UNITED STATES DISTRICT COURT
`MIDDLE DISTRICT OF NORTH CAROLINA
`OptoLum, Inc.,
`Plaintiff,
`vs.
`Cree, Inc.,
`Defendant.
`
`Civil Action No. 1:17-cv-
`00687
`
`I.
`
`PLAINTIFF OPTOLUM, INC.’S REPLY TO DEFENDANT CREE, INC.’S
`RESPONSE TO PLAINTIFF’S JUDGMENT AS A MATTER OF LAW UNDER
`FED. R. CIV. P. 50(b) THAT THE ASSERTED PATENTS ARE NOT
`INVALID UNDER 35 U.S.C § 103
`INTRODUCTION
`Plaintiff OptoLum, Inc., (“OptoLum”) hereby submits this
`Reply to Defendant Cree, Inc.,’s (“Cree”) Response to
`OptoLum’s Motion under Federal Rule of Civil Procedure 50(b)
`for a Renewed Judgment as a Matter of Law (“JMOL”) that the
`asserted patents are not invalid under 35 U.S.C. § 103
`(“Response”).
`In the first instance, Cree insists that OptoLum’s Motion
`should be denied as moot because the jury found that the
`asserted patents were not infringed. Dkt. No. 358 at 6. A
`finding of non-infringement, however, does not moot
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`
`MIDDLE DISTRICT OF NORTH CAROLINA
`OptoLum, Inc.,
`Plaintiff,
`vs.
`Cree, Inc.,
`Defendant.
`
`Civil Action No. 1:17-cv-
`00687
`
`I.
`
`PLAINTIFF OPTOLUM, INC.’S REPLY TO DEFENDANT CREE, INC.’S
`RESPONSE TO PLAINTIFF’S JUDGMENT AS A MATTER OF LAW UNDER
`FED. R. CIV. P. 50(b) THAT THE ASSERTED PATENTS ARE NOT
`INVALID UNDER 35 U.S.C § 103
`INTRODUCTION
`Plaintiff OptoLum, Inc., (“OptoLum”) hereby submits this
`Reply to Defendant Cree, Inc.,’s (“Cree”) Response to
`OptoLum’s Motion under Federal Rule of Civil Procedure 50(b)
`for a Renewed Judgment as a Matter of Law (“JMOL”) that the
`asserted patents are not invalid under 35 U.S.C. § 103
`(“Response”).
`In the first instance, Cree insists that OptoLum’s Motion
`should be denied as moot because the jury found that the
`asserted patents were not infringed. Dkt. No. 358 at 6. A
`finding of non-infringement, however, does not moot
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`affirmative defenses and therefore this Court maintains
`discretion to consider the important issue of validity.
`Indeed, Cree itself seeks a post-trial ruling on invalidity
`despite the jury’s finding of non-infringement. See Dkt. No.
`327 (Rule 50(b) motion on written description).
`Additionally, and as stated in OptoLum’s opening brief,
`while Cree insists that there are issues of fact that support
`denying OptoLum’s Motion, Cree has not provided legally
`sufficient evidence for a jury to conclude that OptoLum’s
`patents are invalid due to obviousness.
`II. ARGUMENT
`A.
`OptoLum’s Rule 50(b) Motion Is Not Moot
`This Court maintains the discretion to grant OptoLum’s
`Rule 50(b) Motion that the asserted patents are not invalid
`under 35 U.S.C. § 103 even though the jury found non-
`infringement.
`Contrary to Cree’s contention, however, the Federal
`Circuit has held that affirmative defenses to infringement
`claims are not mooted by a finding of non-infringement. See
`Qualcomm, Inc. v. Broadcom Corp., 548 F.3d 1004, 1025 (Fed.
`Cir. 2008) (rejecting the argument that the district court
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`lacked a legal basis to consider an affirmative defense after
`a finding of non-infringement and holding that “[i]t was
`entirely appropriate for the district court to address the
`[affirmative defense] after the jury returned a non-
`infringement verdict.”)1
`In fact, juries commonly decide the issue of validity
`even after finding non-infringement. See, e.g., Contentguard
`Holdings, Inc. v. Google, Inc., 2016 WL 3655603, at *8 (E.D.
`Tex. July 8, 2016) aff’d, 701 Fed. App’x 963 (Fed. Cir. 2017)
`(affirming jury’s verdict that found non-infringement and
`patent validity); VirnetX Inc. v. Cisco Sys., Inc., 2014 WL
`12605380, at *1 (E.D. Tex. Mar. 28, 2014) (“Following a seven-
`day trial, the jury returned a verdict that the '135, '504,
`
`1 Cree’s citation to Cardinal Chem. Co. v. Morton Int’l, Inc.,
`508 U.S. 83 (1993) is misguided, as there the Court held that
`invalidity was not moot. See id. at 98 (“The case did not become
`moot when that court affirmed the finding of noninfringement.”).
`Moreover, Cardinal Chemical highlights the public policy
`considerations that favor making invalidity rulings even after a
`finding of non-infringement, including “the patentee's interests
`in having the validity issue correctly adjudicated and in
`avoiding the loss of its patent's practical value . . . .” Id.
`at 84. Additionally, the quote cited by Cree is merely dicta
`from a previous case. Similarly, Flexuspine, Inc. v. Globus
`Med., Inc., 879 F.3d 1369 (Fed. Cir. 2018) deals with the
`district court’s discretion to dismiss a counterclaim without
`prejudice, which is not the case here.
`3
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`and '211 Patents were not invalid and that [defendant] did
`not infringe the asserted claims.”)
`Furthermore, Cree’s own behavior is contrary to the
`position taken in its Response. If this Court did not retain
`jurisdiction over invalidity issues even after a finding of
`noninfringement, Cree should not have filed a Rule 50(b)
`Motion regarding written description, an invalidity issue
`that, according to Cree’s Response, has been mooted. See
`Dkt. No. 327.
`Accordingly, this Court maintains the discretion to
`consider the issue of validity even though the jury found
`the asserted patents not infringed.
`
`B.
`
`Cree Failed to Establish Sufficient Evidence For a
`Jury To Find That The Asserted Patents Were Obvious
`Substantively, Cree argues that it has presented legally
`sufficient evidence for a jury to find the patents obvious by
`clear and convincing evidence. This is simply not the case.
`The only evidence provided by Cree regarding obviousness
`was the testimony of Dr. Bretschneider, and while Cree
`contends that “[t]he jury, as fact finders, would be free to
`credit the testimony of Cree’s expert over OptoLum’s” Dkt.
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`
`
`No. 358 at 10, this testimony (even forgetting his
`impeachment) is factually insufficient to carry Cree’s burden
`on this issue.
`Cree’s Opposition contends that Dr. Bretschneider’s
`testimony, if credited, establishes that the subject
`references:
`(1) are targeted to replacement bulbs that do the
`same thing; (2) use ETCMs; (3) use LED packages in
`similar arrangements; (4) use common ways to
`dissipate heat from LEDs; (5) both references
`attempt to solve the same problem using similar
`approaches; and (6) use convection to dissipate
`heat.
`Dkt. No. 358 at 14. Even accepting these factual assertions
`as true, they are not, by themselves, legally sufficient to
`support the conclusion that a POSA would have been motivated
`to combine Cree’s only remaining references and, in
`particular, there is no evidence at all regarding an
`expectation of success of the combination, which is a
`necessary element of an obviousness analysis.
`Furthermore, Dr. Bretschneider presents each of these
`conclusions solely from his opinion as a POSA, without a
`single supporting fact or reference from the art itself. For
`example, he cites to nothing in the prior art indicating that
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`a combination of heat dissipation strategies may be
`preferable, and he cites to nothing in Zhang indicating that
`its heat dissipation strategy might be insufficient or could
`be improved by implementing convective cooling. His
`conclusions demonstrate nothing but hindsight bias and a
`naked attempt to create Mr. Dry’s invention from the prior
`art. Such “conclusory and factually unsupported” expert
`testimony is insufficient survive a JMOL of non-obviousness.
`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 references would yield a predictable
`result, or how any specific combination would operate or read
`on the asserted claims” and finding such testimony “not
`sufficient and fraught . . . with hindsight bias”).
`Even if accepted as true, nothing in this testimony even
`suggests, much less demonstrates by clear and convincing
`evidence, that there would have been a reason to combine the
`Zhang and Cao references (or what that reason might be), or
`that there would be a reasonable expectation of success of
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`doing so. See In re Cyclobenzaprine Hydrochloride, 676 F.3d
`1063, 1068–69 (Fed.
`Cir. 2012) (citation and internal
`quotations omitted); 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”). Ultimately, Dr. Bretschneider’s conclusory opinion,
`that “it would just be natural to combine them” is simply not
`sufficient to meet Cree’s burden.
`Finally, while Cree also challenges OptoLum’s reference
`to testimony regarding evidence of industry praise for the
`claimed invention as additional, uncontroverted, evidence
`supporting a finding of non-obviousness, they do not attempt
`to rebut the evidence itself and merely challenge its
`sufficiency. Unlike the cases cited by Cree however, here
`Cree’s prior art challenge is weak, at best, and OptoLum’s
`evidence of industry praise is unrefuted. Therefore, taking
`the evidence as a whole, there is simply not a legally
`sufficient basis for a jury to find that the patented
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`invention was obvious by clear and convincing evidence, and
`judgment as a matter of law on this issue is appropriate.
`III. CONCLUSION
`For the foregoing reasons, OptoLum respectfully requests
`that OptoLum’s Motion Under Federal Rule Of Civil Procedure
`50(b) For Judgment As A Matter Of Law That The Asserted
`Patents Are Not Invalid Under 35 U.S.C. § 103 be GRANTED.
`
`Dated: January 11, 2022
`
`
`
`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.
`
`ME1 39034863v.2
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`
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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 1,448 words, less than the 3,225 words
`permitted by the Local Rules.
`
`Dated: January 11, 2022
`
`
`
`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
`
`ME1 39034863v.2
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`
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