LED Patent Invalid for Lack of Enabling Disclosure for All Claimed Permutations

Federal CircuitTrs. 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. 

Take Away

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.

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Discuss this

There are currently 8 Comments comments.

  1. Jianqing Wu August 6, 2018 11:43 am

    The Federal Circuit’s ruling is to extract the maximum suffering for patent owners. The case concerns only claim 19, here is what I found:

    First, the court interpreted the term “growth on” to include layer formed (1) indirectly or (2) directly on an amorphous buffer layer. When the patent application was filed, “grown directly on an amorphous buffer layer” was impossible, it must have meant that it was indirectly. Yet, the court first interpreted the claim out of context to reach “something impossible”. Then, it found that one permutation “direct growth” is impossible and then held it as lack of enabling disclosure.

    Essentially, the court used ordinary meaning to expand the claim scope to read on something that cannot be true and held it as lack of enabling disclosure and invalidated it. This kind of patenting game is a game for super human intelligence, but certainly not for ordinary American inventors!

    The real problem is that every word in a claim is interpreted in ordinary meaning (unless defined). Each word may have several to tens of different meanings. Such ordinary meaning is always too narrower or too broader for any particular subject matter to be described. This is a fundamental phenomenon in language, and the three judges seem to think that every element, act or step can described in a word in an absolute accuracy. The court has turned the patenting into the worse game. Hundreds of rulings like this must be overruled.

    If the patent drafter had used “directly on”, I am sure the court would come up with another distorted meaning that would crash with the claimed subject. You will never see where this kind of game will end.

    Rulings like this are why patent litigation is SO expensive, it is all about game-playing, and most inventors can never get even the prosecution fees back.

  2. Night Writer August 6, 2018 12:45 pm

    @1 Wu

    I agree with you that they play games to find some way to invalidate the claims.

    But look at the judges Prost (pretty sure her BS is in economics), Moore (has the technical background but has proven to be on the whole anti-patent and to have not much character), Reyna (absolutely no science and no patent law experience before appointment by Google–err, I mean Obama.

    Is it a wonder that we get these results with judges like this? The only solution is to disband the CAFC and reform it with judges that have science and patent law backgrounds and are not virulently against patents for some irrational reason.

  3. Benny August 7, 2018 5:28 am

    “Rulings like this are why patent litigation is SO expensive, it is all about game-playing, and most inventors can never get even the prosecution fees back.”

    Agree. The game playing starts with the claim drafting, continues through prosecution, onto litigation and into the courts. I’ll read on Wu’s use of the phrase “all about” – that leaves no room for the claims to be about anything else, such as teaching the actual invention to society. It’s all about winning or losing now. Promoting the useful arts? You must be joking.
    I wouldn’t rely on this ruling as a precedent. On the basis of a specification not being enabling, I could theoretically wipe out about a third of our competitor’s patents – and our own are not invulnerable.
    J Wu, forgive my ignorance, but I would have spelled your name in full if I was sure I knew how to pronounce it correctly.

  4. B August 7, 2018 10:40 am

    “But look at the judges Prost (pretty sure her BS is in economics), Moore (has the technical background but has proven to be on the whole anti-patent and to have not much character), Reyna (absolutely no science and no patent law experience before appointment by Google–err, I mean Obama.”

    Respectfully, Moore gave us Berkheimer and Aatrix thus setting the stage for evidence-based analyses under s101. Reyna and Prost, however, are incredibly inconsistent on s 101, and far from my favorite judges.

    That said, I’m not sure I agree with the decision, but for different reasons than you, The test for enablement has historically rested upon whether a reasonable amount of scientific experimentation would suffice to produce the end product. I haven’t read the case and so I’ll refrain from judgment.

  5. John White August 8, 2018 11:15 am

    As much as I do not like the result, I agree with the outcome; even though harsh.
    The basic patent exchange is: a full public disclosure in exchange for an exclusory right. The exclusory right cannot be any greater than what is disclosed (in accord w/112). This is the deal. Period. The PTO works on behalf of the public to make sure the exclusory right does not extend beyond what is, once expired, given into the “public domain”.
    Here, without knowing all the facts, the claim writer hedged that an alternative existed, where none, in fact, did. I agree, harsh. But, perhaps necessary in view of the underlying principles.

  6. Anon August 8, 2018 3:50 pm

    Well stated, John.

  7. Pete August 8, 2018 5:40 pm

    @Wu
    “Essentially, the court used ordinary meaning to expand the claim scope to read on something that cannot be true and held it as lack of enabling disclosure and invalidated it.”

    I respectfully disagree this is what occurred here. The “formed indirectly or directly on” interpretation was part of BU’s preferred construction which they fought for and won. Looking back through the case history I don’t see BU ever argue the embodiment is outside of the claim’s scope or that the claim’s scope had been construed incorrectly. The two main BU arguments I see are A) That in a claim with multiple element sets it isn’t necessary to show every permutation and since 5/6 of the possible permutations were clearly enabled that was sufficient to satisfy 112(a) requirements; and B) the embodiment is enabled citing evidence published after the filing date showing the embodiment was not fundamentally impossible.
    The Court disagreed essentially A) 112(a) requires full scope to be enabled which includes all permutations; B) just because someone was able to perform the embodiment later doesn’t show that the specification would have enabled POSITA to carry out at time of filing.

    Personally, I don’t think this case is so much an example of activist judges going out of their way to invalidate a patent, but rather serves more as a cautionary tale regarding the practice of aggressively pursuing broad claim scope without considering the consequences. The court specifically noted “that, to some extent, BU created its own enablement problem”, it was BU’s preferred construction of “grown on” and “non-single crystalline buffer layer” that created the 6 permutations (interestingly, if Everlight had won their preferred construction for the latter it looks like it would have prevented the 112(a) issue, not sure how it would have affected infringement). Broad claims are nice, but always remember the broader the scope more difficult it becomes to ensure that the entire scope is enabled by the disclosure.
    (sorry if this double posts, first time I clicked submit I got an error)

  8. Mrs. Denise E. Perez August 8, 2018 7:19 pm

    Conversely against inventors as well; especially if a woman as I am and have experienced. The game playing exists by practitioners themselves so I have come to understand the brutal NATURE of this game.

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