NBA successfully defended its client, Unification Technologies LLC (“UTL”), in three inter partes review (“IPR”) challenges brought by solid-state drive maker Micron Technology, Inc. (“Micron”). NBC originally filed suit in June 2020 in the Western District of Texas on behalf of UTL against Micron for infringement of U.S. Patent Nos. 8,533,406; 8,762,658; and 9,632,727.
Micron challenged the patents in six IPR petitions – three were filed six months after the complaint (IPR2021-00343, -00344, -00345) and an additional three (IPR2021-00940, -00941, -00942) were filed five months later on the same patents. Led by Jon Rastegar and Bobby Delafield, NBC successfully argued that the three later filed IPRs were merely “follow-on” petitions and that the petitions should be denied based on the General Plastic factors as well as the Fintiv factors. On the strength of those responses, the PTAB issued written decisions declining to institute any of the three proceedings. The underlying litigation as well as the remaining IPRs are still pending.
NBC continues to have incredible success in IPR matters. Since 2018, NBC has handled over 90 IPR matters for Patent Owners. Over 90% of these matters have resulted in maintaining the validity of certain claims, denial of institution, or a successful settlement.