Squires Designates as Informative Director Review Decision on RPIs

U.S. Patent and Trademark Office (USPTO) Director John Squires on January 15 issued a Director Review decision, which he then designated as informative on January 16, in favor of Micron Technologies, vacating two Patent Trial and Appeal Board (PTAB) decisions granting institution of inter partes review (IPR) for Yangtze Memory Technologies.

The decision addressed the issue of real party in interest (RPI), which Squires said Micron had sufficiently disputed, while Yangtze failed to rebut the evidence presented and show that it had named all RPIs.

Yangtze is a designated entity on the Bureau of Industry and Security’s (BIS) Entity List, which “identifies persons or addresses of persons reasonably 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 United States.”

Following 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), Squires issued a Show Cause Order directing Yangtze to show “why adjudicating the Petitions is an appropriate use of the Office’s limited resources” when it is on that list. Although the Director Review decision began by noting that Yangtze had failed to sufficiently respond to that order, it explained that the decision did not rely on that fact to grant Micron’s request to vacate the IPR institutions.

Instead, Squires rejected the Board’s analysis of whether Yangtze’s petitions had identified all RPIs, which is a requirement under 35 U.S.C. 312(a) for bringing and IPR petition. Micron argued that Yangtze is controlled by a foreign government, which was not identified as an RPI in the petitions. Specifically, Micron presented: “(1) articles explaining that the foreign government invests in, sets policy for, and controls Petitioner’s industry (semiconductor manufacturing) within its borders; (2) articles explaining that the foreign government owns a controlling interest in Petitioner through ownership in Petitioner’s parent corporation; (3) statements from U.S. lawmakers that Petitioner is owned and backed by the foreign government; and (4) statements by the Department of Defense that the foreign government owns or controls Petitioner.” Micron also presented evidence that the foreign government itself referred to Yangtze in statements as a “state-owned enterprise.”

This evidence made it Yangtze’s burden to show that it had in fact named all RPIs, but Yangtze “failed to carry that burden,” said the decision. “In short, Petitioner’s failure to provide clarity as to its actual identity is fatal to its petitions,” wrote Squires.

In a footnote to the decision, Squires also said that, “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 had argued that Return Mail, Inc. v. United States Postal Service, 587 U.S. 618 (2019) applies to foreign governments, making foreign governments ineligible to file an IPR, but Yangtze argued in response that “Return Mail is not applicable to a foreign government because the Court’s analysis ‘was based on factors specific to the U.S. government.’”

The PTAB’s decisions to institute were therefore ultimately vacated and the petitions denied.

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Author: airdone