Purdue Research Foundation wins challenge to invalidate technology patent

WEST LAFAYETTE, Ind. — The Patent Trial and Appeal Board at the U.S. Patent and Trademark Office on Thursday (June 23) denied STMicroelectronics’ challenge to the patentability of a Purdue University patent involving silicon carbide semiconductors.

US 7,498,633 covers groundbreaking technology invented by Purdue’s James Cooper and his graduate student/postdoc Asmita Saha. The denied petition was filed by STMicroelectronics in response to Purdue’s patent infringement lawsuit and was an attempt to invalidate the patent and, thereby, stop the litigation.

“This is a great victory for Purdue,” said Ken Waite, chief patent counsel and director of intellectual property at the Purdue Research Foundation Office of Technology Commercialization. “It means that the patent office has examined the prior art cited by STMicro and has ruled that it does not even raise a legitimate question of patentability. This is an excellent result, as the majority of such requests are granted by the patent office, resulting in a proceeding that can, and often does, invalidate a granted U.S. patent.”

Brooke Beier is senior vice president of commercialization at the Purdue Research Foundation. She said the Office of Technology Commercialization serves as a great steward for intellectual property created by researchers at all Purdue University campuses.

“We take managing and protecting Purdue IP very seriously throughout the process from the initial invention disclosure by Purdue researchers through vetting, marketing, licensing it to established companies and startups and beyond,” she said. “We follow the letter of the law through each step, holding ourselves and others accountable.”

About Purdue Research Foundation Office of Technology Commercialization

The Purdue Research Foundation Office of Technology Commercialization operates one of the most comprehensive technology transfer programs among leading research universities in the U.S. Services provided by this office support the economic development initiatives of Purdue University and benefit the university’s academic activities through commercializing, licensing and protecting Purdue intellectual property. The office is housed in the Convergence Center for Innovation and Collaboration in Discovery Park District at Purdue, adjacent to the Purdue campus. In fiscal year 2021, the office reported 159 deals finalized with 236 technologies signed, 394 disclosures received and 187 issued U.S. patents. The office is managed by the Purdue Research Foundation, which received the 2019 Innovation and Economic Prosperity Universities Award for Place from the Association of Public and Land-grant Universities. In 2020, IPWatchdog Institute ranked Purdue third nationally in startup creation and in the top 20 for patents. The Purdue Research Foundation is a private, nonprofit foundation created to advance the mission of Purdue University. Contact otcip@prf.org for more information.

Writer: Steve Martin, sgmartin@prf.org

Sources: Brooke Beier, blbeier@prf.org

Ken Waite, kjwaite@prf.org