Trs. of Bos. Univ. v. Everlight Elecs. Co.

• Decision Date: 25 July 2018
• Docket Number: 2016-2594,2016-2580,2016-2593,2016-2592,2016-2578,2016-2595,2016-2581,2016-2576,2016-2582,2016-2591,2016-2579,2016-2577
• Parties: TRUSTEES OF BOSTON UNIVERSITY, Plaintiff-Cross-Appellant v. EVERLIGHT ELECTRONICS CO., LTD., Everlight Americas, Inc., Epistar Corporation, Lite-On Inc., Lite-On Service USA, Inc., Lite-On Technology Corporation, Lite-On Trading USA, Inc., Defendants-Appellants
• Court: U.S. Court of Appeals — Federal Circuit

896 F.3d 1357

TRUSTEES OF BOSTON UNIVERSITY, Plaintiff-Cross-Appellant

v.EVERLIGHT ELECTRONICS CO., LTD., Everlight Americas, Inc., Epistar Corporation, Lite-On Inc., Lite-On Service USA, Inc., Lite-On Technology Corporation, Lite-On Trading USA, Inc., Defendants-Appellants

2016-2576

2016-2577

2016-2578

2016-2579

2016-2580

2016-2581

2016-2582

2016-2591

2016-2592

2016-2593

2016-2594

2016-2595

United States Court of Appeals, Federal Circuit.

Decided: July 25, 2018

Edward R. Reines, Weil, Gotshal & Manges LLP, Redwood Shores, CA, argued for plaintiff-cross-appellant. Also represented by Erik Paul Belt, McCarter & English, LLP, Boston, MA; Alfonso Chan, Russell J. Depalma, Christopher Liimatainen Evans, Michael W. Shore, Shore Chan DePumpo LLP, Dallas, TX.

Kevin Russell, Goldstein & Russell, P.C., Bethesda, MD, argued for all defendants-appellants. Defendants-appellants Everlight Electronics Co., Ltd., Everlight Americas, Inc., Lite-On Inc., Lite-On Service USA, Inc., Lite-On Technology Corporation, Lite-On Trading USA, Inc. also represented by Charles Hardy Davis, Thomas Goldstein.

Richard C. Vasquez, Vasquez Benisek & Lindgren, LLP, Lafayette, CA, for defendant-appellant Epistar Corporation. Also represented by Eric W. Benisek, Jeffrey T. Lindgren, Robert McArthur, Stephen C. Steinberg.

Before Prost, Chief Judge, Moore and Reyna, Circuit Judges.

Prost, Chief Judge.

Plaintiff-cross-appellant Trustees of Boston University ("BU") sued defendants-appellants Everlight Electronics Co., Ltd. and Everlight Americas, Inc. (together, "Everlight"); Epistar Corp. ("Epistar"); Lite-On Inc., Lite-On Service USA, Inc., Lite-On Technology Corp., and Lite-On Trading USA, Inc. (together, "Lite-On") (collectively, "Defendants") for infringing BU’s U.S. Patent No. 5,686,738 (the " ’738 patent"). A jury found that Defendants infringed the ’738 patent and failed to prove the patent’s invalidity.

Defendants then renewed their motion for judgment as a matter of law ("JMOL") that the ’738 patent is invalid for not meeting the enablement requirement of 35 U.S.C. § 112. The district court denied Defendants’ motion, and Defendants appeal that denial. BU cross-appeals on other issues.

We reverse because the asserted claim of the ’738 patent is not enabled as a matter of law. We dismiss BU’s cross-appeal as moot.

BACKGROUND

I

Light-emitting diodes ("LEDs") are semiconductor devices that emit light when an electric current is applied. They provide illumination in products such as printers, phones, and televisions. LEDs typically consist of multiple layers, including a substrate, an n-type semiconductor layer, and a p-type semiconductor layer.¹

These layers are solid-state materials, which generally have one of three types of crystal lattice structures: (1) monocrystalline, a single-crystalline structure with long-range order; (2) polycrystalline, where multiple smaller crystal structures with short-range order combine to form a single structure that lacks long-range order; and (3) a mixture of polycrystalline and amorphous regions—i.e., non-crystal regions with inconsistent spacing among atoms. Solid-state materials can also just be amorphous.

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; otherwise, the deposited molecules will strain against their own structure when attempting to mimic the substrate’s structure, creating a problem known as lattice mismatch. Such mismatch introduces stress into the growing layer and can create defects in that layer.

Gallium nitride ("GaN") is a semiconductor that emits blue light in LEDs. Fabricating monocrystalline GaN layers (or "films") has proved difficult because of the lack of available substrates with a matching lattice structure. For example, although sapphire has properties that make it a good substrate candidate, GaN films grown directly on sapphire were defective because of the differences in the materials’ lattice structures.

The ’738 patent relates to the preparation of monocrystalline GaN films via molecular beam epitaxy. ’738 patent col. 1 ll. 12–15. It addresses the GaN lattice-mismatch problem with a two-step growth process. See id. at col. 2 ll. 14–17 ("A film is epitaxially grown in a two step process comprising a low temperature nucleation step and a high temperature growth step."). In the first step, the substrate is exposed to gallium and nitrogen at a temperature between 100 °C and 400 °C. Id. at col. 2 ll. 17–19; see id. at col. 4 ll. 31–34. An amorphous film of GaN—the "buffer layer"—grows on the substrate as GaN is deposited. Id. at col. 2 ll. 40–41, col. 4 ll. 31–36.

In the second step, temperature is raised to between 600 °C and 900 °C in order to crystallize the amorphous buffer layer. Id. at col. 2 ll. 42–43, col. 4 ll. 34–36 ("As the temperature increases to 600 °C[ ], the amorphous film crystallizes."). Monocrystalline GaN can then be grown on the crystallized buffer layer. Id. at col. 4 ll. 36–37 ("Any further growth takes place on the crystallized GaN buffer layer."), col. 4 ll. 47–49 ("The growth layer of GaN ‘recognizes’ the GaN buffer layer ... on which it can grow without defects."); see id. at col. 2 ll. 41–45 ("The amorphous film can be crystallized by heating at 600°–900° C[ ] .... Subsequent treatment at higher temperatures, preferably 600°–900° C[ ], results in the epitaxial growth of monocrystalline near-intrinsic GaN film."), col. 4 ll. 25–27 (explaining that, after "ensur[ing] that the GaN buffer layer had crystallized," the "Ga shutter was opened once again to grow the GaN monocrystalline film").

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.

’738 patent col. 7 l. 42–col. 8 l. 9 (key limitations emphasized).

II

The district court construed two terms relevant here. First, it construed "grown on" to mean "formed indirectly or directly above." J.A. 246. 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, [1] polycrystalline, [2] amorphous or [3] a mixture of polycrystalline and amorphous, located between the first substrate and the first growth layer."² J.A. 253–54 (numbers added for clarity). And, while the district court did not specifically construe "growth layer," BU does not dispute that "growth layer" includes within its scope a monocrystalline growth layer.

Assuming a monocrystalline growth layer, together these 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—a monocrystalline growth layer formed directly on an amorphous buffer layer.

Following a trial, a jury determined that Defendants directly infringed claim 19; Epistar induced Everlight and Lite-On to infringe; Epistar and Everlight willfully infringed; and Defendants did not prove the ’738 patent ’s invalidity. J.A. 333–35.

Defendants renewed their motion for JMOL that claim 19 of the ’738 patent is invalid under § 112 for lack of enablement. J.A. 2455, 2461. 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. J.A. 14.

The district court also recounted the evidence presented on the issue. After doing so, the court noted that "[i]t is less clear whether the patent teaches how to grow a monocrystalline GaN layer directly on an amorphous buffer layer, with no intervening layers." J.A. 20. Yet the court ultimately found that even if the ’738 patent had to enable such a device, a reasonable jury could have concluded that Defendants failed to show that claim 19 was not enabled.

The district court entered final judgment as to Lite-On. As to Epistar and Everlight, the court entered a judgment that was final except for a new trial on damages. Defendants appeal the denial of their JMOL on enablement, among other issues. BU cross-appeals the district court’s denial of the full extent of attorneys’ fees requested under 35 U.S.C. § 285, its denial of enhanced damages under 35 U.S.C. § 284, and its calculation of pre-judgment interest.

We have jurisdiction under 28 U.S.C. §§ 1295(a)(1) and 1292(c)(2). See Robert Bosch, LLC v. Pylon Mfg. Corp. , 719 F.3d 1305, 1320 (Fed. Cir. 2013) (en banc).

DISCUSSION...