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

Filing 1890

Chief Judge Patti B. Saris: MEMORANDUM AND ORDER entered.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 )SO ORDERED.(Lara, Miguel)

UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS
________________________________
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.
)
)

Consolidated Civil Action
No. 12-11935-PBS

Civil Action
No. 12-12326-PBS

Civil Action
No. 12-12330-PBS

MEMORANDUM AND ORDER
July 18, 2019
Saris, C.J.
INTRODUCTION
This is a long-running, acrimonious patent infringement
case which is now back before the Court for final disposition

1

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,
“Everlight”); Epistar Corp. (“Epistar”); Lite-On Inc., LiteOn
Service USA, Inc., Lite-On Technology Corp., and LiteOn Trading
USA, Inc. (together, “Lite-On” and, collectively with Epistar
and Everlight, “Defendants”). Defendants are manufacturers 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.

The Court assumes familiarity with the Federal Circuit’s opinion as well as
the Court’s prior opinions in this case. See, e.g., Trs. of Bos. Univ. v.
Everlight Elecs. Co., 896 F.3d 1357 (Fed. Cir. 2018) (appeal); Trs. of Bos.
Univ. v. Everlight Elecs. Co., No. CV 12-11935-PBS, 2016 WL 3962826 (D. Mass.
July 22, 2016) (judgment as a matter of law); Trs. of Bos. Univ. v. Everlight
Elecs. Co., 109 F. Supp. 3d 344 (D. Mass. 2015) (summary judgment on
invalidity); Trs. of Bos. Univ. v. Everlight Elecs. Co., 23 F. Supp. 3d 50
(D. Mass. 2014) (claim construction).
1

2

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.

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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;
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(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

5

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.

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DISCUSSION
I.

Motion to Affirm Jury Verdict or, in the Alternative, to
Amend the Complaint2
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,

Plaintiff’s original motion also requested alternative relief in the form of
a modification of the Court’s claim construction order. In its reply brief,
however, Plaintiff concedes that this form of relief is foreclosed by the
mandate rule.
2

7

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 noninfringement 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 nonenablement 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.

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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 appeal the defense had been excluded at trial. This
case history is difficult to square with Plaintiff’s contention
that the defense was excluded by the Court.
Nonetheless, Plaintiff parses the trial record for proof
that the Court excluded the defense. Plaintiff focuses on the
testimony of Defendants’ expert witness Dr. Fitzgerald, where
the parties repeatedly clashed over the proper scope of his
testimony regarding Defendants’ invalidity defense of nonenablement. The Court concedes that the record is ambiguous on
this particular point. The dispute originated in part around a
slide demonstrating all the permutations of the Court’s claim
construction, which had never been disclosed before. Both
Plaintiff and Defendants point to portions of the record they
believe vindicate their respective positions. Compare Dkt. No.
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1596 at 170-71 (Court acknowledged that invalidity defense had
been raised previously and allowed Defendants to explore it with
Dr. Fitzgerald), with Dkt. No. 1597 at 36-39 (Court barred
Plaintiff from asking Dr. Fitzgerald about “all permutations” of
the ̕738 patent because Defendants did not raise the issue on
direct examination and the issue was “dead”). The bottom line,
however, is that it is not enough for Plaintiff identify
ambiguity in the trial record because there is nothing in the
record to suggest the Court struck the enablement defense. Prior
to trial, the Court explicitly refused to strike the defense
because it determined the defense had been adequately disclosed.
If the Court in fact reversed that decision during trial, then
there would be a clearer statement in the record to that effect.
Following trial, the Court denied Defendants judgment as a
matter of law as to enablement on the merits. If the Court in
fact excluded Defendants’ non-enablement defense at trial, then
there would have been no reason to do so. Accordingly, the Court
confirms that it did not exclude Defendants’ non-enablement
defense at trial, and the Federal Circuit properly relied on the
defense in granting Defendants judgment as a matter of law.
b.

Rule 60(a)

Even if Plaintiff understood that the Court excluded
Defendants’ non-enablement defense at trial, Rule 60(a) does not
supply a procedural mechanism for instating that ruling at this
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stage of proceedings. Rule 60(a) allows the Court to correct “a
clerical mistake” or other “mistake arising from oversight or
omission.” But this is not a simple clerical mistake in the
judgment. Plaintiff is asking the Court to re-interpret the
trial record in a way that would have significant ramifications
for the substantive rights of the parties. See Bowen, 490 F.3d
at 29. If the Court granted Plaintiff’s request, it would be
altering the basis for its decision on Defendants’ post-trial
motion for judgment as a matter of law. Instead of addressing
Defendants’ invalidity defense on the merits, the Court would be
dismissing it on procedural grounds. This in turn would nullify
the subsequent reversal of the Court’s decision by the Federal
Circuit. And Plaintiff would prevail on its claims,
notwithstanding the fact that Federal Circuit issued a mandate
in favor of Defendants. This stretches Rule 60(a) too far.
Indeed, Plaintiff cites no authority for the proposition
that Rule 60(a) -- or, for that matter, any other federal rule
or judicial doctrine -- can be used to modify a judgment in the
present circumstances. The cases Plaintiff does cite bear little
similarity to the facts of this case. See Sartin v. McNair Law
Firm PA, 756 F.3d 259, 266 (4th Cir. 2014) (affirming order
clarifying that sanctions order applied to plaintiffs’ attorney
rather than plaintiffs themselves); Garamendi v. Henin, 683 F.3d
1069, 1081 (9th Cir. 2012) (affirming order altering terms of
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judgment to allow for enforcement in France); Rivera v. PNS
Stores, Inc., 647 F.3d 188, 200 (5th Cir. 2011) (affirming order
clarifying that summary judgment decision was “with prejudice”);
Trans Nat’l Commc’ns, Inc. v. Overlooked Ops., Inc., 229 F.3d
1133 (1st Cir. 2000) (per curiam) (unpublished table decision)
(affirming denial of Rule 60(a) motion to modify agreed-upon
judgment to include pre-judgment interest). These cases all
involved minor, clerical-type modifications to the judgment,
none of which fundamentally changed the outcome of the
litigation. Here, Plaintiff’s request that the Court affirm the
jury verdict in its favor despite Defendant’s successful appeal
exceeds the scope of relief ordinarily permitted by Rule 60(a).
c.

Mandate Rule

Not only is there no procedural avenue for granting relief
from the Federal Circuit’s judgment, but such relief is
foreclosed by the “mandate rule” which governs the Court’s
authority to take further actions following an appellate
disposition. See Exxon Chem. Patents, Inc. v. Lubrizol Corp.,
137 F.3d 1475, 1483-84 (Fed. Cir. 1998). “Unless remanded by
[the appellate court], all issues within the scope of the
appealed judgment are deemed incorporated within the mandate and
thus are precluded from further adjudication.” Engel Indus.,
Inc. v. Lockformer Co., 166 F.3d 1379, 1383 (Fed. Cir. 1999).
The parties spar over the exact contours of this rule, but these
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disagreements are not dispositive in this case. At minimum, the
parties agree that the mandate rule prevents the Court from
taking actions that are inconsistent with the judgment and
written opinion of the Federal Circuit. See Retractable Techs.,
Inc. v. Becton Dickinson & Co., 757 F.3d 1366, 1371 (Fed. Cir.
2014); Exxon Chem. Patents, 137 F.3d at 1484.
The Federal Circuit did not remand the case for further
proceedings but simply granted Defendants judgment as a matter
of law. On its face, then, Plaintiff’s request that the Court
affirm the jury verdict is inconsistent with the judgment of the
Federal Circuit. Plaintiff argues that this is not the case
because the Federal Circuit opinion did not directly address the
Court’s supposed exclusion of the non-enablement defense. This
is unpersuasive for two reasons. First, the Federal Circuit
reversed the Court on the merits of Defendants’ non-enablement
defense. Embedded in the Court’s decision on the merits was the
conclusion that the defense had not been excluded at trial.
Second, in order to reverse the Court on the merits, the Federal
Circuit reviewed the trial record and found that it contained
evidence sufficient to grant judgment in favor of Defendants.
That means that the Federal Circuit looked at the same record
Plaintiff now contends contains proof that the Court excluded
Defendants’ non-enablement defense. Yet the Federal Circuit did
not reach the conclusion urged by Plaintiff. Rather, based on
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the same record, the Federal Circuit granted judgment for
Defendants. For both these reasons, the Plaintiff’s request for
relief falls within the scope of the Federal Circuit’s mandate.
The Court lacks the authority to affirm the jury verdict and,
therefore, must deny Plaintiff’s motion.
d.

Amendment

In the alternative, Plaintiff requests that it be allowed
to amend its complaint to allege infringement of two additional
claims -- claims 11 and 12 -- of the ̕738 patent. Both claims
specify that the buffer layer be “recrystallized, partially
amorphous,” which excludes permutations of the patent that have
a purely amorphous buffer layer. In other words, Plaintiff
proposes to add claims not susceptible to Defendant’s argument
that it was impossible to grow a monocrystalline growth layer
directly on an amorphous buffer layer. And, likewise, the
Federal Circuit’s judgment would not invalidate them.
Federal Rule of Civil Procedure 15(a) instructs that the
Court should give leave to amend freely “when justice so
requires.” Fed. R. Civ. P. 15(a)(2). But “when a litigant seeks
leave to amend after the expiration of a deadline set in a
scheduling order, Rule 16(b)'s more stringent good cause
standard supplants Rule 15(a)'s leave freely given standard.”
United States ex rel. D’Agostino v. EV3, Inc., 802 F.3d 188, 192
(1st Cir. 2015). Defendants do not consent to an amendment, and
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the deadline for amendment set by the Court was in February
2014, so Plaintiff is left to argue that that “good cause”
exists for an amendment. The First Circuit has “noted that Rule
16's ‘good cause’ standard ‘focuses on the diligence (or lack
thereof) of the moving party more than it does on any prejudice
to the party-opponent.’” Somascan, Inc. v. Philips Med. Sys.
Nederland, B.V., 714 F.3d 62, 64 (1st Cir. 2013) (quoting
Flores-Silva v. McClintock-Hernández, 710 F.3d 1, 3 (1st Cir.
2013)). “Regardless of the context, the longer a plaintiff
delays, the more likely the motion to amend will be denied, as
protracted delay, with its attendant burdens on the opponent and
the court, is itself a sufficient reason for the court to
withhold permission to amend.” Steir v. Girl Scouts of USA, 383
F.3d 7, 12 (1st Cir. 2004).
Here, Plaintiff has delayed far too long in seeking leave
to amend. The only basis for “good cause” put forth by Plaintiff
is the same argument that Defendants belatedly disclosed their
non-enablement defense. But Plaintiff was aware of this defense
at least as early as November 2014 when Defendants moved for
summary judgment on invalidity. Indeed, on November 14, 2014,
Plaintiff moved to strike Defendants’ motion because it
contained defenses that had not been timely disclosed. Further,
Plaintiff moved to strike Defendants’ non-enablement defenses
again in September 2015. At no point after November 2014 (until
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the present motion) did Plaintiff seek leave to amend. This
delay defeats any showing of good cause. In that time, the Court
held two trials, and the parties pursued cross-appeals to the
Federal Circuit and back. The burden on the Court and Defendants
of granting Plaintiff leave to amend at this stage is simply too
great. Thus, the Court denies Plaintiff’s request for leave to
amend its complaint.
e.

Sanctions

As a parting shot in their opposition, Defendants ask the
Court to award fees and costs incurred in opposing Plaintiff’s
motion to affirm the jury verdict pursuant to 28 U.S.C. § 1927.
“Under section 1927, an attorney's conduct must multiply the
proceedings and be ‘unreasonable and vexatious’ to warrant the
imposition of sanctions.” Cruz v. Savage, 896 F.2d 626, 631 (1st
Cir. 1990). While Plaintiff’s motion is unsuccessful, that does
not mean that it is frivolous or meritless, or that it was filed
solely to harass Defendants. The Court agrees that the trial
record on the exclusion issue was not crystal clear and was
amorphous. Indeed, some of the ambiguity arose from a chart
presented for the first time at trial by Defendants. As both
parties have done at virtually every stage of this litigation,
Plaintiff has taken an aggressive position to try to win on its
claims. The Court finds that Plaintiff’s counsel’s conduct has
not crossed the line that separates zealous advocacy from
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unlawyerly conduct, see id. at 634, and, accordingly, an award
of sanctions is not appropriate.
II.

Attorney’s Fees Motions
A.

Legal Standards

Under 35 U.S.C. § 285, the Court “in exceptional cases may
award reasonable attorney fees to the prevailing party.” An
exceptional case is “simply one that stands out from others with
respect to the substantive strength of a party’s litigating
position (considering both the governing law and the facts of
the case) or the unreasonable manner in which the case was
litigated.” Octane Fitness LLC v. ICON Health & Fitness, Inc.,
572 U.S. 545, 554 (2014). “Section 285 demands a simple
discretionary inquiry; it imposes no specific evidentiary
burden, much less a high one.” Id. at 557; see also Highmark
Inc. v. Allcare Health Mgmt. Sys., Inc., 572 U.S. 559, 563
(2014) (“[T]he determination whether a case is ‘exceptional’
under § 285 is a matter of discretion.”). “[T]here is no precise
rule or formula for making these determinations . . . .” Octane
Fitness, 572 U.S. at 554 (quoting Fogerty v. Fantasy, Inc., 510
U.S. 517, 534 (1994)). Factors supporting a finding of
exceptionality include “frivolousness, motivation, objective
unreasonableness (both in the factual and legal components of
the case) and the need in particular circumstances to advance
considerations of compensation and deterrence.” Id. at 554 n.6
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(quoting Fogerty, 510 U.S. at 534 n.19). “[A] case presenting
either subjective bad faith or exceptionally meritless claims
may sufficiently set itself apart from mine-run cases to warrant
a fee award.” Id. at 555.
“Litigation misconduct and unprofessional behavior may
suffice, by themselves, to make a case exceptional under § 285.”
Rambus Inc. v. Infineon Techs. AG, 318 F.3d 1081, 1106 (Fed.
Cir. 2003). “In cases deemed exceptional only on the basis of
litigation misconduct, however, the amount of the award must
bear some relation to the extent of the misconduct.” Id. An
award of “attorney fees under section 285 should be tailored by
a court to the situation before it.” Power Mosfet Techs., LLC v.
Siemens AG, 378 F.3d 1396, 1415 (Fed. Cir. 2004). “[T]he award
of the total amount of a fee request is unusual.” Takeda Chem.
Indus., Ltd. v. Mylan Labs., Inc., 549 F.3d 1381, 1390 (Fed.
Cir. 2008).
B.

Analysis

For the reasons discussed above, the Court denies
Plaintiff’s motion to affirm the jury verdict and will enter
judgment for Defendants consistent with the Federal Circuit’s
mandate. This means Defendants are the prevailing parties under
§ 285.

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a.

Defendants’ Motion to Rescind

Defendants first seek to rescind the Court’s original
attorney’s fee award in favor of Plaintiff. The Court allows
Defendants’ motion to the extent it was based on § 285 because
Plaintiff is no longer the prevailing party. Yet this does not
fully resolve the matter because the prior fee award was not
based exclusively on § 285. “[A] district court may invoke its
inherent power to impose sanctions . . . in excess of what is
provided for by statute.” Id. at 1391. Courts make fee awards
based on their “inherent power” in cases where there is “a
finding of fraud or abuse of the judicial process.” Id. (quoting
Amsted Indus. Inc. v. Buckeye Steel Castings Co., 23 F.3d 374,
378 (Fed. Cir. 1994)). A finding of fraud, however, is not
always necessary because “courts may use sanctions in cases
involving bad faith that cannot be otherwise reached by rules or
statutes.” Id.; see also iLOR, LLC v. Google, Inc., 631 F.3d
1372, 1380 (Fed. Cir. 2011) (stating that “a court can invoke
its inherent power to award such fees in exceptional cases based
upon a finding of bad faith”).
The Court previously awarded Plaintiff expert fees totaling
$47,720.73 based on these “inherent powers.” In making this
award, the Court concluded that Everlight’s attempts to blame
Plaintiff for its own misrepresentations regarding its sales
data constituted bad faith. The Federal Circuit’s decision in no
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way disturbs this conclusion. Accordingly, the Court does not
rescind its prior expert fee award, nor does it rescind its
award of “attorneys’ fees directly attributable to the
misrepresentation surrounding the sales data that Everlight
originally described as including only GaN products.” Dkt. No.
1770 at 10; see also Dkt. No. 1829 at 4-5 (awarding attorney’s
fees totaling $49,755.00 related to sales data
misrepresentation). Although the Court originally made the
attorney’s fee award pursuant to § 285, it equally could have
made the award pursuant to its inherent powers based on its
finding of bad faith. Therefore, pursuant to its inherent
powers, the Court awards Plaintiff its attorney fees resulting
from Everlight’s misrepresentations concerning sales data. In
all other respects, the Court allows Defendants’ motion to
rescind.
b.

Defendants’ Motion for Fees

As the prevailing party, Defendants further contend that
they are entitled to attorney’s fees because this is an
exceptional case. They argue that the case is exceptional for
two reasons.
First, Defendants claim that the case is exceptional due to
the meritless nature of Plaintiff’s claims. For a case to be
“exceptional” under § 285, the losing party’s litigating
position must be “so merit-less as to ‘stand out’ from the
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norm.” SFA Sys., LLC v. Newegg Inc., 793 F.3d 1344, 1348 (Fed.
Cir. 2015). It is not enough that its legal and factual
arguments ultimately turned out to be incorrect or unsuccessful.
See id. at 1349. Defendants contend that once Plaintiff’s expert
Dr. Piner conceded that it is “a basic law of physics that it is
not possible to epitaxially grow a monocrystalline film on an
amorphous structure,” Plaintiff’s claims ceased to have any
merit.3 In Defendants’ view, this was the critical admission
because the Federal Circuit ultimately found that the ̕738
patent was not enabled since it was impossible to grow a
monocrystalline growth layer directly on an amorphous buffer
layer. Defendants characterize Plaintiff’s various arguments and
procedural maneuvers from that point forward as “specious,”
“desperate,” “meritless,” and “frivolous.” No matter the gloss
Defendants’ try to give the record, however, they cannot escape
the fact that the Court ruled against their non-enablement
defense when they raised it on summary judgment, and then ruled
against it again on the motion for judgment as a matter of law.
Further, the jury returned a verdict for Plaintiff finding
infringement of the ̕738 patent. These facts belie the argument
that Plaintiff’s position was entirely without merit. Thus, the
Federal Circuit’s reversal of the Court’s enablement decision

Accordingly, Defendants are not seeking their attorney’s fees for the entire
case but only those incurred from September 2015 when Dr. Piner made this
admission.
3

21

does not change the Court’s conclusion that Plaintiff took a
reasonable, albeit unsuccessful, position on enablement.
Second, Defendants contend that Plaintiff engaged in a
pattern of litigation misconduct which makes this case
exceptional. Defendants complain of two sets of inappropriate
conduct: (1) Plaintiff pursued a frivolous “design-win” theory
of damages based on Defendants’ foreign sales of infringing
products; and (2) Plaintiff engaged in abusive and uncivil
conduct throughout the litigation, first by filing a series of
unmeritorious sanctions motions against Defendants, and then by
sending threatening emails to Defendants’ counsel during and
after trial.
The first set of conduct is insufficient to make this case
exceptional. Plaintiff disputes Defendant’s claim that the
“design-win” theory was unmeritorious, pointing to two
subsequent decisions finding that foreign sales of infringing
products were actionable under U.S. patent law. See WesternGeco
LLC v. ION Geophysical Corp., 138 S. Ct. 2129, 2139 (2018);
Power Integrations, Inc. v. Fairchild Semiconductor Int'l, Inc.,
No. CV 04-1371-LPS, 2018 WL 4804685, at *1 (D. Del. Oct. 4,
2018), cross appeals filed, Nos. 19-102, 19-103 (Fed. Cir. Oct.
23, 2018). The Court will not punish Plaintiff for pursuing a
novel legal theory, especially one that has since been partly
vindicated by the Supreme Court. Moreover, the Court does not
22

accept Defendants’ assertion that the “design-win” theory was
frivolous because Plaintiff ultimately dropped it at trial.
Given that the Court expressed uncertainty about the theory
throughout the case and then severed it from the main trial,
Plaintiff’s decision not to pursue the theory seems like a
reasonable decision as a matter of litigation strategy, not a
concession that the theory was without merit.
The second set of activity presents a closer question. As
Defendants point out, Magistrate Judge Boal observed that
Plaintiff’s use of sanction motions was “expensive and
wasteful.” Dkt. No. 796 at 11. On the other hand, some of those
motions were successful. Defendants were sanctioned for denying
Plaintiff reasonable access to sales data, which resulted in a
wasted trip by counsel to Taiwan. Defendants were also ordered
to pay costs related to their over-designation of documents as
“attorneys eyes only” in violation of the case’s protective
order. And Magistrate Judge Boal did not restrict her criticisms
to Plaintiff, observing that in the course of discovery Epistar
“inappropriately attempted to shift to [Plaintiff] its
obligations,” Dkt. No. 832 at 4 n.3, and “disregarded its
obligations,” Dkt. No. 911 at 5. While Plaintiff’s tactic of
weaponizing sanctions motions was unfortunate, it is precisely
the conduct to which the Court was referring when it previously
described how “both sides tangoed.” Dkt. No. 1770 at 7.
23

Therefore, the Court will not base an award of attorney’s fees
on Plaintiff’s use (or misuse) of sanction motions.
The conduct of Plaintiff’s counsel in sending threatening
emails to Defendants’ counsel during and after trial, however,
does support a partial award of attorney’s fees. During trial,
the Court reprimanded Plaintiff’s counsel, Michael Shore, for
authoring a “toxic email series” and ordered that he stop
sending emails to Defendants’ counsel. Dkt. No. 1598 at 4:245:21. Once the trial ended, Mr. Shore resumed sending emails to
Defendants’ counsel, prompting Defendants to file a motion for
contempt against him. The Court then ordered Mr. Shore to stop
sending emails to Defendants’ counsel “until proceedings before
this Court have ended.”4 Dkt. No. 1650 at 4. At least one of the
emails sent by Mr. Shore, which claimed “I usually just execute
lawyers who try to perpetrate a fraud upon my clients and the
Court,” Dkt. No. 1663-1 at 2, clearly crossed the line of
civility. Defendants have brought two contempt motions against
Plaintiff’s counsel in connection with these emails, and they
are permitted to recover their attorney’s fees for briefing and
arguing those motions. In all other respects, Defendants’ motion
for attorney’s fees under § 285 is denied.

The Court did not originally rule on the contempt motion. While that motion
technically is still pending, the Court now denies it as moot.
4

24

IV.

Motion for Disallowance of Costs
A.

Legal Standard

Under Rule 54, the prevailing party in a civil action
generally is entitled to recover costs -- excluding attorney’s
fees -- from the opposing party. Fed. R. Civ. P. 54(d)(1).
“Congress has enumerated the type of expenses that a federal
court ‘may tax as costs.’ Rule 54(d) works in tandem with the
statute.” In re Two Appeals Arising Out of San Juan Dupont Plaza
Hotel Fire Litig., 994 F.2d 956, 962 (1st Cir. 1993) (citation
omitted) (quoting 28 U.S.C. § 1920). Taxable costs include: fees
of the clerk and marshal; fees for printed or electronically
recorded transcripts necessarily obtained for use in the case;
fees and disbursements for printing and witnesses; fees for
exemplification and the costs of making copies of any materials
where the copies are necessarily obtained for use in the case;
docket fees; and compensation of court appointed experts,
compensation of interpreters, and salaries, fees, expenses, and
costs of special interpretation services. 28 U.S.C. § 1920. The
party seeking costs must file a bill of costs, and, upon
allowance by either the judge or clerk, the award of costs will
be included in the final judgment or decree. Id. The procedure
for opposing an award of costs is to file a motion for
disallowance of costs. In deciding whether to award costs to a
prevailing party, the district court has broad discretion. See
25

Martinez v. Cui, No. CIV. A. 06-40029-FDS, 2009 WL 3298080, at
*1 (D. Mass. Apr. 13, 2009) (citing Ross v. Saint Augustine's
Coll., 103 F.3d 338, 344 (4th Cir. 1996)).
B.

Analysis

At the hearing on April 1, 2019, the Court requested the
parties reach an agreement regarding an award of costs. The
parties failed to do so. Thus, the Court considers the merits of
Plaintiff’s motion for disallowance of costs.
a.

Availability of Costs

Plaintiff contends that Defendants are not entitled to
costs because they engaged in misconduct throughout the
litigation. The local rules on taxation of costs state that
“[c]osts may also be denied where the prevailing party has
engaged in misconduct during the litigation process.” Mass.
District Rules re Taxation of Costs, at 3. The local rules cite
two Third Circuit decisions which stand for the general
proposition that the Court may deny a party costs because it has
unclean hands. See In re Paoli R.R. Yard PCB Litig., 221 F.3d
449, 463 n.4 (3d Cir. 2000); Smith v. Se. Pa. Transp. Auth., 47
F.3d 97, 99 (3d Cir. 1995). In the First Circuit the decision to
award costs is left to the discretion of the district court,
except that discretion “operates in the long shadow of a
background presumption favoring cost recovery for prevailing
parties.” San Juan Dupont Plaza Hotel Fire, 994 F.2d at 963.
26

Plaintiff reminds the Court of two instances of Defendants’
litigation misconduct that it believes should bar them from
receiving costs. Both instances are detailed in the Court’s July
2016 opinion on Plaintiff’s motion for fees and costs and formed
the basis for the Court’s partial award of attorney’s fees for
Plaintiff pursuant to 35 U.S.C. § 285. Aside from these two
instances, however, the Court observed that Defendants’
litigation conduct “was not unreasonable. While counsel on both
sides were aggressive and at times uncivil, that is
unfortunately true in many patent cases. Here, both sides
tangoed. Considering the totality of the circumstances, the
Court cannot assign blame for this contentiousness to one side.”
Dkt. No. 1770 at 6. After all, as discussed above, the Court had
to bar Plaintiff’s lead counsel from sending emails to
Defendants’ counsel due to the threatening nature of his prior
emails. Notwithstanding this misconduct, the Court still awarded
Plaintiff nearly $70,000 in costs. The Court previously
concluded that Plaintiff’s misconduct was not serious enough to
overcome the presumption in favor of awarding costs. For similar
reasons, the Court finds that Defendants are entitled to recover
their costs now that they are the prevailing parties.
b.

Taxable Costs

Deposition Transcripts: Defendants originally sought
$74,234.94 in total costs for deposition transcripts. They
27

subsequently revised their request down to $52,744.33 after
Plaintiff pointed out that they were double counting for video
and transcripts of certain depositions.5 In total, the revised
request covers 48 depositions of 40 different witnesses, that
were “either (a) noticed by the Plaintiff; (b) obtained for use
because Plaintiff listed them on their witness list,
(c) designated by Plaintiff as a trial witness, or (d) their
testimony was in part admitted to the court (either in trial or
in a pre-trial proceeding).” Dkt. No. 1853 ¶ 5.
Plaintiff argues that Defendants can only recover
transcription costs for depositions that Defendants used at
trial. Four of the depositions on Defendants’ list fall into
this category, with a total transcription cost of $3,370.85.6
Under 28 U.S.C. § 1920(2), the prevailing party can recover
costs related to “recorded transcripts necessarily obtained for
use in the case.” The language of the statute does not limit
taxable costs to transcripts used at trial. And the First
Circuit has held that courts have the discretion to award
“deposition costs if special circumstances warrant it, even

In their revised request, Defendants double-count the deposition of Zita Lee
on April 29, 2014 and omit the deposition of Ting Lei on April 7, 2014.
Compare Dkt. No. 1849 at 3, with Dkt. No. 1853-1 at 2-3. The total transcript
costs above accounts for these mistakes.
6 Plaintiff concedes that the transcripts from the depositions of Paul Reidy
and Vinit Nijhawan, the latter held on September 11, 2014, are taxable. The
two other transcripts are from the depositions of Mr. Nijhawan held on March
16, 2015 and July 10, 2015. Videos of these two depositions were also played
at trial. See Dkt. No. 1853-1 at 3.
5

28

though the depositions were not put in evidence or used at the
trial.” Templeman v. Chris Craft Corp., 770 F.2d 245, 249 (1st
Cir. 1985). Therefore, the Court will not limit Defendants to
recovering just the costs for deposition transcripts used at
trial. Rather, the Court will take a case-by-case approach to
determining whether “special circumstances” exist to award
transcript costs.
First, Plaintiff claims that Defendants cannot recover the
costs of 15 transcripts from the depositions of manufacturer
representatives because Defendants previously took the position
(in opposing Plaintiff’s motion for fees and costs) that the
witnesses’ testimony was “completely immaterial to the case.”
Dkt. No. 1813 at 12. But Plaintiff fails to acknowledge the
reason that the manufacturer representatives’ testimony was
“completely immaterial”; their testimony was relevant only to
Plaintiff’s “design-win” theory of liability, which Plaintiff
ultimately did not pursue at trial. While Plaintiff is correct
that the transcripts were not necessary for trial, Defendants
are correct that the transcripts were necessary at the time they
were obtained because Plaintiff intended to use them at trial.
See WBIP, LLC v. Kohler Co., No. CIV.A. 11-10374-NMG, 2014 WL
4471412, at *3 (D. Mass. Sept. 8, 2014) (awarding costs because
it “appropriate for [the prevailing party] to obtain the
transcripts as part of its preparation for trial”). Accordingly,
29

the Court allows Defendants to recover the costs of the 15
manufacturer representative transcripts or videos totaling
$8,670.81.
Second, Plaintiff claims that Defendants cannot recover the
cost of 19 transcripts from the depositions of Defendants’
employees or expert witnesses. On this score, Plaintiff has a
stronger argument. Courts in this district generally have held
that parties cannot recover the costs of their own deposition
transcripts. See, e.g., Hillman v. Berkshire Med. Ctr., Inc.,
876 F. Supp. 2d 122, 127 (D. Mass. 2012); Legrice v. Harrington,
No. CIV.A. 09-10132-RBC, 2010 WL 2991670, at *1 (D. Mass. July
26, 2010); Neles-Jamesbury, Inc. v. Fisher Controls Int’l, Inc.,
140 F. Supp. 2d 104, 106 (D. Mass. 2001). Indeed, Defendants
made precisely the same argument to the Court in opposing
Plaintiff’s motion for fees and costs. The Court denies
Defendants costs for the 19 transcripts from the depositions of
their own employees and expert witnesses.
Once these specific objections are resolved, there are
still ten transcripts for which Plaintiff generally objects to
the award of costs. Seven of the ten transcripts are for
witnesses that Plaintiff listed in their pretrial disclosures as
“expects to call” witnesses. Defendants can recover costs for
these transcripts because it was reasonable to obtain them in
anticipation of cross-examination at trial. See WBIP, 2014 WL
30

4471412, at *3. Two transcripts were cited in Defendants’ motion
for summary judgment on invalidity. The costs for these
transcripts are also recoverable. See Keurig, Inc. v. JBR, Inc.,
No. CIV. 11-11941-FDS, 2014 WL 2155083, at *3 (D. Mass. May 21,
2014) (collecting cases allowing costs for transcripts cited in
summary judgment papers); see also Gochis v. Allstate Ins. Co.,
162 F.R.D. 248, 252 (D. Mass. 1995) (allowing costs for
depositions cited in successful dispositive motions). The one
remaining transcript is for the deposition of Ting Lei on April
7, 2014. Defendants included the transcript in their initial
bill of costs but did not supply additional information in
opposing Plaintiff’s motion to disallow costs. Without more, the
Court cannot determine whether it is appropriate to award costs
for the Lei transcript. Therefore, the Court denies costs for
that one transcript.
In total, the Court allows Defendants costs for 28
deposition transcripts for a total of $25,990.41.
Demonstratives: Defendants seek $50,527.51 for “[f]ees and
disbursements for printing.” Of this amount, Plaintiff objects
to $44,257.00 in costs related to the preparation and
presentation of demonstratives, including various graphics,
charts, and other visual aids that were used at trial. The
disputed amount relates solely to services provided by
Defendants’ trial consultant, Zang Media Consulting.
31

Under 28 U.S.C. § 1920(4), the prevailing party can recover
costs related to “exemplification.” The First Circuit has not
directly addressed whether trial demonstratives count as
“exemplification” under 28 U.S.C. § 1920(4). However, in Summit
Technology, Inc. v. Nidek Co. the Federal Circuit considered the
question of whether trial consultant fees for assistance in
preparing “trial exhibits, including computer animations,
videos, Powerpoint presentations, and graphic illustrations”
were recoverable under First Circuit law. 435 F.3d 1371, 1374-78
(Fed. Cir. 2006). After reviewing the limited caselaw, the
Federal Circuit concluded that most likely “the First Circuit
would adopt the narrow, legal definition of the term
‘exemplification’ endorsed by the Fifth Circuit, the Eleventh
Circuit, and [the Federal Circuit] applying Sixth Circuit law”
and, accordingly, denied the prevailing party costs related to
its trial consultant. Id. at 1377-78.
Defendants argue that the demonstratives created by their
trial consultant were “useful” and “helpful” to the Court in the
course of the trial. See 28 U.S.C. § 1920(4) (stating that
“exemplification” costs are taxable if “necessarily obtained for
use in the case” (emphasis added)). The types of costs that
Defendants seek to recover go well beyond the examples of
“necessary” costs identified in the Local Rules. See Local Rules
re Taxation, at 4 (“Exemplification is the making of an official
32

and certified copy of a document or transcript that is used as
evidence. Examples of items that may be exemplified include
docket sheets, complaints, medical reports, police reports,
weather reports, land records, and criminal records.”).
Defendants argue that retaining a trial consultant is customary
practice in patent litigation. That may be the case, but that
does not provide a basis for deeming the costs taxable. See
Summit Tech., 435 F.3d at 1373, 1377-78 (disallowing trial
consultant costs in a patent case). And, although Defendants
cite to favorable decisions in other circuits, they do nothing
to contest the fact that Summit Technology governs this dispute.
Accordingly, Defendants cannot recover the costs of their trial
consultant, and their total recoverable costs for copies and
exemplification is limited to $6,252.51.
Interpreters:

Defendants seek $17,819.62 in total costs

for interpreters. This amount includes all costs incurred in
connection with interpreters used at (1) trial and
(2) depositions noticed by Plaintiff. Plaintiff argues that
Defendants are only entitled to costs incurred at trial, which
it contends are just $2,000 for a single day of trial
translation.
Under 28 U.S.C. § 1920(6), the prevailing party can recover
costs related to the “compensation of interpreters.” The Local
Rules explain that this includes “[f]ees, expenses and costs of
33

interpreters . . . if their services or the product of their
services (i.e., translated depositions) are used at trial.”
Local Rules re Taxation, at 5 (emphasis added). Likewise, courts
in this district generally have taken a broad view of the types
of interpretation costs that are taxable under 28 U.S.C. § 1920.
See, e.g., Osorio v. One World Techs., Inc., 834 F. Supp. 2d 20,
23 (D. Mass. 2011) (rejecting argument that interpretation costs
had no connection to trial); Neles-Jamesbury, 140 F. Supp. 2d at
106 (holding translator costs were taxable despite (1) being
incurred “long ago during discovery” and relating to “marginally
relevant” documents, and (2) translated documents were not
ultimately used at trial); E. Bos. Ecumenical Cmty. Council,
Inc. v. Mastrorillo, 124 F.R.D. 14, 15 (D. Mass. 1989) (holding
that costs incurred for interpreters in connection with
depositions were taxable under 28 U.S.C. § 1920(6)). Plaintiff
points to no contrary authority. Therefore, Defendants can
recover the full amount they seek for interpretation costs.
Uncontested Costs: Defendants’ bill of costs seeks an
additional $28,776.83 in costs for (1) trial transcripts,
(2) printing fees and disbursements, and (3) witness fees.
Plaintiff does not contest these costs, and all three categories
of costs are taxable under § 1920. See 28 U.S.C. §§ 1920(2)-(3).
Therefore, Defendants are allowed these costs.

34

CONCLUSION
For the foregoing reasons, 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)
SO ORDERED.
/s/ PATTI B. SARIS
Hon. Patti B. Saris
Chief United States District Judge

35