July 30, 2018

Be Careful What You Wish For: Broad Claim Construction Sought by Patent Owner Results in Invalidity for Lack of Enablement

In Trustees of Boston University v Everlight Electronics Co., Ltd., [2016-2576, 2016-2577, 2016-2578, 2016-2579, 2016-2580, 2016-2581, 2016-2582, 2016-2591, 2016-2592, 2016-2593, 2016-2594, 2016-2595] (July 25, 2018), the Federal Circuit reversed the district court’s judgment that U.S. Patent No. 5,686,738 was not invalid, because the ‘738 patent was not enabled as a matter of law.

The claim was directed to a semiconductor device comprising “a non-single crystalline buffer layer” and “a growth layer grown on the buffer layer.”  “Grown on” was construed to mean “formed indirectly or directly above” meaning that the growth layer and the buffer layer do not have to be in direct contact; there can be intervening layers between them.  “[A] non-single crystalline buffer layer” was construed to mean “a layer of material that is not monocrystalline, namely, [1] polycrystalline, [2] amorphous or [3] a mixture of polycrystalline and amorphous.  As a result of these constructions, the claim covered six possible configurations.  The enablement issue concerned one of these permutations — a monocrystalline growth layer formed directly on an amorphous buffer layer.

The district court 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.  The district court questioned whether this particular permutation was taught, but nonetheless found that a reasonable jury could have concluded that Defendants failed to show that claims were not enabled.

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.  To 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.  Defendants’ expert testified that it is impossible to epitaxially grow a monocrystalline film directly on an amorphous structure, and Boston University’s expert agreed.  The Federal Circuit further noted that Boston University could not identify any portion of the specification teaching the particular permutation, and relied only on conclusory expert testimony.

While there was testimony that the a crystalline layer could be grown on an amorphous layer, the Federal Circuit instructed that the inquiry is not whether it was, or is, possible to make the full scope of the claimed device.  Instead, 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. When viewed in this light, Boston University’s evidence was not probative of enablement.  Simply observing that it could be done — years after the patent’s effective filing date — bears little on the enablement inquiry.

Lastly, Boston University argued that enabling five of the six permutations was sufficient, which the Federal Circuit rejected, noting that precedent makes clear that the specification must enable the full scope of the claimed invention.  This is not to say that the specification must expressly spell out every possible iteration of every claim, but any gapfilling is merely supplemental — it cannot substitute for a basic enabling disclosure.

The Federal Circuit noted that Boston University created its own enablement problem by seeking a construction of “a non-single crystalline buffer layer” that included a purely amorphous layer.  If it wanted to claim this, the Federal Circuit said, it should have taught it.

The Federal Circuit reversed the district court.