Power Integrations, Inc. v. Semiconductor Components Industries, LLC

ON Semiconductor sought inter partes review (IPR) of several claims of Power’s 079 patent. The Patent Trial and Appeal Board determined that the IPR was not time-barred by 35 U.S.C. 315(b) and that the challenged claims were invalid. The Federal Circuit vacated. Power raised the same section 315(b) argument that it raised and litigated in a non-appealed IPR on a different patent, so ON established the basic requirements for issue preclusion. However, the lack-of-incentive-to-litigate exception applies and justifies rejecting ON’s issue preclusion argument. On the merits, the court concluded that section 315(b) requires consideration of privity and real-party-in-interest (RPI) relationships arising after filing but before institution. The court declined to construe section 315(b) in a way that would have the Board, when deciding whether to institute, ignore the existence of RPIs or privies who would benefit from having an IPR instituted simply because they were not RPIs or privies when the petition was filed. IPR was time-barred by because Fairchild, which challenged the patent in 2009 and merged with ON several years later, was an RPI at the time the IPR was instituted, even though it was not an RPI at the time the petition was filed. View "Power Integrations, Inc. v. Semiconductor Components Industries, LLC" on Justia Law