IP Law Daily, PATENT—PTAB: Director Vidal vacates PTAB decision denying IPR institution based on prior art previously rejected, (Apr 5, 2023)

By Cheryl Beise, J.D.

The Board erred in finding that the prior art in this proceeding was substantially the same as the prior art in another proceeding.

The Patent Trial and Appeal Board erred in denying a petition for inter partes review of a patent held by Purdue University, USPTO Director Vidal has determined in a sua sponte review decision. According to Director Vidal, the Board erred in finding that the prior art asserted in this proceeding was substantially the same prior art asserted in a previous proceeding and, accordingly, erred in exercising discretion to deny institution. The decision denying institution was vacated and the proceeding remanded for reconsideration (Wolfspeed, Inc. v. The Trustees of Purdue University, IPR2022-00761, Paper 13, March 30, 2023).

Petitioner Wolfspeed, Inc. challenged claims 9-11 of U.S. Patent No. 7,498,633 (the ’633 patent), owned by Purdue University and entitled “High-Voltage Power Semiconductor Device.” The Board denied Wolfspeed’s petition under 35 U.S.C. § 325(d) based on a finding that the prior art cited in the petition is the same or substantially the same as the prior art the Board found wanting in another proceeding, STMicroelectronics, Inc. v. The Trustees of Purdue University, IPR2022­00252, Paper 2, 4.

Wolfspeed requested Precedential Opinion Panel (“POP”) rehearing of the Board’s decision denying institution. After reviewing the request and the record, Director Vidal decided sua sponte to institute review of the Board’s decision and the POP dismissed the request for rehearing. Director Vidal determined that the Board erred in finding that the prior art asserted in this proceeding is substantially the same as the prior art asserted by STMicroelectronics.

When assessing § 325(d), the Board applies the two-part framework set forth in Advanced Bionics v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential). The first part of the framework requires the Board to consider whether the same or substantially the same prior art or arguments previously were presented to the Office. If so, then in the second part, the Board considers whether the petitioner has demonstrated material error by the Office.

The Board in this case did not fully follow Advanced Bionics, according to the Director. The Board determined that two references asserted by Wolfspeed—U.S. Patent No. 6043532 (“Depetro”) and U.S. Patent No. 5171705 (“Choy”)—were both substantially the same prior art as U.S. Patent No. 6413822 (“Williams”), asserted by STMicroelectronics. However, the Board failed to appreciate the material differences between the two sets of prior art. Specifically, the Board failed to properly consider that the transistor topology of Williams results in a “less rugged” semiconductor device. In addition, the Board did not specifically address whether the same or substantially the same arguments were previously presented to the Office, the Director said.

The case was remanded for the Board to reassess its § 325(d) analysis.

The Case is IPR2022-00761.

Attorneys: Raymond Nimrod (Quinn Emanuel Urquhart & Sullivan LLP) for Wolfspeed, Inc. Michelle Armond (Armond Wilson LLP) for The Trustees of Purdue University.

Companies: Wolfspeed, Inc.; The Trustees of Purdue University

Cases: Patent USPTO GCNNews