`571-272-7822
`
`
`
`
`Paper No. 23
`
`Entered: June 4, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`POWER INTEGRATIONS, INC.,
`Petitioner,
`
`v.
`
`SEMICONDUCTOR COMPONENTS INDUSTRIES, LLC,
`Patent Owner.
`________________________
`
`Case IPR2017-01328
`Patent 6,845,019 B2
`________________________
`
`
`
`Before BRIAN J. MCNAMARA, JOHN F. HORVATH, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`JIVANI, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5(a)
`
`
`
`
`
`
`
`IPR2017-01328
`Patent 6,845,019 B2
`
`
`On May 24, 2018 in light of the Supreme Court’s decision in SAS
`Inst., Inc. v. Iancu, 2018 WL 1914661 (U.S. Apr. 24, 2018), we modified
`our Decision on Institution—which previously instituted review only of
`claims 14 and 15—such that our Decision on Institution currently institutes
`review of claims 1–15 as anticipated by Bonte. Paper 21. In response to our
`Order, the parties have requested a conference call “wherein the Parties will
`request permission to allow Petitioner to withdraw from this proceeding the
`portion of the grounds directed to claims 1–13 such that claims 1–13 are no
`longer at issue in this proceeding and will not form part of any final written
`decision in this proceeding.” Ex. 3001.
`Having considered the parties’ request, we determine a conference
`call is not required at this time. We hereby authorize the parties to file a
`Joint Motion to Limit the Petition seeking to withdraw from this proceeding
`all grounds directed to claims 1–13. See, e.g., Apotex Inc. v. OSI Pharms.,
`Inc., Case IPR2016-01284 (PTAB Apr. 3, 2017) (Paper 19) (granting, after
`institution, a joint motion to limit the petition by removing a patent claim
`that was included for trial in the institution decision).
`
`
`ORDER
`In consideration of the foregoing, it is, therefore,
`ORDERED that the parties are authorized to file, on or before
`June 11, 2018, a Joint Motion to Limit the Petition seeking to withdraw from
`this proceeding all grounds directed to claims 1–13.
`
`
`
`2
`
`
`
`IPR2017-01328
`Patent 6,845,019 B2
`
`PETITIONER:
`
`Neil Warren
`John Phillips
`FISH & RICHARDSON PC
`IPR10256-0041IP1@fr.com
`PTABInbound@fr.com
`
`
`PATENT OWNER:
`
`Roger Fulghum
`Brian W. Oaks
`Brett J. Thompsen
`Nick Schuneman
`Jennifer Nall
`BAKER BOTTS LLP
`roger.fulghum@bakerbotts.com
`brian.oaks@bakerbotts.com
`brett.thompsen@bakerbotts.com
`nick.schuneman@bakerbotts.com
`jennifer.nall@bakerbotts.com
`
`3
`
`
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