Since 2011, Micron and the University of Illinois has been in case on these patents related to semiconductor production with deuterium for better performance. However, the Micron company decided to file for inter partes petition as a response to the situation. This petition is interesting since it officially requests the patent trial and appeal board (PTAB) to examine the claims for any instance of obviousness. As a result, the patent office was unable to accept the patents especially on the basis of obviousness on claim 10 of patent 6888204.
In the patent 688204, there is an instance of obviousness that exists in one of the claims. Claim 10 is describing the semiconductor production process. In fact, the process does not seem that different from making a standard semiconductor device with the right expertise. Also, the PTAB made assumptions that the miniaturization of the technology would seem obvious to the expert. Overall, it seemed that the decision by the PTAB may have been debatable.
Regardless of the situation, the legal team for Micron made very smart strategies that could be implemented by entities facing patent litigation. The petition for inter partes review seems to be a powerful technique since it does disregard the prior decisions on the validity of the patent. Also, the only difficulty with this strategy is that it requires examination of nearly all the parties and patent claims. The inter partes review requires that one of the individuals would be highly capable of proviing one of the claims as invalid.
More surprisingly, the PTAB used the decision in KSR vs Teleflex to indicate that their decision could be based on what an expert in semiconductor production would do. One of the major weaknesses in the claims was the statement of a gate insulating film with thickness of 55 angstroms or less. With at least one claim shown invalid, the overall patent is greatly weakened. It is interesting that they relied on this expert resource to greatly shape the final decision.
http://www.ipwatchdog.com/2014/04/02/the-ptab-kiss-of-death-to-university-of-illinois-patents/id=48829/
http://www.freepatentsonline.com/5872387.html
http://ipwatchdog.com/blog/IPR2013-00005-533Patent.pdf
http://www.uspto.gov/aia_implementation/faqs_inter_partes_review.jsp
http://www.freepatentsonline.com/6888204.pdf
Firstly, love the title! Before reading this post, I had not even known much about the Patent Trial and Appeal Board, so thank you for spreading the knowledge. Nice to know that technology firms such as Micron — a company that one of my friends actually interned with last summer — is using smart strategies in the court to defend their stance.
ReplyDelete*are using smart strategies
DeleteThis case truly demonstrates that patent cases are not just based on facts be heavily relies on the strategies that the two companies decide to conduct. This is why I think a profession in patent litigation cases require the most apt mind with expertise in the field. Using KSR's expert argument and examining all parties' patent claims allowed Micron to come out on top. The only downside I do see in this great strategy is that it requires a lot of time and skill, which would be very costly for smaller companies. This again goes back to the question, are patents a big kid's league?
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