Trustees of Boston University v. Everlight Electronics Co.

105 F. Supp. 3d 116, 2015 WL 2400760
CourtDistrict Court, D. Massachusetts
DecidedMay 20, 2015
DocketCivil Action Nos. 12-11935-PBS, 12-12326-PBS, 12-12330-PBS
StatusPublished
Cited by1 cases

This text of 105 F. Supp. 3d 116 (Trustees of Boston University v. Everlight Electronics Co.) is published on Counsel Stack Legal Research, covering District Court, D. Massachusetts primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Trustees of Boston University v. Everlight Electronics Co., 105 F. Supp. 3d 116, 2015 WL 2400760 (D. Mass. 2015).

Opinion

MEMORANDUM AND ORDER

Saris, Chief Judge.

Plaintiff, Boston University (BU), has filed a motion for summary judgment alleging infringement of Claims 1, 2, 7, 9,10, 18, and 19 of U.S. Patent No. 5,686,738 (Docket No. 1105). Defendants, Everlight Electronics Co., Ltd. (Everlight), Epistar Corporation (Epistar), and Lite-On Inc. (Lite-On), have filed a motion for summary judgment alleging non-infringement of all asserted claims (Docket No. 1109). The Court assumes familiarity with the underlying technology. See Trustees of Boston University v. Everlight Electronics Co., Ltd., 23 F.Supp.3d 50, 53-57 (D.Mass.2014). After hearing, and a review of the substantial briefing,- I DENY both motions.

DISCUSSION

I. Standard of Review

A patent owner must prove infringement by a preponderance of the evidence. S. Bravo Sys., Inc. v. Containment Techs., Corp., 96 F.3d 1372, 1376 (Fed.Cir.1996). A defendant commits patent infringement if the accused product practices every limitation of at least one claim of the patent. Freedman Seating Co. v. Am. Seating Co., 420 F.3d 1350, 1356-57 (Fed.Cir.2005). Having construed the claim terms at issue, the Court must apply those terms to the accused product in determining whether the plaintiff has borne its burden to show infringement. Markman v. Westview Instr., Inc., 517 U.S. 370, 374, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996).

In deciding a case on summary judgment, the Court views the facts in the light most favorable to the non-moving party and makes all reasonable inferences in that party’s favor. O’Connor v. Steeves, 994 F.2d 905, 907 (1st Cir.1993). Sum[118]*118mary judgment is appropriate when no genuine issue exists as to any material fact, and the moving party is entitled to judgment as a matter of law. Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 962 (Fed.Cir.2001). “When evaluating a motion for summary judgment, the court views the record evidence through the prism of the evidentiary standard of proof that would pertain at a trial on the merits.” Id.

II. Analysis

BU alleges that certain of the defendants’ products infringed claims 1, 2, 7, 9, 10, 18, and 19 of U.S. Patent No. 5,686,738 (’738 Patent). The relevant component of the Patent claims a semiconductor device containing “a non-single crystalline buffer layer ... consisting essentially of gallium nitride.” Docket No. 1107 at ¶ 14. After the Markman hearing, I construed the claim term “non-single crystalline” as “not monocrystalline, namely polycrystalline, amorphous or a mixture of polycrystalline or amorphous.” Trustees of Boston University, 23 F.Supp.3d at 62-63.

The primary dispute between the parties is whether the gallium nitride (GaN) buffer layer in each of the defendants’ exemplar products (Exemplars) is polycrystalline and/or amorphous rather than monocrystalline. If the Exemplars’ buffer layers are non-single crystalline, the Exemplars infringe the patent; if the buffer layers are monocrystalline, the Exemplars are noninfringing! Because two qualified experts disagree whether the Exemplar buffer layers consist of one crystal or multiple crystals, summary judgment is inappropriate.

A crystal is an ordered structure of atoms or molecules that extends in all directions. Docket No! 1113, Declaration of Dr. Joan Redwing at ¶13, 28 (Redwing Deck). A crystal is also known as a “grain,” and a polycrystalline material contains more than one grain or crystal. Id. When individual crystals are separated at angles, the interfaces between those crystals are known as “grain boundaries.” Docket No. 1191-11, Declaration of Dr. Eugene Fitzgerald in Support of Defendants’ Technology Tutorial at ¶26 (Fitzgerald Technology Deck); Docket No. 1191-10, Callister (see infra) at 103, G6, G10. There may be various degrees of misalignment between different crystals in polycrystalline materials. When the degree of misalignment is small, the grain boundary is known as “low-angle.” Docket No. 1158-6, Supplemental Declaration of Dr. Edwin Piner at ¶7 (Piner Supplement). When the degree of misalignment is larger, the grain boundary is called “high-angle.” Id. at ¶ 10.

Against this backdrop, BU argues that Defendants’ accused products contain non-single crystalline buffer layers and therefore infringe.the patent. See Docket No. 1107-3, 1107-4, Declaration of Dr. Edwin Piner at ¶ 19 (Piner Deck). Plaintiffs expert, Dr. Edwin L. Piner, a Professor, of Physics and Materials Science, Engineering and Commercialization at Texas State. University, opined that the presence of “grain boundaries” in the GaN buffer layers in Epistar’s Exemplars means that those layers are polycrystalline. Piner Supplement at ¶¶ 7, 8, 10. In arriving at this conclusion, Dr. Piner conducted tests on the Exemplars to determine the crys-tallinity of their buffer layers.. First, he analyzed a transmission electron microscopy (“TEM”) cross-sectional image of the Exemplars, generated by sending a highly focused beam of accelerated electrons through the material in question. Piner Deck at ¶46. Next, he used a Fourier transform, a mathematical function that translates spatial data into amplitudes and frequencies, to generate electron diffraction patterns of certain regions in the TEM images. Id. at ¶ 50.

[119]*119Based on the TEM cross-sections, Fourier transform data, and resulting diffraction patterns, Dr. Piner concluded that the Exemplar buffer layers are polyerystalline. He first identified crystalline regions, amorphous regions, and stacking defects in the buffer layers. Piner Decl. at ¶ 27. The crystalline regions, he opined, contain areas of “varied atomic contrast,” id. at ¶ 27,1 which demonstrate the presence of grain boundaries. Dr. Piner further observed that the Exemplar diffraction patterns exhibit faint spots- beside brighter spots, which is also “indicative . of non-single crystallinity.” Id. at ¶ 28. Finally, based on the TEM diffraction patterns and atomic contrast levels, Dr. Piner opined that the Exemplar buffer' layers contain both polyerystalline and amorphous regions, and that such regions ■ are “non-single crystalline” as claimed by the '738 Patent. Id. at ¶.54-55.

Dr. Piner identified both low- and high-angle grain boundaries in the Exemplar buffer layers. In so concluding, Dr. Piner relied on a learned treatise, Materials Science and Engineering, An Introduction, 8th ed., William D. Callister, Jr., et al. (2010) (Callister), which states:

Within the [grain] boundary region, which is probably just several atom distances wide, there is some atomic mismatch in a transition from the crystalline orientation of one grain to that of an adjacent one.... When this orientation mismatch is slight, on the order of a few degrees, then the term. small(or low-) angle grain boundary is used. These boundaries can be described in terms of dislocation arrays ... Other possible in-terfacial defects include stacking faults

(p. 72). 'Dr.

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Trustees of Boston University v. Everlight Electronics Co.
109 F. Supp. 3d 344 (D. Massachusetts, 2015)

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