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Companies Agree to Pay to Settle Patent Infringement Suit

BU to be compensated for technology in popular electronics products

Theodore Moustakas, Boston University, patent infringement lawsuit, gallium nitride thin films, blue light emitting diodes, LEDs

BU has settled several lawsuits alleging that companies infringed a patented technology invented by Theodore Moustakas, a College of Engineering professor. Photo by Vernon Doucette

Twenty-five companies have settled lawsuits filed by BU alleging infringement of a professor’s patented technology for producing blue light-emitting diodes (LEDs).

The settlement, whose dollar amounts have not been disclosed, was negotiated with RPX, a San Francisco firm that acquires patent rights for corporate clients to help them avoid lawsuits. RPX will pay BU a licensing fee for the patents, which will be available to all RPX members. About a dozen firms that aren’t RPX members remain in litigation with the University.

The suits, filed last year, involved the use of gallium nitride thin films, patented in the 1990s by Theodore Moustakas, a College of Engineering professor of electrical and computer engineering. The films facilitate the production of high-quality blue LEDs, which are used in an array of electronics products, from flat-panel displays on handheld devices to televisions and general lighting. Many popular consumer products incorporate the technology, the University says, including the iPhone 5, the iPad, and the Kindle Paperwhite 6”.

“This settlement, as well as the licensing of the patents previously by other blue LED manufacturers, is recognition of the importance of my work in the development of this novel technology,” says Moustakas.

Vinit Nijhawan, managing director of BU’s Office of Technology Development, says the settlement “acknowledges Ted’s patent as being a key part of the blue LED industry, which is estimated at about $11 billion annually.

“This is really a victory for him,” says Nijhawan. “It acknowledges him as one of the key inventors behind the blue LED.”

BU says it sued the companies to safeguard the research and invention of one of its faculty members. “We’re protecting our intellectual property,” Provost Jean Morrison said when the suits were announced last year. “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.”

Before filing the lawsuit, the University retained a law firm specializing in intellectual property. Nijhawan says the law firm hired independent experts, who confirmed BU’s suspicions of patent infringement. The University tried to negotiate licensing royalties with several product manufacturers, but was rebuffed, leading to the suits, Nijhawan says.

“Our faculty are increasingly working with industry and finding practical applications for their work,” says Gloria Waters, vice president and associate provost for research. “We will protect their intellectual property as they do so.”

Rich Barlow

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

7 Comments on Companies Agree to Pay to Settle Patent Infringement Suit

  • BU Senior on 01.15.2014 at 11:57 am

    Although I’m glad he was compensated, I’m worried as to how this will affect our chances of landing a job at these companies?

    Does a University suing companies like this happen often?

    • lole on 01.15.2014 at 2:35 pm

      Not sure about how often this kind of thing happens, but if a company holds a grudge against BU so hard that they won’t hire graduates, you have to ask yourself if that is even a company you would ever want to work for

    • Kate on 01.15.2014 at 2:59 pm

      Usually university’s protect their patents from the very beginning. No reputable company will even let this cross their mind for hiring.

  • Tanj on 01.15.2014 at 2:24 pm

    A great victory for BU, Prof. Moustakas and ethics in general!

  • Curious on 01.16.2014 at 4:20 pm

    So, since the patent was filed by the University and fought by them, how much of this compensation will go into University funding? Does this mean our tuition spike won’t be another absurd $3K.

    • Zach on 01.20.2014 at 7:41 am

      I’m thinking the same thing. Unsettling to know that the amount was never disclosed. BU will most definitely continue to raise tuition, though.

  • kathy on 07.21.2014 at 9:31 am

    Fabulous! In a world that continues to grow in technology advances and intelligent property, it is good to know that BU supports its own through both professional recognition and the legal defense of those who have made significant contributions to the world as we presently know it. The corporate world that utilized the inventions/patents/or otherwise is too much for one individual to defend. So glad to see the University’s support, which should also generate some sort of revenue longer term that benefits BU, the students, faculty, and alumni. I am pleased, as a present grad student, to see this resolved in a timely and professional manner. Great work!

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