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BU Sues Leading Tech Firms for Patent Infringement

Dispute involves popular smartphones, tablets, other devices

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The University has filed a number of lawsuits against some of the brightest stars in the high-tech constellation—Microsoft, Motorola, Sony, and BlackBerry among them—to defend a College of Engineering professor’s patented material used in the production of blue LEDs (light-emitting diodes), which are components in many electronic devices.

The lawsuits, like several others filed earlier this year, claim that the companies made use of Theodore Moustakas’ invention without securing a license from the University. The ENG professor of electrical and computer engineering is the recipient of the University’s 2013 Innovator of the Year Award. BU alleges that the companies are making or selling products that have used Moustakas’ invention without permission and is requesting a jury determination of damages owed the University. The earlier lawsuits target such giants as Apple, Amazon, Hewlett-Packard, Samsung, and LG Corporation.

BU Provost Jean Morrison emphasizes the importance of the University’s protecting the research and invention of one of its faculty, particularly when unlicensed use has become so widespread. “We’re protecting our intellectual property,” she says. “We are an Association of American Universities research university and as such, the creation of new knowledge is fundamental to our mission. Ted Moustakas created a process that significantly improves the performance of these products. It’s incredibly important for a university to defend its intellectual property.”

Morrison says the number of defendants—close to 40—reflects the demand for handheld devices whose performance is improved by Moustakas’ invention and the prevalence of companies using the technology without a license from the University. The defendants include makers of both LEDs and of consumer products using those LEDs. The University alleges that companies infringe the patent in selling, among other products, the iPhone 5, iPad, and MacBook Air from Apple; Samsung’s Galaxy Tab 2; Amazon’s Kindle Paperwhite 6”; and Hewlett-Packard’s Pavilion 14 Chromebook, Slate 7 tablet, and Pavilion 20xi IPS.

Boston University BU, College of Engineering professor electrical and computer engineering Theodore Moustakas, research technology lawsuit, blue LED light-emitting diodes technology infringement

ENG Professor Theodore Moustakas' invention is the subject of a BU lawsuit against top tech companies. Photo by Vernon Doucette

“These devices are used by huge numbers of people,” the provost says. “This is first and foremost about protecting our intellectual property and recognizing Professor Moustakas’ pioneering work. We put a great deal of careful thought into the decision to proceed with these lawsuits.”

Microsoft, Motorola, and Sony did not respond yesterday to requests for comment. Blackberry, LG, and Hewlett-Packard declined comment on the suits, which are filed in the United States District Court for Massachusetts, because the defendants do business in the state. Amazon, Samsung, and Apple did not respond to previous requests for comment; Apple earlier had declined to comment on the litigation to the Boston Herald.

At issue is the production of “highly insulating monocrystalline gallium nitride thin films,” which enable the manufacture of blue LEDs usable in products such as flat panel displays on handheld devices and televisions, as well as in general lighting. The primary patent asserted in the litigation was issued in 1997, based on an application first submitted in 1991. Blue LEDs are especially attractive because they can create white light under certain conditions, says Vinit Nijhawan, managing director of BU’s Office of Technology Development. Nijhawan says Moustakas’ invention makes those LEDs more effective and easier to produce.

To verify suspicions of patent infringement, the University retained Dallas-based law firm Shore Chan DePumpo, specialists in intellectual property law who have worked for other major research universities here and abroad (including Penn State, the Universities of Virginia and Texas, and the California Institute of Technology). Shore Chan DePumpo hired consultants and laboratories to “reverse engineer” each defendant’s products. Nijhawan says the experts dismantled devices and “cross-sectioned the LEDs into incredibly tiny samples. These samples were analyzed using several state-of-the art techniques, including transmission electron microscopy, X-ray diffractometry, and secondary ion mass spectroscopy. The analytical data were reviewed by several independent scientific experts before any legal allegations were made.”

Even then, the University filed suit “only after meeting with several alleged infringing manufacturers and affording them a fair opportunity to take a license at a reasonable royalty,” he says. “Several of those manufacturers refused to negotiate a reasonable royalty, thereby forcing Boston University to proceed with litigation.”

Moustakas says his patented invention was licensed to several companies that “are disadvantaged, because they paid to use the technology, while others are using it without compensating the owner of the intellectual property, which is Boston University.” Abiding by patent law, he says, is essential “in the development of modern technologies.”

18 Comments
Rich Barlow

Rich Barlow can be reached at barlowr@bu.edu.

18 Comments on BU Sues Leading Tech Firms for Patent Infringement

  • BU Alumnus on 09.24.2013 at 6:49 am

    I wonder if any of the sued high tech companies will be recruiting on the BU campus this year? Doubtful.

    • BruceAHz on 09.24.2013 at 11:54 am

      Why would you think that companies would not try to find the best talent to hire just because the University was suing them for patent infringement. It certainly does not hurt the University financially.

      Such action only hurts the company (assuming there are good prospective employees here) and the students.

    • Overlord of the Underclassmen on 09.24.2013 at 12:53 pm

      They don’t recruit here anyways, only across the river… Although, I actually doubt they’ll seriously bar recruitment from BU forever. If our faculty and students are coming up with such innovative technology, don’t you think those companies would like to retain our human capital?

  • Cocopuff on 09.24.2013 at 8:57 am

    Lol ! I remember reading this a while ago – http://www.bu.edu/law/news/BessenMeurer_patenttrolls.shtml

    Funny how things can come back to haunt !

    • Cocobuff on 09.24.2013 at 1:22 pm

      That article is only tangentially relevant. Patent trolls do not invent – they just obtain other peoples patents and use them to sue infringers. They also prey on smaller companies that will settle, because they do not have the legal or monetary resources to endure a legal battle. Not to mention that NPEs typically leverage vague and over-broad software patents – again, patents that they did not file.

      • David on 09.24.2013 at 2:22 pm

        I’m sorry Cocobuff, but it is extremely relevant. Intellectual Ventures is widely considered to be a “patent troll” or NPE. They have over 2,000 internal inventions, very few of which they put into practice. Many of their acquired patents come from universities (e.g. http://www.nature.com/news/universities-struggle-to-make-patents-pay-1.13811 ). Boston University could sell to IV and make some money, or it can risk the legal battle itself and possibly make more money, or lose its cases and not make money. There is little difference between BU enforcing the patent and IV enforcing the patent.

        You claim NPEs only act in software patents, which shows your lack of knowledge in this area. The paper you claim is “tangentially relevant” shows that only 22% of the targets of NPE lawsuits are software companies. 78% of targets produce tangible goods.

    • Kate on 09.25.2013 at 11:05 am

      Yeah, this is definitely not a patent troll situation. They’re being pursued by the actual entity that developed the inventions and these aren’t obscenely generic “inventions” (like the case of the online shopping cart).

  • Meh on 09.24.2013 at 10:10 am

    This will wind up being a waste of university resources…

  • Just another BU parent on 09.24.2013 at 10:15 am

    How much did it cost to retain law firm ofShore Chan DePumpo?
    Couldn’t this money have been used for to promote the the research of the faculty more effectively?
    …or for scholarships?

    • Overlord of the Underclassmen on 09.24.2013 at 12:52 pm

      Often in these cases, the plaintiff sues for coverage of legal fees in addition to the damages sought.

    • Just another person who know about Google on 09.24.2013 at 6:31 pm

      Google “Contingency Fee”

  • Kate on 09.24.2013 at 10:48 am

    It’s nice to see that BU is finally protecting its patents (and the very large profits rightly to be made from them) in a more aggressive manner. If they had been doing this from the start, BU itself would probably be more well off in both its reputation and finances. Unfortunately because they waited so long and these products are so commonplace now, they appear petty and like they’re trying to take down giants, when they’re really just trying to get what’s owed.

  • Joe Software on 09.24.2013 at 10:53 am

    This is why the patent system is broken and needs to be fixed. First of all, what is reasonable compensation? Based on the date of this patent, why is it still protected? This is what stifles creativity and advancement. Universities and professors should be fairly compensated and recognized for their discoveries however it only a small piece of the puzzle. Since universities don’t build products and make anything, why should they profit from the commercialization? The point of a university is to research for the sake of learning, expanding knowledge and possibly prestige.

  • John Walker on 09.24.2013 at 6:49 pm

    A lot of you fail to understand why patent laws exist. There has to be an economic incentive to invent or nobody would bother. One of the reasons that the US has historically been a global leader in research, development, and innovation is that our intellectual property rights have historically been very strong (relatively). If we don’t protect the rights of inventors, nobody will innovate. It’s as simple as that.

    • Joe Smith on 09.29.2013 at 2:31 pm

      What actual data do you have to support that view? And are you suggesting that university research would evaporate if schools were unable to sue others? Seriously? All motivation to get grants, publish, be recognized, get tenure, etc., etc. — all go away simply because their employer can’t sue?

  • RDShell on 09.24.2013 at 7:23 pm

    Well, think about all these discoveries made in universities labs and used by these companies. The fact that they have been made through academic research shall not prevent the high tech companies from paying the royalties due to the inventors.

  • JS on 09.25.2013 at 2:21 pm

    Why all this debate? Bottom Line:

    1) This Prof. invented and patented this technology.
    2) These commercial companies used this technology without proper permission.

    • LarryO on 01.15.2014 at 11:39 am

      Exactly right!

      While no $ figure was given in the article, I hope it is in the 9 figure range, as it should be.

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