20 for 21: First of Three Micron Tech Inter Partes Review Trials Instituted

iStock_000011002999XSmallThe 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.

PTAB Excludes New Evidence that Patent Challenger Attempts to File Post-Petition

stopsignA pair of rulings by the PTAB make clear that Patent Challengers must get their initial inter partes review filing correct the first time because no new evidence will be allowed after the petition has been filed.

In the first ruling, in the inter partes review styled as Sony Corp. v. Tessera, Inc. (IPR2012-00033), Patent Challenger sought to submit to the Board, prior to its decision whether to institute the trial or not, two documents not submitted with the petition. Sony sought to admit the documents because they purported to be inconsistent with Patent Owner’s Preliminary Response. The Board did not allow the submission, ruling instead that, should a trial be instituted, Sony would be able to submit the documents with a brief statement only identifying what is being filed, with no comment on their content. It should be noted that the Board ultimately did grant an inter partes review trial on the petition, despite not accepting the new evidence.

In the second ruling, in the inter partes review styled as EMC Corp. v. Personal Web Tech., LLC, (PR2013-00082), Patent Challenger sought authorization to file three replacement exhibits that it claimed would contain no substantive changes. Patent Owner opposed the request, arguing that the new exhibits actually contained substantive and drastic changes, as compared to what was filed with the petition. The Board agreed with Patent Owner, finding that the original exhibits were readable and, further, that it would be a burden on Patent Owner to have to review the new documents when its preliminary response was due so soon.

The Board has shown, if anything, a strict adherence to the trial practice rules. These two rulings bolster that reputation, holding Patent Owner’s feet to the fire in getting their complete evidence record into the proceeding when the petition is filed.