{"id":2129,"date":"2018-07-25T21:38:23","date_gmt":"2018-07-26T01:38:23","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=2129"},"modified":"2018-07-28T22:34:11","modified_gmt":"2018-07-29T02:34:11","slug":"be-careful-what-you-wish-for-broad-claim-construction-sought-by-patent-owner-results-in-invalidity-for-lack-of-enablement","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=2129","title":{"rendered":"Be Careful What You Wish For: Broad Claim Construction Sought by Patent Owner Results in Invalidity for Lack of Enablement"},"content":{"rendered":"

In Trustees of Boston University v Everlight Electronics Co., Ltd.<\/a>, [2016-2576, 2016-2577, 2016-2578, 2016-2579, 2016-2580,\u00a02016-2581, 2016-2582, 2016-2591, 2016-2592, 2016-2593,\u00a02016-2594, 2016-2595] (July 25, 2018), the Federal Circuit reversed the district court’s judgment that\u00a0U.S. Patent No.\u00a05,686,738 was not invalid, because the ‘738 patent was not enabled as a matter of law.<\/p>\n

The claim was directed to a semiconductor device comprising “a non-single crystalline buffer layer” and “a growth layer grown on the buffer layer.”\u00a0\u00a0\u201cGrown on\u201d was construed to mean \u201cformed indirectly\u00a0or directly above\u201d meaning that the growth layer and the buffer layer do not have to be\u00a0in direct contact; there can be intervening layers between\u00a0them.\u00a0\u00a0\u201c[A] non-single\u00a0crystalline buffer layer\u201d was construed to mean \u201ca layer of material that\u00a0is not monocrystalline, namely, [1] polycrystalline,\u00a0[2] amorphous or [3] a mixture of polycrystalline and\u00a0amorphous.\u00a0 As a result of these constructions, the claim covered six possible configurations.\u00a0\u00a0The enablement issue concerned one of these\u00a0permutations \u2014 a monocrystalline growth layer\u00a0formed directly on an amorphous buffer layer.<\/p>\n

The district court\u00a0It concluded that the \u2019738 patent did not have\u00a0to enable a device with a monocrystalline growth layer\u00a0formed directly on an amorphous buffer layer, as long as\u00a0it enabled a device with a monocrystalline growth layer\u00a0formed indirectly on an amorphous buffer layer.\u00a0 The district court questioned whether this particular permutation was taught, but nonetheless found that\u00a0a reasonable jury could have concluded\u00a0that Defendants failed to show that claims were\u00a0not enabled.<\/p>\n

A patent\u2019s specification must contain a written description\u00a0of the invention, and of the manner and process\u00a0of making and using it, in such full, clear, concise, and\u00a0exact terms as to enable any person skilled in the art to\u00a0which it pertains to make and use the same.\u00a0\u00a0To be enabling, the specification of a patent must\u00a0teach those skilled in the art how to make and use the full\u00a0scope of the claimed invention without \u2018undue experimentation.\u00a0\u00a0Defendants\u2019 expert testified that it is impossible\u00a0to epitaxially grow a monocrystalline film directly on\u00a0an amorphous structure, and Boston University’s expert\u00a0agreed.\u00a0 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.<\/p>\n

While there was testimony that the a crystalline layer could be grown on an amorphous layer,\u00a0the Federal Circuit instructed that the inquiry is not whether it was, or is, possible\u00a0to make the full scope of the claimed device.\u00a0 Instead, the inquiry is whether the patent\u2019s\u00a0specification taught one of skill in the art how to make\u00a0such a device without undue experimentation as of the\u00a0patent\u2019s effective filing date. When viewed in this light, Boston University’s evidence was not probative of enablement.\u00a0\u00a0Simply observing that it\u00a0could be done\u2014years after the patent\u2019s effective filing\u00a0date\u2014bears little on the enablement inquiry.<\/p>\n

Lastly, Boston University argued that enabling five of the six permutations was sufficient, which the Federal Circuit rejected, noting that\u00a0precedent\u00a0makes clear that the specification must enable the full
\nscope of the claimed invention.\u00a0\u00a0This is not to say that the specification must expressly\u00a0spell out every possible iteration of every claim.\u00a0\u00a0But any gapfilling\u00a0is merely supplemental; it cannot substitute for a\u00a0basic enabling disclosure.<\/p>\n

The Federal Circuit noted that Boston University created its own enablement problem — it\u00a0sought a construction of \u201ca\u00a0non-single crystalline buffer layer\u201d that included a purely\u00a0amorphous layer. If it wanted to claim this, the Federal Circuit said, it should have taught it.<\/p>\n

The Federal Circuit reversed the district court.<\/p>\n","protected":false},"excerpt":{"rendered":"

In Trustees of Boston University v Everlight Electronics Co., Ltd., [2016-2576, 2016-2577, 2016-2578, 2016-2579, 2016-2580,\u00a02016-2581, 2016-2582, 2016-2591, 2016-2592, 2016-2593,\u00a02016-2594, 2016-2595] (July 25, 2018), the Federal Circuit reversed the district court’s judgment that\u00a0U.S. Patent No.\u00a05,686,738 was not invalid, because the ‘738 … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[28],"tags":[],"class_list":["post-2129","post","type-post","status-publish","format-standard","hentry","category-enablement"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2129","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=2129"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2129\/revisions"}],"predecessor-version":[{"id":2130,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2129\/revisions\/2130"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=2129"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=2129"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=2129"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}