`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 INVALIDITY OF
`U.S. PATENT NO. 7,242,028 BASED ON LACK OF WRITTEN
`DESCRIPTION
`
`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 Judgement as a
`Matter of Law Regarding Invalidity of U.S. Patent No.
`7,242,028 (“the ‘028 Patent”) Based on Lack of Written
`Description (Dkt. No. 352).
`In the first instance, Cree’s Motion must be denied
`because it is untimely. Cree did not file the Motion within
`28 days of the jury being discharged as required by Federal
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`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. 352 (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, Cree’s Motion must be denied because a
`reasonable jury could conclude based on the evidence
`presented at trial that the ‘028 Patent has adequate written
`description. Fed. R. Civ. P. 50(a)-(b). Two of OptoLum’s
`expert witnesses testified that, from the perspective of a
`person of ordinary skill in the art (“POSA”), the ‘028
`Patent’s specification discloses solid state light sources
`(“SSLSs”) other than light emitting diodes (“LEDs”) as
`disclosed in OptoLum’s U.S. Patent No. 6,831,303 (“the ‘303
`Patent”). A jury could reasonably credit this testimony over
`the opposing testimony of Cree’s expert Dr. Eric
`Bretschneider, whose credibility was seriously damaged during
`trial.
`II. LEGAL STANDARD
`“Rule 50(b) permits a party to renew its Rule 50(a)
`motion post-trial, asserting the same grounds initially
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`raised in the prior motion.” Lusk v. Virginia Panel Corp.
`2014 WL 3900325, at *3 (W.D. Va. Aug. 11, 2014). “[I]f the
`motion addresses a jury issue not decided by a verdict,” it
`must be filed “no later than 28 days after the jury was
`discharged.” Fed. R. Civ. P. 50(b).
`“[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,
`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)). 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).
`“The specification shall contain a written description
`of the invention, and of the manner and process of making and
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`using it, in such full, clear, concise, and exact terms as to
`enable any person skilled in the art . . . to make and use
`the same.” 35 U.S.C. § 112(a). An issued patent is presumed
`valid. 35 U.S.C. § 282(a). Where a defendant challenges
`whether a patent meets the written description requirement of
`35 U.S.C. § 112(a), “[t]o overcome the presumption of validity
`of patents, the accused must show that the claims lack a
`written description by clear and convincing evidence.” Hynix
`Semiconductor Inc. v. Rambus Inc., 645 F.3d 1336, 1351 (Fed.
`Cir. 2011).
`“The test under the written description requirement is
`‘whether the disclosure of the application relied upon
`reasonably conveys to those skilled in the art that the
`inventor had possession of the claimed subject matter as of
`the filing date.’” Hynix Semiconductor, 645 F.3d at 1351
`(quoting Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d
`1336, 1351 (Fed. Cir. 2010) (en banc)). To meet this
`requirement, “[a]n applicant is not required to describe in
`the specification every conceivable and possible future
`embodiment of his invention.” Cordis Corp. v. Medtronic AVE,
`Inc., 339 F.3d 1352, 1365 (Fed. Cir. 2003) (quoting Rexnord
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`Corp. v. Laitram Corp., 274 F.3d 1336, 1344 (Fed. Cir. 2001)).
`Further, “[a] patent need not teach, and preferably omits,
`what is well known in the art.” Epistar Corp. v. Int’l Trade
`Comm’n, 566 F.3d 1321, 1336 (Fed. Cir. 2009) (quoting Spectra–
`Physics, Inc. v. Coherent, Inc., 827 F.2d 1524, 1534 (Fed.
`Cir. 1987)).
`“[T]he level of detail required to satisfy the written
`description requirement varies depending on the nature and
`scope of the claims and on the complexity and predictability
`of the relevant technology.” In re Global IP Holdings LLC,
`927 F.3d 1373, 1777 (Fed. Cir. 2019) (quoting Ariad, 598 F.3d
`at 1351). Thus, where it would be predictable to replace an
`element explicitly disclosed in a specification, the
`alternate may be sufficiently disclosed for purposes of § 112
`even if it is not explicitly mentioned in the patent. See id.
`at 1377-78 (vacating decision that held written description
`that did not explicitly mention use of “general plastics”
`inadequate, where court had failed to analyze predictability
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`of using general plastics in lieu of the explicitly disclosed
`thermoplastics).
`Further, “the criticality or importance of [an] expressly
`disclosed species [to the invention] may be relevant to
`whether an inventor had possession of a claimed genus.” Id.
`at 1378. Thus, where an original patent’s claims are
`“broadened merely [to] omit an unnecessary limitation that
`had restricted one element of the invention,” the original
`patent’s specification may adequately describe the newly
`claimed invention. See id. For example, in In re Peters, 723
`F.2d 891, 893 (Fed. Cir. 1983), an original patent claimed,
`inter alia, a metal tip having a tapered shape; the invention
`was broadened through a subsequent patent to claim both
`tapered and non-tapered tips; and the original patent’s
`specification was found to provide adequate written
`description of the broader invention despite not mentioning
`a non-tapered tip, because the tip shape was “non-critical.”
`See id. at 893 (“[O]ne skilled in the art would readily
`understand that in practicing the invention it is unimportant
`whether the tips are tapered . . . .”); see In re Global IP
`Holdings LLC, 927 F.3d at 1377 (discussing In re Peters).
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`III. ARGUMENT
`A.
`Cree’s Motion Must Be Denied as Untimely
`As an initial matter, this Court must deny Cree’s Rule
`50(b) 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
`jury – invalidity for lack of written description. See Martek
`Biosciences Corp. v. Nutrinova, Inc., 579 F.3d 1363, 1369
`(Fed. Cir. 2009) (“Whether the written description
`requirement is met is a question of fact.”).1 The issue was
`not decided by verdict. See Dkt. No. 342.2 However, Cree
`failed to file its Motion within 28 days of the jury being
`
`1 Indeed, the parties submitted the issue to the jury here.
`See Dkt. No. 289 at 58-60; Dkt. No. 291-2 at 60-63. 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.
`2 In fact, as noted by Cree, the Court required the jury to
`amend the verdict so as not to reach issues of invalidity
`such as written description. Nov. 9, 2021 Tr. at 142:12-23;
`Dkt. No. 353 at 3-4.
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`discharged. See Dkt. Entry 11/09/2021 (“Jury excused.”); Dkt.
`No. 352. 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. 353 at 4 n.1. However, no extension was effected
`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).”); 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 court had “no
`authority to extend the filing period” for post-trial motion,
`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
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`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
`untimely . . . .”).
`Accordingly, Cree’s Motion must be denied as untimely.
`B.
`Cree’s Motion Must Be Denied Because a Reasonable
`Jury Could Find that the ‘028 Patent Contains a
`Sufficient Written Description
`To the extent Cree’s Motion is not denied as untimely in
`the first instance, it should also be denied because a
`reasonable jury could find from the evidence presented at
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`trial that the specification of the ‘028 Patent describes
`SSLSs other than an LED.
`Here, OptoLum presented sufficient evidence for a jury
`to find that the ‘028 Patent has an adequate written
`description of the invention. OptoLum’s expert witness Brent
`York testified that the claims of ‘028 Patent cover SSLSs
`other than LEDs, such as laser diodes, Nov. 8, 2021 Tr. at
`122:4-11, and the ‘028 Patent’s specification teaches
`“packaged semiconductor devices that are placed in a way where
`it can create a distribution of light, and that the heat
`that’s generated by these is conducted and then allowed to
`convect away from surfaces.” See Nov. 8, 2021 Tr. at 123:7-
`13. The “specific example cited in [the specification] is
`using the LEDs” as the packaged semiconductor device; however,
`as a person of ordinary skill in the art, he understood that
`the invention was not limited to just the use of LEDs. See
`Nov. 8, 2021 Tr. at 123:14-124:4. That is because it was known
`in the art that different types of packages could be used to
`fulfill the same purpose. See Nov. 8, 2021 Tr. at 124:5-125:1
`(“[A] person of skill in the art knew that packages contained
`– could contain different devices. It was being openly
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`discussed in our industry.”); see also Nov. 8, 2021 Tr. at
`125:13-19 (“It’s very clear to me in the reading of it [the
`specification of the ‘028 Patent] what was intended. These
`are concentrated sources of heat and light that create a
`lighting distribution and are cooled.”).
`In other words, it was well known and entirely
`predictable to a POSA that other packaged semiconductor
`devices would function the same as, and could be used in lieu
`of, the packaged semiconductor device explicitly mentioned in
`the ‘028 Patent’s specification. See Epistar Corp., 566 F.3d
`at 1336 (“A patent need not teach, and preferably omits, what
`is well known in the art.”); In re Global IP Holdings LLC,
`927 F.3d at 1377 (“[T]he predictability of substituting
`generic
`plastics
`for
`[explicitly
`mentioned]
`thermoplastics . . . is relevant to the written description
`inquiry.”).
`Mr. York further testified that the distinction between
`LEDs and other types of SSLSs is not critical to the overall
`invention:
`The invention and the practice of the invention
`doesn’t care what chip is inside the package. It
`only cares that it’s producing light and it has heat
`that needs to be taken away. And so if the package
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`contains a different structure or different
`componentry, it would still operate nonetheless.
`Nov. 8, 2021 Tr. at 123:3-6; see also Nov. 8, 2021 Tr. at
`122:4-123:2 (Mr. York testifying that a laser diode was known
`to serve the same purpose as an LED in producing white light
`if was used in conjunction with a phosphor). Accordingly,
`providing
`further
`examples
`of
`applicable
`packaged
`semiconductor devices was not necessary. See In re Global IP
`Holdings LLC, 927 F.3d at 1778 (“the criticality or importance
`of [an] expressly disclosed species may be relevant”).
`Logically, an interchangeable aspect of an invention that a
`POSA would readily understand and thus pay little attention
`to is of little consequence to the written description of an
`invention.
`Accordingly, in the opinion of Mr. York, who is a POSA,
`there is adequate written description of SSLSs other than
`LEDs in the ‘028 Patent. See Nov. 8, 2021 Tr. at 123:3-6;
`125:13-19. Cree wholly ignores Mr. York’s testimony on these
`issues in its Motion. See Dkt. 353 at 9 n.2 (claiming that
`the “evidence is devoid of any basis for” a sufficient written
`description while citing only testimony of Dr. Steigerwald).
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`Furthermore, a jury would be free to credit the testimony
`of Mr. York over the testimony of Cree’s technical expert
`witness Dr. Eric Bretschneider and find that the ‘028 Patent
`has adequate written description, especially in light of Dr.
`Bretshneider’s damaged credibility. See, e.g., Nov. 5, 2021
`Tr. at 117:19-121:7 (Dr. Bretschneider providing inconsistent
`testimony on whether prior art reference was specifically
`designed to convect heat such that it could render patents-
`in-suit obvious). See, e.g., EcoServices, LLC v. Certified
`Aviation Servs., LLC, No. CV 16-01824-RSWL-SPX, 2019 WL
`11583148, at *7 (C.D. Cal. May 7, 2019), aff'd, 830 F. App'x
`634 (Fed. Cir. 2020) (denying Rule 50(b) motion for lack of
`adequate written description because jury could credit
`plaintiff’s expert’s testimony over defendant’s); In re
`Biogen '755 Pat. Litig., 335 F. Supp. 3d 688, 744 (D.N.J.
`2018), rev'd on other grounds Biogen MA Inc. v. EMD Serono,
`Inc., 976 F.3d 1326 (Fed. Cir. 2020) (denying Rule 50(b)
`motion for lack of adequate written description because
`“faced with competing expert testimony, the jury was free to
`disbelieve Defendants' experts and credit Biogen's experts”);
`Ironworks Pats., LLC v. Apple, Inc., 255 F. Supp. 3d 513, 522
`
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`(D. Del. 2017) (denying Rule 50(b) motion for lack of adequate
`written description because jury was free to “credit[] the
`testimony of Dr. Meldal over that of Dr. Balakrishnan”).
`IV. CONCLUSION
`For the foregoing reasons, OptoLum respectfully requests
`that the Court deny Cree’s Rule 50(b) Motion for lack of
`adequate written description.
`
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`Dated: December 30, 2021
`
`Respectfully submitted,
`
`By: /s/ Leah R. McCoy
`Leigh J. Martinson
`Leah R. McCoy
`Alexander T. Hornat
`MCCARTER & ENGLISH, LLP
`265 Franklin Street
`Boston, MA 02110
`Telephone: (617) 449-6593
`Facsimile: (617) 607-9200
`Email: lmccoy@mccarter.com
`
`/s/ Jacob S. Wharton
`Jacob S. Wharton
`NC State Bar No. 37421
`WOMBLE BOND DICKINSON
`One West 4th Street
`Winston-Salem, NC 27101
`Telephone: (336) 747-6609
`Facsimile: (336) 726-6985
`Email: jacob.wharton@wbd-
`us.com
`
`Attorneys for Plaintiff
`OptoLum, Inc.
`
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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 2,693 words, less than the 11,000
`permitted by the Scheduling Order in place in this matter.
`
`Dated: December 30, 2021
`
`
`
`Respectfully submitted,
`
`By:/s/ Leah R. McCoy
`Leah R. McCoy
`MCCARTER & ENGLISH, LLP
`265 Franklin Street
`Boston, MA 02110
`Telephone: (617) 449-6593
`Facsimile: (617) 607-9200
`
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