22 for 23: Second and Third Micron Tech Inter Partes Review Trials Instituted

As previously discussed, Micron Tech filed three petitions seeking inter partes review against The Board of Trustees of the University of Illinois. Because they are so closely related, we consolidate into this post a discussion of the grant of both the second and third of these IPR trials in cases styled as Micron Technology, Inc. v. The Board of Trustees of the University of Illinois (IPR2013-00006 and IPR2013-00008), involving US Patent Nos. 6,888,204 and 5,872,387. In each case, all challenged claims were put into the IPR trial.

The technology involved in the ‘204 and ‘387 patents involves methods of treating a semiconductor device by passivating (or annealing) the device with deuterium, an isotope of hydrogen. More specifically, each independent claim includes a product-by-process limitation. As such, patentability of the claims are determined by the product itself, not the process. In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (“Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself.”). Order at 11-12.

Turning to the grounds for challenge, the Board considered the unpatentability of the ‘204 patent in view of a prior art reference that taught all but one limitation of the product made by the claimed process. To meet that missing limitation, Patent Challenger argued that the prior art reference inherently taught the missing limitation. To support that position, Patent Challenger’s expert opined that the missing limitation necessarily was present in the prior art – a position adopted by the Board. Important to the Board’s decision in this regard, Patent Owner did not challenge this inherency argument.

In the end, the remaining issues discussed by the Board significantly overlapped those of the previous decision and are not repeated here. Micron Technology successfully overcame the reasonable likelihood threshold and will proceed to trial against all three University of Illinois patents.