Gertrude Neumark Rothschild v Cree, Inc., Civil Action No. 10-10133-WGY, 210 U.S. Dist. LEXIS 47223 (D. Mass. May 13, 2010) (Young, D.J.) [Standing, Joint Inventorship, Infringement, Invalidity, Enablement, Claim Construction, Inequitable Conduct].

The District Court (Young, D.J.) ruled on more than ten motions, including a motion to dismiss, a motion to clarify claim constructions, and a number of motions for summary judgment filed by both Plaintiff Gertrude Neumark Rothschild (“Rothschild”) and the Defendant Cree, Inc. (“Cree”).

Rothschild is an individual that charged Cree with patent infringement of two of her patents, U.S. Patent Nos. 4,904,618 and 5,252,499 (“the Patents”), which relate to methods of producing light emitting diodes (“LEDs”). While the District Court did narrow the issues by granting some of the motions for summary judgment, most of the motions were denied. A number of interesting issues were discussed in the opinion, including matters pertaining to standing, joint inventorship, and enablement.

Generally, LEDs produce light based on a gap configuration in which light is released as electrons jump across the band gap. The wider the gap, the more difficult it is to produce light. The width of a band gap determines the resulting light color. The Patents are directed to ways of doping crystals and semiconductor substrates to improve performance across wide band gaps. Doping is a process by which impurities are intentionally introduced to a semiconductor material to change its electrical properties.

Two of the central issues in the motions related to whether Rothschild is the owner of the Patents and whether Rothschild is the sole inventor of the Patents.

With regards to ownership, Cree moved to dismiss the case, asserting that Philips Lumileds Lighting Company L.L.C. (“Philips”) is the rightful owner of the Patents. Philips employed Rothschild from 1962–1985. As part of her employment, Rothschild signed an employee agreement that read, in part, that the employee “hereby assign[s] and agree[s] to assign… to [Philips]…all inventions and technical or business innovations developed or conceived by me, alone or with others, while I am employed….” In 1978, Rothschild and Dr. Brian Fitzpatrick, another Philips employee, submitted an invention disclosure directed to “[i]mproving the conductivity of large gap semiconductors.”

Because of the present tense nature of the employee agreement, the District Court determined that the agreement acted as an automatic assignment, as opposed to merely an obligation to assign, and thus an assignment takes place once an invention comes into being. However, because material issues of fact remained as to whether the entire invention was conceived during Rothschild’s employment (Rothschild asserted that at least one key element of each claim was conceived after she left Philips), the Court refused to grant the motion to dismiss. Interestingly, Philips had been a party to the suit, but in 2008 Philips and Rothschild entered into a settlement agreement in which Philips represented that it abandoned and relinquished any claim to right, title, interest in, or ownership of the Patents. The District Court found this settlement agreement had no bearing on the determination as to who had legal title to the patent at the time of the alleged infringement.

Further, the District Court ruled that the burden of proving ownership at trial was Rothschild’s because the plaintiff bears the burden of establishing standing. Rothschild argued that a “presumption of ownership” existed because 35 U.S.C. § 282 creates a presumption of patent validity, and thus the burden shifted. The District Court, however, found that § 282 does not create a presumption of ownership because ownership has no bearing on the validity of a patent.

While Rothschild would have had to conceive the entire invention while employed at Philips for Philips to have exclusive ownership rights, the same is not true for evaluating inventorship. To be an inventor, an individual needs only to make a contribution that helped make the invention patentable. One of Cree’s motions for summary judgment was for invalidity under 35 U.S.C. § 102(f) for failing to name a co-inventor. Cree asserted that Fitzpatrick is a rightful co-inventor based at least on the fact that Fitzpatrick was named as an inventor in the 1978 invention disclosure. Fitzpatrick himself, however, denied that he made any inventive contributions. Naturally, Rothschild agreed with Fitzpatrick.

The District Court indicated that Cree’s evidence tended to show co-inventorship, and further, found that Fitzpatrick’s position with respect to inventorship appeared to change over time. Nevertheless, the District Court concluded that Fitzpatrick’s credibility should be decided by a trier of fact and thus denied Cree’s motion. A number of summary judgment motions related to issues of invalidity. The District Court granted some of Rothschild’s partial summary judgment motions as they pertained to anticipation. With respect to one reference in particular, the Crowder reference, both parties moved for summary judgment. While the motions were denied, only Cree’s motion was substantively addressed in the opinion. Cree attempted to prove its case only by relying on deposition testimony from Rothschild’s expert. The District Court noted that the law requires that a single witness at least having ordinary skill in the art (and not the party’s attorney) must identify each claim element, state his or her interpretation of the element, and “explain in detail how each claim element is disclosed in the prior art reference.”

While during the expert’s deposition Cree did walk through claim elements with Rothschild’s expert, the District Court ruled that the testimony did not provide enough detail to meet the standard required of expert testimony on the issue of anticipation. Some of the expert’s answers were restricted to “Yes” in response to whether a reference disclosed a particular claim element. The District Court stated that “[a] sufficiently detailed explanation would have pointed to the page or pages of the reference, at the very least.”

Another motion for summary judgment due to invalidity related to enablement. Cree argued that one of the Patents was not sufficiently enabled, at least because there was no evidence that the inventor, nor anybody else, ever successfully practiced the examples provided in one of the Patents. Rothschild countered by arguing that she, the inventor, was not a person skilled in the art. The Court lamented that the parties could not agree on a definition of one skilled in the art, and because Cree failed to show that a person skilled in the art could not practice the invention, the Court denied the motion.

Rothschild moved for partial summary judgment of no inequitable conduct. Most of Rothschild’s motions were granted as a result of the District Court finding that there was no evidence of an intent to deceive. The motions that were not granted related to failing to name Fitzpatrick as a co-inventor and failing to disclose one article.

Rothschild also moved for reconsideration of the construction of three separate claim terms. The District Court was not compelled to revise the definitions of either of the two terms that were already construed, nor was it compelled to construe the additional term beyond its ordinary meaning. While the District Court did conduct a Markman hearing on a fourth term, “wide band gap semiconductor,” the District Court refused to read the limitation “hard-to-dope” into the definition, as requested by Rothschild. The Court found no explicit disavowal of the ordinary meaning of the term “wide band gap semiconductor” in the specification.

Finally, the District Court denied Cree’s motions for summary judgment with respect to infringement. Focusing on some of the claim terms it refused to construe or re-construe, the District Court held that the constructions were, perhaps purposefully imprecise, and thus necessitated a trier of fact to determine the infringement issues.