USPTO favors Micron over Yangtze vacating Patent Trial and Appeal Board rulings

USPTO favors Micron over Yangtze vacating Patent Trial and Appeal Board rulings

The decision addressed the issue of real party in interest

US Patent and Trademark Office (USPTO) Director John Squires has given a Director Review decision in favor of Micron Technologies, vacating two Patent Trial and Appeal Board (PTAB) rulings granting institution of inter partes review (IPR) for Yangtze Memory Technologies.

The decision addressed the issue of real party in interest (RPI), wherein Squires mentioned that while Micron disputed, Yangtze failed to rebut the evidence and prove that it had named all RPIs.

Yangtze is a designated entity on the Bureau of Industry and Security’s Entity List, which “identifies persons or addresses of persons believed to be involved, or to pose a significant risk of being or becoming involved, in activities contrary to the national security or foreign policy interests of the US.”

Subsequent to Micron’s petition for Director Review of the PTAB’s decisions to institute IPR2025-00098 (Patent 8,945,996) and IPR2025-00099 (Patent 10,872,903), the PTO director issued a show cause notice.

He directed Yangtze to show “why adjudicating the petitions is an appropriate use of the office’s limited resources” when it was on that list. Even though the Director Review decision was based on Yangtze failing to respond to the order, he explained that the decision did not rely on that fact to grant Micron’s request to vacate the IPR institutions.

Director Squires rejected the Board’s analysis of whether Yangtze’s petitions had identified all RPIs - a requirement under 35 U.S.C. 312(a) for bringing an IPR petition.

Micron argued that a foreign government controlled the Yangtze and that government was not identified as an RPI in the petitions.

Micron stated:

(1) The articles explain that the foreign government invests in, sets policy for, and controls the petitioner’s industry (semiconductor manufacturing) within its borders.

(2) The articles explain that the foreign government owns a controlling interest in the petitioner through ownership in the petitioner’s parent corporation.

(3) The statements from US lawmakers that the petitioner is owned and backed by a foreign government.

(4) The statements by the Department of Defense that the foreign government owns or controls the petitioner.

Additionally, Micron provided proof that the foreign government referred to Yangtze in statements as a ‘state-owned enterprise’.

Thus, the evidence made it Yangtze’s burden to prove that it had named all RPIs. However, Yangtze failed to do so.

The PTO director thus stated that the petitioner’s failure to provide clarity about its actual identity was crucial to its petitions.

Squires further stated, “While not the basis of today’s decision, I note that inter partes review may be discretionarily denied on the basis that a petitioner is a sovereign. See, e.g., Saint Regis Mohawk Tribe v. Mylan Pharms. Inc., 896 F.3d 1322, 1327 (Fed. Cir. 2018).”

Micron also submitted that the Return Mail, Inc. v. United States Postal Service, 587 U.S. 618 (2019) case applied to foreign governments, making them ineligible to file an IPR.

In its response, Yangtze argued, “Return Mail is not applicable to a foreign government because the court’s analysis was based on factors specific to the US government.”

However, the decision of the PTAB to institute was vacated, and the petitions were rejected.