IN THE UNITED STATES DISTRICT COURT
`FOR THE MIDDLE DISTRICT OF NORTH CAROLINA
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`Plaintiff,
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`1:17CV687
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`OPTOLUM, INC.,
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`CREE, INC.,
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`v.
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`Defendant.
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`ORDER DENYING AS MOOT PARTIES’
`MOTIONS FOR JUDGMENT AS A MATTER OF LAW
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`Before this court is Plaintiff OptoLum, Inc.’s
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`(“Plaintiff”) Motion for Judgment as a Matter of Law that the
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`Asserted Patents are not Invalid under 35 U.S.C. § 103,
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`(Doc. 348), Defendant Cree, Inc.’s (“Defendant”) Motion for
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`Judgment as a Matter of Law that the Entire Market Value Rule
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`Does Not Apply, (Doc. 350), Defendant’s Motion for Judgment as a
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`Matter of Law of Invalidity of U.S. Patent No. 7,242,028 based
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`on Lack of Written Description, (Doc. 352), and Defendant’s
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`Motion for Judgment as a Matter of Law on Ensnarement,
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`(Doc. 354).
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`I.
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`BACKGROUND
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`Plaintiff filed a motion for judgment as a matter of law
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`(“JMOL”) of no invalidity under 35 U.S.C. § 103. (Doc. 348.)
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`Defendant responded, (Doc. 358), and Plaintiff replied,
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`Doc. 362).
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`Defendant filed a motion for JMOL that the entire market
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`value rule does not apply to any damages calculation.
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`(Doc. 350). Plaintiff responded, (Doc. 360), and Defendant
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`replied, (Doc. 363).
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`Defendant also filed a motion for JMOL of invalidity of the
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`‘028 Patent based on lack of written description. (Doc. 352.)
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`Plaintiff responded, (Doc. 361), and Defendant replied,
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`(Doc. 364).
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`Defendant also filed a motion for JMOL that the ensnarement
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`defense applies. (Doc. 354.) Plaintiff responded, (Doc. 359),
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`and Defendant replied, (Doc. 365).
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`II. ANALYSIS
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`The present case was tried to a jury in October to November
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`2021. At trial, Plaintiff accused Defendant of infringing the
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`‘303 and ‘028 patents. Specifically, Plaintiff alleged that
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`Defendant’s Multi-Ring Bulb directly infringed Claims 2-4, 6-9
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`of the ‘303 Patent and directly infringed Claims 1-3, 5-8, 14,
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`16 of the ‘028 Patent. Defendant denied infringement of the
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`asserted claims. The following questions were presented to the
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`jury:
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`-2-
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`1. Has OptoLum proved by a preponderance of the
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`evidence that Cree literally infringed any of the
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`following claims of the ‘303 Patent as to the Multi -
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`Ring Bulb?
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`2. Has OptoLum proved by a preponderance of the
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`evidence that Cree literally infringed any of the
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`following claims of the ‘028 Patent as to the Multi -
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`Ring Bulb?
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`(Verdict Form (Doc. 342) at 1-2.) The jury answered “No” as to
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`each asserted claim.
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`In light of the jury’s infringement verdict and this
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`court’s decision on the application of prosecution history
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`estoppel, (Oral Order 11/09/2021), this court need not address
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`the parties’ motions on validity and damages. Put another way,
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`this court need not address the issues raised in these motions
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`because they concern either defense s to a finding of
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`-3-
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`infringement or damages based on infringement.1 “Mootness can
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`arise at any stage of the litigation.” Calderon v. Moore, 518
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`U.S. 149, 150 (1996). Once the jury found that Cree’s bulbs do
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`not infringe the Optolum patents at issue, a ripe case or
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`controversy no longer existed between the parties. Neither party
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`sought a declaratory judgment as to any of the issues addressed
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`in the pending motions.
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`“The rule in federal cases is that a controversy must be
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`extant at all stages of review, not me rely at the time the
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`complaint is filed.” Preiser v. Newkirk, 422 U.S. 395, 401
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`(1975) (internal quotation marks omitted) (quoting Steffel v.
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`Thompson, 415 U.S. 452, 459 n.10 (1974)). Defendant’s liability
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`1 This court agrees with Defendant that Cardinal Chemical
`Co. v. Morton International, Inc. supports this court’s finding
`that the JMOLs are moot. See 508 U.S. 83, 98 (1993) (holding
`invalidity not moot where the defendant sought a declaratory
`judgment the asserted patent was invalid); see also Intermatic
`Inc. v. Lamson & Sessions Co., 273 F.3d 1355, 1368 (Fed. Cir.
`2001) (ruling on invalidity where the defendant had asserted a
`counterclaim, rather than an affirmative defense); Kinetic
`Concepts, Inc. v. Bluesky Med. Corp., No. SA-08-CV-102-RF, 2010
`WL 11463274, at *1 (W.D. Tex. Oct. 18, 2020) (declining to rule
`on infringement in light of the court’s previous ruling on
`invalidity); Transweb, LLC v. 3M Innovative Prop s. Co., 16 F.
`Supp. 3d 385, 411 n.33 (D.N.J. 2014) (“In l ight of the jury’s
`invalidity verdict and the Court’s decision on unenforceability,
`the Court need not address the motion [on willful infringement],
`and it is therefore terminated as moot.”). Here, Cree asserted
`invalidity and ensnarement as a defense, not an independent
`counterclaim. Accordingly, this court will decline to make a
`finding on validity. Similarly, a finding of non-infringement
`moots a determination on whether the entire market value rule
`applies to a damages calculation.
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`-4-
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`to Plaintiff is no longer in dispute. Any opinion by this court
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`as to issues or defenses no longer necessary to resolution of a
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`previously resolved dispute is a prohibited advisory opinion. “A
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`federal court has neither the power to render advisory opinions
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`nor to decide questions that cannot affect the rights of
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`litigants in the case before them.” Id. (quoting North Carolina
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`v. Rice, 404 U.S. 224, 246 (1971)). Because the jury found none
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`of the claims of the ‘303 or ‘028 Patents were infringed, those
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`issues are moot and will not be addressed by this court. Thus,
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`the parties’ motions will be denied as moot.
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`III. CONCLUSION
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`For the foregoing reasons, this court finds that
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`Plaintiff’s Motion for Judgment as a Matter of Law that the
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`Asserted Patents are not Invalid under 35 U.S.C. § 103,
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`(Doc. 348), Defendant’s Motion for Judgment as a Matter of Law
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`that the Entire Market Value Rule does not Apply, (Doc. 350),
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`Defendant’s Motion for Judgment as a Matter of Law of Invalidity
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`of U.S. Patent No. 7,242,028 based on Lack of Written
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`Description, (Doc. 352), and Defendant’s Motion for Judgment as
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`a Matter of Law on Ensnarement, (Doc. 354), will be denied as
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`moot.
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`-5-
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`IT IS THEREFORE ORDERED that Plaintiff’s Motion for
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`Judgment as a Matter of Law that the Asserted Patents are not
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`Invalid under 35 U.S.C. § 103, (Doc. 348), is DENIED.
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`IT IS FURTHER ORDERED that Defendant’s Motion for Judgment
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`as a Matter of Law that the Entire Market Value Rule does not
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`Apply, (Doc. 350), is DENIED.
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`IT IS FURTHER ORDERED that Defendant’s Motion for Judgment
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`as a Matter of Law of Invalidity of U.S. P atent No. 7,242,028
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`based on Lack of Written Description, (Doc. 352), is DENIED.
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`IT IS FURTHER ORDERED that Defendant’s Motion for Judgment
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`as a Matter of Law on Ensnarement, (Doc. 354), is DENIED.
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`IT IS SO ORDERED.
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`This the 31st day of January, 2022.
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`__________________________________
` United States District Judge
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`-6-
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