Thursday, July 26, 2018

Boston University loses LED case to Everlight at CAFC for lack of enablement

In finding against Boston University ["BU"], the CAFC included a "be careful what you wish for" admonition:

We note finally that, to some extent, BU created its
own enablement problem
. BU sought a construction of “a
non-single crystalline buffer layer” that included a purely
amorphous layer. See J.A. 253–54 (reciting BU’s proposed
construction as “a layer of material that is not monocrystalline,
located between the first substrate and the first
growth layer” (emphasis added)). Having obtained a
claim construction that included a purely amorphous
layer within the scope of the claim, BU then needed to
successfully defend against an enablement challenge as to
the claim’s full scope. See Liebel-Flarsheim, 481 F.3d at
1380. Put differently: if BU wanted to exclude others
from what it regarded as its invention, its patent needed
to teach the public how to make and use that invention.
That is “part of the quid pro quo of the patent bargain.”
Sitrick, 516 F.3d at 999 (quoting AK Steel, 344 F.3d at

The discussion of enablement by the CAFC is lengthy, and interesting:

A patent’s specification must “contain a written description
of the invention, and of the manner and process
of making and using it, in such full, clear, concise, and
exact terms as to enable any person skilled in the art to
which it pertains . . . to make and use the same.” 35
U.S.C. § 112 para. 1 (2006).3 Whether a claim satisfies
§ 112’s enablement requirement is a question of law we
review de novo; however, in the context of a jury trial, we
review the factual underpinnings of enablement for
substantial evidence. See Koito Mfg. Co. v. Turn–Key–
Tech, LLC, 381 F.3d 1142, 1149 (Fed. Cir. 2004). Facts
supporting an invalidity conclusion must be shown by
clear and convincing evidence. AK Steel Corp. v. Sollac &
Ugine, 344 F.3d 1234, 1238–39 (Fed. Cir. 2003).

“[T]o be enabling, the specification of a patent must
teach those skilled in the art how to make and use the full
scope of the claimed invention without ‘undue experimentation.’”
Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d
1361, 1365 (Fed. Cir. 1997) (alteration in original) (quoting
In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993)).
Enablement is determined as of the patent’s effective
filing date. E.g., Plant Genetic Sys., N.V. v. DeKalb
Genetics Corp., 315 F.3d 1335, 1339 (Fed. Cir. 2003).4

Defendants contend that claim 19 is not enabled because
the ’738 patent’s specification does not teach one of
skill in the art how to make the claimed semiconductor
device with a monocrystalline growth layer grown directly
on an amorphous buffer layer.

In fact, Defendants’ expert testified that it is impossible
to epitaxially grow a monocrystalline film directly on
an amorphous structure. See J.A. 2311–12. BU’s expert
agreed. J.A. 2274; see J.A. 17–18 (district court acknowledging
the experts’ agreement on this issue). We can
safely conclude that the specification does not enable
what the experts agree is physically impossible.

Defendants also argue that the specification teaches
only epitaxy. BU disagrees and contends that the ’738
patent does not teach epitaxy. Initially, BU’s contention
is difficult to credit.
The ’738 patent’s specification is
concise—just over four columns of text—and focuses on
epitaxy. Indeed, it is saturated with the word “epitaxy” or
variants thereof. ’738 patent Abstract (“This invention
relates to a method of preparing highly insulating GaN
single crystal films in a molecular beam epitaxial growth
chamber.”), col. 1 ll. 12–15 (“This invention relates to a
method of preparing monocrystalline gallium nitride thin
films by electron cyclotron resonance microwave plasma
assisted molecular beam epitaxy (ECR-assisted MBE).”),
col. 2 ll. 9–11 (“The method accorrding [sic] to this invention
for preparing highly insulating near-intrinsic monocrystalline
GaN films uses ECR-assisted MBE.”), col. 2 ll.
14–17 (“A film is epitaxially grown in a two step process
. . . .”), col. 3 ll. 38–39 (“The ECR-MBE system used in this
invention is shown in FIG. 1.”).
BU nonetheless explains that the ’738 patent does not
teach epitaxy because epitaxy involves a crystalline layer
on top of another crystalline layer. Therefore, according
to BU, a crystalline layer on top of an amorphous structure
is not “epitaxy.” See Cross-Appellant’s Br. 58 (citing
its expert’s testimony at J.A. 2382–83). The district court
relied on this argument and related testimony in denying
JMOL. J.A. 18–19 (recounting BU’s expert’s testimony
that the ’738 patent does not teach epitaxy—“strictly
speaking”). But this semantic argument does not help us
determine where the specification teaches growing a
monocrystalline layer directly on an amorphous layer—if
not by “epitaxy,” by any other name. See Sitrick v.
Dreamworks, LLC, 516 F.3d 993, 1000 (Fed. Cir. 2008)
(“An enablement analysis begins with the disclosure in
the specification.”).

Nor does BU direct us to any specific passage of the
specification that purportedly teaches how to grow a
monocrystalline layer directly on an amorphous layer. It
instead relies on its expert’s testimony concerning the
specification. For example, BU cites testimony that by
following the “boundaries within the teachings of the ’738
patent, you could realize with not much experimentation
. . . the amorphous buffer layer, or some sublayer of the
amorphous buffer layer, and then a monocrystalline

gallium nitride [layer] on top.” Cross-Appellant’s Br. 59
(alterations in original) (quoting J.A. 2269). This testimony
is entirely conclusory and therefore insufficient.
See, e.g., MobileMedia Ideas LLC v. Apple Inc., 780 F.3d
1159, 1172 (Fed. Cir. 2015) (“Conclusory statements by an
expert . . . are insufficient to sustain a jury’s verdict.”).
The same goes for BU’s expert’s testimony that the “elements
of the claim itself teach[] how to do that accurately.”
Cross-Appellant’s Br. 59 (quoting J.A. 2265).
BU also relies on testimony of the ’738 patent’s inventor
concerning “lateral epitaxial growth.”5 Id. (citing
J.A. 4063–64, 4066–67). BU characterizes this testimony
and this phenomenon as demonstrating that the ’738
patent’s buffer layer can be purely amorphous with a
monocrystalline GaN growth layer on top. BU glosses
over key details in this testimony. The inventor described
“lateral epitaxial overgrowth” as a phenomenon whereby
a crystal grows faster in the lateral direction than in the
vertical direction. J.A. 4062. But he described this phenomenon
in the context of a monocrystalline layer growing
on a buffer layer that had at least partially
crystallized. J.A. 4063–64. In BU’s relied-upon testimony,
the inventor never described a monocrystalline growth
layer on an amorphous buffer layer without also mentioning
some level of crystallinity in the buffer layer. See J.A.
4063–64, 4066–67.

**Separately, from Blawgsearch on 26 July 2018:


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