Search Team

Search by Last Name
A
B
C
D
E
F
G
H
I
J
K
L
M
N
O
P
Q
R
S
T
U
V
W
X
Y
Z

Fairchild (Taiwan) Corp. v. Power Integrations, Inc.

IPRx Dismissed Post-Decision Due to Jury Verdict Confirming Nonobviousness Becoming Final

Fairchild (Taiwan) Corp. v. Power Integrations, Inc., (Fed. Cir. Apr. 21, 2017) (Lourie, Moore, REYNA) (PTAB) (3 of 5 stars)

Fed Cir grants motion to remand to PTAB with instructions to vacate IPRx decision and issue reexamination certificate. The IPRx proceeding was initiated by Power Integrations in 2012, and concerned a patent that was the subject of ongoing litigation between PI and Fairchild. While the district court matter was pending, the examiner in the IPRx rejected Fairchild’s claims, the PTAB affirmed, and Fairchild appealed.

In the meantime, the litigation resulted in a jury verdict rejecting PI’s invalidity arguments. Some time after the PTAB’s affirmance, the Fed Cir affirmed that aspect of the district court judgment. 843 F.3d 1315 (Fed. Cir. 2016) [summary here]. The time for PI to seek a writ of certiorari expired, rendering that aspect of the district court proceeding final. 35 U.S.C. § 317(b) thus barred “maintain[ing]” the IPRx proceeding (which by this time was on appeal to the Fed Cir), since the proceeding involved claims that were raised in a civil action that had reached final decision. “If a defendant brought an invalidity challenge in a district court litigation and was unsuccessful, it is not permitted to bring the same challenge in an inter partes reexamination.” Slip op. at 2 (quoting Function Media, 508 F. App’x 953 (Fed. Cir. 2013)). That the Fed Cir’s affirmance of the jury’s verdict included a remand on infringement and other issues unrelated to patent validity was irrelevant for purposes of applying § 317(b). And while Fairchild had claims in the IPRx that were not in the litigation, it had committed to abandon those claims. On remand, the PTAB is ordered to dismiss the IPRx as to the claims in the litigation, and to issue a reexamination certificate invalidating the abandoned claims.

KEYWORDS: INTER PARTES REEXAMINATION; MOTION TO REMAND; SECTION 317