`IN THE UNITED STATES DISTRICT COURT
`FOR THE MIDDLE DISTRICT OF NORTH CAROLINA
`GREENSBORO DIVISION
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`Civil Action No.
`17-cv-00687-WO-JLW
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`OPTOLUM, INC.,
`Plaintiff,
`
`v.
`CREE, INC.,
`Defendant.
`
`
`
`DEFENDANT CREE, INC.’S BRIEF IN SUPPORT OF ITS MOTION FOR
`ATTORNEYS’ FEES
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`
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`Case 1:17-cv-00687-WO-JLW Document 369 Filed 02/14/22 Page 1 of 25
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`TABLE OF CONTENTS
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`Page
`I. STATEMENT OF THE NATURE OF THE MATTER ................ 1
`II. STATEMENT OF FACTS ................................... 1
`A. OPTOLUM’ BRAND VALUE ALLEGATIONS ................ 3
`B. OPTOLUM’ WILLFULNESS ALLEGATIONS. ............... 9
`III. STATEMENT OF QUESTION PRESENTED ..................... 12
`IV. ARGUMENT ............................................ 12
`A. LEGAL STANDARD ................................. 12
`B. CREE IS THE PREVAILING PARTY ................... 13
`C. THIS CASE IS EXCEPTIONAL BECAUSE OPTOLUM
`ASSERTED OBJECTIVELY UNREASONABLE LEGAL
`THEORIES ....................................... 14
`1. OptoLum Unreasonably Pursued Its Theory
`Of Brand Value ............................ 14
`2. OptoLum’s Assertion Of Willful
`Infringement Was Unreasonable ............. 15
`D. CREE SHOULD BE AWARDED ITS REASONABLE
`ATTORNEYS’ FEES. ............................... 16
`V. CONCLUSION .......................................... 20
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`I.
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`STATEMENT OF THE NATURE OF THE MATTER
`Defendant Cree Inc. (“Cree”) submits this brief in
`support of its Motion for Attorneys’ Fees against Plaintiff
`OptoLum, Inc. (“OptoLum”). The jury verdict (D.I. 342)
`establishes Cree as the prevailing party. Under 35 U.S.C.
`§ 285, the Court may award attorney fees in exceptional
`cases. As explained below, this case is exceptional and
`warrants an award of attorney fees. The record in this
`case demonstrates that OptoLum pursued legal theories
`regarding brand value and willfulness having no basis in
`law or fact. OptoLum ensured that these theories infected
`every aspect of the case, up through and including trial.
`Under the totality of the circumstances, including
`governing law and the facts of this case, this case stands
`out from others. This Court should award Cree its
`attorneys’ fees.
`II. STATEMENT OF FACTS
`OptoLum originally filed this action in the District of
`Arizona. In its Complaint, OptoLum brought a claim for
`violation of §43(a) of the Lanham Act through false
`advertising. D.I. 32 (“Compl.”) at ¶¶ 171-91. OptoLum
`alleged that Cree falsely claimed to have “created the
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`first LED replacement to the incandescent bulb as well as
`the technology embodied in the Cree Filament Tower,” and
`that Cree engaged in a “covert strategy” using those false
`assertion to build Cree’s brand. Id. at ¶¶ 121, 171-91.
`OptoLum also included a claim for unjust enrichment on the
`grounds that Cree “wrongfully appropriated” a good
`reputation based on those allegedly false statements. Id.
`at ¶¶ 192-97. For relief, OptoLum asked the court to (a)
`enjoin Cree from claiming it conceived the filament tower
`in advertising materials, (b) to award damages “sufficient
`to compel Cree to disgorge its ill-gotten gains from its
`false advertising,” and (c) to award damages for Cree’s
`alleged “unjust enrichment.” Id. at 56.
`OptoLum’s Complaint further alleged that Cree willfully
`infringed U.S. Patent Nos. 6,831,303 and 7,242,028
`(collectively, “the Asserted Patents”). OptoLum’s willful
`infringement claims were based on the allegation that
`specific individuals, including a founder of Cree (John
`Edmond) and its then-CEO (Chuck Swoboda), had specific
`knowledge of OptoLum’s asserted patents and used that
`knowledge to create the Cree bulb. Id. ¶¶ 223-33, 244-54.
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`Cree moved to dismiss OptoLum’s claims of false
`advertising and unjust enrichment. D.I. 24. On March 21,
`2017, the District of Arizona dismissed both claims. It
`held that OptoLum had failed to allege “facts sufficient to
`state a plausible claim to relief under § 43(a),” (D.I. 49
`at 9), and that OptoLum’s unjust-enrichment claims were
`preempted by federal patent law (id. at 13). The District
`of Arizona then transferred this case to the Middle
`District of North Carolina. D.I. 90.
`A.
`OptoLum’ Brand Value Allegations
`Despite dismissal of the false-advertising and unjust-
`enrichment claims, OptoLum continued to seek relief
`stemming from assertions that Cree misappropriated
`OptoLum’s technology. OptoLum maintained, including
`through trial, that it was entitled to damages – separate
`and apart from those cognizable for a reasonable royalty
`under 35 U.S.C. 284 -- for the alleged increase in value to
`Cree’s company brand due to the misappropriation of
`OptoLum’s technology.
`In opening argument, OptoLum’s counsel was explicit
`that Cree did not “play by the rules” and, absent OptoLum’s
`technology, Cree “wouldn’t have had the incredibly valuable
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`brand and the ability to enter the LED bulb market and the
`commercial lighting market.” 10/25/21 Tr. at 26:12-14.
`OptoLum counsel then went further to assert that the
`royalty payments were to be “commensurate with the value of
`the technology to Cree.” Id. at 20-21.
`Optolum’s expert was even more direct. In calculating
`OptoLum’s alleged reasonable royalty rate for patent
`infringement, OptoLum’s expert, William Scally, included a
`5% “Incremental” value rate based on an alleged value of
`the Asserted Patents to Cree’s brand development. D.I. 299
`(Expert Report of William B. Scally) at 58-59, 62-64.1 Mr.
`Scally admitted that his proposed “Incremental Rate”
`accounts for value other than the value that the patents-
`in-suit allegedly contributed to the Accused Products.
`Q: Okay. So the value of the brand was something
`other than being able to make, use, and sell the
`accused light bulbs? Correct?
`A: Yes. It was something else.
`
`1 The alleged bases for the 5% increase were
`substantially similar as the allegations for the dismissed
`false-advertising and unjust-enrichment claims; namely, that
`Cree’s alleged false statements about creating the first LED
`replacement light bulb and developing the underlying LED
`filament technology of such LED bulb along with its “covert
`strategy” in developing the Cree LED bulb built Cree’s brand.
`Compare D.I. 32 ¶¶ 121, 171-91, with D.I. 299 at 58-59, 62-
`64.
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`Q: Okay. And that something else was what you have
`labeled brand? Right?
`A: Yes
`Q: And that 5 percent was a straight addition to the
`existing—to the 5 percent that you determined for
`the rest of the factors of your analysis? Correct?
`A: Yes. It is incremental.
`D.I. 194-3 (Scally Dep. Tr.) at 180:23-181:15 (emphasis
`added).
`
`In ruling on Cree’s Daubert motion, the Court held that
`“Mr. Scally will not be permitted to testify as to a
`royalty rate that includes any increase in brand value.”
`D.I. 315 at 2. The Court also granted in part Cree’s
`motion in limine, finding that “Mr. Scally’s proffered
`testimony on brand value is excluded because his expert
`report lacks sufficient analysis of the methodology used to
`determine a 5% additional royalty for brand value.” Id. at
`14.
`
`Despite the in limine rulings, Mr. Scally testified
`extensively at trial concerning alleged brand value. See,
`e.g., 11/1/21 Tr. at 216-18; 11/2/21 Tr. at 35-39.2 The
`Court specifically commented that:
`
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`2 In addition to the report and testimony of Mr. Scally,
`OptoLum sought to support its brand-value damages theory by
`admitting into evidence license agreements and other
`licensing documents as evidence of brand value. D.I. 236
`(OptoLum Pretrial Discloses), Exh. A, PX 681-694. OptoLum
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`I think we've been through brand -- value and
`branding at least three different ways. There is
`some relevance of that, as I understand the opinion
`testimony, to figuring out that plan is relevant to
`figuring out the hypothetical reasonable royalty.
`But the [w]ay it's been presented, I'm not doing
`this at this point, but I think I could potentially
`construe this testimony -- all this testimony with
`respect to branding as an effort to get indirectly
`what I prohibited the Plaintiff from get directly
`by exclusion that part of the expert's testimony.
`11/2/21 Tr. at 114:2-11.
`
`The Court further explained that:
`
`I could draw some adverse inferences from what's
`going on here. I'm not going to do that because I'm
`going to count on you to move this examination along
`more quickly, but no more branding. It's been beat
`to death in this trial.
`Id. at 18-22 (emphasis added).
`
`Despite the Court’s admonition, OptoLum’s counsel
`shortly thereafter directed Mr. Scally right back to the
`brand theory. In striking that testimony, the Court
`questioned Mr. Scally as follows:
`THE COURT: All right. Mr. Scally, your testimony was
`"based on my analysis of the evidence, there were a
`couple of different missions in the case. So a
`royalty rate of at least 5 percent because there are
`other benefits." What are those other missions in
`the case?
`
`
`also sought to offer interview testimony with Mr. Chuck
`Swoboda and other Cree witnesses concerning building the
`value of the Cree brand. See, e.g., id., PX 715, 716, 719,
`720.
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`THE WITNESS: When, Your Honor, when I mentioned
`mission, that was through the words of Cree
`executives as far as the dual mission of the launch
`of the bulb, both for the benefit of the brand
`building exercise for the company as well as selling
`the allegedly infringing product.
`THE COURT: And so you say other missions and at
`least 5 percent because there are other benefits,
`are you saying that the branding is a benefit, it's
`not fully accounted for by the 5 percent.
`THE WITNESS: Your Honor, I'm saying the use made by
`the invention would indicate that it might be above
`5 percent, yes.
`THE COURT: Based on branding?
`THE WITNESS: Yes, sir.
`THE COURT: I'm striking that. Bring the jury back
`in.
`11/2/21 Tr. at 119:23-120:18.3
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`Moreover, during closing argument, OptoLum counsel (Mr.
`Martinson) exhorted the jury to award at least $4.6M as a
`reasonable royalty due, in part, to the increase in value
`of the Cree company. See 11/9/21 Tr. at 37-40 (stating
`
`3 OptoLum also tried using Mr. Scally’s “sensitivity
`analysis” to put an unsupported royalty rate – even higher
`than the incremental rate – before the jury. See Scally Rpt.
`at 64-65. In striking that evidence, the Court explained:
`“But with respect to the sensitivity analysis, the 20 percent,
`as I see it, bears no -- I don't see how that bears any
`relationship to, number one, reasonably explaining his
`opinion or, two, how that number doesn't inject a level of
`unfair prejudice into the testimony, because I think it
`potentially provides the jury a basis upon which to award a
`royalty of 20 percent, and I don't see any evidence to support
`-- that that could be a reasonable award. 10/27/21 Tr. at
`21:4-11.
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`that Cree’s “success” was driven by “brand awareness” and
`later explaining Cree’s damages expert testimony as not
`“mean[ning] that [Cree] didn’t gain brand recognition by
`selling [bulbs] at a loss”).
`OptoLum’s brand-value damages theory had no basis in
`law or fact, was properly excluded from the trial and its
`presentation permeated this case. Cree spent considerable
`effort defending against it. Besides the above referenced
`motion practice and trial issues, Cree was obligated to
`produce substantial materials allegedly related to the
`broad-encompassing scope of OptoLum’s brand-value theory
`and their related discovery requests. See, e.g., D.I. 236,
`Exh. A, PX17, 311, 312, 315, 452, 705-728. Cree’s damages
`expert, Robert Yerman, had to rebut OptoLum’s brand-value
`damages theory in his expert reports. Multiple Cree fact
`witnesses had to address Cree’s brand in depositions. Exh.
`C (Yerman Dep. Tr.) at 139:4-140:18; Exh. D (Swoboda Dep.
`Tr.) at 53: 20-55:18; Exh. E (Hunter Dep. Tr.) at 97:15-
`105:19; Exh. F (Safarikas Dep. Tr.) at 37:6-173:7.4
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`4 Cree also had to spend resources to address excluding
`OptoLum’s brand-value theory at the October 8th hearing
`before this Court, see, e.g., 10/8/21 Tr. at 38:9-24, and at
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`The Court was right to instruct counsel during trial
`that the brand issue was “beat to death.” OptoLum
`emphasized that issue throughout the entire case.
`B.
`OptoLum’ Willfulness Allegations.
`OptoLum maintained that Cree willfully infringed the
`Asserted Patents from the filing of its Complaint through
`the end of its case-in-chief at trial. Throughout
`discovery, OptoLum used its willfulness-infringement
`allegations to support broad discovery requests about facts
`and materials that were irrelevant and did not support the
`claims, such as Cree’s attendance and communications at
`industry conferences. See, e.g., D.I. 286 (OptoLum’s Trial
`Brief) at 22-26 (detailing the factual bases that the
`evidence would allegedly show in support of OptoLum’s claim
`for willful infringement); Exh. A (7/10/18 Email fr.
`OptoLum’s Counsel) at 1-2 (requesting materials concerning
`DOE projects and for minutes of meetings of Cree’s board of
`directors); Exh. H (8/13/18 Email fr. OptoLum’s Counsel) at
`2-3 (requesting materials based on the impact to Cree’s
`brand).
`
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`the pre-trial conference, see, e.g., Pre-Trial Conference Tr.
`29:10-30:15.
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`As late as the pre-trial conference, OptoLum claimed
`that, to support its willful-infringement allegations, it
`would adduce evidence at trial of Cree’s “overwhelming
`knowledge of . . . OptoLum and the parent patents and the
`patents-in-suit and the complete lack of investigation or -
`- and the machinery that Cree has set up to investigate or
`not investigate infringement.” Pre-Trial Conference Tr.
`47:23-48:1; see also D.I. 286 (OptoLum Trial Brief) at 22-
`26.
`Contrary to its pre-trial representations, the only
`evidence adduced at trial even remotely related to the
`issue of willful infringement was Joel Dry’s testimony
`that, before the Asserted Patents even existed, Mr. Dry may
`have told one of the founders of Cree about an unidentified
`OptoLum patent at a conference in 2003. See 10/26/21 Tr.
`at 52:16, 54:19-56:11, 113:1-115:1; 11/2/21 Tr. at 192:16-
`22. However, there was no connection between this alleged
`knowledge in 2003 and Cree’s alleged infringement that
`supposedly began in 2013. See 10/26/21 Tr. at 79:15-18.
`No other witnesses offered any evidence of the state of
`mind of any individual at Cree regarding the Asserted
`Patents.
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`In light of the state of the evidentiary record, Cree
`filed a motion for judgment as a matter of law (“JMOL”) of
`no willful infringement at the close of OptoLum’s case-in-
`chief. D.I. 323. The Court granted Cree’s motion and
`dismissed OptoLum’s willful-infringement claims. D.I. 345.
`The Court held that OptoLum “offered no evidence that
`anyone at Cree was aware of the Asserted Patents at the
`time of the creation of the accused products” and also
`“presented no evidence that Cree’s accused products were
`created by deliberate or reckless infringement as opposed
`to innocent independent development.” D.I. 345 at 7.
`Like the brand-value allegations, OptoLum’s willfulness
`allegations also permeated this litigation. Cree expended
`significant resources defending against them throughout
`both discovery and at trial. In addition to motion
`practice and trial, Cree was obligated to produce
`significant materials in response to OptoLum’s discovery
`requests related to their willful-infringement allegations.
`See, e.g., D.I. 236, Exh. A, PX13, 637-648, 756. Cree
`witnesses had to address those allegations in depositions.
`Exh. D (Swoboda Dep. Tr.) at 35:19-38:2, 76:19-81:20; Exh.
`G (Edmond Dep. Tr.) at 60:6-73:17. Cree also had to
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`address them at the pre-trial conference, see, e.g., Pre-
`Trial Conference Tr. 29:10-30:15, and in the examination of
`OptoLum’s witnesses during OptoLum’s case-in-chief,
`10/26/21 Tr. at 113:1-115:5.
`Optolum wholly failed to carry its burden of proof on
`the willfulness issue. The necessary facts to support
`their burden of proof never existed despite OptoLum’s
`representations to the contrary right up to trial.
`III. STATEMENT OF QUESTION PRESENTED
`Whether Cree is entitled to an award of its attorneys’
`fees because this case is exceptional in light of OptoLum’s
`unreasonable assertions of brand value and willful
`infringement.
`IV. ARGUMENT
`A.
`Legal Standard
`The Patent Act provides that the court “in exceptional
`cases may award reasonable attorney fees to the prevailing
`party.” 35 U.S.C. § 285. The Supreme Court has defined an
`“exceptional” case as “simply one that stands out from
`others with respect to the substantive strength of a
`party’s litigating position (considering both the governing
`law and the facts of the case) or the unreasonable manner
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`in which the case was litigated.” Octane Fitness, LLC v.
`ICON Health & Fitness, Inc., 572 U.S. 545, 554 (2014). When
`considering whether a case is exceptional, district courts
`are to exercise their discretion on a case-by-case basis,
`considering the totality of the circumstances. Id.
`To decide whether to award fees, courts consider “the
`closeness of the case, the tactics of counsel, the conduct
`of the parties, and any other factors that may contribute
`to a fair allocation of the burdens of litigation as
`between winner and loser.” Modine Mfg. Co. v. Allen Group,
`Inc., 917 F.2d 538, 543 (Fed. Cir. 1990). Relevant Factors
`for consideration include “frivolousness, motivation,
`objective unreasonableness (both in the factual and legal
`components of the case) and the need in particular
`circumstances to advance considerations of compensation and
`deterrence.” Octane Fitness, 572 U.S. at 554 n.6 (internal
`quotation marks omitted). Entitlement to fees need only be
`shown by a preponderance of the evidence. Id. at 557.
`B.
`Cree Is The Prevailing Party
`There can be no dispute that Cree prevailed on every
`claim in this case in view of this Court’s rulings and the
`jury’s verdict of non-infringement. See, e.g., Nilssen v.
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`Osram Sylvania, Inc., 528 F.3d 1352, 1354–56 (Fed. Cir.
`2008) (affirming award of attorneys’ fees where defendant
`prevailed at trial); Phigenix, Inc. v. Genentech, Inc., No.
`15-cv-1238, 2018 WL 3845998, at *3 (N.D. Cal. Aug. 13,
`2018) (defendant was prevailing party where “summary
`judgment of no infringement was granted”). Therefore, for
`purposes of seeking fees under 35 U.S.C. § 285, Cree is the
`prevailing party.
`C.
`This Case Is Exceptional Because OptoLum
`Asserted Objectively Unreasonable Legal
`Theories
`OptoLum’s brand-value and willful-infringement
`allegations were objectively unreasonable both in their
`factual and legal components, as reflected by the
`determinations made in this case.
`1.
`OptoLum Unreasonably Pursued Its Theory
`Of Brand Value
`OptoLum consistently pursued theories of liability to
`obtain relief beyond what is cognizable for patent
`infringement. Initially, such claims were based on
`OptoLum’s unfounded assertions that Cree misled consumers
`and thus misappropriated reputation or brand value that
`otherwise belonged to OptoLum. See D.I. 49 at 5-10. Those
`claims were dismissed as a matter of law.
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`Notwithstanding that dismissal, OptoLum continued to
`pursue damages not cognizable for patent infringement.
`Discovery was laden with brand value issues including
`document discovery, depositions and motion practice. At
`trial, undaunted by the Court’s repeated rulings, OptoLum
`marched back through brand issues with Mr. Scally multiple
`times. See supra at Section II.A.5 OptoLum pressed the
`brand issue both in opening statement and closing argument.
`All of this effort seeking damages that – as the Court
`repeatedly held – were not properly before the jury as a
`matter of law or fact.
`2.
`OptoLum’s Assertion Of Willful
`Infringement Was Unreasonable
`OptoLum unreasonably maintained its willful-
`infringement claim until they were dismissed at the close
`of OptoLum’s case-in-chief at trial. Despite wielding its
`assertion of willful infringement as a basis for extensive
`discovery and trial testimony, OptoLum never articulated
`any facts that would even remotely rise to willful
`
`
`5 Cree also incorporates by reference its arguments made
`in support of Cree’s Motion to Exclude Certain Testimony of
`William B. Scally (D.I. 193) and Cree’s Motion in limine No.
`2 To Preclude Evidence of Brand Value and Licenses (D.I. 252).
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`infringement under the law. Indeed, as this Court found,
`OptoLum “offered no evidence that anyone at Cree was aware
`of the Asserted Patents at the time of the creation of the
`accused product.” D.I. 345 at 7. This Court also squarely
`rejected OptoLum’s legal position that “Cree’s incentive to
`develop a product for purposes of . . . brand development”
`supported willful infringement. Id. at 9.
`Despite lacking any basis to support willful
`infringement, OptoLum nonetheless pursued those claims in
`an effort to cloud Cree’s non-infringement positions and
`bolster their brand value damages assertions.6 On this
`record, doing so was unreasonable.
`D.
`Cree Should Be Awarded Its Reasonable
`Attorneys’ Fees.
`OptoLum’s litigation tactics make this case stand out
`from the rest. OptoLum’s continued push of baseless
`assertions through trial demonstrate that this case is
`exceptional under the totality of the circumstances. It is
`one thing to assert theories in zealous representation of a
`
`
`6 Cree incorporates its arguments related to willful
`infringement made in support of Cree’s Motion in Limine No.
`3 – Omnibus, D.I. 253, and Motion for Judgment as a Matter of
`Law Under Rule 50(a) Regarding Lack of Willfulness, D.I. 323.
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`client. It is quite another to press theories unfounded in
`fact or law in the face of repeated rejections and obvious
`factual deficiencies. OptoLum stepped boldly beyond that
`line.
`Additionally, OptoLum’s unfounded assertions permeated
`the entire litigation. In such circumstances, it is proper
`for this Court to award Cree’s fees. See Homeland
`Housewares, LLC v. Sorensen Rsch., 581 F. App’x 877, 881
`(Fed. Cir. 2014) (holding attorney fee awards do not
`require granularity limited to costs incurred in responding
`to specific acts of litigation misconduct); Large Audience
`Display Sys., LLC v. Tennman Prods., LLC, 745 F. App’x 153,
`157-58 (Fed. Cir. 2018) (holding awarding fees for entire
`litigation was proper particularly where “factual bases for
`exceptionality finding . . . ‘permeated’ the entire
`litigation.”).
`This Court should now exercise its discretion and award
`Cree the attorney fees it incurred to defend against
`OptoLum’s baseless claims as to brand value and willful
`infringement. In total, Cree has spent $4,886,262.70 in
`attorneys’ fees from the date this case was transferred to
`this Court (July 24, 2017) through trial. See Exh. B
`
`
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`Case 1:17-cv-00687-WO-JLW Document 369 Filed 02/14/22 Page 19 of 25
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`(Decl. of Julio Garceran).
`Cree asks this Court to award all fees for the period
`following the transfer of this case (from the District of
`Arizona) to this Court through post-trial. While Cree
`maintains that OptoLum’s theories lacked merit from the
`outset, when the District of Arizona dismissed the false-
`advertising and unjust-enrichment claims centered on
`theories of brand, OptoLum’s litigation tactics crossed the
`line into unreasonable.7
`OptoLum had an ongoing “individual duty to continually
`reevaluate the viability of its claims.” Finjan, Inc. v.
`Juniper Network, Inc., No. C 17-05659 WHA, 2021 WL 75735,
`at *2 (N.D. Cal. Jan. 9, 2021) (awarding fees where
`patentee’s damages theory improperly “attempt[ed] to
`inflate revenue”). After the District of Arizona’s
`dismissal order, OptoLum “had a duty to reexamine this
`
`
`7 Cree’s request focuses on the time when the case was
`transferred, as opposed to when the dismissal order was
`entered, as a measure of a good faith attempt to account for
`the time where a party might evaluate its litigating position
`following an adverse order. Here, the time between the
`dismissal order of the false-advertising and unjust-
`enrichment claims, and the transfer to this Court, reasonably
`allowed OptoLum to reexamine its position and withdraw the
`baseless allegations.
`
`
`
`- 18 -
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`Case 1:17-cv-00687-WO-JLW Document 369 Filed 02/14/22 Page 20 of 25
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`
`litigation and make an objective assessment of the validity
`of [their] claims.” Medtronic Navigation, Inc. v. BrainLAB
`Medizinische Computersystems Gmbh, No. CIV 98CV-01072-RPM,
`2008 WL 410413, at *5 (D. Colo. Feb. 12, 2008). They did
`not do so.
`Rather, OptoLum doubled down and sought to improperly
`inflate patent-infringement damages with an arbitrary 5%
`increase to the royalty rate based on brand value. And
`with respect to willful infringement, OptoLum contended
`that Cree’s incentive to develop its brand supported
`deliberate infringement despite never even establishing
`that Cree knew of the asserted patents. Neither theory had
`a basis in fact or law, and continuing to pursue them was
`unreasonable.
`Cree incurred significant fees to defend against
`OptoLum’s baseless theories after the case was transferred
`to this Court. Because the broad assertions OptoLum made
`to support its claims permeated through the entire case –
`from discovery through trial – Cree requests that this
`Court awards its attorneys’ fees incurred from the time of
`transfer. See Belcher Pharmaceuticals, LLC v. Hospira,
`Inc., 1-17-cv-00775, Dkt. 281 at 8 (D.Del. Feb. 3, 2022)
`
`
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`- 19 -
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`
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`(awarding fees “for every dollar . . . reasonably expended
`on counsel litigating th[e] case to trial” which
`“include[d] fees incurred on motions and matters on which
`[movant] did not prevail”). Cree maintains that its
`request is reasonable and a proper exercise of this Court’s
`discretion.
`V.
`CONCLUSION
`For the foregoing reasons, Cree respectfully requests
`that this Court find, for the purposes of 35 U.S.C. § 285,
`that Cree is the prevailing party, that this is an
`exceptional case, and that OptoLum is liable for the
`attorneys’ fees that Cree was forced to incur in this
`action. Accordingly, this Court should grant Cree’s motion
`and award its attorneys’ fees.
`
`
`
`
`
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`- 20 -
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`Case 1:17-cv-00687-WO-JLW Document 369 Filed 02/14/22 Page 22 of 25
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`Respectfully submitted, February 14, 2022.
`By: /s/ Blaney Harper
`Blaney Harper
`JONES DAY
`51 Louisiana Avenue, N.W.
`Washington, D.C. 20001-2113
`Telephone: (202) 879-3939
`Facsimile: (202) 626-1700
`Email: bharper@jonesday.com
`
`
`/s/ Peter D. Siddoway
`Peter D. Siddoway
`NC State Bar No. 45647
`SAGE PATENT GROUP
`4120 Main at North Hills St.
`Suite 230
`Raleigh, NC, 27609
`Telephone: 984-219-3358
`Facsimile: (984) 538-0416
`Email: psiddoway@sagepat.com
`
`
`
`
`
`
`
`Attorneys for Defendant Cree, Inc.
`
`- 21 -
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`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE MIDDLE DISTRICT OF NORTH CAROLINA
`GREENSBORO DIVISION
`
`OPTOLUM, INC.,
`Plaintiff,
`
`v.
`CREE, INC.,
`Defendant.
`
`
`Civ. Action No. 1:17-cv-
`00687
`
`CERTIFICATE OF WORD COUNT
`I hereby certify that the foregoing complies with the
`limitations set forth in Local Rule 7.3(d) by not exceeding
`6,250 words, including the body of the memorandum, headings
`and footnotes, but excluding the caption, signature lines,
`certificate of service, cover page, and index.
`
`/s/ Peter D. Siddoway
`Peter D. Siddoway
`
`
`
`- 1 -
`Case 1:17-cv-00687-WO-JLW Document 369 Filed 02/14/22 Page 24 of 25
`
`
`
`
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`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE MIDDLE DISTRICT OF NORTH CAROLINA
`
`OPTOLUM, INC.,
`Plaintiff,
`
`v.
`CREE, INC.,
`Defendant.
`
`
`Civ. Action No. 1:17-cv-
`00687
`
`CERTIFICATE OF SERVICE
`I hereby certify that on February 14, 2022, I
`electronically filed the foregoing with the Clerk of the
`Court using the CM/ECF system, which will send notification
`to counsel of record.
`
`/s/ Peter D. Siddoway
`Peter D. Siddoway
`
`
`
`
`
`- 1 -
`Case 1:17-cv-00687-WO-JLW Document 369 Filed 02/14/22 Page 25 of 25
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`
`
`
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