`571-272-7822
`
`
`
`
`Paper No. 25
`
`Entered: June 12, 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
`
`
`The parties to this proceeding have filed, with our prior authorization,
`a Joint Motion to Limit the Petition under 37 C.F.R. § 42.71. Paper 24. The
`Joint Motion seeks that we “withdraw claims 1–13 of the ’019 patent from
`this proceeding.” Id. at 1. Originally, we instituted review of only claims 14
`and 15 in this proceeding, declining to review claims 1–13 because we
`determined that Petitioner had not shown a reasonable likelihood of success
`on its challenges to those claims. Paper 8 (“Decision on Institution”), 17.
`Thereafter, the Supreme Court issued its decision in SAS Inst., Inc. v. Iancu,
`138 S. Ct. 1348 (2018), and in light thereof, we modified our Decision on
`Institution to institute review of claims 1–15. Paper 21.
`The parties argue in their Joint Motion that we should limit the
`Petition “to remove previously denied claims 1–13 for at least the following
`three reasons,” namely: (i) the Joint Motion is agreed to by both parties; (ii)
`“removing claims 1-13 promotes efficient use of the resources of the Board,
`streamlines the issues for appeal, and saves expense, time, and resources for
`the parties and Board;” and (iii) the Board similarly has limited petitions in
`at least IPR2017-00782, Paper 27; IPR2017-00701, Paper 65; and IPR2017-
`01355, Paper 22.
`We agree with the parties’ arguments. Removing grounds from
`dispute, pursuant to a joint request of the parties, serves our overarching goal
`of resolving this proceeding in a just, speedy, and inexpensive manner. See
`37 C.F.R. § 42.1(b); Apotex, Case IPR2016-01284 (PTAB Apr. 3, 2017)
`(Paper 19); SAS, 138 S. Ct. at 1357. Accordingly, we grant the parties’ Joint
`Motion to Limit the Petition under 37 C.F.R. § 42.71. The challenges to
`claims 1–13 are removed from this proceeding, and the Petition is limited to
`review of claims 14 and 15 as well as proposed substitute claims 16 and 17.
`
`2
`
`
`
`IPR2017-01328
`Patent 6,845,019 B2
`
`
`ORDER
`In consideration of the foregoing, it is, therefore,
`ORDERED that the Joint Motion to Limit the Petition under
`37 C.F.R. § 42.71 is granted;
`FURTHER ORDERED that the Petition is limited to review of claims
`14 and 15 as well as proposed substitute claims 16 and 17.
`
`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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