Boston University previously filed an infringement claim against Everlight Electronics and its U.S. subsidiary and Lite-On Inc. and its subsidiaries alleging infringement of a Boston University (BU) patent. The BU patent (U.S. Patent 5,686,738) describes the preparation of monocrystalline gallium nitride films to fabricate blue LEDs using molecular beam epitaxy. The court found that patent claims included six permutations of how the various layers could be constructed. However, the defendants argued that the claim was not enabled because the specification did not adequately explain one of the six permutations.
The jury found the patent to be valid and ruled that the defendants including Everlight Electronics infringed the BU patent, and, therefore, the District Court denied the Defendants’ motion for judgment. Everlight Electronics and Lite On appealed the ruling to the Federal Circuit Court.
Upon the appeal, the Federal Circuit reversed the District Court decision and held that the claim at issue was invalid due to lack of enablement. In the appeal ruling the Federal Circuit acknowledged the parties’ agreement that five of the six claim permutations were enabled and also recognized that the specification need not “expressly spell out every possible iteration of every claim.” However, the Federal Circuit held that, “to be enabling, the specification… must teach those skilled in the art how to make and use the full scope of the claimed invention without ‘undue experimentation.’”
The Federal Circuit ruled that the sixth permutation was either impossible or would have required excessive experimentation. Therefore, the Federal Circuit ruled that the claim was invalid due to lack of enablement because enabling five out of six permutations defined in the claims was not sufficient.