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

United States Court of Appeals for the Federal Circuit

June 13, 2019, Decided

2018-1607

Opinion

 [*1308]  Prost, Chief Judge.

Semiconductor Components Industries, LLC, doing business as ON Semiconductor ("ON"), petitioned for inter partes review ("IPR") of several claims of U.S. Patent No. 6,212,079 ("the '079 patent"). The Patent Trial and Appeal Board ("Board") determined that the IPR was not time-barred by 35 U.S.C. § 315(b) and that the challenged claims were invalid. ON Semiconductor Corp. v. Power Integrations, Inc., No. IPR2016-00809, Paper 67, 2017 Pat. App. LEXIS 11678 (P.T.A.B. Sept. 22, 2017). Power Integrations, Inc. ("Power Integrations") appeals the Board's decision.

For the reasons explained below, we hold that this IPR is time-barred under § 315(b). We therefore vacate the Board's final written decision and remand [**2]  with instructions to dismiss IPR2016-00809.

Power Integrations owns the '079 patent, which relates to switched mode power supplies. '079 patent col. 1 ll. 7, 11-26. These power supplies function to convert high-voltage alternating current into low-voltage direct current to power electronic devices. Id. The '079 patent discloses a "switching regulator" to help conserve power and maintain output regulation at low loads without skipping cycles. Id. col. 1 ln. 65-col. 2 ln. 35.

In 2005 and 2006, Fairchild Semiconductor Corporation and Fairchild (Taiwan) Corporation (collectively, "Fairchild") challenged several claims of the '079 patent in two ex parte reexaminations, which were consolidated. J.A. 87. On May 5, 2009, the U.S. Patent and Trademark Office ("PTO") confirmed the validity of the challenged claims as amended and 22 new claims. J.A. 86-92.

Then, on November 4, 2009, Power Integrations sued Fairchild for infringement of the '079 patent and two other patents. J.A. 1103-12. Fairchild was served with the complaint for infringement on November 6, 2009. In March 2014, a jury found claims 31, 34, 38, and 42 of the '079 patent not invalid and infringed. J.A. 1033-35. The jury awarded damages of $105 million. J.A. 1035. Following our decision in VirnetX, Inc. v. Cisco Systems, Inc., 767 F.3d 1308 (Fed. Cir. 2014), the [**3]  district granted Fairchild's motion for a new trial on damages  [*1309]  for infringement of the '079 patent. In the second damages trial in December 2015, a jury applied the entire market value rule and awarded damages of $139.8 million. J.A. 1038-39.

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926 F.3d 1306 *; 2019 U.S. App. LEXIS 17703 **; 2019 U.S.P.Q.2D (BNA) 217749

POWER INTEGRATIONS, INC., Appellant v. SEMICONDUCTOR COMPONENTS INDUSTRIES, LLC, DBA ON SEMICONDUCTOR, Appellee

Prior History:  [**1] Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2016-00809.

Disposition: VACATED AND REMANDED.

CORE TERMS

time-bar, privity, Patent, preclusion, privy, issue preclusion, infringement, regulation, deference, merger, instituted, real party in interest, damages, argues, common law, non-appealed, statutory language, purposes, parties, statutory interpretation, additional discovery, patent infringement, requesting, litigate, written decision, one year, proceedings, principles, proxy

Administrative Law, Judicial Review, Reviewability, Reviewable Agency Action, Business & Corporate Compliance, US Patent & Trademark Office Proceedings, Patent Law, US Patent & Trademark Office Proceedings, Patent Law, Appeals, Civil Procedure, Preclusion of Judgments, Estoppel, Collateral Estoppel, Appeals, Standards of Review, De Novo Review, Governments, Legislation, Interpretation, Statute of Limitations, Time Limitations, Parties, Real Party in Interest, Deference to Agency Statutory Interpretation, Rule Interpretation