Trs. of Bos. Univ. v. Everlight Elecs. Co., Nos. 2016-2576-2595, 2018 (Fed. Cir. July 25, 2018) (Before Prost, C.J., Moore, and Reyna, J.) (Opinion for the court, Prost, C.J.)
Trustees of Boston University (“BU”) sued Everlight Electronics Co., Ltd., and others (collectively, “Everlight”) for infringement of U.S. Patent No. 5,686,738 (the “738 Patent”). A jury found Everlight infringed the ‘738 Patent and failed to prove the patent was invalid. Everlight renewed its motion for judgment as a matter of law that the ‘738 Patent is invalid for lack of enablement under 35 U.S.C. § 112. The district court denied the motion.
The ‘738 Patent is directed to the preparation of monocrystalline gallium nitride (“GaN”)—a semiconductor that emits blue light in LEDs—films through molecular beam epitaxy, a process used to fabricate semiconductor layers. Based on the court’s claim constructions, the relevant claim covered six permutations for the relationship between the growth layer and the buffer layer, only two of which are relevant to the appeal: a monocrystalline growth layer formed (1) indirectly or (2) directly, on an amorphous buffer layer. The district court found that Everlight failed to establish that the last permutation, direct growth, was not enabled.
Everlight argued that the ‘738 Patent did not enable a monocrystalline growth layer formed directly on an amorphous buffer layer, citing expert testimony that such growth actually is impossible. BU’s expert agreed that it was “physically impossible” using the epitaxial techniques in the ‘738 Patent.
To overcome this evidence, BU relied on testimony of the ‘738 inventor, who testified that while it was impossible to grow a monocrystalline layer directly on an amorphous layer at the time the application was filed, others have succeeded since then. The Court rejected this argument, noting that “the inquiry is not whether it was, or is, possible to make the full scope of the claimed device . . . [t]he inquiry is whether the patent’s specification taught one of skill in the art how to make such a device without undue experimentation as of the patent’s effective filing date.” BU did not suggest that others were able to successfully grow a monocrystalline layer directly on an amorphous layer as a result of the specification’s teachings, or that achieving the result was within an artisan’s ordinary skill as of the patent’s effective filing date. “Simply observing that it could be done—years after the patent’s effective filing date—bears little on the enablement inquiry.”
Finally, BU argued that the ‘738 Patent did not have to enable growing a monocrystalline layer directly on an amorphous layer so long as the patent enabled the five other permutations in the specification. The Court disagreed, noting that “the specification must enable the full scope of the claimed invention.” While the specification does not have to “expressly spell out every possible iteration of every claim,” it must provide at least a “basic enabling disclosure” for the claimed invention.
The Court reversed, finding that the ‘738 Patent was invalid for lack of enablement.
It is irrelevant whether others, after the patent’s effective filing date, have been able to make the claimed invention without undue experimentation. The patent must have been enabling as of the effective filing date. Further, while a patent does not have to expressly spell out every possible iteration of every claim, it must provide at least a basic enabling disclosure of all claimed permutations.
About Troutman Sanders and the Federal Circuit Review
Founded in 1897, Troutman Sanders LLP is an international law firm with more than 650 lawyers practicing in 16 offices located throughout the United States and Asia. Each week, partners Joe Robinson and Bob Schaffer, succinctly summarize the preceding week of Federal Circuit precedential patent opinions. They provide the pertinent facts, issues, and holdings. This Review allows you to keep abreast of the Federal Circuit’s activities – important for everyone concerned with intellectual property. IPWatchdog.com is pleased to publish these summaries each week.