The PTAB’s pace, in its decisions relating to the institution of inter partes review trials, is picking up steam…and that is not good news for patent owners. The first of three decisions instituting an inter partes review trial based on a petition brought by Micron Technology was granted in the IPR styled Micron Technology, Inc. v. The Board of Trustees of the University of Illinois (IPR2013-00005), involving US Patent No. 6,444,533. The Board instituted the trial on all 8 claims of the patent based on four of 24 proposed grounds.
As described in more detail below, this decision by the PTAB touches upon issues relating to: 1) entering a priority document for the patent-at-issue as an exhibit; 2) the inclusion of witness testimony from the prosecution of the patent; 3) art previously considered by the Patent Office during examination; 4) specific claim construction issues; 5) teaching away; and 6) unexpected results.
The subject matter of the ‘533 patent involves methods of treating a semiconductor device by passivating (or annealing) the device with deuterium, an isotope of hydrogen. It is interesting to note that the Board commented upon the lack of evidence provided by Patent Owner regarding the priority date of the patent-at-issue. It is unclear if the Board is suggesting that is a requirement in the future, but it bears monitoring. Order at 4, n.4.
Patent Challenger offered numerous prior art references, including testimony that was originally entered in the prosecution record and art that was previously considered by the Office during prosecution of the subject patent. Patent Owner tried to keep that old art out of the IPR proceeding, pursuant to 35 USC §325(d), but the Board declined that request: “we are not required by statute to reject a petition based upon the fact that certain arguments or art were previously considered by the Office…” The Board found that the record in this proceeding differed from prosecution, given that the art was considered here in view of an expert declaration proffered by Patent Challenger. Is an expert declaration, therefore, the magic elixir that prevents the application of §325(d)?
The Board’s treatment of claim construction offered an interesting recap of the parties positions. At threshold, Patent Challenger included in its position a statement that the claims should be given their broadest reasonable interpretation. Patent Owner responded by suggesting that such a position was improper given that Patent Challenger proffered a different interpretation in litigation and the Trial Practice Rules require that “where a party believes that a specific term has meaning other than its plain meaning, the party should provide a statement identifying a proposed construction of the particular term and where the disclosure supports that meaning.” 77 Fed. Reg. 48764. This is a very interesting argument that may have the potential to force a Patent Challenger to adhere to litigation positions. Despite the creativity of the argument, though, Patent Owner failed to actually include those litigation positions as an exhibit to its Preliminary Response and, as such, the Board could not take them into consideration in its decision. Order at 9-10.
Among the grounds the Board granted was obviousness in view of a single reference. The Board found that the reference lacked one of the steps of the claimed method, but that the testimony of Patent Challenger’s expert provided that missing step. Order at 11. This is certainly a helpful development for patent challengers and underscores the importance of expert declaration testimony.
Lastly, the Board addressed, but ultimately discarded, arguments relating to “teaching away” and “unexpected results” that were proffered by Patent Owner. Regarding teaching away, the Board found the argument unpersuasive because it was at odds with a reading of the entire specification of the prior art. Although one excerpt may have suggested the reference taught away, a more complete reading undercut that position. Order at 13. Regarding unexpected results, the Board again found Patent Owner’s evidence presentation to be lacking. The Preliminary Response “does not cite to the prosecution history of the ‘533 patent in support of [the unexpected results] argument or otherwise direct us to evidence sufficient to show unexpected results.”
In the end, rack up another victory for Patent Challengers as the 20th IPR trial takes flight.