June 27, 2019
Authored and Edited by Marcus A.R. Childress; Sydney R. Kestle; Elizabeth D. Ferrill
In Power Integrations, Inc. v. Semiconductor Components Industries, LLC, No. 2018-1607 (Fed. Cir. June 13, 2019), the Federal Circuit found an inter partes review (IPR) petition time-barred under 35 U.S.C. § 315(b).
Power Integrations owns U.S. Patent No. 6,212,079, related to switched mode power supplies. In November 2009, Power Integrations sued Fairchild Semiconductor Corporation for infringing the ’079 patent. In November 2015, while the trial was ongoing, Fairchild initiated a merger with Semiconductor Components Industries (“ON”). In March 2016, before that merger closed, ON filed an IPR petition challenging the claims of the ’079 patent. In September 2016, the Fairchild-ON merger closed. And four days later, the Board instituted ON’s petition.
Before the Board, Power Integrations argued ON was time-barred from filing its petition because (i) ON was in privity with Fairchild (undisputed time-barred party) when it filed its petition; and (ii) Fairchild became a real-party-in-interest (RPI) when the Fairchild-ON merger closed, four days before the Board instituted review of the ’079 patent. The Board rejected these arguments, and found ON’s petition was not time barred under § 315. The Board went on to hold the challenged claims unpatentable.
The Federal Circuit rejected the Board’s analysis and vacated and remanded. The Court held RPI and privity relationships that develop after filing but before institution can be assessed for purposes of the § 315 time bar. Because Fairchild was an RPI by the time of institution, ON’s petition was time barred.
Copyright © 2019 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.
DISCLAIMER: Although we wish to hear from you, information exchanged in this blog cannot and does not create an attorney-client relationship. Please do not post any information that you consider to be personal or confidential. If you wish for Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to consider representing you, in order to establish an attorney-client relationship you must first enter a written representation agreement with Finnegan. Contact us for additional information. One of our lawyers will be happy to discuss the possibility of representation with you. Additional disclaimer information.
10th Annual Georgia Asian Pacific American Bar Association Gala
May 29, 2024
Atlanta
INCONTESTABLE® Blog
April 19, 2024
Due to international data regulations, we’ve updated our privacy policy. Click here to read our privacy policy in full.
We use cookies on this website to provide you with the best user experience. By accepting cookies, you agree to our use of cookies. Please note that if you opt not to accept or if you disable cookies, the “Your Finnegan” feature on this website will be disabled as well. For more information on how we use cookies, please see our Privacy Policy.
Finnegan is thrilled to announce the launch of our new blog, Ad Law Buzz, devoted solely to breaking news, developments, trends, and analysis in advertising law.