Fish & Richardson 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
FOR IMMEDIATE RELEASE
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.
Recent Patent Trial and Appeal Board rulings should lead patent owners involved in a post-grant proceeding to be even more careful when considering settlement offers.
Unlike previous re-examination proceedings before the U.S. Patent and Trademark Office, the America Invents Act allows for termination in the event of settlement of newly created post-grant proceedings. See 35 U.S.C. §§ 317(a), 327(a). As a consequence, just 16 months since these proceedings started, the PTAB is encountering an increasing number of joint motions to terminate the proceedings.
In 2013, inter partes review and covered business method review — two new procedures created by the America Invents Act — fully joined ex parte re-examination as options for challenging validity in the U.S. Patent and Trademark Office. Each offers a profoundly different forum for adjudicating validity compared to U.S. district court. At the same time, many PTO-based challenges proceed in parallel with a related district court litigation, creating the possibility of inconsistent results — a possibility that was realized in two important 2013 decisions: Fresenius USA Inc. v. Baxter International Inc., __ F.3d __ (Fed. Cir. 2013) and Apotex Inc. v. Alcon Pharmaceuticals Ltd., IPR2013-00012 (PTAB Mar. 19, 2013). Both decisions illustrate the complexities that the availability of different tribunals has created, and the challenges that litigants face when executing an enforcement or defensive strategy.