IN THE UNITED STATES DISTRICT COURT
`FOR THE MIDDLE DISTRICT OF NORTH CAROLINA
`
`
`
`OPTOLUM, INC.
`
`
`
`Plaintiff,
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`
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`
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`CREE, INC.,
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`
`
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`Defendant.
`
`v.
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`1:17CV687
`
`
`ORDER ON PARTIES’ MOTIONS IN LIMINE
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`
`
`Presently before this court are the parties’ motions in
`
`limine. This court has reviewed the parties’ briefs accompanying
`
`each motion. Prior to trial, this court issued its rulings on
`
`the parties’ motions in limine. (Doc. 315.) This order
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`supplements findings made in open court and further explains
`
`this court’s reasoning. Although many of these issues may be
`
`moot as a result of the jury’s verdict, the parties are entitled
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`to consider this court’s reasoning in full for purposes of any
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`judgment as a matter of law or appeal.
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`I. PLAINTIFF’S MOTION IN LIMINE #1 – SCREENSHOTS (MARKING)
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`Plaintiff moves to exclude Docs. 191-11, 191-12, 191-13,
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`191-14, 191-15, 191-24, 191-25, and 191-26 (the “Screenshots”).
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`(Doc. 240). Defendant responded, (Doc. 265), and Plaintiff
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`replied, (Doc. 273). The Screenshots were initially offered as
`
`evidence by Defendant at summary judgment to prove Plaintiff
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`Case 1:17-cv-00687-WO-JLW Document 344 Filed 11/24/21 Page 1 of 38
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`FOR THE MIDDLE DISTRICT OF NORTH CAROLINA
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`
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`OPTOLUM, INC.
`
`
`
`Plaintiff,
`
`
`
`
`
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`CREE, INC.,
`
`
`
`
`Defendant.
`
`v.
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`1:17CV687
`
`
`ORDER ON PARTIES’ MOTIONS IN LIMINE
`
`
`
`Presently before this court are the parties’ motions in
`
`limine. This court has reviewed the parties’ briefs accompanying
`
`each motion. Prior to trial, this court issued its rulings on
`
`the parties’ motions in limine. (Doc. 315.) This order
`
`supplements findings made in open court and further explains
`
`this court’s reasoning. Although many of these issues may be
`
`moot as a result of the jury’s verdict, the parties are entitled
`
`to consider this court’s reasoning in full for purposes of any
`
`judgment as a matter of law or appeal.
`
`I. PLAINTIFF’S MOTION IN LIMINE #1 – SCREENSHOTS (MARKING)
`
`Plaintiff moves to exclude Docs. 191-11, 191-12, 191-13,
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`191-14, 191-15, 191-24, 191-25, and 191-26 (the “Screenshots”).
`
`(Doc. 240). Defendant responded, (Doc. 265), and Plaintiff
`
`replied, (Doc. 273). The Screenshots were initially offered as
`
`evidence by Defendant at summary judgment to prove Plaintiff
`
`Case 1:17-cv-00687-WO-JLW Document 344 Filed 11/24/21 Page 1 of 38
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`
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`offered for sale the “BrightLife 800” without proper markings.
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`This court found that “these screenshots do not demonstrate, as
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`a matter of law, that OptoLum offered the BL-800 for sale.”
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`(Doc. 230 at 51.) Plaintiff argues the Screenshots are not
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`relevant and could confuse the jury. (Doc. 240 at 4.) Defendant
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`argues the Screenshots are relevant and admissible. (Doc. 265 at
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`4.)
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`“Evidence is relevant if: (a) it has any tend ency to make a
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`fact more or less probable than it would be without the
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`evidence; and (b) the fact is of consequence in determining the
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`action.” Fed. R. Evid. 401. But, this court “may exclude
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`relevant evidence if its probative value is substantially
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`outweighed by a danger of one or more of the following: unfair
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`prejudice, confusing the issues, misleading the jury, undue
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`delay, wasting time, or needlessly presenting cumulative
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`evidence.” Fed. R. Evid. 403. “‘Unfair prejudice’ within its
`
`context means an undue tendency to suggest decision on an
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`improper basis, commonly, though not necessarily, an emotional
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`one.” Fed. R. Evid. 403 advisory committee’s notes.
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`This court determined that there is a genuine issue of
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`material fact as to whether the Screenshots constituted
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`advertisements or offers for sale. (Doc. 230 at 52.) Because a
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`genuine factual issue remains, that issue is for determination
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`
`
`-2-
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`Case 1:17-cv-00687-WO-JLW Document 344 Filed 11/24/21 Page 2 of 38
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`
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`by the jury. See Martin v. Duffy, 977 F.3d 294, 305 (4th Cir.
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`2020) (quoting Anderson v. Liberty Lobby, 477 U.S. 242, 255
`
`(1986)) (“Credibility determinations, the weighing of the
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`evidence, and the drawing of legitimate inferences from the
`
`facts are jury functions, not those of a judge.”).1
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`This court finds that Plaintiff’s motion in limine
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`regarding the Screenshots should be denied. Whether Plaintiff
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`offered to sale the BL-800 is an issue of fact at trial. The
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`Screenshots have some tendency of showing Plaintiff offered the
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`BL-800 for sale, and they can be also used as evidence against
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`Mr. Dry’s testimony that the lightbulbs were never offered for
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`sale. The Screenshots have some tendency to establish that
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`Plaintiff made the BL-800 and offered it for sale without the
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`proper marking, which supports Defendant’s argument that
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`Plaintiff failed to properly mark in accordance with 35 U.S.C.
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`§ 287(a). That the Screenshots do not establish as a matter of
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`law that Plaintiff offered the BL-800 for sale does not make the
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`Screenshots inadmissible. The weight to be given the Screenshots
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`is for the jury to decide. Plaintiff has not shown that
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`admitting the Screenshots will be substantially more prejudicial
`
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`1 The court notes this evidence and the related issues were
`not presented by Defendant at trial.
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`
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`-3-
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`Case 1:17-cv-00687-WO-JLW Document 344 Filed 11/24/21 Page 3 of 38
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`
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`than probative. Therefore, this court will deny Plaintiff’s
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`motion in limine to exclude the Screenshots, (Doc. 240).
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`II. PLAINTIFF’S MOTION IN LIMINE #2 – STANDING
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`
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`Plaintiff moves to exclude evidence or arguments regarding
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`Plaintiff’s standing to assert infringement of the ‘028 Patent.
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`(Doc. 241). Defendant responded, (Doc. 266), and Plaintiff
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`replied, (Doc. 274). Plaintiff argues that because this court
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`has already determined Mr. Dry assi gned all interest in the ‘028
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`Patent to OptoLum under Arizona law and Defendant has not put
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`forth evidence Mr. Dry breached any fiduciary duty to his
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`ex-wife, Defendant cannot put forth evidence on standing because
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`that would be contrary to this court’s holdings. (Doc. 241 at
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`5.) Defendant argues Plaintiff misrepresents this court’s
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`holding. (Doc. 266 at 4).
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`
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`This court finds Plaintiff’s motion in limine to exclude
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`evidence of standing should be granted. At summary judgment,
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`this court found that Defendant failed to demonstrate that there
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`was no genuine issue of material fact that Martha Baker,
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`Mr. Dry’s ex-wife, retained an ownership interest in the ‘028
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`Patent. (Doc. 230 at 16.) This court finds that additional
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`evidence at trial, and before the jury, is ir relevant and
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`improper.
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`
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`-4-
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`Case 1:17-cv-00687-WO-JLW Document 344 Filed 11/24/21 Page 4 of 38
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`First, “the ultimate question of whether a party has
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`standing is one of law, not fact.” 1000 Friends of Maryland v.
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`Browner, 265 F.3d 216, 227 (4th Cir. 2001) (citation omitted).
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`The question of standing is a jurisdictional question. Rite-Hite
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`Corp. v. Kelley Co., 56 F.3d 1538, 1551 (Fed. Cir. 1995)
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`(citation omitted). “The federal courts are under an independent
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`obligation to examine their own jurisdiction, and standing ‘is
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`perhaps the most important of [the jurisdictional] doctrines .’”
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`FW/PBS, Inc. v. City of Dallas, 493 U.S. 215, 231 (1990)
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`(alteration in original) (quoting Allen v. Wright, 468 U.S. 737,
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`750 (1984)), holding modified by City of Littleton v. Z.J. Gifts
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`D-4, L.L.C., 541 U.S. 774 (2004). Defendant has presented no
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`evidence which might otherwise forecast a lack of standing. Nor
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`has Defendant forecast evidence of any deficiency in Mr. Dry’s
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`assignment for which a jury determination is required.
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`Therefore, neither standing nor the related issues is relevant
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`for the jury’s consideration.
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`Second, this issue has come up in an unusual procedural
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`posture as a result of this court’s order denying summary
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`judgment. This court denied Defendant’s motion for summary
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`judgment on the issue of standing. This court found that Mr. Dry
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`assigned all his interest in the ‘028 Patent to OptoLum, and
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`Defendant presented no evidence of a breach of fiduciary duty by
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`
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`-5-
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`Case 1:17-cv-00687-WO-JLW Document 344 Filed 11/24/21 Page 5 of 38
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`
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`Mr. Dry or any other evidence that might support a finding that
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`a third party retained or currently holds an interest in the
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`‘028 Patent. (See Doc. 230 at 8-16.) Unfortunately, the language
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`of this court’s finding, that Cree “has failed to demonstrate
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`that there is no genuine issue of material fact that Martha
`
`Baker retained an ownership interest in the ‘028 Patent,” (id.
`
`at 16), might be somewhat misleading. It is more accurate to
`
`state that Defendant has presented no persuasive or compelling
`
`argument of fact or law to suggest Mr. Dry’s transfer of the
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`‘028 Patent to OptoLum was invalid, and to the extent this
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`court’s previous order is misunderstood, it is clarified here.
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`Under these circumstances, this court finds that to permit
`
`Defendant to present additional evidence relating to the issue
`
`of standing is neither relevant nor proper as the court, not the
`
`jury, determines standing.
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`
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`Furthermore, this court finds that any evidence to the jury
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`on the issue of standing should be excluded pursuant to Federal
`
`Rule of Evidence 403 as confusing and unfairly prejudicial.
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`Based on this court’s finding as to the law of Arizona, (see
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`Doc. 230), and OptoLum’s presentation of Mr. Dry’s assignment of
`
`the ‘028 Patent, (Doc. 191-9), Defendant has not proffered any
`
`evidence to suggest standing does not exist. Instead, Defendant
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`makes unsupported conclusory allegations. This court finds
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`
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`-6-
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`Case 1:17-cv-00687-WO-JLW Document 344 Filed 11/24/21 Page 6 of 38
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`
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`standing has been previously established, albeit admittedly in a
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`somewhat confusing fashion. If Defendant wishes to challenge
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`Plaintiff’s standing now or in the future, Defendant may file a
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`motion challenging jurisdiction in accordance with the Federal
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`Rules of Civil Procedure. Therefore, this court will grant
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`Plaintiff’s motion in limine to exclude evidence on standing,
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`(Doc. 241).
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`III. PLAINTIFF’S MOTION IN LIMINE #3 – LENKSZUS TESTIMONY
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`
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`Plaintiff moves to exclude testimony from Mr. Lenkszus on
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`any issues other than damages. (Doc. 242.) Defendant responded,
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`(Doc. 267), and Plaintiff replied, (Doc. 275.)
`
`
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`Plaintiff argues that Mr. Lenkszus’s testimony regarding
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`claim construction is not relevant because the court has already
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`ruled on claim construction. (Doc. 242 at 4.) D efendant responds
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`that Mr. Lenkszus’s testimony regarding certain terms in the
`
`patents-in-suit is relevant to understanding how a person of
`
`ordinary skill in the art (“POSA”) would define these terms.
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`(Doc. 267 at 4-5, 7-10.) Defendant seeks to introduce
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`Mr. Lenkszus’s testimony regarding the terms “protrusions,”
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`“fins,” “solid state light sources,” and “power supply.” (Id.)
`
`A.
`
`Claim Construction Testimony
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`
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`In patent cases, “the words of a claim are generally given
`
`their ordinary and customary meaning.” Phillips v. AWH Corp.,
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`
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`-7-
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`Case 1:17-cv-00687-WO-JLW Document 344 Filed 11/24/21 Page 7 of 38
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`
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`415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (internal
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`quotation marks omitted). Interpretation of language in patent
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`claims “is an issue for the judge, not the jury[.]” Markman v.
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`Westview Instruments, Inc., 517 U.S. 370, 391 (1996). Parties
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`are not permitted to argue claim construction disputes to the
`
`jury. CytoLogix Corp. v. Ventana Med. Sys., Inc. , 424 F.3d 1168,
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`1172 (Fed. Cir. 2005). “The risk of confusing the jury is high
`
`when experts opine on claim construction before the jury even
`
`when . . . the district court makes it clear to the jury that
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`the district court’s claim constructions control.” Id.
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`
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`Where the parties do not seek construction of terms,
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`“courts give those terms their ordinary and customary meaning
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`. . . to a person of ordinary skill in the art in question at
`
`the time of the invention.” Apple, Inc. v. Samsung Elecs. Co.,
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`Case No. 12-CV-00630-LHK, 2014 WL 660857, at *3 (N.D. Cal. Feb.
`
`20, 2014) (internal quotation marks omitted) (quoting Belden
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`Techs. Inc. v. Superior Essex Commc’ns LP, 733 F. Supp. 2d 517,
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`545 (D. Del. 2010)). “At trial, ‘parties may introduc[e]
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`evidence as to the plain and ordinary meaning of terms not
`
`construed by the Court to one skilled in the art,’” id. (quoting
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`DNT, LLC v. Sprint Spectrum, LP, NO. 09-CV-21, 2010 WL 582164,
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`at *4 (E.D. Va. Feb. 12, 2010)), “so long as the evidence does
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`not amount to ‘argu[ing] claim construction to the jury .’” Id.
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`
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`-8-
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`Case 1:17-cv-00687-WO-JLW Document 344 Filed 11/24/21 Page 8 of 38
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`
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`(quoting Cordis Corp. v. Boston Sci. Corp., 561 F.3d 1319, 1337
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`(Fed. Cir. 2009)).
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`
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`Courts have imposed several limitations to the introduction
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`of evidence at trial of the plain and ordinary meaning of terms.
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`Testimony about the plain and ordinary meaning of terms
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`supported by reference to the specification and prosecution
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`history is inappropriate and disallowed. MediaTek Inc. v.
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`Freescale Semiconductor, Inc., Case No. 11-cv-5341 YGR, 2014 WL
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`971765, at *5 (N.D. Cal. Mar. 5, 2014) (noting that testimony
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`that discusses the prosecution history or the specification to
`
`establish the plain and ordinary meaning of a term is not to be
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`heard by the jury); Cordis, 561 F.3d at 1337 (holding the
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`district court properly excluded the defendant’ s claim
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`construction argument before the jury where the defendant sought
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`to use the prosecution history as evidence of a claim term); Not
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`Dead Yet Mfg., Inc. v. Pride Sols., LLC, 222 F. Supp. 3d 657,
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`661-62 (N.D. Ill. 2016) (disallowing expert testimony at trial
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`where the expert’s proposed definition of a term was not based
`
`on his technical expertise but “on an interpretation of the
`
`language used in [one of the patent’s claims] in light of the
`
`language used in the patent’s specification ”). Additionally, any
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`evidence contradicting how the court has interpreted a term is
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`inadmissible. Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d
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`
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`-9-
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`Case 1:17-cv-00687-WO-JLW Document 344 Filed 11/24/21 Page 9 of 38
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`1312, 1321 (Fed. Cir. 2009) (“Once a district court has
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`construed the relevant claim terms, and unless altered by the
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`district court, then that legal determination governs for
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`purposes of trial. No party may contradict the court's
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`construction to a jury.”).
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`
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`Defendant’s arguments in opposition to Plaintiff’s motion
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`in limine to exclude Mr. Lenkszus’s testimony on claim
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`construction are not persuasive. First, Defendant has never
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`disclosed many of these terms for construction and never sought
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`leave of this court to amend the terms it originally identified
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`as being in dispute. Local Rule 104.1 requires early disclosure
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`of disputed claim terms. This court finds no reason why
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`Defendant should be allowed to argue for construction of new and
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`additional claim terms just before trial.
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`
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`Second, contrary to Defendant’s assertions, this court has
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`already interpreted “heat dissipation protrusion s” and “fins.”
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`(Doc. 152 at 28-31.) Therefore, any testimony contrary to this
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`definition is inadmissible. Exergen Corp., 575 F.3d at 1321.
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`Third, regarding the terms “solid state light sources” and
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`“power supply,” this court is not convinced that Mr. Lenks zus is
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`a POSA such that he can reasonably opine based on his own skill
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`and expertise on how a POSA would interpret those terms.
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`Defendant does not contend that Mr. Lenkszus is a POSA, so it is
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`
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`-10-
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`Case 1:17-cv-00687-WO-JLW Document 344 Filed 11/24/21 Page 10 of 38
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`
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`unclear to this court how Mr. Lenkszus’s testimony is evidence
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`of how a POSA would apply the plain and ordinary meaning of a
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`claim term. This court therefore finds that Mr. Lenkszus’s
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`testimony about how a POSA would understand these terms to be
`
`unreliable and therefore excluded.
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`B.
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`Terminal Disclaimer Testimony
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`Plaintiff additionally argues that Mr. Lenkszus’ s testimony
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`regarding a terminal disclaimer during the ‘028 Patent
`
`prosecution is irrelevant and prejudicial because Defendant did
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`not cite Mr. Lenkszus’s testimony on the disclaimer issue at
`
`summary judgment. (Doc. 242 at 5.) Defendant responds that
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`“factual evidence of the existence of the terminal disclaimer
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`has a tendency to show that the ‘028 and ‘303 patents have
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`similar claim scope.” (Doc. 267 at 7.) Plaintiff cites no rule
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`in support of its argument that if a party does not cite
`
`evidence at summary judgment, then that party is precluded from
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`offering that evidence at trial. Plaintiff’s argument that the
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`fact Defendant did not cite this testimony at summary judgment
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`therefore makes the testimony irrelevant fails. Accordingly,
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`Mr. Lenkszus’s testimony regarding terminal disclaimer is
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`admissible.
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`In sum, this court finds that Mr. Lenkszus’s testimony on
`
`claim construction is inadmissible, and this court will grant
`
`
`
`-11-
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`Case 1:17-cv-00687-WO-JLW Document 344 Filed 11/24/21 Page 11 of 38
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`
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`Plaintiff’s motion in limine to exclude testimony o n claim
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`construction. This court finds that Mr. Lenkszus’s testimony on
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`terminal disclaimer to be relevant and admissible, and therefore
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`this court will deny Plaintiff’s motion in limine regarding that
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`testimony.
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`IV. PLAINTIFF’S MOTION IN LIMINE #4 – CLAIM CONSTRUCTION
`ARGUMENTS
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`
`
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`Plaintiff moves to exclude testimony from Dr. Bretschneider
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`on claim construction. (Doc. 245.) Defendant responded, (Doc.
`
`268), and Plaintiff replied, (Doc. 276).
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`
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`Like the testimony of Mr. Lenkszus, the terms
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`Dr. Bretschneider offers an opinion on have never been disclosed
`
`as a disputed term, and Defendant has never sought leave of this
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`court to amend the terms it identified as being in dispute.
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`Additionally, this court is not convinced by Defendant’s
`
`argument that Dr. Bretschneider is merely offering testimony
`
`within the purview of the plain and ordinary meaning of the
`
`patent terms. (Doc. 268 at 2-3.) Dr. Bretschneider relies
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`heavily on the prosecution history and specifications to explain
`
`a specific meaning or requirement of t he identified terms. (See,
`
`e.g., Doc. 245-1 at 6, 11.) Dr. Bretschneider is not permitted
`
`to argue claim construction to the jury, and any testimony in
`
`this vein is and will be excluded.
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`
`
`-12-
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`Case 1:17-cv-00687-WO-JLW Document 344 Filed 11/24/21 Page 12 of 38
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`Plaintiff identifies the following terms discussed by
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`Dr. Bretschneider: “outer surface,” “electrical conductors
`
`carried by said elongate thermally conductive member,” and
`
`“configured to conduct.”
`
`A.
`
`“outer surface”
`
`Both patents contain the claim element, “an elongate
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`thermally conductive member having an outer surface . . . .”
`
`‘028 Patent Claim 18; ‘303 Patent Claim 21. Plaintiff argues
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`Dr. Bretschneider improperly construes “outer surface” to
`
`require exposure to ambient air. (Doc. 245 at 7.)
`
`Dr. Bretschneider cites the specifications of the patents in
`
`support of his understanding that “outer surface” requires
`
`exposure to ambient air. (Doc. 245-1 at 6.) This is
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`impermissible claim construction. Because his opinion describes
`
`and relies on evidence beyond that which can be presented to the
`
`jury, his opinion on the meaning of “outer surface” is an
`
`improper subject for testimony at trial.
`
`B.
`
`“electrical conductors carried by said elongate
`thermally conductive member”
`
`
`Dr. Bretschneider also opines on the meaning of “electrical
`
`conductors carried by said elongate thermally conductive
`
`member.” (Doc. 245-1 at 14-16.) In support of his construction
`
`of the term, Dr. Bretschneider cites patent prosecution history
`
`for a related patent to the patents -in-suit. (Id. at 16.)
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`
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`-13-
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`Case 1:17-cv-00687-WO-JLW Document 344 Filed 11/24/21 Page 13 of 38
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`Because Dr. Bretschneider relies in part on the patent
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`prosecution history to construe this term, his opinion on the
`
`plain and ordinary meaning of “electrical conductors carried by
`
`said elongate thermally conductive member” is not proper
`
`testimony for a jury’s consideration.
`
`C.
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`“configured to conduct”
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`During claim construction, the parties agreed that
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`“configured to” meant “specifically designed to.” (Doc. 106.)
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`Dr. Bretschneider’s opinion on “configured to conduct” is
`
`improper because it not only contradicts the agreed-upon
`
`construction but also relies on the prosecution history to
`
`construct the meaning of the phrase. (See Doc. 245-1 at 17.)
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`Dr. Bretschneider’s opinion goes beyond relying on the plain and
`
`ordinary meaning of “configured to conduct” and instead attempts
`
`to explain why the term must be limited. As such, his opinion s
`
`are inappropriate testimony at trial.
`
`D.
`
`Doctrine of Equivalents
`
`Plaintiff argues that Dr. Bretschneider relies on “related
`
`prosecution history to redefine the scope of OptoLum’s accused
`
`equivalent structure.” (Doc. 245 at 13.) Plaintiff cites
`
`paragraph 249 of Dr. Bretschneider’s report in support of this
`
`argument. (Id.) Defendant responds that this opinion was offered
`
`
`
`-14-
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`Case 1:17-cv-00687-WO-JLW Document 344 Filed 11/24/21 Page 14 of 38
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`
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`in response to Plaintiff’s experts’ contentions. (Doc. 268 at
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`11.)
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`This court finds that Dr. Bretschneider’s reliance on the
`
`patent prosecution history of a related patent was done to rebut
`
`the opinions of OptoLum’s experts and not as claim construction
`
`testimony. Plaintiff contends that Dr. Bretschneider uses the
`
`prosecution history “to redefine the scope of OptoLum’s accused
`
`equivalent structure,” (Doc. 245 at 13), but this court finds
`
`that is not the same as claim construction. To rebut Plaintiff’s
`
`doctrine of equivalence claim, Defendant is permitted to put
`
`forth evidence in response to Plaintiff’s claimed equivalence.
`
`Therefore, this court will allow Dr. Bretschneider to testify to
`
`the patent prosecution history to the extent he is rebutting
`
`testimony of Plaintiff’s experts on the doctrine of equivalents
`
`and not offering claim construction testimony.
`
`E.
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`“carried on” and “carried by”
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`Finally, Plaintiff argues that Dr. Bretschneider provides
`
`opinions that contradict terms already construed by this court.
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`(Doc. 245 at 14.) Plaintiff argues Dr. Bretschneider contradicts
`
`this court’s construction of “carried on” by requiring no direct
`
`contact with intervening structures. (Id.) Defendant responds
`
`that Dr. Bretschneider’s testimony does not rely on the presence
`
`of an intervening structure. (Doc. 268 at 13.) Plaintiff also
`
`
`
`-15-
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`Case 1:17-cv-00687-WO-JLW Document 344 Filed 11/24/21 Page 15 of 38
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`
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`argues that Dr. Bretschneider’s opinion contradicts the parties’
`
`agreed-upon construction of “carried by.” (Doc. 245 at 15.)
`
`Defendant responds again that Dr. Bretschneider’s testimony uses
`
`the construction “supported by” as agreed-upon by the parties.
`
`(Doc. 268 at 13-14.)
`
`Dr. Bretschneider opines that “the LEDs of the Accused
`
`Products are mounted on either an MCPCB or a Flex Board. These
`
`board structures are separate components from the heat sink. It
`
`is the MCPCB or the Flex Board that supports the LEDs not the
`
`heat sink.” (Doc. 245-1 at 13.) Dr. Bretschneider also opines
`
`that “[i]n no case are the conductors connected to the driver
`
`board attached to or otherwise supported by the heat sink
`
`structure.” (Id. at 16.)
`
`This court does not find that Dr. Bretschneider’s opinions
`
`contradict the terms “carried on” or “carried b y.”
`
`Dr. Bretschneider’s opinions do not explicitly rely on the
`
`presence of an intervening structure in contradiction to this
`
`court’s construction of “carried on .” To the extent
`
`Dr. Bretschneider’s opinions are offered at trial to contradict
`
`already construed terms, that testimony will not be allowed.
`
`Additionally, Dr. Bretschneider uses the agreed -upon
`
`construction of “carried by” to mean “supported by” in his
`
`
`
`-16-
`
`Case 1:17-cv-00687-WO-JLW Document 344 Filed 11/24/21 Page 16 of 38
`
`
`
`opinion. (Doc. 245-1 at 16.) Thus, he is not contradicting an
`
`already construed term.
`
`Based upon the foregoing, this court rules as follows on
`
`the specific items identified in the motion in limine with
`
`respect to Dr. Bretschneider’s opinion: Dr. Bretschneider’s
`
`opinion regarding “outer surface,” “electrical conductors
`
`carried by said elongate thermally conductive member,” and
`
`“configured to conduct” is excluded as impermissible claim
`
`construction testimony. Dr. Bretschneider’s testimony on the
`
`doctrine of equivalents that relies on the patentee’s statements
`
`during patent prosecution is not excluded. Dr. Bretschneider’s
`
`testimony on “carried on” and “carried by” is not excluded.
`
`V.
`
`PLAINTIFF’S MOTION IN LIMINE #5 – EXPERT OPINIONS GROUNDED
`IN INADMISSIBLE HEARSAY
`
`
`
`
`
`Plaintiff moves to exclude portions of the opinions of
`
`Defendant’s experts because those opinions are grounded in
`
`inadmissible hearsay. (Doc. 243.) Defendant responded, (Doc.
`
`269), and Plaintiff replied, (Doc. 277.) First, Plaintiff argues
`
`that Dr. Bretschneider relies on a conversation with an
`
`undisclosed witness in support of his opinion regarding the h eat
`
`dissipation properties of LEDs. (Doc. 243 at 5-6.) Second,
`
`Plaintiff argues that Mr. Robert Yerman relies on conversations
`
`with people who will not be testifying at trial to support his
`
`damages opinion. (Id. at 7-10.) Mr. Yerman relied on statements
`
`
`
`-17-
`
`Case 1:17-cv-00687-WO-JLW Document 344 Filed 11/24/21 Page 17 of 38
`
`
`
`from Cree’s Vice President and General Manager of Lamps in
`
`opining on the reduced manufacturing cost for the accused
`
`products. (Doc. 269 at 2.) Mr. Yerman also relied on production
`
`materials, deposition transcripts, and Cree press releases,
`
`including testimony by Cree’s chief intellectual property
`
`counsel and Cree’s director of intellectual property licensing.
`
`(Id.) Defendant responds that Dr. Bretschneider and Mr. Yerman
`
`relied on information of a type reasonably relied upon by
`
`experts in their field, and therefore their opinions should not
`
`be excluded. (Id. at 3.)
`
`
`
`Under Federal Rule of Evidence 703, experts are permitted
`
`to rely on evidence that is otherwise inadmissible if it is the
`
`type of evidence that would be relied on by someone else in
`
`their field. Fed. R. Evid. 703; see United States v. Smith, 919
`
`F.3d 825, 841 n.9 (4th Cir. 2019). However, an expert’s opinion
`
`cannot simply serve as a conduit for testimonial hearsay. United
`
`States v. Johnson, 587 F.3d 625, 635 (4th Cir. 2009). “The key
`
`question for the court is whether the expert is offering an
`
`independent judgment, based on the application of his training
`
`and experience to the sources before him, or whether he is
`
`merely acting as a transmitter for testimonial hearsay.” Good v.
`
`Am. Water Works Co., Civil Action No. 2:14-01374, 2016 WL
`
`
`
`-18-
`
`Case 1:17-cv-00687-WO-JLW Document 344 Filed 11/24/21 Page 18 of 38
`
`
`
`5441517, at *8 (S.D. W. Va. Sept. 26, 2016) (citing Johnson, 587
`
`F.3d at 635).
`
`A.
`
`Dr. Bretschneider
`
`In forming his opinion for this case, Dr. Bretschneider
`
`relied on a discussion he had with Mr. Robert Gardner, an
`
`employee of Hewlett Packard who led the team that developed the
`
`Super Flux LED package. (See Doc. 269 at 3-4.) Plaintiff argues
`
`that Dr. Bretschneider’s opinion is not admissible under Federal
`
`Rule of Evidence 703 because Defendant has not shown that
`
`“statements of former employees of unrelated corporations are
`
`the kind of information reasonably relied upon by invalidity
`
`experts.” (Doc. 243 at 7.) Defendant argues it was reasonable
`
`for Dr. Bretschneider to rely on Mr. Gardner’s opinion because
`
`Mr. Gardner was the designer of the Super Flux LED, so “[t]his
`
`is the most direct form of evidence that could be relied on by
`
`an expert as it concerns a person with direct knowledge of the
`
`specific package structure at issue and its use in convecting
`
`heat.” (Doc. 269 at 6.)
`
`This court finds that Dr. Bretschneider’s opinion should
`
`not be excluded because he relied on discussion with
`
`Mr. Gardner. Mr. Gardner was the leader of the team who designed
`
`the LED package about which Dr. Bretschneider was opining.
`
`Moreover, Dr. Bretschneider’s testimony reflect s independent
`
`
`
`-19-
`
`Case 1:17-cv-00687-WO-JLW Document 344 Filed 11/24/21 Page 19 of 38
`
`
`
`judgment regarding the heat dissipation from LED packages, and
`
`his conversation with Mr. Gardner served to confirm his
`
`independent judgment on LED heat dissipation capabilities. For
`
`these reasons, this court finds it was reasonable for
`
`Dr. Bretschneider to rely on his conversation with Mr. Gardner.
`
`B.
`
`Mr. Yerman
`
`Mr. Yerman relied on a conversation with Mr. Scott Schwab,
`
`Cree’s Vice President and General Manager of Lamps, to support
`
`his opinion on damages. (Doc. 269 at 6.) Plaintiff argues that
`
`Mr. Yerman “does not provide any documentary evidence supporting
`
`Mr. Schwab’s statements” nor has he “independently verified the
`
`underlying facts.” (Doc. 243 at 8.) Defendant argues it was
`
`reasonable for Mr. Yerman to rely on Mr. Schwab’s statements
`
`because Mr. Schwab had direct knowledge of the cost -reducing
`
`measures undertaken by Defendant. (Doc. 269 at 7.)
`
`This court finds that Mr. Yerman’s opinion should not be
`
`excluded because he relied on a conversation with Mr. Schwab.
`
`Plaintiff has not shown it was unreasonable for Mr. Yerman to
`
`rely on this conversation. Further, Mr. Yerman is not merely
`
`transmitting the testimony of Mr. Schwab. Rather, Mr. Y erman
`
`considered Mr. Schwab’s statements along with other evidence to
`
`determine a reasonable royalty. Moreover, Mr. Schwab was the
`
`best person for Mr. Yerman to discuss Cree’s cost-reducing
`
`
`
`-20-
`
`Case 1:17-cv-00687-WO-JLW Document 344 Filed 11/24/21 Page 20 of 38
`
`
`
`measures since those were determined by Mr. Schwab. Therefore,
`
`this court finds it was reasonable for Mr. Yerman to rely on his
`
`conversation with Mr. Schwab in forming an opinion on a
`
`reasonable royalty.
`
`In sum, this court finds it was reasonable for
`
`Dr. Bretschneider and Mr. Yerman to rely on the statements of
`
`Mr. Gardner and Mr. Schwab in forming their opinions in this
`
`case. Accordingly, this court will deny Plaintiff’s motion in
`
`limine to exclude certain opinions of Dr. Bretschneider and
`
`Mr. Yerman, (Doc. 243). Federal Rule of Evidence 703 separately
`
`addresses the question of whether inadmissible facts or data may
`
`be disclosed to the jury. Because that is not at issue in this
`
`motion in limine, this court need not address whether those
`
`conversations may be disclosed to the jury.
`
`VI. PLAINTIFF’S MOTION IN LIMINE #6 – UNDISCLOSED INVALIDITY
`ARGUMENTS
`
`
`
`
`Plaintiff moves to exclude certain invalidity theories not
`
`disclosed in Defendant’s Final Amended Invalidity Contentions.
`
`(Doc. 244.) Defendant responded, (Doc. 270), and Plaintiff
`
`replied, (Doc. 278.) Plaintiff contends that several prior art
`
`references and a new indefiniteness argument appear for the
`
`first time in Dr. Bretschneider’s rebuttal report. (Doc. 244 at
`
`2-3.)
`
`
`
`-21-
`
`Case 1:17-cv-00687-WO-JLW Document 344 Filed 11/24/21 Page 21 of 38
`
`
`
`Defendant served its Opening Expert Report on May 6, 2019,
`
`and a Rebuttal Expert Report on June 19, 2019. ( Id. at 8.) This
`
`court granted Defendant leave to amend its Invalidity
`
`Contentions and its expert report. (Doc. 178 at 13.) On
`
`September 20, 2019, Defendant served its Amended Invalidity
`
`Contentions and its Amended Opening Expert Report on Invalidity.
`
`(Doc. 244 at 8.) On November 1, 2019, Defendant served its
`
`Amended Rebuttal Expert Report. (Id. at 9.)
`
`Plaintiff contends that the prior art reference Cronin
`
`appeared for the first time on June 19, 2019, in
`
`Dr. Bretschneider’s Rebuttal Expert Report. ( Id.) Plaintiff
`
`further contends that Cronin was not referenced in Defendant’s
`
`Amended Invalidity Contentions or its Amended Opening Expert
`
`Report. (Id.) Plaintiff alleges that Cronin was referenced in
`
`Dr. Bretschneider’s Amended Rebuttal Expert Report, along with
`
`“a previously undisclosed indefiniteness argument.” ( Id.)
`
`Plaintiff further alleges Defendant included additional prior
`
`art combinations not previously disclosed in Defendant’s
`
`Invalidity Contentions. (Id. at 9-10.) Plaintiff argues
`
`Defendant’s actions violate Local Rule 103.3 and Federal Rule of
`
`Civil Procedure 26(a)(2). (Id. at 1.)
`
`Defendant responds that Dr. Bretschneider cited Cronin to
`
`rebut Plaintiff’s expert, Dr. A. Brent York. (Doc. 270 at 5-6.)
`
`
`
`-22-
`
`Case 1:17-cv-00687-WO-JLW Document 344 Filed 11/24/21 Page 22 of 38
`
`
`
`Defendant contends it is not precluded under the Local Rules
`
`from disclosing new prior art in rebuttal. (Id.)
`
`This district’s local patent rules provide that invalidity
`
`contentions must contain:
`
`(a) The identity of each item of prior art that
`allegedly anticipates each asserted claim or renders
`it obvious. . . ;
`(b) Whether each item of prior art anticipates
`each asserted claim or renders it obvious. If a
`combination of items of prior art makes a claim
`obvious, each such combination, and the motivation to
`combine such items, must be identified;
`(c) A chart identifying where specifically in
`each alleged item of prior art each element of each
`asserted claim is found, . . . ; and
`(d) Any grounds of invalidity of any of the
`asserted claims based on 35 U.S.C. § 1 01, or on
`indefiniteness or lack of enablement or written
`description under 35 U.S.C. § 112, citing the
`applicable statut
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