No Genuine Issue Of Fact Where Petitioner's Claim Construction Is Wrong

The PTAB's recent decision denying rehearing in United Microelectronics Corp. v. Lone Star Silicon Innovations LLC, IPR2017-01513, Paper 10 (PTAB May 22, 2018) sheds light on the Board's practice under 37 C.F.R. 42.108(c), which holds that genuine issues of material fact created by conflicting testimony must be viewed in the light most favorable to the petitioner for purposes of instituting inter partes review.

In United Microelectronics, the Board denied institution of inter partes review because United Microelectronics Corp.'s (UMC) petition depended on an incorrect claim construction. UMC's petition interpreted the term "disposed adjacent" in a claim to an integrated circuit to mean that certain components need only be fabricated adjacent to one another during manufacturing and need not both be present in the final circuit. Lone Star's preliminary response disputed that construction and alleged that the petition failed to address the correct interpretation of