (Fed.
`Cir. 2006).
`expert
`unsupported”
`factually
`and
`“[C]onclusory
`testimony is insufficient to establish obviousness or a
`motivation to combine. See ActiveVideo Networks, Inc. v.
`
`8
`
`Case 1:17-cv-00687-WO-JLW Document 341 Filed 11/08/21 Page 8 of 15
`
`
`
`Verizon Commc'ns, Inc., 694 F.3d 1312, 1327 (Fed. Cir.
`2012) (affirming JMOL of no obviousness where expert
`“failed to explain how specific references could be
`combined, which combination(s) of elements in specific
`references would yield a predictable result, or how any
`specific combination would operate or read on the asserted
`claims”). A conclusory statement “that a person of ordinary
`skill in the art would have known . . . how to combine any
`number of references to achieve the claimed inventions” is
`insufficient to survive JMOL. See id. (finding such
`testimony “not sufficient and fraught with hindsight
`bias”).
`Likewise, generic expert testimony which fails to
`address the “specific combination of prior art elements” or
`“explain why a person of ordinary skill in the art would
`have combined elements from specific references in the way
`the claimed invention does” is insufficient. See id. at
`1328 (first emphasis added); see also InTouch Techs., Inc.
`v. VGO Commc'ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)
`(finding patents valid as matter of law where invalidity
`expert’s “testimony primarily consisted of conclusory
`
`9
`
`Case 1:17-cv-00687-WO-JLW Document 341 Filed 11/08/21 Page 9 of 15
`
`
`
`references to her belief that one of ordinary skill in the
`art could combine these references, not that they would
`have been motivated to do so”).
`Here, the Zhang/Cao combination proffered by Cree would
`require drastic modifications. The following is a side-by-
`side of FIG. 2 of Zhang with the Zhang/Cao combination
`presented to the jury by Cree (DDX3-14):
`
`Neither the “air in” hole nor the “air out” hole
`depicted to the jury are supplied by either the Zhang
`reference or the Cao reference. Indeed, the preferred
`embodiment of Zhang discloses a “solid” light head with no
`
`10
`
`Case 1:17-cv-00687-WO-JLW Document 341 Filed 11/08/21 Page 10 of 15
`
`
`
`holes at all. DX-9 (Zhang); see Nov. 5, 2021 Tr. at 133:4-
`22. It is only an alternate embodiment of Zhang that
`describes a “hollow” light head – and Cree simply assumes
`from there that its top would be open. See Nov. 5, 2021 Tr.
`at 132:12-133:3. Further, Zhang does not include a “fan” as
`depicted above. Rather Cree asserts that the fan of Cao
`should be (somehow – it is explained not how) inserted into
`Zhang. Thus, Cree’s combination involves at least (1)
`drilling a hole in the side Zhang, and (2) attaching the
`micro-fan of Cao to the inside. See Nov. 5, 2021 Tr. at
`134:22-135:1 (Bretschneider: “you use another described
`embodiment [of Zhang], put a hole in the side, and add a
`fan”).
`Cree failed to provide any factual support as to how or
`why a POSA would be motivated to make these drastic
`modifications. Instead, Cree offered the wholly conclusory
`testimony of its expert witness Dr. Bretschneider that to a
`POSA, “it would just be natural to combine them.” Nov. 5,
`2021 Tr. at 88:9-10. Such conclusory expert testimony is
`insufficient to survive JMOL. See ActiveVideo Networks,
`Inc. v. Verizon Commc'ns, Inc., 694 F.3d at 1327 (granting
`
`11
`
`Case 1:17-cv-00687-WO-JLW Document 341 Filed 11/08/21 Page 11 of 15
`
`
`
`JMOL of no obviousness where defendant’s expert’s testimony
`“was essentially a conclusory statement that a person of
`ordinary skill in the art would have known, based on the
`‘modular’ nature of the claimed components, how to combine
`any of a number of references to achieve the claimed
`inventions”); see InTouch Techs., 751 F.3d at 1352 (finding
`patents valid as matter of law, because explaining how a
`POSA “could” combine, but not why a POSA “would” combine,
`is insufficient).
`Further, Cree’s attempt to support a motivation to
`combine by referencing the general similarities between the
`references is plainly deficient. The fact that the
`references were directed to the “same problem,” or that
`they “overlap” in their teachings is insufficient to
`support a motivation to combine. See Purdue Pharma L.P. v.
`Depomed, Inc., 643 F. App’x 960, 966 (Fed. Cir. 2016)
`(affirming lack of obviousness because party’s “expert
`opined generally on the interrelated teachings of those
`references, but did not explain in sufficient detail how or
`why a skilled artisan would have been motivated to combine
`the ‘swelling’ and ‘substantially intact’ features . . . to
`
`12
`
`Case 1:17-cv-00687-WO-JLW Document 341 Filed 11/08/21 Page 12 of 15
`
`
`
`attain the claimed dosage form”); Kinetic Concepts, Inc.,
`688 F.3d at 1369 (references which “independently
`accomplish similar functions” would provide “no reason to
`combine the features of both devices into a single
`device”); South-Tek Systems, LLC v. Engineered Corrosion
`Solutions, LLC, 748 F. App’x 1003, 1006-07 (Fed. Cir. 2018)
`(references with “redundant functions” did not support
`motivation to combine).
`Accordingly, Cree has failed to support with even a
`scintilla of evidence that there would have been a
`motivation to combine the Zhang and Cao references to
`arrive at the claims of the ‘303 Patent or ‘028 Patent,
`requiring JMOL in OptoLum’s favor.
`IV. CONCLUSION
`For the foregoing reasons, Cree has failed to elicit
`sufficient evidence that the asserted claims of the
`patents-in-suit are invalid as obvious to support a jury
`verdict in its favor. Accordingly, OptoLum respectfully
`requests that the Court enter JMOL in its favor that the
`‘303 and ‘028 are not invalid pursuant to 35 U.S.C. § 103.
`
`13
`
`Case 1:17-cv-00687-WO-JLW Document 341 Filed 11/08/21 Page 13 of 15
`
`
`
`Dated: November 8, 2021
`
`
`
`Respectfully submitted,
`
`By: /s/ Leah R. McCoy
`Robert A. Brooks
`Leah R. McCoy
`Alexander Hornat
`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.
`
`14
`
`Case 1:17-cv-00687-WO-JLW Document 341 Filed 11/08/21 Page 14 of 15
`
`
`
`CERTIFICATION UNDER L.R. 7.3(d)
`Under the provisions of L.R. 7.3(d), I certify that the
`forgoing Memorandum is 2469 words, less than the 6,250
`permitted by the local rules.
`
`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
`
`ME1 38110030v.3
`
`15
`
`Case 1:17-cv-00687-WO-JLW Document 341 Filed 11/08/21 Page 15 of 15
`
`
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