`MIDDLE DISTRICT OF NORTH CAROLINA
`OptoLum, Inc.,
`Plaintiff,
`vs.
`Cree, Inc.,
`Defendant.
`
`Civil Action No. 1:17-cv-
`00687
`
`I.
`
`OPTOLUM, INC.’S OPPOSITION TO CREE, INC.’S RENEWED MOTION
`FOR JUDGMENT AS A MATTER OF LAW REGARDING ENSNAREMENT
`INTRODUCTION
`Plaintiff OptoLum, Inc., (“OptoLum”) hereby provides its
`Opposition to Cree, Inc.’s (“Cree’s”) Renewed Motion for
`Judgment as a Matter Law regarding Ensnarement (“Motion”),
`Dkt. No. 354.
`Cree has not presented any single reference or
`combination of references that discloses each of the elements
`of OptoLum’s claim under the Doctrine of Equivalents (“DOE”).
`This Motion should be denied for this reason alone.
`Additionally, Cree’s Motion ignores the significant
`expert testimony that there would be no motivation to combine
`the Arndt and Cao references nor a reasonable expectation of
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`success for this combination and entirely fails to address
`significant unrebutted evidence regarding objective indicia
`of non-obviousness. Therefore, Cree’s Motion should be
`denied.
`II. LEGAL STANDARD
`“Rule 50(b) permits a party to renew its Rule 50(a)
`motion post-trial, asserting the same grounds initially
`raised in the prior motion.” Lusk v. Virginia Panel Corp.
`2014 WL 3900325, at *3 (W.D. Va. Aug. 11, 2014). A 50(b)
`motion “tests the legal sufficiency of a claim, that is,
`assesses whether the claim should succeed or fail because the
`evidence developed at trial was insufficient as a matter of
`law to sustain the claim.” Belk v. Meyer Corp. U.S., 679 F.3d
`146, 155 (4th Cir. 2012).
`For a doctrine of equivalents theory, the range of
`equivalents asserted must not encompass or “ensnare” the
`prior art. See DePuy Spine, Inc. v. Medtronic Sofamor Danek,
`Inc., 567 F.3d 1314, 1322 (Fed. Cir. 2009). The purpose of
`the “ensnarement” inquiry is to ensure that a patentee not
`“obtain, under the doctrine of equivalents, coverage which he
`could not lawfully have obtained from the PTO by literal
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`claims.” Wilson Sporting Goods Co. v. David Geoffrey & Assocs.,
`904 F.2d 677, 684 (Fed. Cir. 1990). It is OptoLum’s burden to
`prove patentability of the DOE claim by a preponderance of
`the evidence. G. David Jang, M.D. v. Bos. Sci. Corp., 872
`F.3d 1275, 1285 (Fed. Cir. 2017).
`In assessing the allegedly ensnared prior art, however,
`the Court “must apply standards of patentability consistent
`with
`our
`jurisprudence
`regarding
`anticipation
`and
`obviousness.” Conroy v. Reebok Int'l, Ltd., 14 F.3d 1570,
`1577 (Fed. Cir. 1994); see also DePuy Spine, 567 F.3d at 1325
`(employing the Section 103 obviousness test as part of
`ensnarement inquiry).
`Patentability can be shown with proof of any of the
`following: (1) the allegedly ensnared combinations do not
`teach all limitations of the claim, (2) the proposed
`combination would not be obvious, or (3) the new art is not
`within the scope of equivalents. See Interactive Pictures
`Corp. v. Infinite Pictures, Inc., 274 F.3d 1371, 1381 (Fed.
`Cir. 2001) (finding no ensnarement where prior art was missing
`a claim element); DePuy Spine, 567 F.3d at 1321 (finding no
`ensnarement where there was no motivation to combine). Merely
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`presenting art within the scope of the equivalents is
`insufficient to prove ensnarement. See Conroy, 14 F.3d at
`1577 (vacating ensnarement ruling based only on a finding
`that equivalent element alone was disclosed in the prior art).
`To assess obviousness, the court must determine “the
`scope and content of the prior art”; “differences between the
`prior art and the claims at issue”; “the level of ordinary
`skill in the pertinent art”; and “[s]uch secondary
`considerations as commercial success, long felt but unsolved
`needs, failure of others, etc., [that] might be utilized to
`give light to the circumstances surrounding the origin of the
`subject matter sought to be patented.” Graham v. John Deer
`Co., 383 U.S. 1, 17-18 (1966).
`Obviousness jurisprudence dictates that “a patent
`composed of several elements is not proved obvious merely by
`demonstrating that each of its elements was, independently,
`known in the prior art.” KSR Int’l Co. v. Teleflex Inc., 550
`U.S. 398, 418-19 (2007). Rather, one must “identify a reason
`that would have prompted a person of ordinary skill in the
`relevant field to combine the elements in the way the claimed
`new invention does.” Id. “Such understandings about reasons
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`to combine or countervailing reasons not to combine could
`come from the knowledge, skill, and creativity of the
`ordinarily skilled artisan.” See Arctic Cat Inc. v.
`Bombardier Recreational Prod. Inc., 876 F.3d 1350, 1360 (Fed.
`Cir. 2017) (finding that potential safety concerns raised in
`prior art was a countervailing reason not to combine).
`III. ARGUMENT
`Cree presents the Court with a reductive version of the
`issues and the evidence while failing to address the glaring
`flaw in its own position. Taking the evidence as a whole,
`OptoLum has more than met its burden to prove that its DOE
`claim does not ensnare Cree’s proffered prior art combination
`and Cree’s Motion must be denied.
`In the first instance, Cree purports to incorporate each
`of its prior briefs regarding this issue by reference. This
`is inappropriate and should be disregarded. While it is true
`that the parties have briefed this issue extensively, each of
`Cree’s prior motions on this issue have been fully briefed,
`considered, and denied by this Court. Cree cannot now rehash,
`by virtue of incorporation by reference, each of these
`previous failed attempts and OptoLum cannot be expected to
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`respond to each of Cree’s previous arguments again here. This
`Motion should be decided on the merits of the present
`arguments alone.
`Cree also asserts that OptoLum’s previous briefing on
`this issue has “narrowed” the question before the Court. This
`is not the case. The ensnarement enquiry remains whether
`OptoLum’s asserted DOE claim would be patentable over the
`prior art. The answer remains assuredly, yes. In fact, the
`questions before the Court at this time have been narrowed by
`Cree itself. Cree initially presented three combinations
`that it alleged were ensnared but because Cree’s expert Dr.
`Bretschneider ultimately admitted during the ensnarement
`hearing that the combinations relying on the Abdelhafez
`reference did not disclose heat dissipation protrusions on
`the outer surface, Cree is left with just one combination
`that it contends renders OptoLum’s DOE claim obvious, Arndt
`+ Cao.1 Because OptoLum has met its burden to show that its
`
`1 Cree has never contended that any single reference,
`including either Arndt or Cao, discloses each of the elements
`of the OptoLum DOE claim.
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`DOE claim would be patentable over the Arndt + Cao combination,
`Cree’s Motion must be denied.
`A.
`THE COMBINATION OF ARNDT + CAO DOES NOT DISCLOSE
`EACH ELEMENT OF OPTOLUM’S DOE CLAIM
`According to Cree, the combination of the Arndt reference
`with the multi-chip packages purportedly disclosed by the Cao
`reference, discloses each element of OptoLum’s DOE claim.2
`Cree’s Motion is entirely focused on the element “heat
`dissipation protrusions on the outer surface” that it
`contends are disclosed by the LEDs of the Arndt reference.
`Cree, however, never addresses the glaringly obvious problem
`with this contention: in the combination of Arndt + and Cao,
`the LEDs of Arndt have been replaced by the Cao package, which
`Dr. Bretschneider admits does not have heat dissipation
`protrusions. In fact, Dr. Bretshneider confirmed during his
`testimony during the ensnarement hearing that this
`combination does not disclose heat dissipation protrusions on
`the outer surface. Ensnarement Hearing, October 7, 2021
`
`2 As stated throughout trial on this matter, OptoLum’s DOE
`claim replaces the LED of the Asserted Claims with “LED chips
`and their surrounding infrastructure” and each remaining
`element remains the same.
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`Transcript (“Ensnarement Tr.”) at 202:8-24. This is reason
`enough to deny Cree’s Motion.
`Furthermore, while Cree’s Motion is focused exclusively
`on whether the Arndt reference discloses heat dissipation
`protrusions on the outer surface, its proposed combination
`also does not disclose the element “LED chips and their
`surrounding infrastructure” including a thermally conductive
`back. As Dr. Steigerwald testified, Cao fails to include
`sufficient disclosure for a person of ordinary skill in the
`art (“POSA”) to conclude that the multi-chip package has a
`thermally conductive backside. See Ensnarement Tr. 50:18-51:9.
`Therefore, even if one assumes that the Arndt reference
`alone does disclose heat dissipation protrusions on the outer
`surface of the ETCM, and as will be discussed below it does
`not, the combination proffered by Cree removes the structure
`that it contends discloses this element,3 and the Cao package
`
`3 Dr. Bretschneider also testified that, even though this
`element is not disclosed in this combination that the addition
`of such protrusions was “well within the capability” of a
`person of ordinary skill in the art. Tr. at 202:24-203:2.
`Such unsubstantiated “gap fillers” do not play an appropriate
`role in a prior art analysis. See, e.g., DSS Tech. Mgt., Inc.
`v. Apple Inc., 885 F.3d 1367, 1374-78 (Fed. Cir.
`2018)(rejecting reliance on “ordinary creativity” “as a
`wholesale substitute for reasoned analysis and evidentiary
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`used in its place does not disclose either heat dissipation
`protrusions or a multi-chip package with a thermally
`conductive back. Because Cree’s proffered combination does
`not disclose each element of OptoLum’s DOE claim, its Motion
`must fail. See, e.g. Interactive Pictures Corp. v. Infinite
`Pictures, Inc., 274 F.3d 1371, 1381 (Fed. Cir. 2001) (finding
`no ensnarement where prior art combination was missing a claim
`element).
`B.
`THE ARNDT REFERENCE DOES NOT DISCLOSE HEAT
`DISSIPATION PROTRUSIONS ON THE OUTER SURFACE
`While clearly irrelevant in light of the fact that the
`Arndt LED package does not appear in the combination proffered
`by Cree, it must also be noted that there is no structure on
`the outer surface of the Arndt reference that meets the
`definition of heat dissipation protrusions as construed by
`this Court.4 It is well established that the USPTO examiner
`actually found the ‘028 Patent patentable due to Arndt’s
`
`support,” particularly “when dealing with a limitation
`missing from the prior art references specified”) (quoting
`Arendi S.A.R.L. v. Apple Inc., 83 F.3d 1355, at 1362, 1366
`(Fed. Cir. 2016)).
`4 “Heat dissipation protrusion” has been construed to mean
`“projection from a surface designed to convect heat.”
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`dissipation
`heat
`outer-surface
`disclose
`to
`failure
`protrusions, see Ensnarement Tr. at 199:11-15, and contrary
`to Cree’s contention, there is absolutely no evidence that
`the electrical leads from the LEDs in Arndt are designed to
`convect heat. It is more than clear that the LED leads that
`Cree contends are heat dissipation protrusions are designed
`to conduct heat to the metal of the elongate member, not
`convect heat to air. In fact, the experts from both sides
`agreed that the purpose of the leads of Arndt, in addition to
`electrical conduction, was cathodic cooling, (i.e. cooling
`via conduction, not convection, through the leads) and that
`nothing in the specification of the Arndt reference would
`indicate to a POSA that these leads were designed to convect
`heat. Ensnarement Tr. at 97:1-24; 203:21-204:3.
`Even though Dr. Bretschneider admitted that there was
`nothing in the reference indicating that these leads were
`designed to convect, he nevertheless insisted that the mere
`presence of air surrounding the leads (in the rudimentary
`drawings of the Arndt specification) would necessarily result
`in convection, and this was sufficient to disclose
`protrusions designed to convect. Ensnarement Tr. at 201:14-
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`15. This conclusion is particularly suspect considering the
`fact that he was shown to have purposefully taken inconsistent
`positions regarding this element on the Abdelhafez reference
`during the ensnarement hearing and then at trial. See, e.g.,
`Trial Transcript, Nov. 5, 2021 at 117:19-121:7 (Dr.
`Bretschneider providing inconsistent testimony on whether
`prior art reference disclosed a structure “designed to
`convect” heat).
`Furthermore, Dr. Bretschneider’s argument that that the
`inherent ability to convect is sufficient to meet this claim
`element is inconsistent with his own testimony with respect
`to the “configured to conduct” element, which is similarly
`construed as “specifically designed to”. In his testimony
`regarding this element, he argued that the “purpose” of
`features that OptoLum identified as meeting this limitation
`was relevant to whether they were “designed” for convection.
`[S]everal
`features
`are
`specifically
`for
`manufacturing to allow you to build this at a low
`cost, to be able to manufacture here in the United
`States. And those are the features that have been
`pointed out as contributing to convective
`dissipation. That's not the purpose of the features.
`That is not how the bulb was designed.
`
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`Trial Tr. Nov. 5, 2021 at 20:11-21. The Court should disregard
`Dr. Bretschneider’s internally inconsistent positions
`regarding what is sufficient to meet a claim term. Having
`testified that the “purpose” of a structure is relevant to
`whether it met the “designed to convect” element, he cannot
`credibly argue that this element is met in the Arndt reference
`by the operation of physics alone.
`Finally, neither Dr. Steigerwald nor Mr. York — who have
`a combined 50 years of LED package design and LED lighting
`system design experience — have ever heard of anyone claiming
`that the electrical leads of a surface-mounted LED were
`“designed to convect” as Dr. Bretschneider argues. See Tr.
`226:16-227:1, 228:4-7. The Court should credit the testimony
`of Mr. York and Dr. Steigerwald over the testimony of Dr.
`Bretschneider, especially in light of Dr. Bretshneider’s
`damaged credibility.
`C.
`THERE IS NO MOTIVATION TO COMBINE OR REASONABLE
`EXPECTATION OF SUCCESS FOR THE ARNDT + CAO
`COMBINATION
`In addition to failing to disclose elements of OptoLum’s
`DOE claim, which should be fatal, Cree’s Motion ignores the
`substantial evidence that a POSA would not be motivated to
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`combine, nor have a reasonable expectation of success in the
`combination of the Arndt and Cao references.
`A POSA would simply not be motivated to use the Cao
`multi-chip package—which has no disclosure regarding its
`environmental tolerances and requirements—in the Arndt
`automotive light. Ensnarement Tr. 95:21-96:4, 101:5-15. A
`POSA is not an LED package engineer, so he or she would not
`know from Cao’s sparse disclosure whether the multi-chip
`packages were fit for service in an outdoor environment. Id.
`at 96:18-25. In fact, given that Arndt already use LEDs rated
`for automotive applications, there is substantial motivation
`not to use an untested and unproven substitute. See id. at
`101:5-15, 230:20-231:4; See also Arctic Cat Inc. v.
`Bombardier Recreational Prod. Inc., 876 F.3d 1350, 1363 (Fed.
`Cir. 2017) (“Evidence suggesting reasons to combine cannot be
`viewed in a vacuum apart from evidence suggesting reasons not
`to combine.”).
`Finally, there would not be a reasonable expectation of
`successfully using the Cao package in the structure of Arndt
`without undue experimentation, as Cao teaches none of the
`information a POSA would need to make use the purported multi-
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`chip package. Ensnarement Tr. 95:5-20. A POSA, who as noted
`above is not an LED package engineer, could not be expected
`to be successful without the pertinent information
`customarily provided in a datasheet, which Cao lacks. Id. at
`96:2-7. Further, Cao lacks any teaching that its multi-chip
`packages are compatible with the flexible circuit board of
`Arndt, so a POSA would have no reasonable expectation of
`success in wrapping the circuit board around Arndt’s tubular
`member. Id. at 100:3-101:4. Therefore, even if the proffered
`combination did disclose each of the elements of OptoLum’s
`DOE claim, OptoLum has shown by a preponderance of evidence
`that there was no motivation to combine these references.
`D.
`OBJECTIVE INDICIA OF NON-OBVIOUSNESS SUPPORT DENIAL
`OF CREE’S MOTION
` Finally, Cree’s Motion also ignores objective indicia
`of non-obviousness, which are a required consideration in any
`obviousness analysis, including the analysis regarding
`ensnarement. See InTouch Techs., Inc. v. VGO Commc'ns, Inc.,
`751 F.3d 1327, 1352 (Fed. Cir. 2014) (finding that “[b]y
`failing to account for objective evidence of nonobviousness,
`[Defendant’s expert’s] analysis
`was incomplete”); DePuy
`
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`Spine, 567 F.3d at 1328 (finding that secondary
`considerations supported the finding of no ensnarement.)
`Through the testimony of OptoLum’s inventor Mr. Joel Dry,
`co-founder Karen Baker, as well as Mr. 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 non-obviousness that must be considered in any
`determination of patent validity. OptoLum inventor and
`founder Joel Dry and co-founder Karen 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.
`See Oct. 26, 2021 Tr. at 44:8-45:6; 47:18-49:17; 130:15-
`132:3. 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. Nov. 8, 2021 Tr. at 140:4-142:16. Significantly,
`Cree did not introduce any evidence that either rebutted or
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`contradicted OptoLum’s witnesses regarding this objective
`indicia of non-obviousness. This is additional strong
`support for the patentability of OptoLum’s DOE claim.
`Therefore, OptoLum has more than met its burden to show that
`its DOE claim would have been patentable over the prior art.
`IV. CONCLUSION
`For the foregoing reasons, Cree, Inc.’s Renewed Motion
`For Judgment As A Matter Of Law Regarding Ensnarement should
`be DENIED.
`
`Dated: December 30, 2021
`
`Respectfully submitted,
`
`By: /s/ Leah R. McCoy
`Leigh J. Martinson
`Leah R. McCoy
`MCCARTER & ENGLISH, LLP
`265 Franklin Street
`Boston, MA 02110
`Telephone: (617) 449-6593
`Facsimile: (617) 607-9200
`Email: lmccoy@mccarter.com
`
`/s/ Jacob S. Wharton
`Jacob S. Wharton
`NC State Bar No. 37421
`WOMBLE BOND DICKINSON
`One West 4th Street
`Winston-Salem, NC 27101
`Telephone: (336) 747-6609
`Facsimile: (336) 726-6985
`
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`Email: jacob.wharton@wbd-
`us.com
`
`Attorneys for Plaintiff
`OptoLum, Inc.
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`CERTIFICATION UNDER L.R. 7.3(D)
`Under the provisions of L.R. 7.3(d), I certify that the
`forgoing Memorandum is 2,954 words, less than the 6,250
`permitted by the Local Rules.
`
`Dated: December 30, 2021
`
`
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`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
`
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