Trustees of Boston University v. Everlight Electronics Co., No. 16-2576 (Fed. Cir. 2018)Annotate this Case
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 a substrate, an n-type semiconductor layer, and a p-type semiconductor layer. Gallium nitride (GaN) is a semiconductor that emits blue light in LEDs. Fabricating monocrystalline GaN films is difficult because of the lack of available substrates with a matching lattice structure. BU’s 738 patent relates to the preparation of monocrystalline GaN films via molecular beam epitaxy, which addresses the GaN lattice-mismatch problem with a two-step growth process. A jury found that defendants infringed the patent and failed to prove its invalidity. The district court rejected defendants’ argument that the patent is invalid for not meeting the enablement requirement, 35 U.S.C. 112. The Federal Circuit reversed, finding the asserted claim not enabled as a matter of law. The 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 is impossible to epitaxially grow a monocrystalline film directly on an amorphous structure; the specification does not enable what the experts agree is physically impossible.