• Jun 13 2019
  • |
  • Category: CAFC Updates

Semiconductor Components, doing business as ON Semiconductor (“ON”), petitioned for inter partes review (“IPR”) of several claims of Power Integrations’ U.S. Patent No. 6,212,079 relating to switched mode power supplies that use a “switching regulator” when converting high-voltage alternating current into low-voltage direct current to power electronic devices. Power Integrations argued that the IPR should be time-barred under § 315(b) because ON and Fairchild were in privity at the time of filing and Fairchild had been served with a complaint for infringement more than one year before the petition was filed. The Board rejected this argument in its institution decision and again in its final written decision and Power Integrations appeals. Initially, the CAFC finds that ON established the basic requirements for issue preclusion, and Power Integrations has not substantively disputed that conclusion, but concludes that Power Integrations established that the lack-of-incentive-to-litigate exception applies and rejects ON’s issue preclusion argument. The CAFC finds that privity and real party in interest (“RPI”) relationships arising after an IPR is filed but before institution time-bars the IPR under § 315(b), and therefore vacates the Board’s decision and remands for further proceedings.

View Decision