Welcome to an “IP Files” flash alert. Breaking news at the US Patent Office PTAB where three Inter Partes Reviews were just denied institution on discretionary grounds this afternoon. I know the Board’s use of Fintiv has been a hot topic, but these reviews were not denied due to Fintiv for once. Who was the attorney for Petitioner Micron filing the IPRs? None other than Katherine Vidal, who was nominated to be the next Director of the US Patent Office and had her confirmation hearing in front of the Senate two weeks ago! Why does this case stand out? Read below.
Patent Owner Unification Technologies (UTI) owned by Acacia Research Group acquired 56 patents in February 2020 for about $5.7M per the Q1 2020 cash flow statement. I don’t believe they acquired other portfolios during this quarter.
UTI filed a patent lawsuit alleging patent infringement of three patents against Micron Technology, Inc on June 5, 2020 in the Western District of Texas. Hon. Judge Albright is presiding over the case. A Markman hearing was held on March 5, 2021 and an Order was issued on March 12, 2021. Jury selection is scheduled for June 13, 2022.
Micron filed the first set of Inter Partes Reviews (IPRs) on December 22, 2020, which were instituted in July 2021. Final Decisions are due in July 2022. Micron then filed a second set of IPRs on June 4, 2021. They were denied this afternoon.
Why were they denied? Micron included the second set of prior art references in their Preliminary Invalidity Contentions on October 15, 2020 and waited nine months to file the second round of IPRs before the one year time bar expired. Below are the highlights:
Well done by Acacia Research Group headed by Marc Booth and their legal team from Nelson Bumgardner.