Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`Paper 28
`Entered: December 21, 2017
`
`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 IPR2016-00995
`Patent 6,538,908 B2
`____________
`
`
`
`Before THOMAS L. GIANNETTI, DANIEL N. FISHMAN, and
`KERRY BEGLEY, Administrative Patent Judges.
`
`FISHMAN, Administrative Patent Judge.
`
`
`
`ORDER
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`Tel: 571-272-7822
`
`
`
`
`
`Paper 28
`Entered: December 21, 2017
`
`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 IPR2016-00995
`Patent 6,538,908 B2
`____________
`
`
`
`Before THOMAS L. GIANNETTI, DANIEL N. FISHMAN, and
`KERRY BEGLEY, Administrative Patent Judges.
`
`FISHMAN, Administrative Patent Judge.
`
`
`
`ORDER
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`IPR2016‐00995
`
`Patent 6,538,908 B2
`
`
`INTRODUCTION
`I.
`Power Integrations, Inc. (“Patent Owner”) requests rehearing
`(Paper 27, “Req.”) of our Final Written Decision (Paper 26, “Dec.” or
`“Decision”) determining that the challenged claims (26 and 27) of U.S.
`Patent No. 6,538,908 B2 (“’908 patent”) are unpatentable as anticipated by
`MC333621. For the reasons below, the request is denied.
`
`
`LEGAL STANDARD
`II.
`When rehearing a decision whether to institute inter partes review, we
`review the decision for an “abuse of discretion.” 37 C.F.R. § 42.71(c). “The
`burden of showing a decision should be modified lies with the party
`challenging the decision,” and “[t]he request must specifically identify all
`matters the party believes the Board misapprehended or overlooked, and the
`place where each matter was previously addressed” in the record. 37 C.F.R.
`§ 42.71(d). A request for rehearing is not an opportunity to present new
`arguments. See id. An abuse of discretion may arise if a decision is based
`on an erroneous interpretation of law, if a factual finding is not supported by
`substantial evidence, or if the decision represents an unreasonable judgment
`in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d
`1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340
`(Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).
`
`
`
`1 HIGH VOLTAGE SWITCHING REGULATOR (Motorola 1996) (Ex. 1005,
`“MC33362”).
`
`
`
`2
`
`
`
`IPR2016‐00995
`
`Patent 6,538,908 B2
`
`
`III. DISCUSSION
`Patent Owner argues our Decision agreed with Patent Owner’s
`interpretation that the “control circuit” and the “multi-function circuit”
`recited in the challenged claims must be “separate and distinct,” but
`misapprehended Patent Owner’s argument “that an alleged multi-function
`circuit cannot be ‘separate and distinct’ from the control circuit if its non-use
`would render the control circuit wholly inoperable.” Req. 5. Patent Owner
`argues that,
`if the mere disconnection of [the alleged multi-function
`terminal, i.e.,] Pin 6 [of MC33362,] and the attendant
`non-operation of the [multi-function circuit, i.e., the] current
`mirror [of MC33362,] renders the entire control circuit
`inoperable and unable to regulate, then the alleged multi-
`function circuit and the alleged control circuit cannot be said to
`be ‘separate and distinct’ circuits.
`Id. at 6 (citing Paper 15, 49–50).
`We are not persuaded that we misapprehended Patent Owner’s
`arguments. Our claim construction made clear in interpreting
`“multi-function circuit” that we agree with Patent Owner that the circuit is
`separate and distinct from the recited “control circuit” in the sense that the
`claim recites two distinct elements. Dec. 18. However, our interpretation
`further determined that although we agree “that the multi-function circuit
`and the control circuit are separate and distinct components in the claims, the
`claim language does not require that the functions performed by the two
`distinct circuits must be similarly separate and distinct.” Id. at 22. We
`further observed that, contrary to Patent Owner’s assertions, the
`Specification of the ’908 patent mentions certain functions of the multi-
`function circuit that are clearly tightly coupled to the “core regulation”
`
`
`
`3
`
`
`
`IPR2016‐00995
`
`Patent 6,538,908 B2
`
`function of the recited “control circuit.” Id. at 24–25 (e.g., shutting down
`the power supply in response to detecting over-voltage or under-voltage
`conditions).
`Thus, our Decision is consistent with our interpretation of
`“multi-function circuit” and expressly disagrees with Patent Owner’s
`arguments that the functions of the two circuits must also be separate and
`distinct.
`Furthermore, as a panel of the Board has explained,
`[a] request for rehearing is not an opportunity merely to
`disagree with the panel’s assessment of the arguments or
`weighing of the evidence, or to present new arguments or
`evidence. It is not an abuse of discretion to have performed an
`analysis or reached a conclusion with which Petitioner
`disagrees, and mere disagreement with the Board’s analysis or
`conclusion is not a proper basis for rehearing.
`Sophos, Inc. v. Finjan, Inc., Case IPR2015-01022, slip op. at 3–4 (PTAB
`Jan. 28, 2016) (Paper 9). Patent Owner’s Request for Rehearing amounts to
`little more than expressing its disagreement with our Decision rather than
`identifying any issues we overlooked or misapprehended.
`Accordingly, we are not persuaded that our Decision overlooked or
`misapprehended Patent Owner’s arguments regarding the separate and
`distinct nature of the recited circuits.
`
`
`IV. ORDER
`In view of the foregoing discussion, it is hereby:
`ORDERED that Patent Owner’s Request for Rehearing is denied.
`
`
`
`
`
`
`4
`
`
`
`IPR2016‐00995
`
`Patent 6,538,908 B2
`
`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
`
`
`
`5
`
`
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