United States District Court, D. Massachusetts
MEMORANDUM AND ORDER ON DEFENDANTS' MOTION FOR
ATTORNEYS' FEES UNDER 35 U.S.C. § 285
a motion for attorneys' fees, arising out of a patent
infringement action concerning fuses in integrated circuits.
In February 2015, after spending seven years negotiating a
licensing agreement, plaintiff Massachusetts Institute of
Technology filed suit against defendants Micron Technology,
Inc.; Elpida Memory, Inc.; Micron Memory Japan, Inc.; and
Elpida Memory USA, Inc. The complaint alleged that
defendants' laser-fuse technology infringed on MIT's
U.S. Patent No. 6, 057, 221 ("the '221
after MIT filed suit, defendants petitioned the Patent Trial
and Appeal Board ("PTAB") for inter partes
review ("IPR"), seeking a declaration that the
'221 patent was invalid. Defendants contended that the
'221 patent was invalid because prior art in a Japanese
patent application anticipated the patent and rendered it
obvious. In November 2015, the PTAB granted defendants'
petition to review the validity of the '221 patent.
Because the PTAB usually invalidates patents after
instituting full IPR review, MIT requested that the Court
enter an adverse judgment and dismiss the case.
did not assent to dismissal. Instead, they have moved for
attorneys' fees and costs pursuant to 35 U.S.C. §
285. Defendants contend that this case is exceptional because
MIT asserted unreasonable infringement and validity arguments
and engaged in vexatious litigation conduct. Among other
things, defendants allege that MIT and the lead inventor, Dr.
Joseph Bernstein, intentionally misled the United States
Patent and Trademark Office ("PTO").
§ 285, district courts have the authority to award
attorney's fees and costs in "exceptional"
cases. For the reasons set forth below, this case does not
rise to the level of an "exceptional" case
warranting the imposition of attorneys' fees. It appears
that MIT pressed not-unreasonable infringement positions,
rebutted defendants' invalidity challenges with
legitimate--but ultimately unmeritorious--arguments, and
conducted the litigation in a good faith manner. Accordingly,
defendants' motion for attorneys' fees and costs will
technology at issue involves fuses in integrated circuits. In
integrated circuits, each fuse has a cut-link pad on a
substrate that is electrically connected to two conductive
lines. A laser in the circuit can instantly disconnect the
cut-link pad, creating an open circuit and blowing the fuse.
2000, the '221 patent was issued to lead inventor Dr.
Joseph Bernstein, who conceived of the invention while
pursuing his Ph.D. at MIT. Bernstein and his co-inventor
assigned the patent to MIT and another university. Fuse
technology was well-established in integrated circuitry when
Bernstein applied for the patent. However, the '221
patent included two important limitations. First, it claimed
a cut-link pad that was at least ten percent wider than the
connecting electrical lines. Second, it claimed a cut-link
pad that was substantially less thermally resistant than the
2008, MIT contacted Elpida, a Japanese manufacturer of
dynamic random-access memory products that rely on integrated
circuits, and notified the company that it needed a license
for the '221 patent. In support of its assertions, MIT
sent Elpida a copy of the '221 patent and drawings
demonstrating alleged infringement by one of Elpida's
the next two years, MIT and Elpida exchanged correspondence
and met multiple times to discuss the validity of the patent
and MIT's infringement assertion. Elpida contended that
the patent was not valid because a Japanese patent
application by Koyou anticipated it or rendered it obvious.
Specifically, Elpida contended that Koyou disclosed a
cut-link pad that was substantially wider and less thermally
resistant than the connecting electrical lines. As to
MIT's infringement assertion, Elpida contended that its
accused product lacked electrically-conductive lines "on
a substrate, " as required by the '221 patent
claims, because the lines in its product passed vertically
into and through the substrate.
March 2011, negotiations between the parties broke down. MIT,
without notifying Elpida, requested that the PTO reexamine
the validity of the '221 patent. With its reexamination
petition, MIT provided the PTO with all of the prior art that
Elpida had identified during their negotiations, including
Koyou. MIT also submitted written reasons why it believed the
patent was novel and non-obvious despite Koyou--the same
arguments that it provided to Elpida during the parties'
examiners from the PTO's Central Reexamination Unit
initially rejected all of the claims of the '221 patent
as unpatentable over Koyou. In response, MIT submitted an
inventor declaration, in which Bernstein explained his
reasoning in support of the conclusion that a person having
ordinary skill in the art would not read Koyou as (1)
affirmatively disclosing a cut-link pad having a width at
least ten percent greater than the width of each connecting
electrical line, and (2) suggesting a cut-link pad having
substantially less thermal resistance than the lines.
Agreeing with Bernstein's conclusions, the PTO issued a
notice of intent to issue an ex parte reexamination
certificate for the patent.
the reexamination, MIT reengaged Elpida in negotiations.
Although Elpida contended that MIT had misrepresented Koyou
to the PTO, the parties nearly reached a settlement. MIT
lowered its settlement demand to $500, 000, at least in part,
because Elpida was in bankruptcy and planned to eliminate
laser fuses from its product line. Although the parties
reached a settlement agreement in principle, they failed to
finalize an agreement because of a disagreement over the
scope of the license.
February 2015, after seven years of negotiations, MIT filed
suit against defendants for patent infringement. In May 2015,
defendants filed a petition with the PTAB seeking IPR of the
'221 patent, and this Court stayed the case pending
resolution of that petition. In support of their petition,
defendants submitted an expert declaration from a litigation
consultant who ...