Bad news for Boston University as Fed Circuit reverses LED patent ruling
The US Court of Appeals for the Federal Circuit yesterday reversed a district court’s ruling in a patent infringement dispute between Boston University and LED manufacturers.
Chief Judge Sharon Prost said the patent asserted by the t rustees of Boston University failed to meet the enablement requirement, which provides that a patent specification must include the manner and process of making and using the invention.
In 2014, Boston University accused three technology companies of infringing US patent number 5,686,738, relating to LEDs. The semiconductor devices emit light when an electric current is applied, Prost explained, and are widely used in products such as printers, phones, and TVs.
Boston University’s patent covers a method of preparing “monocrystalline gallium nitride (GaN) films via molecular beam epitaxy”.
Prost said that fabricating monocrystalline GaN films has historically been difficult due to the “lack of available substrates with a matching lattice structure”.
Boston University alleged that the following LED manufacturers infringed its patent: Taiwanese Everlight Electronics, Chinese Epistar, and companies from Taiwan and the US under the Lite-On parent brand.
In response to the lawsuit, the defendants claimed that the ‘738 patent is invalid.
In 2015, a jury at the US District Court for the District of Massachusetts found that claim 19 of Boston’s patent had been infringed. Claim 19 is directed towards preparing the GaN films.
The LED manufacturers submitted a motion, arguing that the ‘738 patent is invalid for failing to meet the enablement requirement of 35 USC section 112.
The Massachusetts court rejected the motion. It said that the specification does not need to enable a device where the film is formed directly onto a buffer film, as long as it enabled one with a film formed indirectly onto a buffer film.
On appeal against the decision, the LED manufacturers said the patent’s specification failed to enable someone to make the claimed invention. An expert for the defendants testified that “it is impossible to epitaxially grow a monocrystalline film directly on an amorphous structure”.
Yesterday, the Federal Circuit agreed with the LED manufacturers and concluded that the asserted claim is not enabled.
The court confirmed that the question is not whether it is possible to make the claimed device, but whether the patent’s specification teaches someone how to make it.
“We can safely conclude that the specification does not enable what the experts agree is physically impossible,” Prost said.
The court reversed the district court’s denial of the defendants’ motion for judgment and rendered claim 19 of the asserted patent invalid.
In addition, the court dismissed Boston University’s cross-appeal. The university had appealed against the district court’s denial of enhanced damages and full attorneys’ fees but, given the Federal Circuit’s reversal of the decision, Prost said Boston’s appeal must be dismissed as moot.
Prost said each party would bear its own costs.
A spokesperson for Boston University said: "We are disappointed in the decision, of course, and are reviewing all options."
The spokesperson added that the institution is proud of the work that has been done in the area of LEDs.
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