Trustees of Boston University v. Everlight Electronics Co. (Fed. Cir. July 25, 2018): Specification Must Enable the Full Scope of the Claimed Invention

October 3, 2018

Plaintiff-cross-appellant Trustees of Boston University (“BU”) sued defendants-appellants Everlight Electronics Co., Ltd. and others for infringing BU’s U.S. Patent No. 5,686,738. A jury found that Defendants infringed the ’738 patent and failed to prove the patent’s invalidity.

Defendants then renewed their motion for JMOL that the ’738 patent was invalid for not meeting the enablement requirement. The district court denied Defendants’ motion, and Defendants appealed that denial. The Federal Circuit (“the Court”) reversed because the asserted claim of the ’738 patent was not enabled.

The ’738 patent relates to the preparation of monocrystalline GaN films via molecular beam epitaxy. These films are used in creating blue light LEDs.Claim 19 was the only claim tried to the jury. It reads:

A semiconductor device comprising:

      a substrate, said substrate consisting of a material

selected from the group consisting of (100)

silicon, (111) silicon, (0001) sapphire, (11–20)

sapphire, (1–102) sapphire, (111) gallium aresenide,

(100) gallium aresenide, magnesium oxide,

zinc oxide and silicon carbide;

      a non-single crystalline buffer layer, comprising a

first material grown on said substrate, the first material

consisting essentially of gallium nitride; and

      a growth layer grown on the buffer layer, the

growth layer comprising gallium nitride and a

first dopant material.

The Federal Circuit noted the following facts. The district court construed two terms. First, it construed “grown on” to mean “formed indirectly or directly above.” Under this construction, claim 19’s growth layer and buffer layer do not have to be in direct contact; there can be intervening layers between them. Second, the district court construed “a non-single crystalline buffer layer” to mean “a layer of material that is not monocrystalline, namely, polycrystalline, amorphous or a mixture of polycrystalline and amorphous, located between the first substrate and the first growth layer.” The parties’ disagreement, and the Federal Circuit’s opinion, concerned construction of the term “grown on.”

The constructions raise six permutations for the relationship between claim 19’s growth layer and buffer layer: (1) monocrystalline growth layer formed indirectly on a polycrystalline buffer layer; (2) monocrystalline growth layer formed indirectly on a buffer layer that is a mixture of polycrystalline and amorphous; (3) monocrystalline growth layer formed indirectly on an amorphous buffer layer; (4) monocrystalline growth layer formed directly on a polycrystalline buffer layer; (5) monocrystalline growth layer formed directly on a buffer layer that is a mixture of polycrystalline and amorphous; and (6) monocrystalline growth layer formed directly on an amorphous buffer layer. The enablement issue in this case concerns this sixth permutation. The issue was that the claim construction of “non-single crystalline buffer layer” included the possibility of the buffer layer being “amorphous.”

Following the trial, a jury determined that Defendants directly infringed claim 19, and also found inducement to infringe and willful infringement. Defendants renewed their motion for JMOL that claim 19 of the ’738 patent was invalid for lack of enablement. The district court denied

the motion. It concluded that the ’738 patent did not have to enable a device with a monocrystalline growth layer formed directly on an amorphous buffer layer, as long as it enabled a device with a monocrystalline growth layer formed indirectly on an amorphous buffer layer.  Defendants appealed the denial of their JMOL on enablement, among other issues.

On appeal, Defendants contended that claim 19 was 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. Defendants’ expert testified that it was impossible to epitaxially grow a monocrystalline film directly on an amorphous structure. Defendants also argued that the specification described only epitaxy. BU disagreed and relied upon multiple arguments and testimonies, e.g., that others have successfully grown a monocrystalline layer directly on an amorphous buffer layer.  BU’s expert testified that he had grown a monocrystalline GaN film on an amorphous material and that it was “not fundamentally impossible” to do so. The district court acknowledged that this research occurred after the ’738 patent issued but admitted the evidence solely to rebut the argument that such growth was impossible by any means

The Court focused on one of six possible variations under the claim construction the patent owner had sought.  The Court concluded that the evidence did not support the conclusion that a skilled artisan could make that variation without undue experimentation. The evidence supporting enablement of the sixth permutation was weak: the only technique described in the patent, epitaxy, does not work to grow a growth layer directly on an amorphous structure.  BU tried to argue that the patent does not teach epitaxy[1], but the court was not convinces. BU argued that what the patent taught could not be epitaxy “because epitaxy involves a crystalline layer on top of another crystalline layer,” and an amorphous layer is not “crystalline.”   The Court concluded that “regardless of whether one called it epitaxy or not, the problem was that BU couldn’t identify anywhere in the specification that taught how to grow a monocrystalline layer directly on an amorphous layer.  Nor was the expert testimony sufficient as it consisted of conclusory statements.”

The Court pointed out that the inquiry is not whether it was, or is, possible to make the full scope of the claimed device - a scope that here covers a monocrystalline growth layer directly on an amorphous layer. The 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.

Viewed in this light, the Court found BU’s evidence not probative of enablement. “BU did not even suggest that these results were accomplished by following the specification’s teachings, or that achieving these results was within an ordinary artisan’s 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.”

BU lastly argued that the ’738 patent does not need to enable the claimed device with a monocrystalline growth layer directly on an amorphous buffer layer. BU noted that there was no dispute as to enablement of five out of the six referenced permutations and argued “[t]hat is sufficient.”

The Court disagreed. “Our precedents make clear that the specification must enable the full scope of the claimed invention.” The Court noted that “[t]his is not to say that the specification must expressly spell out every possible iteration of every claim. For instance, ‘a specification need not disclose what is well known in the art.”’ The Court stated that “knowledge of the prior art and routine experimentation can often fill gaps, interpolate between embodiments, and perhaps even extrapolate beyond the disclosed embodiments, depending upon the predictability of the art. But this gap filling is merely supplemental; it cannot substitute for a basic enabling disclosure.” 

Here, the Court agreed that “epitaxially growing a monocrystalline layer directly on an amorphous layer” would have required undue experimentation and the specification contained no teachings purporting to show such growth could be achieved according to the invention.

“In sum, Defendants showed that epitaxially growing a monocrystalline layer directly on an amorphous layer would have required undue experimentation - indeed, that it is impossible. Defendants also note the absence of any non-epitaxial teaching in the specification of how to

do this. For its part, BU does not specifically direct us to any such teaching in the specification. Instead, it cites conclusory or unsupportive expert testimony and evidence that some persons were able to grow a monocrystalline layer directly on an amorphous layer—years after the

patent’s effective filing date, via methods BU does not suggest were taught by the specification or otherwise within an ordinary artisan’s skill as of that filing date. Although we review the evidence in the light most favorable to BU, the jury’s verdict on enablement here cannot be

sustained. We conclude that claim 19 is not enabled as a matter of law and therefore reverse the district court’s denial of Defendants’ motion for JMOL on this issue.”

In this case, the patentee pressed for a broad claim construction that led to BU’s defeat on appeal for lack of enablement of the full scope of the claim. At the end of the opinion, the Court concluded that BU created its own enablement problem. BU sought a construction of “a non-single crystalline buffer layer” that included a purely amorphous layer. 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. “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.”

Thus, patentees should be careful when they fight for broader claims, as they may then face an enablement challenge for the full scope of the claims.  In this regard, potential permutations covered by the broad claim scope should be reviewed in view of the description of their specification.  The Court reminded patentees in this decision that their proposed claim construction in Markman proceedings may have unintended consequences.

Trustees of Boston University v. Everlight Electronics Co., 896 F.3d 1357 (Fed. Cir. July 25, 2018).

 

[1] Epitaxy is a process used to fabricate semiconductor layers. During epitaxy, molecules of a semiconductor material are deposited on a substrate, and the deposited layer attempts to mimic the substrate’s crystal lattice structure as the layer grows. Ideally, the lattice structures of the substrate and the deposited semiconductor layer will be the same.