from the United States Patent and Trademark Office, Patent
Trial and Appeal Board in No. IPR2016-00809.
Scherkenbach, Fish & Richardson, PC, Boston, MA, argued
for appellant. Also represented by Michael R. Headley, Howard
G. Pollack, Neil Warren, Redwood City, CA; John Winston
Thornburgh, San Diego, CA.
Michael Hawes, Baker Botts, LLP, Houston, TX, argued for
appellee. Also represented by Roger Fulghum; Brett J.
Thompsen, Austin, TX; Lauren J. Dreyer, Washington, DC.
Prost, Chief Judge, Reyna and Stoll, Circuit Judges.
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
(P.T.A.B. Sept. 22, 2017). Power Integrations, Inc.
("Power Integrations") appeals the Board's
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 with instructions to
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.
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.
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 district granted Fairchild's motion for a new
trial on damages 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.
appealed, and we affirmed the jury's verdict of
infringement of the '079 patent. Power Integrations,
Inc. v. Fairchild Semiconductor Int'l, Inc., 904
F.3d 965, 974 (Fed. Cir. 2018), cert. denied, 139
S.Ct. 1265 (2019). We concluded, however, that the entire
market value rule could not be used to calculate damages in
this case, vacated the damages award, and remanded for
further proceedings. Id. at 977-80. On May 6, 2019,
the district court granted the parties' joint motion to
release and return Fairchild's posted bond of $146, 480,
598 and any accrued interest. To date, there has been no
further action in the district court proceeding.
November 18, 2015, ON entered into an agreement to merge with
Fairchild. J.A. 143-44. But the merger did not close
immediately. See J.A. 143. Several months later,
while the merger was still pending, ON filed a petition for
IPR challenging claims 31, 32, 34, 38, 39, and 42 of the
'079 patent. J.A. 137-202. This petition for IPR was
filed on March 29, 2016, more than one year after Fairchild
was served with the complaint alleging infringement of the
'079 patent. The Fairchild-ON merger closed several
months later, on September 19, 2016. J.A. 281-82. The Board
instituted the IPR four days after that, on September 23,
2016. J.A. 103-31.
Integrations argued in both its Patent Owner Preliminary
Response and its Patent Owner Response that this 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. J.A. 218-20, 369-72. The Board
rejected this argument in its institution decision and again
in its final written decision.
institution decision, the Board focused its § 315(b)
analysis on whether ON and Fairchild were in privity when
Fairchild filed its petition. Power Integrations argued that
the existence of a merger agreement and a confidentiality
agreement stating that ON and Fairchild "share[d] a
common legal and commercial interest" and "are or
may become joint defendants in proceedings" showed that
they had a common interest in annulling the jury's $139.8
million damages award against Fairchild for infringing the
'079 patent. J.A. 218-19. ON had disclosed the merger
agreement in its IPR petition but noted that the merger was
not closed at the time it filed the petition and that the
merger was dependent on several uncertain conditions
occurring. J.A. 143. ON also asserted that Fairchild had no
role in the decision to file the IPR petition, had no control
over the content of the IPR petition, and did not pay for the
IPR petition. J.A. 143-44. The Board determined that there
was insufficient evidence of record to establish control and
therefore insufficient evidence to establish privity between
Fairchild and ON at the time the petition was filed. J.A.
113-14. The Board thus held that the IPR was not time-barred
by § 315(b) and instituted the IPR. J.A. 115, 130.
institution, Power Integrations requested authorization to
file a motion under 37 C.F.R. § 42.51(b)(2) for
additional discovery on the relationship between ON and
Fairchild. J.A. 289-90. ON objected to providing the
additional discovery. J.A. 1903. The Board applied the
factors enumerated in Garmin International, Inc. v.
Cuozzo Speed Technologies LLC, No. IPR2012-00001, Paper
26 at 6-7 (P.T.A.B. Mar. 5, 2013), which govern requests for
additional discovery, and denied Power Integrations'
request for authorization to file a motion for additional
discovery. J.A. 290-92. In denying the request, the Board
determined that "Patent Owner has expressed no more than
a suspicion (mere speculation) that such evidence exists and
would be uncovered by additional discovery" and
therefore had not met the first Garmin factor. J.A.
292. The Board also concluded that even if Power Integrations
had established the first Garmin factor, it would
not grant the request for additional discovery because the
requests were overly broad. Id.
Patent Owner Response, Power Integrations again argued that
ON was in privity with Fairchild (an undisputedly time-barred
party) at the time ON filed the petition. J.A. 369-72. The
Board rejected this argument for the same reasons it had
rejected it in its institution decision. J.A. 10-13. It again
focused on the issue of control and held that there was
insufficient evidence of record to show that Fairchild
exercised, or could have exercised, control over the IPR
Integrations next asserted that ON was acting as
Fairchild's proxy in filing the IPR petition. J.A.
369-72. The Board rejected this argument as well, finding
that Power Integrations offered mere speculation, not
evidence, that ON filed the petition as Fairchild's
proxy. J.A. 15-17. The Board determined that ON had its own
interest in the IPR proceeding because it had a
multi-billion-dollar merger with Fairchild pending at the
time it filed the petition. J.A. 17.
Power Integrations argued that the IPR was time-barred by
§ 315(b) because Fairchild, a barred party, was an
admitted real party in interest ("RPI") before
institution. J.A. 364-69. Fairchild became an RPI at least by
the time its merger with ON closed-four days before
institution. J.A. 364-66. Two other panels of the Board had
previously issued nonprecedential decisions holding that only
privity relationships up until the time an IPR petition is
filed are relevant for purposes of the § 315(b)
time-bar. See ARRIS Grp., Inc. v. TQ Delta LLC, No.
IPR2016-00430, Paper 9 at 6 (P.T.A.B. July 1, 2016);
Synopsys, Inc. v. Mentor Graphics Corp., No.
IPR2012-00042, Paper 60 at 12 (P.T.A.B. Feb. 19, 2014). The
Board in this case similarly held that RPI and privity
relationships for purposes of the § 315(b) time-bar are
only relevant up to the date the petition is filed.
J.A. 14-15; see also J.A. 11-12 ("Panels of the
Board have interpreted [§] 315(b) (and our associated
rule 37 C.F.R. § 42.101(b)) to mean that 'it is only
privity relationships up until the time a petition is filed
that matter.'" (quoting Synopsys, No.
IPR2012-00042, Paper 60 at 12)). Because the Board determined
that Fairchild was not an RPI at the time the petition was
filed and rejected Power Integrations' privity and proxy
arguments, it concluded that the IPR was not time-barred.
found the IPR not time-barred, the Board proceeded to address
the merits of the challenged claims and found them
unpatentable as obvious over the combination of Japanese
Unexamined Patent Application Publication No. JP H10-323028
("Oda") and Japanese Unexamined Patent Application
Publication No. JP S59-144366 ("Nakamura").
Integrations timely appealed. We have jurisdiction pursuant
to 28 U.S.C. § 1295(a)(4)(A).
appeal, Power Integrations argues that this IPR was
time-barred under § 315(b). As our court has previously
held, when the PTO institutes an IPR, its rejection of a
time-bar challenge under § 315(b) is reviewable.
Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364,
1374 (Fed. Cir. 2018) (en banc). Power Integrations argues
that privity and RPI relationships arising after filing but
before institution should be considered for purposes of the
§ 315(b) time-bar. Under Power Integrations'
interpretation of § 315(b), this IPR would be
time-barred because Fairchild, a time-barred party, became an
RPI after ON filed this petition but before institution. ON
contends that privity and RPI relationships for purposes of
§ 315(b) should be assessed only at the time the IPR
petition is filed and that this IPR is not time-barred.
things even more intersting, in a motion filed after the
principal briefing in this appeal was completed, ON contended
that Power Integrations is precluded from challenging the
Board's § 315(b) determination because it did not
appeal the Board's final written decision reaching the
same § 315(b) determination in another IPR. Power