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Trustees of Boston University v. Everlight Electronics Co., Ltd.

United States District Court, D. Massachusetts

July 18, 2019

TRUSTEES OF BOSTON UNIVERSITY, Plaintiff,
v.
EVERLIGHT ELECTRONICS CO., LTD., et al., Defendants. TRUSTEES OF BOSTON UNIVERSITY, Plaintiff,
v.
EPISTAR CORPORATION, Defendant. TRUSTEES OF BOSTON UNIVERSITY, Plaintiff,
v.
LITE-ON INC., et al., Defendants.

          MEMORANDUM AND ORDER

          Hon. Patti B. Saris Chief United States District Judge.

         INTRODUCTION

         This is a long-running, acrimonious patent infringement case which is now back before the Court for final disposition following an appeal to the Federal Circuit.[1] Plaintiff, the Trustees of Boston University, is the owner of U.S. Patent No. 5, 686, 738 (the “̕738 patent”). The ̕738 patent relates to the preparation of monocrystalline gallium nitride films via molecular beam epitaxy, which, in short, is a process used in creating semiconductors for LED lights. Defendants are Everlight Electronics Co., Ltd. and Everlight Americas, Inc. (together of LED devices that Plaintiff alleges infringe the technology covered by the ̕738 patent. There are currently four interrelated motions before the Court: (1) Plaintiff's motion to affirm the jury verdict or, in the alternative, to modify the claim construction order or amend its complaint, (2) Defendants' motion to rescind the Court's award to Plaintiff of partial attorney's fees and costs, (3) Defendants' motion for attorney's fees, and (4) Plaintiff's motion for disallowance of costs.

         After hearing, the Court DENIES Plaintiff's motion to affirm the jury verdict or, in the alternative, to modify the claim construction order or amend its complaint (Dkt. No. 1872), ALLOWS IN PART and DENIES IN PART Defendants' motion to rescind the Court's award of attorney fees (Dkt. No. 1859), ALLOWS IN PART and DENIES IN PART Defendants' motion for attorney's fees (Dkt. No. 1860), and ALLOWS IN PART and DENIES IN PART Plaintiff's motion for disallowance of costs (Dkt. No. 1850).

         BACKGROUND

         I. Pre-Appeal Procedural History

         Plaintiff originally filed a series of cases against Defendants in 2012. In May 2013, the Court ordered that the cases be consolidated. A jury trial was held between November 2, 2015 and November 19, 2015. The jury found the ̕738 patent to be valid and that Epistar and Everlight willfully infringed it. Following trial, Defendants renewed their motion for judgment as a matter of law and moved for a new trial or remittitur. On July 22, 2016, the Court denied Defendants' motion as to liability but granted Defendants Epistar and Everlight a new trial as to damages or remittitur. Plaintiff then moved for reconsideration of the Court's decision as to damages, which the Court also denied.

         II. Appeal

         In August 2016, the parties cross-appealed various rulings made by the Court, including the ruling on Defendants' motion for judgment as a matter of law. On July 25, 2018, the Court of Appeals for the Federal Circuit reversed the Court's decision on Defendants' motion for judgment as a matter of law and dismissed all other pending appeals as moot. On October 12, 2018, the Federal Circuit denied Plaintiff's requests for re-hearing. The Federal Circuit then issued a formal mandate.

         The Federal Circuit reversed the Court's denial of judgment as a matter of law for Defendants on the basis that the ̕738 patent is invalid for lack of enablement. The Federal Circuit described the dispositive issue as follows:

The district court construed two terms relevant here. First, it construed “grown on” to mean “formed indirectly or directly above.” 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 amorphous, located between the first substrate and the first growth layer.” 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 relationship 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.

Trs. of Bos. Univ. v. Everlight Elecs. Co., 896 F.3d 1357, 1360 (Fed. Cir. 2018).

         Defendants' non-enablement defense had two components: a legal component and a factual component. The legal component turned on what it meant for the “full scope” of the patent to be enabled. Defendants argued that in order to be enabled the patent had to teach a person of ordinary skill in the art (“POSITA”) how to make all six permutations describe above. The factual component turned on whether or not the patent did in fact teach a POSITA how to make a monocrystalline growth layer directly on an amorphous buffer layer. Defendants argued that the evidence at trial established that it was impossible to make a monocrystalline growth layer directly on an amorphous buffer layer.

         In denying judgment as a matter of law for Defendants, the Court rejected both components of Defendants' non-enablement defense. In turn, the Federal Circuit reversed the Court on both points. On the law, the Federal Circuit held that “[its] precedents make clear that the specification must enable the full scope of the claimed invention, ” which meant that the ̕738 patent had to teach all six permutations. Id. at 1364. On the facts, the Federal Circuit held that “Defendants showed that epitaxially growing a monocrystalline layer directly on an amorphous layer would have required undue experimentation- indeed, that it is impossible.” Id. Accordingly, the Federal Circuit reversed the Court and ordered judgment for Defendants.

         III. Post-Appeal Motions

         Following their success on appeal, Defendants filed a bill of costs with the Court. On September 4, 2018, Plaintiff filed a motion to disallow Defendants' costs, which Defendants subsequently opposed. On November 14, 2018, Defendants filed a motion to rescind the Court's award of attorney's fees and costs and a motion for attorney's fees. Plaintiff opposed both motions. Finally, on December 17, 2018, Plaintiff filed a motion to affirm the jury verdict or, in the alternative, to modify the claim construction order or amend its complaint, which Defendants subsequently opposed. All four motions are currently pending.

         DISCUSSION

         I. Motion to Affirm Jury Verdict or, in the Alternative, to Amend the Complaint [2]

         A. Legal Standards

         Under Federal Rule of Civil Procedure 60(a), “[t]he court may correct a clerical mistake or a mistake arising from oversight or omission whenever one is found in a judgment, order, or other part of the record.” The purpose of Rule 60(a) is to provide a mechanism for correcting clerical or other similar mistakes as a result of which the judgment does not reflect the intentions of the Court. “The relevant test for the applicability of Rule 60(a) is whether the change affects substantive rights of the parties . . . or is instead a clerical, or a copying or computational mistake, which is correctable under the Rule.” Bowen Inv., Inc. v. Carneiro Donuts, Inc., 490 F.3d 27, 29 (1st Cir. 2007) (alteration in original) (quoting In re W. Tex. Mktg. Corp., 12 F.3d 497, 504 (5th Cir. 1994)). ”If . . . cerebration or research into the law or planetary excursions into the facts is required, Rule 60(a) will not be available.” Id. (quoting In re W. Tex. Mktg. Corp., 12 F.3d at 505). “Matters cognizable under Rule 60(a) are, generally, mechanical in nature.” Toscano v. Chandris, S.A., 934 F.2d 383, 386 (1st Cir. 1991).

         B. Analysis

         a. Exclusion

         Plaintiff contends that the Court excluded at trial the non-enablement invalidity defense upon which Defendants ultimately prevailed on appeal. In its view, the Court excluded the defense as a sanction pursuant to Federal Rules of Civil Procedure 16(f) and 37(b) because Defendants failed to timely disclose it. The operative pretrial scheduling order required Defendants to file their preliminary invalidity and non-infringement disclosures by October 23, 2013 and their amended / supplemental disclosures by December 16, 2013. According to Plaintiff, neither Defendants' preliminary nor amended invalidity contentions disclosed the winning non-enablement defense. And Defendants failure to timely disclose the defense led the Court to exclude it at trial. Because the defense was excluded as a sanction, it was improper for either the Court or the Federal Circuit to consider it on the merits. Thus, Plaintiff urges the Court to affirm the jury verdict in its favor pursuant to Rule 60(a) notwithstanding the Federal Circuit's decision granting Defendants judgment as a matter of law.

         There are several factual problems with Plaintiff's position. First, Defendants raised the defense in their summary judgment motion on invalidity, and the Court addressed it on the merits. Second, Plaintiff asked the Court to exclude the defense prior to trial due to its late disclosure, but the Court expressly refused to do so. Third, Defendants raised the defense again in their post-trial motion for judgment as a matter of law. In opposing that motion, Plaintiff did not argue the defense had been excluded at trial, and the Court again addressed the defense on the merits. Fourth, Plaintiff did not argue on ...


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