Fish & Richardson Achieves Three Inter Partes Review Victories For Micron Technology Against The University of Illinois’ Semiconductor Patents

Monday, March 17, 2014 - 11:45

Fish & Richardson has announced 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 Mr. 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.

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Fish & Richardson has received four 2014 Global Legal Awards from Corporate INTL magazine for practice and service excellence.  Fish was named “Patents Law Firm of the Year” in California and “Trademark Law Firm of the Year” in Washington, DC and Germany. In addition, Douglas McCann, managing principal of the firm’s Delaware office, was named “Life Sciences IP Attorney of the Year in Delaware.”

The Corporate INTL Global Legal Awards recognize the world’s leading legal teams and individuals who stand out as experts in their field and who provide outstanding service to clients. Winners are selected through a rigorous process that includes over one million nomination forms that are sent to business leaders, investors, and advisers throughout the world; an in-depth review by an independent panel; and detailed research focusing on expertise, service range, business type, and geographical location.

Fish’s award-winning Patent Practice is one of the largest in the United States with more than 220 patent attorneys and agents and more than 65 PhDs across numerous technical areas. The firm works with companies ranging from Fortune 100s to startups across almost every industry and has established a reputation in the science and technology communities for strategic patent services that maximize the value of intellectual property (IP). 

The elite Trademark Group at Fish offers the resources of a global IP leader, the expertise of a boutique, and the personal service that comes with a local presence.  Fish's 35 trademark attorneys, located in 11 offices in the U.S. and one in Germany, provide a full range of trademark advice and representation, including trademark counseling, prosecution, clearance work, complex litigation, and alternative dispute resolution. Fish has been named a top trademark law firm for four consecutive years by World Trademark Review (WTR) 1000, a guide to the world’s leading trademark legal services providers.

Douglas McCann, managing principal of the firm’s Delaware office, was named “Life Sciences IP Attorney of the Year in Delaware.” His practice, which emphasizes patent litigation and intellectual property litigation, includes extensive focus on life sciences litigation in courts across the country.  He has substantial experience in both jury and bench trials.