UNITED STATES DISTRICT COURT
`MIDDLE DISTRICT OF NORTH CAROLINA
`OptoLum, Inc.,
`Plaintiff,
`
`)))))))))))
`
`vs.
`Cree, Inc.,
`Defendant.
`
`Civil Action No. 1:17-cv-
`00687
`
`PLAINTIFF OPTOLUM, INC.’S MEMORANDUM IN SUPPORT OF ITS
`MOTION FOR JUDGMENT AS A MATTER OF LAW PURSUANT TO FED. R.
`CIV. P. 50(b) THAT THE ASSERTED PATENTS ARE NOT INVALID
`UNDER 35 U.S.C. § 103
`
`I.
`
`INTRODUCTION
`Pursuant to Fed. R. Civ. P. 50(b), Plaintiff OptoLum,
`Inc. (“OptoLum”) hereby submits this Memorandum in Support
`of its Motion For Judgment As A Matter Of Law (“JMOL”) That
`Its Asserted U.S. Patent Nos. 6,831,303 and 7,242,028 Are
`Not Invalid For Obviousness Pursuant To 35 U.S.C. § 103
`(“Rule 50(b) Motion”).
`Defendant Cree, Inc. (“Cree”) asserted two combinations
`of prior art against OptoLum’s U.S. Patent Nos. 6,831,303
`(the “‘303 Patent”) and 7,242,028 (the “‘028 Patent”)
`(collectively the “Asserted Patents”) at trial: (1) U.S.
`
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`
`MIDDLE DISTRICT OF NORTH CAROLINA
`OptoLum, Inc.,
`Plaintiff,
`
`)))))))))))
`
`vs.
`Cree, Inc.,
`Defendant.
`
`Civil Action No. 1:17-cv-
`00687
`
`PLAINTIFF OPTOLUM, INC.’S MEMORANDUM IN SUPPORT OF ITS
`MOTION FOR JUDGMENT AS A MATTER OF LAW PURSUANT TO FED. R.
`CIV. P. 50(b) THAT THE ASSERTED PATENTS ARE NOT INVALID
`UNDER 35 U.S.C. § 103
`
`I.
`
`INTRODUCTION
`Pursuant to Fed. R. Civ. P. 50(b), Plaintiff OptoLum,
`Inc. (“OptoLum”) hereby submits this Memorandum in Support
`of its Motion For Judgment As A Matter Of Law (“JMOL”) That
`Its Asserted U.S. Patent Nos. 6,831,303 and 7,242,028 Are
`Not Invalid For Obviousness Pursuant To 35 U.S.C. § 103
`(“Rule 50(b) Motion”).
`Defendant Cree, Inc. (“Cree”) asserted two combinations
`of prior art against OptoLum’s U.S. Patent Nos. 6,831,303
`(the “‘303 Patent”) and 7,242,028 (the “‘028 Patent”)
`(collectively the “Asserted Patents”) at trial: (1) U.S.
`
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`
`
`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”). Upon oral motion by
`OptoLum at the close of Cree’s evidence pursuant to Rule
`50(a),1 the Court granted Judgment as a Matter of Law that
`the combination of Abdelhafez + Norlux Hex did not
`invalidate the Asserted Patents, but denied OptoLum’s
`Motion with respect to the Zhang + Cao combination.2, 3
`After giving contradictory testimony and being
`impeached on the stand, Cree’s witness Dr. Bretschneider
`admitted that the Abdelhafez + Norlux Hex combination did
`not render the Asserted Patents obvious, leaving only the
`Zhang + Cao combination to support Cree’s defense of
`
`1 Following the oral motion on the record, OptoLum filed a
`written motion at Dkt. No. 341.
`2 See Oral Order at Nov. 9, 2021 Tr. at 2:7-3:11; Docket Text
`Nov. 22, 2021.
`3 As the Court is aware, despite the Court’s instruction that the
`jury should not reach a determination regarding validity if
`infringement was not found, the jury initially went on to answer
`the verdict questions regarding obviousness. The Court
`subsequently requested that these responses be struck by the
`jury foreman and stated that it would not enter judgment of
`invalidity. It is worth noting however that the jury’s responses
`show serious inconsistencies in their determination of
`obviousness which call into question their understanding of the
`law and its application to the facts in evidence.
`2
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`obviousness. Just as this Court found regarding the
`Abdelhafez + Norlux Hex combination, Cree has failed to put
`forth sufficient evidence for a reasonable jury to find
`that the combination of Zhang + Cao renders any Asserted
`Claim obvious. Under Cree’s theory, this combination of
`references requires extensive modifications in order to
`even disclose the elements of the Asserted Claims.
`Furthermore, Dr. Bretschneider’s testimony regarding the
`motivation to combine these references was wholly
`conclusory and legally insufficient to support Cree’s
`burden, and Cree provided no evidence at all that there
`would be a reasonable expectation of success of this
`combination. These deficiencies alone are fatal to Cree’s
`position. Additionally, OptoLum introduced significant
`evidence regarding objective indicia of nonobviousness
`which was entirely uncontroverted. Therefore, a reasonable
`jury simply could not find that Cree had met its burden to
`prove the obviousness of the Asserted Patents by clear and
`convincing evidence and JMOL should be granted.
`
`3
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`II.
`
`LEGAL STANDARD
`Pursuant to Fed. R. Civ. P. Rule 50(b), “[i]f the court
`does not grant a motion for judgment as a matter of law
`made under Rule 50(a) . . . the movant may file a renewed
`motion for judgment as a matter of law. . . .” OptoLum
`initially moved for JMOL regarding nonobviousness at the
`close of evidence and now properly renews that motion. See
`Dkt. No. 341.
`A motion for JMOL 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
`
`4
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`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 granting patentee JMOL of patent
`validity), aff'd, 694 F.3d 1312 (Fed. Cir. 2012).
`A patent may not issue “if the differences between the
`claimed invention and the prior art are such that the
`claimed invention as a whole would have been obvious before
`the effective filing date of the claimed invention to a
`person having ordinary skill in the art to which the
`claimed invention pertains.” 35 U.S.C. § 103. Obviousness
`is a question of law based on underlying factual findings
`regarding: (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
`
`5
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`considerations of nonobviousness. Graham v. John Deere Co.,
`383 U.S. 1, 17–18 (1966). Where the prior art fails to
`disclose a claim 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).
`JMOL of nonobviousness is appropriate where the
`proponent of the defense has not provided evidence of a
`motivation to combine the proffered references or that
`there is a reasonable expectation of success of the
`
`6
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`combination. “[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.
`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
`
`7
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`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
`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”).
`
`8
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`A determination of whether a patent claim is invalid as
`obvious under § 103 also requires consideration of
`objective indicia of nonobviousness, including industry
`praise for the invention, and it is error to reach a
`conclusion of obviousness until they are considered. Apple
`Inc., v. Samsung Elecs. Co., Ltd., 839 F.3d 1034, 1048
`(Fed. Cir. 2016). Simply put, any fact finder must evaluate
`secondary considerations before determining obviousness.
`Id.; see InTouch Techs., 751 F.3d at 1352 (finding that the
`district court erred in denying Plaintiff’s JMOL of
`nonobviousness in part because defendant failed to rebut
`evidence of objective indicia of nonobviousness, including
`industry praise).
`III.
`ARGUMENT
`OptoLum is entitled to JMOL that the Asserted Patents
`are not obvious because the testimony of Dr. Bretschneider
`that a person of ordinary skill in the art (“POSA”) would
`be motivated to combine the only remaining prior art
`references, Zhang and Cao, in the configuration proffered
`by Cree with a reasonable expectation of success was
`conclusory, unsupported, and simply not legally sufficient
`
`9
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`to support Cree’s burden of proof by clear and convincing
`evidence, and OptoLum introduced uncontroverted evidence of
`objective
`indicia
`of
`nonobviousness.
`Therefore
`no
`reasonable jury could find the Asserted Patents obvious in
`light of this combination under Section 103.
`A. Cree Cannot Prove that the Zhang + Cao Combination
`Invalidates the Asserted Claims
`In the first instance, the Zhang + Cao combination
`proffered by Cree assumes drastic modifications in order to
`even disclose each of the elements of the Asserted Patents.
`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):
`
`10
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`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, yet these (imagined) air
`ports are necessary for this combination to disclose the
`“configured to conduct” element present in each of the
`Asserted Claims. Indeed, the preferred embodiment of Zhang
`discloses a “solid” light head with no 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, without any support
`other than the conclusory testimony of Dr. Bretschneider,
`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 non-enabled fan of Cao
`should somehow be inserted into Zhang. Thus, Cree’s
`combination involves at least (1) assuming an open top in
`Zhang; (2) drilling a hole in the side of Zhang, and (3)
`attaching the undescribed and non-enabled fan of Cao to the
`inside.
`Nov.
`5,
`2021
`Tr.
`at
`134:22-135:1
`See
`(Bretschneider: “you use another described embodiment [of
`Zhang], put a hole in the side, and add a fan”).
`
`11
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`No reasonable jury could find that the Zhang + Cao
`combination renders any asserted claim obvious in light of
`the radical modifications required to disclose the elements
`of the Asserted Claims. 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
`(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”).
`Additionally, Cree failed to introduce any evidence as
`to how or why a POSA would be motivated to modify these
`references and combine them in the way Dr. Bretschneider
`suggested, nor was there any evidence of a reasonable
`expectation
`of
`success
`of
`this
`combination.
`Dr.
`
`12
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`Bretschneider’s testimony regarding the combination of
`these references consists nearly entirely of statements
`regarding the similarities between the references ending
`with the boldfaced conclusion that “it would just be
`natural to combine them.” Nov. 5, 2021 Tr. at 88:9-10.
`Q [Mr. Harper] Why is that a person of
`ordinary skill in the art would combine
`the disclosure of the Zhang and Cao
`references?
`A [Dr. Bretschneider] They're both
`essentially doing the same thing. They're
`both
`a
`version
`of
`a
`replacement
`lightbulb. They both have an elongate
`thermally conductive member. They have
`LED packages in similar arrangements. One
`of them has fins on the outside that's
`used for he's [sic] [heat] dissipation.
`That's a common way. The other one has a
`fan inside. That's another way to
`dissipate heat via convection. That's
`forced convection instead of natural
`convection. So one is dissipating heat
`through fins, one's dissipating heat
`through inside. They're both trying to
`solve the same problem. They're both
`using almost the same approach. It's just
`a difference am I only going to rely on
`natural convection, or am I going to help
`out Mother Nature and have a fan boost
`the heat dissipation?
`Nov. 5, 2021 Tr. at 84:7-22.
`Q [Mr. Harper] So why is it that you
`combined the Zhang and Cao references?
`
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`A [Dr. Bretschneider] Again, a person of
`ordinary skill in the art looking to
`solve a similar problem would find that
`both of them overlap quite a bit. They
`both have elongate members; they are both
`LED light sources; they're replacement
`lightbulbs; they're both relying on
`convection to dissipate heat generated by
`the light emitting diodes. The real
`difference is is it only natural
`convection, or is it forced convection?
`Id. at 86:23-87:6.
`Q [Mr. Harper] Now, why is it that a
`person of ordinary skill in the art would
`combine Zhang and Cao to have forced air
`in and out of the hollow member disclosed
`by Zhang?
`A [Dr. Bretschneider] Forced convection
`is a more efficient way of dissipating
`heat. So if I were attempting to design
`something based on the teachings of
`Zhang, and I couldn't dissipate enough
`heat, Cao tells you, well, a person of
`ordinary skill would know anyways. Forced
`convection is better, but instead of just
`mounting a fan outside, put the fan
`inside. Force the air inside through the
`heat sink. That will help you dissipate
`more heat. So it's a similar problem and
`similar approach, and, again, they are
`very closely related references, and it
`would just be natural to combine them.
`Id. at 87:23-88:10.
`The above quoted portions represent the entirety of
`Cree’s evidence regarding the motivation to combine these
`references.
`Such
`conclusory
`expert
`testimony
`is
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`insufficient to survive JMOL. See ActiveVideo Networks,
`Inc., 694 F.3d at 1327 (granting JMOL of no obviousness
`where the supporting 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”); 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).
`Dr. Bretschneider’s additional testimony regarding the
`similarity of the references does nothing to support Cree’s
`burden here. 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
`
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`‘substantially intact’ features . . . to 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 Sys., 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).
`Finally, Cree provided no evidence at all that there
`would be any expectation of success of this contrived
`combination. Cree, through Dr. Bretschneider, wholly failed
`to provide the “necessary articulated reasoning with some
`rational underpinning to support a conclusion of invalidity
`based on [this combination].” InTouch Techs., 751 F.3d at
`1351 (finding that expert’s analysis regarding the
`motivation to combine the elements used the Asserted
`Patents as a roadmap for putting pieces of a jigsaw puzzle
`together, without any articulated support for a motivation
`to combine the elements or an expectation of success of the
`combination).
`
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`In addition to Cree’s wholesale failure to support
`their burden, OptoLum’s expert, Mr. York, provided
`significant testimony that this combination did not
`disclose each of the elements of the claims, that a POSA
`would not be motivated to combine the references as Cree
`suggests because of the known difficulty of sourcing and
`implementing a fan as would be required to practice the
`claimed elements, and that this combination would not be
`expected to succeed because of the lack of enablement of
`the necessary fan by the Cao reference.
`In the first instance, Mr. York testified that even in
`combination the Cao + Zhang references do not disclose
`certain elements of the Asserted Claims, namely heat
`dissipation protrusions carried on the outer surface of the
`same elongate member as the LEDs.
`Q [Mr. Toms] Would Cree's proposed
`combination even solve the deficiencies
`that you identified with respect to
`Zhang?
`A [Mr. York] No, it wouldn't.
`Q And why not?
`A Because, essentially, the light head is
`still a separate member. And so the
`elongated thermally -- the elongate
`thermally conductive member is still a
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`separate piece. It's removable, and it's
`on the top of the Zhang reference. And,
`furthermore,
`the
`heat
`dissipation
`protrusions are still not carried on the
`outer surface of that elongate thermally
`conductive member.
`Nov. 8, 2021 Tr. at 139:18-140:3.
`Mr. York also testified that the fan relied upon by
`this combination for the “configured to conduct” element
`was not disclosed nor enabled by the teaching of the Cao
`reference.
`Q [Mr. Toms] And what is Cao's thermal
`management design?
`A [Mr. York] By and large, Cao creates
`this convoluted path inside this heat
`sink. And in order for it to operate, he
`describes a cartoon -- a fan to,
`basically, drive air. It's a forced air
`type solution.
`Q And what does Cao teach about this fan?
`A If you read the four corners of this
`patent, there's no teaching whatsoever
`what that fan is. There's no teaching
`about what size or how you would obtain
`such a thing.
`Q Does it teach where to find such a fan
`that would be suitable for this space?
`A Not at all, no.
`Q Does it teach how to install or use
`such a fan in this configuration?
`
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`A No. And in order for that -- there
`should have been some disclosure of how
`it would be implemented, how it would go
`into this design, and if it was even
`available. An exemplary would be helpful
`to a person to look at this patent.
`Q Would a person of ordinary skill in the
`art have been able to find a suitable fan
`in 2002 to fit into this space?
`A In my opinion, there is no such fan
`that would have existed at the time.
`Id. at 134:18-135:14.
`Finally, Mr. York testified that there would be no
`expectation of success of this combination in part because
`of the disparate size of the references and the lack of
`enablement.
`Q [Mr. Toms] So moving on to the
`motivation to combine. Did you hear Dr.
`Bretschneider's theory that could be
`obvious to add the fan of Cao into the
`light head of Zhang?
`A [Mr. York] Yes.
`Q Do you agree with him?
`A No.
`Q First, would there be a reasonable
`expectation of success in using the fan
`from Cao in Zhang's light head?
`A No, there wouldn't, because the Zhang
`reference is actually smaller than Cao.
`If you look at the design of the base,
`it's a DC bayonet base, typical for a
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`lamp that you would see, for example, for
`a turn signal. It's even smaller than a
`traditional lightbulb. And, as a result
`of that, the space is even smaller. So
`the same non-enablement that Cao has in
`his reference would apply to this
`combination.
`Q Next, would a person of ordinary skill
`in the art be motivated to use a fan from
`Cao in the Zhang light head?
`A In my -- in my experience and opinion,
`no.
`Q And is there any testimony you've heard
`in this case that would support that
`opinion?
`A Yes. In fact, the testimony of some of
`the Cree employees that were actually
`working on their lamp design employing
`fans, there was commentary about them
`being noisy and the potential for
`vibration. We do know that they're
`costly, and they were large. So they were
`bulky. They were hard to implement. And
`the other issue is that if you're
`creating a light source, you want it to
`work on a dimmer. One of the challenges
`is the fans typically don't behave well
`when you put them on a dimmer because of
`the circuitry that drives them.
`Id. at 138:13-139:17.
`Therefore, there is not even a scintilla of evidence
`for a reasonable jury to find that the Asserted Patents are
`obvious in light of the Zhang + Cao combination and
`OptoLum’s Rule 50(b) Motion should be granted.
`
`20
`
`Case 1:17-cv-00687-WO-JLW Document 349 Filed 12/07/21 Page 20 of 31
`
`
`
`B. Industry Praise for the OptoLum Invention Supports JMOL
`Through the testimony of OptoLum’s inventor Mr. Joel
`Dry, co-founder Karen Baker, as well as Mr. Brent York,
`OptoLum adduced unrefuted evidence of industry praise for
`the OptoLum prototype, which the Parties agree embodies the
`Asserted Patents. Such industry praise is exactly the type
`of objective indicia of nonobviousness that must be
`considered in any determination of patent validity.
`Mr. Dry and Ms. Baker both testified that the industry
`leading designer of high-power LEDs, Lumileds, chose to
`exhibit the OptoLum prototype in the Lumileds booth at two
`prominent lighting conventions in 2003 as an example of
`cutting edge technology using Lumileds’ LEDs.
`Q [Mr. Brooks] And when was that? When
`did you start the prototype process, if
`you recall?
`A [Mr. Dry] Well, we started it probably
`in the fall of 2002, I guess, if not the
`spring of 2003. And we showed it in
`LightFair in New York in early 2003.
`Q Okay.
`A We were invited by Lumileds, the
`manufacturer of the LED chip that we
`used, to exhibit in their booth as an
`application of their LED. That was a
`great honor. There weren't many people
`
`21
`
`Case 1:17-cv-00687-WO-JLW Document 349 Filed 12/07/21 Page 21 of 31
`
`
`
`who were exhibiting in their booth, and
`they were all invited guests.
`Q So when you say you exhibited it in the
`Lumileds booth, can you describe the --
`what was the exhibit in the booth?
`A So we had -- we had a -- an example of
`a prototype of our equivalent to a 60-
`watt
`incandescent
`lightbulb
`–
`the
`equivalent lighting-wise. And we also had
`a
`light
`fixture
`made
`by
`another
`manufacturer in which we integrated our
`lightbulb into it so that we could
`demonstrate that it looks exactly the
`same in application as a traditional 60-
`watt lightbulb.
`Q So fair to say it looked something like
`these – these sconces, but with better
`looking light?
`A It was just a more decorative type
`fixture, but yes.
`Q By decorative fixture, you mean a
`little fancier?
`A A little bit.
`Oct. 26, 2021 Tr. at 44:8-45:6
`Q [Mr. Brooks] Right, right, okay. So you
`say that you were in the Lumileds booth.
`Do you remember the name of that
`exhibition?
`A [Mr. Dry] Yes, that was LightFair.
`Q And describe what LightFair is to the
`jury, please.
`A So LightFair is an annual event that's
`the -- it's the primary event in the
`
`22
`
`Case 1:17-cv-00687-WO-JLW Document 349 Filed 12/07/21 Page 22 of 31
`
`
`
`United States for the lighting industry.
`I don't know the exact number of
`exhibiters, but it's on the order of
`1,000 or more companies exhibiting
`product, and there's somewhere between 50
`and say 80,000 attendees who come through
`every year. And there are -- the
`companies were exhibiting all different
`types of lighting technology, ranging
`from what you would have in your office
`or what you would have in a warehouse or
`what you would see in hospitality,
`hotels, restaurants, or even residential
`applications.
`Q Okay.
`A And highway and roadway. Sorry.
`Q So what was the next lighting show that
`you were involved in?
`A Euroluce, I believe, and that's an
`international lighting show in Milan,
`which happened within a week or so after
`LightFair.
`Q And how did you get yourself invited to
`that show?
`A Once again, Lumileds invited us to
`exhibit in their booth, which was great
`for a small company because we were
`running on a shoe string, and it's very
`expensive to procure a booth and to build
`out a booth, especially in a foreign
`country.
`Q All right. Can you -- and you went to
`Milan?
`A I did, yes.
`Q And did Ms. Baker accompany you?
`
`23
`
`Case 1:17-cv-00687-WO-JLW Document 349 Filed 12/07/21 Page 23 of 31
`
`
`
`A Yes.
`Q Okay. Can you describe that trip just
`briefly for the benefit of the jury?
`A Well, it was a bit of a harrowing
`experience.
`We
`--
`Lumileds
`was
`introducing a warm white LED. So as you
`see the color of the light in this room
`is a cool white. It's a little more blue,
`which is more normal in this sort of
`setting, versus in your home or in a
`restaurant, it might be warmer, or a
`little more amber or more like a
`fireplace. It's just more comforting. And
`Lumileds was introducing the first warm
`white LED to my knowledge. And they asked
`us to put those into our fixture – or
`into our prototype and install it in a
`fixture for this show in Italy. In
`particular, Italy is more of a furniture
`and interiors type show, and it was also
`more sensible for that market. As you
`travel around the world, different parts
`of the world have different tastes in
`color for lighting. But anyway, it was
`perfect timing that Lumileds was rolling
`out their warm white LED, and we were
`able to be the first to apply it into a
`light fixture.
`Id. at 47:18-49:17.
`Ms. Baker’s testimony further supported Mr. Dry’s
`assessment that being displayed in Lumileds’ booth was
`evidence of significant industry recognition of their
`invention.
`Q [Ms. McCoy] And where was the first
`place that you displayed that prototype?
`24
`
`Case 1:17-cv-00687-WO-JLW Document 349 Filed 12/07/21 Page 24 of 31
`
`
`
`A [Ms. Baker] It went to LightFair in New
`York City in Lumileds' booth.
`Q So tell me what LightFair is?
`A LightFair is an exhibition for lighting
`fixture
`manufacturers
`and
`lighting
`products
`for
`specifiers,
`designers,
`distributors.
`Q Did OptoLum have a booth?
`A No, we didn't. We'd been asked by
`Lumileds if we would come and exhibit our
`concept in their booth.
`Q Why would Lumileds ask you to do that?
`A Because it was a different concept. It
`was something new and different. They
`hadn't seen it before. In that booth,
`they were also having an exhibition of
`many other products that were new and
`novel with LEDs.
`Q After that LightFair -- first of all,
`how many people attend something like
`LightFair?
`A Thousands.
`Q And, that year, I don't remember, did
`you say where that was?
`A In New York City --
`Q It was in New York?
`A -- at Javits Center.
`Q Did you show the prototype anywhere
`else?
`A Following LightFair in New York City,
`I'm not sure if it's two weeks later,
`25
`
`Case 1:17-cv-00687-WO-JLW Document 349 Filed 12/07/21 Page 25 of 31
`
`
`
`very quick followup, there was also the
`European light show in Milan, Italy.
`Going to Milan, Lumileds was going to now
`introduce at that show their new warm
`light LEDs, which was a first in the
`business. There were only cool white
`LEDs. They asked if we could take our
`lamp and change out the LEDs. And we
`said, oh, yes, we can. And we got the
`fixture changed out, we changed out the
`LEDs, and headed off to Milan.
`Q And did -- you then went to Milan. And
`did you have a separate booth in Milan?
`A No, we didn't. Once again, we were in
`Lumileds' booth, you know, solely there
`to exhibit Lumileds' latest and greatest
`warm white LEDs.
`Id. at 130:15-132:3.
`Finally, OptoLum’s expert Mr. York testified that
`Lumileds’ recognition of OptoLum’s prototype, which
`embodies the Asserted Patents, was an example of industry
`praise and supported his determination that the Asserted
`Patents were not obvious.
`Q [Mr. Toms] Mr. York, did you also
`consider objective considerations of
`nonobviousness in forming your opinion?
`A [Mr. York] Yes, I did.
`Q And what objective considerations are
`relevant to your testimony today?
`A Well, specifically . . . [i]n industry
`phrase [sic], the way to think about it
`
`26
`
`Case 1:17-cv-00687-WO-JLW Document 349 Filed 12/07/21 Page 26 of 31
`
`
`
`is when somebody sees an invention, and
`they compliment it and they praise it,
`that's one component of it. . . .
`Q
`And
`how
`did
`the
`objective
`considerations inform your opinion of
`validity -- of the validity of
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