OptoLum, Inc. v. Cree, Inc.

• Decision Date: 28 September 2020
• Docket Number: 1:17CV687
• Citation: 490 F.Supp.3d 916
• Court: U.S. District Court — Middle District of North Carolina
• Parties: OPTOLUM, INC., Plaintiff, v. CREE, INC., Defendant.

490 F.Supp.3d 916

OPTOLUM, INC., Plaintiff,

v.CREE, INC., Defendant.

1:17CV687

United States District Court, M.D. North Carolina.

Signed September 28, 2020

Hayden J. Silver, III, Womble Carlyle Sandridge & Rice, PLLC, Raleigh, NC, Jacob S. Wharton, Womble Bond Diskinson (US) LLP, Winston-Salem, NC, Keith Toms, Kia L. Freeman, Leah R. McCoy, Leigh J. Martinson, Mead Misic, Robert A. Brooks, McCarter & English, LLP, Boston, MA, for Plaintiff.

Lynne A. Borchers, Peter D. Siddoway, Sage Patent Group, Raleigh, NC, Blaney Harper, Spencer K. Beall, Jones Day, Washington, DC, for 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.)

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 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 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, 106 S.Ct. 2548, 91 L.Ed.2d 265 (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, 106 S.Ct. 2505, 91 L.Ed.2d 202 (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, 106 S.Ct. 2548. 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, 106 S.Ct. 1348, 89 L.Ed.2d 538 (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, 106 S.Ct. 2505 ).

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...