In an ongoing dispute between Gertrude Neumark Rothschild and Cree, Inc. (the case was originally pending in the S.D.N.Y. before being assigned to Judge Young sitting by designation and then transferred by joint motion to D. Mass.), Rothschild accuses Cree of infringement of Patent Nos. 4,904,618 and 5,252,499 directed to methods for producing LEDs.
The parties brought various motions including a motion to dismiss for lack of standing, motions for claim construction, and motions for summary judgment. Judge Young dealt with them all in an omnibus 100 page opinion found here. The decision starts with an explanation of the technology behind LEDs and the semiconductors used to build them and then walks through the legal issues one by one.
Cree moves to dismiss arguing that because the inventions were made by Rothschild when she was an employee of Philips, Philips owns the rights and Rothschild lacks standing to sue. This motion was denied due to a dispute of fact over whether the relevant concepts were invented after Rothschild left Philips (who was a defendant in this case prior to settling and had insinuated in certain documents that it had no claim on the patents). The decision noted that the ultimate burden to prove standing lay with the plaintiff, despite Rothschild’s repeated invocation of the “presumption of ownership,” a concept Judge Young rejected as an improper rephrasing of the presumption of validity: “In essence, the so-called presumption of ownership is a misnomer.” (See here for another instance of Judge Young’s frustration with the word “presumption” in patent jurisprudence.)
On claim construction, Judge Young refused to alter the constructions provided by Judge Connor earlier in the case finding that they were appropriate and did not imply certain requirements as suggested by Cree. The Judge also denied the additional constructions proposed by Rothschild.
Disputes of fact prevented summary judgment on anticipation, failure to enable, and failure to name co-inventors. Though summary judgment of no anticipation entered with regard to one asserted reference. (Mirroring his actions in the Ambit case, which resulted from his decision on expert testimony in the NewRiver case, Judge Young almost entered summary judgment of no anticipation by other references sua sponte, but Cree created a fact dispute with a late expert submission; Judge Young acknowledged the submission was late but allowed it since it came after the general notice of Judge Young new practice provided in Ambit and NewRiver.)
Summary judgment of no inequitable conduct was granted with regard to some issues but denied as to others. Summary judgment of no infringement was denied due to disputes of material fact.
Gertrude Neumark Rothschild v. Cree, Inc., 10-10133-WGY (May 13, 2010)