4:12-cv-11758-GAD-MKM Doc # 602 Filed 01/19/16 Pg 1 of 33 Pg ID 51952
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`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF MICHIGAN
`SOUTHERN DIVISION
`
`Civil Action No.12-cv-11758
`HONORABLE GERSHWIN A. DRAIN
`
`EVERLIGHT ELECTRONICS CO., LTD.
`and EMCORE CORPORATION,
`
`Plaintiffs,
`
`v.
`
`NICHIA CORPORATION, and
`NICHIA AMERICA CORPORATION,
`
`Defendants and
`Counter-plaintiffs,
`
`v.
`
`EVERLIGHT ELECTRONICS CO., LTD.,
`EMCORE CORPORATION, and
`EVERLIGHT AMERICAS, INC.,
`
`Counter-Defendants,
`Defendant.
`_________________________________/
`
`OPINION AND ORDER DENYING DEFENDANTS’ MOTION FOR JUDGMENT
`AS A MATTER OF LAW OF INFRINGEMENT [#525], DENYING PLAINTIFFS’
`MOTION FOR JUDGMENT AS A MATTER OF LAW REGARDING
`ANTICIPATION OF CLAIMS 2 AND 3 OF U.S. PATENT NO. 5,998,925 [#554],
`AND DENYING DEFENDANTS’ MOTION FOR JUDGMENT AS A
`MATTER OF LAW OF VALIDITY AND/OR FOR A NEW TRIAL [#556]
`
`I. INTRODUCTION
`
`Everlight Electronics Co., Ltd. and Emcore Corporation (collectively, “Everlight”)
`
`commenced this suit seeking a declaratory judgment of non-infringement, invalidity, and
`
`unenforceability of United States Patent No. 5,998,925 (the “‘925 Patent”) and United States Patent
`
`No. 7,531,960 (the “‘960 Patent”), which patents were issued to Nichia Corporation and/or Nichia
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`4:12-cv-11758-GAD-MKM Doc # 602 Filed 01/19/16 Pg 2 of 33 Pg ID 51953
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`America Corporation (collectively, “Nichia”). The patents-in-suit relate to light emitting diode
`
`(“LED”) technology, and the parties are business competitors in the manufacture and supply of
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`white LEDs. The suit was brought pursuant to the Declaratory Judgment Act, 28 U.S.C. §§ 2201,
`
`2202, and the patent laws of the United States, 35 U.S.C. § 1 et seq. Nichia filed counterclaims
`
`against Everlight for direct and indirect infringement of the ‘925 and ‘960 Patents.
`
`From April 7, 2015 to April 21, 2015, the first phase of the trial in this matter (“Phase I”)
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`was conducted before a jury. On April 21, 2015 and April 22, 2015, the jury deliberated, and the
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`jury’s verdict was announced on April 22, 2015. According to the Verdict Form for Phase I of this
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`case (the “Verdict Form”), the jury unanimously determined that:
`
`Everlight did not prove by clear and convincing evidence that claims 2 and 3 of the
`‘925 patent are invalid due to anticipation;
`
`Everlight proved by clear and convincing evidence that claims 2, 3 and 5 of the ‘925
`patent are invalid due to obviousness;
`
`Everlight did not prove by clear and convincing evidence that claims 2, 3 and 5 of
`the ‘925 patent are invalid due to lack of enablement;
`
`Everlight proved by clear and convincing evidence that claims 2, 14 and 19 of the
`‘960 patent are invalid due to obviousness; and
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Everlight proved by clear and convincing evidence that claims 2, 14 and 19 of the
`‘960 patent are invalid due to lack of enablement.
`
`
`Further, because the jury determined that each of the six claims at issue were invalid for at least one
`
`reason, the jury did not have to (and the jury did not) proceed to consider or determine any of
`
`Nichia’s infringement claims against Everlight. In light of the jury’s findings, the Court entered a
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`judgment in favor of Everlight’s claims that claims 2, 3 and 5 of the ‘925 Patent and claims 2, 14,
`
`and 19 of the ‘960 Patent are invalid. See Dkt. No. 524, PgID 42974. Additionally, based on the
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`jury’s findings, the Court entered a judgment in favor of Everlight dismissing Nichia’s
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`4:12-cv-11758-GAD-MKM Doc # 602 Filed 01/19/16 Pg 3 of 33 Pg ID 51954
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`counterclaims that claims 2, 3 and 5 of the ‘925 Patent and claims 2, 14, and 19 of the ‘960 Patent
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`are infringed. See Dkt. No. 524, PgID 42975.
`
`The jury was not tasked with addressing Everlight’s declaratory judgment claims that the
`
`‘925 Patent and the ‘960 Patent are unenforceable due to inequitable conduct. Instead, this Court
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`conducted a bench trial on June 15, 16 and 18, 2015 (“Phase II”) to address Everlight’s claims of
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`inequitable conduct. On October 20, 2015, the Court ruled in favor of Nichia and against Everlight
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`on Everlight’s claim for unenforceability due to inequitable conduct with respect to both the ‘925
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`Patent and the ‘960 Patent. See Dkt. No. 601.
`
`Presently before the Court are three motions:
`
`A.
`
`B.
`
`C.
`
`Nichia’s Motion for Judgment as a Matter of Law (“JMOL”) of Infringement [#525];
`
`Everlight’s Motion for Judgment as a Matter of Law Regarding Anticipation of
`Claims 2 and 3 of the ‘925 Patent [#554]; and
`
`Nichia’s Motion for Judgment as a Matter of Law of Validity and/or for a New Trial
`[#556].
`
`These matters are fully briefed, and the Court finds that oral argument will not aid in their resolution.
`
`Accordingly, these matters will be resolved on the briefs submitted. See E.D. Mich. L.R. 7.1(f)(2).
`
`For the reasons that follow, all three motions are DENIED.
`
`II. FACTUAL BACKGROUND
`
`The ‘925 Patent is entitled “Light Emitting Device Having a Nitride Compound
`
`Semiconductor and a Phosphor Containing a Garnet Fluorescent Material.” The ‘925 Patent names
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`Yoshinori Shimizu, Kensho Sakano, Yasunobu Noguchi, and Toshio Moriguchi as inventors. The
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`application for the ‘925 Patent was filed with the United States Patent and Trademark Office
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`(“USPTO”) on July 29, 1997 via United States Patent Application No. 08/902,725. The ‘925 Patent
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`4:12-cv-11758-GAD-MKM Doc # 602 Filed 01/19/16 Pg 4 of 33 Pg ID 51955
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`issued on December 7, 1999 to assignee Nichia Kagaku Kogyo Kabushiki Kaisha (d/b/a/ Nichia
`
`Corporation).
`
`The ‘960 Patent is entitled “Light Emitting Device with Blue Light LED and Phosphor
`
`Components.” The ‘960 Patent names Yoshinori Shimizu, Kensho Sakano, Yasunobu Noguchi, and
`
`Toshio Moriguchi as inventors. The application for the ‘960 Patent was filed with the USPTO on
`
`March 5, 2007 via United States Patent Application no. 11/682,014. The ‘960 Patent issued on May
`
`12, 2009 to assignee Nichia Corporation.
`
`Both the ‘925 Patent and the ‘960 Patent (collectively, “the patents-in-suit”) relate to LEDs
`
`that implement a gallium-nitride-based semiconductor with a phosphor. The ‘925 Patent focuses on
`
`the use of yttrium-aluminum-garnet (“YAG”) phosphors in LEDs to create a wide range of white
`
`light. The Abstract of the ‘925 Patent states as follows:
`
`The white light emitting diode comprising a light emitting component using a
`semiconductor as a light emitting layer and a phosphor which absorbs a part of light
`emitted by the light emitting component and emits light of wavelength different from
`that of the absorbed light, wherein the light emitting layer of the light emitting
`component is a nitride compound semiconductor and the phosphor contains garnet
`fluorescent materials activated with cerium which contains at least one element
`selected from the group consisting of Y, Lu, Sc, La, Gd and Sm, and at least one
`element selected from the group consisting of Al, Ga and In and, and [sic] is subject
`to less deterioration of emission characteristic even when used with high luminance
`for a long period of time.
`
`The Abstract of the ‘960 Patent claims priority to the ‘925 Patent and concerns how the phosphor
`
`is distributed in the resin covering the semiconductor component. The ‘960 Abstract states as
`
`follows:
`
`A light emitting device includes a light emitting component; and a phosphor capable
`of absorbing a part of light emitted by the light emitting component and emitting
`light of a wavelength different from that of the absorbed light. A straight line
`connecting a point of chromaticity corresponding to a peak of the spectrum generated
`by the light emitting component and a point of chromaticity corresponding to a peak
`
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`4:12-cv-11758-GAD-MKM Doc # 602 Filed 01/19/16 Pg 5 of 33 Pg ID 51956
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`of the spectrum generated by the phosphor is disposed along with the black body
`radiation locus in the chromaticity diagram.
`
`Thus, the patents-in-suit cover the use of particular phosphors in white LED technology enabling
`
`efficient, long-lasting, high luminance LEDs in a wide variety of applications, including computer
`
`and cellular telephone displays.
`
`A.
`
`Standard of Review
`
`III. LAW & ANALYSIS
`
`1.
`
`Rule 50 Motion for Judgment as a Matter of Law
`
`“Judgment as a matter of law is appropriate when ‘viewing the evidence in the light most
`
`favorable to the non-moving party, there is no genuine issue of material fact for the jury, and
`
`reasonable minds could come to but one conclusion in favor of the moving party.’” Tisdale v. Fed.
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`Express Corp., 415 F.3d 516, 527 (6th Cir. 2005) (internal citations omitted). In reviewing a Rule
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`50(b) motion, “the evidence should be viewed in the light most favorable to the party against whom
`
`the motion is made, and that party given the benefit of all reasonable inferences.” Parker v. Gen.
`
`Extrusions, Inc., 491 F.3d 596, 602 (6th Cir. 2007) (citation omitted). However, while the evidence
`
`of record must generally be considered in the light most favorable to the nonmoving party, “when
`
`an expert opinion is not supported by sufficient facts to validate it in the eyes of the law . . . it cannot
`
`support a jury’s verdict.” Brooke Gp. Ltd. v. Brown & Williamson Tobacco Corp., 509 U.S. 209, 242
`
`(1993). A Rule 50(b) motion should be granted only “if ‘reasonable minds could not come to a
`
`conclusion other than one favoring the movant.’” Id. (citation omitted).
`
`2.
`
`New Trial
`
`District courts have broad discretion whether to grant a new trial. Am. Seating Co. v. USSC
`
`Group, Inc., 2006 U.S. Dist. LEXIS 60128, at **8-9 (W.D. Mich. Aug. 24, 2006); Fed. R. Civ. P.
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`4:12-cv-11758-GAD-MKM Doc # 602 Filed 01/19/16 Pg 6 of 33 Pg ID 51957
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`59(a). Rule 59 encompasses a wide range of grounds, including errors of law and unfair prejudice
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`to a litigant. Am. Seating, U.S. Dist. LEXIS 60128, at *9. A new trial is warranted on errors in the
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`verdict form if the questions “mislead or confuse the jury, or if they inaccurately frame the issues
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`to be resolved by the jury.” Chirco v. Charter Oak Homes, Inc., 2008 U.S. Dist. LEXIS 29764, at
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`**24-25 (E.D. Mich. Apr. 11, 2008).
`
`B.
`
`Nichia’s Motion for JMOL of Infringement
`
`In its Motion for JMOL of Infringement, Nichia moves the Court to amend its Judgment to
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`hold that Everlight infringes the asserted claims of the patents-in-suit, i.e., claims 2, 3, and 5 of the
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`‘925 Patent and claims 2, 14, and 19 of the ‘960 Patent (the “Asserted Claims”). Most significantly,
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`Nichia asserts that the unrebutted testimony of its expert conclusively establishes Everlight’s
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`infringement of the Asserted Claims. Therefore, Nichia argues, no reasonable jury could conclude
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`that Everlight does not infringe those claims.
`
`The Court finds that Nichia’s Motion for JMOL of Infringement is governed by the principle
`
`that “a judgment of invalidity necessarily moots the issue of infringement.” TypeRight Keyboard
`
`Corp. v. Microsoft Corp., 374 F.3d 1151, 1157 (Fed. Cir. 2004) (citing Sandt Tech., Ltd. v. Resco
`
`Metal & Plastics Corp., 264 F.3d 1344, 1356 (Fed. Cir. 2001), and Weatherchem Corp. v. J.L.
`
`Clark, Inc., 163 F.3d 1326, 1335 (Fed. Cir. 1998)). Thus, in a case such as this one, where a jury
`
`finds that the patents-in-suit are invalid, there is no need for the jury to reach the issue of
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`infringement.
`
`Nichia’s argues that “infringement and invalidity are fundamentally distinct issues that must
`
`be separately decided.” Commil USA LLC v. Cisco Sys., __ U.S. __, 135 S.Ct. 1920, 1929-30 (2015)
`
`(“Validity and infringement are distinct issues, bearing different burdens, different presumptions,
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`4:12-cv-11758-GAD-MKM Doc # 602 Filed 01/19/16 Pg 7 of 33 Pg ID 51958
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`and different evidence.”); Cardinal Chem. Co. v. Morton Int’l Inc., 508 U.S. 83 (1993). Neither
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`Cardinal Chem. nor Commil, however, addresses the issue before the Court, i.e., whether a finding
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`of invalidity renders moot the issue of infringement. As the TypeRight court observed, the holding
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`in Cardinal Chem. was that “a judgment of non-infringement does not necessarily moot validity
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`issues on appeal.” Typeright, 374 F.3d at 1157 (citing Cardinal Chem., 508 U.S. at 98). In other
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`words, the holding in Cardinal Chem. is the converse of what Nichia has asserted, and that holding
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`was reached “because ‘a determination of infringement applies only to a specific accused product
`
`or process,’ whereas ‘invalidity operates as a complete defense to infringement for any product,
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`forever.’” TypeRight, 374 F.3d at 1157 (quoting Weatherchem, 163 F.3d at 1335-36). Accordingly,
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`the Court rejects Nichia’s argument that the Court erred in not requiring that the jury decide the
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`issue of infringement.
`
`Nichia’s contention that TypeRight is inapposite to the issue at hand is also misplaced. The
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`fact that TypeRight concerned the Federal Circuit’s dismissing a cross-appeal of the district court’s
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`dismissal of a counterclaim for non-infringement does not make the ruling any less relevant in this
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`case. In both instances, a finding of invalidity precludes a finding of infringement. As the Federal
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`Circuit held in Weatherchem, a judgment “that claims are invalid eliminates, as a practical matter,
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`the need to consider on [a motion for JMOL] whether those claims are infringed, even if the accused
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`infringer has filed a counterclaim for a declaratory judgment of noninfringement.” Weatherchem,
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`163 F.3d at 1335. Moreover, as the Commil court recognized, “[t]o be sure, if at the end of the day,
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`an act that would have been an infringement or an inducement to infringe pertains to a patent that
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`is shown to be invalid, there is no patent to be infringed.” Commil, 135 S.Ct. at 1929 (emphasis
`
`added).
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`4:12-cv-11758-GAD-MKM Doc # 602 Filed 01/19/16 Pg 8 of 33 Pg ID 51959
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`Therefore, as the jury in this case concluded that the patents-in-suit are invalid, there are no
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`patents for the jury to find infringed. Accordingly, the Court denies Nichia’s Motion for JMOL of
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`Infringement.
`
`C.
`
`Everlight’s Motion for JMOL Regarding Anticipation of Claims 2 and 3 of the ‘925
`Patent
`
`In its Motion for JMOL Regarding Anticipation, Everlight states:
`
`In order to preserve its rights for appeal and pursuant to Rule 50(b), Everlight
`. . . moves the Court to enter judgment as a matter of law that claims 2 and 3 of [the
`‘925 Patent] are anticipated under 35 U.S.C. § 102, and thus are invalid. At trial,
`Nichia . . . did not dispute that two . . . art references disclosed every element of
`claims 2 and 3 of the ‘925 [P]atent. Those references are S. Nakamura, Present
`performance of InGaN based blue/green/yellow LEDs, SPIE Vol. 3002 (Feb. 1997)
`("Nakamura SPIE") (P-138) . . . and P. Schlotter, R. Schmidt, and J. Schneider,
`Luminescence conversion of blue light emitting diodes, Applied Physics A: Materials
`Science & Processing, Vol. 64, p. 417-418 (received Feb. 6, 1997; published Apr.
`1, 1997) (“Schlotter”) (P-137) . . . . Instead, Nichia argued that the references are not
`prior art because Nichia alleges that claims 2 and 3 are entitled to an earlier priority
`date. Nichia also made two subsidiary arguments: (1) that the Nakamura SPIE
`reference was the work of the inventors, and (2) that Schlotter was not an enabling
`reference. Nichia failed to carry its burden as to any of these arguments.
`
`Everlight argues, in part, as it did in its motion for summary judgment, that claims 2 and 3 of the
`
`‘925 Patent cannot rely on any of the priority applications because they do not recite in haec verba
`
`(i.e., verbatim) the words “a nitride compound semiconductor represented by the formula:
`
`IniGajAlkN where 0#I, 0#j, 0#k, and i+j+k = 1,” used in claim 1 of the ‘925 Patent to describe the
`
`blue LED semiconductor.1 For the reasons set forth below, the Court is not persuaded that Everlight
`
`is entitled to judgment as a matter of law that claims 2 and 3 of the ‘925 Patent are invalid as
`
`anticipated.
`
`1In deciding Everlight’s motion for summary judgment, the Court held that “the issues
`raised by Everlight are factually complex and not amenable to resolution on summary
`judgment.” Dkt. No. 437, Pg ID 35413.
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`“A determination that a patent is invalid as anticipated under 35 U.S.C. § 102 requires that
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`a prior art reference disclose every limitation of the claimed invention, either explicitly or
`
`inherently.” Liebel-Flarsheim Co. v. Medrad, Inc., 481 F.3d 1371, 1381 (Fed. Cir. 2007). As set
`
`forth in the jury instructions given by the Court,
`
`Everlight has put at issue certain references alleged to be prior art to certain claims
`of the ‘925 Patent that are dated earlier than the filing date of the ‘925 Patent. To
`establish entitlement to the priority date of any of the foreign priority applications,
`Nichia must present evidence of entitlement to such priority. The ultimate burden
`of proving invalidity remains with Everlight.
`
`In deciding whether claims 2, 3, and 5 of the ‘925 Patent are entitled to the priority
`of any of the five Japanese priority applications, you must consider the descriptions
`of the priority applications from the viewpoint of a person having ordinary skill in
`the field of technology of the patent when the application was filed. Claims 2, 3, and
`5 of the ‘925 Patent are entitled to the priority of a Japanese priority application if
`a person having ordinary skill reading the priority application would have recognized
`that it describes the full scope of the claimed invention as it is claimed in claims 2,
`3 and 5 of the ‘925 Patent and that the inventors actually possessed that full scope
`by the filing date of the priority application.
`
`Instruction No. 13. Thus, once Everlight came forth with evidence of a prima facie case of
`
`invalidity of anticipation, Nichia had “to come forward with evidence to the contrary,” PowerOasis,
`
`Inc. v. Tmobile USA, Inc., 522 F.3d 1199, 1305 (Fed. Cir. 2008) (emphasis added), or evidence “that
`
`the prior art does not actually anticipate or, as was attempted in this case, that it is not prior art
`
`because the asserted claim is entitled to the benefit of a filing date prior to the alleged prior art.”
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`Technology Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008). Then, if Nichia
`
`did so, Everlight had the ultimate burden of proving invalidity because that burden remains with the
`
`party challenging the validity of the patent, i.e., Everlight. See, e.g., Id.; Jury Instruction 13.2
`
`2As the Court stated when deciding which disputed jury instructions to give, Technology
`Licensing Corp. “modified” the PowerOasis case upon which Everlight relies. See Nichia Resp.,
`Ex. D, at 47-48 (“The Technology Licensing Corp. [decision] really modified Power Oasis to get
`to a point where Nichia’s instruction, I think, is more appropriate dealing with the burden of
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`4:12-cv-11758-GAD-MKM Doc # 602 Filed 01/19/16 Pg 10 of 33 Pg ID 51961
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`There is no dispute that Everlight set forth a prima facie case of invalidity of anticipation.
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`Everlight argues that Nichia has not satisfied its burden of coming forward with evidence to prove
`
`entitlement to claim priority of the ‘925 Patent. Claims for priority to an earlier-filed foreign patent
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`application are governed by 35 U.S.C. § 119. Section 119 requires that each foreign application must
`
`satisfy the requirements of 35 U.S.C. § 112, which in turn requires that an application both enable
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`a person of ordinary skill in the art to practice the invention and provide an adequate written
`
`description of the invention. See, e.g., In re Ziegler, 992 F.2d 1197, 1200 (Fed. Cir. 1993). Priority
`
`is a fact-based analysis. Amkor Tech., Inc. v. ITC, 692 F.3d 1250, 1254 (Fed. Cir. 2012) (priority
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`determination is “based upon underlying factual determinations”). Thus, the priority inquiry focuses
`
`on the asserted claims as compared to the actual disclosures of the specification of the earlier foreign
`
`applications; expert testimony “cannot override the objective content of [the] documents.” Anascape
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`Ltd. v. Nintendo of America, Inc., 601 F.3d 1333, 1338 (Fed. Cir. 2008).
`
`To satisfy the written description requirement, “the disclosure of the earlier application, the
`
`parent, must reasonably convey to one of skill in the art that the inventor possessed the later-claimed
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`subject matter at the time the parent application was filed.” Tronzo v. Biomet, Inc., 156 F.3d 1154,
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`1158 (Fed. Cir. 1998). This “requires that the written description [of the priority application]
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`actually or inherently disclosed the claim element.” PowerOasis, Inc., 522 F.3d at 1306. To be
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`inherent, the claimed subject matter must be necessarily present in the disclosure even if it is not
`
`explicitly mentioned. Id.; Motorola Mobility LLC v. ITC, 737 F.3d 1345, 1350 (Fed. Cir. 2013)
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`(“Inherency requires more than probabilities or possibilities”). Whether the priority applications
`
`satisfy the “written description” requirement is a question of fact. Technology Licensing Corp., 545
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`proof, than Everlight’s. So, I’m going to give Nichia’s proposed instruction on prior art and
`priority.”).
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`4:12-cv-11758-GAD-MKM Doc # 602 Filed 01/19/16 Pg 11 of 33 Pg ID 51962
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`F.3d at 1332. “[T]he primary consideration is factual and depends on the nature of the invention and
`
`the amount of knowledge imparted to those skilled in the art by the disclosure.” Union Oil Co. v.
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`Atlantic Richfield Co., 208 F.3d 989, 996 (Fed. Cir. 2000) (quotation omitted; emphasis in original).
`
`The factual inquiry considers both what is expressly and inherently disclosed by the priority
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`applications to a person of skill in the art at the time of filing the application. EnOcean GmbH v.
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`Face Intern. Corp., 742 F.3d 955, 960-62 (Fed. Cir. 2014); Star Scientific, Inc. v. R.J. Reynolds
`
`Tobacco Co., 655 F.3d 1364, 1371-72 (Fed. Cir. 2011). Significantly, however, “[t]he written
`
`description requirement does not require the applicant to describe [in the priority application]
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`exactly the subject matter claimed.” Union Oil Co., 208 F.3d at 997 (citations and quotations
`
`omitted). See also Purdue Pharma L.P. v. Paulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000)
`
`(“[T]he disclosure as originally filed does not have to provide in haec verba support for the claimed
`
`subject matter at issue.”). See also, Utter v. Hiraga, 845 F.2d 993, 998 (Fed. Cir. 1988) (“A
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`specification may, within the meaning of 35 U.S.C. § 112 para. 1, contain a written description of
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`a broadly claimed invention without describing all species that [the] claim encompasses.”).
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`Nichia contends, and the Court agrees, that Nichia met its burden of “com[ing] forward with
`
`evidence to prove entitlement to claim priority to an earlier filing date” by presenting the following
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`facts at trial concerning the relevant chronology prior to July 29, 1997, the date the ‘925 Patent was
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`filed.
`
`Date
`July 29, 1996
`Sep. 13, 1996
`Nov. 29, 1996
`Dec. 27, 1996
`Feb. 1997
`Mar. 31, 1997
`Apr. 1, 1997
`
`Description
`Document
`First Priority Application (JP1)
`JP8-198585
`Nikkei Newspaper
`First public disclosure of invention
`
`First publication of invention
`Bando Paper
`Fourth Priority Application (JP4)
`JP8-3559004
`Article describing work of Inventors
`Nakamura SPIE
`Fifth Priority Application (JP5)
`JP8-081010
`Schlotter Reference Two-Page Disclosure
`
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`4:12-cv-11758-GAD-MKM Doc # 602 Filed 01/19/16 Pg 12 of 33 Pg ID 51963
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`As Nichia notes, its expert, Dr. Schubert, also gave detailed, limitation-by-limitation testimony as
`
`to why the claims were entitled to the priority dates for each of JP1, JP4, and JP5. Nichia Resp., Ex.
`
`A, at 42-59. Significantly, Dr. Schubert also ultimately concluded that each of claims 2, 3 and 5
`
`“finds support in each of the Japanese priority applications” (JP1, JP4 and JP5). Id. at 60. The Court
`
`disagrees with Everlight’s claim that Prof. Schubert was not questioned based on the proper legal
`
`standard because he was asked his expert opinion concerning “support” in the Priority Applications.
`
`In fact, the priority/written description requirement is often articulated in this manner, as the Federal
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`Circuit recognized in a case that Everlight cites as authority (albeit for another proposition). See
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`Anascape, 601 F.3d at 1335 (internal quotations omitted) (“To obtain the benefit of the filing date
`
`of a parent application, the claims of the later-filed application must be supported by the written
`
`description in the parent”).
`
`The Court also observes that it is undisputed that each of the first four priority applications
`
`identified at trial predated Nakamura SPIE, and all five priority applications predated Schlotter.
`
`Thus, as Nichia argues, the jury could have eliminated: (a) Nakamura SPIE as a prior art reference
`
`by concluding that JP1 and/or JP4 supported the claims (thus eliminating the need to even consider
`
`the evidence that Nakamura SPIE discloses the work of the inventors), and (b) Schlotter as a prior
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`art reference by concluding that JP1, JP4 and/or JP5 supported the claims (thereby eliminating any
`
`need to consider whether Schlotter is enabling, as it must be to anticipate). Moreover, Dr. Schubert
`
`based his opinions on his knowledge of the art and the express disclosures of the applications. For
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`example, Dr. Schubert testified that each of the priority applications at JP1, JP4, and JP5
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`independently provided written support for the semiconductor limitation. Nichia Resp., Ex. A at 46-
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`47, 51, 56. Thus, the Court finds that this is not a case where the testimony was conclusory and
`
`-12-
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`

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`4:12-cv-11758-GAD-MKM Doc # 602 Filed 01/19/16 Pg 13 of 33 Pg ID 51964
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`contradicted by the priority applications, as Everlight argues. Citing Anascape Ltd. v. Nintendo of
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`America, Inc., 601 F.3d 1333, 1339 (Fed. Cir. 2008) (citation omitted) (“Dr. Howe’s conclusion is
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`not supported by any evidence at all, and cannot override the objective content of these
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`documents.”).
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`Everlight also contends that Dr. Schubert’s testimony should be disregarded because his
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`“testimony directly contradicted the Court’s claim construction, which renders the testimony
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`irrelevant as a matter of law.” EL Mtn., Pg ID 44716 (citing Liquid Dynamics Corp. v. Vaughan Co.,
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`449 F.3d 1209, 1224 n.2 (Fed. Cir. 2006)). The Court construed the semiconductor limitation as
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`follows: “comprises a nitride compound semiconductor represented by the formula IniGajAlkN,
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`where i is greater than or equal to zero, j is greater than or equal to zero, and k is greater than or
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`equal to zero and where i plus j plus k equals one.” Dkt. No. 129, Pg ID 7077-78. Everlight
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`contends that Dr. Schubert’s testimony was wrong to reduce that term to a “gallium-nitride”
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`semiconductor when he testified:
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`So I would say this lengthy formula is maybe a formal way of expressing the formula
`or the chemical formula, it’s formal, it’s comprehensive, it’s complete, but a person
`may just say gallium nitride-based. And gallium nitride-based is more informal, it’s
`more what people in the industry say. That’s a difference, but it means the same
`thing.
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`EL Mtn., Pg ID 44717. Everlight’s argument is undercut by its own expert’s testimony, as Dr.
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`Bretschneider likewise testified that “it’s a gallium nitride-based semiconductor, that’s how we talk
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`about them in the industry.” Nichia Resp., Pg ID 46463. Accordingly, the Court is not persuaded
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`by Everlight’s argument that Dr. Schubert “ignore[d] that the limitation in question is a specific
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`formula covering a specific range of semiconductor compositions . . .” EL Mtn., Pg ID 44717.
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`For the reasons set forth above, particularly when drawing all reasonable inferences in favor
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`-13-
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`

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`4:12-cv-11758-GAD-MKM Doc # 602 Filed 01/19/16 Pg 14 of 33 Pg ID 51965
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`of Nichia (as the Court must for purposes of this motion), the Court must presume the jury found
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`that claims 2 and 3 are entitled to foreign priority; in fact, the Court must presume that the jury
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`found that claims 2 and 3 are entitled to that priority as of July 29, 1996 (i.e., the filing date of JP1).
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`Based on that conclusion, neither the Nakamura SPIE reference nor the Schlotter reference could
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`constitute prior art. As the Court must treat those references as not being prior art, the Court finds
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`there is no basis for finding the ‘925 Patent invalid as anticipated. Accordingly, the Court denies
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`Everlight’s Motion for JMOL Regarding Anticipation of Claims 2 and 3.
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`D.
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`Nichia’s Motion for JMOL of Validity and/or for a New Trial
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`A party challenging the validity of a patent has the burden of proving that the patent is
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`invalid by clear and convincing evidence. Microsoft Corp. v. i4i Ltd. P’ship, __ U.S. __, 131 S. Ct.
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`2238, 2240 (2011).
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`At the outset, the Court notes that much of Nichia’s argument relies on a finding that
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`Everlight failed to provide a person of skill in the art (“POSA”) to support Everlight’s obviousness
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`defense. As discussed below, however, the Court concludes that substantial evidence in the record
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`supports a finding that Dr. Bretschneider was a POSA, at least under the definition of POSA that
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`Everlight proffered (through Dr. Bretschneider). See, e.g., Dkt. No. 583, Pg ID 49691-82.
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`Moreover, although Everlight did not cite to expert testimony to rebut several points made by
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`Nichia, such failure does not alter the existence of substantial evidence to support Everlight’s
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`obviousness defense. Finally, the Court also finds that much of Nichia’s motion is simply an attempt
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`to reargue, and have the Court weigh, the evidence. Such an undertaking is not an appropriate
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`avenue for this Court to pursue, however, because the Court does not have the authority to usurp the
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`factual findings of the jury if such findings are supported by substantial evidence.
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`-14-
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`

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`4:12-cv-11758-GAD-MKM Doc # 602 Filed 01/19/16 Pg 15 of 33 Pg ID 51966
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`1.
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`Obviousness as it Relates to Claims 2, 3 and 5 of the ‘925 Patent
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`Obviousness under 35 U.S.C. § 103 is a question of law based on underlying facts. Graham
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`v. John Deere Co. of Kansas City, 383 U.S. 1, 17 (1966). The underlying factual inquiries are: (1)
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`the scope and content of the prior art, (2) the differences between the claimed invention and the prior
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`art, (3) the level of ordinary skill in the art, and (4) objective indicia of nonobviousness, including
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`such secondary considerations as commercial success, long felt but unsolved needs, and the failure
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`of others. Id. at 17-18. See also Insite Vision, Inc. v. Sandoz, Inc., 783 F.3d 853, 858 (Fed. Cir.
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`2015). “While factual issues may be decided by the jury, the judge remains the “ultimate arbiter on
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`the question of obviousness.” Railroad Dynamics, Inc. v. A. Stucki Co., 727 F.2d 1506, 1515 (Fed.
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`Cir. 1984). “When a jury has found a claim to be obvious, [the Federal Circuit] presumes the jury
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`resolved all factual disputes in favor of the verdict.” Pregis Corp. v. Kappos, 700 F.3d 1348, 1354
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`(Fed. Cir. 2012) (citation omitted). And, while a court must defer to the jury’s factual findings when
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`presented with a JMOL motion, the court must nonetheless review the factual findings for
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`substantial evidentiary support and the ultimate conclusion on obviousness for legal correctness.
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`Railroad Dynamics, 727 F.2d at 1513. Thus, courts “review[] a jury’s conclusions on obviousness
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`de novo, ‘and the underlying findings of fact, whether explicit or implicit in the verdict, for
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`substantial evidence.’” Pregis Corp., 700 F.3d at 1354 (citation omitted). For purposes of the instant
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`motion, the key question for purposes of obviousness is whether it would have been obvious to
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`combine a blue InGaN LED with a yellow YAG phosphor based on the disclosures in prior art.
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`Cohesive Techs., Inc. v. Waters Corp., 543 F.3d 1351, 1363-64 (Fed. Cir. 2008) (citation omitted).
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`Nichia moves the Court to amend its judgment finding claims 2, 3 and 5 of the ‘925 Patent
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`and claims 2, 14 and 19 of the ‘960 Patent invalid as obvious for the following reasons:
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`-15-
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`

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`4:12-cv-11758-GAD-MKM Doc # 602 Filed 01/19/16 Pg 16 of 33 Pg ID 51967
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`a.
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`b.
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`c.
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`d.
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`There is no evidence YAG was used in any LED, much less a blue LED; rather, it
`was only used in unrelated applications such as mercury vapor lighting;
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`Dr. Bretschneider’s reasons for combining disparate art were conclusory and
`unsupported;
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`Dr. Bretschneider ignored that much of the prior art relied upon would discourage
`a POSA from combining the references, and Dr. Bretschneider was not a POSA; and
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`Dr. Bretschneider’s conclusory testimony on secondary considerations failed to rebut
`the presumption of