`MIDDLE DISTRICT OF NORTH CAROLINA
`OptoLum, Inc.,
`Plaintiff,
`vs.
`Cree, Inc.,
`Defendant.
`
`Civil Action No. 1:17-cv-
`00687
`
`PLAINTIFF OPTOLUM, INC.’S OPPOSITION TO DEFENDANT CREE,
`INC.’S MOTION UNDER FEDERAL RULE OF CIVIL PROCEDURE 50(b)
`FOR JUDGMENT AS A MATTER OF LAW REGARDING THE ENTIRE MARKET
`VALUE RULE
`
`I.
`
`INTRODUCTION
`Plaintiff OptoLum, Inc., (“OptoLum”) hereby submits this
`Opposition to Defendant Cree Inc.’s (“Cree”) Motion under
`Federal Rule of Civil Procedure 50(b) for a Renewed Judgment
`as a Matter of Law (“JMOL”) regarding the Entire Market Value
`Rule (“Motion”) (Dkt. No. 351).
`In the first instance, the jury’s verdict of non-
`infringement moots Cree’s Motion and deprives the Court of
`jurisdiction over the question of damages. Any ruling
`regarding damages would be effectively an impermissible
`advisory opinion. “[F]ederal courts have never been
`empowered to issue advisory opinions.” F.C.C. v. Pacifica
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`Found., 438 U.S. 726, 735 (1978); see Herb v. Pitcairn, 324
`U.S. 117, 126 (1945); Westfield Ins. Co. v. Sistersville Tank
`Works, Inc., 484 F. Supp. 3d (N.D. W.Va. 2020) (finding that
`a request for a ruling on a speculative future damages claim
`was an impermissible advisory opinion). Therefore, the Court
`should decline to rule on Cree’s Motion.1
`Additionally, Cree’s Motion should be denied because it
`is untimely. Cree did not file this Motion within 28 days of
`the jury being discharged as required by Federal Rule 50(b)—
`a deadline which may not be extended. See Fed. R. Civ. P.
`50(b); Dkt. Entry 11/09/2021 (“Jury excused.”); Dkt. No. 351
`(motion filed 12/09/2021); see also Fed. R. Civ. P. 6(b)(2)
`(“A court must not extend the time to act under Rules 50(b)
`. . . .”).
`Moreover, the Court should deny Cree’s Motion because
`OptoLum provided more than a legally sufficient evidentiary
`basis for a reasonable jury to find that the Entire Market
`Value Rule (“EMVR”) applies in this case. Specifically, Mr.
`York’s testimony established a nexus between OptoLum’s
`
`1 Because Cree’s Motion apparently assumes that there has
`been no verdict regarding infringement, OptoLum’s
`substantive arguments below follow suit.
`2
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`patented technology and Cree’s filament tower bulbs. Further,
`Mr. Scally, relying in part on Mr. York’s qualified,
`unchallenged, and admissible expert testimony, also testified
`that the patent-related features created the basis for
`consumer demand for Cree’s filament tower bulbs.
`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).
`“[J]udgment as a matter of law [pursuant to Rule 50(b)]
`may be granted only if, viewing the evidence in a light most
`favorable to the non-moving party (and in support of the
`jury's verdict) and drawing every legitimate inference in
`that party's favor, the only conclusion a reasonable jury
`could have reached is one in favor of the moving party.”
`Drummond Coal Sales, Inc. v. Norfolk S. Ry. Co., 3 F.4th 605,
`3
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`610 (4th Cir. 2021)(quoting Int'l Ground Transp. v. Mayor &
`City Council of Ocean City, MD, 475 F.3d 214, 218–19 (4th Cir.
`2007)).
`“[T]he Fourth Circuit has stated that ‘a Rule 50(b)
`motion for judgment as a matter of law follows the same
`standard as a Rule 56 motion for summary judgment.’ A court
`‘must view the evidence in the light most favorable to the
`nonmovant, and draw all reasonable inferences in its favor
`without weighing the evidence or assessing the witnesses'
`credibility.’” Volumetrics Med. Imaging, Inc. v. ATL
`Ultrasound, Inc., 2003 WL 21650004, at *5 (M.D.N.C. July 10,
`2003) (quoting Dennis v. Columbia Colleton Med. Ctr., Inc.,
`290 F.3d 639, 644-45 (4th Cir. 2002) and denying defendant’s
`renewed motion for JMOL where substantial evidence supported
`all aspects of plaintiff’s claims).
`“Judgment as a matter of law is appropriate where a
`plaintiff has been fully heard on an issue but has failed to
`produce sufficient evidence for a jury to find for the party.”
`Hunter v. Town of Mocksville, 201 F. Supp. 3d 750, 753–54
`(M.D.N.C. 2016) (denying defendant’s renewed motion for JMOL
`where plaintiff provided sufficient evidence during trial for
`a reasonable jury to find in its favor); Russell v. Absolute
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`Collection Servs., Inc., 2012 WL 13034846, at *3 (M.D.N.C.
`Sept. 28, 2012) (Osteen, Jr, J.) (denying defendant’s motion
`for JMOL where plaintiff provided a “legally sufficient
`evidentiary basis for a jury to find for the plaintiff”).
`“For the entire market value rule to apply, the patentee
`must prove that the patent-related feature is the basis for
`customer demand.” Lucent Techs., Inc. v. Gateway, Inc., 580
`F.3d 1301, 1336 (Fed. Cir. 2009) (internal quotation marks
`omitted). “The entire market value rule allows for the
`recovery of damages based on the value of an entire apparatus
`containing several features, when the feature patented
`constitutes the basis for customer demand.” LaserDynamics,
`Inc. v. Quanta Comp., Inc., 694 F.3d 51, 67 (Fed. Cir. 2012).
`III. ARGUMENT
`A.
`Cree’s Motion Must Be Denied As Untimely
`As an initial matter, this Court must deny Cree’s Motion
`because it was untimely. Rule 50(b) requires a motion on a
`jury issue which was not decided by a verdict to be filed
`within 28 days of the jury being discharged. Fed. R. Civ. P.
`50(b). Here, Cree’s Motion addresses an issue of fact for the
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`jury—the applicability of the Entire Market Value Rule.2 The
`issue, however, was not decided by the jury’s verdict. See
`e.g., Dkt. No. 342 at 6. Cree nevertheless failed to file
`this Motion within 28 days of the jury being discharged. See
`Dkt. Entry 11/09/2021 (“Jury excused.”); Dkt. No. 351.
`Accordingly, the Motion must be denied.
`Cree suggests that its Motion is timely because the Court
`purported to extend the deadline for Rule 50(b) motions. See
`Dkt. No. 351 at 8 n.1. No extension was effected however
`because, pursuant to Rule 6(b)(2), Rule 50(b) deadlines may
`not be extended. See Fed. R. Civ. P. 6(b)(2) (“A court must
`not extend the time to act under Rules 50(b) and (d), 52(b),
`59(b), (d), and (e), and 60(b).”); see also Guerrero v. Deane,
`548 F. App’x 86 (4th Cir. 2013) (per curiam) (“A court may
`not extend the time to act under Rule 50(b) . . . .” (internal
`quotation marks omitted)); Panhorst v. United States, 241
`F.3d 367, 370, 373 (4th Cir. 2001) (finding that district
`
`2 Indeed, the parties submitted the issue to the jury here.
`See Dkt. No. 289 at 69-71; Dkt. No. 291 at 73-74. Moreover,
`Cree apparently concedes that the deadline is triggered by
`the jury’s discharge, as opposed to a judgment, as Cree
`already filed its motion despite no judgment having been
`entered.
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`court had “no authority to extend the filing period” for post-
`trial motions, and that “a party cannot reasonably rely on a
`district court’s improper extension of time . . . that, as a
`plain reading of the rules would show, is beyond the court’s
`authority”); see also Dill v. Gen. Am. Life Ins. Co., 525
`F.3d 612, 616 (8th Cir. 2008) (“General American's Rule 50(b)
`motion was . . . filed within the extended time frame
`purportedly granted by the district court. However, the
`district court lacked authority to extend the time
`period . . . .”); Weissman v. Dawn Joy Fashions, Inc., 214
`F.3d 224, 231–32 (2d Cir. 2000) (“[T]he District Court lacked
`the power to extend Dawn Joy's time to file its post-trial
`motion . . . . [T]he motion was untimely, thereby ‘divest[ing]
`the [D]istrict [C]ourt of power to modify the trial verdict.’”
`(citation omitted)); e2Interactive, Inc. v. Blackhawk Network,
`Inc., No. 09-CV-629-SLC, 2012 WL 13000463, at *2 (W.D. Wis.
`Oct. 22, 2012) (“[T]he law is clear; this court does not have
`the authority to extend the 28-day deadline for filing Rule
`50(b) and Rule 59 motions and Blackhawk cannot rely on my
`text only order stating otherwise. Therefore, I have no choice
`but to find that Blackhawk’s Rule 50 and 59 motions were
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`untimely . . . .”). Accordingly, Cree’s untimely Motion
`should be denied.
`B.
`Cree’s Motion Must Be Denied Because OptoLum
`Provided A Legally Sufficient Evidentiary Basis For
`A Reasonable Jury To Find That The Entire Market
`Value Rule Applies
`In addition, Cree’s Motion must be denied because,
`contrary to Cree’s assertions, OptoLum provided more than
`sufficient evidence for a reasonable jury to find that the
`EMVR applies.
`Cree’s primary argument is that the only evidence that
`OptoLum “presented to support its assertion that the entire
`market value rule applies is William Scally’s testimony that
`the allegedly claimed features in the accused bulbs enabled
`the aspects of the bulbs that drove consumer demand for the
`bulbs. That testimony is based entirely on the unsupported
`and conclusory opinion of another expert, Brent York.” Dkt.
`No. 351 at 7. Cree misstates both Mr. Scally’s and Mr. York’s
`testimony. Mr. Scally relied upon Mr. York’s opinion
`regarding the nexus between the claimed invention and the
`market-facing benefits desired by consumers, which is
`properly within the province of a technical expert, and he
`provided his own reasoned opinion regarding the features that
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`drove demand for the accused products, supported by extensive
`documentary evidence.
`In the first instance, Cree’s attempt to challenge Mr.
`Scally’s reliance on Mr. York’s testimony at this stage in
`the case is misplaced. There is no dispute that the Court
`qualified Mr. York as OptoLum’s technical expert or that he
`provided admissible and well-reasoned testimony to the jury.
`In fact, the Court required that Mr. York testify during
`OptoLum’s case in chief in order to support Mr. Scally’s
`testimony. Therefore, Mr. Scally’s reliance on Mr. York was
`well within the bounds of a reasoned expert opinion.
`Furthermore, the testimony provided by Mr. York provided
`more than sufficient evidence for a jury to find a nexus
`between the Asserted Patents and the features that create
`consumer demand for the products. For example, Mr. York
`testified that the Cree filament tower, which embodies the
`claimed invention, enables
`essentially a maximization of the cooling that you
`get without having to use anything active like a fan.
`So it allows you to get that heat not only
`circulating inside, but also outside. And so it then
`enables those devices to last a long time. That’s
`very important. The other thing is that because it
`is so effective, you can cluster your LED’s at the
`top to create that look like a filament. You can put
`your LED’s close together. If you looked at some of
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`the other freak show examples, you’ll notice that
`the LEDs were placed all over the place. They
`couldn’t be put close together, which didn’t give
`the look and feel that a customer would want.
`Nov. 2, 2021 Tr. at 167:9-20. Mr. York testified that the
`filament tower “gives you also the ability to have the
`omnidirectional light because that’s all clustered around.”
`Nov. 2, 2021 Tr. at 168:8-9. Mr. York further testified:
`[B]ecause it’s a single thermal body, if you will,
`that allows you to put everything together around
`it as kind of the core, it enables you to have cost
`savings because again you don’t need exotic
`materials, you can relax some of your requirements.
`So it’s a big enabler, and it allows you to
`accelerate your product development path much faster
`than your competition and what was available at the
`time.
`Nov. 2, 2021 Tr. at 168:16-23. Through this testimony, Mr.
`York explained how the patented technology enabled the
`features that drove market demand.
`Based on his conversations with Mr. York, 3 and in
`conjunction with his own analysis, Mr. Scally then opined
`that
`the market-facing benefits that are established by
`the novel elements of the patented claim allow for
`
`3 With respect to conversing with Mr. Scally, Mr. York
`testified: “Yes, in general, he was asking me, you know,
`about the advantages, and I spoke to him basically as an
`engineer. What do I see as advantages and how were those
`advantages going to be enabling you to move to market and
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`certain things of the Cree filament tower bulb.
`Those being thermal management, omnidirectional
`light, the allowance of the small packaging, the
`small-form factor and cost savings associated with
`the use of the technology. So those four market-
`facing benefits that drive demand for the bulb,
`those are--the claims of the asserted patents.
`Nov. 2, 2021 Tr. at 48:2-10.
`Mr. Scally also relied on numerous evidentiary sources
`to support his opinion that the patent-related features
`created the basis for commercial demand and success for Cree’s
`filament tower bulbs. Mr. Scally read extensively from these
`sources and explained how they supported his opinion.
` Harvard Business School Publication: “[O]ur engineers
`came up with a very elegant solution to the design
`issues inherent with LED bulbs in compact form, the
`filament tower produced the light dispersion we wanted
`without any problematic heat build up. We then encased
`the whole thing in a glass bulb.” Nov. 2, 2021 Tr. at
`76:17-21.
` Cree Advertisement entitled, The LED Bulb Backgrounder:
`“Cree LED filament tower technology, the innovation
`inside that powers our omnidirectional, all around
`light.” Nov. 2, 2021 Tr. at 77:3-4.4
` Statement made by Cree’s Chief Executive Officer, Mr.
`Chuck Swoboda: “[T]he Cree LED lightbulb was designed
`to offer consumers a no compromise experience at a
`compelling prize [sic]. Innovative bulb is illuminated
`by Cree filament tower technology providing a compact
`
`to move to market faster and more effectively.” Nov. 2,
`2021 Tr. at 169:1-6.
`4 The Court admitted PTX 401 into evidence. Nov. 2, 2021 Tr.
`at 77:9.
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`optically balanced light source with a real glass bulb
`to deliver consumers the warm light they love and want.”
`Nov. 2, 2021 Tr. at 77:14-19.5
` Cree Document entitled, The Biggest Thing Since the
`Light Bulb: “Cree LED filament tower emits light in a
`way similar to the incandescent filament to create the
`same nuance and visual texture.” Nov. 2, 2021 Tr. at
`78:6-7.6
` Power Electronics article entitled, Innovative
`Engineering Design Lights Up LED Bulbs: “[T]he key
`innovation was the way they packaged LEDs in a way
`that distributed the light, provided thermal majority,
`and was cost effective. Cree’s approach called the
`filament tower is--and then it goes on to state that
`in addition, the tower provides thermal management to
`dissipate heat from the LEDs enhance reliability and
`useful lifetime.” Nov. 2, 2021 Tr. at 79:11-17.7
` Cree Message Board: “[T]he Cree LED bulb delivers a
`beautiful, warm incandescent light for residential
`living spaces. Cree LED filament tower technology
`represents a break-through in LED bulb design. It
`provides an optically centered and balance[d] light
`source with a real glass bulb nearly indistinguishable
`from a traditional incandescent filament.” Nov. 2,
`2021 Tr. at 83:25–84:1-6.8
`With respect to the relationship between the thermal
`management technology of the Asserted Patents and the
`
`5 The Court admitted PTX 403 into evidence. Nov. 2, 2021 Tr.
`at 77:22.
`6 The Court admitted PTX 404 into evidence. Nov. 2, 2021 Tr.
`at 77:14.
`7 The Court admitted PTX 763 into evidence. Nov. 2, 2021 Tr.
`at 78:25.
`8 The Court admitted PTX 116 into evidence. Nov. 2, 2021 Tr.
`at 84:13.
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`features driving consumer demand, Mr. Scally, relying on Mr.
`York’s expertise, opined that it
`allows the bulb to operate efficiently, it allows
`for long evident [sic] of the bulb, it allows for
`the bulb to be able to do all the things that it was
`designed to do, which is essentially to last for a
`longer period of time, function longer, save energy,
`and also create an opportunity for lower lifetime
`cost through efficiencies.
`Nov. 2, 2021 Tr. at 80:6-12.
`Mr. Scally further testified that “the market facing
`benefit of an existing lightbulb drives demand for the product.
`So the filament tower technology is the enabling technology
`inside that allows for that form, which drives demand for the
`product.” Nov. 2, 2021 Tr. at 82:24-25-83:1-3.
`Ultimately, Mr. Scally opined that
`the filament tower technology is the actual
`technology inside the infringing lightbulb that
`enables all of the factors that drive demand.
`Omnidirectional light, thermal management, form
`factor, all of that is coming from the filament
`tower technology, and that allowed Cree at that
`point in time to enter the marketplace earlier than
`its competitors and to enjoy a substantial benefit
`within the marketplace to sell the accused products.
`Nov. 2, 2021 Tr. at 87:8-15.
`Therefore, through the technical testimony of Mr. York
`and the significant documentary evidence and opinion
`testimony supplied by Mr. Scally, OptoLum provided
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`significantly more than a legally sufficient basis for a jury
`to find that the patent-related features created a basis for
`commercial demand and success for Cree’s filament tower bulbs.
`IV. CONCLUSION
`For the foregoing reasons, OptoLum respectfully requests
`that Cree’s untimely Motion under Federal Rule Of Civil
`Procedure 50(b) For Judgment As A Matter Of Law Regarding The
`Entire Market Value Rule be DENIED.
`
`Dated: December 30, 2021
`
`Respectfully submitted,
`
`By: /s/ Leah R. McCoy
`Leigh J. Martinson
`Leah R. McCoy
`Gregory A. Hall
`MCCARTER & ENGLISH, LLP
`265 Franklin Street
`Boston, MA 02110
`Telephone: (617) 449-6593
`Facsimile: (617) 607-9200
`Email: lmccoy@mccarter.com
`
`/s/ Jacob S. Wharton
`Jacob S. Wharton
`NC State Bar No. 37421
`WOMBLE BOND DICKINSON
`One West 4th Street
`Winston-Salem, NC 27101
`Telephone: (336) 747-6609
`Facsimile: (336) 726-6985
`Email: jacob.wharton@wbd-
`us.com
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`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 2990 words, less than the 11,000
`permitted by the Scheduling Order in place in this matter.
`
`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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