Trustees of Boston University v. Everlight Electronics Co. , 896 F.3d 1357 ( 2018 )

United States Court of Appeals
for the Federal Circuit
______________________
TRUSTEES OF BOSTON UNIVERSITY,
Plaintiff-Cross-Appellant
v.
EVERLIGHT ELECTRONICS CO., LTD.,
EVERLIGHT AMERICAS, INC., EPISTAR
CORPORATION, LITE-ON INC., LITE-ON SERVICE
USA, INC., LITE-ON TECHNOLOGY
CORPORATION, LITE-ON TRADING USA, INC.,
Defendants-Appellants
______________________
2016-2576, 2016-2577, 2016-2578, 2016-2579, 2016-2580,
2016-2581, 2016-2582, 2016-2591, 2016-2592, 2016-2593,
2016-2594, 2016-2595
______________________
Appeals from the United States District Court for the
District of Massachusetts in Nos. 1:12-cv-11935-PBS,
1:12-cv-12326-PBS, 1:12-cv-12330-PBS, Judge Patti B.
Saris.
______________________
Decided: July 25, 2018
______________________
EDWARD R. REINES, Weil, Gotshal & Manges LLP,
Redwood Shores, CA, argued for plaintiff-cross-appellant.
Also represented by ERIK PAUL BELT, McCarter & Eng-
lish, LLP, Boston, MA; ALFONSO CHAN, RUSSELL J.
2 TRS. OF BOSTON UNIV. v. EVERLIGHT ELECS. CO.
DEPALMA, CHRISTOPHER LIIMATAINEN EVANS, MICHAEL W.
SHORE, Shore Chan DePumpo LLP, Dallas, TX.
KEVIN RUSSELL, Goldstein & Russell, P.C., Bethesda,
MD, argued for all defendants-appellants. Defendants-
appellants Everlight Electronics Co., Ltd., Everlight
Americas, Inc., Lite-On Inc., Lite-On Service USA, Inc.,
Lite-On Technology Corporation, Lite-On Trading USA,
Inc. also represented by CHARLES HARDY DAVIS, THOMAS
GOLDSTEIN.
RICHARD C. VASQUEZ, Vasquez Benisek & Lindgren,
LLP, Lafayette, CA, for defendant-appellant Epistar
Corporation. Also represented by ERIC W. BENISEK,
JEFFREY T. LINDGREN, ROBERT MCARTHUR, STEPHEN C.
STEINBERG.
______________________
Before PROST, Chief Judge, MOORE and REYNA,
Circuit Judges.
PROST, Chief Judge.
Plaintiff-cross-appellant Trustees of Boston Universi-
ty (“BU”) sued defendants-appellants Everlight Electron-
ics Co., Ltd. and Everlight Americas, Inc. (together,
“Everlight”); Epistar Corp. (“Epistar”); Lite-On Inc., Lite-
On Service USA, Inc., Lite-On Technology Corp., and Lite-
On Trading USA, Inc. (together, “Lite-On”) (collectively,
“Defendants”) for infringing BU’s U.S. Patent No.
5,686,738 (the “’738 patent”). A jury found that Defend-
ants infringed the ’738 patent and failed to prove the
patent’s invalidity.
Defendants then renewed their motion for judgment
as a matter of law (“JMOL”) that the ’738 patent is inva-
lid for not meeting the enablement requirement of 35
U.S.C. § 112. The district court denied Defendants’
TRS. OF BOSTON UNIV. v. EVERLIGHT ELECS. CO. 3
motion, and Defendants appeal that denial. BU cross-
appeals on other issues.
We reverse because the asserted claim of the ’738 pa-
tent is not enabled as a matter of law. We dismiss BU’s
cross-appeal as moot.
BACKGROUND
I
Light-emitting diodes (“LEDs”) are semiconductor de-
vices that emit light when an electric current is applied.
They provide illumination in products such as printers,
phones, and televisions. LEDs typically consist of multi-
ple layers, including a substrate, an n-type semiconductor
layer, and a p-type semiconductor layer. 1
These layers are solid-state materials, which general-
ly have one of three types of crystal lattice structures:
(1) monocrystalline, a single-crystalline structure with
long-range order; (2) polycrystalline, where multiple
smaller crystal structures with short-range order combine
to form a single structure that lacks long-range order; and
(3) a mixture of polycrystalline and amorphous regions—
i.e., non-crystal regions with inconsistent spacing among
atoms. Solid-state materials can also just be amorphous.
Epitaxy is a process used to fabricate semiconductor
layers. During epitaxy, molecules of a semiconductor
material are deposited on a substrate, and the deposited
layer attempts to mimic the substrate’s crystal lattice
structure as the layer grows. Ideally, the lattice struc-
tures of the substrate and the deposited semiconductor
layer will be the same; otherwise, the deposited molecules
1 The terms “n-type” and “p-type” refer to different
types of impurities added to these layers that affect their
conductivity.
4 TRS. OF BOSTON UNIV. v. EVERLIGHT ELECS. CO.
will strain against their own structure when attempting
to mimic the substrate’s structure, creating a problem
known as lattice mismatch. Such mismatch introduces
stress into the growing layer and can create defects in
that layer.
Gallium nitride (“GaN”) is a semiconductor that emits
blue light in LEDs. Fabricating monocrystalline GaN
layers (or “films”) has proved difficult because of the lack
of available substrates with a matching lattice structure.
For example, although sapphire has properties that make
it a good substrate candidate, GaN films grown directly
on sapphire were defective because of the differences in
the materials’ lattice structures.
The ’738 patent relates to the preparation of mono-
crystalline GaN films via molecular beam epitaxy. ’738
patent col. 1 ll. 12–15. It addresses the GaN lattice-
mismatch problem with a two-step growth process. See
id. at col. 2 ll. 14–17 (“A film is epitaxially grown in a two
step process comprising a low temperature nucleation
step and a high temperature growth step.”). In the first
step, the substrate is exposed to gallium and nitrogen at a
temperature between 100 ºC and 400 ºC. Id. at col. 2
ll. 17–19; see id. at col. 4 ll. 31–34. An amorphous film of
GaN—the “buffer layer”—grows on the substrate as GaN
is deposited. Id. at col. 2 ll. 40–41, col. 4 ll. 31–36.
In the second step, temperature is raised to between
600 ºC and 900 ºC in order to crystallize the amorphous
buffer layer. Id. at col. 2 ll. 42–43, col. 4 ll. 34–36 (“As the
temperature increases to 600º C[], the amorphous film
crystallizes.”). Monocrystalline GaN can then be grown
on the crystallized buffer layer. Id. at col. 4 ll. 36–37
(“Any further growth takes place on the crystallized GaN
buffer layer.”), col. 4 ll. 47–49 (“The growth layer of GaN
‘recognizes’ the GaN buffer layer . . . on which it can grow
without defects.”); see id. at col. 2 ll. 41–45 (“The amor-
phous film can be crystallized by heating at 600º–900º C[]
TRS. OF BOSTON UNIV. v. EVERLIGHT ELECS. CO. 5
. . . . Subsequent treatment at higher temperatures,
preferably 600º–900º C[], results in the epitaxial growth of
monocrystalline near-intrinsic GaN film.”), col. 4 ll. 25–27
(explaining that, after “ensur[ing] that the GaN buffer
layer had crystallized,” the “Ga shutter was opened once
again to grow the GaN monocrystalline film”).
Claim 19 was the only claim tried to the jury. It
reads:
A semiconductor device comprising:
a substrate, said substrate consisting of a materi-
al selected from the group consisting of (100)
silicon, (111) silicon, (0001) sapphire, (11–20)
sapphire, (1–102) sapphire, (111) gallium are-
senide, (100) gallium aresenide, magnesium ox-
ide, zinc oxide and silicon carbide;
a non-single crystalline buffer layer, comprising a
first material grown on said substrate, the first
material consisting essentially of gallium ni-
tride; and
a growth layer grown on the buffer layer, the
growth layer comprising gallium nitride and a
first dopant material.
’738 patent col. 7 l. 42–col. 8 l. 9 (key limitations empha-
sized).
II
The district court construed two terms relevant here.
First, it construed “grown on” to mean “formed indirectly
or directly above.” J.A. 246. Under this construction,
claim 19’s growth layer and buffer layer do not have to be
in direct contact; there can be intervening layers between
them. Second, the district court construed “a non-single
crystalline buffer layer” to mean “a layer of material that
is not monocrystalline, namely, [1] polycrystalline,
[2] amorphous or [3] a mixture of polycrystalline and
6 TRS. OF BOSTON UNIV. v. EVERLIGHT ELECS. CO.
amorphous, located between the first substrate and the
first growth layer.” 2 J.A. 253–54 (numbers added for
clarity). And, while the district court did not specifically
construe “growth layer,” BU does not dispute that “growth
layer” includes within its scope a monocrystalline growth
layer.
Assuming a monocrystalline growth layer, together
these constructions raise six permutations for the rela-
tionship between claim 19’s growth layer and buffer layer:
(1) monocrystalline growth layer formed indirectly on a
polycrystalline buffer layer; (2) monocrystalline growth
layer formed indirectly on a buffer layer that is a mixture
of polycrystalline and amorphous; (3) monocrystalline
growth layer formed indirectly on an amorphous buffer
layer; (4) monocrystalline growth layer formed directly on
a polycrystalline buffer layer; (5) monocrystalline growth
layer formed directly on a buffer layer that is a mixture of
polycrystalline and amorphous; and (6) monocrystalline
growth layer formed directly on an amorphous buffer
layer. The enablement issue in this case concerns this
sixth permutation—a monocrystalline growth layer
formed directly on an amorphous buffer layer.
Following a trial, a jury determined that Defendants
directly infringed claim 19; Epistar induced Everlight and
Lite-On to infringe; Epistar and Everlight willfully in-
2 Neither side challenges the district court’s con-
struction of “a non-single crystalline buffer layer.” And
although Defendants separately challenge the district
court’s construction of “grown on” as improperly extending
to indirect contact, their enablement argument does not
depend on the success of their claim-construction argu-
ment. We therefore assume for purposes of this opinion
that these constructions by the district court are correct.
TRS. OF BOSTON UNIV. v. EVERLIGHT ELECS. CO. 7
fringed; and Defendants did not prove the ’738 patent’s
invalidity. J.A. 333–35.
Defendants renewed their motion for JMOL that
claim 19 of the ’738 patent is invalid under § 112 for lack
of enablement. J.A. 2455, 2461. The district court denied
the motion. It 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. J.A. 14.
The district court also recounted the evidence pre-
sented on the issue. After doing so, the court noted that
“[i]t is less clear whether the patent teaches how to grow
a monocrystalline GaN layer directly on an amorphous
buffer layer, with no intervening layers.” J.A. 20. Yet the
court ultimately found that even if the ’738 patent had to
enable such a device, a reasonable jury could have con-
cluded that Defendants failed to show that claim 19 was
not enabled.
The district court entered final judgment as to Lite-
On. As to Epistar and Everlight, the court entered a
judgment that was final except for a new trial on damag-
es. Defendants appeal the denial of their JMOL on ena-
blement, among other issues. BU cross-appeals the
district court’s denial of the full extent of attorneys’ fees
requested under 35 U.S.C. § 285, its denial of enhanced
damages under 35 U.S.C. § 284, and its calculation of pre-
judgment interest.
We have jurisdiction under 28 U.S.C. §§ 1295(a)(1)
and 1292(c)(2). See Robert Bosch, LLC v. Pylon Mfg.
Corp., 719 F.3d 1305, 1320 (Fed. Cir. 2013) (en banc).
DISCUSSION
I
We review the denial of a motion for JMOL under the
8 TRS. OF BOSTON UNIV. v. EVERLIGHT ELECS. CO.
regional circuit’s law. LifeNet Health v. LifeCell Corp.,
837 F.3d 1316, 1322 (Fed. Cir. 2016). The First Circuit
reviews JMOL denials and legal decisions made therein
de novo, Mass. Eye & Ear Infirmary v. QLT Photothera-
peutics, Inc., 552 F.3d 47, 57 (1st Cir. 2009), and reverses
only if, viewing the evidence in the light most favorable to
the non-movant, reasonable persons could not have con-
cluded as the jury did, Negron-Rivera v. Rivera-Claudio,
204 F.3d 287, 289–90 (1st Cir. 2000).
A patent’s specification must “contain a written de-
scription 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.” 35
U.S.C. § 112 para. 1 (2006). 3 Whether a claim satisfies
§ 112’s enablement requirement is a question of law we
review de novo; however, in the context of a jury trial, we
review the factual underpinnings of enablement for
substantial evidence. See Koito Mfg. Co. v. Turn–Key–
Tech, LLC, 381 F.3d 1142, 1149 (Fed. Cir. 2004). Facts
supporting an invalidity conclusion must be shown by
clear and convincing evidence. AK Steel Corp. v. Sollac &
Ugine, 344 F.3d 1234, 1238–39 (Fed. Cir. 2003).
“[T]o be enabling, the specification of a patent must
teach those skilled in the art how to make and use the full
3 Paragraph 1 of 35 U.S.C. § 112 was replaced with
newly designated § 112(a) by section 4(c) of the Leahy-
Smith America Invents Act (“AIA”), Pub. L. No. 112–29,
sec. 4(c), 125 Stat. 284, 296 (2011). Section 4(e) of the AIA
applied that change “to any patent application that is
filed on or after” September 16, 2012. Id. sec. 4(e), 125
Stat. at 297. Because the application resulting in the ’738
patent was filed before that date, we refer to the pre-AIA
version of § 112.
TRS. OF BOSTON UNIV. v. EVERLIGHT ELECS. CO. 9
scope of the claimed invention without ‘undue experimen-
tation.’” Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d
1361, 1365 (Fed. Cir. 1997) (alteration in original) (quot-
ing In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993)).
Enablement is determined as of the patent’s effective
filing date. E.g., Plant Genetic Sys., N.V. v. DeKalb
Genetics Corp., 315 F.3d 1335, 1339 (Fed. Cir. 2003). 4
Defendants contend that claim 19 is not enabled be-
cause the ’738 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.
In fact, Defendants’ expert testified that it is impossi-
ble to epitaxially grow a monocrystalline film directly on
an amorphous structure. See J.A. 2311–12. BU’s expert
agreed. J.A. 2274; see J.A. 17–18 (district court acknowl-
edging the experts’ agreement on this issue). We can
safely conclude that the specification does not enable
what the experts agree is physically impossible.
Defendants also argue that the specification teaches
only epitaxy. BU disagrees and contends that the ’738
patent does not teach epitaxy. Initially, BU’s contention
is difficult to credit. The ’738 patent’s specification is
concise—just over four columns of text—and focuses on
epitaxy. Indeed, it is saturated with the word “epitaxy” or
variants thereof. ’738 patent Abstract (“This invention
4 The ’738 patent’s specification references the ap-
plication leading to the patent as a continuation of anoth-
er application, which itself was a continuation of a now-
abandoned application filed March 18, 1991. ’738 patent
col. 1 ll. 4–10. Thus, the ’738 patent’s effective filing date
is March 18, 1991. See 35 U.S.C. § 120; z4 Techs., Inc. v.
Microsoft Corp., 507 F.3d 1340, 1344 (Fed. Cir. 2007).
10 TRS. OF BOSTON UNIV. v. EVERLIGHT ELECS. CO.
relates to a method of preparing highly insulating GaN
single crystal films in a molecular beam epitaxial growth
chamber.”), col. 1 ll. 12–15 (“This invention relates to a
method of preparing monocrystalline gallium nitride thin
films by electron cyclotron resonance microwave plasma
assisted molecular beam epitaxy (ECR-assisted MBE).”),
col. 2 ll. 9–11 (“The method accorrding [sic] to this inven-
tion for preparing highly insulating near-intrinsic mono-
crystalline GaN films uses ECR-assisted MBE.”), col. 2 ll.
14–17 (“A film is epitaxially grown in a two step process
. . . .”), col. 3 ll. 38–39 (“The ECR-MBE system used in this
invention is shown in FIG. 1.”).
BU nonetheless explains that the ’738 patent does not
teach epitaxy because epitaxy involves a crystalline layer
on top of another crystalline layer. Therefore, according
to BU, a crystalline layer on top of an amorphous struc-
ture is not “epitaxy.” See Cross-Appellant’s Br. 58 (citing
its expert’s testimony at J.A. 2382–83). The district court
relied on this argument and related testimony in denying
JMOL. J.A. 18–19 (recounting BU’s expert’s testimony
that the ’738 patent does not teach epitaxy—“strictly
speaking”). But this semantic argument does not help us
determine where the specification teaches growing a
monocrystalline layer directly on an amorphous layer—if
not by “epitaxy,” by any other name. See Sitrick v.
Dreamworks, LLC, 516 F.3d 993, 1000 (Fed. Cir. 2008)
(“An enablement analysis begins with the disclosure in
the specification.”).
Nor does BU direct us to any specific passage of the
specification that purportedly teaches how to grow a
monocrystalline layer directly on an amorphous layer. It
instead relies on its expert’s testimony concerning the
specification. For example, BU cites testimony that by
following the “boundaries within the teachings of the ’738
patent, you could realize with not much experimentation
. . . the amorphous buffer layer, or some sublayer of the
amorphous buffer layer, and then a monocrystalline
TRS. OF BOSTON UNIV. v. EVERLIGHT ELECS. CO. 11
gallium nitride [layer] on top.” Cross-Appellant’s Br. 59
(alterations in original) (quoting J.A. 2269). This testi-
mony is entirely conclusory and therefore insufficient.
See, e.g., MobileMedia Ideas LLC v. Apple Inc., 780 F.3d
1159, 1172 (Fed. Cir. 2015) (“Conclusory statements by an
expert . . . are insufficient to sustain a jury’s verdict.”).
The same goes for BU’s expert’s testimony that the “ele-
ments of the claim itself teach[] how to do that accurate-
ly.” Cross-Appellant’s Br. 59 (quoting J.A. 2265).
BU also relies on testimony of the ’738 patent’s inven-
tor concerning “lateral epitaxial growth.” 5 Id. (citing
J.A. 4063–64, 4066–67). BU characterizes this testimony
and this phenomenon as demonstrating that the ’738
patent’s buffer layer can be purely amorphous with a
monocrystalline GaN growth layer on top. BU glosses
over key details in this testimony. The inventor described
“lateral epitaxial overgrowth” as a phenomenon whereby
a crystal grows faster in the lateral direction than in the
vertical direction. J.A. 4062. But he described this phe-
nomenon in the context of a monocrystalline layer grow-
ing on a buffer layer that had at least partially
crystallized. J.A. 4063–64. In BU’s relied-upon testimo-
ny, the inventor never described a monocrystalline growth
layer on an amorphous buffer layer without also mention-
ing some level of crystallinity in the buffer layer. See J.A.
4063–64, 4066–67.
BU further points to testimony indicating that others
have successfully grown a monocrystalline layer directly
on an amorphous buffer layer. J.A. 4096–97, 4300–01.
For example, the patent’s inventor testified that he had
done so and that others recently reported such an accom-
plishment in a scientific journal. J.A. 4096–97. The
5 The cited testimony actually refers to “lateral epi-
taxial overgrowth.” J.A. 4062, 4066 (emphasis added).
12 TRS. OF BOSTON UNIV. v. EVERLIGHT ELECS. CO.
district court acknowledged that this research occurred
after the ’738 patent issued but admitted the evidence
solely to rebut the argument that such growth was impos-
sible by any means. See J.A. 17 & n.3. Likewise, BU’s
expert testified that he had grown a monocrystalline GaN
film on an amorphous material and that it was “not
fundamentally impossible” to do so. 6 J.A. 4300.
But the inquiry is not whether it was, or is, possible
to make the full scope of the claimed device—a scope that
here covers a monocrystalline growth layer directly on an
amorphous layer. 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. Viewed in this light, BU’s
evidence is not probative of enablement. BU does not
even suggest that 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. See Enzo Biochem, Inc.
v. Calgene, Inc., 188 F.3d 1362, 1376 (Fed. Cir. 1999)
(finding a patentee’s evidence of enablement “inconclu-
sive” because the patentee “did not prove that the alleged
post-filing successes were accomplished by following the
teachings of the specification[]”). Simply observing that it
could be done—years after the patent’s effective filing
date—bears little on the enablement inquiry.
6 Defendants assert, and BU does not dispute, that
this work was also done years after the ’738 patent’s
effective filing date. According to BU’s expert, this work
was done “when [he] was working for Nitronics [sic,
Nitronex].” J.A. 4300–01. His C.V. indicates that he was
employed with Nitronex between 2000 and 2009.
J.A. 2219.
TRS. OF BOSTON UNIV. v. EVERLIGHT ELECS. CO. 13
BU lastly argues that the ’738 patent need not enable
the claimed device with a monocrystalline growth layer
directly on an amorphous buffer layer. BU notes that
there is no dispute as to enablement of five out of the six
referenced permutations and argues “[t]hat is sufficient.”
Cross-Appellant’s Br. 60. We disagree. Our precedents
make clear that the specification must enable the full
scope of the claimed invention. E.g., Sitrick, 516 F.3d at
999 (“The full scope of the claimed invention must be
enabled.”); Liebel-Flarsheim Co. v. Medrad, Inc., 481 F.3d
1371, 1378–79 (Fed. Cir. 2007) (“That full scope must be
enabled . . . .”); AK Steel, 344 F.3d at 1244 (“[T]he appli-
cant’s specification must enable one of ordinary skill in
the art to practice the full scope of the claimed inven-
tion.”); Genentech, 108 F.3d at 1365 (similar); see Nat’l
Recovery Techs., Inc. v. Magnetic Separation Sys., Inc.,
166 F.3d 1190, 1195–96 (Fed. Cir. 1999) (“The enablement
requirement ensures that the public knowledge is en-
riched by the patent specification to a degree at least
commensurate with the scope of the claims. The scope of
the claims must be less than or equal to the scope of the
enablement.”).
This is not to say that the specification must expressly
spell out every possible iteration of every claim. For
instance, “a specification need not disclose what is well
known in the art.” Genentech, 108 F.3d at 1366; see Nat’l
Recovery Techs., 166 F.3d at 1196 (“The scope of enable-
ment . . . is that which is disclosed in the specification
plus the scope of what would be known to one of ordinary
skill in the art without undue experimentation.”). “[T]he
artisan’s knowledge of the prior art and routine experi-
mentation can often fill gaps, interpolate between embod-
iments, and perhaps even extrapolate beyond the
disclosed embodiments, depending upon the predictability
of the art.” AK Steel, 344 F.3d at 1244. But this gap-
filling is merely supplemental; it cannot substitute for a
14 TRS. OF BOSTON UNIV. v. EVERLIGHT ELECS. CO.
basic enabling disclosure. See Genentech, 108 F.3d at
1366. Such a disclosure is missing here.
In sum, Defendants showed that epitaxially growing a
monocrystalline layer directly on an amorphous layer
would have required undue experimentation—indeed,
that it is impossible. Defendants also note the absence of
any non-epitaxial teaching in the specification of how to
do this. For its part, BU does not specifically direct us to
any such teaching in the specification. Instead, it cites
conclusory or unsupportive expert testimony and evidence
that some persons were able to grow a monocrystalline
layer directly on an amorphous layer—years after the
patent’s effective filing date, via methods BU does not
suggest were taught by the specification or otherwise
within an ordinary artisan’s skill as of that filing date.
Although we review the evidence in the light most favora-
ble to BU, the jury’s verdict on enablement here cannot be
sustained. We conclude that claim 19 is not enabled as a
matter of law and therefore reverse the district court’s
denial of Defendants’ motion for JMOL on this issue.
We note finally that, to some extent, BU created its
own enablement problem. BU sought a construction of “a
non-single crystalline buffer layer” that included a purely
amorphous layer. See J.A. 253–54 (reciting BU’s proposed
construction as “a layer of material that is not monocrys-
talline, located between the first substrate and the first
growth layer” (emphasis added)). Having obtained a
claim construction that included a purely amorphous
layer within the scope of the claim, BU then needed to
successfully defend against an enablement challenge as to
the claim’s full scope. See Liebel-Flarsheim, 481 F.3d at
1380. Put differently: if BU wanted to exclude others
from what it regarded as its invention, its patent needed
to teach the public how to make and use that invention.
That is “part of the quid pro quo of the patent bargain.”
Sitrick, 516 F.3d at 999 (quoting AK Steel, 344 F.3d at
1244).
TRS. OF BOSTON UNIV. v. EVERLIGHT ELECS. CO. 15
II
Our reversal of the district court’s denial of JMOL on
enablement renders claim 19 invalid, mooting the issues
raised in BU’s cross-appeal as well as Defendants’ other
appealed issues. We therefore dismiss the cross-appeal as
moot.
CONCLUSION
For the foregoing reasons, we (1) reverse the district
court’s denial of Defendants’ motion for JMOL that claim
19 is invalid for failing to meet the enablement require-
ment of 35 U.S.C. § 112 and (2) dismiss BU’s cross-appeal
as moot.
REVERSED-IN-PART AND DISMISSED-IN-PART
COSTS
The parties shall bear their own costs.