The U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) rejected Micron Technology’s arguments that national security and foreign policy concerns should prevent a Chinese memory manufacturer from challenging an American patent, highlighting current limitations on the Board’s discretionary authority.
Central Dispute Over Chinese Government Involvement
In a June 10, 2025 decision, the PTAB granted Yangtze Memory Technologies Co., Ltd. (YMTC) petition challenging Micron’s U.S. Patent No. 8,945,996 B2, despite Micron’s extensive arguments about YMTC’s ties to the Chinese government. Micron argued that YMTC is fundamentally a Chinese state-owned entity, describing it as “China’s State-Owned NAND Memory Company” and alleging that “the Chinese government is in privity with YMTC and is using YMTC as a proxy to challenge U.S. patents that impede its significant investments in YMTC and strategic objectives in the semiconductor industry.” The patent owner warned that “instituting review would set a dangerous precedent, enabling any foreign government to challenge U.S. patents through proxies and thereby threaten the economic and strategic interests of the United States.”
Board’s Hands Tied on Foreign Policy Considerations
Despite acknowledging these concerns, the PTAB ruled it was powerless to consider such arguments under current USPTO guidance. The Board stated definitively: “To date, the Director has not provided any guidance as to when a panel should deny institution based on foreign policy or national security implications, applicable to the facts presented here.” More significantly, the Board noted that current USPTO policy explicitly prohibits such considerations, explaining that “the USPTO has expressly determined that Board panels, in considering discretionary denial sought in a Preliminary Response filed on or before March 26, 2025, may not consider such factors.” The Board cited official USPTO guidance stating that “The panel will not address any new factors outlined in the Process Memorandum,” effectively ruling that foreign policy and national security implications are off-limits for PTAB panels when deciding whether to institute patent reviews.
Precedent Doesn’t Apply to Foreign Entities
Micron attempted to invoke the Supreme Court’s 2019 Return Mail decision, which held that U.S. federal agencies cannot file patent challenges, arguing that “YMTC is the same type of government entity as the [U.S. Postal Service]” and therefore should be similarly barred. The PTAB rejected this analogy, finding crucial differences between U.S. and foreign government entities. The Board emphasized that “Patent Owner does not dispute that YMTC is a company” and that under federal law’s definition, companies are eligible to file patent challenges regardless of government ownership. Importantly, the Board found that the Return Mail decision was specifically focused on U.S. government entities, noting that “the overarching notion underlying Return Mail’s analysis is that the U.S. Government is treated differently than private parties in adversarial, adjudicatory patent proceedings.” The decision highlighted specific legal protections and procedures that apply uniquely to the U.S. government, concluding that “Patent Owner does not address, let alone persuade us, that these same considerations apply to a foreign government or foreign government entity.”
Complex Corporate Structure Questions
Micron detailed YMTC’s corporate structure to demonstrate Chinese government control, identifying YMTC’s parent company as “Yangtze Memory Technologies Holding Co., Ltd.” and alleging that “the Chinese Government” should be listed as a real party in interest due to ultimate state ownership through various state-owned enterprises. However, the PTAB declined to resolve these real party in interest questions, following precedent that such determinations are unnecessary unless they would create statutory time bars or estoppel issues that could affect the proceeding.
Broader Policy Implications
The decision reveals a significant gap in current patent law and policy regarding challenges from foreign government-linked entities. While Micron raised substantial concerns about allowing foreign state actors to challenge U.S. intellectual property rights, the PTAB made clear that addressing such concerns requires action from higher authorities. The Board’s ruling effectively places the responsibility for addressing foreign policy considerations in patent proceedings with Congress or the USPTO Director, rather than individual PTAB panels.
The case was decided before Administrative Patent Judges Jo-Anne M. Kokoski, Kimberly McGraw, and Michael T. Cygan, with the decision written per curiam. The decision is Yangtze Memory Technologies Co., Ltd. v. Micron Technology, Inc., Case No. IPR2025-00098, Paper 15 (Decision Granting Institution of Inter Partes Review) (PTAB June 10, 2025).
The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Greg Cordrey at 949.623.7236 or GCordrey@jmbm.com.