Docket No. 2016-2576 to 2581, 2016-2591 to 2595
PROST, MOORE, REYNA
July 25, 2018
Brief summary: DC denial of Everlight’s motion for JMOL that is invalid for lack of enablement (§ 112) reversed (the FC panel explaining it “can safely conclude that the specification does not enable what the experts agree is physically impossible”).
Summary: Everlight appealed jury/DC finding it infringed (directly, induced, willful) claim 19 of BU’s US 5,686,738 relating to light-emitting diodes (LEDs) and denial of its motion for JMOL that is invalid for lack of enablement (§ 112). The FC panel explained that “[t]he ‘738 patent relates to the preparation of mono-crystalline GaN [gallium nitride] films via molecular beam epitaxy”, “a process used to fabricate semiconductor layers.” Claim 19 is directed to a “semiconductor device comprising: a substrate” (e.g., silicon), “a non-single crystalline buffer layer”, and “a growth layer grown on the buffer layer”. The DC construed “grown on” such that the “growth layer and buffer layer do not have to be in direct contact; there can be intervening layers” and “non-single crystalline buffer layer” as “a layer of material that is not monocrystalline” (e.g., “polycrystalline”). And BU did “not dispute that ‘growth layer’ includes within its scope a monocrystalline growth layer.” The FC panel explained that “[t]he enablement issue…concerns” one of the six possible “permutations for the relationship between claim 19’s growth layer and buffer layer”, i.e., whether the ‘738 patent enables “a monocrystalline growth layer formed directly on an amorphous buffer layer”. The DC “concluded that the ‘738 patent did not have to enable a device with that arrangement “as long as it enabled a device with a monocrystalline growth layer formed indirectly on an amorphous buffer layer” while noting “[i]t is less clear whether the patent teaches how to grow…directly…with no intervening layers.” The FC panel reviewed the DC’s conclusion on enablement de novo (here, pre-AIA “without ‘undue experimentation’” (Genentech, FC 1997; Plant Genetic Sys., FC 2003) and “the factual underpinnings…for substantial evidence” (Koito, FC 2004; AK Steel, FC 2003 (clear and concvincing evidence required); Sitrick, FC 2008 (“An enablement analysis begins with the disclosure in the specification.”)). The FC panel explained that “Defendants’ expert testified that it is impossible to epitaxially grow a monocrystalline film directly on an amorphous structure” and that it “can safely conclude that the specification does not enable what the experts agree is physically impossible.” The FC panel disagreed with BU “that the ‘738 patent does not teach epitaxy”, finding instead that “[t]he ‘738 patent’s specification is concise…and focuses on epitaxy”, and explained that BU did not direct it “to any specific passage of the specification that purportedly teaches” the direct-layering process (and BU’s expert testimony on this point was “conclusory and therefore inefficient” (MobileMedia, FC 2015)). On the impossibility issue, “BU’s expert testified he had grown a monocrystalline GaN film on an amorphous material and that is was ‘not fundamentally impossible to do so’” but the FC explained that BU did “not even suggest 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” (Enzo, FC 1999) (“Simply observing that it could be done-years after the patent’s effective filing date-bears little on the enablement inquiry.”) The FC panel also explained that while “[t]he scope of the claims must be less than or equal to the scope of the enablement”, it is not saying “that the specification must expressly spell out every possible iteration of every claim” (Genentech, FC 1997 (“a specification need not disclose what is well known in the art”); Nat’l Recovery Techs., FC 1999). “[F]inally,” the FC panel noted, “BU created its own enablement problem” by pursuing a claim construction “that included a purely amorphous layer within the scope” (citing Liebel-Flarsheim, FC 2007). The FC panel therefore reversed the DC’s denial of Everlight’s motion for JMOL and dismissed BU’s cross-appeals.