`Tel: 571-272-7822
`
`Paper 30
`Entered: September 18, 2019
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`SEMICONDUCTOR COMPONENTS INDUSTRIES, LLC
`(d/b/a ON SEMICONDUCTOR),
`Petitioner,
`
`v.
`
`POWER INTEGRATIONS, INC.,
`Patent Owner.
`_______________
`
`Case IPR2016-008091
`Case IPR2016-00995
`Case IPR2016-01589
`Case IPR2016-01597
`_______________
`
`
`PER CURIAM.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 The parties are authorized to use this caption in their filings made pursuant
`to this Order only. See infra.
`
`
`
`IPR2016-00809, IPR2016-00995
`IPR2016-01589, IPR2016-01597
`
`
`These four proceedings are on remand from the United States Court of
`Appeals for the Federal Circuit with an order from the Court that the Board
`dismiss each proceeding as improperly instituted contrary to 35 U.S.C.
`§ 315(b).
`On September 6, 2019, by email, Petitioner contacted the Board to
`request authorization to file a motion to stay the proceedings. Petitioner’s
`request is based on its representation that it will file a petition for certiorari
`to the Supreme Court of the United States challenging the Federal Circuit’s
`time-bar determination under § 315(b). Petitioner points out that the same
`§ 315(b) issue is before the Supreme Court in Thryv, Inc., fka Dex Media,
`Inc. v. Click-to-Call Technologies, LP, No. 18-916 (cert. granted June 24,
`2019). On September 8, 2019, Patent Owner responded, by email, opposing
`the request.
`On September 17, 2019, the Board (per Judges Giannetti, McNamara,
`Pettigrew, Fishman, and Begley) held a conference call with the parties to
`discuss Petitioner’s request. A court reporter engaged by Petitioner was also
`on the call. Petitioner will file the reporter’s transcript as an exhibit
`promptly after it becomes available.
`After hearing the parties’ oral submissions, the Board advised the
`parties that it would grant Petitioner’s request and authorize briefing on a
`motion to stay.
`It is, therefore,
`ORDERED that Petitioner’s request for authorization to file a motion
`to stay each of these four proceedings on remand to allow Petitioner to file a
`petition for certiorari in the Supreme Court of the United States is granted;
`
`2
`
`
`
`IPR2016-00809, IPR2016-00995
`IPR2016-01589, IPR2016-01597
`
`
`FURTHER ORDERED that Petitioner’s motion will be due within ten
`days after entry of this Order (not including weekends and holidays) and is
`limited to ten pages;
`FURTHER ORDERED that Patent Owner is authorized to file an
`opposition of not more than ten pages, due within ten days (not including
`weekends and holidays) after receipt of the motion;
`FURTHER ORDERED that Petitioner is authorized to file a reply of
`no more than five pages, due within seven days (not including weekends and
`holidays) after receipt of the opposition;
`FURTHER ORDERED that the parties in their briefs should provide
`citations to relevant legal authority and address all potential outcomes of the
`petition for writ of certiorari and what effect those outcomes could have on
`this proceeding;
`FURTHER ORDERED that the parties in their briefs should address
`all potential prejudice to them that would result from granting or denying the
`requested stay; and
`FURTHER ORDERED that the caption appearing above may be used
`by the parties for the filings made pursuant to this Order and for no other
`purposes.
`
`
`
`
`
`
`
`
`
`
`3
`
`
`
`IPR2016-00809, IPR2016-00995
`IPR2016-01589, IPR2016-01597
`
`PETITIONER:
`
`Roger Fulghum
`Brett Thompsen
`Brian Oaks
`BAKER BOTTS L.L.P.
`roger.fulghum@bakerbotts.com
`brett.thompsen@bakerbotts.com
`brian.oaks@bakerbotts.com
`
`PATENT OWNER:
`
`Neil A. Warren
`John Phillips
`FISH & RICHARDSON P.C.
`warren@fr.com
`phillips@fr.com
`
`
`4
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
