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Trustees of Boston University v. Kingbright Electric Co., Ltd.

United States District Court, D. Massachusetts

December 17, 2019

TRUSTEES OF BOSTON UNIVERSITY, Plaintiff,
v.
KINGBRIGHT ELECTRIC CO., LTD., and KINGBRIGHT CORP., Defendants.

          MEMORANDUM AND ORDER

          Hon. Patti B. Saris Chief United States District Judge

         This case is one in a series of patent infringement cases brought by the Trustees of Boston University (“Boston University”) against manufacturers and users of LED technology that allegedly infringes U.S. Patent Number 5, 686, 738 (the “'738 Patent”). Following an extended stay of proceedings, Kingbright Electric Co., Ltd. and Kingbright Corp. (together, “Kingbright”) have moved for judgment on the pleadings pursuant to Federal Rule of Civil Procedure 12(c) or, in the alternative, summary judgment pursuant to Federal Rule of Civil Procedure 56. Kingbright contends that Boston University's claims are barred because the Federal Circuit has held that the '738 Patent is invalid for lack of enablement in a parallel case against its principal supplier of LED chips, Epistar Corp. (“Epistar”).

         After hearing, the Court ALLOWS IN PART and DENIES IN PART Kingbright's motion. (Dkt. No. 82).

         BACKGROUND

         I. Facts

         Boston University is a major research university located in Boston, Massachusetts and the owner of the '738 Patent. The '738 Patent relates to the preparation of monocrystalline gallium nitride films via molecular beam epitaxy. Stated differently, the '738 Patent covers a process used in creating semiconductors for LED lights. The '738 Patent expired on November 11, 2014.

         Kingbright is a Taiwanese company that designs and manufactures LED packages. Prior to 2015, Kingbright sold LED packages in the United States through a U.S. based subsidiary. Boston University alleges that the LED packages manufactured and sold by Kingbright incorporated LED chips that infringed the '738 Patent. At all relevant times, Kingbright purchased its LED chips from three different manufacturers: Epistar, Cree, Inc. (“Cree”), and Tekcore.

         II. Procedural History

         Boston University originally sued Kingbright on September 20, 2013. It amended its complaint on October 30, 2013. However, the Court stayed the case in November 2014 in favor of an earlier filed case between Boston University and Epistar involving the same patent and the same Epistar chips (the “Epistar Action”).

         While the case was stayed, litigation continued in the Epistar Action.[1] In November 2015, a jury found in the Epistar Action that the '738 Patent was valid and that Epistar had infringed upon it. After trial, Epistar moved for judgment as a matter of law on the grounds that the patent failed to meet the enabling requirement of 35 U.S.C. § 112. The Court denied the motion, and Epistar appealed. On appeal, the Federal Circuit ruled as a matter of law that the '738 Patent was invalid for lack of enablement. On remand, Boston University moved to affirm the jury verdict notwithstanding the Federal Circuit's ruling, but the Court denied that motion in July 2019. Final judgment entered in the Epistar Action on December 16, 2019.

         Once the Federal Circuit's mandate issued in the Epistar Action, the Court reopened this case. On April 18, 2019, in light of the Federal Circuit's ruling in the Epistar Action, Kingbright moved for judgment on the pleadings pursuant to Federal Rule of Civil Procedure 12(c) or, in the alternative, on partial summary judgment pursuant to Federal Rules of Civil Procedure 12(d) and 56. Boston University opposed the motion, and the Court held a hearing on September 24, 2019.

         DISCUSSION

         I. Legal Standard

         Under Rule 12(c), “after the pleadings are closed -- but early enough not to delay trial -- a party may move for judgment on the pleadings.” Fed.R.Civ.P. 12(c). A motion for judgment on the pleadings is a close procedural cousin to a motion to dismiss for failure to state a claim under Federal Rule of Civil Procedure 12(b)(6) as “these two types of motions are treated in much the same way.” Kando v. Rhode Island State Board of Elections, 880 F.3d 53, 58 (1st Cir. 2018). The Court will “take the well-pleaded facts and the reasonable inferences therefrom in the light most favorable to the nonmovant.” Id. Judgment on the pleadings is appropriate only when “the properly considered facts conclusively establish that ...


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