OPTOLUM INC. v. CREE INC.

IN THE UNITED STATES DISTRICT COURT

FOR THE MIDDLE DISTRICT OF NORTH CAROLINA

OPTOLUM, INC., )

)

Plaintiff, )

)

v. ) 1:17CV687

)

CREE, INC., )

)

Defendant. )

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.)

1 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).

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

2 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.

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,

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

3 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.)

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

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 one-

sided 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

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 pre-

suit 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

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

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

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 Bio-

Eng’g Project v. Amgen, Inc., 475 F.3d 1256, 1264–65 (Fed. Cir.

2007)).

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

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

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

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

4 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.

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.

5 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.”).

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

“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.

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

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.

. . . .

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.

(‘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?

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

6 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.)

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

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

7 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.

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

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

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.

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.)

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

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-of-

equivalents 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

8 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.

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

9 An “SKU” is a number used to identify a product. (Def.’s

Br. (Doc. 191) at 32 n.9.)

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

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.

10 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.

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

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

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.”).

“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

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

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

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

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-at-

issue 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

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 pre-

or 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.

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

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

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

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

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 BL-

800 for sale. (Pl.’s Resp. (Doc. 213) at 10.) 35 U.S.C. § 271(a)

11 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.

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.)

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

12 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).

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 BL-

800: “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.

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

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

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.

. . . .

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

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

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.

LA; buce

Lb Winm L. (6 xX

United States District Jud

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