March is an exciting month for colleges. The captivating national basketball tournaments are in full swing, students get to enjoy spring break, and long-lost academicians emerge from winter hibernation. And, if you happen to study at Boston University, you can follow along as your school has assumed a plaintiff’s role in a patent infringement lawsuit.
A patent owner enjoys the exclusive rights to make, use, sell, and offer for sale the underlying invention covered by the patent. Here, the Trustees of Boston University, a non-profit organization, filed for a patent application for “Highly Insulating Monocrystalline Gallium Nitride Thin Films” on January 13, 1995. A professor of electrical and computer engineering at Boston University, Dr. Theodore D. Moustakas, Ph.D, invented said films. The USPTO granted the University a patent (U.S. Patent No. 5,686,738) on November 11, 1997. This ensured that, for the duration of the patent, the Trustees would enjoy exclusive rights to make, use, sell, and offer for sale the claimed films.
In 2012, the University charged a pair of entities, Epistar Corporation and LedLight.com, LLC, with infringement of said patent. According to the University, the Defendants manufactured a gallium nitride thin film semiconductor device which had been claimed by the ‘738 Patent. Moreover, the University claimed that the Defendants were manufacturing other products which infringed patented claims to light-emitting diodes (LEDs) and products bearing LEDs. The University also accused the Defendants of making, using, selling, offering to sell, and importing the infringing products without any sort of authority or license from the University.
In addition, the University claimed that Defendants’ acts of infringement caused, and would continue to cause, substantial and irreparable harm to the University. In its complaint the University pled for an award of damages and for an injunction to restrict Defendants from making, selling, and offering for sale any of the infringing products. The University also asked each of the Defendants to provide an accounting of all gains, profits and advantages stemming from infringement of the ‘738 Patent. This past Friday, March 21, in the United States District Court for the District of Massachusetts, the University sought sanctions against Epistar Corporation for using its wholly owned subsidiary to conceal information about its customers and sales from the University.
A patent infringement suit may drag on for a while. But, regardless of timing, this suit brings to light a fascinating battle between academic institutions and corporate entity. It is worthwhile to track this case and see whether the Trustees of Boston University ultimately prevail.
(Neeraj Joshi)