Fish & Richardson Wins Federal Circuit Affirmance of Three Inter Partes Reviews for Micron Technology Against the University of Illinois' Semiconductor Patents

Washington, D.C., March 16, 2015 - Fish & Richardson announced today that the U.S. Court of Appeals for the Federal Circuit has issued a Rule 36 affirmance of three inter partes reviews (IPRs) that were filed against three University of Illinois patents on behalf of Micron Technology, Inc. In March 2014, 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 University of Illinois appealed the PTAB's decision to the Federal Circuit, which issued its Rule 36 affirmances on March 12, 2015. The Fish appellate team included principal Ruffin Cordell, who argued the case, and principal Tim Riffe and Adam Shartzer who also handled the original IPRs.

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.

"This is another big victory for our client Micron and its world-class in-house legal team who was willing to engage in the new AIA processes, as well as a testament to our firm's established post-grant and appellate practices. These were the first IPRs filed by Fish & Richardson and helped establish the firm's foothold in this important and growing part of the IP field," said Riffe. "This is a great example of how post-grant proceedings can be leveraged as an important tool in overall strategic litigation defense, which Fish has integrated across its litigation practice," 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 pursue 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 IPR proceedings and on appeal.