Federal Circuit Summary

Before Prost, Moore, and Reyna. Appeal from the United States District Court for the District of Massachusetts

Summary: A patent claim having multiple permutations is only enabled if each and every permutation is enabled.

Boston University (“BU”) sued Everlight and others for allegedly infringing a BU patent. The patent related to the preparation of certain films used to make blue LEDs. The court construed the claim at issue to encompass six permutations for how various layers could be formed. Defendants argued the claim was not enabled because the specification did not adequately teach one permutation. The jury found the patent valid and infringed and the District Court denied Defendants’ motion for judgment as a matter of law. Defendants appealed.

The Federal Circuit reversed and held the claim at issue was invalid for lack of enablement. The Federal Circuit acknowledged the parties’ agreement that five of the six claim permutations were enabled and that the specification need not “expressly spell out every possible iteration of every claim.” However, the Federal Circuit held that, “[t]o be enabling, the specification… must teach those skilled in the art how to make and use the full scope of the claimed invention without ‘undue experimentation.’” The Federal Circuit found that the sixth permutation was either impossible or would have required undue experimentation. Thus, the Federal Circuit held the claim was invalid for lack of enablement because enabling five out of six permutations was not sufficient.

This case is: TRUSTEES OF BOSTON UNIVERSITY v. EVERLIGHT ELECTRONICS CO.

Edited by: Paul Stewart

Written by: David C. Kellogg and Adam Powell