OPTOLUM INC. v. CREE INC.
Filing
230
MEMORANDUM OPINION AND ORDER signed by JUDGE WILLIAM L. OSTEEN, JR on 09/28/2020, that Defendant's Partial Motion for Summary Judgment, (Doc. 190 ), is GRANTED with respect to Cree's argument that the G en 2.5 bulbs do not infringe and to Cree's argument that the Single Ring bulbs do not literally infringe. Defendant's Partial Motion for Summary Judgment, (Doc. 190 ), is DENIED as to the remaining claims. FURTHER that Plaintiff's Motion and Memorandum for Leave to File a Surreply, (Doc. 220 ), is GRANTED. FURTHER that the parties shall file briefs concerning the most appropriate method to address the issue of ensnarement, either in a pre-trial evidentiary hearing or after trial. Parties' briefs shall be no longer than seven (7) pages in length and shall be filed within ten (10) days after the issuance of this Memorandum Opinion and Order.(Taylor, Abby)
IN THE UNITED STATES DISTRICT COURT
FOR THE MIDDLE DISTRICT OF NORTH CAROLINA
OPTOLUM, INC.,
Plaintiff,
v.
CREE, INC.,
Defendant.
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1:17CV687
MEMORANDUM OPINION AND ORDER
OSTEEN, JR., District Judge
OptoLum, Inc. (“OptoLum”) sues Defendant Cree, Inc.
(“Cree”) for patent infringement, violations of the Lanham Act,
and unjust enrichment. (Doc. 32.) This matter is before the
court on Cree’s motion for partial summary judgment pursuant to
Federal Rule of Civil Procedure 56. (Doc. 190.) Because there is
no genuine issue of material fact with respect to Cree’s
argument that the Gen 2.5 bulbs do not infringe and that Cree’s
Single Ring bulbs do not literally infringe the asserted
patents, the court will grant Cree’s motion on these issues. The
court finds, however, that Cree fails to show that there is no
genuine issue of material fact as to the remaining issues, and
the court will deny Cree’s motion as to these arguments.
I.
FACTUAL AND PROCEDURAL BACKGROUND
“In reviewing the evidence as it relates to a motion for
summary judgment, this Court must . . . view all evidence in the
light most favorable to the non-moving party.” Shealy v.
Winston, 929 F.2d 1009, 1011 (4th Cir. 1991). The facts here,
taken in the light most favorable to OptoLum, are as follows.
A.
Factual Background
1.
Parties
Plaintiff OptoLum is a corporation organized under the laws
of the state of Arizona with its principal place of business
there as well. (Amended Complaint (“Am. Compl.”) (Doc. 32)
¶ 28.)
Defendant Cree is a corporation organized under the laws of
the state of North Carolina with its principal place of business
there as well. (Id. ¶ 30.)
Both parties produce lighting products using light-emitting
diodes (“LEDs”). (Id. ¶¶ 12, 20, 22–23, 29.)
2.
OptoLum’s Patents at Issue
OptoLum seeks to enforce U.S. Patents 6,831,303 (the “‘303
Patent”), and 7,242,028 (the “‘028 Patent”) in this action
(together, the “Patents”).1 (Id. ¶¶ 25–27.)
Both Patents are continuations of U.S. Patent No.
6,573,536 (the “‘536 Patent”), (see Def.’s Br. (Doc. 191),
Ex. B, U.S. Patent No. 7,242,028 (the “‘028 Patent”) (Doc.
191-3) at 2), but OptoLum does not seek to enforce this Patent
and Cree submits that the ‘536 Patent is not at issue in this
matter, (Def.’s Br. (Doc. 191) at 18 n.2).
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These Patents were invented by Mr. Joel M. Dry (“Dry”).
(See Def.’s Mem. in Supp. of Mot. for Partial Summ. J. (“Def.’s
Br.”) (Doc. 191), Ex. A, U.S. Patent No. 6,831,303 (“‘303
Patent”) (Doc. 191-2) at 2; Ex. B, U.S. Patent No. 7,242,028
(“‘028 Patent”) (Doc. 191-3) at 2.)2 The ‘028 Patent, issued on
July 10, 2017, is a continuation of the ‘303 Patent. (‘028
Patent (Doc. 191-3) at 2.) The ‘303 Patent was issued on
December 14, 2004. (‘303 Patent (Doc. 191-2) at 2.) Dry is the
CEO and President of OptoLum. ((Declaration of Leah McCoy (Doc.
214) Ex. A, Declaration of Joel M. Dry (“Dry Decl.”) (Doc.
214-1) ¶ 2.) At the time the United States Patent and Trademark
Office issued the patents to Dry, he and his wife, Martha Baker
(“Baker”), were married and living in Arizona. (Deposition of
Joel Dry (“Dry Dep.”) (Doc. 191-7) at 8, 10.)
Dry assigned both patents to OptoLum; he assigned the ‘303
Patent application to OptoLum in 2003 and the ‘028 Patent in
2016. (Doc. 191-8 at 2; Doc. 191-9 at 3.)
The ‘303 Patent discloses a “light source that utilizes
light emitting diodes [LEDs] that emit white light.” (‘303
Patent (Doc. 191-2) at 2.) “The diodes are mounted on an
All citations in this Memorandum Opinion and Order to
documents filed with the court refer to the page numbers located
at the bottom right-hand corner of the documents as they appear
on CM/ECF.
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elongate member having at least two surfaces upon which the
[LEDs] are mounted,” and the “elongate member is thermally
conductive and is utilized to cool the [LEDs].” (Id.) The ‘303
Patent includes independent claim 1 and dependent claims 2-18.
OptoLum alleges Cree infringed claims 2–4 and 6–9 of the ‘303
Patent. (Doc. 191-16 at 3.) Claim 1 claims:
A light source comprising:
an elongate thermally conductive member having an
outer surface;
a plurality of light emitting diodes carried on said
elongate member outer surface at least some of
said light emitting diodes being disposed in a
first plane and others of said light emitting
diodes being disposed in a second plane not
coextensive with said first plane;
electrical conductors carried by said elongate
thermally conductive member and connected to said
plurality of light emitting diodes to supply
electrical power thereto; and
said elongate thermally conductive member being
configured to conduct heat away from said light
emitting diodes to fluid contained by said
elongate thermally conductive member;
said elongate thermally conductive member comprises
one or more heat dissipation protrusions.
(‘303 Patent (Doc. 191-2) col. 4 lines 25-43)
The ‘028 Patent also discloses a “light source that
utilizes light emitting diodes [LEDs] that emit white light,”
which uses an elongate member to conduct heat. (‘028 Patent
(Doc. 191-3) at 2.) OptoLum alleges Cree infringed claims 1–3,
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5–8, 14, and 16 of the ‘028 Patent.3 (Doc. 191-16 at 3.) Claim 1
is an independent claim and the remaining claims are dependent
claims. (‘028 Patent (Doc. 191-3) at 6.) It reads:
A light source comprising:
an elongate thermally conductive member having an
outer surface;
a plurality of solid state light sources carried on
said elongate member outer surface at least some
of said solid state light sources being disposed
in a first plane and others of said solid state
light sources being disposed in a second plane
not coextensive with said first plane;
electrical conductors carried by said elongate
thermally conductive member and connected to said
plurality of solid state light sources to supply
electrical power thereto;
said elongate thermally conductive member being
configured to conduct heat away from said solid
state light sources to fluid contained by said
elongate thermally conductive member; and
said elongate thermally conductive member comprises
one or more heat dissipation protrusions, at
least one of said heat dissipation protrusions
being carried on said elongate member outer
surface.
(‘028 Patent (Doc. 191-3) col. 4 lines 30-50.)
Claim 1 of the ‘028 Patent reiterates Claim 1 of the ‘303
Patent, except instead of using the term “light emitting
OptoLum filed its original Infringement Contentions on
April 21, 2017. (Doc. 191-4 at 10.) These Infringement
Contentions listed Claims 17, 19–22, 27, and 29–30 as infringed
claims of the ‘028 Patent. (Id. at 3.) In November 2017, OptoLum
notified Cree that it was no longer asserting infringement of
claims 19–22, 27, and 29–30. (Doc. 191-5 at 2.) Further, in
April 2019, OptoLum notified Cree that it was no longer
asserting infringement of claim 17 of the ‘028 Patent. (Doc.
191-6 at 2.)
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diodes,” it uses the term “a plurality of solid state light
sources.” (Compare ‘303 Patent (Doc. 191-2) col. 4 line 28 (Doc.
191-2), with ‘028 Patent (Doc. 191-3) col. 4 line 33.)
3.
Cree’s Accused Products
OptoLum identifies seventy-three lighting products produced
by Cree that allegedly infringe the ‘303 Patent and the ‘028
Patent (together, the “Accused Products”). (Doc. 191-16 at 3–5.)
In particular, OptoLum submits the Cree 60 Watt Bulb, a “single
ring” bulb (the “Single Ring bulb”); and the Cree 100 Watt Bulb,
a “multiple ring” bulb, as representative of the Accused
Products. (Id. at 5–7.) OptoLum alleges the 60 Watt Bulb and the
100 Watt Bulb both infringe the ‘303 Patent and the ‘028 Patent.
(Id.)
B.
Procedural Background
The parties filed a Joint Claim Construction Statement in
November 2017. (Doc. 106.) The parties agreed to the
constructions of several phrases. The court also issued its own
Claim Construction Memorandum Opinion and Order. (Doc. 152.) In
that Order, the court found that OptoLum disclaimed subject
matter concerning the phrase “disposed in a second plane not
coextensive with said first plane.” (Id. at 21–22.)
Cree filed its motion for partial summary judgment on
noninfringement, invalidity, and damages, (Doc. 190), and a
supporting brief, (Doc. 191). OptoLum responded, (Pl.’s Opp’n to
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Cree’s Omnibus Mot. for Summ. J. of Non-Infringement, Invalidity
and Damages (“Pl.’s Resp.”) (Doc. 213)), and Cree replied,
(Def.’s Reply Mem. in Supp. of Omnibus Mot. for Partial Summ. J.
of Non-Infringement, Invalidity, and Damages (“Def.’s Reply”)
(Doc. 218)). Plaintiff has moved for leave to file a surreply,
(Doc. 220), which the court will grant.
II.
STANDARD OF REVIEW
Summary judgment is appropriate when “there is no genuine
dispute as to any material fact and the movant is entitled to
judgment as a matter of law.” Fed. R. Civ. P. 56(a); see Celotex
Corp. v. Catrett, 477 U.S. 317, 322–23 (1986). This court’s
summary judgment inquiry is whether the evidence “is so onesided that one party must prevail as a matter of law.” Anderson
v. Liberty Lobby, Inc., 477 U.S. 242, 252 (1986). The moving
party bears the initial burden of demonstrating “that there is
an absence of evidence to support the nonmoving party’s case.”
Celotex Corp., 477 U.S. at 325. If the “moving party discharges
its burden . . . , the nonmoving party must come forward with
specific facts showing that there is a genuine issue for trial.”
McLean v. Patten Cmtys., Inc., 332 F.3d 714, 718-19 (4th Cir.
2003) (citing Matsushita Elec. Indus. Co. v. Zenith Radio Corp.,
475 U.S. 574, 586-87 (1986)). Summary judgment should be granted
“unless a reasonable jury could return a verdict for the
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nonmovant party on the evidence presented.” McLean, 332 F.3d at
719 (citing Liberty Lobby, 477 U.S. at 247–48).
III. ANALYSIS
Cree raises five issues in its motion for partial summary
judgment. First, Cree contends its Generation 2.5 Single Ring
bulb does not infringe the Patents. (Def.’s Br. (Doc. 191) at
27.) Second, Cree argues that its Single Ring bulb does not
infringe the Patents. (Id. at 33.) Third, Cree asserts that
OptoLum lacks standing to assert the ‘028 Patent. (Id. at 43.)
Fourth, Cree argues the ‘028 Patent is invalid pursuant to
35 U.S.C. § 112 for violating the written description
requirement. (Id. at 48, 54.) Finally, Cree contends that presuit damages are not recoverable because OptoLum failed to
comply with the written description requirement under 35 U.S.C.
§ 287(a). (Id. at 62–63.) The court will address Cree’s
arguments in turn. Because Cree alleges OptoLum lacks standing
to assert the ‘028 Patent, which would be a dispositive issue
regarding the ‘028 Patent, the court will address this argument
first.
A.
OptoLum’s Standing to Maintain Suit for Infringement
of the ‘028 Patent
All co-owners of a patent must join in a patent suit. Drone
Techs., Inc. v. Parrot S.A., 838 F.3d 1283, 1292 (Fed. Cir.
2016). Cree argues that Martha Baker, Dry’s wife, has a
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co-ownership interest in the ‘028 Patent by virtue of Arizona
property laws, where they resided when Dry was issued the ‘028
Patent. Thus, Cree contends, because Dry only assigned his
interest in the ‘028 Patent to OptoLum, and Martha Baker did not
assign her interest, she retains an ownership interest in the
‘028 Patent but has not joined in this suit, thus depriving
OptoLum of prudential standing to enforce the ‘028 Patent.
(Def.’s Br. (Doc. 191) at 14–15.)
OptoLum argues that Arizona law provides each spouse the
right to dispose of community property while they are still
married. (Pl.’s Resp. (Doc. 213) at 23–24.) OptoLum also
acknowledges that such dispositions can sometimes constitute a
breach of fiduciary duty between spouses, but it contends Martha
Baker had full knowledge of the assignment and that there is no
evidence in the record that Dry’s assignment of the ‘028 Patent
was a breach of fiduciary duty which would invalidate the
assignment. (Id. at 24–25.)
Article III of the Constitution “limits the jurisdiction of
federal courts to ‘Cases’ and ‘Controversies,’” Beck v.
McDonald, 848 F.3d 262, 269 (4th Cir.), cert. denied sub nom.
Beck v. Shulkin, ____ U.S. ____, 137 S. Ct. 2307 (2017) (quoting
U.S. Const. art. III, § 2), and the doctrines of standing and
mootness derive from that limitation, White Tail Park, Inc. v.
Stroube, 413 F.3d 451, 458 (4th Cir. 2005). The standing
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determination “remains focused on whether the party invoking
jurisdiction had the requisite stake in the outcome when the
suit was filed.” Davis v. Fed. Election Comm’n, 554 U.S. 724,
734 (2008).
The standing doctrine has two components: Article III
standing, which implicates the jurisdiction of the federal
courts, and prudential standing, “which embodies ‘judicially
self-imposed limits on the exercise of federal jurisdiction.’”
United States v. Windsor, 570 U.S. 744, 757 (2013) (quoting Elk
Grove Unified Sch. Dist. v. Newdow, 542 U.S. 1, 11-12 (2004));
Doe v. Va. Dep't of State Police, 713 F.3d 745, 753 (4th Cir.
2013). The “irreducible minimum requirements” of standing that a
plaintiff bears the burden of establishing under Article III are
(1) an injury in fact, (2) that is fairly traceable to the
challenged conduct of the defendant, and (3) that is likely to
be redressed by a favorable judicial decision. Spokeo, Inc. v.
Robins, 578 U.S. ___, ___, 136 S. Ct. 1540, 1547 (2016) (quoting
Lujan v. Defenders of Wildlife, 504 U.S. 555, 560 (1992)); David
v. Alphin, 704 F.3d 327, 333 (4th Cir. 2013).
Certain prudential considerations may nevertheless deprive
a plaintiff of standing “[e]ven when Article III permits the
exercise of federal jurisdiction.” Windsor, 570 U.S. at 760.
“Before a court may exercise jurisdiction over a patent
infringement action, it must be satisfied that, ‘in addition to
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Article III standing, the plaintiff also possesse[s] standing as
defined by § 281 of the Patent Act.’” Drone Techs., 838 F.3d at
1292 (quoting Alps S., LLC v. Ohio Willow Wood Co., 787 F.3d
1379, 1382 (Fed. Cir. 2015)). Section 281 provides that a
“patentee shall have remedy by civil action for infringement of
his patent.” 35 U.S.C. § 281. The term “patentee” includes both
the person to whom the patent issued, but also “successors in
title to the patentee.” 35 U.S.C. § 100(d); see also H.R.
Techs., Inc. v. Astechnologies, Inc., 275 F.3d 1378, 1384 (Fed.
Cir. 2002) (“In order to have standing, the plaintiff in an
action for patent infringement must be a ‘patentee’ pursuant to
35 U.S.C. §§ 100(d) and 281 . . . .”). “A party may become the
successor in title to the original patentee by assignment, and
then may sue for infringement in its own name.” Drone Techs.,
838 F.3d at 1292 (citing 35 U.S.C. § 261 (“[P]atents, or any
interest therein, shall be assignable in law by an instrument in
writing.”); Morrow v. Microsoft Corp., 499 F.3d 1332, 1339–40
(Fed. Cir. 2007); Propat Int'l Corp. v. RPost, Inc., 473 F.3d
1187, 1189 (Fed. Cir. 2007). However, “if a co-inventor assigns
his or her ownership interest to a third party, the assignee
cannot sue infringers ‘[a]bsent the voluntary joinder of all
co-owners.’” Drone Techs., 838 F.3d at 1292 (quoting Israel BioEng’g Project v. Amgen, Inc., 475 F.3d 1256, 1264–65 (Fed. Cir.
2007)).
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For OptoLum to have prudential standing under § 281, it
must be the sole owner or the co-owner of the ‘028 Patent. If
Dry assigned the entirety of the ‘028 Patent to OptoLum, OptoLum
is the sole owner of the ‘028 Patent and therefore has
prudential standing to enforce that Patent. In order to make
this determination, the court applies Arizona law to determine
whether Baker retained a community property interest in the ‘028
Patent when Dry assigned it to OptoLum.
Under 35 U.S.C. § 261, “patents shall have the attributes
of personal property.” Because Dry received the ‘028 Patent
while he and Baker were living and domiciled in Arizona, Arizona
property law applies. See Enovsys LLC v. Nextel Commc’ns, Inc.,
614 F.3d 1333, 1342 (Fed. Cir. 2010) (noting that “[w]ho has
legal title to a patent is a question of state law” and applying
California community property law to determine whether a party,
who lived in California, owned the patent at issue); see also
Stop the Beach Renourishment, Inc. v. Fla. Dep’t of Envtl.
Prot., 560 U.S. 702, 707 (2010) (“Generally speaking, state law
defines property interests . . . .”). Further, the parties agree
that the ‘028 Patent was subject to Arizona’s community property
laws when it was assigned. (Compare Def.’s Br. (Doc. 191) at 47,
with Pl.’s Resp. (Doc. 213) at 26.)
Ariz. Rev. Stat. Ann. § 25-211 provides that “[a]ll
property acquired by either husband or wife during the marriage
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is the community property of the husband and wife except for
property that is . . . [a]cquired by gift, devise or descent.”
Ariz. Rev. Stat. Ann. § 25-214 further provides that “[t]he
spouses have equal management, control and disposition rights
over their community property and have equal power to bind the
community,” and “[e]ither spouse separately may acquire, manage,
control or dispose of community property or bind the community
. . . .” This law also provides that:
joinder of both spouses is required in any of the
following cases:
1. Any transaction for the acquisition, disposition or
encumbrance of an interest in real property other than
an unpatented mining claim or a lease of less than one
year.
2. Any transaction of guaranty, indemnity or
suretyship.
3. To bind the community, irrespective of any person's
intent with respect to that binder, after service of a
petition for dissolution of marriage, legal separation
or annulment if the petition results in a decree of
dissolution of marriage, legal separation or
annulment.
Ariz. Rev. Stat. § 25-214(C).
Dry was married to his wife when they moved to Arizona in
October 2004. (Dry Dep. (Doc. 191-7) at 8, 10.) The ‘028 Patent
was not issued until July 2007. (Doc. 191-3 at 2.) Because the
‘028 Patent is personal property under federal law, and it was
acquired by Dry during the marriage, it was community property
under Arizona law. See Ariz. Rev. Stat. § 25-211. Further, the
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patent is not real property, nor was the assignment of the ‘028
Patent a “transaction of guaranty, indemnity or suretyship” or a
transaction “[t]o bind the community” after the dissolution of
the marriage. Therefore, either Dry or Baker could separately
dispose of community property, including the patent at issue,
under Ariz. Rev. Stat. Ann. § 25-214.
Dry assigned his interest in the ‘028 Patent in a written
instrument. (Doc. 191-9.) This court finds that this constituted
a valid disposition of community property and that Baker’s
signature was unnecessary because Dry had authority to “control
or dispose of community property.” Ariz. Rev. Stat. § 25-214.
Cree’s argument that Baker’s interest could only be transferred
by written instrument, (Def.’s Reply (Doc. 218) at 11), is
technically correct; it was, but by Dry, as is permitted by
Arizona law.
Thus, when Dry assigned his interest in the ‘028 Patent to
OptoLum in 2016, Baker did not retain an interest in the ‘028
Patent. See U.S. Bank NA v. Varela, No. CV-15-02575-PHX-DLR,
2016 WL 7178668, at *3 n.6 (D. Ariz. Dec. 9, 2016) (observing
the plaintiff’s argument that the contract at issue was not
valid because it was not also signed by the other spouse was
without merit under A.R.S. § 25-214); Wasserman v. Moya, No.
1 CA–CV 12–0509, 2013 WL 3893322, at *3–4 (Ariz. Ct. App.
July 25, 2013) (finding that the husband could dispose of
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property bought with community funds and the wife was not
entitled to one-half the value of the disposed property).
In its reply, Cree raises the argument that, in the
assignment, Dry identifies himself as “Joel Dry, an individual,”
thus “[a]s ‘an individual,’ Mr. Dry acted in his individual
capacity, not purporting to represent Martha [Baker] of the
community interest.”4 (Def.’s Reply (Doc. 218) at 11.) Cree
further argues that “[t]he assignment makes no mention of any
rights held by Martha [Baker]. Because Martha [Baker] held an
interest in the ‘028 patent, and those rights were never
identified – directly or indirectly – in the assignment
document, the ownership interest of Martha [Baker] was never
transferred to OptoLum.” (Id.) The court finds these arguments
unconvincing. First, Cree offers no legal authority for either
argument. Second, as OptoLum points out in its surreply, because
Joel Dry designated himself as “an individual,” “it is clear
The court finds that this constitutes a new argument for
the sake of Plaintiff’s motion to file a surreply. Parties do
not have the right to file a surreply. See Johnson v. Rinaldi,
No. 1:99CV170, 2001 WL 293654, at *7 (M.D.N.C. Feb. 16, 2001)
(noting that the “[c]ourt knows of no authority establishing a
right to file a surreply”). Generally, however, courts allow a
party to file a surreply when fairness dictates based on new
arguments raised in the previous reply. See United States v.
Falice, No. 1:04CV878, 2006 WL 2488391 (M.D.N.C. Aug. 25, 2006);
Khoury v. Meserve, 268 F. Supp. 2d 600, 605–06 (D. Md. 2003).
Such is the case here; the court will grant Plaintiff’s motion,
and the court will consider this argument and Plaintiff’s filed
surreply.
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from the language of the assignment as a whole that the notation
‘an individual’ merely identifies Mr. Dry as an individual and
not a corporate or other type of entity.” (Doc. 220-2 at 9.) The
assignment states that Joel Dry “assign[s], transfer[s], and
deliver[s]” to OptoLum “all right, title and interest in and to”
the ‘028 Patent. (Doc. 191-9 at 3.) This language indicates that
Dry assigned all interest to OptoLum, not merely his own. Third,
Cree’s argument that Baker’s interest was not identified in the
assignment is unavailing because there is no requirement under
Arizona law that any lawful disposal of community property must
identify the other spouse’s interest.5
The court finds that Cree has failed to demonstrate that
there is no genuine issue of material fact that Martha Baker
retained an ownership interest in the ‘028 Patent. The court
will deny Cree’s motion for summary judgment on this issue.
In addition to the instances when the other spouse must be
joined, “each spouse owes the other certain fiduciary duties.”
In re Estate of Kirkes, 231 Ariz. 334, 335, 295 P.3d 432, 433
(2013). While Cree does not address the issue of whether Dry
breached any fiduciary duty owed to Baker, OptoLum is correct
that Cree has put forth no evidence that Dry committed a breach
of fiduciary duty to Baker, which could have rescued Cree’s
failed argument. See Mezey v. Fioramonti, 204 Ariz. 599, 608, 65
P.3d 980, 989 (2003) (“Husband had no absolute right to manage
or dispose of community property under A.R.S. § 25–214(C). A
husband's statutory rights to act with respect to marital
property remain subject to his fiduciary duty to his wife's
interest in the property.”).
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The court will next determine whether there is a genuine
issue of material fact as to whether the ‘028 Patent violated
the written description requirement under 35 U.S.C. § 112.
B.
The ‘028 Patent and the Written Description
Requirement under 35 U.S.C. § 112(a)
Cree argues that the ‘028 Patent fails to satisfy the
written description requirement of 35 U.S.C. § 112(a) and thus
is invalid. Cree argues OptoLum violated the implicit rule
underlying § 112 that “the scope of the right to exclude as
expressed in the claims must not be greater than what the
inventor chose to disclose to the public in the patent
specification.” (Def.’s Br. (Doc. 191) at 16.)
Specifically, Cree observes that the ‘303 Patent claims
contain the phrase “light emitting diodes,” while the ‘028
Patent merely replaces this phrase with “solid state light
sources” (“SSLSs”) in its claims. (Id. at 15.)
Cree makes three sub-arguments in support of this position.
First, it uses the testimony of OptoLum’s expert, Mr. A. Brent
York, to demonstrate that the specification only includes LEDs.
Second, Cree argues that Mr. York’s opinion and the ‘028 Patent
prosecution history, upon which OptoLum relies in making its own
argument, are making obviousness arguments and thus cannot
create a genuine issue of material fact. Third, Cree contends
that, because the specification does not contain the words
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“solid state light sources,” it must fail to meet the written
description requirement.
The court interprets Cree’s argument as follows: given
SSLSs are a broader category of light sources, of which LEDs are
a subset, OptoLum failed to “disclose or mention” another type
of light source other than LEDs in the ‘028 Patent claiming a
“solid state light source.” Therefore, because, in substance,
the ‘028 Patent discloses only LEDs, OptoLum’s ‘028 Patent claim
reaches too far beyond its substance in claiming an SSLS, which
is broader than an LED; instead, OptoLum may only claim an LED
light source in the ‘028 Patent.
Because the court finds that the testimony and opinion of
OptoLum’s expert create a genuine issue of material fact
regarding what a person of ordinary skill in the art would find
is disclosed in the ‘028 Patent specification, the court will
deny Cree’s motion for summary judgment on this issue.
1.
Written Description Requirement Background
35 U.S.C. § 112(a) provides that a patent:
shall contain a written description of the invention,
and of the manner and process of making and using it,
in such full, clear, concise, and exact terms as to
enable any person skilled in the art to which it
pertains, or with which it is most nearly connected,
to make and use the same, and shall set forth the best
mode contemplated by the inventor or joint inventor of
carrying out the invention.
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35 U.S.C. § 112(a); see Festo Corp. v. Shoketsu Kinzoku Kogyo
Kabushiki Co., 535 U.S. 722, 731 (2002). Whether a patent
complies with the written description requirement is a question
of fact determined as of the time of filing. See Ariad Pharm.,
Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351, 1355 (Fed. Cir.
2010) (en banc).
In order to satisfy the written description requirement,
the written description must “clearly allow persons of ordinary
skill in the art [a Person of Skill in the Art (“POSA”)] to
recognize that [the inventor] invented what is claimed. In other
words, the applicant must ‘convey with reasonable clarity to
those skilled in the art that, as of the filing date sought, he
or she was in possession of the invention.’” Ariad Pharm., Inc.
v. Eli Lilly & Co., 560 F.3d 1366, 1371-72 (Fed. Cir. 2009)
(internal quotation marks omitted) (quoting In re Alton, 76 F.3d
1168, 1172 (Fed. Cir. 1996) and Vas-Cath Inc. v. Mahurkar, 935
F.2d 1555, 1563–64 (Fed. Cir. 1991)). A patent may be invalid
for failing the written description requirement on its face. See
Univ. of Rochester v. G.D. Searle & Co., 358 F.3d 916, 927 (Fed.
Cir. 2004) (“[A] patent can be held invalid for failure to meet
the written description requirement, based solely on the
language of the patent specification.”). “However, the failure
of the specification to specifically mention a limitation that
later appears in the claims is not a fatal one when one skilled
-19-
in the art would recognize upon reading the specification that
the new language reflects what the specification shows has been
invented.” All Dental Prodx, LLC v. Advantage Dental Prods.,
Inc., 309 F.3d 774, 779 (Fed. Cir. 2002).
Despite being a question of fact, the issue of invalidity
for lack of written description may be resolved on summary
judgment. See Carnegie Mellon Univ. v. Hoffmann-La Roche Inc.,
541 F.3d 1115, 1126 (Fed. Cir. 2008) (affirming summary judgment
of invalidity for lack of written description). But competing
testimony from experts may create a genuine issue of material
fact as to what a POSA would recognize as disclosed in a
specification. See Enzo Biochem, Inc. v. Gen-Probe Inc., 323
F.3d 956, 966, 970 (Fed. Cir. 2002); Univ. of S. Fla. v. United
States, 146 Fed. Cl. 274, 294 (2019).
2.
Patent Specification and Claim Language of the
‘303 Patent and the ‘028 Patent
The patent specification of the ‘303 Patent is as follows:
The exterior surface of elongate heat sink has a
plurality of Light Emitting Diodes disposed thereon.
Each LED in the illustrative embodiment comprises a
white light emitting LED of a type that provides a
high light output. Each LED also generates significant
amount of heat that must be dissipated to avoid
thermal destruction of the LED. By combining a
plurality of LEDs on elongate heat sink, a high light
output light source that may be used for general
lighting is provided.
. . . .
-20-
As will be appreciated by those skilled in the
art, the principles of the invention are not limited
to the use of light emitting diodes that emit white
light. Different colored light emitting diodes may be
used to produce monochromatic light or to produce
light that is the combination of different colors.
(‘303 Patent (Doc. 191-2) col. 3 lines 11-19; col. 4 lines
10-15 (emphasis added).)
The ‘303 Patent claims:
A light source comprising:
an elongate thermally conductive member having an
outer surface;
a plurality of light emitting diodes carried on said
elongate member outer surface at least some of
said light emitting diodes being disposed in a
first plane and others of said light emitting
diodes being disposed in a second plane not
coextensive with said first plane . . . .
(Id. col. 4 lines 25-32 (emphasis added).)
The patent specification of the ‘028 Patent is as follows:
The exterior surface of elongate heat sink has a
plurality of Light Emitting Diodes disposed thereon.
Each LED in the illustrative embodiment comprises a
white light emitting LED of a type that provides a
high light output. Each LED also generates significant
amount of heat that must be dissipated to avoid
thermal destruction of the LED. By combining a
plurality of LEDs on elongate heat sink, a high light
output light source that may be used for general
lighting is provided.
. . . .
As will be appreciated by those skilled in the
art, the principles of the invention are not limited
to the use of light emitting diodes that emit white
light. Different colored light emitting diodes may be
used to produce monochromatic light or to produce
light that is the combination of different colors.
-21-
(‘028 Patent (Doc. 191-3) col. 3 lines 18-26; col. 4 lines
15-20 (emphasis added).)
The ‘028 Patent claims:
A light source comprising:
an elongate thermally conductive member having an
outer surface;
a plurality of solid state light sources carried on
said elongate member outer surface at least some
of said solid state light sources being disposed
in a first plane and others of said solid state
light sources being disposed in a second plane
not coextensive with said first plane . . . .
(Id. col. 4 lines 30-38 (emphasis added).)
3.
Parties’ Evidence
OptoLum and Cree seem to agree that the claim phrase “solid
state light source” has a broader scope than “light emitting
diodes.” (See Def.’s Br. (Doc. 191) at 53 n.14; Pl.’s Resp.
(Doc. 213) at 31–39.)
Cree submits as evidence only its own interpretation of the
‘028 Patent specification as well as the testimony of OptoLum’s
expert, Mr. York, that the specification discloses nothing
broader than LEDs. (Def.’s Br. (Doc. 191) at 55–56.) In
discussing whether the ‘028 specification, and Lines 15–20 in
particular, covered non-LED SSLSs, Mr. York stated the
following:
Q:
So the only disclosure in the ‘028
patent that you are relying on to describe the scope
of the solid-state light sources being other than LEDs
is found in Column 4, lines 15 to 20?
-22-
A.
Strictly speaking, in this particular document,
that is the one location . . . .
((Declaration of Leah McCoy (Doc. 214) Ex. B, Deposition of A.
Brent York (“York Dep.”) (Doc. 214-2) at 8.)6 Lines 15–20 of
Column 4 in the ‘028 Patent specification read:
As will be appreciated by those skilled in the
art, the principles of the invention are not limited
to the use of light emitting diodes that emit white
light. Different colored light emitting diodes may be
used to produce monochromatic light or to produce
light that is the combination of different colors.
(‘028 Patent (Doc. 191-3) col. 4 lines 15-20.) Cree argues that
Mr. York’s testimony “confirms that only LEDs are recited in the
text of the ‘028 Patent.” (Def.’s Br. (Doc. 191) at 56.)
OptoLum rebuts this argument with other testimony and
opinions from Mr. York. OptoLum submits testimony of Mr. York
from the same deposition, in which he testifies:
I go back to Column 4, in order for that statement,
the description of “different-colored light-emitting
diodes may be used to produce monochromatic light” can
only, in my understanding and the teachings, or what
I've learned in the industry, can only be produced or
primarily be produced by a laser diode.
(York Dep. (Doc. 214-2) at 6–7.) Though the specification
therefore appears to only disclose LEDs, Mr. York’s testimony
alleges that a POSA would have understood LEDs and the
While Cree cites to Exhibit V to Document 191, that
exhibit does not contain this quoted section. (See Doc. 191-23
at 3.) The court will instead cite to Exhibit B to Document 214,
which reflects this exchange. (See Doc. 214-2 at 8.)
-236
technology disclosed in the specification to include other solid
state light sources as well. It therefore seems that SSLSs
constitute the broadest category of light sources at issue in
this case, which encompasses LEDs, the category of which, in
turn, encompasses other solid state light sources.
OptoLum also submits York’s expert report, in which he
finds that “the SSLSs described in the ‘028 patent are high
power LEDs and laser diodes.” (Doc. 214-4 ¶¶ 376–78 (emphasis
added)). More specifically, Mr. York wrote the following:
A POSA at the time of the invention would have
understood SSLS to mean a light source utilizing light
emitted by solid-state electroluminescence, as opposed
to thermal radiation (as is the case with incandescent
bulbs) or electric discharge driven fluorescence (as
is the case with CFLs).
Further, it was generally known in the LED lighting
industry around 2002, that while LEDs were the most
common solid state light sources, sometimes other
solid state light sources could be used in their
replacement. In fact, laser diodes in particular fit
all the descriptions and requirements of the SSLSs,
exemplified by the LEDs in the ‘303 and ‘028 patent
specifications, including:
a) That the SSLSs were capable of emitting both
white and colored light as stated both in the
specification and the claims of the ‘028
Patent.
b) That the SSLSs were capable of emitting an
amount of light that could be used for “general
lighting,” or “general illumination”;
c) That the SSLSs had the need to have their heat
dissipated, in order to avoid their degraded
operation or “thermal destruction”; and
-24-
d) That the SSLSs are designed such that their
light is emitted away from the heat sink, while
their heat is conducted towards the heat sink.
(Doc. 214-4 ¶ 377 (internal citations omitted).) Mr. York
concluded, stating, “[t]herefore, because all of these
distinctions from the ‘028 patent were satisfied by laser
diodes, as well as exemplary high-power LEDs, it is my
conclusion that the SSLSs described in the ‘028 patent are high
power LEDs and laser diodes.”7 (Id. ¶ 378.)
OptoLum finally points to the prosecution history of the
‘028 Patent as evidence that a POSA would “recognize that [the
inventor] invented what is claimed.” Carnegie Mellon Univ., 541
F.3d at 1122. In the prosecution history, the Patent Examiner
observed:
[A]t the time the present invention was made, it was
known that solid state light sources with various
colors, including white light, and various power
consumptions, including the then and now labeled
HBLEDs, had been manufactured. Therefore, it would be
fair to conclude that it would have been obvious to
one of ordinary skill in the art at the time the
invention was made to form the reference's device with
various emitted lights based on the known and
availability of the various solid state light sources.
(Doc. 214-3 at 2-3.) OptoLum argues that the ‘028 prosecution
history “contradicts Cree’s assertion that there is ‘no
Because Mr. York appears to limit the SSLSs disclosed in
the ‘028 Patent to LEDs and laser diodes, Plaintiff’s evidence
therefore establishes that “solid state light sources” as used
in the ‘028 Patent includes, at most, LEDs and laser diodes, for
the purposes of this summary judgment motion.
-257
intrinsic evidence explaining or otherwise providing evidence
for the scope of the “solid state light sources” claim phrase.’”
(Pl.’s Resp. (Doc. 213) at 34.)
4.
Analysis
In light of the evidence outlined summarily above, the
court now turns to Cree’s three arguments.
a.
Cree’s First Argument: Language of the
Specification
While Cree argues that the ‘028 Patent specification
includes no other technology beyond LEDs, Mr. York’s testimony,
taking it in the light most favorable to OptoLum, alleges that a
POSA would have understood LEDs and the technology disclosed in
the specification to include laser diodes — another type of
SSLS — as well. The court therefore finds that Mr. York’s
testimony and opinion create a genuine issue of material fact as
to what a POSA would have understood the ‘028 Patent
specification to disclose: solely LEDs or both LEDs and other
SSLSs, like laser diodes.
The existence of expert testimony conflicting with the
moving party’s interpretation of a patent, as is the case with
Mr. York, might not be dispositive in creating a genuine issue
of material fact, specifically when the expert’s testimony
consists of legal conclusions about what constitutes an adequate
written description and is also completely unsupported by the
-26-
text of the specification. Maytag Corp. v. Electrolux Home
Prods., Inc., 448 F. Supp. 2d 1034, 1077–78 (N.D. Iowa 2006).
The court finds that this is not the case here; Mr. York’s
testimony, in addition to the prosecution history, indicate that
POSAs could read the ‘028 Patent specification as meaning
something different.
b.
Cree’s Second Argument: Obviousness
Cree’s second argument alleges that Mr. York essentially
makes “an obviousness-type analysis” with regard to his opinion
on the “different-colored light emitting diodes.” (Def.’s Reply
(Doc. 218) at 13.) Cree categorizes his opinion as “simply an
argument that it would be obvious to substitute LEDs with other
SSLSs.” (Id. at 14.) And Cree also characterizes the prosecution
history OptoLum submits as another “obviousness” argument, which
fails to create a genuine issue of material fact. (Id.)
Regarding Cree’s argument that Mr. York essentially makes
“an obviousness-type analysis” with regard to his opinion on the
“different-colored light emitting diodes,” (id. at 13), the
court is unpersuaded. There is no rigid test for obviousness.
See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007).
Rather, a court considers whether “a skilled artisan would have
been motivated to combine the teachings of the prior art
references to achieve the claimed invention” and whether “the
skilled artisan would have had a reasonable expectation of
-27-
success in doing so.” Procter & Gamble Co. v. Teva Pharm. USA,
Inc., 566 F.3d 989, 994 (Fed. Cir. 2009); see Edge-Works Mfg.
Co. v. HSG, LLC, 285 F. Supp. 3d 883, 897–98 (E.D.N.C. 2018).
The court agrees with Cree that “obviousness simply is not
enough [to satisfy the written description requirement]; the
subject matter must be disclosed to establish possession.”
(Def.’s Reply (Doc. 218) at 14 (quoting PowerOasis, Inc. v.
T-Mobile USA, Inc., 522 F.3d 1299, 1310 (Fed. Cir. 2008)).)
Obviousness looks to whether a POSA would be “motivated to
combine the teachings of the prior art references to achieve the
claimed invention.” Procter & Gamble Co., 566 F.3d at 994. But
the court understands Mr. York’s testimony on this issue — that
“the description of ‘different-colored light-emitting diodes may
be used to produce monochromatic light’ can only . . . be
produced or primarily be produced by a laser diode,” (York Dep.
(Doc. 214-2) at 6–7) — to be regarding what a POSA would
understand the specification to mean, as opposed to whether “a
skilled artisan would have been motivated to combine the
teachings of the prior art references to achieve the claimed
invention.”
Mr. York’s testimony thus seems to create a genuine issue
of material fact as to what a POSA would have “recognize[d] that
[the inventor] invented what is claimed.” Carnegie Mellon Univ.,
541 F.3d at 1122.
-28-
Further, regarding the prosecution history, OptoLum is
correct to note that the Federal Circuit has looked to the
prosecution history to determine how a POSA would have
understood a certain word in the specification for written
description purposes. See Metabolite Labs., Inc. v. Lab. Corp.
of Am. Holdings, 370 F.3d 1354, 1366 (Fed. Cir. 2004). Cree
again attacks OptoLum’s reliance on this portion of the
prosecution history on the basis of obviousness. The court
disagrees; taking the facts in the light most favorable to
OptoLum, the court interprets the prosecution history as more
supportive evidence of how a POSA would have understood the ‘028
Patent specification. A finder of fact could easily disagree
with this court’s interpretation, but this court is required to
consider the evidence in the light most favorable to the
nonmoving party.
c.
Cree’s Third Argument: Failure to Include
the Language “Solid State Light Sources”
Finally, Cree’s third argument states that “[t]here is no
factual issue that the text of the specification fails to recite
‘solid state light sources.’ Absent such a recitation, there is
no written description of SSLS sufficient to show the inventor
had possession of any device beyond LEDs.” (Def.’s Reply (Doc.
218) at 14.)
-29-
To the extent Cree argues that the ‘028 Patent fails under
the written description requirement due to the words “solid
state light sources” not appearing in the specification, (see
Def.’s Br. (Doc. 191) at 55, 61), Cree’s argument fails for the
purposes of summary judgment. There is no requirement that the
exact terms appear in the specification. See Blue Calypso, LLC
v. Groupon, Inc., 815 F.3d 1331, 1346 (Fed. Cir. 2016) (“[W]hen
examining the written description for support for the claimed
invention, we have held that the exact terms appearing in the
claim ‘need not be used in haec verba.’” (quoting Lockwood v.
Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)));
Ariad Pharm., 598 F.3d at 1352; Eiselstein v. Frank, 52 F.3d
1035, 1038 (Fed. Cir. 1995) (“[T]he prior application need not
describe the claimed subject matter in exactly the same terms as
used in the claims . . . .”). Given that there is a disagreement
between the parties’ experts as to what a POSA would have
understood to be claimed, this argument is thus without merit.
5.
Written Description Conclusion
Taking the evidence in the light most favorable to OptoLum,
the court finds that there is a genuine issue of material fact
as to whether the ‘028 Patent is invalid for violating the
written description requirement under § 112(a), given that
OptoLum has submitted expert testimony and the ‘028 Patent
prosecution history to demonstrate that a POSA would understand
-30-
the specification to disclose SSLSs beyond LEDs.8 “The jury [is]
entitled to hear the expert testimony and decide for itself what
to accept or reject.” i4i Ltd. P’ship v. Microsoft Corp., 598
F.3d 831, 856 (Fed. Cir. 2010). The court will thus deny Cree’s
motion for summary judgment as to the issue of whether the ‘028
Patent is invalid for violating the written description
requirement.
C.
Infringement of OptoLum’s Patents
Cree attacks OptoLum’s infringement contentions in two
ways. First, Cree argues that the Generation 2.5 (“Gen 2.5”)
Single Ring bulb does not infringe. (Def.’s Br. (Doc. 191) at
27.) Second, Cree argues that its Single Ring bulbs do not
literally infringe the Patents. (Id. at 33.) And third, Cree
contends that OptoLum cannot prevail on a doctrine-ofequivalents theory because Cree has submitted prior art “that
would be ensnared by the broadening of the claim scope under the
assertion of equivalents alleged by OptoLum.” (Id. at 38.) The
court will first address the Gen 2.5 Single Ring bulb, then
OptoLum also argues that Cree is “simply recycle[ing]”
arguments made two years ago. (Pl.’s Resp. (Doc. 213) at 26.)
Cree correctly notes that this court never ruled on Cree’s prior
motion for summary judgment on the validity of the ‘028 Patent
based on the written description requirement, instead denying
the motion without prejudice. (Doc. 169.) OptoLum’s argument has
no bearing on this court’s opinion.
8
-31-
Cree’s arguments as to literal infringement and the doctrine of
equivalents.
1.
The Generation 2.5 Single Ring Bulbs Do Not
Infringe
Cree argues that OptoLum’s expert admits that the products
incorporating the Gen 2.5 Single Ring bulb do not infringe.
OptoLum concedes that these products do not infringe. (Pl.’s
Resp. (Doc. 213) at 7.) OptoLum, however, argues that, to the
“extent that Cree contends that OptoLum’s Infringement
Contentions include model numbers, or SKUs, that are exclusively
Gen 2.5 bulbs, OptoLum disputes this notion.” (Id. at 7–8.)9
OptoLum argues that “other documents produced by Cree, and in
particular Cree’s revenue information cited in its Interrogatory
Responses, identify the referenced SKUs as ‘Gen 2.’” (Id. at 8.)
The conflict therefore seems to be over Cree’s grouping of
products which contain the Gen 2.5 Single Ring bulbs.
Because OptoLum concedes that the Gen 2.5 bulbs do not
infringe, the court will grant Cree’s summary judgment motion on
this issue, to the extent the referenced SKUs are in fact Gen
2.5 bulbs but will deny the motion to the extent a determination
needs to be made as to which bulbs are considered Gen 2.5 bulbs.
The court is not making a finding as to whether the particular
SKUs are Gen 2.5 bulbs, Gen 2 bulbs, or a combination. That
An “SKU” is a number used to identify a product. (Def.’s
Br. (Doc. 191) at 32 n.9.)
-329
issue will be left for determination as part of any damages
issue should the Gen 2 bulb be found to be infringing OptoLum’s
Patents.
2.
The Remaining Single Ring Bulbs
Cree argues that its Single Ring products do not infringe
under either a literal infringement theory or under the doctrine
of equivalents. (Def.’s Br. (Doc. 191) at 33, 35.) The court
will address each argument in turn.
Direct infringement occurs where “all steps of a claimed
method are performed by or attributable to a single entity.”
Akamai Techs., Inc. v. Limelight Networks, Inc., 797 F.3d 1020,
1022 (Fed. Cir. 2015). A plaintiff may prove direct infringement
by proving literal infringement or infringement under the
doctrine of equivalents. Cross Med. Prods., Inc. v. Medtronic
Sofamor Danek, Inc., 424 F.3d 1293, 1310 (Fed. Cir. 2005).
a.
Literal Infringement
Cree contends, citing to the Joint Claim Construction
Statement, that “[e]ach of the asserted claims of the ‘028 and
‘303 Patents requires the ‘two plane’ limitation,” and that
“OptoLum has not alleged literal infringement of the ‘two plane’
limitation for the Single Ring Accused Products nor has it
offered proof of literal infringement of that limitation.”
(Def.’s Br. (Doc. 191) at 33–34.) Cree submits that OptoLum’s
expert on infringement “confirmed that he was offering an
-33-
infringement opinion only under the doctrine of equivalents.”
(Id.) Mr. Charles McCreary, OptoLum’s expert, testified to the
following:
Q.
So since we’re talking about the 60 watt LED
replacement light bulb this is a single-ring analysis;
isn’t that correct?
A.
Yes, I believe so.
Q.
And my question to you is is it your testimony
that this limitation is met by the 60 watt single-ring
bulb literally or under the Doctrine of Equivalence?
. . . .
A.
I believe that a claim – this claim is met via
the Doctrine of Equivalence as my counsels have
explained it to me.
(Doc. 191-19 at 6.)10
OptoLum does not appear to respond to this argument. In
considering a motion for summary judgment, the moving party
bears the initial burden of demonstrating “that there is an
absence of evidence to support the nonmoving party’s case.”
Celotex Corp., 477 U.S. at 325. If the “moving party discharges
its burden . . . , the nonmoving party then must come forward
with specific facts showing that there is a genuine issue for
trial.” McLean, 332 F.3d at 718-19 (citing Matsushita, 475 U.S.
The court notes that Mr. McCreary’s testimony is subject
to a Daubert challenge from Cree, though Cree does not seem to
challenge Mr. McCreary’s testimony that he opines solely on
infringement under the doctrine of equivalents.
10
-34-
at 586-87). Here, Cree has met its burden of demonstrating that
there is an absence of evidence to support OptoLum’s case, and
OptoLum, the nonmoving party, has not “come forward with
specific facts showing that there is a genuine issue for trial.”
Because there is no genuine issue of material fact that the
Single Ring bulbs do not literally infringe, the court will
grant Plaintiff’s motion on this issue.
b.
Doctrine of Equivalents & Ensnarement
Cree further argues that the defense of “ensnarement”
prevents OptoLum from succeeding on a doctrine-of-equivalents
(“DOE”) infringement claim as to OptoLum’s Single Ring bulbs.
(Def.’s Br. (Doc. 191) at 38.) Cree contends that it identified
prior art that would be “ensnared by the broadening of the claim
scope under the assertion of equivalents alleged by OptoLum.”
(Id.) Ensnarement is the only ground upon which Cree challenges
OptoLum’s claim of infringement under the doctrine of
equivalents at this stage.
It appears to the court that the relevant claim limitation
of OptoLum’s infringement contention is “a plurality of light
emitting diodes . . . carried on said elongate member outer
surface at least some of said light emitting diodes . . . being
disposed in a first plane and others of said light emitting
diodes . . . being disposed in a second plane not coextensive
-35-
with said first plane.” (See Doc. 191-21 at 3; Doc. 191-22 at
4.)
Under the doctrine of equivalents, “a product or process
that does not literally infringe upon the express terms of a
patent claim may nonetheless be found to infringe if there is
‘equivalence’ between the elements of the accused product or
process and the claimed elements of the patented invention.”
Warner–Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 21
(1997).
However, “[a] doctrine of equivalents theory cannot be
asserted if it will encompass or ‘ensnare’ the prior art.” Jang
v. Boston Sci. Corp., 872 F.3d 1275, 1285 (Fed. Cir. 2017)
(citing DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567
F.3d 1314, 1322 (Fed. Cir. 2009)). “This limitation is imposed
even if a jury has found equivalence as to each claim element.”
Id. (quoting DePuy Spine, 567 F.3d at 1323).
In other words, prior art can limit the range of
permissible equivalents of a claim. The Federal Circuit has
“described the ensnarement inquiry as one of determining the
patentability of the hypothetical claim, rather than its
validity. That is because ‘[t]he pertinent question’ is ‘whether
that hypothetical claim could have been allowed by the PTO over
the prior art’ as the PTO has never actually issued it.” Id. at
-36-
1285 n.5 (quoting Wilson Sporting Goods Co. v. David Geoffrey &
Assocs., 904 F.2d 677, 684 (Fed. Cir. 1990)).
In other words, if the scope of equivalency asserted under
the doctrine of equivalents would ensnare prior art, then the
defendant cannot be found to have infringed under the doctrine
of equivalents.
“A helpful first step in an ensnarement analysis is to
construct a hypothetical claim that literally covers
the accused device.” DePuy Spine, 567 F.3d at 1324.
“Next, the district court must assess the prior art
introduced by the accused infringer and determine
whether the patentee has carried its burden of
persuading the court that the hypothetical claim is
patentable over the prior art.” Id. at 1325. “In
short, [the court] ask[s] if a hypothetical claim can
be crafted, which contains both the literal claim
scope and the accused device, without ensnaring the
prior art.” Intendis [GMBH v. Glenmark Pharm. Inc.,
USA, 822 F.3d 1355, 1363 (Fed. Cir. 2016)].
UCB, Inc. v. Watson Labs. Inc., 927 F.3d 1272, 1283 (Fed. Cir.
2019). The Federal Circuit noted that “[a] ‘[h]ypothetical claim
analysis is a practical method to determine whether an
equivalent would impermissibly ensnare the prior art.’” Jang,
872 F.3d at 1285 (quoting Intendis, 822 F.3d at 1363); see also
Ultra-Tex Surfaces, Inc. v. Hill Bros. Chem. Co., 204 F.3d 1360,
1364 (Fed. Cir. 2000) (“Hypothetical claim analysis provides a
practical methodology for determining whether a claim that has
been ‘broadened’ under the doctrine of equivalents impermissibly
ensnares the prior art in its newly expanded form.”).
-37-
“The burden of producing evidence of prior art to challenge
a hypothetical claim rests with an accused infringer, but the
burden of proving patentability of the hypothetical claim rests
with the patentee.” Interactive Pictures Corp. v. Infinite
Pictures, Inc., 274 F.3d 1371, 1380 (Fed. Cir. 2001) (citing
Streamfeeder, LLC v. Sure–Feed Sys. Inc., 175 F.3d 974, 984
(Fed. Cir. 1999)).
Ensnarement “is to be determined by the court, either on a
pretrial motion for partial summary judgment or on a motion for
judgment as a matter of law at the close of the evidence and
after the jury verdict.” Jang, 872 F.3d 1275 (quoting DePuy
Spine, 567 F.3d at 1324). “[A] district court may hear expert
testimony and consider other extrinsic evidence regarding: (1)
the scope and content of the prior art; (2) the differences
between the prior art and the claimed invention; (3) the level
of ordinary skill in the art; and (4) any relevant secondary
considerations.” DePuy Spine, 567 F.3d at 1324.
Here, OptoLum has not put forth a hypothetical claim, but
Cree, as the “accused infringer,” has put forth several examples
of prior art that it contends would be ensnared by any
hypothetical claim. (See Def.’s Br. (Doc. 191) at 38–40; Doc.
191-21 at 4–5.) The “burden of providing patentability of the
hypothetical claim” thus lies with OptoLum, the patentee. The
prior art examples Cree cites — the NorLux Hex multi-chip LED
-38-
package, the Shark series multi-chip LED package from Opto
Technology, and the Cao multi-chip LED package — are allegedly
ensnared by the claim limitation reciting “a plurality of light
emitting diodes . . . carried on said elongate member outer
surface at least some of said light emitting diodes . . . being
disposed in a first plane and others of said light emitting
diodes . . . being disposed in a second plane not coextensive
with said first plane.” (See Doc. 191-21 at 3–5; Doc. 191-22 at
4.)
In response, however, OptoLum argues that it is not
“required to fashion a so-called hypothetical claim containing
claim elements revised to reflect the scope of the new DOE
claims.” (Pl.’s Resp. (Doc. 213) at 39.) This court agrees that
the Federal Circuit has not mandated the application of a
hypothetical claim analysis in determining whether the
ensnarement defense applies. In Jang, the Federal Circuit
explicitly states that “[t]he hypothetical claim analysis is not
the only method in which a district court can assess whether a
doctrine of equivalents theory ensnares the prior art.” Jang,
872 F.3d at 1285 n.4. Further, in Conroy v. Reebok Int’l, Ltd.,
the Federal Circuit noted that:
[w]hile the hypothetical claim analysis is a useful
methodology because the clear step-by-step process
facilitates appellate review, nothing in Wilson
mandates its use as the only means for determining the
extent to which the prior art restricts the scope of
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equivalency that the party alleging infringement under
the doctrine of equivalents can assert.
14 F.3d 1570, 1576 (Fed. Cir. 1994) (emphasis added); but see
NLB Corp. v. PSI Pressure Sys. LLC, Civil Action No. H-18-1090,
2019 WL 6039932, at *4–5 (S.D. Tex. Nov. 14, 2019) (holding that
the defendant was entitled to summary judgment when the
plaintiff patentee failed to submit a proper hypothetical claim
for consideration).
Here, both parties submitted expert testimony addressing
ensnarement. (Compare Doc. 191-21 at 3–31, with Doc. 191-22 at
3–4.) Specifically, both experts addressed the obviousness of
the use of multi-chip LED packages for illumination and whether
the proffered prior art would be ensnared by the claim at issue.
Cree’s expert, Dr. Eric Bretschneider, testifies in his
expert report that “several packages described in prior-art
printed publications were known to a POSA at the time of the
alleged invention, whose use in lamps of prior-art grounds of
invalidity described above would have been obvious to a POSA.”
(Doc. 191-21 at 3–4.) Dr. Bretschneider continues on to detail
how each of the light source combinations offered as prior art
would satisfy the claim at issue. For example, in discussing the
NorLux package, he states:
With the NorLux package addition to the lamp
combinations described above, the resulting
combination would satisfy all limitations of the ‘303
claims 1-4 and 6-9 and ‘028 claims 1-3, 5-8, and
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14-16. Regarding ‘303 claim 1 and ‘028 claim 1, the
NorLux packages mounted on multiple faces of the lamps
as described above would possess multiple planes of
LED chips in each given package such that those chip
arrangements, and, under OptoLum’s theory, would
satisfy “a plurality of light emitting diodes [solid
state light sources] carried on said elongate member
outer surface at least some of said light emitting
diodes [solid state light sources] being disposed in a
first plane and others of said light emitting diodes
[solid state light sources] being disposed in a second
plane not coextensive with said first plane.”
(Id. at 11-12.)
In contrast, OptoLum’s expert, Mr. York, testifies in his
expert report that “the new art regarding so-called multi-chip
packages identified by Dr. Bretschneider, namely the NorLux Hex,
OptoTec Shark, and Cao packages, . . . does not disclose the
equivalent structures identified by OptoLum in its DOE
contentions or a motivation to combine with the other references
relied upon by Cree.” (Doc. 191-22) at 3–4.)
While OptoLum does not argue that the existing scope covers
Cree’s products, OptoLum argues Mr. York, “specifically opined
that the claimed combinations [of the proposed prior art] do not
disclose each element of the claims and ignore the numerous
secondary considerations of nonobviousness at issue in this
case.” (Pl.’s Resp. (Doc. 213) at 42.)
OptoLum also submits an expert report from Dr. Daniel A.
Steigerwald, produced in response to Dr. Bretschneider’s amended
expert report as to whether the three multi-chip LED products
-41-
listed above disclose the limitations. (Doc. 214-7.)
Dr. Steigerwald opined that none of the prior art combinations
contemplated by Dr. Bretschneider would have been feasible or
compatible with the “necessary infrastructure surrounding” an
LED chip. (Id. ¶¶ 10–61.)
OptoLum argues that, because the parties’ experts disagree
as to whether Cree’s proposed prior art, including the NorLux
Hex multi-chip LED package, the Shark series multi-chip LED
package from Opto Technology, and the Cao multi-chip LED
package, (Doc. 191-21 at 4–5), ensnares the scope of OptoLum’s
claimed equivalent, there is a genuine issue of material fact
and summary judgment is inappropriate. (Pl.’s Resp. (Doc. 213)
at 41–42.) Cree replies that “[r]egardless of how it chooses to
meet its burden (whether through a hypothetical claim or
otherwise), OptoLum must carry its burden to show the prior art
(identified by Cree) is not covered by the claim limitation-atissue as expanded under the DOE assertion.” (Def.’s Reply (Doc.
218) at 8.)
Given the conflicting expert testimony on the issue of
ensnarement, and in light of the court’s responsibility to
determine ensnarement as a matter of law, this court finds it is
unable to resolve this issue without an evidentiary hearing.
Under DePuy Spine, “a district court may hear expert testimony
and consider other extrinsic evidence regarding: (1) the scope
-42-
and content of the prior art; (2) the differences between the
prior art and the claimed invention; (3) the level of ordinary
skill in the art; and (4) any relevant secondary
considerations.” 567 F.3d at 1324. The court therefore takes
this issue under advisement and finds that either a pre-trial
evidentiary hearing, or post-trial motions would better enable
the court to make this determination. As directed in the terms
of this Memorandum Opinion and Order, the parties shall submit
briefs addressing their respective positions on the procedure
most appropriate to resolve these factual issues, whether preor post-trial.
The court will thus deny Cree’s motion for summary
judgment as to the issue of whether Cree’s Single Ring bulbs
infringe under the doctrine of equivalents.
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D.
Pre-Suit Damages
Cree alleges OptoLum “failed to comply with 35 U.S.C.
§ 287(a) by failing to properly mark with the patent numbers
6,831,303 or 7,242,028 the BrightLife-800 product offered for
sale,” and that, “as a result, OptoLum is precluded by statute
from seeking damages for the acts alleged to have been performed
before Cree received actual notice that it was allegedly
infringing the patents-in-suit — that is, the filing date of the
original complaint.” (Def.’s Br. (Doc. 191) at 63.)
1.
Marking Background
35 U.S.C. § 287(a) provides that
Patentees, and persons making, offering for sale, or
selling within the United States any patented article
for or under them, or importing any patented article
into the United States, may give notice to the public
that the same is patented . . . by fixing thereon the
word “patent” . . . . In the event of failure so to
mark, no damages shall be recovered by the patentee in
any action for infringement, except on proof that the
infringer was notified of the infringement and
continued to infringe thereafter, in which event
damages may be recovered only for infringement
occurring after such notice. Filing of an action for
infringement shall constitute such notice.
Therefore, if a “patentee makes or sells a patented article and
fails to mark in accordance with § 287, the patentee cannot
collect damages until it either begins providing notice or sues
the alleged infringer — the ultimate form of notice — and then
only for the period after notification or suit has occurred.”
Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 950 F.3d
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860, 864 (Fed. Cir. 2020). Section 287 necessarily only applies
after a patent has been issued; thus, the relevant periods here
are after December 14, 2004, for the ‘303 Patent, and July 10,
2007, for the ‘028 Patent. (See ‘303 Patent (Doc. 191-2) at 2;
‘028 Patent (Doc. 191-3) at 2.)
Section 287 does not apply, however, when “a patentee never
makes or sells a patented article.” Arctic Cat, 950 F.3d at 864.
“Thus, a patentee who never makes or sells a patented article
may recover damages even absent notice to an alleged infringer.”
Id.
2.
The Parties’ Arguments
OptoLum contends, and Cree agrees, that OptoLum never sold
an LED bulb. (Compare Pl.’s Resp. (Doc. 213) at 10, with Def.’s
Reply (Doc. 218) at 18.) Cree instead argues that OptoLum
offered a bulb known as the BrightLife-800 bulb (the “BL-800”)
for sale “well after” the ‘303 and ‘028 Patents were issued and
that therefore § 287 applies. In response, OptoLum argues it did
not offer the BL-800 bulb for sale and that “Cree does not cite
any authority interpreting or analogizing to the ‘offering for
sale’ language of § 287,” and “has thus wholly failed to carry
its burden of demonstrating that it is entitled to summary
judgment as a matter of law.” (Pl.’s Resp. (Doc. 213) at 10.)
Further, the parties disagree as to whether OptoLum made
the BL-800 such that § 287 would apply. Cree argues that OptoLum
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produced the BL-800 but failed to mark it in accordance with
§ 287. (Def.’s Br. (Doc. 191) at 68.) OptoLum contends it “never
even manufactured a product that could have been marked.” (Pl.’s
Resp. (Doc. 213) at 16.) OptoLum further argues that, while it
did make a prototype of the BL-800, “it did so before the
patents issued and thus before any obligation to mark could have
arisen, and never manufactured or fabricated, an actual bulb for
sale.” (Id.)
Because Cree relies on screenshots of archived websites to
support its arguments, the court will first address the
admissibility of that evidence. The court will then turn to
whether there is a genuine issue of material fact as to whether
OptoLum offered for sale and/or produced the BL-800 during the
relevant time.
3.
Admissibility of Cree’s Evidence
Cree submits five screenshots of archived web pages from
the WayBack Machine internet archive, from between 2006 and
2012, each appearing to contain advertisements or links for the
BL-800. (See Docs. 191-11, 191-12, 191-13, 191-14, 191-15.)
OptoLum argues that these are inadmissible hearsay, given that
Cree “provides no evidence as to their origin” and further has
“offered no evidence from the Internet Archive that maintains
the ‘WayBack Machine’ to support the authenticity of the content
-46-
represented by these screenshots.” (Pl.’s Resp. (Doc. 213) at
21–22.)
In reply, Cree argues the court should take judicial notice
of the screenshots. (Def.’s Reply (Doc. 218) at 17–18.)
Materials submitted at summary judgment must be presented
in a form admissible in evidence. Fed. R. Civ. P. 56(c)(1)(B),
(c)(2), (c)(4). “[H]earsay evidence, which is inadmissible at
trial, cannot be considered on a motion for summary judgment.”
Md. Highways Contractors Ass’n v. Maryland, 933 F.2d 1246, 1251
(4th Cir. 1991). And a court may take judicial notice of facts
that “can be accurately and readily determined from sources
whose accuracy cannot reasonably be questioned.” Fed. R. Evid.
201.
The district court in Pohl v. MH Sub I, LLC, 332 F.R.D. 713
(N.D. Fla. 2019), as cited by Cree, (Def.’s Reply (Doc. 218) at
13), observed that “[n]umerous courts including [the Federal
Circuit, and district courts in Florida, California, Michigan,
Massachusetts, and Oregon], have taken judicial notice of web
pages available through the WayBack Machine.” Id. at 716
(collecting cases).
Rule 56(c)(2) allows a party to object to a fact by
asserting “the material cited to support or dispute a fact
cannot be presented in a form that would be admissible in
evidence.” As Pohl describes, there are several ways these
-47-
screenshots could be admissible, therefore, the court finds the
screenshots may be considered under Rule 56(c)(2) and will
consider them in its analysis, especially given Plaintiff has
not provided a good-faith basis to challenge the authenticity of
these screenshots for the purposes of summary judgment.11
Because the court finds Pohl persuasive and thus finds the
WayBack internet archive screenshots are admissible, the court
now turns to the issue of whether OptoLum actually offered the
BL-800 bulbs for sale.
4.
Whether the BL-800 Bulbs were Offered for Sale
Even considering the screenshots, OptoLum still contends
that Cree fails to meet its burden of demonstrating there is no
genuine issue of material fact that OptoLum offered the BL-800
bulb for sale. (Pl.’s Resp. (Doc. 213) at 10.)
OptoLum submits testimony from Dry that “[t]he BL-800 was
never offered for sale as a finished product,” and “[t]he BL-800
was never manufactured as a finished product.” (Dry Decl. (Doc.
214-1) ¶¶ 3–4.)
OptoLum also cites other courts’ construction of 35 U.S.C.
§ 271 as support for its argument that it never offered the BL800 for sale. (Pl.’s Resp. (Doc. 213) at 10.) 35 U.S.C. § 271(a)
The fact the court finds the screenshots “could be
admissible” does not mean they are admitted. Admissibility at
trial is dependent upon the foundation laid at that time.
11
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provides that “[e]xcept as otherwise provided in this title,
whoever without authority makes, uses, offers to sell, or sells
any patented invention, within the United States or imports into
the United States any patented invention during the term of the
patent therefor, infringes the patent.” OptoLum argues that the
Federal Circuit has construed the “offer to sell” language in
§ 271(a) to be consistent with traditional contract law. (Pl.’s
Resp. (Doc. 213) at 11 (citing Rotec Indus., Inc. v. Mitsubishi
Corp., 215 F.3d 1246 (Fed. Cir. 2000)).) Therefore, OptoLum
argues, under traditional contract law, an “offer” must bestow
upon the offeree the power to accept the offer. (Id. at 11–12.)
The court will consider whether the screenshots and Dry’s
activities related to the BL-800 qualify as “offering for sale”
under the statute.
a.
Internet Marketing
Regarding the screenshots, based on traditional contract
law, OptoLum argues, any marketing efforts on its website that
did not “include specific terms or sufficient definiteness, such
as price, quantity, delivery, and terms of payment, as required
by common-law principles of contract law, do not rise to the
level of an offer to sell,” and further, that advertisements are
not offers; therefore, there was never an offer for sale within
the meaning of the marking statute. (Id. at 13–15, 17.)
-49-
Under the Second Restatement of Contracts, “Advertisements
of goods by display, sign, handbill . . . are not ordinarily
intended or understood as offers to sell. The same is true of
catalogues, price lists and circulars, even though the terms of
suggested bargains may be stated in some detail.” Restatement
(Second) of Contracts § 26, cmt. b. Further, “[o]nly an offer
which rises to the level of a commercial offer for sale, one
which the other party could make into a binding contract by
simple acceptance (assuming consideration), constitutes an offer
for sale under § 102(b) [another patent statute dealing with
offers to sell].” Grp. One, Ltd. v. Hallmark Cards, Inc., 254
F.3d 1041, 1048 (Fed. Cir. 2001).
The Federal Circuit has also “note[d] in passing that
contract law traditionally recognizes that mere advertising and
promoting of a product may be nothing more than an invitation
for offers, while responding to such an invitation may itself be
an offer.” Id. In interpreting a different patent statute,12 the
Federal Court held that “[o]nly an offer which rises to the
level of a commercial offer for sale, one which the other party
Hallmark Cards dealt with 35 U.S.C. § 102, which states
that “[a] person shall be entitled to a patent unless . . . the
claimed invention was patented, described in a printed
publication, or in public use, on sale, or otherwise available
to the public before the effective filing date of the claimed
invention . . . .” (emphasis added).
12
-50-
could make into a binding contract by simple acceptance
(assuming consideration), constitutes an offer for sale . . . .”
Id. Given that the Federal Circuit has not interpreted “offer
for sale” under § 287, the court finds that these rules offer
guidance in determining whether issues of fact that OptoLum
offered the BL-800 for sale exist.
Two of the screenshots, one from June 19, 2008, and one
from February 21, 2008, contain the following concerning the BL800: “The . . . BrightLife800, and other OptoLum lamps offer
original equipment manufacturers the opportunity to incorporate
LED lighting into the full spectrum of lighting applications
. . . email info@optolum.com to discuss your application.” (Doc.
191-11 at 2; Doc. 191-24 at 2.) Other screenshots, one from
November 27, 2007, and one from December 23, 2010, appear to
show links to the BL-800. (See Doc. 191-12 at 2; Doc. 191-14 at
2.) And two others, one from October 25, 2005, and one from
October 21, 2006, display a photo of what is presumably the
BL-800 bearing the words “PATENT PENDING OPTOLUM” along with a
description of the BL-800 and its capabilities. (See Doc. 191-13
at 2; Doc. 191-25 at 2; 191-26 at 2.) The court finds that these
screenshots do not demonstrate, as a matter of law, that OptoLum
offered the BL-800 for sale.
-51-
Further, in response, OptoLum submits a declaration from
Dry, in which he states, “[t]he BL-800 was never offered for
sale as a finished product.” (Dry Decl. (Doc. 214-1) ¶ 3.)
Given Dry’s deposition, as well as the lack of any terms
that would tend to rise to the level of a commercial offer for
sale, the court finds that there is a genuine issue of material
fact as to whether the posts online regarding the BL-800
constituted advertisements or offers for sale.
b.
Dry’s Marketing
Cree also argues that Dry “continuously attempted to sell
the product and testified that those bulbs were ready for
shipment in limited quantities,” and that he “testified that
people were interested in buying the product, and that there
were discussion about volume quantities.” (Def.’s Reply (Doc.
218) at 18.) Cree contends that “[t]hese continuous solicitation
efforts, coupled with having made the patented article,
triggered the marking statute.” (Id. at 19.)
Cree submits Dry’s deposition, during which he testifies
that “[w]e had people interested in buying, but not in volume,”
and that “[w]e had people talking about volume,” but that no
contracts were ever signed. (Dry Dep. (Doc. 191-7) at 3, 5.)
Cree also submits a press release from May 2, 2003, which
discusses the BL-800 and states that Dry would be attending a
lighting industry fair. It also urged its audience to “check out
-52-
OptoLum’s website.” (Doc. 191-10 at 2.) However, this press
release predates the issuance of the ‘303 Patent and is
therefore irrelevant to this court’s analysis of whether OptoLum
offered the BL-800 for sale during the relevant time period.
In response, OptoLum submits Dry’s declaration, in which he
states, “[t]he BL-800 was never offered for sale . . . .” (Dry
Decl. (Doc. 214-1) ¶ 3.)
Taking the evidence in the light most favorable to OptoLum,
Cree has not demonstrated “that there is an absence of evidence
to support the nonmoving party’s case.” Celotex Corp., 477 U.S.
at 325. Summary judgment should not be granted if a “reasonable
jury could return a verdict in favor for the nonmoving party on
the evidence presented.” McLean, 332 F.3d at 719 (citing Liberty
Lobby, 477 U.S. at 247–48). Here, a reasonable jury could find,
based on Dry’s testimony, that Dry’s marketing efforts did not
trigger § 287(a) and thus that § 287(a) did not apply.
c.
Whether the BL-800 was Produced During the
Relevant Period
Finally, Cree points to the photos in its screenshots of
the BL-800 as evidence that it was produced and therefore
required to bear the “required numbers of the ‘303 and ‘028
Patents.” (Def.’s Br. (Doc. 191) at 68.) Cree contends that
under § 271(a), “the mere act of making a patented product
constitutes an act of infringement”; therefore, “[g]iven the
-53-
plain meaning of the statute, ‘making’ the ‘patented article,’
i.e., the BL-800 bulb, triggers the marking statute.” (Def.’s
Reply (Doc. 218) at 18.)
While these photos could be found online as late as 2006,
there is no indication of when these photos were taken and
therefore no indication of whether OptoLum “produced” the BL-800
after the time it received the ‘303 Patent. Indeed, that the
photograph displays “PATENT PENDING OPTOLUM” tends to diminish
Cree’s argument, as it would appear that the BL-800 pictured was
potentially produced prior to the ‘303 Patent being issued. That
the photos themselves were available after the ‘303 Patent was
issued is immaterial to this analysis; what matters is when the
BL-800 was produced for the purposes of whether it was “made”
during the relevant time period when Plaintiff would have had to
mark it with the patent number in order to comply with the
marking statute.
Finally, Cree points to an excerpt from Dry’s deposition
that, it argues, shows “OptoLum was offering for sale the BL-800
and had interested buyers.” (Def.’s Br. (Doc. 191) at 67.) In
that exchange, Dry testifies to the following:
Q.
Well, did OptoLum ever have manufacturing
capacity to build the BL-800?
A.
We do today.
. . . .
-54-
Q.
And when did you obtain the capacity to build it
in-house?
A.
I’d say over the last two years.
Q.
Since 2016?
A.
Yes.
Q.
When you say you have the capacity to build it
in-house, you never had any orders of the BL-800, did
you?
A.
We had people interested in buying, but not in
volume. So it didn’t make sense for us to do it.
. . . .
Q.
So nobody willing to order a volume that would
make it worthwhile doing what needs to be done to
build the thing? Is that accurate?
A.
Not wholly accurate.
Q.
Okay. What is inaccurate about it?
A.
We had people talking about volume.
(Dry Dep. (Doc. 191-7) at 4–5.) The court does not find that
this exchange supports Cree’s argument that there is no genuine
issue of material fact that OptoLum offered for sale the BL-800
bulb. There is no indication of when OptoLum “had people
interested in buying,” nor that that means OptoLum offered the
bulb for sale; it is entirely possible that people were
interested in buying but OptoLum was not interested in selling.
In response, OptoLum submits Dry’s declaration, in which he
states that “[w]hile OptoLum made a prototype of an LED bulb
called the BL-800, it did so before the Asserted Patents
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issued.” (Dry Decl. (Doc. 214-1) ¶ 5.) The court finds that this
creates a genuine issue of material fact that should be resolved
at trial.
d.
Pre-Suit Damages Conclusion
Because OptoLum has shown that there is a genuine issue of
material fact as to whether it made and/or offered the BL-800
for sale during the relevant time periods for the purpose of
§ 287, the court will deny Cree’s motion for summary judgment on
this issue.
IV.
CONCLUSION
For the foregoing reasons, the court finds that Cree’s
partial motion for summary judgment should be granted in part
and denied in part.
IT IS THEREFORE ORDERED that Defendant’s Partial Motion for
Summary Judgment, (Doc. 190), is GRANTED with respect to Cree’s
argument that the Gen 2.5 bulbs do not infringe and to Cree’s
argument that the Single Ring bulbs do not literally infringe.
Defendant’s Partial Motion for Summary Judgment, (Doc. 190), is
DENIED as to the remaining claims.
IT IS FURTHER ORDERED that Plaintiff’s Motion and
Memorandum for Leave to File a Surreply, (Doc. 220), is GRANTED.
IT IS FURTHER ORDERED that the parties shall file briefs
concerning the most appropriate method to address the issue of
ensnarement, either in a pre-trial evidentiary hearing or after
-56-
trial. Parties’ briefs shall be no longer than seven (7) pages
in length and shall be filed within ten (10) days after the
issuance of this Memorandum Opinion and Order.
IT IS SO ORDERED.
This the 28th day of September, 2020.
_____________________________________
United States District Judge
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