Welcome!

News Feed Item

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

Fish & Richardson announced today 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 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.

One of the unique aspects of inter partes review is that there is no presumption of validity. For example, it does not matter how many times a prior art reference might have been previously considered by a USPTO examiner. The PTAB has shown a willingness to reconsider prior prosecution arguments anew, particularly in view of a well-crafted IPR petition with a supporting expert declaration.

“IPR proceedings are different from prosecution proceedings and companies seeking to use them effectively need counsel who truly understands the intricacies of the Rules and how they can affect your strategic positioning throughout a trial,” added Riffe. “The PTAB generally resolves these proceedings within a year of institution, so the process moves quickly and there is little margin for error if the Rules are misconstrued or misapplied. Micron knew our IPR strategy was the right approach when we presented it to them, and it’s great to achieve this successful result on their behalf,” noted Shartzer.

Fish & Richardson is a global patent, intellectual property (IP) litigation, and commercial litigation law firm with more than 400 attorneys and technology specialists across the U.S. and Europe. Fish has been named the #1 patent litigation firm in the U.S. for 10 consecutive years. Fish has been winning cases worth billions in controversy—often by making new law—for the most innovative clients and influential industry leaders since 1878. For more information, visit www.fr.com.

More Stories By Business Wire

Copyright © 2009 Business Wire. All rights reserved. Republication or redistribution of Business Wire content is expressly prohibited without the prior written consent of Business Wire. Business Wire shall not be liable for any errors or delays in the content, or for any actions taken in reliance thereon.

Latest Stories
"Cloud Academy is an enterprise training platform for the cloud, specifically public clouds. We offer guided learning experiences on AWS, Azure, Google Cloud and all the surrounding methodologies and technologies that you need to know and your teams need to know in order to leverage the full benefits of the cloud," explained Alex Brower, VP of Marketing at Cloud Academy, in this SYS-CON.tv interview at 21st Cloud Expo, held Oct 31 – Nov 2, 2017, at the Santa Clara Convention Center in Santa Clar...
In his session at 21st Cloud Expo, Carl J. Levine, Senior Technical Evangelist for NS1, will objectively discuss how DNS is used to solve Digital Transformation challenges in large SaaS applications, CDNs, AdTech platforms, and other demanding use cases. Carl J. Levine is the Senior Technical Evangelist for NS1. A veteran of the Internet Infrastructure space, he has over a decade of experience with startups, networking protocols and Internet infrastructure, combined with the unique ability to it...
While some developers care passionately about how data centers and clouds are architected, for most, it is only the end result that matters. To the majority of companies, technology exists to solve a business problem, and only delivers value when it is solving that problem. 2017 brings the mainstream adoption of containers for production workloads. In his session at 21st Cloud Expo, Ben McCormack, VP of Operations at Evernote, discussed how data centers of the future will be managed, how the p...
"NetApp is known as a data management leader but we do a lot more than just data management on-prem with the data centers of our customers. We're also big in the hybrid cloud," explained Wes Talbert, Principal Architect at NetApp, in this SYS-CON.tv interview at 21st Cloud Expo, held Oct 31 – Nov 2, 2017, at the Santa Clara Convention Center in Santa Clara, CA.
"Akvelon is a software development company and we also provide consultancy services to folks who are looking to scale or accelerate their engineering roadmaps," explained Jeremiah Mothersell, Marketing Manager at Akvelon, in this SYS-CON.tv interview at 21st Cloud Expo, held Oct 31 – Nov 2, 2017, at the Santa Clara Convention Center in Santa Clara, CA.
"We're focused on how to get some of the attributes that you would expect from an Amazon, Azure, Google, and doing that on-prem. We believe today that you can actually get those types of things done with certain architectures available in the market today," explained Steve Conner, VP of Sales at Cloudistics, in this SYS-CON.tv interview at 21st Cloud Expo, held Oct 31 – Nov 2, 2017, at the Santa Clara Convention Center in Santa Clara, CA.
"Space Monkey by Vivent Smart Home is a product that is a distributed cloud-based edge storage network. Vivent Smart Home, our parent company, is a smart home provider that places a lot of hard drives across homes in North America," explained JT Olds, Director of Engineering, and Brandon Crowfeather, Product Manager, at Vivint Smart Home, in this SYS-CON.tv interview at @ThingsExpo, held Oct 31 – Nov 2, 2017, at the Santa Clara Convention Center in Santa Clara, CA.
It is of utmost importance for the future success of WebRTC to ensure that interoperability is operational between web browsers and any WebRTC-compliant client. To be guaranteed as operational and effective, interoperability must be tested extensively by establishing WebRTC data and media connections between different web browsers running on different devices and operating systems. In his session at WebRTC Summit at @ThingsExpo, Dr. Alex Gouaillard, CEO and Founder of CoSMo Software, presented ...
Enterprises are adopting Kubernetes to accelerate the development and the delivery of cloud-native applications. However, sharing a Kubernetes cluster between members of the same team can be challenging. And, sharing clusters across multiple teams is even harder. Kubernetes offers several constructs to help implement segmentation and isolation. However, these primitives can be complex to understand and apply. As a result, it’s becoming common for enterprises to end up with several clusters. Thi...
"There's plenty of bandwidth out there but it's never in the right place. So what Cedexis does is uses data to work out the best pathways to get data from the origin to the person who wants to get it," explained Simon Jones, Evangelist and Head of Marketing at Cedexis, in this SYS-CON.tv interview at 21st Cloud Expo, held Oct 31 – Nov 2, 2017, at the Santa Clara Convention Center in Santa Clara, CA.
WebRTC is great technology to build your own communication tools. It will be even more exciting experience it with advanced devices, such as a 360 Camera, 360 microphone, and a depth sensor camera. In his session at @ThingsExpo, Masashi Ganeko, a manager at INFOCOM Corporation, introduced two experimental projects from his team and what they learned from them. "Shotoku Tamago" uses the robot audition software HARK to track speakers in 360 video of a remote party. "Virtual Teleport" uses a multip...
"We work around really protecting the confidentiality of information, and by doing so we've developed implementations of encryption through a patented process that is known as superencipherment," explained Richard Blech, CEO of Secure Channels Inc., in this SYS-CON.tv interview at 21st Cloud Expo, held Oct 31 – Nov 2, 2017, at the Santa Clara Convention Center in Santa Clara, CA.
High-velocity engineering teams are applying not only continuous delivery processes, but also lessons in experimentation from established leaders like Amazon, Netflix, and Facebook. These companies have made experimentation a foundation for their release processes, allowing them to try out major feature releases and redesigns within smaller groups before making them broadly available. In his session at 21st Cloud Expo, Brian Lucas, Senior Staff Engineer at Optimizely, discussed how by using ne...
The question before companies today is not whether to become intelligent, it’s a question of how and how fast. The key is to adopt and deploy an intelligent application strategy while simultaneously preparing to scale that intelligence. In her session at 21st Cloud Expo, Sangeeta Chakraborty, Chief Customer Officer at Ayasdi, provided a tactical framework to become a truly intelligent enterprise, including how to identify the right applications for AI, how to build a Center of Excellence to oper...
"IBM is really all in on blockchain. We take a look at sort of the history of blockchain ledger technologies. It started out with bitcoin, Ethereum, and IBM evaluated these particular blockchain technologies and found they were anonymous and permissionless and that many companies were looking for permissioned blockchain," stated René Bostic, Technical VP of the IBM Cloud Unit in North America, in this SYS-CON.tv interview at 21st Cloud Expo, held Oct 31 – Nov 2, 2017, at the Santa Clara Conventi...