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 IPR2016-00809
`Case IPR2016-00995
`Case IPR2016-01589
`Case IPR2016-01597
`____________
`
`PETITIONER’S MOTION TO STAY
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SEMICONDUCTOR COMPONENTS INDUSTRIES, LLC
`(d/b/a ON SEMICONDUCTOR),
`Petitioner
`
`v.
`
`POWER INTEGRATIONS, INC.,
`Patent Owner
`____________
`
`Case IPR2016-00809
`Case IPR2016-00995
`Case IPR2016-01589
`Case IPR2016-01597
`____________
`
`PETITIONER’S MOTION TO STAY
`
`
`
`Petitioner’s Motion to Stay
`
`EXHIBIT LISTING TO IPR2016-00809
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`U.S. Patent No. 6,212,079 to Balakrishnan et al. (“the ’079 Patent”)
`
`Ex-Parte Reexamination Certificate No. 6,212,079 C1 Issued on May
`5, 2009 (“the ’079 Reexamination Certificate)
`
`Expert Declaration of Dr. Vijay Madisetti
`
`CV of Dr. Vijay Madisetti
`
`U.S. Patent No. 5,747,976 to Wong et al. (“Wong”)
`
`U.S. Patent No. 4,772,995 to Gautherin et al. (“Gautherin”)
`
`Response to Office Action during Reexamination (December 19,
`2007)
`
`Final Office Action during Reexamination (October 4, 2008)
`
`Response to Final Office Action during Reexamination (December 4,
`2008)
`
`Notice of Intent to Issue Ex Parte Reexamination Certificate (February
`17, 2009)
`
`Keith Billings, Switchmode Power Supply Handbook, McGraw-Hill,
`Inc. (1989) (“Keith”) (Copied from the file wrapper of Reexamination
`No. 90/008,376)
`
`U.S. Patent No. 5,757,631 to Semmler (“Semmler”)
`
`Power Integrations, Inc. v. Fairchild Semiconductor Corp., 3:09-cv-
`05235, Power Integrations’ Opposition to Fairchild’s Renewed
`Motion for Judgment as a Matter of Law, New Trial, and/or Remittitur
`(N.D. Cal. July 18, 2014) (Dkt. 601).
`
`1014
`
`Japanese Unexamined Patent Application Publication Number H9-
`98571 by Inaba et al. (“Inaba”)
`
`1015
`
`Declaration Regarding English Translation of Inaba
`
`i
`
`
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
`1030
`
`1031
`
`Petitioner’s Motion to Stay
`
`English Translation of Inaba
`
`Xunwei Zhou et al., Improve Light Load Efficiency for Synchronous
`Rectifier Buck Converter, Proceedings of Fourteenth Annual Applied
`Power Electronics Conference and Exposition (IEEE) (1999) (“Zhou”)
`
`Japanese Unexamined Patent Application Publication No. H10-14217
`by Akio Nishida (“Nishida”)
`
`Declaration Regarding English Translation of Nishida
`
`English Translation of Nishida
`
`Japanese Examined Patent Application Publication No. H6-26480 by
`Jiro Tanuma et al. (“Tanuma”)
`
`Declaration Regarding English Translation of Tanuma
`
`English Translation of Tanuma
`
`Japanese Unexamined Patent Application Publication No. H4-33570
`by Banba (“Banba”)
`
`Declaration Regarding English Translation of Banba
`
`English Translation of Banba
`
`Japanese Unexamined Patent Application Publication No. H10-
`323028 by Seiji Oda et al. (“Oda”)
`
`Declaration Regarding English Translation of Oda
`
`English Translation of Oda
`
`Power Integrations, Inc. v. Fairchild Semi. Int’l Inc., No. 3:09-cv-
`05235, First Claim Construction Order (N.D. Cal. July 13, 2011) (Dkt.
`128)
`
`Power Integrations, Inc. v. Fairchild Semi. Int’l Inc., No. 3:09-cv-
`05235, Third Claim Construction Order (N.D. Cal. May 9, 2012) (Dkt.
`148)
`
`1032
`
`Power Integrations, Inc. v. Fairchild Semi. Int’l Inc., No. 3:09-cv-
`
`ii
`
`
`
`Petitioner’s Motion to Stay
`
`05235, Joint Claim Construction and Prehearing Statement Pursuant to
`Patent Local Rule 4-3 (N.D. Cal. Jan. 24, 2011) (Dkt. 104)
`
`U.S. Patent No. 5,568,044 to Bittner (“Bittner”)
`
`Robert W. Erickson, Fundamentals of Power Electronics (Chapman
`and Hall, May 1997)
`
`U.S. Patent No. 6,137,696 to Hall et al. (“’696 Patent”)
`
`U.S. Patent No. 6,480,043 to Hall et al. (“’043 Patent”)
`
`U.S. Patent No. 6,233,161 to Balakrishnan et al. (“’161 Patent”)
`
`U.S. Patent No. 6,480,399 to Balakrishnan et al. (“’399 Patent”)
`
`U.S. Patent Application Publication No. 2009/0033307 to Park et al.
`(“’307 Application”)
`
`Keyue M. Smedley et al., One-Cycle Control of Switching Converters,
`IEEE Transactions on Power Electronics, Vol. 10, No. 6 (Nov. 1995)
`(“Smedley”).
`
`U.S. Patent No. 5,602,724 to Balakrishnan (“’724 Patent”)
`
`U.S. Patent No. 4,849,869 to Tanuma et al. (“’869 Patent”)
`
`1033
`
`1034
`
`1035
`
`1036
`
`1037
`
`1038
`
`1039
`
`1040
`
`1041
`
`1042
`
`1043
`
`U.S. Patent No. 5,055,767 to Nelson (“Nelson”)
`
`1044
`
`1045
`
`1046
`
`1047
`
`1048
`
`1049
`
`1050
`
`U.S. Patent No. 4,536,700 to Bello et al. (“Bello”)
`
`Linear Technology LT1074/LT1076 Data Sheet (“LT1074”)
`
`Power Integrations, Inc. TOP200 Data Sheet (“TOP200”)
`
`U.S. Patent No. 4,425,612 to Bahler et al. (“Bahler”)
`
`Japanese Unexamined Patent Application Publication No. S59-144366
`by Nakamura (“Nakamura”)
`
`Declaration Regarding English Translation of Nakamura
`
`English Translation of Nakamura
`
`iii
`
`
`
`1051
`
`1052
`
`1053
`
`1054
`
`1055
`
`1056
`
`1057
`
`1058
`
`1059
`
`1060
`
`1061
`
`1062
`
`1063
`
`1064
`
`1065
`
`Petitioner’s Motion to Stay
`
`Declaration of Scott Bennett, Ph.D., regarding LT1074
`
`John G. Kassakian et al., Principles of Power Electronics (Addison-
`Wesley Publishing Company, Inc., 1991) (Reprinted June 1992)
`
`Karl Edwards, The LT1370: New 500kHz, 6A Monolithic Boost
`Converter, Linear Technology Magazine, Vol. VII, No. 4 (November
`1997) (“Edwards”)
`
`Affidavit Submitted during Reexamination (December 19, 2007)
`
`Press Release dated August 25, 2016, ON Semiconductor Announces
`Receipt of Regulatory Approval for Acquisition of Fairchild
`Semiconductor
`
`Press Release dated September 19, 2016, ON Semiconductor
`Successfully Completes Acquisition of Fairchild Semiconductor for
`$2.4 Billion in Cash
`
`Reserved
`
`Reserved
`
`Copy of Power Integrations Product Selector Guide (May 2004) Used
`as Deposition Exhibit 1059 During Deposition of David M. Matthews
`on Feb. 8, 2017
`
`Proposed Protective Order
`
`Expert Declaration of Dr. Vijay Madisetti
`
`Declaration of Scott Bennett, Ph.D., Authenticating and Including
`Excerpts from: Robert W. Erickson, Fundamentals of Power
`Electronics (Chapman & Hall, May 1997)
`
`Declaration of Scott Bennett, Ph.D., Authenticating and Including
`Excerpts from: Mohan et al., Power Electronics: Converters,
`Applications, and Design (John Wiley & Sons, Inc., 2d ed., 1995)
`
`The New Shorter Oxford English Dictionary (1993)
`
`TOPSwitch-FX Webpage, downloaded on Dec. 29, 2016 at:
`
`iv
`
`
`
`Petitioner’s Motion to Stay
`
`https://ac-dc.power.com/products/product-archive/topswitch-fx/
`
`TOPSwitch-GX Webpage, downloaded on Dec. 29, 2016 at:
`https://ac-dc.power.com/products/product-archive/topswitch-gx/
`
`EPR-11 - Power Integrations, Inc., Engineering Prototype Report -
`70 W (19 V 3.66A) Universal Input Adaptor (EP11)
`
`EPR-12 - Power Integrations, Inc., Engineering Prototype Report for
`EP-12 - 145 W PC Forward Converter with TOP247 and 10 W 5 V
`Output Standby Flyback with TNY266
`
`EPR-31 - Power Integrations, Inc., Engineering Prototype Report for
`EP–31 Multiple Output 180 W AC-DC Power Supply using TOP249Y
`(TOPSwitch-GX) and TNY266P (TinySwitch-II)
`
`Excerpts of Trial Testimony from September 19, 2007 (Vol. III) in
`Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., No.
`04-cv-1371-LPS (D. Del.) (Document 557).
`
`Excerpts Trial Testimony from September 20, 2007 (Vol. IV) in
`Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., No.
`04-cv-1371-LPS (D. Del.) (Document 558).
`
`Transcript of Deposition of David M. Matthews (Feb. 8, 2017)
`
`Transcript of Deposition of William Bohannon (Mar. 1, 2017)
`
`Affidavit From Internet Archive Authenticating and Including: Power
`Integrations, Inc., Product Selector Guide (May 2004)
`
`Excerpts of Deposition of David Michael Matthews on April 22, 2015
`in Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., No.
`09-cv-05235-MMC (N.D. Cal.)
`
`Reserved
`
`Abraham I. Pressman et al., Switching Power Supply Design (McGraw
`Hill Cos., 3d ed., 2009)
`
`1066
`
`1067
`
`1068
`
`1069
`
`1070
`
`1071
`
`1072
`
`1073
`
`1074
`
`1075
`
`1076
`
`1077
`
`1078
`
`Declaration of Yuji Kakizaki
`
`v
`
`
`
`Petitioner’s Motion to Stay
`
`1079
`
`1080
`
`1081
`
`1082
`
`1083
`
`1084
`
`1085
`
`1086
`
`ST Microelectronics, Application Note AN1049 (March 2000)
`
`Hiroshi Maruyama, PWM Control IC with Power-Saving Function for
`Light Loads, Fuji Electric Review, Vol. 46, No. 4 (2000)
`
`Mohan et al., Power Electronics: Converters, Applications, and
`Design (John Wiley & Sons, Inc., 2d ed., 1995)
`
`Transcript of Teleconference Between the Board and the Parties on
`April 28, 2017
`
`Email from Roger Fulghum to Neil Warren dated May 16, 2017
`
`Teleconference with Patent Trial and Appeal Board, September 17,
`2019 at 4:00 p.m.
`
`United States Court of Appeals for the Federal Circuit, Voltstar
`Technologies, Inc. v. Superior Communications, Inc., Case 2018-
`2093, Order dated November 6, 2018
`
`United States District Court Northern District of California, Power
`Integrations, Inc. v. Fairchild Semiconductor International, Inc., No.
`C 09-05235 MMC, Transcript of Proceeding dated September 6, 2019
`
`vi
`
`
`
`Petitioner’s Motion to Stay
`
`EXHIBIT LISTING TO IPR2016-00995
`
`U.S. Patent No. 6,538,908 to Balakrishnan et al. (“the ’908 Patent”)
`
`Ex-Parte Reexamination Certificate No. 6,538,908 C1 Issued on April
`14, 2009 (“the ʼ908 Reexamination Certificate”)
`
`Expert Declaration of Dr. Vijay Madisetti
`
`CV of Dr. Vijay Madisetti
`
`Motorola MC33362 Data Sheet (“MC33362”)
`
`Affidavit from Internet Archive
`
`Exhibit A to Affidavit from Internet Archive
`
`U.S. Patent No. 5,859,768 to Hall et al. (“Hall”)
`
`U.S. Patent No. 5,335,162 to Martin-Lopez et al. (“Martin-Lopez”)
`
`U.S. Patent 6,191,566 to Petricek et al. (“Petricek”)
`
`LT1074/LT1076 Data Sheet
`
`CS-51021 Data Sheet
`
`U.S. Patent 5,999,421 to Liu et al. (“Liu”)
`
`LTC1174 Data Sheet
`
`Power Integrations, Inc. v. Fairchild Semi. Int’l Inc., No. 3:09-cv-
`05235, First Claim Construction Order (N.D. Cal. July 13, 2011) (Dkt.
`128)
`
`Power Integrations, Inc. v. Fairchild Semi. Int’l Inc., No. 3:09-cv-
`05235, Third Claim Construction Order (N.D. Cal. May 9, 2012) (Dkt.
`148)
`
`Power Integrations, Inc. v. Fairchild Semi. Int’l Inc., No. 3:09-cv-
`05235, Joint Claim Construction and Prehearing Statement Pursuant to
`Patent Local Rule 4-3 (N.D. Cal. Jan. 24, 2011) (Dkt. 104)
`
`vii
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028-
`1084
`
`1085
`
`Petitioner’s Motion to Stay
`
`Certain Power Supply Controllers and Products Containing Same,
`Inv. No. 337-TA-541, Final Initial and Recommended Determinations
`(July 19, 2006)
`
`Power Integrations, Inc. v. Fairchild Semi. Int’l Inc., No. 3:09-cv-
`05235, Plaintiff Power Integrations’ Notice of Motion and Rule 50
`Motion for Judgment as a Matter of Law that the ʼ908 Patent is Not
`Invalid (N.D. Cal. Jan. 24, 2011) (Dkt. 529)
`
`Power Integrations, Inc. v. Fairchild Semi. Int’l Inc., No. 3:09-cv-
`05235, Transcript of Proceedings Held on March 24, 2011 before
`Judge James Ware (N.D. Cal. Mar. 24, 2011) (Dkt. 121)
`
`Power Integrations, Inc. v. Fairchild Semi. Int’l Inc., No. 3:09-cv-
`05235, Opening Claim Construction Brief by Power Integrations
`(N.D. Cal. Feb. 18, 2011) (Dkt. 109)
`
`Press Release dated August 25, 2016, ON Semiconductor Announces
`Receipt of Regulatory Approval for Acquisition of Fairchild
`Semiconductor
`
`Press Release dated September 19, 2016, ON Semiconductor
`Successfully Completes Acquisition of Fairchild Semiconductor for
`$2.4 Billion in Cash
`
`Expert Declaration of Dr. Vijay Madisetti
`
`SG6841 Data Sheet
`
`Excerpts of Trial Testimony (Vol. 3) (Feb. 11, 2014) in Power
`Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., Case No. 09-
`cv-05235-MMC, N.D. Cal.
`
`Teleconference with Patent Trial and Appeal Board, September 17,
`2019 at 4:00 p.m.
`
`RESERVED
`
`United States Court of Appeals for the Federal Circuit, Voltstar
`Technologies, Inc. v. Superior Communications, Inc., Case 2018-
`
`viii
`
`
`
`Petitioner’s Motion to Stay
`
`2093, Order dated November 6, 2018
`
`1086
`
`United States District Court Northern District of California, Power
`Integrations, Inc. v. Fairchild Semiconductor International, Inc., No.
`C 09-05235 MMC, Transcript of Proceeding dated September 6, 2019
`
`ix
`
`
`
`Petitioner’s Motion to Stay
`
`EXHIBIT LISTING TO IPR2016-01589
`
`U.S. Patent No. 6,249,876 to Balakrishnan et al. (“the ’876 Patent”)
`
`Declaration of Douglas Holberg
`
`CV of Douglas Holberg
`
`U.S. Patent No. 5,929,620 to Dobkin et al. (“Dobkin”)
`
`U.S. Patent No. 4,638,417 to Martin, Jr. et al. (“Martin”)
`
`European Patent Application EP0321794A2 to Marchio et al.
`(“Marchio”)
`
`Excerpt of Prosecution History of the ’876 Patent
`
`U.S. Patent No. 5,739,658 to Thompson et al. (“Thompson”)
`
`Bipolar and MOS Analog Integrated Circuit Design, by Alan Grebene
`(“Grebene”)
`
`Declaration of Scott Bennett
`
`U.S. Patent No. 5,638,031 to Danstrom (“Danstrom”)
`
`Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 1:08-
`cv-00309-JJF-LPS, Order (D. Del. July 20, 2010) (Dkt. 337)
`
`Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 1:08-
`cv-00309-JJF-LPS, Report and Recommendation Regarding Claim
`Construction (D. Del. Dec. 18, 2009) (Dkt. 212)
`
`Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 1:08-
`cv-00309-JJF-LPS, Power Integrations’ Responsive Claim
`Construction Brief (D. Del. Sept. 2, 2009) (Dkt. 138)
`
`U.S. Patent No. 4,988,942 to Ekstrand (“Ekstrand”)
`
`U.S. Patent No. 5,699,024 to Manlove et al. (“Manlove”)
`
`Reduction of Power Supply EMI Emission by Switching Frequency
`Modulation, by Lin et al. (“Lin”)
`
`x
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
`1030
`
`1031
`
`1032
`
`Petitioner’s Motion to Stay
`
`Programmed Pulsewidth Modulated Waveforms for Electromagnetic
`Interference Mitigation in DC-DC Converters, by Wang et al.
`(“Wang”)
`
`Acoustic Noise Reduction in Sinusoidal PWM Drives Using a
`Randomly Modulated Carrier, by Habetler, et. al. (“Habetler”)
`
`Easing EMC problems in switched mode power converters by random
`modulation of the PWM carrier frequency, by Stone et al. (“Stone”).
`
`New IC Features Reduce EMI from Switching Regulator Circuits, by
`John Seago, Linear Technology Magazine, Feb. 1997 (“Seago”)
`
`Power Integrations’ Appellant’s Brief from Case No. 2014-1123 (Fed.
`Cir).
`
`Power Integrations’ Appellant’s Reply Brief from Case No. 2014-
`1123 (Fed. Cir).
`
`Robert W. Erickson, Fundamentals of Power Electronics (Chapman
`and Hall, May 1997)
`
`Press Release dated August 25, 2016, ON Semiconductor Announces
`Receipt of Regulatory Approval for Acquisition of Fairchild
`Semiconductor
`
`Press Release dated September 19, 2016, ON Semiconductor
`Successfully Completes Acquisition of Fairchild Semiconductor for
`$2.4 Billion in Cash
`
`Decision dated October 4, 2016 for Ex parte Reexamination Control
`Number 90/008,326
`
`Transcript of May 10, 2017 Call with the Board
`
`Supplemental Declaration of Douglas Holberg
`
`Transcript of July 28, 2017 Deposition of Arthur Kelley
`
`Transcript of August 3, 2017 Deposition of Michael Matthews
`
`Power Integrations, Inc. v. Fairchild Semiconductor Corp., 31-04-cv-
`
`xi
`
`
`
`Petitioner’s Motion to Stay
`
`01371, Power Integrations’ Opposition to Fairchild’s Renewed
`Motion for Judgment as a Matter of Law (D. Del. Jan. 2, 2008) (Dkt.
`648).
`
`Institution Decision in IPR2016-01588, Paper 15 (Feb. 17, 2017).
`
`Brief of USPTO, Appeal No. 2017-1304 (May 30, 2017)
`
`Unitrode Application Note U-97
`
`CMOS Analog Integrated Circuit Design, by Holberg (“Holberg”)
`
`Teleconference with Patent Trial and Appeal Board, September 17,
`2019 at 4:00 p.m.
`
`RESERVED
`
`United States Court of Appeals for the Federal Circuit, Voltstar
`Technologies, Inc. v. Superior Communications, Inc., Case 2018-
`2093, Order dated November 6, 2018
`
`United States District Court Northern District of California, Power
`Integrations, Inc. v. Fairchild Semiconductor International, Inc., No.
`C 09-05235 MMC, Transcript of Proceeding dated September 6, 2019
`
`1033
`
`1034
`
`1035
`
`1036
`
`1037
`
`1038-
`1084
`
`1085
`
`1086
`
`xii
`
`
`
`Petitioner’s Motion to Stay
`
`EXHIBIT LISTING TO IPR2016-01597
`
`U.S. Patent No. 6,538,908 to Balakrishnan et al. (“the ’908 Patent”)
`
`Ex-Parte Reexamination Certificate No. 6,538,908 C1 Issued on April
`14, 2009 (“the ʼ908 Reexamination Certificate”)
`
`Expert Declaration of Dr. Vijay Madisetti
`
`CV of Dr. Vijay Madisetti
`
`Motorola MC33362 Data Sheet (“Motorola”)
`
`Affidavit from Internet Archive
`
`Exhibit A to Affidavit from Internet Archive
`
`U.S. Patent No. 5,859,768 to Hall et al. (“Hall”)
`
`U.S. Patent No. 5,335,162 to Martin-Lopez et al. (“Martin-Lopez”)
`
`U.S. Patent 6,191,566 to Petricek et al. (“Petricek”)
`
`LT1074/LT1076 Data Sheet
`
`CS-51021 Data Sheet
`
`U.S. Patent 5,999,421 to Liu et al. (“Liu”)
`
`LTC1174 Data Sheet
`
`Power Integrations, Inc. v. Fairchild Semi. Int’l Inc., No. 3:09-cv-
`05235, First Claim Construction Order (N.D. Cal. July 13, 2011) (Dkt.
`128)
`
`Power Integrations, Inc. v. Fairchild Semi. Int’l Inc., No. 3:09-cv-
`05235, Third Claim Construction Order (N.D. Cal. May 9, 2012) (Dkt.
`148)
`
`Power Integrations, Inc. v. Fairchild Semi. Int’l Inc., No. 3:09-cv-
`05235, Joint Claim Construction and Prehearing Statement Pursuant to
`Patent Local Rule 4-3 (N.D. Cal. Jan. 24, 2011) (Dkt. 104)
`
`xiii
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
`1030
`
`Petitioner’s Motion to Stay
`
`Certain Power Supply Controllers and Products Containing Same,
`Inv. No. 337-TA-541, Final Initial and Recommended Determinations
`(July 19, 2006)
`
`Power Integrations, Inc. v. Fairchild Semi. Int’l Inc., No. 3:09-cv-
`05235, Plaintiff Power Integrations’ Notice of Motion and Rule 50
`Motion for Judgment as a Matter of Law that the ʼ908 Patent is Not
`Invalid (N.D. Cal. Feb. 25, 2014) (Dkt. 529)
`
`Power Integrations, Inc. v. Fairchild Semi. Int’l Inc., No. 3:09-cv-
`05235, Transcript of Proceedings Held on March 24, 2011 before
`Judge James Ware (N.D. Cal. Mar. 24, 2011) (Dkt. 121)
`
`Power Integrations, Inc. v. Fairchild Semi. Int’l Inc., No. 3:09-cv-
`05235, Power Integrations’ Opening Claim Construction Brief (N.D.
`Cal. Feb. 18, 2011) (Dkt. 109)
`
`English Translation of Japanese Unexamined Patent Application
`Publication No. H10-108457 by Kaneko Shinji (“Shinji”)
`
`Japanese Unexamined Patent Application Publication No. H10-
`108457 by Kaneko Shinji
`
`Translator Declaration Regarding Japanese Unexamined Patent
`Application Publication No. H10-108457
`
`English Translation of Japanese Unexamined Patent Application
`Publication No. JP S62-281759 by Shun’ichi Komatsu (“Komatsu”)
`
`Japanese Unexamined Patent Application Publication No. JP S62-
`281759 by Shun’ichi Komatsu
`
`Translator Declaration Regarding Japanese Unexamined Patent
`Application Publication No. JP S62-281759
`
`John G. Kassakian et al., Principles of Power Electronics
`(Massachusetts Institute of Technology, Addison-Wesley Publishing
`Co. 1992) (1991)
`
`U.S. Patent No. 5,757,635 to Seong (“Seong”)
`
`U.S. Patent No. 6,433,386 to Yun et al. (“Yun”)
`
`xiv
`
`
`
`1031
`
`1032
`
`1033
`
`1034
`
`1035
`
`1036
`
`1037
`
`1038
`
`1039
`
`1040-
`1084
`
`1085
`
`1086
`
`Petitioner’s Motion to Stay
`
`U.S. Patent No. 5,079,456 to Kotowski et al. (“Kotowski”)
`
`File History for a Second Ex Parte Reexamination Proceeding on U.S.
`Patent No. 6.538,908, Control No. 90/008,363.
`
`Press Release dated August 25, 2016, ON Semiconductor Announces
`Receipt of Regulatory Approval for Acquisition of Fairchild
`Semiconductor
`
`Press Release dated September 19, 2016, ON Semiconductor
`Successfully Completes Acquisition of Fairchild Semiconductor for
`$2.4 Billion in Cash
`
`Expert Declaration of Dr. Vijay Madisetti
`
`SG6841 Data Sheet
`
`Excerpts of Trial Testimony (Vol. 3) (Feb. 11, 2014) in Power
`Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., Case No. 09-
`cv-05235-MMC, N.D. Cal.
`
`U.S. Patent 5,675,485 to Seong (“Seong ‘485”)
`
`Teleconference with Patent Trial and Appeal Board, September 17,
`2019 at 4:00 p.m.
`
`RESERVED
`
`United States Court of Appeals for the Federal Circuit, Voltstar
`Technologies, Inc. v. Superior Communications, Inc., Case 2018-
`2093, Order dated November 6, 2018
`
`United States District Court Northern District of California, Power
`Integrations, Inc. v. Fairchild Semiconductor International, Inc., No.
`C 09-05235 MMC, Transcript of Proceeding dated September 6, 2019
`
`xv
`
`
`
`Petitioner’s Motion to Stay
`
`Petitioner respectfully moves that the Board enter an order staying Case
`
`Nos. IPR2016-00809, IPR2016-00995, IPR2016-01589, and IPR2016-01597
`
`(hereinafter “the four IPR proceedings”) pending the resolution of Petitioner’s
`
`petition for certiorari to be filed with the Supreme Court of the United States.
`
`Petitioner’s petition for certiorari will address two issues. The first issue is
`
`whether the Federal Circuit correctly held in Power Integrations, Inc. v.
`
`Semiconductor Components Indus., LLC, 926 F.3d 1306 (Fed. Cir. 2019) (the
`
`appeal of IPR2016-00809) (hereinafter “Power Integrations I”) that the evaluation
`
`of real parties in interest in applying the petition timeliness requirement of 35
`
`U.S.C. § 315(b) is not limited to an evaluation of real parties in interest at the time
`
`of the filing of the petition for inter partes review, but also includes an evaluation
`
`of such relationships that arise after filing the filing of the petition and before the
`
`institution decision. The second, and perhaps more fundamental, issue is whether
`
`Section 314(d) permits appeal of the Board’s decision to institute an inter partes
`
`review upon finding that Section 315(b)’s time bar did not apply. The Supreme
`
`Court has set that second issue for argument in Thryv, Inc. fka Dex Media, Inc. v.
`
`Click-to-Call Technologies, LP, No. 18-1916, on December 9, 2019.
`
`A limited stay pending the outcome of Petitioner’s petition for certiorari in
`
`this procedural circumstance is necessary so that the four IPR proceedings are not
`
`dismissed or terminated while the Supreme Court hears argument on and considers
`
`1
`
`
`
`Petitioner’s Motion to Stay
`
`the issues raised by Petitioner. If a stay is denied, there exists a potential for
`
`extreme prejudice, as Patent Owner has clearly signaled that it will argue that a
`
`terminated or dismissed IPR proceeding cannot be revived or reinstated and that a
`
`dismissal is a final outcome that cannot be undone regardless of the outcome of
`
`Petitioner’s petition for certiorari. Such a procedural outcome would violate
`
`Petitioner’s due process rights.
`
`I.
`
`PROCEDURAL HISTORY OF THE FOUR IPR PROCEEDINGS
`
`Petitioner filed the petitions in the four IPR proceedings in 2016. After the
`
`filing of the petitions, Petitioner acquired Fairchild. Petitioner timely identified
`
`Fairchild as a real party in interest. The Board instituted the four IPR proceedings
`
`over Patent Owner’s argument that the petitions were time-barred under Section
`
`315(b). The Board issued a final written decision in each of the four IPR
`
`proceedings and held all claims for which IPR was instituted (and not disclaimed)
`
`to be unpatentable. Patent Owner appealed each to the Federal Circuit. The
`
`Director intervened in the appeal of IPR2016-01589 in support of the Board’s
`
`interpretation that the evaluation of privies and real parties under Section 315(b) is
`
`limited to the evaluation of privies and real parties in interest as of the filing of the
`
`petition.
`
`On June 13, 2019, the Federal Circuit issued its decisions in Power
`
`Integrations
`
`I
`
`(concerning
`
`IPR2016-00809), Power
`
`Integrations,
`
`Inc. v.
`
`2
`
`
`
`Petitioner’s Motion to Stay
`
`Semiconductor Components Indus., LLC, 771 Fed. Appx. 487 (Fed. Cir. 2019)
`
`(concerning consolidated appeals for IPR2016-00995 and IPR2016-01597), and
`
`Power Integrations, Inc. v. Semiconductor Components Indus., LLC, 771 Fed.
`
`Appx. 488 (Fed. Cir. 2019) (concerning IPR2016-01589). The Federal Circuit
`
`held that time-bar determinations under Section 315(b) include an evaluation of
`
`relationships that arise after filing and before the institution decision. Under the
`
`Federal Circuit’s analysis, because Petitioner closed on a transaction with a time-
`
`barred party (Fairchild) before the institution decision, Petitioner became time
`
`barred under Section 315(b), even though Petitioner was not time barred at the
`
`time of filing of the petition. Petitioner filed a petition for rehearing en banc in
`
`each of the three appeals. The Federal Circuit denied those petitions on August 28,
`
`2019, and the Federal Circuit issued its mandates on September 4, 2019.
`
`Petitioner’s petition for writ of certiorari is due November 26, 2019, and Petitioner
`
`will file its petition well in advance of that date.
`
`II.
`
`PROCEDURAL HISTORY OF THRYV AND SIMILARLY
`SITUATED APPEALS AT THE SUPREME COURT
`
`On June 25, 2019, the Supreme Court granted certiorari in Thryv, Inc. fka
`
`Dex Media, Inc. v. Click-to-Call Technologies, LP, No. 18-1916, on the question of
`
`whether Section 314(d) permits appeal of the Board’s decision to institute an inter
`
`partes review upon finding that Section 315(b)’s time bar did not apply. Thryv
`
`concerns the en banc decision of the Federal Circuit in Wi-Fi One, LLC v.
`
`3
`
`
`
`Petitioner’s Motion to Stay
`
`Broadcom Corp., 878 F.3d 1364 (Fed. Cir. 2018)
`
`that Section 315(b)
`
`determinations are appealable. Petitioner Thryv filed its brief at the Supreme
`
`Court on September 3, 2019. The Director is also a party in Thryv. The Director
`
`filed its brief on September 3, 2019 in support of reversal of the Federal Circuit’s
`
`holding in Wi-Fi One that Section 315(b) time bar determinations are appealable.
`
`Respondent Click-to-Call’s brief is due October 28, 2019 and argument is set for
`
`December 9, 2019.
`
`In addition to Thryv, there are at least two other pending Supreme Court
`
`cases concerning the appealability of time bar determinations under Section
`
`315(b): Atlanta Gas Light Co. v. Bennett Regulator Guards Inc., No. 18-999 and
`
`Superior Communications Inc. v. Volstar Technologies, Inc., No. 18-1027.
`
`Although briefing on the petitions for certiorari in each case was completed in
`
`May 2019, the Supreme Court has not acted on the certiorari petitions, indicating
`
`the Supreme Court will act on the petitions in conjunction with its decision in
`
`Thryv.
`
`III. THE BOARD HAS AUTHORITY TO STAY THIS IPR
`PROCEEDING
`
`37 C.F.R. § 42.5(a) states that “[t]he Board may determine a proper course
`
`of conduct in a proceeding for any situation not specifically covered by this part
`
`and may enter non-final orders to administer the proceeding.” The Federal Circuit
`
`itself has approved of the Board’s ability to govern its own proceedings on remand
`
`4
`
`
`
`Petitioner’s Motion to Stay
`
`in a manner that is consistent with “statutes, regulations, and practice”:
`
`The Board may control its own proceedings, consistent with its
`
`governing statutes, regulations, and practice. 37 C.F.R.
`
`§42.5(a). Those statutes, regulations, and practices embody
`
`expedition-and efficiency-based policies that the Board must
`
`consider in determining the scope of the remand proceedings.
`
`Ariosa Diagnotics v. Verinata Health, Inc., 805 F.3d 1359 (Fed. Cir. 2015). With
`
`respect to regulations governing the Board, Rule 42.5 reserves for the Board the
`
`ability to issue proper orders in proceedings in which the procedural status of the
`
`matter is “not specifically covered.” This is just such an instance. No rule or
`
`statute precisely addresses whether an IPR proceeding must be immediately
`
`dismissed when such dismissal would potentially require that the IPR proceeding
`
`be revived or reinstated following then pending Supreme Court review of the legal
`
`basis for the Federal Circuit’s decision. Rule 42.5 allows the Board to enter a stay
`
`of limited duration so that the Supreme Court can finish its resolution of
`
`fundamental questions concerning (a) whether privies and real parties in interest
`
`are to be evaluated only at the time of the filing of the petition, and (b) whether
`
`time bar determinations are appealable.
`
`In addition, the Board has issued guidance on remand procedures in the form
`
`of Standard Operating Procedure No. 9 (“SOP 9”). SOP 9 recognizes that the
`
`5
`
`
`
`Petitioner’s Motion to Stay
`
`issuance of a stay pending a petition for certiorari is permitted. SOP 9 at p. 17
`
`(“The Board will consider such requests on a case-by-case basis.”). SOP 9
`
`explains that, in deciding whether to stay remand proceedings, “the Board’s
`
`primary consideration is whether the Supreme Court’s judgment would impact the
`
`Board’s decision on remand.” Id. Here, there is no doubt that the Supreme
`
`Court’s judgment will impact the Board’s decision on remand. The issues in
`
`Petitioner’s petition to the Supreme Court and the issue in Thyrv will directly
`
`concern the conduct of the remand proceedings.
`
`As to possible procedural outcomes, if the Supreme Court grants certiorari
`
`and reverses Power Integrations I (and the two dependent Federal Circuit decisions
`
`of the same day) following briefing and argument, that reversal will result in the
`
`vacatur of Power Integrations I. When Power Integrations I is vacated, the
`
`decision of the Federal Circuit concerning dismissal of that IPR will itself have no
`
`legal force and effect. This outcome will affect the Board’s decision on remand. If
`
`the Board has already dismissed, the Board will have no choice but to revive or
`
`reinstate the dismissed proceeding. Another possible procedural outcome is a
`
`“grant, vacate, and remand” or “GVR” order from the Supreme Court on
`
`Petitioner’s petition for certiorari. If the Supreme Court reverses Wi-Fi One in
`
`Thryv and holds that time bar determinations cannot be appealed, the Court’s
`
`historical practice would be to issue a GVR order on Petitioner’s petition, and the
`
`6
`
`
`
`Petitioner’s Motion to Stay
`
`petitions currently held in Atlanta Gas and Superior Communications. GVR
`
`orders are common in Supreme Court practice when a Supreme Court ruling
`
`affects trailing Supreme Court cases. See Lawrence v. Chater, 516 U.S. 163
`
`(1996) (per curiam) (“[T]he GVR order has, over the past 50 years, become an
`
`integral part of the Court’s practice, accepted and employed by all sitting and
`
`recent Justices. We have GVR’d in light of a wide range of developments,
`
`including our own decisions, . . .”) A GVR order would, by its terms, vacate
`
`Power Integrations I (and the related same-day decisions), undoing the order
`
`concerning dismissal and directly affecting the Board’s decision on remand.
`
`The Board’s actions in the underlying IPRs in Thryv, Atlanta Gas, and
`
`Superior Communications also demonstrate that the Board’s practice is not to
`
`immediately dismiss an IPR proceeding pending Supreme Court review in this
`
`complex procedural circumstance. First, in Thyrv the underlying IPR proceeding is
`
`IPR2013-00312. In that proceeding the Federal Circuit ruled in favor of the patent
`
`owner in Click-to-Call Techs. v. Ingenio Inc., 899 F.3d 1321 (Fed. Cir. 2018) and
`
`“remand[ed] for the Board to dismiss IPR2013-00312.” Id. at 1341-42. The
`
`Federal Circuit issued its mandate on October 9, 2018. Nearly a year has passed;
`
`the petitioner, now known as Thyrv, did not move to stay, and the Board has not
`
`dismissed or terminated the IPR. Second, in Atlanta Gas the underlying IPR
`
`proceeding is IPR2015-00826. The Federal Circuit ruled in favor of the patent
`
`7
`
`
`
`Petitioner’s Motion to Stay
`
`owner in Bennett Regulator Guards, Inc. v. Atlanta Gas Light Co., 905 F.3d 1311
`
`(Fed. Cir. 2018) and “remand[ed] for the Board to quantify any sanctions and
`
`dismiss the IPR.” Id. at 1316. The Federal Circuit issued its mandate on
`
`November 5, 2018. Petitioner Atlanta Gas did not move to stay, and the Board has
`
`not dismissed or terminated the IPR. Third, in Superior Communications the
`
`underlying IPR is IPR2017-00067. The Federal Circuit dismissed the appeal on
`
`motion and ordered that “the IPR is remanded to the Board to vacate the
`
`underlying inter partes review.” Ex. 1085 at p. 3. The order issued as a mandate
`
`on November 6, 2018. Id. On remand, the Board authorized Petitioner to file a
`
`motion to stay pending a decision on Pet
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
