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The PTAB Kiss of Death to University of Illinois Patents


Written by Gene Quinn
President & Founder of IPWatchdog, Inc.
Patent Attorney, Reg. No. 44,294
Zies, Widerman & Malek
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Posted: April 2, 2014 @ 11:59 am
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Micron Technologies recently achieved complete victories in three inter partes reviews (IPRs) filed against three University of Illinois patents. The patents now lost by the University of Illinois are U.S. Patent Nos. 5,872,387, 6,444,533, and 6,888,204.

The case dates back to December 2011, when the University of Illinois— at the time, an academic partner with Micron— sued Micron in the U.S. District Court for the Central District of Illinois. The complaint alleged patent infringement of the three aforementioned patents, which pertain to the use of deuterium in the fabrication of semiconductor devices. In August 2012, the district court granted Micron’s request for a stay of litigation in anticipation of filing IPR petitions under the then recently effective provisions of the America Invents Act (AIA), which went into effect in September 2012. Micron’s three IPRs against the University patents were filed on October 2, 2012, making them among the first petitions to be filed under the new post-grant review procedures.

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. See IPR2013-00005, IPR2013-00006 and IPR2013-00008. 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 – claim 10 of the ‘204 patent.

“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 with patent infringement claims, which Micron and their attorneys believed were unfounded.

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,” noted Shartzer.

While it is undeniably true that any defendant in a patent infringement lawsuit should absolutely file an inter partes review petition seeking to kill the relevant patent claims, I have to say that these cases show rather clearly how and why the Patent Trial and Appeal Board is being characterized as a patent death squad by Chief Judge Randall Rader of the Federal Circuit.

Specifically, in two decisions, the one relative to the ‘533 patent (IPR2013-00005) and the one relative to the ‘204 patent (i.e., IPR2013-00006) the PTAB issued rejections of claims as being obvious over a single reference. How is that possible? Obviousness is supposed to be about a combination of prior art references together that render one or more claims invalid. Yes… and no. Still, it would have been better if there had been greater analysis, and what analysis is present will likely shock many.

Relative to the ‘533 patent, here is what passed for analysis that lead to claim 1 being declared obvious over a single reference:

The Supreme Court has held that the obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In that regard, we credit the testimony of Micron’s witness, Dr. Reed, that, at the time of filing the ’533 patent, it would have been apparent to one of ordinary skill in the art to reduce the thickness of the gate insulating film of Lisenker to 55 Angstroms or less, consistent with the general, decades-long trend of device miniaturization in the semiconductor industry.

We also credit Dr. Reed’s testimony that, at the time of filing the ’533 patent, others already had made gate insulating films having thicknesses of 55 Angstroms or less. Ex. 1001 ¶¶ 39, 43. The combination of familiar elements according to known methods to achieve predictable results, such as reducing the thickness of the gate insulating film of Lisenker to 55 Angstroms or less, would have been obvious. See KSR, 550 U.S. at 416.

This lead the PTAB to conclude that claim 1 is unpatentable as being “obvious over Lisenker.” In other words even though the PTAB acknowledged that Lisenker does not teach the step of “forming said insulating layer with a thickness not exceeding about 55 Angstroms beneath said contact,” the claim is obvious because of some vague statement by an expert that the industry was trying to miniaturize. Frankly, I don’t know whether this should have been obvious to one of skill in the art or not, but I do know that a vague desire to miniaturize ought not to be enough. If a general desire to make things smaller is enough to render a realized invention that is smaller obvious then what is left that can be patented exactly?



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This type of vague, generalized knowledge is not enough to render a claim obvious under Federal Circuit precedent. Such a combination rejection (i.e., a single reference plus general knowledge that it is desirable to give something a try) is not an appropriate obviousness rejection, at least according to the Federal Circuit in In re Kubin. But is that the KSR rationale being applied here? I don’t see where the PTAB explains the legal rational, they just cite to extraordinarily broad language from KSR. Is this what we have come to now? The PTAB doesn’t have to show their work and can merely say “this reference plus what we believe to be known generally desire at the time renders your claim unpatentable as obvious.”

Incidentally, just because there is a desire to miniaturize doesn’t mean that it is easy to do. It almost seems like the PTAB just assumed that scaling down is trivial. Such an assumption is erroneous as a general matter. Perhaps there is reason to believe it would have been appropriate and predictable, but the decision is silent on that point. What is curious, however, is that the University presented evidence that the Lisenker disclosure was inoperative, but the PTAB didn’t believe it. But wouldn’t questions raised contemporaneously be relevant to determine whether someone of skill in the art would have relied on Lisenker in the first place? It seems as if it would.

With any fact based determination like obviousness there can always be questions raised and room for differences of opinion. The problem is that the PTAB seems only interested in killing patents by declaring all claims unpatentable. With that being the collective experience so far it cause more critical review of decisions, and holes in the explanation that seem to violate logic and precedent loom much larger.

Regardless of this particularly case, was this what you thought inter partes review or other forms of post grant challenge would be used for? I thought Congress wanted to provide a means for allowing defendants frivolously sued by patent trolls to invalidate troll patents? That was how it was presented, yet we see a University innovator lose their patents. It seems no patents are safe from the jaws of the PTAB! Universities, pharmaceutical companies, biotech companies and any other innovator engaged in research and development must pay attention. Any patent is susceptible to challenge, and if challenged you have to anticipate losing.

What seems to be happening is that the PTAB is literally applying KSR v. Teleflex in a way that many initially feared it would be applied, but in a way it has never been interpreted by the Federal Circuit. Under a literal reading of KSR nothing is patent eligible unless you are an accidental inventor because the Supreme Court says that if you set out down a path and you achieve something that could have been predicted then the resulting invention is obvious. Such an expansive statement is why the Federal Circuit was compelled to place important boundaries on “obvious to try” rejections, otherwise it could be argued that it would be obvious to vary each one of tens of thousands of parameters, or it would be obvious because a research paper invited further work on a defined question.

The decisions of the PTAB are leading many in the patent community to wonder how much longer the patent system can survive when Administrative Patent Judges never see a patent that has a valid claim. If every commercially valuable patent claim is invalid then why bother with examination, or the many years one must wait to obtain a patent? Oddly, only garbage patents will remain because the patent owners ask so little to settle those cases that it makes no sense to spend the funds to institute an inter partes review.

Whether Congress or the Supreme Court wants patents any more can be debated I suppose, but the PTAB is speaking very loudly. The Patent Office will take many years to finally award you a patent, only after great expense. After further great expense the PTAB will take that patent away and you will lose all claims if it is ever challenged. It just feels wrong, and it has to mean that the patent examiners are wholly incapable of doing their job properly if every claim is declared unpatentable.

If you are a defendant in a patent infringement litigation and you haven’t filed an inter partes review, what are you waiting for? The Patent Office giveth with the examiners allowance and taketh away with a PTAB decision.  As long as the PTAB is killing patents can you blame defendants and their lawyers? It would be practically malpractice for a defense attorney in a patent infringement case to fail to recommend seriously considering inter partes review.

In any event, congratulations to Fish & Richardson, and congratulations to Micron.

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Posted in: Gene Quinn, Government, IP News, IPWatchdog.com Articles, Patent Trial and Appeal Board, Patents, Post Grant Procedures, USPTO

About the Author

is a Patent Attorney and the founder of the popular blog IPWatchdog.com, which has for three of the last four years (i.e., 2010, 2012 and 2103) been recognized as the top intellectual property blog by the American Bar Association. He is also a principal lecturer in the PLI Patent Bar Review Course. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.

 

22 comments
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  1. Silly me, I thought ‘one skilled in the art’ was the Patent Examiner at the time of examination and that prevents the exact same thing that happened here, a one reference kill.

    The Board follows up with (3) additional combination reference kills after that. .Why do (4) *different* Obvious findings to kill one Patent?

    Was the single reference kill done for fun? Or perhaps the first one reference kill was done like a dog peeing on a tree? A notice given as to where the killing zones have been staked out by the Big Dog PTAB.

  2. Gene,

    I think you understate the drive in that industry to miniaturize electronics. Assuming that the drive to make things smaller exists throughout the industry, then it really is obvious to try. The only place it isn’t obvious to try and make microelectronics smaller is those areas where there is some teaching that it won’t work, and then the invention would be steps it takes to make it work.

    In this case, had it been hard to thin that layer, then the invention would be how the layer is thinned. Merely claiming a thinner layer shouldn’t be enough (without teaching away), even if no one had ever bothered before.

    Tom

  3. Tom-

    The problem is that you are misusing “obvious to try.” Obvious to try is about it being obvious to achieve an end solution or result, not about being obviously important to investigate the possibility of accomplishing something. Read In re Kubin. Chief Judge Rader does a very good job explaining the necessary limitations on the obvious to try rationale.

    It seems rather clear to me that the PTAB does not follow In re Kubin, at least in this case. That seems to be how they conclude without support that a generalized desire to miniaturize makes the invention obvious to try.

    At the end of the day, it may be that this is obvious to try, but that particular rationale requires more than a conclusion.

    -Gene

  4. The only thing left standing if “obvious to try” is taken to its “logical” extreme is that patents are only available for pure accidents and happenstance.

    Most definitely flies in the face of even having a patent system in the first place.

  5. Anon-

    It also flies directly in the face of the 1952 Patent Act changes that specifically and directly did away with flash of creative genius. I think we are back to the flash of creative genius test again, which is in and of itself remarkable.

    -Gene

  6. Gene,

    At the risk of sounding too much like my namesake, let me state that the Supreme Court in Graham (in dicta) laid the groundwork for that return. In the minds of some institutions, the ability to write patent law never left the judiciary, notwithstanding the 1952 Patent Act.

    Hence, the mess we have today. The Supreme Court has been too anti-patent for far too long. It is not up to that branch to decide where the fulcrum lies in patent law. It is not up to that branch to decide (implicitly, explicitly, or otherwise) what patent laws to write to somehow ‘balance’ the actual laws written by Congress. If a law written by Congress is unconstitutional, the option (the only option) available to the Supreme Court is to strike down that law. Patent law is not like other laws in this regard, since the constitution is explicit as to which branch has been allocated the sole authority to write patent law.

  7. Gene,

    It was alarming to see these decisions come out. U of I is recognized as a world leader in semiconductor engineering, and they are not particularly aggressive on the patent front. It is even more alarming to see the PTAB’s (lack of) reasoning.

    While it will be of little consolation to the patentee and University, decisions like this will hopefully wake people up to what is going on at the PTAB. Just looking at the statistics, it is apparent that PTAB is rigged. They should have statistics commensurate with Inter Partes Reexam, but are off the charts.

    Thankfully Congress (and hopefully the Fed. Cir. too) is about to change the claim construction standard, and this kind of decision gives the Federal Circuit opportunity to set the record straight.

    Thanks for your efforts to protect a strong and fair patent system.

  8. Gene, I agree with Pat Law. Thanks for your efforts.

  9. You comment that an invention should not be held obvious over the disclosure of a single reference.

    In the UK, and until recently also in Australia by statute, obviousness always had to be judged over the disclosure of a single reference absent a cross-reference or other compelling reason to read two documents together. The secondary art is found in the common general knowledge and routine skill in the art. Therefore in UK a single reference together with evidence of common general knowledge of thickness reduction would be a bog standard basis on which a case of obviousness could be made out.

    UK practitioners are used to dealing with combinations of references because of EPO practice. However, UK litigators are not.

  10. Good words from Paul Cole. I went back and read the commentary and was left with a suspicion that the inventor was ill-served by the one who wrote the claim.

    I suppose it is nearly 40 years of practice before the EPO which has left me with the mindset that a patentable Invention is something that solves a technical problem. So, if the problem is “How to we get this thing smaller?” it is not an invention to announce (and claim) smaller than X, where X is an arbitrary measure of size.

    But what if the draftsperson had instead wrote that size-reduction is a desired goal, that nobody knew how to do it, but that we cracked the problem, by combining the elements recited in the claim below. Who could deny the non-obviousness of such a claim.

    Lesson: be careful what one asks for, and don’t ask for more than what you deserve (because the risk you run then is that you get nothing). And even if you narrow during prosecution, down to what is not obvious, you’ve done gone and disqualified yourself from reliance on the DoE, to puff out the scope of that not invalid claim.

  11. Perhaps it’s a symptom of the appeals backlog. They are trying to get their dockets down — I realize this was an IPR case — and, as a result, they are not taking the time to do the proper analysis (at least in writing). That is something that annoys the heck out of me during routine prosecution — the examiner saying it’s so because I say it’s so — but is something I am disappointed to see at the PTAB level.

  12. “it has to mean that the patent examiners are wholly incapable of doing their job properly if every claim is declared unpatentable.”

    Is this really the only conclusion you can draw, where’s the blame for Applicant and Attorney. Is it not possible that an Applicant wants something they know (have been told) is obvious, and they want unreasonably broad claims in the face of solid rejections. Remember the Examiner is on the hook for quality examination within 10-15 hours, the Attorney and Applicant is not under any real time pressure. Couple that with an aggressive Attorney trying to slip something by the Examiner and you get the only possible outcome…. a weak Patent.

    Maybe instead of calling names, you could hold Applicants accountable for their part in the lack of quality.

  13. Having gone to UI and knowing well both the research and technology of the inventors in this case (hydrogen passivation of semiconductor layers), this was groundbreaking innovation at the time. It is pretty likely that no one at the PTAB actually has any experience in this field or knows that semiconductor manufacturing, especially at the research level, is not as “predictable” as one might expect.

    The PTAB seems to be lapsing back to the discredited “spark of genius” thanks to the gobblygook of KSR.

    Thanks SC – now on to mucking up 101…

  14. 1. If these PTAB IPR decisions are really not adequately supported the patent owner should be able to get them reversed by the Fed. Cir. on appeal.
    2. Is there really a case law requirement for a 103 rejection to require 2 or more references? I doubt it.
    3. In any case, this was apparently a 103 reference combined with, and supported by, affidavit expert testimony?
    4. In any IPR the patent owner has the opportunity to cross-examine the petitioners expert affidavits. The patent owner also can, and should, provide its own rebuttal affidavits and other evidence. IF that was not done here (thus leaving the petitioner’s experts testimony completely un-rebutted) then the results here should no more surprising that if a patent owner had failed to do so in D.C. litigation, and grounds for appeal may also have been reduced?

  15. Mike Schmitt-

    You say: “Is this really the only conclusion you can draw, where’s the blame for Applicant and Attorney. Is it not possible that an Applicant wants something they know (have been told) is obvious…”

    Yes, that is the only reasonable conclusion even if you don’t understand the issues. Of course, I don’t think examiners are incapable of doing their jobs. But if every claim issued in every commercially viable patent is found unpatentable when challenged in a contested proceeding then obviously the PTAB thinks that the the patent examiners made a mistake. Not sure why this is so difficult to grasp really.

    The patent examiner is the decision maker. Applicants and attorneys ask for claims. Clearly if the patent examiner issued the patent claims then it was reasonable to ask for claims that broad because an independent, non-biased patent professional issued the claims.

  16. Gene,
    In your aticle you state “the PTAB is literally applying KSR v. Teleflex in a way many initially feared…” Insinuating throughout that the PTAB is a death squad, destroying the patent system, but then you slam the entire Examiner core for being incapable, the logic doesn’t make any sense to me.

    I guess I’m not smart enough to follow, if the PTAB is incorrect in their opinion and using KSR as never intended, logic would dictate you must think the patent was valid, so the Examination must have been correct.

    So which one is it? PTAB a death sqad, or the Examiners incapable? Then this too presents a problem, this argument is a false dichotomy. Here’s where I was simply stating that there are more than the two choices you presented. I provided one, that of the Applicant, but even this really misses the point of your poorly thought out rant.

    You seem to gloss over two key facts. One this case was examined pre-KSR. Two, expert testimony was introduced in the IPR that the Examiner never had to use for the rejection.

    Isn’t it possible that Examination was quite capable given the imformation the Examiner had in that era, and that the opinion of the PTAB is also correct in light of new Expert testimony and the fact that they relied heavily on KSR.

    I realize I’m not a super smart guy, but there are plenty of other reasonable ways to look at the outcome of these cases without concluding that Examiners are incapable.

  17. Mike Schmitt-

    First, just because you don’t understand the issues doesn’t mean that the article is poorly thought out. The article is fine, easy to understand and hardly a mystery.

    Next, I do NOT slam the patent examining corps at all. I have great respect for the patent examining corps, and I always go out of my way to point out that the vast majority of patent examiners are doing a conscientious job.

    What I do point out is that if every single commercially valuable patent has claims that are unpatentable then the patent examiners must not be doing their job. That is hardly a stretch. That has to be what the PTAB is telling the patent corps. By cancelling virtually every claim that they review they are over and over again telling the examiners that they didn’t do their job properly. Of course, it is simply not possible for every single patent claim issued by the USPTO to be unpatentable. So how then is it that the PTAB can’t seem to find a patent with claims that are patentable? The PTAB disdain for patents seems to be the problem.

    You ask which is it… my believe is that it is far more likely that the PTAB is a death squad. Examiners can and do make mistakes, even the best examiners, but does anyone really believe that any patent worth fighting over only has unpatentable claims? That seems extraordinarily unlikely. Furthermore, as I pointed out based on the Micron case with the University of Illinois, the PTAB is simply not correctly applying “obvious to try” law. They say what the Supreme Court said, but then they ignore the context driven explanation of what that means as interpreted by the Federal Circuit. The PTAB might think the Federal Circuit is incorrect with what they have said regarding “obvious to try,” but the Examiners have been instructed consistent with In re Kubin, and the way our system is set up is that the Federal Circuit view controls until the Supreme Court overrules the Federal Circuit. What the Federal Circuit says in Kubin is an entirely plausible and consistent view of KSR. The PTAB is required to follow it and it doesn’t seem that they are.

    Finally, if patent examiners are simply not permitted to engage in the loose logic exhibited in some of the PTAB final written decisions that I’ve read. In the case mentioned here a generalized desire to miniaturize is simply not enough to satisfy an obvious to try rejection. So why then should the PTAB be allowed to not show their work?

    Whether you like it or not, the PTAB are the ones questioning the work of the examiners. The PTAB is also calling into question the raison d’etre of the Patent Office and the entire patent system, as I discussed here:

    http://www.ipwatchdog.com/2014/03/24/ptab-death-squads-are-all-commercially-viable-patents-invalid/id=48642/

  18. Thank you for the clarification.

  19. Gene asks:

    “….how then is it that the PTAB can’t seem to find a patent with claims that are patentable?”

    Answer: because they are not looking for such patents. If they were to look for such patents, they could find huge numbers of them, straightaway.

    Instead, they are looking only at patents selected for them. Which patents are selected? Why, those that are bad enough to justify the risk of laying them up for the PTAB to review. Just as it is not a good idea to oppose at the EPO and fail, neither is it wise to institute PTAB Review and fail. And precisely because we didn’t know how strict the PTAB would be, let’s play safe and lay up for review only those cases that are sure to succeed.

    On an earlier thread, i suggested that the selected patents were the particularly “low hanging” fruit of the USPTO’s efforts, ripe for plucking. Nobody on these pages has yet argued against that suggestion. As selection gets complacent, increasing numbers of selected patents will survive. Simples.

  20. MaxDrei-

    I reject the idea that every claim the PTAB has seen is unpatentable. It is a statistical impossibility. When you look at some of the claims and the evidence it is also a real world practical impossibility. Based on the evidence in so far the PTAB as a whole is anti-patent in their decision making.

    -Gene

  21. Gene, even though I am a patent practitioner, that is in Europe and I don’t prosecute at the USPTO. So consider me a lay person. I don’t understand your assertion that the PTAB results so far are a statistical impossibility.

    When spinning a coin, the outcome “Tails. You lose” a hundred times in the first hundred spins is not impossible. Very unlikely of course, but not impossible. What’s different here?

    On another issue, can you explain for me what are the claims being found invalid. Take a set of 100 claims in which the first is independent and is hopelessly broad, but the remaining 99 are all dependent on Claim 1 and get progressively narrower in scope till claim 100 claims in mind-mumbing detail the illustrated best mode.

    At the EPO, in opposition, if Claim 1 is invalid, the patent goes down, invalid as long as all the others are dependent on an invalid claim. So the EPO never even looks at dependent Claims 2-100. Very often it is, that Claim 1 as issued is too broad to survive opposition.

    But how is it at the PTAB? Does it look at Claims 2-100? If it does, that would carry the outcome until today much closer to impossibility.

  22. MaxDrei,

    Why don’t you conduct a simple experiment and perform five trials of 100 sets of coin tosses. Pick one of the two sides of the coin, heads or tails, to be your target. Flip the coin. To make things easier, you can stop flipping at the first fail-point if you like, or you can run through all 100 flips.

    Let us know the results. (see below)

    Certain things need not be a complete impossibility in order to be a practical impossibility. Much like the US PHOSITA, a certain amount of common sense should be engaged in here. I see why lower case anon likes to taunt you. You seem to post without much common sense.

    My results from a electronic coinflip in Excel are the following:
    47%
    50%
    59%
    51%
    46%

    On your other issue, it would greatly depend on why your first claim goes down. If that claim goes down for lack of novelty or for being obvious (often a result of being too broad), clearly, dependent claims that narrow that breadth can very likely survive, especially if drafted properly with each dependent claim indicating a survivable patentable scope (and not being present merely for fluff). If your experience is this “very often,” I might suggest that the claims you have been dealt or poorly drafted.

    And if drafted well, this survivability would skew the results heavily in the opposite direction – at least some claims should survive at a much greater rate. Now it may not be common sense to assume that all applications have properly drafted dependent claims (that might be another factor to look at in an exhaustive review), but for our purposes here, we can readily presume that some substantial number of properly drafted dependent claims are present.

    So, if one uses a modicum of common sense, one easily sees that at least something very fishy is going on. Yes, a detailed and exhaustive review of the data may provide some compelling hard results to discuss (i.e. 68.785% of claims appear to be wrongly decided), but such exactitude is hardly required to make the immediate point that Gene makes. Only by straining hard to not see this is it possible to not see this.