Trustees of Boston University v. Everlight Electronics Co., Ltd. et al
Chief Judge Patti B. Saris: MEMORANDUM and ORDER entered. I DENY both MOTIONS for Summary Judgment 1105 and 1109 in case 1:12-cv-11935-PBS. Associated Cases: 1:12-cv-11935-PBS et al.(Geraldino-Karasek, Clarilde)
UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS
) Consolidated Civil Action No.
EVERLIGHT ELECTRONICS CO., LTD.,)
TRUSTEES OF BOSTON UNIVERSITY, )
) Civil Action No. 12-12326-PBS
EPISTAR CORPORATION, et al.,
TRUSTEES OF BOSTON UNIVERSITY, )
) Civil Action No. 12-12330-PBS
LITE-ON INC., et al.,
TRUSTEES OF BOSTON UNIVERSITY,
May 20, 2015
Saris, Chief Judge.
MEMORANDUM AND ORDER
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.
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 (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). Summary 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.
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 Decl.). 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 Decl.); 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 Decl.). Plaintiff’s
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 crystallinity of their buffer layers. First, he
analyzed a transmission electron microscopy (“TEM”) crosssectional image of the Exemplars, generated by sending a highly
focused beam of accelerated electrons through the material in
question. Piner Decl. 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.
Based on the TEM cross-sections, Fourier transform data,
and resulting diffraction patterns, Dr. Piner concluded that the
Exemplar buffer layers are polycrystalline. 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 polycrystalline 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
To the lay eye, these regions resemble indistinguishable
“cloud illusions.” Joni Mitchell, “Both Sides Now” (Reprise
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 interfacial defects include stacking faults...
(p. 72). Dr. Piner first stated that he observed “low angle
grain boundaries” in each of the Exemplar buffer layers. The
lattice fringe2 in those layers, he explained, contained
adjacent grain misorientations of between two and two-and-a-half
degrees. Piner Supplement at ¶¶ 14, 15, 17, 19, 21. Based on the
TEM cross-section images, Dr. Piner also concluded that the
Exemplar buffer layers are highly defective and comprised of
many distinct “higher-angle [grain] boundaries.” Id. at ¶ 31.
In contrast, Defendants contend that the TEM diffraction
patterns reveal the Exemplar buffer layers to be single
crystalline. Defendant’s expert, Dr. Eugene Fitzgerald, a
professor of Material Engineering at MIT, concluded that what
Dr. Piner believed to be low-angle grain boundaries in a
Lattice fringe occurs in a polycrystalline material when
one lattice, or crystal, is rotated at a different angle from an
adjacent lattice. See Docket No. 945-3 at 24:4-8. Tracing a
lattice fringe can identify grain boundaries between adjacent
grains in a polycrystalline material. Docket No. 1158-6, Piner
Supplemental Decl. at ¶ 12.
polycrystalline material were in fact merely defects in a
monocrystalline material. Docket No. 1166, Declaration of Dr.
Fitzgerald at ¶¶ 8, 10 (Fitzgerald Decl.). Dr. Fitzgerald
I do not see a two-degree grain boundary in Exhibit
2. Even if there were, a low angle grain boundary would
not classify a layer as polycrystalline. Researchers
working in the area of gallium nitride recognize that
monocrystalline (or single crystalline) gallium nitride
layers may include defects such as this.
Id. at ¶ 10. Dr. Fitzgerald also disputes that certain “blurry”
areas in the TEM images are amorphous. Id. at ¶ 12. For one
thing, says Dr. Fitzgerald, Dr. Piner cites no basis for
concluding that these areas are amorphous. Id. For another, both
Dr. Fitzgerald and Defendants’ other expert, Dr. Joan Redwing,
conclude that the Exemplar buffer layers are recrystallized at
temperatures too high for the layers to remain amorphous. Docket
No. 1191-3, Fitzgerald Deposition at pp. 37, 39-40, 58; Redwing
Decl. at ¶ 40. Finally, Dr. Fitzgerald opined that the
diffraction patterns in TEM images of the Exemplar buffer layers
are consistent with a monocrystalline material. Fitzgerald Decl.
at ¶ 13. “The accepted way of determining crystallinity of a
sample at this scale,” he noted, “is by analyzing the TEM
diffraction pattern.” Id. at ¶ 18.
The main expert dispute thus appears to be whether lowangle grain boundaries necessarily signify that a buffer layer
is polycrystalline or whether grain boundaries can also exist in
a single crystal. Both experts agree that all polycrystalline
materials contain grain boundaries. But while Dr. Piner
concludes that grain boundaries are only present in
polycrystalline materials, Dr. Fitzgerald opines that grain
boundaries may in fact signify defects in a monocrystalline
substance. It is for a jury to decide, in light of these
conflicting expert opinions, whether the buffer layers in
Epistar’s Exemplars are monocrystalline or polycrystalline and,
in turn, whether the Exemplars infringe the ‘738 Patent. I DENY
both motions for summary judgment.
/s/ PATTI B. SARIS
Patti B. Saris
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