March 31, 2016
Fish Achieves Three Inter Partes Review Victories for Micron Technology Against the University of Illinois' Semiconductor Patents
PTAB finds all three University patents unpatentable and cancels all claims
Washington, D.C., March 17, 2014 - Fish & Richardson announced today that it has achieved complete victories in three inter partes reviews (IPRs) filed against three University of Illinois patents on behalf of Micron Technology, Inc. The Patent Trial and Appeal Board (PTAB) held each claim of the University of Illinois' semiconductor patents unpatentable, and as a result ordered each claim cancelled. The PTAB also found in Micron's favor on every instituted ground of rejection, including a four-way obviousness rejection of one of the claims in a challenged patent.
The case dates back to December 2011, when the University of Illinois at the time, an academic partner with Micron sued its partner in the U.S. District Court for the Central District of Illinois. The complaint alleged patent infringement of three patents naming Drs. Joseph Lyding and Karl Hess as inventors that pertain to the use of deuterium in the fabrication of semiconductor devices. In August 2012, the court granted Micron's request for a stay of litigation in anticipation of filing IPR petitions under the new America Invents Act law, which went into effect in September 2012.
Fish filed Micron's three IPRs against the University patents on October 2, 2012, which were among the first petitions filed under the new post-grant review procedures and the first filed by Fish on behalf of a client.
"This is a huge victory for Micron and for our experienced post-grant team at Fish," said Tim Riffe, a principal at Fish & Richardson who, along with Adam Shartzer and Brian Livedalen, handled the IPRs. "We were confident that the University patents were invalid, so we leveraged the inter partes review proceedings as an important tool in our overall strategic litigation defense," added Shartzer.
While the University asserted a subset of claims against Micron in its patent infringement suit, Fish constructed an aggressive strategy with the IPRs. It sought to invalidate every claim, in every asserted patent, so that the University could no longer harass Micron an industry leader with patent infringement claims that Micron believed were unfounded. Fish leveraged its strength in post-grant proceedings, IP litigation, and patent prosecution and in-depth expertise in highly complex semiconductor manufacturing processes to build a solid technical case during the proceedings.
One of the unique aspects of inter partes review is that there is no presumption of validity. For example, it does not matter how many times a prior art reference might have been previously considered by a USPTO examiner. The PTAB has shown a willingness to reconsider prior prosecution arguments anew, particularly in view of a well-crafted IPR petition with a supporting expert declaration.
"IPR proceedings are different from prosecution proceedings and companies seeking to use them effectively need counsel who truly understands the intricacies of the Rules and how they can affect your strategic positioning throughout a trial," added Riffe. "The PTAB generally resolves these proceedings within a year of institution, so the process moves quickly and there is little margin for error if the Rules are misconstrued or misapplied. Micron knew our IPR strategy was the right approach when we presented it to them, and it's great to achieve this successful result on their behalf," noted Shartzer.
The enactment of the America Invents Act (AIA) on September 16, 2012, provided a number of new post-grant tools to challenge patent validity. These proceedings have become an important part of patent and litigation strategy, and in some instances are helping to reduce the time and cost associated with patent litigation.
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